Access to personal data in case of copyright infringements in the EU

The Advocate General of the European Court M. SZPUNAR has issue an opinion in the case C‑470/21 La Quadrature du Net, Fédération des fournisseurs d’accès à Internet associatifs, Franciliens.net, French Data Network v Premier ministre, Ministère de la Culture.

The dispute concerns the scope of access to personal data in case of copyright infringements on the internet. The case has the following background:

By application of 12 August 2019 and two supplementary submissions of 12 November 2019 and 6 May 2021, La Quadrature du Net, the Fédération des fournisseurs d’accès à Internet associatifs, Franciliens.net and French Data Network brought an action before the Council of State for annulment of the implied decision by which the Prime Minister, France rejected their application for the repeal of the Decree of 5 March 2010, even though, in their view, that decree and the provisions constituting its legal basis unreasonably interfere with the rights guaranteed by the French Constitution and, in addition, infringe Article 15 of Directive 2002/58 and Articles 7, 8, 11, and 52 of the Charter.

In particular, the applicants in the main proceedings argue that the Decree of 5 March 2010 and the provisions constituting its legal basis permit access to connection data in a manner which is disproportionate to minor copyright infringements committed online, without prior review by a court or an authority offering guarantees of independence and impartiality.

In that regard, the referring court states, first of all, that the Court, in its most recent judgment in La Quadrature du Net and Others, held that Article 15(1) of Directive 2002/58, read in the light of Articles 7, 8 and 11 and Article 52(1) of the Charter, does not preclude legislative measures which, for the purposes of safeguarding national security, combating crime and safeguarding public security, provide for the general and indiscriminate retention of data relating to the civil identity of users of electronic communications systems. Thus, such retention is permissible, without any specific time limit being imposed, for the purposes of investigating, detecting and prosecuting criminal offences in general.

The referring court infers from this that the plea raised by the applicants in the main proceedings, alleging that the Decree of 5 March 2010 is unlawful because it was adopted in the context of action to combat minor offences, must therefore be dismissed.

Next, the referring court observes that the Court, in its judgment in Tele2 Sverige and Watson, held that Article 15(1) of Directive 2002/58, read in the light of Articles 7, 8 and 11 and Article 52(1) of the Charter, must be interpreted as precluding national legislation governing the protection and security of traffic and location data, and more particularly, the access of the competent national authorities to retained data, where that access is not subject to a prior review by a court or an independent administrative authority.

It states that the Court, in its judgment in Tele2, made clear that, in order to ensure, in practice, that those conditions are fully respected, it is essential that access of the competent national authorities to retained data should, as a general rule, except in cases of validly established urgency, be subject to the requirement of a prior review carried out either by a court or by an independent administrative body, and that the decision of that court or body should be made following a reasoned request by those authorities submitted, inter alia, within the framework of procedures for the prevention, detection or prosecution of crime.

The referring court points out that the Court recalled that requirement in its judgment in La Quadrature du Net and Others, concerning the real-time collection of connection data by the intelligence services, and in its judgment in Prokuratuur (Conditions of access to data relating to electronic communications), concerning national authorities’ access to connection data.

Finally, the referring court notes that, since its establishment in 2009, Hadopi has issued over 12.7 million recommendations to subscribers under the graduated response procedure provided for in Article L 331-25 of the CPI, of which 827 791 were issued in 2019 alone. To that end, the officials of Hadopi’s Committee for the protection of rights must be able to collect, each year, a considerable volume of data relating to the civil identity of the users concerned. The referring court considers that, given the volume of those recommendations, making such data collection subject to a prior review might make it impossible for recommendations to be issued at all.

In those circumstances, the Conseil d’État (Council of State) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Are the civil identity data corresponding to an IP address included among the traffic and location data to which, in principle, the requirement [of] prior review by a court or an independent administrative entity [whose decisions are binding] applies?

(2) If the first question is answered in the affirmative, and having regard to the fact that the data relating to the civil identity of users, including their contact details, are not particularly sensitive data, is Directive [2002/58], read in the light of the [Charter], to be interpreted as precluding national legislation which provides for the collection of those data, corresponding to the IP addresses of users, by an administrative authority, without prior review by a court or an independent administrative entity [whose decisions are binding]?

(3)  If the second question is answered in the affirmative, and having regard to the fact that the data relating to civil identity are not particularly sensitive data, that only those data may be collected and they may be collected solely for the purposes of preventing failures to fulfil obligations which have been defined precisely, exhaustively and restrictively by national law, and that the systematic review of access to the data of each user by a court or a third-party administrative entity [whose decisions are binding] would be liable to jeopardise the fulfilment of the public service [mission] entrusted to the administrative authority which collects those data, which is itself independent, does [Directive 2002/58] preclude the review from being performed in an adapted fashion, for example as an automated review, as the case may be under the supervision of a department within the body which offers guarantees of independence and impartiality in relation to the officials who have the task of collecting the data?’

The Advocate’s opinion:

Article 15(1) of Directive 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications), read in the light of Articles 7, 8, 11 and Article 52(1) of the Charter of Fundamental Rights of the European Union,

must be interpreted as not precluding national legislation which allows providers of electronic communications services to retain, and an administrative authority, responsible for protecting copyright and related rights against infringements of those rights committed on the internet, to access data which is limited to civil identity data corresponding to IP addresses, so that that authority can identify the holders of those addresses suspected of having committed those infringements and, if appropriate, take action against them, where that access is not subject to a prior review by a court or an independent administrative body, provided that those data are the only means of investigation enabling the person to whom that address was assigned at the time of the commission of the infringement to be identified.

The European Commission has approved new rules for industrial design protection in the EU

The European Commission has approved new rules for the protection of industrial designs in the EU. The proposal aims to:

• Simplify and streamline the procedure for the EU-wide registration of a design: By making it easier to present designs in an application for registration (for instance by submitting video files) or combine more than one design in one application, as well as by lowering the fees to be paid for the first ten years of protection, the new rules will make registered Community design protection more accessible, efficient and affordable in particular for individual designers and SMEs.
• Harmonise procedures and ensure complementarity with national design systems: The new framework aims to ensure greater complementarity among EU level and national design protection rules, for instance on requirements for registering designs or simplifying rules for invalidating registered designs. This will help to create a level playing field for businesses across Europe.
• Allow reproducing original designs for repair purposes of complex products: By introducing an EU-wide ‘repair clause’ into the Design Directive, the new rules will help to open up and increase competition in the spare parts market. This is particularly important in the car repair sector, where it should become legally possible in all EU countries to reproduce identical “must match” car body parts for repair to restore its original appearance. The proposed ‘repair clause’ should have instant legal effect only for future designs while designs already granted protection should remain covered during a transitional period of ten years. 

The next steps are for this proposal to be approved by the European Parliament and Counsel and after that the related Regulation and Directive to be adopted and come into force for all EU Member States.

CJEU confirmed that private copying compensations include cloud storage too

The European Court has ruled recently in the Case C‑433/20 Austro-Mechana Gesellschaft zur Wahrnehmung mechanisch-musikalischer Urheberrechte Gesellschaft mbH v Strato AG.

This case has the following background:

Austro-Mechana is a copyright collecting society which, acting in its own name but in a fiduciary capacity in the interest and on behalf of the rightholders, exercises, inter alia, the statutory rights to the remuneration that is due under Paragraph 42b(1) of the Law on Copyright, in the version applicable to the dispute in the main proceedings.

Austro-Mechana applied to the Commercial Court, Vienna, Austria for an order to allow it to invoice for, and take payment of remuneration in respect of, ‘storage media of any kind’, on the ground that Strato provides its business and private customers with a service known as ‘HiDrive’, by which it makes cloud computing storage space available to them.

Strato contested the application on the ground that no remuneration was due in respect of cloud computing services. That company stated that it had already paid the required copyright fee in Germany, the Member State in which its servers are hosted, that fee having been incorporated in the price of the servers by their manufacturer or importer. It added that users in Austria had also already paid a levy for the making of private copies (‘the private copying levy’) on the terminal equipment necessary to upload content to the cloud.

By judgment of 25 February 2020, the Commercial Court, Vienna dismissed Austro-Mechana’s application, holding that Strato does not make storage media available to its customers, but provides them with an online storage service.

Austro-Mechana appealed against that judgment to the Higher Regional Court, Vienna, Austria, which observes, referring to the judgment of 29 November 2017, VCAST (C‑265/16, EU:C:2017:913), that it is not entirely clear whether the storage of content in the context of cloud computing comes within the scope of Article 5(2)(b) of Directive 2001/29.

In those circumstances, the Higher Regional Court, Vienna decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Is the expression “on any medium” in Article 5(2)(b) of Directive [2001/29] to be interpreted as meaning that it also includes servers owned by third parties which make available to natural persons (customers) for private use (and for ends that are neither directly nor indirectly commercial) storage space on those servers which those customers use for reproduction by storage (“cloud computing”)?

(2) If so: is the provision cited in Question 1 to be interpreted as meaning that it is applicable to national legislation under which the author is entitled to equitable remuneration (remuneration for exploitation of the right of reproduction on storage media), in the case:

–   where a work (which has been broadcast, made available to the public or recorded on a storage medium produced for commercial purposes) is by its nature likely to be reproduced for personal or private use by being stored “on a storage medium of any kind which is suitable for such reproduction and, in the course of a commercial activity, is placed on the market in national territory”,

–    and where the storage method used in that context is that described in Question 1?’

The Court’s decision:

1.  Article 5(2)(b) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the expression ‘reproductions on any medium’, referred to in that provision, covers the saving, for private purposes, of copies of works protected by copyright on a server in which storage space is made available to a user by the provider of a cloud computing service.

2.  Article 5(2)(b) of Directive 2001/29 must be interpreted as not precluding national legislation that has transposed the exception referred to in that provision and that does not make the providers of storage services in the context of cloud computing subject to the payment of fair compensation in respect of the unauthorised saving of copies of copyright-protected works by natural persons, who are users of those services, for private use and for ends that are neither directly nor indirectly commercial, in so far as that legislation provides for the payment of fair compensation to the rightholders.

When lipstick packaging can be a trademark in the EU?

The General Court of the European Union has ruled in case T‑488/20 Guerlain срещу EUIPO.

This case concerns the following applied for EU three-dimensional trademark for “lipsticks”:

The EUIPO refused to register this sign based on absolute grounds – the mark did not depart sufficiently from the norms and customs of the sector.

The Board of Appeal confirmed this decision.

In the appeal, however, the General Court disagreed with the EUIPO and annulled the decision entirely. According to the Court, the 3D trademark is distinctive enough in order to be a sign of trade origin.

The General Court finds that the shape in question is uncommon for a lipstick and differs from any other shape existing on the market. It observes, first of all, that that that shape is reminiscent of that of a boat hull or a baby carriage. Such a shape differs significantly from the images taken into consideration by the Board of Appeal, most of which represented cylindrical and parallelepiped lipsticks.

Next, the presence of the small oval embossed shape is unusual and contributes to the uncommon appearance of the mark applied for. Lastly, the fact that the lipstick represented by that mark cannot be placed upright reinforces the uncommon visual aspect of its shape.

Consequently, the General Court finds that the relevant public will be surprised by this easily memorable shape and will perceive it as departing significantly from the norm and customs of the lipstick sector and capable of indicating the origin of the goods concerned. Accordingly, the mark applied for has a distinctive character, which permits it to be registered.

Aldi lost a trademark dispute before the General Court of the EU

The General Court of the European Union has ruled in case  T-527/20 Aldi v EUIPO.

Registration of European trademarks can be challenging sometimes. This is due not only because trademark protection in the EU has two levels – national and community but because there are linguistic and cultural differences between the Member States.

One example about such situation is an attempt by Aldi to register the following EU figurative trademark in classes 29 and 30:

The EUIPO refused to register this sign on absolute grounds – descriptiveness, Art. 7(1)(c) of Regulation (EU) 2017/1001.

The practice for protection of EU trademarks states that when one sign is descriptive for consumers even from one part of the Union, the sign will be refused.

In the case at hand, CUCINA means kitchen for the Italian speaking people. The fact that the same mark is registered and well-known in Germany cannot overcome this conclusion.

According to Aldi, the word is not descriptive because it indicates only the place where food dished are prepared. What’s more the mark consists of combination with graphics which is enough to create the necessary distinctiveness.

The EUIPO disagreed. The graphic representation was not distinctive too because the image looks like a cooking pot. A combination between two not distinctive or descriptive elements cannot turn the sign to be distinctive as a whole.

The decision was upheld by the General Court.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Chanel lost a dispute against Huawei in the EU

The General Court of the European Union has ruled in case  T-44/20 Chanel v Huawei Technologies which targets an issue with figurative trademarks.

The case concerns the following European trademark application in class 9 filed by Huawei:

Against this mark an opposition was filed by Chanel based on the following earlier French trademark in class 9:

In addition, the company claimed a trademark with reputation for the following another French trademark registered for dissimilar goods:

The EUIPO dismissed the opposition founding both signs as not confusingly similar. The fact that they share two connected elements in circle is not enough in order confusion to be established. What’s more both mark are completely dissimilar from conceptual point of view.

The decision was appealed. According to Chanel these marks were similar at least to low degree as they are applied for and to an average to high degree when the Huawei trademark was rotated by 90 degrees.

The Court disagreed reminding that a trademark comparison has to take into account the way signs are applied for not the way how they will be used after that. The Court considered both marks as not similar. They have connected elements but in different arrangements – one in horizontal and another in vertical. In addition, conceptually they are different. The later mark can be perceived as the letter H while the earlier marks can be viewed as letters C.

Whether the new Super League will register successfully a trademark in the EU?

The news for the launch of the Super League was one of the biggest in the European football last week. It spurred a great debate and a lot of reactions most of which not so positive. Many football federations, including UEFA and FIFA as well as many football fans expressed their concerns about the new league formed by 12 of the biggest clubs in Europe: Arsenal, Chelsea, Liverpool, Man City, Manchester United, Tottenham, Real Madrid, Barcelona, Atletico Madrid, Juventus, Inter Milan and AC Milan.

Apart from the pure football aspects of the story, it is interesting to be noticed that there is now an application for the following European trademark in classes 3, 4, 5, 6, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43, 45:

The applicant is still not indicated but this representation of the mark is equal to what the founders of the new league have already announced.

A quick search in TMView database for Europe shows a lot of early registered trademarks for some of the above mentioned classes. For example:

International trademarks:

• SUPER LEAGUE – № 1350297, Дата на заявката: 01/12/2016, Класове: 28, 41 

• SUPER LEAGUE – № 1514680, Дата на заявката: 01/11/2019, Класове: 09, 18, 25, 28, 35, 38, 41

 Italian trademarks:

• SUPER LEAGUE – № 2002901066715, Дата на заявката: 26/11/2002, Класове: 25 SUPERLEAGUE – № 2018000036641, Дата на заявката: 19/11/2018, Класове: 25, 28, 35, 41

 European trademarks:

• SUPER LEAGUE – № 016389777, Дата на заявката: 21/02/2017, Класове: 9, 25, 28, 41
• European Super League – № 017985567, Дата на заявката: 14/11/2018, Класове: 25, 41

Spanish trademarks:

• European Super League – № M4091266, Дата на заявката: 29/10/2020, Класове: 41

It will be interesting whether the new trademark application will receive a successful registration or there will be oppositions against it from the owners of the earlier rights.

Another interesting issue could be to what extent Super League is a distinctive sign for some of the goods and services, in particular for organization of sport events.