New database for geographical indications – GIView

Marques Class 46 reports about a new tool for searching of geographical indications.

The new database, called GIview, is offered is offered by the EUIPO. It covers more than 5000 geographical indications from around the world. You can search based on their names or by country. The results can be shown as a list or as a map.

You can learn more for GIView from the video below.

Phonograms and equitable compensation – an EU Court decision

The European Court has ruled in case  C‑147/19 Atresmedia Corporación de Medios de Comunicación S.A. v Asociación de Gestión de Derechos Intelectuales (AGEDI), Artistas Intérpretes o Ejecutantes, Sociedad de Gestión de España (AIE).

On 29 July 2010, AGEDI and AIE brought an action before the Commercial Court, Madrid, Spain against Atresmedia seeking payment of compensation in respect of acts of communication to the public of phonograms published for commercial purposes, or reproductions of those phonograms, carried out between 1 June 2003 and 31 December 2009 via the television channels operated by Atresmedia, and for the unauthorised reproduction of phonograms in connection with those acts of communication to the public.

Since that action was declared unfounded by the Commercial Court, Madrid, AGEDI and AIE brought an appeal against that court’s judgment before the Provincial Court, Madrid, Spain, which set aside that judgment and upheld their application in its entirety.

Atresmedia brought an appeal on a point of law before the referring court against the judgment of the Provincial Court, Madrid.

The referring court notes that the appeal relates exclusively to whether the communication to the public of audiovisual works carried out by Atresmedia via its television channels gives rise to the right to the single equitable remuneration provided for in Spanish law in Article 108(4) and Article 116(2) of the LPI, which correspond, in EU law, to Article 8(2) of Directive 92/100 and to Article 8(2) of Directive 2006/115. In particular, that court states that it falls to it to determine whether, from the moment when a phonogram published for commercial purposes, or a reproduction of that phonogram, has been incorporated or ‘synchronised’ in an audiovisual recording containing the fixation of an audiovisual work, the performers and phonogram producers concerned may demand that single equitable remuneration.

The referring court adds that since AGEDI and AIE claim compensation from Atresmedia in respect of the communication to the public of audiovisual works carried out between 1 June 2003 and 31 December 2009, both Directive 92/100 and Directive 2006/115 are applicable rationae temporis to the main proceedings.

In those circumstances the Supreme Court, Spain decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Does the concept of the “reproduction of a phonogram published for commercial purposes” referred to in Article 8(2) of Directives 92/100 and 2006/115 include the reproduction of a phonogram published for commercial purposes in an audiovisual recording containing the fixation of an audiovisual work?

(2) In the event that the answer to the previous question is in the affirmative, is a television broadcasting organisation which, for any type of communication to the public, uses an audiovisual recording containing the fixation of a cinematographic or audiovisual work in which a phonogram published for commercial purposes has been reproduced, under an obligation to pay the single equitable remuneration provided for in Article 8(2) of the aforementioned directives?’

The Court’s decision:

Article 8(2) of Council Directive 92/100/EEC of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property and Article 8(2) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property must be interpreted as meaning that the single equitable remuneration referred to in those provisions must not be paid by the user where he or she makes a communication to the public of an audiovisual recording containing the fixation of an audiovisual work in which a phonogram or a reproduction of that phonogram has been incorporated.

What type of copyright licenses can a photographer rely on when doing business?

Photography is one of those areas where creators, in this case photographers, have to rely on intellectual property laws, in particular, the copyright law, in order to make their living.

The reason for this mix between creativity and legal theory and practice, which sometimes looks terrifying for the creators, is the simple fact that photographs as intellectual products have intangible value that can be controlled only based on the law, or at least that is the classic explanation.

If we take this for granted, what are the particular ways every photographer to take advantages of this legal protection.

The general rule of thumb is that one original photo can be used only after permission by the author with an exception of some cases of fair use.

This permission can be provided by a written document called a copyright license. The legislation is some countries allows even assignment of copyrights, but for the purpose of this article we will focus our attention only on license agreements.

They provide the user of a photograph with the necessary rights to use it under specific circumstances, such as a term, territory, fee etc.

There are two main type of licenses:

  • Exclusive licenses – exclusive means that only the Licensee can use the licensed  photo. That is to say the relevant economic and moral copyright rights will be transferred to the Licensee and nobody else will be able to take advantage of them. This includes the photographer too, who will not be able to use the licensed photo with exception of the cases where this possibility is explicitly stipulated in the agreement. Exclusivity can cover all copyrights or only some part of them.
  • Non-exclusive licenses – in general, a non-exclusive license means that more than one Licensee can use the relevant image subject matter to the agreement. The photographer remains free to use the same photo as well as to allow any other Licensees to do that too. There are no restrictions like in the case of exclusive licensing. This type of license is the most widespread because it allows photographers to maximize all commercial benefits of their works. The reason for this effect is quite simple. While in the case of exclusive license, only one purchaser can use the image and will pay only one remuneration for that purpose, in the case of non-exclusive licenses it is possible many licensees to buy permission for the use of the photo paying separate fees for that purpose. Of course, because there will be no exclusivity, these licenses will be cheaper compared with the exclusive once. Nevertheless due to the potential huge volume of  granted licenses the profit could be even greater.  

Every photographer should be very careful what type of license gives to the photo users. In the case of exclusive one, this will means that no one else will be able to use the same photo for the relevant purpose, which normally means that the profit per image will be higher for the photographer.

On the other hand with a non-exclusive license the photographer will be able to give unlimited licenses to new and new users although at a lower price.

If you want to learn more about the nitty-gritty of copyright protection of photographs you can check this new Udemy course: Photography & Copyright: A Complete guide for photographers.

MILLENNIALFALCON crashed after a US trademark dispute

Lucasfilm Entertainment Company won a trademark opposition in the US against an application for “MILLENNIALFALCON” in class 41: “entertainment services in nature of live musical performance by musical bands, production services of sound and music recordings”.

This trademark was applied for by Ilan Moskowitz who used it for his musical performances including parody against corporate culture and in particular one related to Disney.

Lucasfilm invoked an earlier trademark for MILLENNIUM FALCON in class 28: “Toy vehicles”. In addition they claimed that their mark had been used for many other activities and products such as entertainment services, theater productions, television programs, motion picture films, comic books, books, toys, dolls, sporting goods, bags, personal-care products, linens, towels, apparel, food, online games, computer games, video games, music, and mobile applications.

They provided the USPTO with the necessary evidence for sales, licensing agreements, advertisements etc.

As it is well-know MILLENNIUM FALCON is the name of a space ship from the Star Wars series, which have become tremendously popular for the last almost 40 years.

Ilan Moskowitz claimed that both signs were not similar. Firstly because of the three letters IAL in the first word which were different and create different meaning. Secondly because the goods and services were completely different.

The USPTO disagreed. Although the earlier mark is registered only for toys, it has been used for many different products and services for a long period of time (in the US trademark protection arises based on real market use). Additionally the phrase MILLENNIUM FALCON is very well known by all consumers.

The three different letters couldn’t overcome the similarities between both signs including from conceptual point of view.

Bearing in mind all of that, the USPTO considered that there is a possibility of consumer confusion between both trademarks. It was decided that the parody defense claim is not allowed because the marks did not have any difference in the eyes of the possible consumer and did not carry the necessary conditions for the parody claim to be valid.

Source: Ankara Patent Bureau – Cansu ÇATMA BİLEN and Önder Erol Ünsal for Lexology.

Google won a dispute for STREET VIEW in Japan

The the Japan Patent Office has ruled in a case related to a trademark application for “STREET VIEW MODEL (SVM)”, written in Japanese Katakana character, for class 41: providing online non-downloadable videos and photographs’:

Against this application an opposition was filed by Google based on an earlier trademark with reputation STREET VIEW for classes 9 and 42.

Although the phrase STREET VIEW is not so unique, the Patent Office concluded that based on the acquired distinctiveness and reputation of the earlier mark, there is a possibility for a consumer confusion. This is enhanced by the fact that both business models concern digital images and videos offered via the Internet.

Source: Masaki MIKAMI, Marks IP Law Firm.

Sports cars are not just cars when it comes to trademarks – an EU Court’s decision

The General Court of the European Union has recently ruled in Case T‑677/19, Polfarmex S.A v EUIPO.

This case concerns an EU trademark SYRENA registered in 2011 for the following goods:

  • Class 9: ‘Computer and video game programs and software, none of the aforesaid goods relating to the aeronautical field, and in particular helicopters and rotorcrafts’;
  • Class 12: ‘Motor vehicles for locomotion by land and parts therefor (included in Class 12)’;
  • Class 28: ‘Games and playthings, model vehicles; scale model vehicles made of all materials, in particular paper model vehicles and die-cast model vehicles or plastic model vehicles’.

In 2016, Polfarmex filed an application for revocation of this mark based on lack of a genuine use for a period of 5 years.

The EUIPO revoked the mark for all goods with an exception of class 12 – cars.

Although there weren’t many invoices for sales of cars under this mark, the Office concluded that this is normal because the mark had been used only for sport cars. The market and demand of these cars is limited compare with the traditional vehicles. Due to this fact, advertisement and preparation related to the mark was deemed as sufficient. The decision was appealed.

According to the Court:

As is apparent from the case-law, it is common knowledge that the market for high-end sports cars with technical specifications that are not intended for normal, everyday road use and the price of which exceeds that of most private use cars is often characterised by relatively low demand, by production to specific order and by the sale of a limited number of vehicles. The Court held that, in such circumstances, the provision of accounting documents setting out sales figures or invoices is not necessary for the purposes of establishing genuine use of the mark in question. Further, the Court noted that publications demonstrated that the mark in question was the subject matter of public discussion in anticipation of a revival of production and sale of a car model bearing the mark in question.

 It follows that, having regard to the specific features of the relevant market, duly taken into account by the Board of Appeal when it relied on the case-law cited in paragraph 70 above, the evidence produced by the intervener shows the existence of various preparatory tasks and advertising efforts in relation to the SYRENA Meluzyna R model. Moreover, it shows, as contended by EUIPO, not only that the car was about to be marketed, but also that it was available to order.

To the question to what extent sport cars can cover the whole cattegory of vehichles, however, the General Court disagreed with the EUIPO.

According to the Court:

Contrary to EUIPO’s claim, racing cars are capable of constituting a coherent subcategory, for, unlike cars, their purpose is not the same as that of vehicles intended to carry a driver and passengers. Those cars, as acknowledged by the Board of Appeal in paragraph 61 of the contested decision, are not intended to be driven on public roads and such use is even prohibited on account of the absence of type approval. Their purpose is therefore different from that of other cars.

It follows that, to the extent that genuine use of the mark has been established in relation to racing cars alone, which constitute an independent subcategory within the meaning of the case-law cited in paragraph 116 above, the Board of Appeal was wrong to find that genuine use had been shown in respect of cars in Class 12. On that basis, the second complaint of the third plea and the fourth plea must be upheld and the contested decision must be annulled to the extent that it upheld the registration of the contested mark in respect of ‘cars’ in Class 12, with the exception of ‘racing cars’, in respect of which registration must be upheld.