The Spanish Supreme Court rules on cases targeting football matches, LaLiga, and IP rights

The Spanish Supreme Court has recently ruled on two lawsuits that concern the broadcasting of sports events and the relation to intellectual property rights.

In the first case, the Spanish Football Federation LaLiga sued two media Atresmedia S.A. and Mediaset S.A. for using images and video clips from football matches without permission in light of the fact that the rights for broadcasting of these matches were granted to another company.

According to the Supreme Court, every media has the right to record images and broadcast short news reports including football matches and this is not against the exclusive broadcasting rights for the same events because it is of public interest.

In the second case, The Supreme Court has ruled that broadcasting football matches in bars or restaurants without paying the corresponding fee to LaLiga is not an intellectual property crime. The reason is that football matches do not fit into the definition of copyrightable work, that is to say, they are not literary, artistic, or scientific works. The Court did not consider matches as a performance of creative works. Because of this, every possible infringement of football match broadcasting should be regarded as a market and consumer crime under Spanish legislation.

Source: EUIPO.

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The Supreme Court of Spain confirmed that bullfighting is not copyrightable

Eleonora Rosati published an interesting article for IPKat that discusses the opportunity for copyright protection over bullfighting.

The dispute concerns an attempt by the well-known Spanish matador Miguel Ángel Perera Díaz to register with the Spanish Copyright Office a bullfighting video with description as a copyright work. The Office refused to do that because bullfighting wasn’t able to be copyright subject matter.

The decision was appealed and the Court upheld it. According to the Court bullfighting as well as other sport events are not copyrightable because they require following some strict rules. This in turn leaves no room for creative freedom for the purposes of copyright. The position reflects the European Court practice too (FAPL).

The decision was appealed again this time before the Supreme Court in Spain.

The Supreme Court admitted that there was a room for some level of artistry when matadors performing on the arena. Relying on the EU Court’s decision in Cofemel, the Court considered that copyright arises when there is a work and it is original one.

When it comes to work the Court cited the  Levola Hengelo case: for there to be a ‘work’ as referred to in Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.

Originality on the other hand reflects the author personality as an expression of his free and creative choices.

According to the Supreme Court bullfighting can fulfil the originality requirement because matadors implement some creative decisions when they are performing. However, bullfighting cannot be a work. The reason for this is that it cannot be expressed in such a way in order to be identifiable with sufficient precision and objectivity.

This is the argument why bullfighting cannot be regard as a choreographic work too. Each bullfight is unique by its nature and cannot be reproduced one to one.

From that perspective the Supreme Court considered bullfighting as not copyrightable.

Source: IPKat.

“El Clasico” between Barcelona and Real Madrid can be a trademark in Japan

La Liga, the Spanish Football Federation, won a trademark dispute in Japan regarding its attempt to register the following trademark for Class 41 – sporting activities, production of sports events, sports information services, and other services:

The Japan Patent Office refused to register this sign based on absolute grounds – a lack of distinctive character.

As it is well-know, “El Clasico” is one of the most famous football matches in the world, between FC Real Madrid and FC Barcelona. Its history dates back to 1930s and through the years this match has become recognizable among football fens all around the world.

Based on this, the Patent Office considered that consumers will connect the sign with this particular match and from that point of view they can mistake its nature when used on service unrelated to the football match between these two teams.

In the appeal, however, the Board of Appeal overturned this decision, stating that the sign is distinctive enough and capable to be a trademark. According to the Board the consumers in Japan would not relate the sign directly with this match for the relevant services, at least because it is written in Spanish.

What’s more the Board didn’t find any facts that “El Clasico” was commonly used to represent a specific nature or quality in connection with the services for which the mark was applied for.

Source: Masaki MIKAMI, Marks IP Law Firm.

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.

La Liga was fined with 250 000 Euro for breaching GDPR

pexels-photo-2101030The organizer of the Spanish top football division La Liga was fined with $250 000 because of breach of the EU’s General Data Protection Regulation (GDPR) rules.

The reason for that sanction was the La Liga practice potentially to use its mobile app to spy whether bars and restaurants show football matches without paying license fees.  According to the information, this could be done through phones microphones.

The Spanish Data Protection Agency considered this as breaching of the GDPR.

According to La Liga, this decision was wrong and unfair because the Agency failed to understand the mobile app technology and how it works.

Source: TBO.

Whether Don Quijote de la Mancha relates to a PDO cheese?

pexels-photo-220112.jpegThe European Court has ruled in case C‑614/17 Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego v Industrial Quesera Cuquerella SL. This interesting case regards the issue of whether a geographical indication can be infringed by a graphical representation that can be related to it. In detail:

The Queso Manchego Foundation is responsible for managing and protecting the PDO ‘queso manchego’. On that basis, it brought an action against the defendants in the main proceedings before the Spanish court of first instance with jurisdiction to hear the case seeking a declaration that the labels used by IQC to identify and market the cheeses ‘Adarga de Oro’, ‘Super Rocinante’ and ‘Rocinante’, which are not covered by the PDO ‘queso manchego’, and the use of the words ‘Quesos Rocinante’ infringe the PDO ‘queso manchego’ because those labels and those words constitute an unlawful evocation of that PDO for the purpose of Article 13(1)(b) of Regulation No 510/2006.

The Spanish court of first instance dismissed that action on the ground that the signs and names used by IQC to market the cheeses which were not covered by the PDO ‘queso manchego’ were not visually or phonetically similar to the PDOs ‘queso manchego’ or ‘La Mancha’ and that the use of signs such as the name ‘Rocinante’ or the image of the literary character Don Quixote de La Mancha evoke the region of La Mancha (Spain) and not the cheese covered by the PDO ‘queso manchego’.

The Queso Manchego Foundation brought an appeal against that decision before the Audiencia Provincial de Albacete (Provincial Court, Albacete, Spain), which, by judgment of 28 October 2014, upheld the judgment at first instance. That court held that, for cheeses marketed by IQC which are not covered by the PDO ‘queso manchego’, the use of landscape and images typical of La Mancha on the labels of those cheeses leads consumers to think of the region of La Mancha but not necessarily of the cheese covered by the PDO ‘queso manchego’.

The applicant in the main proceedings brought an appeal against that judgment before the Tribunal Supremo (Supreme Court, Spain).

In its order for reference, the Tribunal Supremo (Supreme Court) sets out a number of factual considerations.

First of all, the referring court states that the word ‘manchego’ used in the PDO ‘queso manchego’ is the adjective which describes, in Spanish, the people and the products originating in the region of La Mancha. Next, it observes that the PDO ‘queso manchego’ covers cheeses made in the region of La Mancha from sheep’s milk in accordance with the traditional production, preparation and ageing requirements set out in the product specification of that PDO.

Moreover, the referring court states that Miguel de Cervantes set most of the story relating to the fictional character Don Quixote de La Mancha in the region of La Mancha. Don Quixote is also described by the referring court as having certain physical features and clothing similar to those of the character depicted on the figurative design on the label of the cheese ‘Adarga de Oro’. In that regard, the archaic word ‘adarga’ (small leather shield) is used in [Cervantes’] novel to describe the shield used by Don Quixote. In addition, the referring court notes that one of the names used by IQC for some of its cheeses is the name of the horse ridden by Don Quixote de La Mancha, namely ‘Rocinante’. The windmills which Don Quixote fights are a typical feature of the landscape of La Mancha. Landscapes featuring windmills and sheep appear on some of the labels used for the cheeses produced by IQC which are not covered by the PDO ‘queso manchego’ and in some of the illustrations on IQC’s website, which also advertises cheeses not covered by the PDO.

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

‘(1) Must the evocation of a [PDO], prohibited by Article 13(1)(b) of Regulation No 510/2006 necessarily be brought about by the use of a name visually, phonetically or conceptually similar to the [PDO] or may it be brought about by the use of figurative signs evoking the [PDO]?

(2)  When the [PDO] is of a geographical nature (Article 2(1)(a) of Regulation No 510/2006) and when the products are the same or comparable, can the use of signs evoking the region with which a [PDO] is associated constitute evocation of the [PDO] itself, within the meaning of Article 13(1)(b) of Regulation No 510/2006, which is prohibited even when the user of those signs is a producer established in the region associated with the [PDO], but whose products are not protected by [that PDO] because they do not meet the requirements set out in the product specification, apart from the geographical provenance?

(3)  Must the concept of the average consumer who is reasonably well informed and reasonably observant and circumspect, to whose perception the national court has to refer in order to assess whether there is “evocation” within the meaning of Article 13(1)(b) of Regulation No 510/2006, be understood to cover European consumers or can it cover only consumers of the Member State in which the product giving rise to evocation of the protected geographical indication is produced or with which the PDO is geographically associated and in which the product is mainly consumed?’

The Court’s decision:

1.  Article 13(1)(b) of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs must be interpreted as meaning that a registered name may be evoked through the use of figurative signs.

2. Article 13(1)(b) of Regulation No 510/2006 must be interpreted as meaning that the use of figurative signs evoking the geographical area with which a designation of origin, as referred to in Article 2(1)(a) of that regulation, is associated may constitute evocation of that designation, including where such figurative signs are used by a producer established in that region, but whose products, similar or comparable to those protected by the designation of origin, are not covered by it.

3.  The concept of the average consumer who is reasonably well informed and reasonably observant and circumspect, to whose perception the national court has to refer in order to assess whether there is ‘evocation’ within the meaning of Article 13(1)(b) of Regulation No 510/2006, must be understood as covering European consumers, including consumers of the Member State in which the product giving rise to evocation of the protected name is made or with which that name is geographically associated and in which the product is mainly consumed.

A wine battle before the General Court of the EU

The General Court of the European Union ruled in the Case T‑102/17, Cantina e oleificio sociale di San Marzano v EUIPO.

This case concerns an attempt by the Italian company  Cantina e oleificio sociale di San Marzano to register the following European trademark for Class 33 – wine:

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Against this mark, an opposition was filed by the Spanish company Miguel Torres based on an earlier mark Sangre de Toro for the same goods.

Initially, EUIPO dismissed the opposition, but after that the Board of Appeal upheld it.

The applicant appealed before the General Court, stating that there are no similarities between the goods, taking into consideration the fact that both wines have different geographical origin, different distribution and so on.

The Court dismissed these arguments as groundless and upheld the opposition.