For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 24 July 2014

Survey evidence: Mystery Morgan brings parrot back from the dead

This Kat's email inbox has been building up all day with excited missives about the fact that an endangered species, indeed one that was thought at one stage to be extinct, has been found lurking in a London Community Trade Mark Court. It was there that one of the jurisdiction's most rare and recondite intellectual property judges -- Mr Justice Morgan [a High Court judge since 2007 and mysteriously listed as a Patents Court judge, though he has only ever once got a mention on this blog, and even that was in a case that was really on competition law ...] -- brought to life an application to admit market survey evidence. With all regular Kats busy, in hiding or in the wrong time zone, it fell to occasional contributor and long-term Katfriend Aaron Wood (Swindell & Pearson) to step into the breach and write this post:
Unlike the famous Norwegian Blue parrot, it appears that trade mark surveys were not dead -- just sleeping!

The lord of all he surveys ...
Following the decision of the Court of Appeal for England and Wales in Interflora 2 [2013] EWCA Civ 319 [noted by the IPKat here], it had been felt in certain quarters that survey evidence no longer had a role to play in trade mark cases.  In infringement situations a survey may have been said to usurp the role of the trial judge, and in that case Lewison LJ commented:
“the general message [is] that evidence from consumers in this kind of case (i.e. trade mark infringement involving ordinary consumer goods or services) should only be admitted if it is of real value; and even then only if the value justifies the cost; and that judges should be robust gatekeepers in that respect”
The decision of 22 July 2014 in Enterprise Holdings v Europcar Group UK Limited & Another [2014] EWHC 2498 (Ch) tests this in the context of a case where the claimant seeks to adduce evidence of acquired distinctiveness, reputation and goodwill attaching to a mark.  Two of the counsel from Interflora 2 were counsel in this case: Geoffrey Hobbs QC again pitched as the erstwhile slaughterer of surveys, whilst Simon Malynicz reprised his role as counsel seeking to have the survey admitted.

Finding that the survey should be admitted, Mr Justice Morgan made a number of significant comments on the admissibility of survey evidence, as well as making findings on the validity of the survey itself.  Interested readers should read the comments on the validity of the survey, but the admissibility is of greater broad interest. On “real value” he noted the existence of OHIM’s guidelines on trade marks with a reputation, particularly the words: 
"Opinion polls and market surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark, the market share it has, or the position it occupies in the market in relation to competitive products. The probative value of opinion polls and market surveys is determined by the status and degree of independence of the entity conducting it, by the relevance and the accuracy of the information it provides, and by the reliability of the applied method."
He also commented that in Interflora 1 (Interflora Inc v Marks and Spencer plc [2012] EWCA Civ 1501 [noted by the IPKat here] Lewison L.J. had stated that different considerations from the general position on surveys apply where the issue is whether a registered mark has acquired distinctiveness.  He further noted the words of Etherton J in  D Jacobson & Sons Ltd v Globe Ltd [2008] EWHC 88 (Ch) [noted by the IPKat here] that the survey had helped on the question of whether a mark had acquired distinctiveness.

He also gave some thought as to how it might fit with other evidence to be provided:
  1. Before addressing the "likely to be of real value" test derived from Interflora 1, it may be helpful to discuss the point summarised at paragraph 17(4) and 18(5) above as to the utility of a survey when the competent authority has "particular difficulty in assessing distinctive character". This question has been identified in a number of decisions of the European Court of Justice. It seems that it is envisaged that the question will be answered as part of the overall assessment made by the competent authority, rather than at an earlier gatekeeping stage. If the question is addressed as part of the overall assessment, then the competent authority will be able to take into account all of the other evidence as to acquired distinctiveness when answering the question. If the question has to be answered at an earlier gatekeeping stage, then the competent authority may be much less clear as to whether the case will turn out to be one of particular difficulty. It may be that the cases which are more likely to be of real difficulty are those where the mark in question is not a traditional trade mark.
  1. In the present case, I consider that it is likely that there will be difficulty in assessing whether Enterprise's green logo has acquired distinctive character through use. Although the green logo is a traditional trade mark, some (possibly most) of its use has been as part of or in conjunction with another trade mark and the survey is designed to assist with the question whether the green logo, by itself, has acquired distinctiveness as identifying the goods or services of Enterprise.
  1. So far, I have considered Europcar's criticisms of the surveys carried out, or proposed to be carried out, for Enterprise. I have held that it is likely that the surveys will be held to be valid surveys. It nonetheless remains for Enterprise to satisfy the court at this gatekeeping stage that it is likely that the surveys will be of real value at the trial.
  1. My conclusion is that it is likely that the surveys will be of real value at the trial. I have already explained what is involved in the concept of a mark having a distinctive character acquired through use. I do not consider that a trial judge in this case will be able to determine that question by using his own knowledge and experience. Even if a trial judge thought that he had relevant knowledge and experience, the trial judge would wish to guard against the possibility that his view might be somewhat idiosyncratic or not fully informed. Of course, the trial judge will have evidence on the question of distinctiveness over and above the survey evidence. At the present stage, I do not have sight of that evidence. It is not possible at this stage to assess whether the survey evidence will be of real value in addition to the other evidence but, as I read the decision in Zeebox [noted by the IPKat here], I am not required to attempt to carry out that exercise.

On the question of whether the value justifies the cost, he noted that the parties had expended a substantial amount at this “gatekeeper” stage – indeed, Europcar had spent more on the gatekeeper stage than it estimated it would spend dealing with the results themselves, and the application had led to expert evidence on both sides as to the validity of the proposed surveys.  This irony was not lost on the judge, who noted that the point of the gatekeeper stage was to prevent parties incurring large cost dealing with surveys which have no inherent value.  If a party is willing to spend more than £100,000 on the gatekeeper stage when the cost of dealing with the results is less than this then there could be seen to be little concern with cost.  The judge also noted that the trial was set down for four days and has a collective legal budget of approximately £1.7M, so we might conclude that he felt this was not exactly a case without value.

The decision moves the needle back towards the position many litigators took, namely that there are instances where surveys are needed and that the cost of them is better incurred than not if it leads to a successful outcome.  It also follows the suggestion of Lewison LJ that the hard line taken in relation to surveys in “standard” trade mark infringement cases may not apply in the other situations he identified. 

In the present case the satellite litigation on the admissibility of the survey threatens to dwarf the remainder of the costs (the defendant having stated that it will appeal on admission of the survey).  As the judge suggests, where a survey may have real value it may well be worth allowing it in, with the weight and eventual value considered once all evidence is presented.  The clear suggestion is that if it turns out that the survey did not advance the case far beyond the other evidence available then there may be consequences, but that this cannot be assessed at the application stage. 

The outcome creates a risk that parties may make the request for survey evidence as a safety measure (or, worse make it not knowing the strength or availability of other evidence) –- it would seem likely that such behaviour would be penalised at the costs stage, and if opposing the admission of evidence it may be worth probing the level to which the applicant has reviewed the amount and nature of other evidence in order to provide the court with the fullest possible picture of the evidential value of the survey and to perhaps put the applicant in a position where it will be far less able to defend the cost of the exercise at a later date.
Thanks so much, Aaron (major katpat!) for your sterling efforts, and for your speed in setting your thoughts out for our benefit. 

Does this mean that every trade mark and passing off litigator in England and Wales will be rushing off to get a survey done? Not if pre-trial case management is conducted in a firm and pragmatic manner, thinks this Kat.  Will a lot of people seek to sneak survey evidence is, even where it shouldn't be? For sure, says Merpel: what can you expect of humans?

When the Writ Hits the Phan

Making YouTube videos for a living or as a hobby is a growing phenomenon. You can delve into the lives of “beauty gurus” or watch tutorials on just about everything from cooking help to how to make rainbow loom bracelets. While creating new content does not raise problems, using songs protected by copyright can land you into trouble as Michelle Phan has just discovered. Ms Phan, a YouTube entrepreneur earns money through the platform by making make-up and lifestyle videos. As background music for her videos, she has used songs from various artists. Ultra Records, which is in charge of some of the artists’ works featured in Ms Phan’s videos, brought an action for copyright infringement against her.

Artists usually assign their rights to a music society in exchange for royalty payments. The society then takes care of granting licences to other parties who wish to use the artists’ works. Artists therefore no longer have the right to decide whether to allow someone else to use their work, nor can they sue people for unauthorised use, as it is the music society which becomes responsible for this.

Among the songs featured by Michelle Phan in her videos is Kaskade, and although his songs are some of the most used ones in her videos, he does not agree with his record label’s decision to sue her. Despite having no control over the claim, he is siding with her on this matter. In her support, he has said: “Copyright law is a dinosaur, ill-suited for the landscape of today's media.” True, copyright laws were designed around a time when the YouTube phenomenon could not be anticipated. Today, content is created constantly on YouTube and songs are often added to videos. “Free music” can be found online, but it is unlikely to include any “trendy” songs.

The label’s complaint contains 50 alleged instances of copyright infringement, and they are asking for £88,000 for each proven breach. They fear that unless ordered to stop by the court, Michelle Phan will continue to use materials without their permission. However, a spokesperson for Ms Phan said that the claims lacked merit and emphasised that Ultra had agreed to let her use the music previously: “Michelle's intention has always been to promote other artists, creating a platform for their work to be showcased to an international audience.” Fans on twitter have attested becoming aware of Kaskade’s songs through her videos. 

Whether the works were used with or without permission remains to be seen. The usual policy when copyright infringement is alleged on YouTube is the take down the videos, but given the extensive use of copyrighted music here, we shall have to see what happens next. Ms Phan has more than 6 million subscribers to her YouTube channel and it is perhaps the potential loss of revenue from broadcasting to a public of this size that is the driving force for Ultra Records’ claims. They maintain that she used the songs in her videos without their permission and that despite not requesting a licence to use the musical works, she “…continues to wilfully infringe in blatant disregard of plaintiffs' rights of ownership”.

More on the story here.

EU copyright Public Consultation responses Katseries #2: linking and browsing

As reported by this very blog, yesterday afternoon the Directorate General for Internal Market and Services of the European Commission released its Report on the 9,500 responses to the Public Consultation on the Review of EU Copyright Rules [here and here]

The first episode of a special Katseries on the analysis of the main points of the Report was broadcast yesterday. It focused on some data about responses and respondents, and issues of cross-border access to content and more rights involved in a single act of exploitation.

It is now the turn of linking & browsing.

Linking in the aftermath of Svensson

When she saw the questions about linking and browsing and whether they should be subject to rightholders' permission, this Kat thought that any serious policy discussion around these issues would really depend on the outcome of Svensson, [herehereherehere and here], PRCA [here] and other cases, which - at the time when the Consultation was launched - were (and some are) still pending before the Court of Justice of the European Union (CJEU). 

Svensson was however decided on 13 February last, ie a few weeks before the Public Consultation ended, so did it have had any effect on the responses? 

Merpel's favourite kind of linking
Of course it did. 

In particular end users/consumers pointed out that in its decision the CJEU did not specify whether the person who provides the link would have to check whether the website linked to had permission to make the content available to the public [well ... see here], and argued that - if this was the case - there would be too much legal uncertainty for those providing the links. 

The CJEU may shed some light on this very issue when it decides C More Entertainment. Don't be misled by the fact that the case was stayed pending Svensson and the questions read the same: it is about linking to infringing content (by means of paywall circumvention).

The vast majority of authors and performers said that in some cases [not specified in the Report though] the provision of a hyperlink to publicly available content should be subject to the authorisation of the rightholder. Some authors and performers stated that authorisation should be required for embedded or framed links within websites, since the owner of the website displaying works may generate advertising revenue by keeping the viewer on its website. This is fairly interesting, since the BestWater case (still pending) is actually about the embedding of videos

The vast majority of publishers, producers and broadcasters considered that the use of hyperlinks should be subject to the rightholders’ authorisation, at least in specific circumstances. However many respondents, for example commercial broadcasters and film producers, said that the question whether the provision of a hyperlink leading to work triggers the making available right should remain subject to a case-by-case assessment, also because market behaviours and technology will continue to evolve.

What about linking to newspaper content?

Readers will be aware that this is currently a matter of discussion in Europe (and elsewhere). Last year Germany introduced new sections 87f, 87g and 87h into its Copyright Act to provide for the exclusive right of press publishers to exploit their content commercially for 1 year, thus preventing search engines and news aggregators from displaying non-insignificant excerpts from newspaper articles without paying a fee. Initiatives similar to the German one were also considered - before being abandoned - by Belgium and France, and are currently being discussed in Spain [here]. Despite the criticisms expressed by the Spanish Competition Authority at the end of May when it said that initiatives like the German one might have anti-competitive effects, earlier this week proposed Spanish IP reform - including the creation of an ancillary right over news content - received its first parliamentary approval

According to the Report, "Newspaper and magazine publishers in particular highlight that when links to newspaper content are posted with snippets, the risk exists that readers would be diverted from reading further on the newspaper website as such. Newspaper publishers also consider that a distinction should be drawn between non-commercial and commercial uses. They consider that they may want to allow members of the public to freely view their websites for non-commercial uses while recluding (or charging a licence fee for) commercial uses." 

Time to celebrate!
They have finally linked to something
that is not protected by copyright!
Everything linked to permission? Yes, say CMOs

At the opposite side of the spectrum from intermediaries/service providers, collective management organisations held the view that "the rightholder's authorisation should be required whenever the provision of a hyperlink leads to a work or other subject matter protected by copyright". That is, says Merpel, what happens 99,98% of the time.

Browsing: PRCA was not so straightforward to academics

As regards internet browsing, end users/consumers and institutional users argued that it is akin to reading and therefore should not be subject to authorisation from the relevant rightholder, while authors and performers argued that in certain cases [the Report does not really say which though] it should be authorised. 

Besides the issue of linking (is it an act of making available to the public?), academics were also divided on browsing, with some considering that the exception in Article 5(1) of the InfoSoc Directive would not apply to this type of activity. 

Did academics see more problems with browsing than necessary? It may well be the case, since the CJEU decided PRCA with a fairly short judgment and thought there was not even need for an Opinion from one its Advocates General.

Comic relief? Glee Club remedies step into the limelight

Twentieth Century Cats: a fox-free chorus line ...
"Glee" is a word that suggests happiness and pleasure to many, but which has caused the occasional judicial brow to furrow. Last year Mr Justice Birss concluded that there is "no material difference between joy and glee" here.  Unsurprisingly therefore, another judge has found that there's not so much difference between glee and glee. The case in question is Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2014] EWHC 2286 (Ch), a Chancery Division, England and Wales, decision last week of Roger Wyand QC (Sitting as a Deputy High Court Judge). This decision is still not available on BAILII, but that's no excuse for leaving it to the tender mercies of DOBBIN. so it's being written up with a little help from a LexisNexis case note.  For background to this litigation, readers are referred to earlier Katposts in 2012, here, and then in February of this year, here.

The original infringement proceedings were an action for trade mark infringement and passing off regarding the use of the word 'glee'. Comic owned a series of two UK registered figurative trade marks which featured the words 'The Glee Club'. TCF produced a television series, 'glee', about a fictional singing club at a fictional American high school. No, said the court, there was no passing off, but yes, there had been trade mark infringement.  The question now arose as to what to do about it. Comic wanted  (i) an injunction to restrain trade mark infringement; (ii) delivery up/destruction of infringing materials; (iii) an account of profits; (iv) disclosure of enough information to determine how to proceed in terms of an inquiry into financial relief; (v) a publicity order; and (vi) interim payment pending calculation of the final sum.

Being very judicial about it, Roger Wyand QC ruled as follows:

*While the balance of all the relevant factors favoured the granting of an injunction, such an injunction ought to allow TCF to refer to the fact that the programme had been previously known as 'glee'.

* As for delivery up, it would be proportionate to order delivery up or relabelling, where appropriate, of physical and digital copies of its programmes in TCF's possession, power or control -- but it wouldn't be proportionate to make TCF try to get back stocks that had been sent out to customers.

* Comic would be allowed to seek an account of profits on the basis that TCF could provide a rough assessment of the total profit made by the programme. Since the actual figures were commercially sensitive and protected by a confidentiality order, there was no need for TCF to produce extensive disclosure to support that evidence.

* A publicity order to be granted since it was important for viewers of "glee" to know about the court's judgment.

* While it was bound to be difficult to assess the quantum of damages and/or account of profit that would be eventually awarded, £100,000 seemed to be a good shot at a conservative interim payment in respect of damages or an account of profits.

* In terms of timing, it was appropriate to stay the effect of the injunction, but not the publicity order -- since that was important if further damage to Comic's trade mark was to be minimised.

All of this seems reasonable under the circumstances, says the IPKat, who believes that this is the first British case to cross his path since the coming into force of IP Enforcement Directive 2004/48 in which the making of a publicity order has been of such prime importance.  Merpel finds the litigation literally instructive: before it started, she knew about the "glee" programmes but hadn't heard of the Comic Enterprises' Glee Club.

Comic Relief here

More on this case from the Nottingham Post, the Birmingham Mail and Bloomberg.

Wednesday, 23 July 2014

Wednesday whimsies

Around the weblogs.  Over on the increasingly busy SOLO IP blog, IPKat team member contrasts the fortunes of IP practitioners in small practices with those of medical practitioners: which has had the better deal over the past few decades?  Having survived a brief flurry of comments as to the distinction between liqueur and liquor, Class 46's Laetitia introduces us to the HEATSTRIP dispute, in which a naughty agent who tries to register his principal's trade mark, having lost before the OHIM Board of Appeal, gets a second helping of comeuppance from the General Court. On IP Finance, Rob Harrison marks the launch of the Australian Global Innovation Index: phrases like "packed with metrics", "best practice" and "degree of scepticism" give a hint of what you might just find there. "Taylor Swift is incredible" is the title of a guest piece written by Richard Tomasi and hand-crafted by our own Eleonora. Never heard of Taylor Swift (pictured, above left, with the IPKat)? Then take a look.

Come to the BioHub. This Kat has never been to a BioHub; indeed, until last night be had never even seen the word. However, he has discovered a good way of getting into one. There's an IP seminar & networking event coming up on 30 September 2014 at the BioHub at Alderley Park, Cheshire. It's masterminded by Appleyard Lees and this Kat has a feeling that former guest Kat Robert Cumming has had something to do with it. The star attraction is Judge Richard Hacon, who was appointed as specialist circuit judge of the Intellectual Property Enterprise Court (IPEC) for England and Wales when most of us were sharpening our teeth knives in anticipation of the seasonal turkey in December 2013. There will be some war stories and law stories, plus all the usual delicacies.  This event is free to all comers and will take place in the conference centre by Appleyard Lees' office at the BioHub at Alderley Park. The fun starts at 4.30 pm with the quaint tradition of registration and carries on till the bar runs dry networking is brought to a seemly conclusion. To attend, email Sara Baines at to register your interest.  Space is limited so do book early. The Appleyards and Lees apologise to anyone who will miss out on the event due to the patent examinations, explaining that Judge Hacon "has limited availability to speak in the North". 

Now here's a brand
name that summarises
this Kat's sentiment ...
This Kat, born and bred a Londoner, has just been reminded by Richard Pringle (Head of Validation Services, Valideus Ltd) that the priority period for .LONDON domains -- which gives priority to categories of potential registrants including owners of UK registered and unregistered trade marks -- closes on 31 July. Beyond that date, as Richard delicately puts it, "it will be a straight case of first-come, first-served".  The .LONDON registry website is here and its priority rules are here. He adds:
"Our view of the situation is that with over 50,000 applications expected for .LONDON domain names in the pre-launch period alone, the domain will quickly reach critical mass and be a familiar sight online and potentially a valuable domain suffix for brands. Furthermore, with this volume of applications there will be many that are for trade marks in the offline world. These will include registrations of descriptive dictionary words, trade marks in different sectors, trade marks used by brand interest groups, fan sites and gripe sites; as well as some trade marks registered for cybersquatting". 
While his memory is good enough to recall the days when the choice of top-level domain was really quite important, it's not good enough to recall the last time he actually typed a whole domain name into his browser, or even paid attention to the top-level domain: his habits are determined by long familiarity with the advantages of search engines and his skill, whether intuitive or intellectual, in identifying the fastest way to find his target sites [very good, says Merpel, but you still can't find your way round the OHIM and EPO websites ...]. Are .LONDON and its equivalents really important any more? Or has the time of the prestigious or catchy domain name come and gone? Do tell us what you think.

BREAKING: Report on responses to Public Consultation on EU copyright now available

One of the many messages that reached
the Commission during the time
of the Consultation
As this blog reported a few days ago, there were rumours that, whilst publication of the White Paper on EU copyright had been indefinitely delayed at least until September [with the current Commission's term of office running until 31 October 2014], before the summer break there would have been the publication of a report on the 9,500 responses [and a total of over 11,000 messages, including questions and comments] that the 3-month Public Consultation on the Review of EU Copyright Rules [here and here] attracted.

This is indeed what has just happened. Shortly before 5 pm GMT, the Directorate General (DG) for Internal Market and Services of the European Commission released its much-awaited Report.

This Kat has just started reading it (it is quite long as a document), and decided to run a mini-Katseries on its main points. 

Let's start now with some data about responses and respondents, and the responses to the questions on cross-border access to content and more rights involved in a single act of exploitation. Further posts will follow tomorrow.

Be careful what you wish for ...
Why so many responses and messages?

The DG seemed to confirm that the main reason why the Public Consultation attracted so many responses was not really because Europe has been suddenly invaded by an army of copyright enthusiasts, but rather because popular stakeholder-driven initiatives such as Fix Copyright!, Creators for Europe and really boosted participation. 

As a term of comparison, just think [and read: page 9 of the leaked Impact Assessment, on which see here] that the 2008 Green Paper on Copyright in the Knowledge Economy only attracted something like 350 responses and the 2009 Consultation on Creative Content Online received a bit more than 200 replies. 

Those numbers are really depressing if compared to the most recent Public Consultation.

Who took part in it?

When responding to the Public Consultation, one was required to indicate which general group he/she belonged to among: end user/consumer; institutional user; author/performer or their representative; publisher/producer/broadcaster or their representative; intermediary/distributor/other service provider or their representative; collective management organisation; public authority; Member State; other.

Why just 11 Member States?
Well, the majority of respondents (58.7%) were end users/consumers, followed by authors/performers (24.7%). 

Regrettably in this Kat's opinion, only 11 Member States (Denmark, Estonia, France, Germany, Ireland, Italy, Latvia, the Netherlands, Poland, Slovakia, and the United Kingdom) took part in the Public Consultation. Merpel would thus like to launch the campaign #SendCopyrightFolks2Governments.  

And now, for the responses - Part I

1. Cross-border access to online content

Unsurprisingly, the vast majority of end user/consumer respondents reported facing problems when trying to access online services in another EU country. They stated that they are regularly confronted with access restrictions depending on the geographic location of their IP address. Besides the already notorious MasterChef Italia drama, this is happening to this Kat right now having purchased Girls on Amazon Instant Video while in the UK, and being unable to stream it in Italy because unavailable in this Member State.

For some services, consumers/end users reported being redirected to a national website when trying to access the same service in a website with a different geographical location. 

So? "In general, end users/consumers would like to be able to access all content from any online stores whether directed to the Member State in which they reside or not. At the minimum, many consumers say, there should be transparency as to the possibilities of accessing content cross-border and on territorial restrictions. They consider the blocking of content to be mostly arbitrary and unpredictable." 

Institutional users like libraries lamented that it is very difficult to negotiate licences and manage subscriptions for multiple Member States.

Interestingly, authors/performers and publishers/producers/broadcasters generally considered that the deficit of cross-border accessibility of content does not result from the fact that copyright is territorial or from problems in licensing, since multi-territorial licences are available. In other words, it is not really a copyright problem. Well, says Merpel, then it may be a problem of ... competition? She adds: don't forget the ongoing investigation into Pay TV services.

2. The rights relevant for digital transmissions: the ‘making available’ and the ‘reproduction’ rights

Unsurprisingly, not many end users/consumers expressed a view on the scope of exclusive rights that apply to digital transmissions. Of those who did, a large majority found the scope of the making available right unclear.

Typical expression to the question
"Would you please explain what
the making available right is about?"
As to the possible solutions, views were divided. Certain individual consumers and organisations representing them expressed a preference for the country of origin approach, claiming that targeting [which the CJEU appeared to reject in respect of jurisdiction in Pinckney and Hi Hotel] seems more complex and difficult to apply in the online world. 

Others considered that the country-of-origin approach would require a much higher level of harmonisation of copyright law at EU level than at present and therefore saw the targeting approach as more suitable for now. 

Authors and performers were in principle opposed to the country of origin approach as a solution for clarifying the territorial scope of the making available rights and indicated potential problems with forum shopping.

Most of the end users/consumers said that the practice of licensing the reproduction right and the making available right separately is not fit for purpose in the digital environment.

Record and film producers, and  music and book publishers, generally took the view that the scope of the making available right is sufficiently clear and stated that applying multiple rights to a single act of economic exploitation in the online environment does not create problems. However, broadcasters’ views were divided on this very issue. Some (like commercial broadcasters) did not see a problem with the scope of the making available right, while many public service broadcasters stated that a clarification of the scope of the making available right is needed to improve legal certainty. 

On the application of the two rights a large proportion of broadcasters indicated that if the reproduction is only ancillary to the given form of exploitation, it should be assumed that the licence for the main copyright act also covers such ancillary reproductions. Others indicated that in such a situation both rights should be licensed together.

While collective management organisations stated that no licensing problems have arisen from the fact that both the reproduction and the making available rights have to be licensed for the digital exploitation, intermediaries/service providers said that the application of two rights to a single act of exploitation increases transaction costs, as they have to contract with multiple licensors and make multiple payments

Some Member States pointed to some lack of clarity with regard to the scope of the making available right and the boundaries between the rights of making available and reproduction (emerged also the level of national case law), but overall they did not consider this a top priority area for the EU.


Stay tuned for consideration of the other issues, starting with linking and browsing in the next post of this series.

Distasteful -- or worse? Trade mark registration, morality and public sentiment

The IPKat received earlier today an email from Alan Clarke (Clarke IP Ltd), who writes:

"You may be interested to hear of this extremely distasteful (alleged - I've not checked any facts) attempt to register trade marks for the flight numbers of the two downed Malaysian Airlines jets - the recent Ukrainian incident, and the mysterious disappearance of flight MH.370. The quote below comes from the Guardian. The alleged registrant is wasting its money if it wishes to obtain money in this way, but it can't but cause more distress to a group of people already enduring enormous suffering".
The item on the Guardian website reads as follows:
"My colleague Kate Hodal @katehodal, who is in Kuala Lumpur, has come across a macabre twist to the MH17 and MH370 disasters: A company called Seyefull Investments in Belize has filed to trademark the terms "MH17" and "MH370" so it will get paid every time either term is used in print, radio, TV or online media. She emails:
The Coconuts website reports: The company's application to register "MH17" as one of its trademarks, in fact, was filed on July 17, aka the exact same day Malaysia Airlines Flight MH17 was shot down over eastern Ukraine, killing all 298 people on board.

The application for "MH370" was made on May 2, after a more "respectful" period of time had passed since Malaysia Airlines Flight MH370 disappeared en route from Kuala Lumpur to Beijing.

The online portal continues: While the process of registering the flight numbers of crashed aircraft might be completely legit, and Seyefull Investments Ltd might actually succeed in their attempt to make money off any mention of "MH17" and "MH370", it still remains a fact that this is an ugly, opportunistic attempt at cashing in on the suffering and pain of thousands of grieving family members and millions of people worldwide - not to mention the ended lives of the hundreds of people on board both doomed jetliners."
Apart from the obviously distasteful nature of the possible use of the reported applications as trade marks, says the IPKat, there's a question as to whether a trade mark attorney, asked by a client to register such a mark, should simply execute the client's instructions on the basis that, if he or she didn't, someone else would -- or should something be said along the lines of "don't you think that what you're doing is really likely to upset people?" Or should the instruction simply be rejected  on the basis of "we're not the sort of firm that does things like this".  Merpel adds, there may be a time when such marks can be registered -- but won't that be when they are no longer likely to be associated by victims of a disaster or tragedy with the event in question, or where there is a prevalent secondary meaning? Words like TITANIC must have been very painful for many people to bear at one time but, 102 years after the event, no objection now remains to that word's registration as a trade mark and use as a film title. When does bad taste fade?

Article 3(1)(f) of Trade Mark Directive 2008/95 provides that
"(f) trade marks which are contrary to public policy or to accepted principles of morality"
shall not be registered, and 15 U.S.C. para 1052(a) of the Lanham Act in the USA provides that registration shall be refused to a mark which
"Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; ..."
How would the wording of these provisions be applied to these applications?

What do readers think?

Italian court says that Wikipedia cannot be responsible for third party content

Earlier this month the Tribunale di Roma (Rome District Court) had some say on the
liability of hosting providers for third party content. 

It was not an IP case, but rather a slander/defamation one, and concerned the Italian version of the Wikipedia pages dedicated to Italian entrepreneur and politician Antonio Angelucci [the page is still inaccessible on grounds of an earlier interim injunction] and the newspaper known as Il Riformista

Mr Angelucci and his son Giampaolo sued Wikimedia over allegedly defamatory information regarding themselves and published on Wikipedia, each seeking damages for EUR 10m [Merpel could not help but notice that the counsel for the Angeluccis was a certain Antonio Conte. She concluded that he must have been that Conte].

Wikimedia objected that: (1) the information regarding the Angeluccis was either true or did not harm their honour and reputation; and (2) it does not have any editorial control over the content produced by third parties and published on Wikipedia. In other words, Wikipedia is a hosting - not content - provider. 

Ready to contribute but, alas,
no internet connection
The latter is because "Wikipedia is an online open-content collaborative encyclopedia; that is, a voluntary association of individuals and groups working to develop a common resource of human knowledge. The structure of the project allows anyone with an Internet connection to alter its content.

Hence, "Wikipedia cannot guarantee the validity of the information found [t]here", and "None of the contributors, sponsors, administrators or anyone else connected with Wikipedia in any way whatsoever can be responsible for the appearance of any inaccurate or libelous information or for your use of the information contained in or linked from [its] web pages." 

This also means that users "are being granted a limited license to copy anything from [its] site; it does not create or imply any contractual or extracontractual liability on the part of Wikipedia or any of its agents, members, organizers or other users." 

Speaking of hosts,
no one can be more gracious than Gustavo
The Tribunale rejected the plaintiffs' claim, and held that in running the Wikipedia project Wikimedia merely "hosts on its servers information provided by its users" [cf the recent criticism of the Tribunale di Torino, which suggested that this definition of hosting may have become obsolete]

Furthermore, "there is no contractual relationship between the authors of the information and the hosting provider", and actually the Wikipedia project is all about encouraging third party contributions. Hence, Wikimedia cannot be considered responsible for the information hosted on its platform.

According to the Tribunale Wikimedia is not subject to the provisions of Legislative Decree 70/2003 by which Italy transposed the Ecommerce Directive into its own legal system, in that it is established outside the territory of the EU. Nonetheless the regime envisaged by that piece of legislation may be taken into consideration for guidance, in particular in the part in which it provides that a hosting provider may only be responsible for third parties' infringements when it has actual knowledge of the presence of illegal content or, upon obtaining such knowledge or awareness does not act expeditiously to remove or disable access to the content. 

Neither was the case of Wikimedia, concluded the Court.

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