News

DESIGN WORKS ARE PROTECTED BY COPYRIGHT LAW ONLY ON CONDITION THAT THEY ARE CREATIVE

23/09/2019

The European Court of Justice clarifies that copyright protection of design works is only subject to the requirement of creativity, since it is not in line with the European law to require additional requirements, such as the existence of a specific aesthetic or artistic value.

 

The case

The original lawsuit involved the two companies Cofemel and G-Star, both active in the clothing sector. The dispute, which has come before the Portuguese Supremo Tribunal de Justiça, concerns the copyright claimed by G-Star in respect of certain models allegedly infringed by Cofemel in the production and marketing of certain pieces of clothing.

The background to the reference for a preliminary ruling

The reference for a preliminary ruling to the European Court of Justice made by the Portuguese Supreme Court is based on the fact that, on one hand, the Código do Direitos de Autor e dos Direitos Conexos – Portuguese Code of Copyright and Related Rights – includes designs in the list of works eligible for protection under copyright, and, on the other hand, does not expressly specify the conditions under which certain objects, which pursue a utilitarian aim, can enjoy such protection.

The question

As Portuguese doctrine and case law were divided on this point, the Supremo Tribunal de Justiça asked the Luxembourg court whether it should be considered, in the light of the interpretation of Directive 2001/29 given by the Court in its judgments Infopaq International dated 16th July 2009 (C 5/08, EU:C:2009:465), and Painer, dated 1st December 2011, (C 145/10, EU:C:2011:798), that design works enjoy copyright protection in the same way as any literary or artistic work, and therefore on condition that they are original, in the sense that they are the result of the author’s own intellectual creation, or is it possible to make the grant of such protection subject to the existence of a specific level of aesthetic or artistic value.

The CJEU solution

The Court held that Article 2(a) of Directive 2001/29 must be interpreted in a way in which a piece of national legislation granting copyright protection to design works upon fulfillment of a further requirement other than creativity, and in particular the production of a visual effect, which is relevant from an aesthetic point of view, is not compatible with European law.

The Court came to that conclusion on the basis that European legislative sources allow the protection conferred on designs to be combined with copyright protection. However, in pursuing different objectives, those protections are subject to different disciplines.

The Court has therefore clarified that the aesthetic effect, which a design may produce, is not a relevant element in determining whether such a design can be qualified as a ‘work of authorship’, since such an aesthetic effect is the result of the intrinsically subjective feeling of beauty, which each person observing the design in question experiences.

Protection therefore occurs when the object constitutes an “author’s own intellectual creation”, which reflects the freedom of choice and the personality of the author; and it is grounded on the elements which are the expression of such creation.

Such a concept of design (as a work protected by copyright) implies significant repercussions in national legal systems where an additional qualification to that of the existence of the creative character is required for protection. This is the case, among other things, in Italy, where art. 2 of the Italian Copyright Law only requires, for design, that the work be creative and have artistic value (interpreted by prevailing jurisprudence as the „iconicity“ of the work, i.e. its recognition also by circuits other than commercial ones, and in particular by artistic ones). If the Court’s reasoning is strictly applied, it should be considered that the requirement of artistic value should no longer be required, since it would be contrary to European rules.


LGV OBTAINS ALSO BEFORE THE COURT OF CATANIA AN INJUNCTION ORDER AGAINST AN ONLINE RESELLER OF ILLICIT SOFTWARE

10/09/2019

The decision pronounced by the Court of Catania, in accordance with the unanimous jurisprudence obtained by LGV before the IP Court Division, ordered an online reseller to cease selling computer programs owned by a major software company without authorization.

 

The precautionary action was filed by LGV on behalf of its client after the latter had learned that the defendant company was reselling, through some websites, computer programs of its ownership without authorization. Such programs consisted, in particular, of programs marketed by the applicant as temporary licenses only (in the form of monthly or annual subscription). The online retailer, on the other hand, was selling these programs with perpetual licenses for „vile“ amounts, according to the definition given by the above-mentioned decision.

The Court of Catania, granting the petition in its entirety, found that the defendant had unlawfully exploited the exclusive rights of ownership of the applicant company, granting the inhibitory injunction also with regard to the protection of the trademark owned by the software house. The Judge also stated that the reseller’s conducts constitute unfair competition both from the confusory perspective and with respect to the servile imitation.

The above-mentioned decision also reaffirmed the principle that the cessation of the conduct while the proceedings are pending does not eliminate the imminence of the periculum because the cessation of the conduct, determined only by the free determination of the party, cannot be considered permanent; the distributor, therefore, in the absence of a judicial order, could easily repeat the abusive conduct by creating new website The Court also stated that the requirement of imminence of the harm derives from the lasting nature of the infringement perpetrated by the defendant and, in any case, from the lasting effects of the conduct.


AGCOM: ISSUED THE GUIDELINES RELATED TO THE REGULATION ON THE CLASSIFICATION OF AUDIOVISUAL WORKS INTENDED FOR THE WEB AND VIDEOGAMES, WICH WILL ENTER INTO FORCE ON OCTOBER18, 2019

05/09/2019

With Resolution no. 359/19 / CONS, published on July 18, 2019, the AGCOM (the Italian „Authority for Communications Guarantees“) issued the guidelines relating to the classification of audiovisual works intended for the web and videogames, pursuant to the regulation approved with Resolution 74/19/CONS (later amended, even if to a limited extent only, with resolution 358/19 / CONS). The guidelines clarify how to implement the classification, which must be reported by all the audiovisual works destined for the web and videogames for their distribution in Italy. The purpose is to protect minors from inappropriate contents, warning on them and indicating the appropriate age thresholds for the use of the works, in order to guide families and the public of consumers. With the same resolution, a Permanent Observatory was also established at the AGCOM, with supervisory functions and control over compliance with the new legislation, as well as power to propose updates to the regulation.

 

As far as videogames are concerned, the guidelines confirm the equivalence between the AGCOM classification systems and the PEGI („Pan-European Game Information“) European classification system. Consequently, videogames already classified according to the PEGI system do comply with the provisions of the regulation without any further charges.

In the case of videogames already on the market and not having the PEGI classification, it will be necessary to comply with the PEGI or the AGCOM classifications as soon as possible (the obligations come into effect starting from October 18, 2019). If not, fines that can start from € 25,000 and reach € 350,000 are risked.

According to the legislation, the obligations above fall on the distributors, i.e. the providers of audiovisual media services and the providers of hosting services, even if the determination of the burden of complying with the classification can be negotiated between these subjects and the operators of the industry that provide videogame licenses.

If the AGCOM classification is chosen, since AGCOM does not have certifying functions, but only surveillance functions, it is on the subject obliged to the classification to carry out the appropriate assessments, based on the regulation and the guidelines, deciding which age groups should be applied and which are the most appropriate content descriptors (according to the table in Annex A.2 to the Guidelines, which distinguishes between bad language, discrimination and hate speech, drugs, fear, gambling, sex, violence, purchases in the video game). Based on this evaluation, the appropriate pictograms and descriptors will have to be used, also on marketing material and product packaging if sold online, with dimensions that cannot be lower than 25 x 25 pixels.

The guidelines help to clarify a new scenario for Italian operators, which implies some interpretative and applicative difficulties, and leave open some important questions, such as the applicability of the regulation only to Italian distributors (or even – and if so under what conditions – to foreign distributors); the update of the materials related to videogames distributed before the regulation came into force (which sometimes also presents technical difficulties, such as those concerning the impossibility to amend contents posted on social media); how to deal with particular hypotheses, such as streaming, user-generated contents, etc. These are issues that may perhaps be addressed and resolved within the Permanent Observatory established by Resolution 359/19 / CONS., which has the primary purpose of verifying the implementation of the legislation and its possible completion/update.


E-COMMERCE: IT IS NOT MANDATORY TO PROVIDE A TELEPHONE NUMBER FOR CUSTOMER SERVICE

22/07/2019

The Court of Justice of the European Union, by issuing the decision dated July 10, 2019, did not recognize the obligation – for Amazon EU, as for any other e-commerce platform – to make available to the consumer a telephone number before the conclusion of a contract.

 

The main subject of the decision in question is the e-commerce giant Amazon EU, which was brought before the German courts by the Federal Union of Power Communities and Consumer Associations (‚the Federal Union‘). The Federal Union asked to ascertain Amazon’s failure – in this case, in relation to the website www.amazon.de – to comply with the legal obligation to provide consumers with effective means of contact with the online platform.

According to the German Federal Union, in particular, Amazon’s callback service did not comply with the information requirements laid down by law, since the consumer has to go through several steps to get in touch with an interlocutor of that company. The infringement therefore relates to the German law which requires the trader – before concluding a distance or off-premises contract – to provide his telephone number in any event.

The German Federal Court of Justice, before which the case was finally brought, asked the Court of Justice whether the Consumer Rights Directive (EU Directive 83/2011) precludes such national legislation and whether the trader is obliged to activate a telephone or fax line or a new e-mail address to enable consumers to contact him. The Federal Court also referred the matter to the EU Court of Justice to determine whether an e-commerce platform such as Amazon could use different means of communication, such as an instant messaging or telephone callback system.

In its judgment of 10 July 2019, the EU Court ruled that the Directive precludes such national legislation, since the Directive does not in any case oblige the trader to activate a telephone line, or fax line, or to create a new e-mail address to allow consumers to contact him. The directive requires that consumers be informed of such means of communication only if the trader has already made them available. At the same time, the Luxembourg courts found that the directive requires the trader to make available to the consumer a means of communication which guarantees direct and effective communication, in order to ensure a high level of consumer protection, consumer information and consumer security in transactions with traders.

The possibility for the consumer to contact the trader quickly and to communicate effectively with him is of fundamental importance for the protection and effective enforcement of the consumer’s rights and, in particular, the right of withdrawal. However, the Court noted that a fair balance must be struck between a high level of consumer protection and the competitiveness of undertakings, as set out in that directive, while respecting the freedom to conduct a business of the entrepreneur, as enshrined in the Charter of Fundamental Rights of the European Union.

Consequently, the Court held that it is a matter of national courts to assess whether the means of communication made available to the consumer are capable of safeguarding the consumer’s rights, since it is not in any event mandatory to provide a telephone number and the operator is able to prepare and use other means of communication, provided that they are effective.


THE EU GENERAL COURT CONFIRMS THE INVALIDITY OF THE TRADEMARK ‚NEYMAR‘ REGISTERED BY A THIRD PARTY TO THE FAMOUS FOOTBALL PLAYER

20/06/2019

On May 14, 2019, the General Court of the European Union (Case T-795/17) dismissed the appeal brought by Mr. Carlos Moreira against the decision of EUIPO upholding the application for a declaration of invalidity of the trademark „Neymar“, brought by the football player Neymar Da Silva Santos Júnior (Neymar).

 

In 2013, Mr. Moreira registered the European word trademark ‚NEYMAR‘ for clothing, footwear and headgear. A few years later, the well-known football player Neymar filed an application for invalidity of the trademark on the ground of bad faith, pursuant to Article 59(1)(B) of Regulation 2017/1001, which the Cancellation Division of EUIPO granted in 2016. That decision, challenged by Mr. Moreira, was further confirmed by the second Board of Appeal of EUIPO, which ruled on the appeal in 2017.

Mr. Moreira therefore brought an action before the General Court of the European Union for annulment of the EUIPO’s decision to appeal on several grounds. Although he was aware of the existence of the player at the time of the application for the trademark ‚NEYMAR‘, Mr. Moreira claimed that he had not been aware of his international reputation, since the player in question had not yet arrived in Europe; in his view, purely phonetic reasons had led him to choose the sign ‚NEYMAR‘.

According to the applicant, bad faith could only have been recognized in the registration of the trademark if the procedure had continued despite the opposition of the footballer, which was not the case here. Moreover, when the application was filed, the name NEYMAR was neither protected as a trademark nor used as such.

The grounds put forward by the applicant were not considered convincing by the EU General Court, which rejected the appeal on May 14, 2019 and upheld the decision of EUIPO declaring the trademark ‚NEYMAR‘ invalid.

In first place, the evidence presented by Neymar in the proceedings before EUIPO shows that the Brazilian football player was known internationally by his given name, and that he was famous in Europe, for his performance with the Brazilian national team, several years before his transfer to FC Barcelona in 2013 and, in particular, before the date of filing of the trademark application.

Secondly, the applicant Mr. Moreira had a qualified knowledge of the world of football, having also filed, on the same day, a trademark application for the sign „IKER CASILLAS“, which is the name of another famous Spanish football player. Given the applicant’s knowledge of the world of football, and given the coincidence between the trade mark ‚Neymar‘ and the name of the football player, it is impossible that Mr. Moreira was not aware of the existence of the football player at the time of filing the application for registration of the contested trademark.