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IP WEEKLY UPDATES (HOT TOPICS)

6/06/2023

THE WARHOL-GOLDSMITH CASE: ‘FAREWELL’ FAIR USE?

 

“Original works, like those of other photographers, are entitled to copyright protection, even against famous artists”, when the derivative work created is not sufficiently distinguishable from the original: this is the ruling of the US Supreme Court in the case that the photographer Lynn Goldsmith brought against the Andy Warhol Foundation in 2017.
Upon the death of singer Prince in 2016, the famous magazine “Vanity Fair” decided to celebrate the artist by using for its cover one of the 16 photographic portraits made by Andy Warhol in 1984, also known as “The Orange Series” or “The Prince Series”. For the production of these works, however, Andy Warhol used some shots of Goldsmith from 1981, for which no consent had been obtained.
The Supreme Court, called upon to decide on the case, ruled on May 18th that Warhol’s use constituted an infringement of Goldsmith’s copyright, giving a more restrictive application than in the past of the test of fair use in connection with the phenomenon of the so-called appropriation art, understood as an artistic current that is based on the appropriation of previous works of art, modifying them in a transformative way. According to the judges, in fact, the images by Andy Warhol that appeared on the cover of “Vanity Fair” were not sufficiently different from the original, and therefore did not meet the requirement of transformative use. In fact, there are already important precedents in this respect, such as the well-known case concerning the photograph of Jeff Koons’ “8 puppies” (Rogers v. Koons, April 2, 1992, 960 F.2d 301). The Supreme Court’s decision confirms this orientation and could have important consequences – at least on the commercial uses of appropriative art.


IP WEEKLY UPDATES (HOT TOPICS)

16/05/2023

NEW DEVELOPMENTS IN THE NEGOTIATIONS BETWEEN SIAE AND META: A PROVISIONAL AGREEMENT HAS BEEN REACHED UNTIL OCTOBER 6th, 2023

 

The copyrighted music tracks that had been removed a few weeks ago from Facebook and Instagram as a result of the difficult negotiations involving Meta and SIAE are now available again. The solution found by the parties is provisional and consists in the extension of the same conditions provided for in the licence agreement that expired in 2022 – for the time being, only until 6 October 2023.
The issue, therefore, certainly cannot be considered solved, but the agreement undoubtedly constitutes an important step in the definition of a new understanding – as well as being advantageous for both parties.
In fact, Meta, on the one hand, will be able to benefit for a few more months from the more favourable conditions set out in the old licence agreement – and will be able to turn around on the point of the removal of music tracks, which had also been the subject of an investigation by the Italian Antitrust Authority for the abuse of economic dependence to the detriment of the music market – and SIAE, on the other hand, will be allowed to continue to effectively protect authors even during the negotiations.


LOUBOUTIN CASE: INTERESTING DECISION BY THE COURT OF JUSTICE OF THE EUROPEAN UNION ON THE LIABILITY OF E-COMMERCE SERVICE PLATFORMS FOR USE OF A TRADEMARK WITHOUT THE HOLDER’S CONSENT

4/05/2023

The Court of Justice of the EU has ruled that an e-commerce service provider who uniformly presents offers on its platform to users, jointly communicating its own advertisements and those of third-party sellers by adding its own distinctive signs to all the advertisements, and also offers third-party sellers storage and shipping services for the goods, may be held liable for the unlawful use of the trade mark by third parties, if the average informed and reasonably attentive user may be led to believe that there is a connection between the services offered by the provider and the trademark.

 

French fashion designer Christian Louboutin, the holder of the European Union trademark consisting of the famous red sole on certain footwear models, brought proceedings in both Belgium and Luxembourg asking the national courts for damages and to stop the infringing use of the trademark by the e-commerce platform Amazon. Louboutin argued that the e-commerce giant was liable for trademark infringement, even though Amazon did not directly sell the shoes bearing the trademark, but insofar as it played an active role in the commercial use of the sign. The stylist’s lawyers have shown how on the platform there were advertisements of products sold by third parties grouped with those sold by Amazon and that the latter had included all the advertisements in its commercial communication. According to Louboutin, this activity cannot therefore be classified as mere online service intermediation.
The focus of the trademark holder’s complaint was the way in which the service offered by Amazon online is articulated, which uniformly presents its own product offerings, as well as those of third parties, without any differentiation as to their respective origin. Moreover, the service offers at the request of third parties additional activities consisting, in particular, in the storage and shipping of products, informing potential customers that Amazon performs these services.
The present case must be examined in the light of Article 9(2)(a) of EU Regulation No. 2017/1001 on the European Union trademark, according to which the proprietor of a European Union trade mark is entitled to prohibit third parties, without his consent, from using for commercial purposes any sign where: “the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered”. Having said that, the national courts have referred several questions to the Court of Justice of the European Union for a preliminary ruling, particularly whether in assessing the applicability of the rule indicated to Amazon’s conduct it is necessary to consider the perception of the platform’s users.
On December 22nd, 2022, the CJEU issued its judgment, ruling that the holder is entitled to prohibit the use of the trademark by an e-commerce service provider where the latter’s activities lead the normally informed and reasonably attentive user to draw a connection between the services offered by the provider and the trademark. Specifically, this circumstance occurs where the user is reasonably led to believe that the goods bearing the trademark in question are sold directly by the provider of the platform.
According to the Court of Justice, it is of particular relevance in the assessment of the case that the provider uniformly presents offers to users on its platform, jointly communicating its own advertisements and those of third-party sellers and adding its own distinctive signs to all the advertisements, and also offering third-party sellers storage and shipping services for the products.
The decision would appear to be at odds with the Court of Justice’s previous guidance, which had held in other decisions that the activity of the ecommerce service provider consisted merely in providing technical means to use a trade mark, and as such was not to be regarded as a decisive circumstance for finding that the service provider made use of the trade mark within the meaning of Article 9(2)(a) of EU Regulation No. 2017/1001.
The Court itself made it clear that the present case, however, differs from the previous ones due to the particular conduct of Amazon in communicating to users the offers of products seen by third parties, which are presented in a consistent manner with the offers of products sold directly by the provider of the e-commerce service, as well as the circumstance that the provider also provides additional storage and shipping activities for the products purchased on its platform.
In conclusion, the Court of Justice’s interpretation would tend to favour trademark protection also on the internet. It will now be up to the national courts of Belgium and Luxembourg to decide on the merits and to decline the principle of the European court in the concrete case.


IP WEEKLY UPDATES (HOT TOPICS)

19/04/2023

AGCOM SUBMITS TO PUBLIC CONSULTATION THE DRAFT REGULATION IMPLEMENTING LEGISLATIVE DECREE NO. 177 OF 8 NOVEMBER 2021 ON COPYRIGHT

 

On March 6th, 2023, AGCOM submitted for public consultation the “Draft Regulation implementing Articles 18-bis, 46-bis, 80, 84, 110-ter, 110-quater, 110-quinquies, 110-sexies, 180-ter of Law No. 633 of 22 April 1941, as amended by Legislative Decree No. 177 of 8 November 2021”, as set out in Annex A to Resolution No. 44/23/CONS, in order to obtain useful elements of evaluation from the stakeholders to deepen the dynamics of the sector. Industry operators, institutions and organisations representing users and consumers may submit their contributions to the consultation by 5 May 2023.
The text of the resolution with its annexes is available on the official website of the Communications Authority at the following link.


IP WEEKLY UPDATES (HOT TOPICS)

11/04/2023

ARTISTS AND PLATFORMS: A DIFFICULT RELATIONSHIP. ITALIAN ACTORS vs. NETFLIX

 

The collecting society Artisti 7607, which has been engaged for years in the negotiation, collection and distribution of rights related to copyright and has been founded, among others, by Elio Germano, Neri Marcorè and Claudio Santamaria, has decided to take legal action against the American giant Netflix. At the root of the dispute, there would be an uncooperative attitude on the part of the Californian company, which allegedly uses protected audiovisual works without providing collecting societies with data on exploitation, views or revenues, thereby also failing to fulfil its obligation to pay artists and performers with an “adequate and proportionate” remuneration as required by the Copyright Directive. The consequence – in the view of the Roman collecting society – is that artists would apparently be paid particularly small and disproportionate amounts when compared to the success of the works in which they take part.
The initiative is hence part of the more general conflict that is affecting the world of art and entertainment in Italy and which involves authors and artists – on the one hand – and platforms – on the other – in the search for a fair balance between market logics and copyright protection.