The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 25 September 2017

Italian Supreme Court confirms availability of copyright protection to TV formats

The TV format at the centre of the case
decided by the Supreme Court
TV formats may be incredibly valuable, and be sold in franchise in several countries. As a result, also disputes relating to TV formats may be complex, lengthy and with uncertain outcomes, as the current litigation relating to The Voice, for example, demonstrates [here and here].

In addition to the complexities of individual cases, a further difficulty is defining what kind of legal treatment TV formats are subject to in the first place. Discussion of the type of protection available has been, in fact, rather contentious in a number of countries. 

On the one hand, there are jurisdictions (like the UK), in which subject-matter like TV formats may not to be really suitable for inclusion in the scope of protection of an IP right like copyright (also for difficulties related to the closed subject-matter categorisation envisaged by the Copyright, Designs and Patents Act). On the other hand, there are countries which have managed to accommodate protection of TV formats within their own copyright regimes. 

An instance of the latter approach is Italy [see here]

As reported by DIMT - Diritto Mercato Tecnologia, in its 2017 decision in RTI Reti Televisive Italiane Spa v Ruvido Produzioni Srl, decision 18633/17 (27 July 2017), the Italian Supreme Court (Corte di Cassazione) confirmed that TV formats can be protected under the Italian Copyright Act (Legge 633/1941), and clarified at what conditions such protection is available.   

The Court recalled that the Italian Copyright Act does not contain a notion of 'format'. However the definition provided in Bulletin 66/1994 of SIAE, which also allows authors of formats to deposit them, should be taken into account. 

The Italian Supreme Court
According to SIAE's document, a work can qualify as a format if it displays - as relevant elements - logical and thematic connections composed of a title, a basic narrative structure, a scenography and fixed characters, which result in a structure that can be repeated. This means that, for instance, a TV programme that mainly consists of improvisations lacks such repetitiveness and cannot be considered a format (Supreme Court, decision 3817/2010).

Other requirements are that the format possesses a programmatic structure that displays a modicum of creativity. This requires the identification of, at least, the structural elements of the story, as well as its space and time collocation, the main characters and their personalities, and the main thread of the plot. Lacking these elements, copyright protection shall not be available, because what one would try to protect is still so vague that it can be regarded as an idea, rather than an expression thereof.

In light of earlier case law, [translation is mine]:

"this Court intends as a format for a TV programme, protectable as an original work under copyright law, a sketch for a programme, a plot outline defined in its essential elements, generally intended for a serial TV production, as resulting from a brief description."

In conclusion, under Italian law a TV format may be protected by copyright if it has both a structure that can be repeated and certain fixed elements, as well displaying a modicum of creativity. With regard to the latter, case law seems consistent in requiring that the TV format is not novel, but rather the personal and individual expression of its author.

Book Review : What if we could reimagine copyright?

Let's fix copyright.
rtwork by Prime Altemus
Have you ever wondered 'what if we could rewrite copyright' but did not let your imagination run wild, thinking that copyright law was a lost cause anyway? If so, Giblin and Weatherall's latest book‘What if we could reimagine copyright?’ should be next on your reading list (full electronic version available here).

This Kat bets that even the most ‘copyright skeptic’ of our readers would read this edited collection cover to cover, if only they dared to venture into the darkest waters IP law has to offer: imagined copyright. Fear not, this Kat professes, for there are no esoteric paradigms or convoluted rhetoric in sight with this book. Quite the contrary, this collection of essays put together by Rebecca Giblin and Kimberlee Weatherall is wonderfully clear and is accessible to readers with limited expertise in copyright law.

The best thing about this book is perhaps the fact that you do not need to have much 'faith' in the copyright framework in the first place to be taken by its discussion. Chapter to chapter, international experts review and propose surprisingly pragmatic suggestions to reform our copyright laws. It is a refreshing change from the usual ‘doom-and-gloom’ which often taints the copyright literature, with its tendency to, as a matter of habit, dismiss any ideas of fundamental reform. Giblin and Weatherall dedicate their collection ‘to everyone who believes we can fix copyright’. Count me in.

Pursuit of the public interest

The contributors to this volume do not always agree on what copyright ought to ‘do’ or how far it should ‘go’ but they all concur on one thing: copyright should strive to defend and protect ‘the public interest’. Reading these last three words, you have might have had the following instinctive response: ‘Oh dear, not that thing again’. If you have, do not worry, the editors have accounted for your frustration in their introduction.

Public interest? Not that thing again!
Giblin and Weatherall's opening chapter briefly recounts the ways in which the notion of ‘public interest’ has been shunned by scholars, lawyers and economists alike, as an empty concept offering no practical relevance in practice. Although the editors acknowledge this shortcoming, they stand strong in defending its value in the context of copyright, siding with Ginsburg on it (p.19).

To keep the public interest as a valuable cardinal principle, they argue, we would have to define the notion of ‘public interest’ in isolation from ‘the vested interests [which] tend to dominate and distort group interests at play’ (p. 14). This ‘stripping away’ must begin with our existing frameworks, so that we can start afresh in defining new policy goals (p. 14). In their place, Giblin and Weatherall anticipate a copyright model that would be driven by a rationale blending instrumentalist and naturalist theories among others (p. 16). Whilst they do not pretend to have found the perfect definition for the ‘public interest’ our re-imagined copyright law should strive to serve, their draw their bottom line on the consensus that ‘we have a shared interest in encouraging and supporting creativity; in recognizing the rights and interests of creators, in a rich and accessible culture, and in technological and economic progress’ (p. 18). This goal can only achieve if we attempt to devise the law from the perspective of every stakeholder, including in this group creators, users, educators and publishers at the very least.

Despite the editors’ efforts to formulate the simplest, least biased, manifesto for copyright, one might wonder whether they are not in fact perpetuating one of the most fundamental prejudice of western culture onto which copyright law is based: assuming that more cultural ‘noise’ (read accessible creative or cultural expression) is desirable. At least, this is how I first interpreted the authors’ declared goal: ensuring ‘a rich and accessible culture’ in order to achieve ‘technological and economic progress’. (As I write this, I am aware that I might have projected my own ‘western’ bias onto Giblin and Weatherall’s proposition, a point which they address in their introduction looking at critical frameworks, such as Ho’s representative theory, which help freeing thinkers and policy-makers of their own prejudice, or ‘privileges’ as they put it).

Some have contested copyright’s lack of appreciation for ‘silence’ building on Foucault’s and Buddhist’s critique of western culture’s propensity to underestimate silence as a form of expression or dialogue (see Matt Williams pp.73-81). Silence, understood as valuable outcome, does not feature in the copyright framework. Neither does it, it seems, in this edited collection, which seeks to have more works available and re-usable for more works to be recreated in turn. Should a (re)imagined copyright make space for ‘silence’? Would it be a useful value, or yet another concept too difficult to grasp to be meaningful in practice?

Some of the key themes covered in the collection

The individual contributions to this volume have answered by the question ‘if we redesigned copyright from scratch, what might it look like?’ covering an impressive range of topics. The subsequent comments summarize some of the volume's key contributions.
This Kat's (re)imagined copyright
Image by Ronald Searle
from 'The Big Fat Cat'

Autonomous art
In his chapter, Martin Senftleben envisages a copyright model that would account for the arts’s inherent resistance to rationales of commercialisation and mass-dissemination. Senftleben takes us back to the basics of how ‘the arts’, as a field, define themselves as ‘autonomous’ from commercial success, and in that way are incompatible with the logic of copyright as we currently understand it. To address this conflict, Senftleben proposes two things: recognizing a right to transformative use going beyond what the quote and parody exceptions allow (p. 39-50); and refining remuneration mechanisms to have, for example, collecting societies re-direct funds to independent, less commercially successful, creators (p. 65). 

Copyright as access right
Christophe Geiger proposes to frame copyright as an access right rather than as a legal right to exclude. As radical as this shift in focus may read, Geiger stresses that it is in fact compatible with the core rational of copyright (of course) but also with the legal frameworks surrounding copyright such as human rights. He concludes by putting forward practical measures which would contribute to re-calibrating copyright as an access right such as the recognition of users’ rights enforceable by Courts (pp. 94-96), enforcing a ‘three-step-test to gain access to copyright protection’ (pp. 97-98), and a fair remuneration for creators by adapting contract law or introducing statutory licenses to such end (p. 207).

Conditions to copyright protection
R Anthony Reese’s contribution tackles the infamous question ‘what should copyright protect?’ in a (re)imagined copyright. The chapter explores various parameters that legislature (his preferred method of norm-making in this case (p. 119)) may take into consideration to confer copyright in the future. Those include concepts of: ‘independent creation’, ‘creativity’, size or fixation. In many regard, Reese’s recommendations would confirm existing rules of copyright. On the question of 'creativity', Reese could have delved by discussing Geiger’s proposal to make use of Buydens’s theory of quasi-creation, mentioned in the preceding chapter.

Reese’s main contribution lies in his recommendation to exclude from protection two kinds of subject-matter: ‘edits of government’ (p. 129-130) and ‘subject-matter protected more appropriately elsewhere’ (p. 133). Otherwise, the author concludes that his (re)imagined copyright would not be much different as far as the conditions to copyright protection is concerned.  In his view, ‘the public interest by protecting only works within that subject matter that are independently created, fixed and minimally creative, and that contain an appreciable amount of authorial expression’. Fixing copyright law would lie somewhere else.

Copyright as a single 'use right'
Re-imagined Kat
In his piece, Jeremy de Beer does not fight the liberal nature of copyright law. Rather, his reform proposals aim to improve the function of copyright as a tool that operates in liberal markets. De Beer identifies copyright’s ‘bundle of rights’ as the cause of much friction in transactions and looks at replacing it with a single, streamlined, ‘use right’ to avoid ‘royalty stacking’. Although all stakeholders would benefit from low-cost simplified transactions, de Beer recognizes that implementing a single ‘use right’ is unlikely to lead to a fair distribution of the benefits yielded by copyright. He writes ‘Free markets are not known for their ability to achieve distributive justice’ (p. 162). For this reason, other measures will have to be put in place to introduce distributive justice in his (re)imagined copyright. De Beer proposes four mechanisms: stronger users’ rights (rejoining Geiger on this point); the formation of stronger contracts through collective bargaining;  class proceedings to defend individual creators’ interests; and, certification schemes encouraging ‘fair trade’ branding to inform consumers and incentivize a fair distribution of benefits by intermediaries.

Duration of protection
The question of copyright duration is also of the party in this volume, and covered by none other than Rebecca Giblin herself. For provisions on duration to stay true to the many underlying rationales of copyright, a two-tier term system would be preferable, whereby authors would be given an automatic fixed initial term of protection, followed by a second term of protection granted upon registration by the artist. Giblin names this second stage of protection ‘the creator right’, and frame it as a reward stage, the first term of protection being understood as ‘an incentive stage’. Giblin’s proposition brings back the question of registration in the context of copyright, which is further explored by Dev S Gangjee in his chapter ‘Copyright formalities: A return to registration?’.

Fixing copyright: Getting the moon?Image by Ronald Searle
Summing up

Whist the title and premise of this volume may read as an encouragement to make tabula rasa of existing copyright laws, none of the contributions actually propose to do so. They all envisage working with the current system, rather than against or without it. In doing so, their proposals tap into the flexibility existing within the current copyright framework, a flexibility we might tend to underestimate. After all, all copyright law would need, it seems, is a shift in thinking. This edited collection is the preamble of such a movement, which this Kat hopes will catch momentum and encourage new, bolder, proposals for reform to emerge. 

In the meantime, Giblin and Weather ‘What if we can (re)imagine copyright?’ is a must-have for the 2017 reading lists of any teaching programs featuring copyright. The collection’s original approach, clarity of writing and breadth of topic make for an comprehensive book accessible to undergraduate and postgraduate students alike. ‘What if we can (re)imagine copyright?’ is also within the reach of  anyone interested in copyright reform who may not have an extensive legal background. 

The book: Rebecca Giblin and Kimberlee Weatherall (eds), What if we could reimagine copyright?(Australian National University Press, January 2017) Online version: FREE. Buy Print: $53. Pages: 332.  ISBN (print): 781760460808 ; ISBN (online): 9781760460815.

Saturday, 23 September 2017

Around the IP blogs

Jeremy Phillips receives Goldring Award

Earlier this week IPKat founder and longtime contributor, as well as Class 46 founder and MARQUES Social Media Coordinator, Jeremy Phillips (right) 😍😍😍, was presented with the second annual David Goldring Volunteer Award during the Annual Conference in Prague. 

The Award was established last year in memory of David Goldring, who supported MARQUES for many years, notably as Treasurer. The first award was presented in David's memory to his wife, Dee, at last year's Annual Conference. 

Presenting the award, MARQUES Chair Gregor Versondert paid tribute to Jeremy's long and influential career in IP, and his significant contribution to MARQUES.  

On receiving the award, Jeremy noted that he had attended the very first MARQUES conference in Vienna with David Goldring, when they had both been young practitioners. 

Jeremy added that one of his grandsons now plays football at David's old club, and he regularly sees the plaque that commemorates David's contribution there. 

Congratulations Jeremy! 

CJEU addresses trade marks and PDOs in Port Charlotte judgment 

Paulo Monteverde of the MARQUES Geographical Indications Team reports on the recent interesting decision from the CJEU in the "Port Charlotte" case. The CJEU confirmed the General Court decision and concluded that “Port Charlotte” is not an evocation of the Protected Denomination of Origin (PDO) PORTO or PORT (Case C-56/16 P). 

Brexit and design rights

The European Commission has published a paper on intellectual property rights after Brexit, which was sent to the EU27 ahead of the Council Working party (Article 50) on 7th September 2017. The paper covers unitary rights including registered Community designs (RCDs) and unregistered Community designs (UCDs). It sets out five "general principles". Read more about the paper in this post on our sister blog, Class 46.

Joint JIPLP-GRUR event - A Distinctive Mess? Current Trade Mark Law and Practice in the EU and UK

Since January 2013, the Journal of Intellectual Property Law & Practice (JIPLP), which IPKat contributor Eleonora co-edits, has partnered with the German Association for the Protection of Intellectual Property (GRUR) to exchange content between JIPLP and GRUR Int., as well as organising events aimed at IP enthusiasts - wherever based!

On Friday, 24 November 2017, join JIPLP and GRUR for an exciting half-day event devoted specifically to the latest trade mark developments and trends in the EU and UK.

The conference will be held at the beautiful London offices of Allen&Overy. It will consist of two panel sessions composed of leading IP practitioners and academics who regularly contribute to JIPLP and GRUR Int, and feature a keynote address by Sir Richard Arnold. Fancy attending? Register here!


Those following the tenofovir SPC litigation in Europe will be pleased to hear that the High Court of Paris has recently handed down a decision in relation to Gilead's SPC based on EP0915894. Denis Schertenleib, who acted for Mylan in these proceedings, has kindly provided a short summary of the case, along with a copy of the decision and an English translation.

Friday, 22 September 2017

German Federal Court of Justice rules that GS Media presumption of knowledge does not apply to Google Images

Is Google responsible for the lawfulness of the images displayed through its Images search service?

According to the German Federal Court of Justice (Bundesgerichtshof - BGH), the answer is NO.

In a judgment delivered yesterday (I ZR 11/16 - Preview III) the BGH relied on the decision of the Court of Justice of the European Union (CJEU) in GS Media, C-160/15 [Katposts here] and dismissed the action that the operator of a photography website had brought against Google and its search engine.


The applicant’s website includes a restricted (password-protected) area to which customers can only access upon payment of a fee. Once there, customers are able to download the photographs placed in this area to their computers.

Some of these photographs were re-uploaded unlawfully by customers onto freely accessible websites. Relevant thumbnails were subsequently indexed on Google Images from such freely accessible sites.

According to the applicant, by indexing and displaying thumbnails of the photographs to which it owns the copyright, Google had infringed its own exclusive right of communication to the public pursuant to § 15(2) UrhG [the German Copyright Act, by which this Member State transposed Article 3(1) of the InfoSocDirective into its own national law].

The BGH held that Google had not infringed the applicant’s copyrights for displaying thumbnails of and links to photographs publicly available on the internet without the applicant’s consent.

Visual map on linking after GS Media, available here
GS Media and the presumption of knowledge for profit-making operators

As mentioned, to reach this conclusion the BGH relied on the CJEU decision in GS Media, according to which the posting of a link to a freely accessible website on which a copyright work is available without the permission of the relevant rightholder falls within the scope of Article 3(1) of the InfoSoc Directive if the link provider knew or could reasonably know that the content linked to had been made available without the rightholder’s consent.

The BGH also recalled that in GS Media the CJEU had stressed the importance of the internet to freedom of expression and of information, and that hyperlinks contribute to its sound operation as well as to the exchange of opinions and information in that network characterized by the availability of immense amounts of information [para 45 of GS Media].

However, in GS Media, the CJEU also stated that if the link provider operates for profit [as is the case of a search engine like Google], then

“it can be expected that the person who posted such a link carries out the necessary checks to ensure that the work concerned is not illegally published on the website to which those hyperlinks lead, so that it must be presumed that that posting has occurred with the full knowledge of the protected nature of that work and the possible lack of consent to publication on the internet by the copyright holder. In such circumstances, and in so far as that rebuttable presumption is not rebutted, the act of posting a hyperlink to a work which was illegally placed on the internet constitutes a ‘communication to the public’ within the meaning of Article 3(1) of Directive 2001/29.” [para 51 of GS Media]


According to the BGH this presumption does NOT apply to search engines and for links displayed by search engines because of the particular importance of search services for the functioning of the internet. According to the German court, the provider of a search function cannot be expected to check the lawfulness of the images automatically retrieved from publicly accessible websites.

Google Image Search for IPKat

The BGH’s take on GS Media is an interesting one, and it will be important to read the full text of the judgment once it becomes available.

It appears that the German court’s decision was justified by concerns relating to the possible disruptive effects that a strict application of CJEU case law would have on the broader functioning of the internet. In this sense, the decision echoes the tones used – way more vigorously than what the CJEU judgment does – by Advocate General (AG) Wathelet in his Opinion in GS Media [here]. The AG rejected the very idea that linking should fall within the scope of copyright protection at all. Holding otherwise “would significantly impair the functioning of the Internet and undermine one of the main objectives of Directive 2001/29, namely the development of the information society in Europe. Such an interpretation could also distort the ‘fair balance of rights and interests between the different categories of rightholders, as well as between the different categories of rightholders and users of protected subject-matter’.” [para 77 of the AG Opinion].

This said, it does not appear that – after GS Media – CJEU jurisprudence on the right of communication to the public has become less stringent: the decisions in Filmspeler [here] and Ziggo [here] are telling instances.

Finally, with particular regard to the issue of image search engines, readers might remember that last year France adopted a law (LOI n° 2016-925 du 7 juillet 2016 relative à la liberté de la création, à l'architecture et au patrimoine) [this is the version currently in force] that would require search engines displaying thumbnails of copyright works to be part of a compulsory collective management system for the reproduction of photographs and images [here and here].

After France and Germany (and amidst all activity and activism of the CJEU) it will be crucial to see how legislatures and courts - both around the EU and at the EU level - will position themselves in relation to online issues.

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