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.
Showing posts with label Spain. Show all posts
Showing posts with label Spain. Show all posts

Thursday, 18 September 2014

BREAKING NEWS: Spanish court refers new case to CJEU on private copying levies

Wait a moment: who should bear
the levy system?
From enthusiastic and invariably helpful Katfriend Fidel Porcuna (Bird&Bird) comes the news that the Spanish Supreme Court has just referred two questions to the Court of Justice of the European Union (CJEU), in the context of an administrative appeal filed by a number of collecting societies (VEGAP, EGEDA and DAMA) and concerning the legitimacy of Spanish system of private copying levies. 

The two questions referred are:

A – Is a copyright levy system, that - taking as a basis the estimation of the actual damage - is financed through the State budget thus not making possible to guarantee that the costs of this compensation are only supported by the users of the private copies (as opposed to the non-users), compliant with Article 5(2)(b)b) of Directive 2001/29?

B – If the answer is in the affirmative, is it compliant with Article 5(2)(b) of Directive 2001/29 that the total quantity set aside by the government for this compensation, which is calculated in view of the estimation of the actual damage, is set within [or conditioned by] the budget restrictions for each financial year?

Fidel adds: "As you know reform of current Spanish Intellectual Property Law was passed by the lower chamber of Parliament on 26 July 2014 and was now at the high chamber's agenda for a definitive approval that everyone took it for granted."

The Royal-Decree 20/2011, in force as of 1 January 2012, established  that compensation for private copying would no longer be obtained through a levy on reproduction devices but rather from the State budget (fixed at EUR 5m per each year 2012 and 2013), thus suppressing the collecting obligations for the industry. It may be difficult to determine now how this calculation would be made. A basic principle is to set a fair balance according to the harm caused to copyright owners as a result of copying by individuals for private use, but not for professional or business use. Calculation and payment have been left for the implementing regulations to define. Objective criteria were nonetheless set by Royal Decree 1657/2012 in force as of 8 December 2012, whose draft was discussed here.

Will this new CJEU reference prevent final approval of Spanish IP reform? Readers will remember in fact that one of the main points of proposed reform concern private copying and the levy system.

In its press release the Spanish Ministry of Education has stated that, no, this new reference will not have any effect on the final stage of the legislative process. However, rumours reported in the El Cultural and El Confidencial suggest that, yes, this new reference means that, not only were proceedings stayed before the Supreme Court, but also approval of IP reform could be now stayed pending the decision of the CJEU.

More press coverage herehere, and here.

Tuesday, 15 April 2014

Tuesday Tiddlywinks

Authors Guild files appeal against Google. Do you remember the Google Books copyright litigation saga? As this Kat reported back in December, it is still far from being concluded. Following the late 2013 summary judgment ruling in which Judge Denny Chin held that Google's activities were to be considered as fair use of copyright-protected works within Section 107 of the US Copyright Act [see here and here], on Friday last the Authors Guild filed its appeal before the US Court of Appeals for the Second Circuit. As reported by Publishers Weekly, in its appeal the Authors Guild is arguing that Judge Chin's ruling was deeply flawed and relied on an “unprecedented, expansive and erroneous interpretation of the fair use doctrine.” Watch this space for further developments!

Back in the UK, here's a sad Easter story. Would you deny a 3-year child the pleasure of having his first name iced on a chocolate Easter egg? Apparently this is what happened to little Rooney Scholes. A neighbour of his went to the Bury's Thornton store looking for a treat for the child, and asked to have his first name iced on a chocolate Easter egg. The store managers refused, on grounds that Manchester United hero Wayne Rooney could sue them for "copyright" infringement. Eventually, little Rooney got his Easter egg, but only because the neighbour consented to having his surname added onto the egg surface. This Kat has the slight suspicion that this story has nothing to do with copyright, but is nonetheless a further demonstration [do you remember the British Library story?] of how often our beloved copyright is used to scare people off with no apparent reason. As to other possible IP grounds, eg trade mark law, they look equally ... groundless.

Can this be true? This Kat was truly shocked when she read on Twitter yesterday (courtesy of @Cgarciaberned) that a new study funded by a coalition of music, film, publishing and videogame companies has found that 84% of content consumed in Spain is from unlicensed sources. This actual "big" data comes at a time when Spain is reforming its IP regime, as Katfriend Fidel Porcuna (Bird&Bird) explained a few weeks ago.

Around the weblogs. On The 1709 Blog Jeremy reports on EU external competence to negotiate copyright protection treaties and the recent Opinion of Advocate General Sharpston in Case C-114/12 European Commission v Council of the European Union. On Class 46 former guest Kat Laetitia tells a story of cows and cream fudge, while on Art and Artifice Simone reports of how priceless art has been recently discovered in a San Francisco storage facility.

Venue for Post-Fordham Copyright Catch-Up. As Jeremy announced last month, on 6 May the Post-Fordham Copyright Catch-Up event will take place. The venue for this seminar will be the lovely London offices of Olswang LLP. There are still places available, and you can register here.

A summer school in Moscow. From 30 June to 4 July 2014 the National Research University - Higher School of Economics will be hosting the International Summer School on Cyber Law "in a beautiful green area in Moscow". The School is covering accommodation costs and meals of selected participants. Further information is available here.

Sunday, 16 February 2014

An ancillary right over news to be soon introduced (also) into Spanish law?

Germany did it ...
It's really all about links these days. 

Following last Thursday's hyperlinking decision of the Court of Justice of the European Union (CJEU) in Case C-466/12 Svensson [here and here], it is already (and again) time to think about what kind of legal protection (if any) may vest on ... hyperlinks (and snippets). 

Readers will certainly remember that in 2013 Germany adopted the Leistungsschutzrecht für Presseverlege [‘LSR’, for which this Kat has no particular sympathy here and here], also known in jargon as Lex Google

This piece of legislation extended press publishers’ copyright by granting them an ancillary right over news content. The newly created sections 87f-h of the German Copyright Act provide for the exclusive right of press publishers to exploit their content commercially for one year, thus preventing search engines and news aggregators from displaying excerpts from newspaper articles without paying a fee.

For a while, also France (here) and Belgium (here) considered doing something similar before abandoning (for €€€) this idea. 

In late 2013, Italy too seemed to like the German solution (here). Italian Government adopted a plan known as Destinazione Italia which - among other things - is (was?) composed of a bill that would contain measures in favour of Italian press publishers, including the introduction of what may look like a new ancillary right over news content. Use of the conditional is now necessary, since we do not know what will be the fate of Destinazione Italia, following resignation of Enrico Letta as Prime Minister and the creation of a new government led by Matteo Renzi.

While waiting to know what will happen in Italy, it seems that there might be also another country in Europe interested in doing what the Germans did: Spain.

... Italy may do it ...
This Kat learnt from El Mundo and El Pais that on Friday last Spanish Government approved a draft reform of the Ley de Propiedad Intelectual, which includes the introduction of a new ancillary right over ... news content. 

Spanish press publishers might be able to charge search engines [keep reading] for using "non-insignificant" fragments of “information, opinion and entertainment” grouped together [might this imply that only news aggregation services would have to pay?]. Apparently Spanish Government did not clarify the length required for relevant snippets to trigger the right to an equitable remuneration for their use [but this is not unprecedented, as even German LSR does not say].

... Spain will do it?
According to Variety and The Hollywood Reporter (which this Kat happens to consult slightly more frequently than El Mundo), the amount of compensation required for use of news content might be determined by means of an agreement to be reached by relevant stakeholders. 
The Spanish Association of Daily Newspapers (AEDE) welcomed this initiative, calling it "the most important step taken by the Spanish government for the protection of the press” and clarifying that, overall, this is not a demand for subsidies, but rather the quest for a legal framework that would recognise the value of news content and protect it against third parties' misuses. 

This Kat is all in favour of recognising the value of news content. But does this mean that services like those provided by news aggregators tarnish the value of that content? 

Although there have been studies that have concluded in the sense that news aggregators may not be complementary to newspapers' websites but rather have a substitution effect, how can one explain what happened in Germany when the LSR entered into force (that was on 1 August 2013)? 

That very day, in fact, Google News became opt-in in Germany and a number of major German publishers promptly declared their intention to have their content indexed therein [does anyone have more up-to-date data as to how many German publishers have asked to join Google News so far?].

Have you seen
the draft provisions?
In parallel to the proposed new ancillary right over news content, Spanish Government also announced the introduction of fines between EUR 30,000 and EUR 300,000 for those who redirect users towards infringing content. Spanish Minister of Education José Ignacio Wert said that “Spain cannot be Somalia in issues of intellectual piracy”. 

Besides wondering why a parallel was drawn with Somalia as regards (intellectual) piracy, this Kat also wonders whether mere hyperlinking to allegedly infringing content may fall within the scope of copyright protection and, as such, be tantamount to infringement. It is worth recalling the in Svensson the CJEU did not clarify expressly whether any difference should exist between linking to lawful content as opposed to unlawful content, but rather focused on the 'new' public requirement [watch this space, because the Kats will come back on this very issue, ie whether actual lawfulness of content matters].

According to Reuters, a spokesperson for Google in Spain said that the company could not comment on Spanish Government proposed measures because it had not yet seen the exact wording of the intellectual property reform bill. But have any IPKat readers seen it? If so, do let us know!


UPDATE on 17/2/2014: From Katfriend Fidel Porcuna (Bird&Bird) come further details and information: "It seems El Mundo published a filtered version of the proposal here. In addition, please note that the Criminal Code has been also reformed in order to introduce the crime of hyperlinking ("facilitating access to protected contents") with sentences of imprisonment up to 4 years and fines up to 2 provided that certain requirements are met, none of them focusing on the "new" public requirement. Those requirements are (somewhat cryptic): taking knowledge or control of the means facilitating the access or localisation of unlawful works; providing updated, classified lists of hyperlinks (even if these are provided by third-parties); activity not restricted to a mere technical or automatic treatment of the content provided by the third parties without supervision, control or cooperation; and with profit (even indirect) and to the detriment of third parties."  

Tuesday, 4 February 2014

Get harbour safe: Telecinco’s appeal v YouTube dismissed


While this Kat was taking part to the outstanding EIPIN congress in Alicante, he became aware of the fresh decision by the Madrid Court of Appeal in YouTube v Telecinco of 14 January 2014 [Madrid Court of Appeal decision No 11/2014, available here; non-official English translation kindly provided by the Kat-friend Carolina Pina (Garrigues Madrid) available here; the IPKat's note on the first instance decision here]. It's another leading case in the European Internet Service Providers (ISPs) liability saga, and this Kat can’t wait to cover it.

YouTube is one of the most famous video-sharing platform that hosts user-generated contents (UGCs), namely videos, from all around the world.  It’s now owned by Google. Telecinco is a Spanish broadcaster owned by the Italian Mediaset. Some users uploaded on to YouTube video fragments apparently taken from Telecinco’s TV programmes. Telecinco did not appreciate this and in 2008 brought an action against YouTube Llc, alleging copyright infringement by the hosting provider.

In its decision in 2010, the District Court of Madrid dismissed Telecinco’s claims, considering YouTube shielded from liability for UGCs on the basis of the Spanish Law 34/2002, which implemented the E-Commerce Directive 2000/31. Then, Telecinco appealed the first instance decision to the Madrid Court of Appeal on the basis of the three arguments that follow.


First, Telecinco alleged that YouTube could not benefit from the safe harbour provided by the E-Commerce Directive because of its non-neutral approach towards UGCs. Among other things, Telecinco maintained that YouTube required a licence over the UGCs uploaded on its platform and to establish Terms and Conditions for their use, keeping the right to take down certain contents. This would have demonstrated that YouTube was an “active provider”, unable to rely on the E-Commerce Directive’s safe harbour.  Secondly, under the E-Commerce Directive’s safe harbour, Telecinco continued, YouTube’s liability would have to be established in light of its “actual knowledge” of the infringing UGCs hosted, such knowledge being triggered by some previous letters sent to YouTube in which Telecinco generically claimed infringement of its rights and by the fact that Telecinco’s logo appeared in some of the UGCs.  Finally, Telecinco contested the District Court decision not to issue a blanket injunction to stop YouTube using all its videos.

The Madrid Court of Appeal dismissed Telecinco’s claims and fully confirmed the first instance decision as to the applicability of safe harbour to YouTube, the way in which “actual knowledge” may arise and the impossibility of issuing an injunction against future infringements.

First, the Court of Appeal considered that an ISP could be excluded from the scope of the E-Commerce Directive’s safe harbour only insofar as its approach towards UGCs leads it to obtain actual knowledge of the infringing nature of UGCs and/or to perform control over them.

A picturesque safe harbour in Alicante.
In Google France (Joined Cases C-236/08 to C-238/08) and L’Oréal  (Case C-324/09), the Court of Appeal noted, the CJEU clearly stated that the safe harbour applies whenever an ISP “has not played an active role of such a kind as to give it knowledge of, or control over, the data stored”. Thus, in order for the exemptions from liability to be excluded, what most matters is the consequence of the ISP’s approach towards the hosted contents in terms of knowledge and control, rather the active or passive nature [whatever this means, sniffs Merpel] of the approach itself. In light of these principles, the Court of Appeal found that the non-exclusive licence over the uploaded UGCs that YouTube required from its users was a necessary condition for hosting and diffusing the videos while, as stated by the CJEU in L’Oréal  (Case C-324/09, para 115) and Google France (Joined Cases C-236/08 to C-238/08, para 116), the mere fact that and ISP “sets the terms of its service … cannot have the effect of denying it the exemptions from liability”. In addition, the Court found “not censurable” the YouTube’s attempt to adopt measures addressed to distinguish infringements by retaining the right to take down videos infringing third parties’ IP rights. In any event, continued the Court of Appeal, such activities could in no way amount to an active knowledge or to a proactive control over the UGCs. Thus, the E-Commerce Directive still had to be applied to YouTube.

Having said that YouTube was a hosting provider in the meaning of the E-Commerce Directive, the Court of Appeal considered whether Telecinco’s letters listing the titles of the TV programmes allegedly infringed (and not detailing the contested videos’ URLs) or the Telecinco’s logo on some videos uploaded by users could demonstrate YouTube’s “actual knowledge” of them, consequently triggering its liability. The Court of Appeal found that this was not the case.

Fulvio's uploading (and YouTube doesn't know)
Quoting the CJEU’s decision in L’Oréal, the Court of Appeal held that right holders’ letters to ISPs “cannot automatically preclude the exemption from liability provided for in Article 14 of Directive 2000/31” as they “may turn out to be insufficiently precise or inadequately substantiated” (Case C-324/09, para 122). In the case at issue, the Court considered that a letter generically claiming infringement and not itemising the contested videos was incapable of making YouTube’s actual knowledge arise. Further, the Court held that the presence of Telecinco’s logo on some UGCs hosted by the platform was equally irrelevant for this purpose. Both circumstances, the Court stated, could amount to the ISP’s actual knowledge only in connection with a general obligation actively to monitor and research illegal content, which is explicitly forbidden by Article 15 of the E-Commerce Directive, reading that “Member States shall not impose a general obligation on providers … to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity”.

On similar basis, the Court dismissed Telecinco’s request to issue an injunction towards possible future infringements on YouTube. Although the CJEU interpreted Article 11 of the Enforcement Directive as meaning that an ISP may be ordered “to take measures which contribute, not only to bringing to an end infringements of those rights by users of that marketplace, but also to preventing further infringements of that kind” (Case C-324/09, L’Oréal), the Court of Appeal said, it also made clear that this rule “may not affect the provisions of Directive 2000/31 and, more specifically, Articles 12 to 15 thereof … which prohibits national authorities from adopting measures which would require a hosting service provider to carry out general monitoring of the information that it stores” (Case C360/10, Sabam and Case C- 70/10, Scarlet).

A possible injunction against future infringements, the Court of Appeal concluded, would result either in an order to monitor UGCs proactively, contrary to the E-Commerce Directive, or in an obligation to implement a filtering system that, according to the CJEU, would seriously endanger “the freedom to conduct business enjoyed by operators such as ISPs”, also possibly infringing “the fundamental rights of that ISP’s customers, namely their right to protection of their personal data and their freedom to receive or impart information” (Case C360/10, Sabam).

As an IP and internet enthusiast, this Kat endorses the principles held by the Madrid Court of Appeal. The reason is that, in the tricky issue of ISP liability, numbers matter.

Understanding the safe harbour's rationale
Approximately 100 hours of videos are uploaded on YouTube every minute. As to other hosting providers, more than 500 millions items are currently sold on eBay and more than 400 million new tweets per day are hosted on Twitter. As acknowledged by the European Commission, "general monitoring of millions of sites and web pages would, in practical terms, be impossible and would result in disproportionate burdens on intermediaries and higher costs of access to basic services for users".

The internet’s exciting evolution has been (and will, it is hoped, continue to be) driven by ISPs. These include not only giants like Google, Facebook or Twitter, but all the guys around the world that develop new hosting providers like social networks, chats and apps in their home garage. The safe harbour established by the E-Commerce Directive is aimed to protect and foster this evolution by preventing a strict liability regime for infringing UGCs insofar as ISPs [that is, “humans working for ISPs”, notes Merpel] do not effectively become aware of them. Both for “active” and “passive” providers' liability regime, though, the actual, human knowledge of infringing contents is the polar star. Either safe harbour is applied the Madrid Court of Appeal's way or UGC-based business models cannot be adopted: no third option.



A *must-have* book on ISP liability in different jurisdictions of EU and beyond, edited by the Kat-friends Christopher Heath and Anselm Kamperman Sanders (and penned also by this Kat), here

The IPKat on YouTube here.

An unreasonably famous YouTube cat here.

Wednesday, 29 January 2014

Colour trade marks and secondary meaning: the Spanish version

After the Arnoldian reference to the Court of Justice of the European Union (CJEU) regarding the 3-D shape of a Kit Kat, here’s another story on tricky unconventional signs, namely colour trade marks. This time the IPKat takes a trip down to Spain, where the Supreme Court provided some guidelines in its decision of 2 December 2013, recently published.


In 2006, Orange Brand Services Ltd, the British little sister of the French company Orange S.A. [some previous Kat-episodes of the Orange saga here, here and here] filed the international registration (IR) No. 908,137 for a wide number of services of classes 9, 38 and 42. The application reads “Orange. The trademark is composed of a square coloured orange (pantone 151)” and covers the sign on the right.

This IR designated Spain. Once it reached the Spanish Trade Mark Office, the application received a not really warming welcome from Jazz Telecom S.A.U., another telco with a very orange brand image [although those two oranges were slightly different, Merpel notes: the Orange’s orange looks much more orange than the Jazz's other orange], which brought opposition alleging lack of distinctive character. 

The Spanish PTO dismissed Jazztel’s opposition, arguing that the application did not cover a colour as such but a coloured square, which was no reason for excluding that sign from trade mark protection (decision of 15 October 2008). Jazztel appealed the PTO’s decision before the Administrative Court of Madrid, which took a different view and declared the Orange’s trade mark null because, square or not, the orange colour failed to play a distinctive role in the telecommunication field (decision of 14 June 2012). Consequently, Orange brought the issue to the attention of the Supreme Court, also complaining that the Madrid Court “denaturalised” the nature of its trade mark, wrongly assuming it to be a colour trade mark instead of a device sign constituted of an orange-coloured square.

Jazz music to Jazztel's ears, the Supreme Court upheld the Madrid Court’s decision, possibly putting the nail in the coffin of Orange’s (squared) colour monopoly dream in Spain.

Also recalling previous Spanish and EU case-law (among other things, the CJEU decisions in Case 104/01,  Libertel and  in Case C-49/02, Bauchemie), the Supreme Court stated that colours generally lack of distinctive character and cannot play a proper distinctive role, as consumers are used to perceiving them as a decorative element rather than as trade marks. Further, it continued, unduly restricting the range of colours that competitors may use in a certain commercial field goes against the common interest (“general interest”, the Spanish Court said, with the words of CJEU in Libertel). 

For these reasons, the Court concluded, registration of colour trade marks should be limited to those “extraordinary circumstances” in which a certain colour acquired distinctive character as a consequence of its use and only insofar as the application is referred to a specific and limited number of products or services.

As to the combination between colour and shapes, the Court mentioned another similar case decided by the EU General Court with reference to the green square illustrated on the right (decision in Case T282/09, Fédération internationale des logis v. OHIM):

It's Jazz, I'm orange:
so what?
In that regard, the General Court concluded that a green square is not inherently distinctive because “a sign bearing an excessive simplicity and constituted of a basic geometric shape such a circle, a line, a rectangle or a regular pentagon is not eligible as such to transmit a distinctive message that consumers may recall, so that the latter could not consider it as a trade mark unless it has acquired secondary meaning“. In the same perspective, the Spanish Supreme Court found the potential scope of protection of Orange's IR not to be so different to that of a colour trade mark, as the combination between a “trivial, banal and elementary geometric shape” with a colour leads the colour to play a dominant role over the shape, bringing the public to focus on the colour instead of the containing shape. Hence, the Supreme Court concluded, the Orange’s orange square was not inherently distinctive.

As to secondary meaning, Orange submitted before the Administrative Court of Madrid a statistical survey to show that 49% of Spanish consumers recognise IR No. 908,137 as a trade mark and, among them, 80% associate it with the applicant.  The Madrid Court considered that a percentage of 40% (the 80% of 49%) of respondents connecting the sign with Orange was not enough to assume the existence of a secondary meaning.  The Supreme Court, in turn, considered the district Court statements “unequivocal” and consistent, and consequently ineligible for further examination at that stage. Hence, it upheld the first instance decision and declared IR No. 908,137 ineligible for registration as a trade mark.

Arnold J’s Kit Kat reference to the CJEU and this Spanish Supreme Court’s decision sound significant to this Kat. In recent years there has been an overall willingness to interpret widely the rule by which “any signs capable of being represented graphically” may become a trade mark, so to smooth the way to exclusivity over colours, product shapes, sounds, holograms, moving images, and maybe smells and tastes (on this, see the Singapore Treaty). However, some Judges appear to be worried about the restrictions to competition that this may cause, seeking to put some brakes on this expansion by introducing absolute grounds not explicitly provided by law. 

Hence, instead of letting case-law randomly slamming on the brakes, isn’t it time to have a break and note that, although all trade marks are equal, some non-traditional signs are less equal than others and could deserve further, specific legal requirements explicitly provided by law to access to trade mark protection [likewise done with shape trade marks, but in a clearer manner, Merpel adds]?

Some good jazz to reflect upon it here.

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