Category: Copyright

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Importance of Renown and Proof Thereof
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Fashion Law Newsletter – Spring/Summer 2016 Edition
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New DMCA Safe Harbor Copyright Agent Requirements for Online Service Providers
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Australian Court Orders Former Customers and Builder to pay Damages to Henley for Copying its House Plan
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Court of Milan Grants Copyright Protection to Après-ski Boots Moon Boots
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“Blank” blocking orders on “alias” targeted web sites cannot be issued
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The Communication to the Public is (Hyper) Linked to the Role of the User
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Sometimes Borrowing Isn’t Stealing: De Minimis Sampling of Music Sound Recordings Isn’t Copyright Infringement, Say Two Key Courts in the United States and Germany
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Star Athletica, LLC v. Varsity Brands, Inc. and the Challenge of Copyright Protection for Garment Design
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European Court Considers Whether Hyperlinking to Unauthorised Content on Third-party Websites Infringes Copyright

Importance of Renown and Proof Thereof

In a ruling on 1 September 2016, the EU General Court invalidated a ruling of the European Union Intellectual Property Office (EUIPO) Board of Appeal in a case begun by a submission for the registration of a trademark showing an animal from the cat family leaping. The applicant was the Italian company Gemma Group Srl with its registered office in Cesarola Ausa. An objection was lodged by Puma SE with its registered office in Herzogenaurach, Germany.

The applicant submitted the following graphic mark for registration:

for machines for processing wood, aluminum, and PCV.

The plaintiff based its argumentation on two earlier international trademarks:

Those marks were registered for numerous types of goods in general use, including bags, clothing, accessories, footwear, toys, and sports equipment.

In addition, Puma SE raised the argument of the renown of its marks in all EU member states and for all goods covered by the registration. The objection was based mainly on the renown of those marks. In accordance with Article 8 paragraph 5 of Regulation No. 207/2009, a trademark similar to an earlier renowned mark is not registered if the unjustified use of that mark would result in undue benefits being reaped, or would harm the distinctiveness or renown of the earlier mark.

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Fashion Law Newsletter – Spring/Summer 2016 Edition

Fashion has always been a repetition of ideas, but what makes it new is the way you put it together.” – Carolina Herrera

Welcome to the latest edition of Fashion Law, this edition touches on issues that demonstrate the impact of world events and technological changes on all businesses.

Fashion Law gives you the latest updates on legal issues affecting the fashion industry.

Please click here to read the Spring/Summer 2016 edition of Fashion Law.

Contact: Lisa Egan

New DMCA Safe Harbor Copyright Agent Requirements for Online Service Providers

On October 31, 2016, the U.S. Copyright Office issued a new rule instituting an electronic system for the designation of copyright agents, which is required to take advantage of the safe harbor from copyright infringement for online service providers under 17 U.S.C. § 512(c). [1] For purposes of § 512, any entity that provides an online service (such as a website, email service, discussion forum, or chat room) generally would qualify as an online service provider. [2] A copyright agent is typically the individual at the online service provider for which contact information is provided in order to receive the various notices provided under § 512.

Under the new system, which takes effect on December 1, 2016, all online service providers seeking safe harbor under § 512(c), including those that have previously designated an agent with the Copyright Office, are required to submit designations through the electronic system. Entities that previously designated a copyright agent via the paper system must submit a new designation through the electronic system by December 31, 2017. Failure to do so will negate the safe harbor from copyright infringement liability established by § 512(c). Designations also must be renewed at least once every three years. (The current paper-based system does not require renewal.) The fee for registration and subsequent renewal(s) is set at US$6 per designation.

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Australian Court Orders Former Customers and Builder to pay Damages to Henley for Copying its House Plan

A recent decision on copyright infringement in building designs

On 13 October, Justice Beach of the Federal Court of Australia delivered his judgment in the case of Henley Arch v Lucky Homes & Ors, a copyright infringement case in respect of a project home design.

Mr and Mrs Mistrys were customers who, in 2013, went part way through the sales process with Henley Arch (Henley) for it to build them a house in accordance with its “Amalfi” design. The Mistrys paid Henley a deposit and plans were drawn up to build the house on the block that the Mistrys were purchasing. The Mistrys signed a standard Henley document acknowledging that Henley owned copyright in the plans and that the Mistrys were not entitled to use these (other than by building with Henley). While the Mistrys had initially wanted Henley’s “Avenue” façade option, after they learned that this would increase the price by about AUD10,000 they reverted to the standard option for the facade.

The Mistrys did not sign a final contract with Henley and instead approached Lucky Homes with the Henley plan (which featured Henley’s title block and copyright notice). Lucky Homes agreed to build the home for the Mistrys with the “Avenue” façade they preferred for about AUD10,000 less than Henley’s price (that is, Henley’s price for the house with the standard façade). The Mistrys ultimately engaged Lucky Homes, and it engaged a draftsperson to create a plan for the Mistrys’ house from the Henley plan, with a number of minor changes.

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Court of Milan Grants Copyright Protection to Après-ski Boots Moon Boots

According to the Italian court, an industrial design can enjoy copyright protection if it has an artistic value 

According to the Italian court, an industrial design can enjoy copyright protection if it has an artistic value

In July, the Court of Milan issued an interesting decision that granted copyright protection to the famous après-ski boots “Moon Boots” on the basis that they have recognized artistic value. In fact, the court recognized that Moon Boots have a particular aesthetic appeal capable of deeply changing the concept of après-ski boots, so that they have become an actual icon of Italian design.

In this case, the producer of the famous après-ski boots sued the producer and the distributor of a similar type of boots, called “Anouk Boots”. They alleged they constituted copyright infringement, infringement of the registered community design as well as unfair competition and asked for applicable remedies and compensation.

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“Blank” blocking orders on “alias” targeted web sites cannot be issued

According to the Court of Milan, such  injunctions would be contrary to local procedural rules as well as to Italian and European fundamental principles of law

In July, a famous Italian broadcaster asked the Court of Milan to block access to a specific portal, in order to stop its unlawful communication to the public of football matches of major Italian teams and of the UEFA Champions League to which the broadcaster holds the exclusive broadcasting rights.

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The Communication to the Public is (Hyper) Linked to the Role of the User

On 31 May 2016, the European Court of Justice (ECJ) issued its decision on the much-discussed issue of the requirements for a “communication to the public” in copyright infringement cases. It provided new guidelines on the interpretation of the article 3(1) of the InfoSoc Directive and article 8(2) of the Rental and Lending Rights Directive. The opportunity was given by the Regional Court of Cologne (Germany) that made a request for a preliminary ruling in the proceeding Reha Training v. GEMA, concerning the TV broadcast by means of TV sets on the premises of a rehabilitation centre. According to GEMA (the German copyright collection society), Reha Training failed to request permission and to pay the due royalties for communicating to the public TV programmes which belong to its repertoire.

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Sometimes Borrowing Isn’t Stealing: De Minimis Sampling of Music Sound Recordings Isn’t Copyright Infringement, Say Two Key Courts in the United States and Germany

Setting music sampling up for a potential U.S. Supreme Court battle, the Ninth Circuit sided with Madonna Louise Veronica Ciccone and her producer (Shep Pettibone) in emphatically rejecting the Sixth Circuit’s bright-line rule that all unlicensed sampling constitutes copyright infringement.  Just days earlier, Germany’s highest court ruled against seminal electronic band Kraftwerk in a similar dispute. While the reasoning in both cases overlapped in some respects, the German court went further by expressly protecting the artistic freedom of samplers and rejecting the requirement — which the Ninth Circuit embraced — that the sample not be recognizable as coming from the plaintiff’s song.

Music sampling, which is common in some musical genres, is the use of snippets from a sound recording — often altered or enhanced in some manner — in a new sound recording.  In Ciccone, the Ninth Circuit affirmed the district court’s grant of summary judgment in favor of defendants Madonna, Pettibone and their associated record labels, music publishers and distributors on the grounds that — contrary to the Sixth Circuit rule set forth in Bridgeport — the de minimis exception to copyright infringement applies to sound recordings just as it does to other types of copyrighted works.  The samples in question were “horn hits” (punctuation-like snippets of horn section chords) that lasted, respectively, less than a second and less than a quarter-second, and the court found that the average listener was unlikely to recognize their source.  In the Kraftwerk case, which involved a two-second drum loop, Germany’s Federal Constitutional Court overturned a finding that electropop producer Moses Pelham had infringed, reasoning that the lower court had not sufficiently considered whether the impact of the sample on Kraftwerk might be negligible.

To read the full alert, please click here.

By Mark Wittow and Eliza Hall

Star Athletica, LLC v. Varsity Brands, Inc. and the Challenge of Copyright Protection for Garment Design

By: John Cotter and Shamus Hyland

Under the U.S. Copyright Act, a “useful article” such as a chair, a dress, or a uniform may obtain copyright protection, but only for elements that “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101. For apparel, this generally means that the overall design of a garment is not protected by copyright, but certain ornamental features (such as a pattern woven into the fabric) may be protectable. In practice, the Copyright Act protects fabric designs, not dress designs. Recently, the U.S. Supreme Court decided to tackle this uncertain area, granting certiorari in Star Athletica, LLC v. Varsity Brands, Inc. In that case, the Sixth Circuit Court of Appeals ruled 2 – 1 that the design features of Varsity Brands’ cheerleader uniform (e.g. “stripes, chevrons, color blocks, and zigzags”) were separable from the utilitarian aspects of the uniform, and thus eligible for copyright protection. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).

The majority opinion identified nine specific approaches plus hybrids that various courts and the Copyright Office have formulated over the years to analyze how copyrightable design features can be separated from utilitarian elements, and the extent to which design features can achieve copyright protection. Id. at 484-87. The majority then employed its own hybrid five-part test grounded in the text of the Copyright Act, finding that the designs at issue played no role in the overall function of the article as a cheerleading uniform. The majority broadly defined the function of a cheerleading uniform: “to cover the body, permit free movement, and wick moisture.” Id. at 492. The dissent, meanwhile, took a more “particularized” view of the function of the uniform. Id. at 496. It pointed out that the design elements at issue do serve a utilitarian function because they identify the wearer as a cheerleader and should therefore be afforded no protection under the Copyright Act. Id.

The dissent in Varsity Brands characterized the law of copyright protection for design elements of useful articles as “a mess.” Id. at 496-97. The consequences of this mess are significant for businesses with stakes in garment design. As the dissent observed, clarity is needed to alleviate the courts’ confusion and protect business interests. Id. The Supreme Court now has an opportunity to spell out a more consistent approach to the “metaphysical quandary” of design-functionality in garment copyright protection. Ideally, the Court will clarify the boundaries of copyright protection, and specify the appropriate factors for courts to weigh when separating expressive elements from utilitarian functions. Star Athletica’s opening brief is due around late June, and we will continue to monitor this case.

European Court Considers Whether Hyperlinking to Unauthorised Content on Third-party Websites Infringes Copyright

By Alessandra Feller and Alessia Castelli

Following the provision of a recent Advocate General opinion, the Court of Justice of the European Union (CJEU) is expected to give further guidance on hyperlinking soon.

A dispute arose in the Netherlands between Sanoma Media Netherlands BV (and others) and GS Media in relation to the posting of website hyperlinks to third party sites which contained photographs the communication of which was not authorised by Sanoma and the other right holders.

Specifically, the Dutch Supreme Court has referred certain questions to the CJEU, asking whether

  1. hyperlinks to a freely accessible third party website which displays material without the consent of the copyright owner should be considered a “communication to the public” within the meaning of Art 3(1) of the Directive no. 2001/29 (“InfoSoc Directive”).
  2. In such circumstances, whether the following factors are relevant:
    • the awareness of the hyperlinker of the failure of authorisation from the copyright owner, and/or
    • the facilitation role played by the hyperlink on the accessibility of the material.Such conclusions were based on the grounds that the photographs were “freely accessible” to the general internet public on third party websites.

The CJEU decision on this case is much awaited, and it will be complementing the argument introduced by the Svensson case on hyperlinking. The decision in Svensson left some ambiguity as to whether it made a difference that works had been published on a site linked to without the copyright owner’s consent.

On April 7, 2016, Advocate General Wathelet  released an opinion that hyperlinking to unauthorised content does not constitute an act of communication to the public under Article 3(1) of the InfoSoc Directive, because the intervention of the hyper linker is not essential to the making available of the copyright works to users. He also held that it is irrelevant whether the hyperlinker is aware that the linked content is unauthorised. In the AG’s view, the only criterion that mattered is whether the linked website is freely accessible or whether the hyperlink is used to circumvent a restriction put in place in order to limit access to a protected work. Only in the latter case would a hyperlink constitute a communication to the public.

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