Category: Intellectual Property

Opinion of Advocate General Jääskinen in Case C-5/11 Donner

The case I wish to highlight in this post is the Opinion of Advocate General Jääskinen in Case C-5/11 Donner, concerning a rather crafty and ingenious attempt by Mr. Donner to circumvent the application of certain German copyright laws. Mr. Donner sold various types of ‘Bauhaus’ furniture which was protected by German copyright, but not protected by Italian copyright. Although Mr Donner targeted German customers through advertisements in Germany and a website in German, he sold these products not in Germany but from a warehouse in Italy through cooperation with an Italian company called Dimensione. Those products could nonetheless be delivered optionally to German customers by the Italian company Imspem (owned by Mr. Donner).

One of the questions the Advocate General answers in this case is whether the conduct of Mr. Donner leads to ‘distribution to the public’, that is the German public, within the meaning of the Copyright Directive. Mr. Donner, of course, considers that these products were distributed to the public in Italy, not in Germany. The Copyright Directive provides in Article 4(1) that ‘Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise’. The Advocate General considers that the products were distributed to the public in Germany:

55.      In the situation of cross border distance selling arrangements, the assessment of whether copies are made available to the public in the Member State where enforcement of copyright is sought must be based on the criteria elaborated by the Court in L’Oréal and Others. (38) If a seller targets consumers in a given Member State and creates or makes available to them a specific delivery arrangement and method of payment that enables consumers to purchase copies of copyright protected works in that Member State, then there is distribution by sale in that Member State. (39) The existence of a German language website, the content of Dimensione’s marketing material, and their sustained cooperation with Inspem, as an undertaking engaged in sales and delivery to Germany, all point toward a targeted exercise. What is important is whether the seller has created a targeted sales and delivery channel for buyers to acquire works that are copyright protected in the buyer’s Member State.

56.      In this respect the way the delivery of the copies is organised is of secondary importance. There is distribution by sale from Member State A to the targeted public in Member State B even if under the distribution scheme the copies of the works are delivered by mail or a distribution service. But the extent of the involvement of the carrier in the selling arrangement affects the question whether the carrier is to be considered as a participant in the distribution scheme or merely an intermediary referred to in Article 8(3) of the Copyright Directive, (40) whose services are used by a third party. Such an intermediary may be made subject to injunctions, but not to sanctions under Article 8(1) of the Copyright Directive and the corresponding provision in Article 11 of the Enforcement Directive.

Cases C-162/10 Phonographic Performance (Ireland) Limited (PPL), and C-135/10 Società Consortile Fonografici (SCF)

Last week, the ECJ released two judgments regarding the issue of copyrights on music broadcasts. According to EU law (specifically, Directive 2006/115), artists have a right to remuneration when recordings of their work are communicated to the public. But what exactly does ‘communication to the public’ entail?

In the PPL case, an Irish court asked the ECJ for a preliminary ruling to clarify whether ‘communication to the public’ includes broadcasts by a hotel to guests in hotel bedrooms, and whether Ireland was therefore in violation of European law when it exempted hotels from paying remuneration for these broadcasts. In the SCF case, an Italian court asked the ECJ to clarify whether ‘communication to the public’ includes background music played by a dentist in a dental practice.

The Court held that determining whether the hotel’s or the dentist’s broadcasts were ‘communication to the public’ would require an individual, case-specific analysis focused on three overlapping factors:

  • the role of the user, which engages in ‘communication’ when it intervenes to give access to a protected work
  • the concept of the public, which refers to an “indeterminate number of potential listeners” and “implies a fairly large number of persons”
  • whether the communication is of a profit-making nature, as judged by whether the user benefits, whether the user targets the public, and whether the public is receptive in some way, rather than merely listening by chance

While both the hotel and the dentist were ‘users’ engaging in communication, the ECJ found that the two situations differed with respect to the second and third criteria. The hotel’s customers were a ‘public’ because they were of ‘indeterminate number’ and were ‘a fairly large number of persons’ (PPL, paras. 41-42). The dentist’s clients, on the other hand, were not a ‘public’ because they formed a consistent, determinate group, and because only a small number would be present in the office listening to the broadcast at the same time (SCF, paras. 95-96). Similarly, the hotel’s broadcast was of a ‘profit-making nature’ because it was “an additional service which has an influence on the hotel’s standing and, therefore, on the price of its rooms” and “is likely to attract additional guests who are interested in that additional service” (PPL, para. 44). The dentist’s broadcast, on the other hand, was not of a ‘profit-making nature’ because the dentist “cannot reasonably either expect a rise in the number of patients because of that broadcast alone or increase the price of the treatment he provides” and because the patients are not ‘receptive’, but rather listen to the music merely by chance (SCF, paras. 97-98).

As a result, the dentist is not making a ‘communication to the public’ and is not required to pay remuneration. The hotel, however, is making such a communication, and is required to pay remuneration. According to the ECJ, therefore, Ireland should not have exempted hotels from this requirement.

Copyright for football league fixture lists?

Here is a nice judgment of the Court for football fans. Have you ever wondered why English  Premier League match fixtures on the internet are made unavailable while other fixtures are? The reason is that the FA and Football Dataco think these fixture lists are protected by copyright. For some of us that does not seem to make any sense: especially on the continent copyright is a property right rewarded because of creativity, not managing an agenda (no matter how difficult and laborous that can be). Football Dataco and the FA thought otherwise, emphasizing the very significant labour and skill that went into creating match fixtures for football matches in England and Scotland.

The FA and Football Dataco  got into a legal battle with Yahoo and other companies over this. The Court of Appeal subsequently referred the case to the Court to ask whether article 3(1) of the Copyright Directive (Directive 96/9/EC) granted copyright to the creators of annual match fixtures. The Court answered that ‘no other criteria than that of the originality is to be applied to determine the eligibility of a database for copyright protection’:

41      Therefore, on the one hand, provided that the selection or arrangement of the data ­– namely, in a case such as the one in the main proceedings, data corresponding to the date, the time and the identity of teams relating to the different fixtures of the league concerned (see paragraph 26 of the present judgment) ­– is an original expression of the creativity of the author of the database, it is irrelevant for the purpose of assessing the eligibility of the database for the copyright protection provided for by Directive 96/9 whether or not that selection or arrangement includes ‘adding important significance’ to that data, as mentioned in section (b) of the referring court’s first question.

42      On the other hand, the fact that the setting up of the database required, irrespective of the creation of the data which it contains, significant labour and skill of its author, as mentioned in section (c) of that same question, cannot as such justify the protection of it by copyright under Directive 96/9, if that labour and that skill do not express any originality in the selection or arrangement of that data.

Consequently:

–        the intellectual effort and skill of creating that data are not relevant in order to assess the eligibility of that database for protection by that right;

–        it is irrelevant, for that purpose, whether or not the selection or arrangement of that data includes the addition of important significance to that data, and

–        the significant labour and skill required for setting up that database cannot as such justify such a protection if they do not express any originality in the selection or arrangement of the data which that database contains.

It is now up to the Court of Appeal to determine whether creating annual match fixtures is an original expression of the creativity of Football Dataco or not.

Commission requests opinion of the Court on ACTA

Today Commissioner Karel de Gucht announced that the Commission will request the opinion (pursuant article 218 (11) TFEU) of the Court on the compatibility of ACTA with the Treaties and the Charter of Fundamental Rights in particular. The Commisioner stated that

We are planning to ask Europe’s highest court to assess whether ACTA is incompatible – in any way – with the EU’s fundamental rights and freedoms, such as freedom of expression and information or data protection and the right to property in case of intellectual property.

(…) But let me be very clear: I share people’s concern for these fundamental freedoms. I welcome that people have voiced their concerns so actively – especially over the freedom of the internet. And I also understand that there is uncertainty on what ACTA will really mean for these key issues at the end of the day.

So I believe that putting ACTA before the European Court of Justice is a needed step. This debate must be based upon facts and not upon the misinformation or rumour that has dominated social media sites and blogs in recent weeks.

As I have explained before the European Parliament on several occasions, ACTA is an agreement that aims to raise global standards of enforcement of intellectual property rights. These very standards are already enshrined in European law. What counts for us is getting other countries to adopt them so that European companies can defend themselves against blatant rip-offs of their products and works when they do business around the world.

More on ACTA can be found here, here and here.

Case C-360/10 SABAM v. Netlog

While some consider dark clouds to be gathering above internet freedom in Europe, the Court continues to make judgments that protect fundamental rights and the rights of internet users. In SABAM v. Netlog (Case C-360/10 Sabam v. Netlog) the Court had to decide whether a Belgian court could require Netlog, the Belgian equivalent to Facebook, to immediatly cease making available works from SABAM‘s repertoire. The Court held that not only was the injunction requiring Netlog to install a filtering system, which would oblige Netlog to actively monitor all the data of its users and to prevent future IPR-infringements, contrary to article 15 of Directive 2000/31, it was also contrary to the Charter of Fundamental Rights. National authorities are required to “strike a fair balance between the protection of copyright and the protection of the fundamental rights of individuals who are affected by such measures (para. 43).” Applied to this case, the injunction

would result in a serious infringement of the freedom of the hosting service provider to conduct its business since it would require that hosting service provider to install a complicated, costly, permanent computer system at its own expense, which would also be contrary to the conditions laid down in Article 3(1) of Directive 2004/48, which requires that measures to ensure the respect of intellectual-property rights should not be unnecessarily complicated or costly (see, by analogy, Scarlet Extended, paragraph 48).

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