Skip to content

On 22 March 22 2017, in the case of Star Athletica LLC v. Varsity Brands, Inc., et al, No. 15-866, the Supreme Court of the United States ruled, in a 6-2 decision, that design elements of a cheerleading uniform may be protected under copyright law, even though the uniform has a utilitarian function.

It is a well-known tenet under United States copyright law that apparel is outside the scope of the Copyright Act of 1976, which bars protection for works of authorship that possess utilitarian functions.  However, §101 of the Copyright Act carves out a limited exception, namely that “pictorial, graphic or sculptural features” of the design of a useful article are entitled to copyright protection if they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

Star Athletica v. Varsity Brands involves copyright infringement of cheerleading uniforms designed by Varsity Brands, considered to be the leader in the market, copied by its rival, Star Athletica.  The majority opinion, written by Justice Thomas, sided with Varsity Brands, and ruled that the two-dimensional pictorial design, consisting of chevron, zigzags, stripes and colorful shapes, applied to Varsity Brands’ uniforms was deserving of copyright protection under §101 of the Copyright Act.

This case has elicited microscopic scrutiny by the fashion industry.

The Ruling

This case was heard by the Supreme Court on writ of certiorari to the United States Court of Appeals for the 6th Circuit.  The District Court had granted summary judgment to Star Athletica, holding that Varsity Brands’ designs were not eligible for copyright protection because they served the function of identifying the garments as cheerleading uniforms.  The 6th Circuit reversed, holding that the graphic designs applied to the uniforms, in accordance with §101 of the Copyright Act, were eligible for copyright protection because the graphics could be “identified separately” and were “capable of existing independently” of the uniforms.  The Supreme Court granted certiorari to resolve the long-standing discord between the lower courts over statutory interpretation, namely: What is the appropriate test to determine when a feature of a useful article is protectable under §101 of the Copyright Act.?

In deciding this case, the Court set forth a simplified two part test, “A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.”  Looking to the facts of the case at hand, the Court held that the designs on the surface of the Varsity Brands uniforms satisfy the foregoing requirements.

The Conundrum of the Separability Doctrine

For decades, there has been disagreement between the circuits, which have struggled with articulating a consistent test to determine the extent to which designs applied to useful objects might be protected by copyright. While the statutory language of the separability doctrine is consistently invoked, the determination of when a design element is separable has lead to a plethora of standards and tests. Indeed, the 6th Circuit’s decision used 9 factors to determine that Varsity Brands’ graphic designs as applied to cheerleader uniforms were conceptually separable from the utilitarian aspects of the garment, and judicial analysis of separability have included such things as the design intention of the author and the marketability of the functional object if the applied art were to be removed.

Impact upon the Fashion Industry

The fashion industry anxiously awaited the decision in Star Athletica v. Varsity Brands – design companies expressing concern that the decision might undermine the already extremely limited protection afforded to fashion designs, while retailers were concerned that the decision might enhance copyright protection in a way that would expose them to new liabilities. Although, as noted in the dissenting opinion by Justice Breyer, designers often look to trademark law, and occasionally patent law, as a means of protection, these laws do not readily apply to graphic designs applied to apparel.  Although the Court’s decision provides some clarity and guidance with regard to statutory interpretation, it unequivocally adhered to what has been the status quo for fashion items, characteristically denied protection under the Copyright Act.  As the majority wrote,  “the only feature of [Varsity Brands’] cheerleading uniform eligible for a copyright is the two-dimensional applied art on the surface of the uniforms” and the company “has no right to prevent anyone from manufacturing a cheerleading uniform that is identical in shape, cut or dimensions to the uniforms at issue here”.

The result in Star Athletica v. Varsity Brands will in all likelihood have little impact on the fashion industry, as it breaks no new ground.  What it does is eliminate the myriad of tests and issues that have plagued and distracted lawyers for both plaintiffs and defendants in proving and arguing many factual issues that the opinion now makes clear are irrelevant.

Accordingly, the protection of designs applied to apparel has neither been eroded nor enhanced; they are protected by copyright to the extent they would have been protected had they been fixed in a medium of expression other than a garment.  Similarly, retailers and designers of “knock-offs” do not appear to  face any new risk of liability that wasn’t present prior to the Supreme Court’s opinion.

Looking Forward

We have yet to see how the Supreme Court’s new separability test will be applied, but its application may significantly simplify and harmonize the analysis in the lower courts.  Congress, despite years of lobbying efforts by the fashion industry, has consistently failed to adopt the sort of “design right” that many European countries apply to apparel, and the debate continues as to whether fashion design is under-protected or, as some argue, the current “light” protection of fashion design is actually part of the engine that drives the industry.

There is no doubt that the Varsity Brands opinion vividly confirms that the Copyright Act today affords no protection at all to the overall design (e.g., the combined shape, cut, fit, color, drape, neckline, etc.) of an item of apparel.  On the other hand, it makes equally clear that the copyright protection afforded to any pictorial, graphic or sculptural work is in no way undermined when it is first fixed in, or later applied to, an item of apparel. Varsity achieved what it set out to do, but the ruling in this case has not significantly changed the landscape.

 

Gamer playing first person shooter game on high end pc

On 12 January 2017, the German Federal Court of Justice has handed down its second landmark decision on cheat software within three months. After clarifying the question under which conditions cheat software may constitute copyright infringement in October last year, the Federal Court of Justice has now decided that cheat software can constitute an act of unfair competition, too.

To be able to play online games, e.g. World of Warcraft (WoW) or Diablo III , it is necessary to download a client software and install it on the computer. Achieving progress within the game regularly takes several hours. To save time and to easily achieve the goals of the game some companies develop software, so-called cheat- or buddy-bots, allowing the player to overcome the challenges of the game automatically. Online game developers are not pleased by this fact, which is why they try to prevent the distribution of such cheat bots up front.

Cheat Software and Copyright

In October 2016, the Federal Court of Justice had already decided that the commercial downloading and copying of the client software to develop cheat software constitutes copyright infringement. According to the court, this act is neither permitted by the End User License Agreement (EULA), as it only allows private use of the client software, nor does it fall within the scope of § 69 Sec. 3 of the German Copyright Act, which in order to determine the ideas and principles which underlie any element of a software allows users to observe, study or test the functioning of the program without the authorization of the right holder. However, this exception only applies to computer programs and does not justify the reproduction of the audiovisual content.

Cheat Software and Unfair Competition

Three months later, the Court further decided that the distribution of such cheat bots can also amount to an illegal obstruction of a competitor. The court held that not the breach of contract as such constitutes an act of unfair competition. An act of unfair competition is rather to be seen in the development and distribution of cheat bots which are able to impair the business model by circumventing protective measures which were meant to avoid such impairment. According to the Court it shall remain up to the developer how the game should be played.

A Look Ahead

These decisions make the cheat software business model much more difficult. Due to the fact that for the development of such bots it is necessary to copy the client software, which automatically implies a copying of the audiovisual content, such acts always constitute copyright infringement.

Further, it was held that the development and distribution of cheat bots can constitute an act of unfair competition, if and to the extent the developer´s product is impaired. Therefore, these two decisions may affect the development of software bots beyond the gaming industry. So-called “social bots” used within social networks to automatically generate posts may also impair the business of the operator, and thus may be prohibited as well based on the reasoning of these decisions. How this will be assessed in detail remains to be seen.

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Women's running shoes and dumbbells for trainingThe question of whether a sequence of exercises, such as yoga poses or dance moves, can be copyrighted has occupied the attention of international courts, scholars and copyright offices for some time. In late 2015, the issue received some media attention when yoga guru Bikram Choudhur tried to gain a US copyright in a signature sequence of yoga poses but failed before the Court of Appeals for the Ninth Curcuit. Despite the effort of international copyright conventions, the question of copyrightability essentially remains a matter of national law.

On 2 February 2007, the Higher Regional Court of Cologne (Case 6 U 117/06), Germany, ruled that an acrobatic dance performance could, in principle, be considered a “work of dance art” subject to copyright protection under Sec. 2 para. 1 No. 3 of the German Copyright Act. The required threshold of originality could, however, only be achieved, if the performance went beyond a sequence of physical movements and conveyed a particular artistic message. Whether this ruling can, by analogy, be extended to yoga and exercise routines is not clear. Simple routines are, however, not likely to constitute “personal intellectual creations” within the meaning of Sec. 2 para. 2 of the German Copyright Act.

An Integrated, Coherent, and Expressive Whole

In a further example, in a Statement of Policy from 18 June 2012, the US Copyright Office took the position that “a selection, coordination, or arrangement of functional physical movements such as sports movements, exercises, and other ordinary motor activities” did not represent the type of authorship intended to be protected under the US Copyright Act as choreographic works. However, a “composition and arrangement of a related series of dance movements and patterns organized into an integrated, coherent, and expressive whole” could rise to the level of original choreographic authorship.

A Look Ahead

Even if simple yoga or exercise routines will likely not meet the minimum threshold of originality in most jurisdictions, a film or description of such routine may be copyrightable, as may a compilation of photographs of the routine’s individual movements. Additionally, exercise brands can make a profit from teaching their routines to others („train the trainer“) or from licensing their brand to fitness centers so that people familiar with the brand’s program know what to expect of the centers’ workout sessions.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Romantic DiningAccording to the code of ethics of the International Association of Culinary Professionals, a culinary professional must not knowingly “appropriate […] any recipe or other intellectual property belonging to another without the proper recognition.” And, in addition to the ethical, there are legal issues. While copying culinary creations might not sound like a big deal to millennial food bloggers and vloggers, lawsuits—sometimes with high stakes—have been filed over (mis)appropriated recipes. But whether claims to a signature dish will hold up in court is a different question and will likely depend on the scope of protection of the applicable copyright law(s).

The Literary Work

The written expression of a recipe (explanations and directions) is likely to be protected as a “literary work” in most jurisdictions. For example, the Court of Justice of the European Union (Case No. C‑5/08) held that even an 11-word newspaper article extract may be protected subject matter under the Copyright Directive (2001/29/EC), provided that it is original in the sense that it is the author’s own intellectual creation. One can, therefore, safely assume that quite a few recipes that were published online or in print could be considered literary works subject to copyright protection. However, the copyright in a literary recipe only prevents unlicensed copying of the text, not the functional means for achieving a culinary result. Whether the recipe itself could be eligible for protection is another matter entirely: ideas like the ingredients necessary to the preparation of a particular dish are generally not copyrightable.

The Mere Listings of Ingredients

The US Copyright Office, for example, issued a factsheet that “copyright law does not protect recipes that are mere listings of ingredients.” This view was backed by the US Court of Appeals for the Sixth Circuit in the non-precedential case Tomaydo-Tomahhdo, LLC v. Vozary, 629 F. App’x 658 (6th Cir. 2015). The court held that while there can be a copyright in the arrangement and creative expression contained in a recipe book, protection did not extend to the recipes themselves. A list of ingredients was “merely a factual statement, and […] not copyrightable.” However, a compilation of such facts could be eligible for protection, if it was an original selection. For example, on 28 March 2012, the Regional Court of Frankfurt am Main (Case No. 2-06 O 387/11), Germany, held that a selection of recipes suitable for certain pieces of cooking equipment was a “personal intellectual creation” within the meaning of sec. 2 para. 2 of the German Copyright Act. The US Copyright Office likewise stated that copyright protection could “extend to […] a combination of recipes, as in a cookbook.”

The Visuals and Other Things

Copyright law might also apply to photographs that accompany a recipe in a cookbook or to an elaborate food arrangement if it comprises elements that do not contribute to the utilitarian aspects of how food appears on a plate like coloring, textures and placement. There are, however, other avenues than copyright law that culinary professionals can pursue to protect their creations, such as secrecy or non-disclosure agreements.

Happy Valentine’s Day to all food and IP lovers!

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Woman Eating Popcorn Whilst Watching Movie On LaptopOn 12 December 2016, the PRC Ministry of Culture released the Administrative Measures for Business Activities of Online Performances (the “Measures”). The Measures target providers of live performances broadcast or streamed over the Internet or a mobile network (“Streaming Services Providers”) who derive a profit from such activities through advertising, sponsorship or by charging for access. The Measures will come into effect on 1 January 2017.

Streaming Services Providers Are Now in Essence Content Gatekeepers

The new regulations require Streaming Services Providers to obtain a permit from provincial cultural affairs bureaus and display their license number in a prominent place on the website, i.e., on the homepage or landing page. Overseas Streaming Service Providers, including those from Hong Kong, Macau, and Taiwan, will have to apply for a license from the Ministry of Culture before launching a live channel.

This new provision follows a requirement issued by the Cyberspace Administration of China (“CAC”) in November 2016 requiring live Streaming Service Providers and distributors to obtain a permit for the provision of news information services over the Internet. The Measures introduce “know your performer” procedures for Streaming Services Providers in respect of all the performers in streamed shows, through ID checks, and provision of performers’ real names as many artists use pseudonyms or nicknames or aliases. Streaming Service Providers are also required to verify all data collected through follow-up interviews or through other means. Access to streaming services has been restricted and will only be available through registration. If chat room functions or other interactive services are offered on such sites, then Streaming Services Providers have the added obligation of having to report any illegal content posted by users to the relevant authority. However, there are no guidelines as yet as to what constitutes “illegal content.”

Why the Clampdown on Live and Video Streaming Through New Regulations?

In June 2016, 300 entities were found running live streaming content, some of which was of dubious quality trying to catch eyeballs with unseemly content and /or engaging in unlicensed news broadcasting according to a statement made by the CAC. Consequently, the Measures expressly prohibit six types of online content including content containing violence, cruelty, or vulgarity, and content which “infringes others’ legitimate interests.” Among the list of content expressly prohibited is online games for which a licence has not been obtained from the Ministry of Culture. This new registration requirement comes hot on the heels of the regulation of mobile apps released by the CAC in June this year which requires mobile apps providers to, among other things verify new app users’ mobile phone numbers and other identity information and have sanctions in place for users who publish content that violates applicable laws and regulations.

The rationale behind the Measures seems to be a desire to push back on the rising tide of Chinese streaming industry. In recent years, China has become a massive market for online video streaming boasting audiences in the tens of millions with the size of the market reaching RMB 15 billion (or US$ 2.17 billion) in 2015. Myriad problems, however, arise as part of this rapid expansion including unseemly content, piracy, and fraud. While some view the new regulation as an expansion of the government’s censorship over live streaming, others anticipate that the heavy registration scheme requirement might effectively deter online piracy to some extent.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Hot chocolate with melted snowmanFor many people, Christmas is the most wonderful time of the year: decorating the house, wrapping presents and, last but not least, listening to cheesy Christmas songs, some of which are among the highest-earning songs of all time. When Santa Claus comes to town, however, he might bring some gift-wrapped intellectual property lawsuits with him. The European Patent Office, for example, records many patents that mention Christmas in their title. Most of these patents relate to Christmas trees or their decoration. But patents are not the only kind of intellectual property right that could cool your Christmas cheer.

Many Christmas songs such as “Jingle Bells” or “Silent Night” are not (or no longer) protected by copyright law and form part of the public domain. However, the danger of a copyright infringement lawsuit has not yet been abandoned. For example, even Instagramming your Christmas Eve dinner or live-streaming your church service on Persicope might be copyright sensitive. Because Christmas is ultimately about celebrating the birth of Jesus of Nazareth, it’s worth noting that Jesus himself has been mentioned in copyright infringement lawsuits.

“Otherworldly Inspiration” Can Be Attributed to Its Human Recipient

In 1975, the late US psychologist Helen Schucman published a book called A Course in Miracles. She assigned the copyright to her book to the US Foundation for Inner Peace (FIP). Schucman believed that her book was dictated to her in a series of waking dreams by Jesus.

After the New Christian Endeavour Academy, a German registered association, published extracts from Schucman’s book on their website’s homepage, FIP asked for an injunction in the Regional Court of Frankfurt/Main. The New Christian Endeavour Academy defended itself by saying that there was no doubt that Jesus is the author of A Course in Miracles. A person who herself was of the opinion that her words were the result of a divine dictate could not have possibly obtained copyright in those words. By decision of 13 May 2014 (Case 11 U 62/13), the court of appeals, the Higher Regional Court of Frankfurt/Main, however, ruled that even “otherworldly inspiration” could be attributed to its human recipient. The authorship of a work was not determined by the mental state of its creator but by the actual process of creation. Thus, writers own copyright in their works even if they wrote them while mentally disturbed, in a trance or under metaphysical influences.

The case is currently pending before the German Federal Court of Justice under case number I ZR 138/14. It will be interesting to see how the case will be decided.

Happy Holidays from the AllAboutIP Team!

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Tattooist demonstrate the process tattoo on handIt is only one example of many, but it grasps the very essence of the issue: In 2013, a New York City coffee shop owner got a tattoo on his right hand saying “I [coffee cup] NY.” Cool, if you are a tattoo fan who also loves coffee. Then he started using an illustration of his tattooed hand as a logo for his shop. Not cool, if you are the New York State Department of Economic Development, which served him with a cease-and-desist letter. In the eyes of the state agency, the use of the tattoo design on the shop’s window was less a reference or a tribute to the famous “I love NY” slogan but rather a plain case of trademark infringement.

Yes, copyright and trademark issues may even emerge from someplace as personal as your skin and the ink decorating it. But there is more to the story.

Tattoos Are Copyrightable

A tattoo is a work of graphic art and thus is, in principle, copyrightable. The copyrightability in each case will, of course, depend on whether the tattoo artist managed to meet copyright law’s originality threshold, which is arguably a rather low bar to pass. One can, therefore, safely assume that quite a few ink drawings on body parts could be considered works of art subject to copyright protection.

That is why, for example, National Football League Players Association (NFLPA) officials began advising NFL players to get copyright waivers from their tattoo artists. A case that drew some media attention was the suit filed by Stephen Allen. Allen, a Louisiana-based tattoo artist, sued video game publisher Electronic Arts (EA) and former Miami Dolphins running back Ricky Williams over a tattoo that Allen put on Williams’ bicep and which later appeared on the cover of EA’s “NFL Street” video game.

The topic of this blog gets even more complicated when considering that some avowed admirers of certain corporate brands reportedly show their loyalty by getting the trademarks inked on their skin. This phenomenon has even spawned a new word—“skinvertising.”

A Look Ahead

Even though the cases above took place in the United States, sooner or later European Courts will have to deal with similar issues because millennials worldwide love a few dots of ink on their body. Some interesting questions of law arise: For example, what is the extent of requests that a cease-and-desist claim could contain? Could the copyright holder of a work of tattoo art demand someone who has that tattoo cover it in every photo of himself that he posts to Instagram? Courts should be prepared to have answers to those kinds of questions.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Stage costume and Halloween bowl with trick or treat candiesWhen cobwebs and tombstones start to show up in your neighborhood, probably something wicked is coming your way—except that one night of the year, on Halloween. Even though Halloween involves frightening things—haunted houses, the undead, tricks in response to no treats—it is ultimately about carefree fun. And there’s candy! But if you are in a Halloween-related business, there is a genuinely scary side to the holiday—IP issues that, if ignored, could lead to a wicked lawsuit.

For example, in 2005, in the case Chosun International, Inc. v. Chrisha Creations, Ltd., the US Court of Appeals for the Second Circuit declared that elements of a (not very scary) Halloween costume could be copyrightable. Under the US Copyright Act, protection does not, in principle, extend to utilitarian or functional elements of the artist’s original work and, therefore, does not extend to elements that enhance a costume’s functionality qua clothing. However, in the case of Chosun’s plush sculpted animal costumes, the court held that certain elements might be separable from the overall design of the costume, and hence eligible for copyright protection. For example, Chosun might be able to show that the sculpted “heads” and “hands” of its costume design are physically separable from the overall costume in that they could be removed from the costume “without adversely impacting the wearer’s ability to cover his or her body.”

Thinking of creating a costume based on something less cuddly—say a fictional serial killer, such as Michael Myers, Hannibal Lecter or Dexter Morgan? Think again. In principle, fictional characters within an original work of authorship (e.g. a book or a movie) are presumed to be simply ideas not worthy of copyright protection on their own. However, fictional characters may be protected independently of their underlying works, provided that they are sufficiently unique and distinctive. In US law, the consensus seems to be that a well-defined serial killer may be copyrightable. Perhaps the most famous comment on the copyrightability of fictional characters comes from Second Circuit Judge Learned Hand in the 1930 case of Nichols v. Universal Pictures Corp. where he wrote that “the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.”

Happy Halloween!

Finally, you have to be mindful that many trademarks include the term “Halloween” in their mark. And there is a significant number of patent applications relating to Halloween-ish things like coffins, pumpkins or even, in PCs, “zombie process detection.”

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Hand holding smartphone with wi-fi connection in cafeOn 15 September 2016 (C-484/14), the Court of Justice of the European Union (CJEU) ruled that the operator of a shop, hotel or bar that offers free Wi-Fi to the public is not liable for copyright infringements committed by the network’s users. However, the operator may be required to password-protect its network in order to prevent—or cease—these infringements.

The Facts of the Case

The case concerns a dispute between Tobias Mc Fadden, the owner of a lighting and sound system shop, and Sony Music Germany. Mc Fadden’s shop offered free Wi-Fi in order to bring in new customers. In 2010, someone used Mc Fadden’s Wi-Fi network to unlawfully offer a copyright-protected musical for downloading. The Regional Court of Munich, Germany, took the view that while Mc Fadden was not the actual infringer, he could be indirectly liable on the grounds that his Wi-Fi network had not been made secure. However, the court was not sure whether the E-Commerce Directive (2000/31/EC) precluded such indirect liability and referred a series of preliminary questions to the CJEU.

Opinion of the Advocate General

On 16 March 2016, Advocate General Maciej Szpunar recommended to the CJEU that the operators of free Wi-Fi networks should not be held liable for copyright infringements committed over their networks. The opinion confirmed the applicability of the E-Commerce Directive—and the “mere conduit” defense in Article 12 of that directive—to free Wi-Fi providers. While acknowledging that the scope of application of Article 12 largely depended on the potential economic nature of the provision of the service, the advocate general opined that the safe harbor provisions should also apply to operators who, as an adjunct to their principal economic activity, offer a Wi-Fi network that is accessible to the public free of charge.

He further commented that the safe harbor provisions prevent courts from making orders against these intermediary service providers for payment of damages and even for the costs of giving formal notices. However, the advocate general said this limitation of liability would not prevent the right holder from seeking an injunction against the Wi-Fi operator to end the infringement. But that injunction could not go so far as to require that the operator terminate or password-protect the internet connection or examine all communications transmitted through it.

Judgment of the CJEU

In its judgment, the CJEU largely followed the opinion of the advocate general while disagreeing on two crucial points. The Court ruled that the operator of a free Wi-Fi network provides an “information society service” within the meaning of Article 12(1) of the E-Commerce Directive if he provides access to the network for the purpose of advertising the goods sold or services supplied by him. This means that the operator can directly rely on the liability exemption laid down in Article 12(1).

However, in the eyes of the Court, the operator of the free Wi-Fi network could be required to protect the network with a password in order to deter users from infringing copyrights. The CJEU further ruled that the right holder can claim from the network operator the costs of giving formal notices and court costs when such claims are made to obtain injunctive relief to prevent the operator from allowing the infringement to continue.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

interior of a modern photo studioOn 8 September 2016 (C-160/15), the Court of Justice of the European Union (CJEU) ruled that the posting of a hyperlink to copyright-protected works located on another web site does not constitute copyright infringement when the link poster does not seek financial gain and acts without knowledge of the illegal publication. However, when the posting of a hyperlink is carried out for profit, it has to be presumed that the posting has occurred with the full knowledge of the protected nature of that work and the possible lack of consent from the copyright holder to publication on the linked web site.

Facts of the Case

The case involved a dispute between the operators of Dutch web-magazine GreenStijl.nl – GS Media – and, inter alia, Playboy Magazine. In 2011, GS Media published a hyperlink on their weblog directing viewers to an Australian web site where photos of Britt Dekker, a Dutch TV presenter, were made available for download. The photos which were taken for Playboy Magazine were published without the consent of the copyright holder, Sanoma Media Netherlands. Despite Sanoma’s demands, GS Media refused to remove the hyperlink at issue. When the Australian web site removed the photos at Sanoma’s request, GreenStijl published a new hyperlink to another web site on which the photos from Dekker’s Playboy shoot were available.

According to Sanoma, GS Media infringed copyright. Hearing the appeal, the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) submitted a request for a preliminary ruling from the CJEU on this subject.

Answer to the Question Referred for a Preliminary Ruling

This request for a preliminary ruling concerned the interpretation of Article 3(1) of Directive 2001/29/EC – in particular, whether the posting of a hyperlink to works available on another web site without the consent of the copyright holder constitutes a “communication to the public” within the meaning of that provision.

In answering that question, the CJEU referred to its decision of 13 February 2014 (C-466/12) in which the Court interpreted Article 3(1) to mean that the posting of hyperlinks to works which have been made available on another web site with the consent of the right holder cannot be categorized as a “communication to the public” as covered by that provision. Where the work is already available to all internet users on another web site with the authorization of the copyright holder, the hyperlink did not communicate that work to a new public, that is to say, to a public that was not already taken into account by the copyright holder when he authorized the initial publication of his work.

However, it could not be inferred from prior decisions that the posting of hyperlinks to protected works which have been made available without the consent of the copyright holders would be excluded, as a matter of principle, from the concept of “communication to the public”. An individual assessment is always required. For the purposes of such an assessment, an account had to be taken of several complementary criteria, inter alia, of whether the posting of a hyperlink was carried out by a person who, in so doing, pursued a profit and whether that person could have reasonably known that the work had been published on the linked web site without the consent of the copyright holder.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

We use cookies to enhance your experience of our websites and to enable you to register when necessary. By continuing to use this website, you agree to the use of these cookies. For more information and to learn how you can change your cookie settings, please see our Cookie Policy and our Privacy Policy.

Close