Copyright & Design

Posted on 26 January 2021

EU Member States have until 7 June 2021 to implement the controversial Digital Single Market Copyright Directive into their national regimes. As 2021 progresses, we should expect to see more Member States introduce their implementing laws, with particular attention focused on how they implement Article 17 and the obligations it imposes on 'online content sharing service providers' (whilst noting that Poland has brought proceedings before the CJEU in relation to Article 17).

Also at the EU level, as part of its IP action plan announced at the end of 2020, the EU Commission intends to modernise the designs framework, following its evaluation of the current regime in September 2020. Whilst the Commission's evaluation report overall found that the existing EU legislation on designs works well and is broadly fit for purpose, it did identify a range of shortcomings. These include a lack of clarity in relation to key elements of design protection (i.e., subject matter, scope of rights and limitations), outdated/overly complicated procedures, inappropriate fee levels/fee structure, and incoherent procedural rules. Further, the Commission concludes that the relevance of EU design laws is diminished by not being fully adapted to the digital age – e.g., in terms of protection of digital designs.

One aspect of particular interest for UK based designers concerns the interpretation of the rules on first disclosure for Unregistered Community Design (UCD) protection. Whilst the Commission's evaluation report reached no specific conclusions on this, it did note that the ambiguity as to the relevant geographical location of disclosure for the creation of a UCD creates unnecessary legal uncertainty and distorts coherence between registered and unregistered Community design protection. It will be interesting to see if this issue features in the review process, noting also that reciprocity re first disclosure of designs was not agreed as part of the UK/EU Trade and Co-operation Agreement.

Copyright

Is YouTube liable for users uploading copyright-infringing material?

The case of Peterson v Google/YouTube concerns the liability of platforms such as YouTube where their users upload infringing copyright materials. The case has been referred to the CJEU by the German court (alongside the case of Elsevier v Cyando). It is based on the current law under the Information Society Directive, i.e., before the new Digital Single Market Copyright Directive applies, which (via Article 17) introduces a new compliance regime for online content sharing service providers.

Advocate General Øe's Opinion is that, under the current law, platforms like YouTube are not directly liable for copyright infringement on the basis of a communication of copyright works to the public when those works are illegally uploaded by users of the platform, because YouTube is an intermediary providing physical facilities. The act of uploading a file, once initiated by the user, is automatic and YouTube does not select or determine the content that is published.

The Advocate General also considers that the InfoSoc Directive does not govern 'secondary liability' of those that facilitate third parties that carry out illegal communications to the public and that this is a matter for national law. Further, the Opinion reiterates the distinction between 'active' and 'passive' roles played by intermediaries in the context of the 'safe harbour' provided for by the ECommerce Directive. Finally, the AG confirms that injunctions are available against intermediaries, irrespective of whether they are liable for infringement.

The CJEU's decision is awaited but will not be binding on the UK Courts (though may be taken into account). Further, the UK has said it will not be implementing the DSM Copyright Directive (including therefore the obligations in Article 17 on online content sharing platforms) but it remains to be seen what approach the UK may take on these issues.

Is embedding works in a webpage from other websites by automatic linking a communication to the public?

In VG Bild-Kunst v Stiftung Preussicher Kulturebesitz, the German Federal Court of Justice has asked the CJEU questions relating to communication to the public - specifically whether it includes embedding a work, which is available on a freely accessible website with the copyright holder's consent, in the website of a third party by way of framing, where that embedding circumvents protection measures against framing taken by the copyright holder.

The CJEU's decision will provide further clarification of the copyright treatment of the use of hyperlinks and framing. Whilst the CJEU has consistently held that a link to copyright material that is made freely available to the public on the internet with the copyright holder's authorisation is not a communication to the public (e.g., in its decision in Svensson), Advocate General Szpunar's Opinion notes that more recent decisions (such as Renckhoff) have put that case law in a 'slightly different light'. He therefore concludes that the reasoning needs to be adapted: in his view, embedding works from one site in the webpages of another, such that those works are automatically displayed on the page as soon as it is opened without the user taking any further action (i.e., automatic or inline-linking), is a communication to the public. The CJEU must also now determine the implications where a copyright holder uses technical means to prevent the use of their work in the form of hyperlinking or framing.

The CJEU's decision is awaited with interest in 2021. Whilst it will not be binding on the UK courts, it will also be interesting to see if they continue to follow CJEU authority relating to communication to the public issues. For example, in-line linking was raised in a case relating to service out of the jurisdiction in Wheat v Google where the English Court refused permission, on the basis that Google's acts complained of did not constitute a communication to the public.

Rental of cars with radio receivers is not a communication to the public

In Stim and Sami, following a reference from the Swedish Supreme Court, the CJEU ruled that where a car hire company makes vehicles available that are fitted with radio receivers making it possible to receive terrestrial radio broadcasts, this does not constitute a communication of copyright works. As provided in Recital 27 of the InfoSoc Directive, it amounts to the mere provision of physical facilities for enabling or making a communication which does not amount itself to a communication of the relevant copyright work. It therefore differs from acts of communication by which service providers intentionally broadcast protected works to their clientele, by distribution of a signal by means of receivers installed in their establishment.

UK Court decisions on communication to the public

In the UK, further updates on the interpretation of provisions relating to communication of copyright works to the public can be expected in 2021. In February 2021, the Court of Appeal will hear the appeal in the TuneIn litigation (we discussed the trial decision in last year's Review). Further, in PRS v Qatar Airways, the IPEC dismissed the airline Defendant's application for a stay of copyright infringement proceedings based on alleged infringement of copyright works played on an in-flight entertainment system. The stay was sought on jurisdictional grounds. The Court refused to stay the claim, even though it noted that Qatar law would be 'more applicable' to the alleged infringing acts in terms of the quantity of alleged infringements.

Fabric design protected by copyright as a work of artistic craftsmanship

In last year's Review, we reported on the CJEU's significant decision in Cofemel which has provided greater scope for copyright protection for functional designs, and which meant that a number of aspects of UK copyright law and practice were arguably now out of step with the EU approach. Early in 2020, in Response Clothing v The Edinburgh Woollen Mill, the IPEC considered the impact of Cofemel, particularly in relation to the tension that it highlights between UK and EU copyright law on these central themes.

The traditional approach of UK copyright law requires that a work falls within at least one of the categories of protection set out in the copyright legislation. Applying this approach in this case, the Claimant had to demonstrate that its fabric design was a type of artistic work, i.e., either a graphic work or a work of artistic craftsmanship. The Judge recognised however that the UK's 'closed list' approach to copyright protection did not accord with the CJEU's approach developed through a line of case law, culminating in Cofemel .

Whilst the Judge decided that he did not need to resolve this tension, the scene is set for further consideration of the issues presented by Cofemel in an appropriate case, particularly post-Brexit. The Judge in this case ultimately did not need to grapple with this issue because he decided that the design in this case, a design applied to fabric, qualified for copyright protection as a 'work of artistic craftsmanship'. In doing so, he applied a fairly generous assessment of the relevant criteria, which may be relied upon by designers of a range of consumer items to assert copyright protection, not least because of the longer period of protection available to copyright works.

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Bike mechanics or an expression of a free and creative choice?

In June 2020, the CJEU ruled in Brompton v Get2Get that copyright protection may be available to products whose design is, in part, necessary to obtain a technical result: such as potentially the design of the iconic Brompton folding bicycle, sold in its current form since 1987. However, to be able to rely upon copyright, the creators of such works must demonstrate that those technical considerations did not prevent them from reflecting their personality in the work, as an expression of their free and creative choices. The Belgian court, which referred questions to the CJEU, must now assess this in relation to the Brompton bicycle.

The CJEU's decision applied its earlier Cofemel decision and potentially bolsters the range of IP protection available for functional designs. Significantly, the Brompton bicycle had been protected by a patent which had expired. However, the CJEU said that the prior patent protection did not mean that the bicycle could not also attract copyright protection. Other products and designs, which may have had the benefit of a time-limited patent and design protection that has since expired, could now also seek further protection under copyright in appropriate cases.

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Claim of joint authorship in film screenplay succeeds in High Court retrial

Following a retrial of an IPEC decision regarding a claim for joint authorship in the screenplay for the 2016 film Florence Foster Jenkins, the earlier judgment was reversed, with the IPEC finding in January 2021 that the screenplay was a work of joint authorship between the script writer Nicholas Martin and the opera singer Julia Kogan (Martin v Kogan).

This outcome comes as no surprise given the findings of the Court of Appeal which overturned the original IPEC decision, on which we reported here. The Court of Appeal held that the judge at first instance had imposed too high a threshold for determining whether Ms Kogan had made a sufficient contribution to qualify as joint author and set out the factors to consider in a claim of joint authorship.

Applying those factors, at the retrial, the IPEC held that whilst a mere idea to make a screenplay about Florence Foster Jenkins would not have been authorial on its own, as Ms Kogan's contribution resided in the “creation, selection and gathering together of detailed concepts and emotions which the words have fixed in writing” that met the threshold of an authorial contribution. Notwithstanding that Mr Martin made the final creative decision, Ms Kogan's contribution reflected the expression of her own intellectual creation, and the couple's respective contributions were not distinct.

The relative amounts of those contributions were the subject of detailed evidence at trial and analysis in the IPEC judgment, with the Court setting out principles for approaching the question of apportionment. Assessing the value of the parties' contributions on a qualitative and quantitative basis, and taking an approach which may embolden minor joint authors whose contributions have been previously overlooked, the judge held that Ms Kogan was entitled to a 20% share in the copyright for the screenplay.

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Designs

In Rothy's v Giesswein, the IPEC found registered Community design (RCD) infringement in favour of the Claimant, Rothy's, a sustainable shoe brand from California, known for creating sustainable shoe designs in a knitted fabric created using recycled plastic yarn. Following the Supreme Court's 2016 decision in 'Trunki', this case highlights the importance of designers accurately representing new and innovative design features when applying to register a design. Notably, whilst the claim for RCD infringement succeeded, Rothy's was unable to establish unregistered Community design (UCD) infringement in relation to the same shoe design, owing to the difficulties it encountered in establishing that copying had taken place (a requirement for infringement of unregistered, but not registered, designs).

Rothy's had pursued a claim against Giesswein Walkwaren, an Austrian shoe company, in respect of Giesswein's sale and marketing of a "Pointy Flat" loafer shoe, made in a knitted yarn made from recycled plastic. Rothy's was the first to apply knitted yarn fabric made of recycled plastic to ballerina flats. Its range of ballerina flats (released prior to Giesswein's Pointy Flat) included "The Flat", "The Point", and the "Pointed Loafer".

Rothy's claimed infringement of its RCD for the Pointed Loafer, as well as its UCD in the design of the Pointed Loafer as shown in images on its website and social media sites. Giesswein challenged the validity of the RCD over two prior shoe designs, neither of which were made from knitted yarn.

The IPEC found that Geisswein's Pointy Flat infringed the RCD, and that it was valid over the prior art. In coming to its conclusion, the Court emphasised the very wide degree of design freedom that designers of ballerina flats enjoy. However, in relation to the UCD, although the Court held that the Pointy Flat produced the same overall impression, it did not find that the Pointy Flat was copied from the Pointed Loafer, and so UCD infringement was not made out.

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