In a continuing trend, the CJEU has been busy with copyright issues in the last 12 months, with a number of important decisions due to be issued in 2019.
In November, it confirmed that the taste of cheese cannot be protected as a copyright work because the definition of a ‘copyright work’ requires there to be subject matter expressed in a manner which makes it identifiable with sufficient precision and clarity, even though that expression is not necessarily in permanent form. The taste of a food product cannot be pinned down with precision and objectivity, but is subjective and variable. Whilst this outcome was perhaps a predictable one, the case may lead to a re-thinking on the proper boundaries of copyright protection.
In a decision welcomed by copyright owners (Renckhoff), the Court found that the posting on a school website of a photograph of Cordoba (which had been used in a student’s project, and which had been freely accessible for download on an online travel portal) was an infringement of copyright as a communication to the public.
This case was different to Svensson which concerned hyperlinking to copyright works that were freely available on another website (which would not be infringing). Here, unlike in Svensson, there was a communication to a ‘new public’ when the work was
re-posted (as opposed to linked to) on another website.
Decisions of the CJEU to look out for in 2019 focus on the permissibility of sampling (in relation to Kraftwerk’s Metall auf Metall – Pelham C-476/17), the boundaries of the quotation exception to infringement and the interplay between copyright and fundamental rights (Speigel Online C-516/17), and whether copyright can subsist in a military report and, again, the interplay with freedom of expression (Funke Medien C-469/17).
Digital Single Market – Controversial Copyright Directive one step closer
Intense lobbying over the Copyright Directive continued throughout 2018 and into early 2019, focusing on the controversial proposals of a new related right for press publishers (dubbed by critics a ‘link tax’) and the proposal that sites allowing users to upload content should have licensing arrangements in place or take certain steps to remove such material if it is infringing.
EU negotiators have now agreed a final text with the next stage for the Directive being final votes in the Council and the European Parliament. The timing is particularly key in the context of Brexit.
UK ratifies Hague Agreement giving designers flexibility in international applications
The ‘one-stop shop’ Hague system of international design registration provides for a single application leading to protection for up to 100 designs in up to 82 countries, together with a centralised renewal and maintenance system. For some designers, this has distinct advantages over filing separate applications in territories of interest.
Whilst the UK is already a member of the Hague system through its EU membership, in 2018 it ratified the Hague Agreement in its own right – a decision independent of Brexit, but clearly taking on an extra dimension as a result. Hague applications can bring unique challenges but these can be overcome with forward planning and the relevant legal advice. Whilst it may not be appropriate for protection of one-off designs in a wide variety of territories, it will be particularly useful for those design-led businesses looking to obtain cost effective access to registration in specific countries to protect significant portfolios.
Crocs design invalid: Snappy design protection needed to prevent self-disclosure
The validity of the iconic Crocs design came under further challenge in 2018, with the EU General Court finding that Crocs’ prior disclosures of its design, through its own sales and marketing activities (including disclosure on its website and at the Florida International Boat Show), had caused it to lose protection for its EU registration. Crocs had applied for registered protection for its clog design in the EU after the 12 month grace period (during which self-disclosure is permitted and does not affect the novelty of the design) had expired.
As Crocs had not shown that its design would not have come to the attention of the sector concerned in the EU, its EU registered design was found to be invalid. Relevant evidence could have been that, for example, there was little or no actual internet traffic from EU users to the Crocs website, or that the Florida International Boat Show was not attended by exhibitors or participants from the EU.
It is also important, when determining a global filing strategy, to note that grace periods vary (and do not exist in all territories).