ELZABURU Blog - Industrial and Intellectual Property

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Has Banksy really lost his copyright?

¿De verdad ha perdido Banksy sus derechos de autor?

Traditionally, press articles seek to attract the attention of readers with sensationalist headlines which do not always reflect the reality of the news story in question. Recently, many media outlets have reported on the supposed “unsuccessful legal battle” of the famous street artist Banksy in trying to “preserve his copyright” in the iconic “Flower Thrower” graffiti.

It has been reported that a “court” issued a “judgment” in which the artist’s copyright was “rejected” by “judges” in “a lawsuit” against a company that sells postcards, all because Banksy has chosen to remain anonymous. Perhaps it is worth trying to put things into their proper context.

Flower Thrower by Banksy

The “judgment” is in fact a decision dated 14 September 2020 by the EUIPO’s Cancellation Division, that is, by the European Union trademark and design registration authority; the “lawsuit” is in reality an “administrative” action for invalidity of a trademark lodged against a registration for a figurative trademark, covering different goods in the International Classification, that reproduces the image from Banksy’s work.

The trademark is owned by the company Pest Control Office Limited, whose connection with Banksy was accepted by the EUIPO without entering into too much detail, and the applicant for the declaration of invalidity is the company Full Colour Black Limited, which was seeking the cancellation of the registration in order to be able to sell postcards with the image of the famous graffiti.

The invalidity action is based on the bar to registration laid down in the European Union Trade Mark Regulation, with respect to signs applied for “in bad faith”. In the case of the trademark contested in the action, bad faith is justified in that the owner of the trademark, the company Pest Control Office Limited, never intended to use the trademark to sell goods in the marketplace. Rather, it was filed in order to prevent others from being able to do so. Such intentions are contrary to the essential function of a trademark.

It is true that this conclusion was reached in the EUIPO’s decision following an analysis of the choice of the artist Banksy to remain anonymous and of the practice of the owner of the registration to allow the “Flower Thrower” work to be reproduced, provided that it is not for commercial purposes. However, the considerations on copyright in this decision are simply “obiter dictum” remarks of an administrative body that has cancelled a registration because the owner had no intention of using the mark when it was filed.

More importantly, the fact that the company Pest Control Office Limited has lost the exclusive right to use the Banksy work as a trademark for specific goods, as a consequence of the cancellation of the registration, does not mean that Banksy has lost his copyright in this work or the right to take legal action for infringement against any party seeking to make commercial use of the same.

In light of this “administrative” precedent from the EUIPO, it is important to keep in mind that in Spain we have a “judicial“ precedent that is much more in line with the orthodox continental approach to copyright, in a case involving another internationally renowned street artist.

Radiant Heart by Keith Haring

I refer to the Madrid Provincial Appellate Court’s judgement [in Spanish] of 2 November 2018, which recognised the intellectual property rights of Keith Haring in his iconic “Radiant Heart” work, convicting of infringement a company that had launched a wide range of merchandising items under a very similar logo to which it had added the word “Madrid”.

When art has the power to move us, it does not matter where it is on display, whether on a wall in Jerusalem, in a gallery or online. The attitude of the artist does not matter either, whether they are keen to flaunt their work or prefer to remain anonymous. It does not deserve to be fodder for lucrative merchandising, against the wishes of the artist. At the present time in Europe, it is reasonable to consider that such practices are open to challenge.


Author: Antonio Castán

Published previously in Expansión [in Spanish]

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What if we stop remunerating performers from outside the EU?

Y si dejamos de remunerar a los artistas de fuera de la UE

On 8 September 2020, the Court of Justice of the European Union (CJEU) handed down a judgment in case C-265/19, involving the Irish collective management organisations RAAP and PPI, the former representing artists and the latter representing producers.

The two entities had reached an agreement for PPI to be responsible for collecting and then sharing out the amounts obtained from the communication of the phonograms to the public through wireless broadcasting, remuneration established in Article 8(2) of Directive 2006/115/EC on rental and right and lending right (hereinafter the “Directive”).

What if we stop remunerating performers from outside the EU?  

The conflict arose as a consequence of PPI’s refusal to pay the corresponding part of this remuneration to RAAP, asserting that the Irish copyright act (CRRA) excludes performers who are neither nationals nor residents of Member States of the European Economic Area (EEA) and whose performances “do not come from a sound recording carried out in the EEA”. According to PPI, the remuneration of performers of certain States would infringe the principle of reciprocity laid down in the CRRA, in particular, the remuneration of United States performers, as this country only grants Irish performers the right to equitable remuneration to a very limited extent.

Obviously, RAAP opposed this interpretation stating that the performer’s nationality and residence are irrelevant in relation to sharing these amounts, as nothing is specified in this regard in Article 8(2) of the Directive.

In this context, the CJEU considered four questions.

The CJEU combined and rephrased the first two questions asking whether, in light of the Rome Convention or the World Intellectual Property Organisation Performances and Phonograms Treaty (WPPT), Article 8(2) of the Directive precludes a Member State from excluding performers who are neither nationals nor residents of Member States from the aforementioned remuneration.

First, the court refers to the fact that Article 8(2) of the Directive establishes no limitation whatsoever in that sense and adds that, from recitals 5 to 7 of this same text, it follows that these concepts must be interpreted “in such a way as not to conflict with the international conventions”. This forces the concept to be interpreted in accordance with the WPPT, with Member States having to pay performers and producers who are nationals of any contracting party. Consequently, the CJEU rules that the right to a single equitable remuneration cannot be limited by the national legislature solely to nationals of the EEA Member States, thus harming nationals of third States.

The court then goes on to consider the third question, namely, whether the reservations entered by third States affecting the rights of nationals of Member States will allow for the exclusion of nationals of third States from the rights recognised in Article 8(2) of the Directive.

The CJEU acknowledges that these reservations may affect the position of performers and producers of Member States vis-à-vis those of third States, considering the application of the principle of reciprocity laid down in international treaties, as “the need to safeguard fair conditions of involvement in the recorded music business constitutes an objective in the public interest capable of justifying a limitation of the right related to copyright”.

Nevertheless, although it deems them to be reasonable, the CJEU points out that these limitations can be established by the EU but not by Member States, pursuant to Article 52.1 of the Charter of Fundamental Rights of the European Union.

Thus, a Member State cannot limit the right to equitable remuneration even if there are reservations of third States in this sense. Only EU lawmakers are able to make such a decision.

The fourth question considers whether Article 8(2) of the Directive precludes equitable remuneration being limited only to the producer and not being shared with the performer. The court responds to this question by briefly indicating that it does preclude such a limitation.

In my opinion, this judgment does in fact provide certain relevant conclusions. Firstly, the existence of regulations such as the articles of the Irish CRRA in dispute here, reveal a lack of harmonisation in European intellectual property legislation, as only in an environment with such insufficient harmonisation can there be regulations that are so contrary to the provisions of a Directive.

Secondly, it shows some of the causes of inequalities in the recorded music market. While the CJEU’s interpretation seems conclusive, it is difficult to imagine EU lawmakers undertaking legislative reforms that impose limitations, like those discussed here, on the remuneration of nationals of third States. If it continues this way, the EU will remain in an unbalanced position with respect to countries such as the United States in this area. Whilst it is true that this type of restriction may be questionable in a global market such as the music market, applying the principle of reciprocity could provide a provisional solution for these inequalities.


Author: Martín Bello

Previously published in Economist & Jurist [in Spanish]

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ELZABURU signs the Statement for Renewed Global Cooperation of the UN Global Compact

ELZABURU signs the Statement for Renewed Global Cooperation of the UN Global Compact

Antonio Tavira, as the chief executive of ELZABURU, is one of the more than 1,000 CEOs, representing the world’s most important companies, who have signed the Statement from Business Leaders for Renewed Global Cooperation of the United Nations Global Compact.

In these disruptive and uncertain times, this is a statement endorsing inclusive multilateralism, in which the world’s most important companies express their support for institutions to guarantee peace, justice and good governance, eradicate inequality and contribute towards creating a better and more sustainable world.

ELZABURU signs the Statement for Renewed Global Cooperation of the UN Global Compact  

As Antonio Tavira explains, “our firm, with a history of over 155 years and an extensive international track record, has a responsibility to join this campaign promoted by the UN Global Compact, and to reaffirm our commitment to fostering sound corporate governance so that this renewed cooperation extends across borders, sectors and generations, helping us to overcome the crisis caused by the pandemic”.

ELZABURU is a socially responsible company that promotes the sustainable development of our firm’s business and operates on the basis of social, economic and environmental policies that contribute towards achieving the Sustainable Development Goals promoted by the UN through the Global Compact launched in 2000.

This statement in support of renewed global cooperation has been signed by the CEOs of more than 1,000 of the world’s most important companies, which include 183 Spanish companies, representing 17% of the total. The initiative coincides with the 75th anniversary of the United Nations, celebrated at a time of unprecedented global transformation, underlining the need to mobilize to show that public and private institutions are united in their support for the United Nations and inclusive multilateralism.


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“Good morning, Myanmar”

Myanmar "Soft Opening Period"

After a sleepy few months for Myanmar’s new Trademark Law, no doubt as a result of the COVID-19 crisis, it seems that it is finally waking up. The Law provides for a procedure called the “Soft Opening Period” so that holders of rights acquired in their signs in Myanmar can register their trademarks on a preferential basis. Our firm has been publishing information on the development of this Law and on this procedure. The earlier articles in our blog can be accessed by clicking on the following links:

Myanmar "Soft Opening Period"  

Since the Law entered into force on 31 January 2019, various attempts have been made to put the Intellectual Property Office into operation. All efforts to date have been frustrated for one reason or another. The challenge of setting up an Intellectual Property Office from scratch in a country such as Myanmar, and the unfortunate situation that has developed worldwide over the course of this year following the spread of COVID-19, has caused considerable delays and brought this ambitious project to a standstill.

Following the successive failed announcements regarding the inauguration of the “Soft Opening Period”, first in January and then in April, the Myanmar authorities have announced a new date for commencing activities. If no circumstances hamper the government’s plans, this preferential procedure for registering acquired rights will open on 1 October 2020.

As we have mentioned in earlier articles, the new Trademark Law introduces the “first to file” principle for registration. So as to avoid potential detriment to rights acquired by owners of trademarks that have already been used in the Myanmar marketplace and/or complied with the formalities in existence up to now for the defence of trademarks in Myanmar, those parties will have 6 months, from 1 October and up to 31 March 2021, to apply for their trademark rights at the Intellectual Property Office. Once the “Soft Opening Period” ends, registration will be open to any interested party.

The preferential procedure is aimed at:

  • Holders of “Declarations of Ownership” recorded at the Office of Registration of Deeds.
  • Owners who have used their trademarks and have sufficient proof to demonstrate said use (for example, the publication of Cautionary Notices in newspapers).

ELZABURU has been following developments concerning the new Trademark Law from the very beginning and has a network of local agents who keep us informed and constantly up to date on the situation. We are therefore ready to accompany our clients in the process of protecting their distinctive signs in Myanmar, now as registered trademark rights.


Author: Cristina Arroyo

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How open intellectual property contributes to driving the “green transition”

This year, World Intellectual Property Day was celebrated with the slogan “Innovate for a Green Future”.

It is not the first time that WIPO has used this occasion to highlight the role played by intellectual property in the “green transition”. In 2009, under the slogan “Promoting Green Innovation as the key to a Secure Future”, WIPO dedicated part of its magazine’s special issue to analysing which intellectual property mechanisms and strategies could help foster sustainable technological innovation.

World IP Day 2020

At that time, the Eco-Patent Commons initiative, with the backing of major companies such as IBM or Nokia, was starting to gain importance. The aim was to permit any user in the world free access to a group of patents in which the participating companies undertook not to assert rights, provided that said patents were used with the purpose of innovating and implementing industrial processes in the field of sustainability. Despite the ambitious aims of the initiative, the most recent studies on the matter suggest that its practical effects on the diffusion of environmentally friendly technologies were modest due to, among other factors, issues concerning the structure of the organisation, a lack of follow-up on the use of the patents provided, and the absence of mechanisms for effective technology transfer, a particularly important factor in the case of complex patents.

However, the discontinuation of Eco-Patent Commons in 2016 should not be regarded as a failure. On the one hand, it is a learning point for similar projects in the future. Moreover, Eco-Patent Commons made an important contribution to fostering debate on the applicability of open intellectual property strategies in the field of sustainable technological innovations, questioning in particular whether open source-based strategies can replicate the success achieved in the world of software.

One of the most high-profile examples of open intellectual property strategy for patents with “green” applications is that of Tesla. In 2014, the company caused surprise when its CEO, Elon Musk, announced that in future Tesla would not take legal action against parties who use their technology in good faith. Aside from Tesla asserting as its main reason for this decision the desire to continue the spirit of the open source movement to encourage the development of electric cars in an effort to slow down climate change, it is clear that it is a decision with significant strategic implications. Allowing other manufacturers to use Tesla’s innovations reduces the barriers to new companies entering the electric car market, which will lead to a strengthening of the sector in which Tesla operates (improving the supplier network, charging stations, etc.). This, in turn, will increase the demand for electric cars, from which Tesla could potentially benefit.

The case of Tesla is just one example of how closed or protectionist intellectual property strategies are not always the answer. Moreover, in the field of sustainable innovations, the decision between protectionist and open or collaborative strategies can be affected in particular by RSC issues and reputational or regulatory considerations.

From the regulatory standpoint, various proposals have been put forward, some of which seek to encourage investment in green technology (through tax regimes favourable to licensing or to the implementation of swift procedures in patent filings) and others aimed at increasing accessibility of patented technology (for example, by limiting the possibility to grant exclusive licences or by creating funds that acquire patents to make them available to the public at a lower cost).

In the meantime, in 2013, WIPO launched WIPO Green, an online platform that seeks to promote the diffusion of green technologies by facilitating contact between providers of this type of technology and organisations interested in using the same. In this case, the platform serves as a connecting point, but does not impose conditions on the type of collaboration to be established between the parties.

Beyond the discussion concerning intellectual property strategies, advances in digitalisation bring forth other kinds of opportunities and challenges from the standpoint of sustainability. Specifically, one growing area that should take the environmental aspect into account in its development over the coming years, is the data economy. Recently, the European Commission, in its Communication on a European strategy for data, emphasized that European data strategy should focus not only on increasing productivity and the competitiveness of markets but also on benefiting society from the standpoint of health, transparency, public services and the environment. In this regard, a correct use of data can contribute to aspects such as promoting the circular economy, increasing sustainability in transport or improving environmental performance in the agricultural sector.

Closely related to data, Artificial Intelligence has considerable potential to contribute to achieving the objectives of the European Green Deal. In the White Paper on Artificial Intelligence – a European approach to excellence and trust, published in February of this year, the Commission once again mentions the environmental implications of this kind of technology, pointing to its capacity for critical analysis of resource usage and energy consumption and for making choices that are more positive for the environment.

Notwithstanding these benefits, on the other side of the coin we have the considerable environmental footprint associated with data centres and cloud-based services. With this in mind, the Commission highlights that the European Digital Strategy proposes green transformation measures for the ICT sector.

There are certainly many questions regarding which mechanisms are the most appropriate, both from the standpoint of business strategy and from the regulatory standpoint, to foster innovation and diffusion of environmentally friendly technologies. There are also a number of issues with regard to finding a balance between the benefits and the environmental impact of digitalisation. What does seem clear is that WIPO has sought to remind us, a decade on, that intellectual property, far from being an unrelated factor, will play a decisive role in successfully navigating the “green transition” process.

Authors: Cristina Espín and Marina Manzanares

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