ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Case law

To what extent can the director of a work edit his or her creation without infringing the related rights of artists?

On 25 August 2021, the Court of Justice of the Andean Community (hereinafter, “CJAC”) issued its findings on the right of the director of a cinematographic work to edit, cut or delete previously recorded scenes and analysed how that right can conflict with the related rights of performers.

The Court refers, firstly, to the basis for protection of a cinematographic work under copyright, citing Articles 3 and 4 of Decision 351 of the Common Rules on Copyright and Related Rights(hereinafter, “Decision 351”) which establish that an audiovisual work shall be protected under copyright provided that it is original, which entails that the work bears “the personal stamp, individual character or unique character of the author or authors”.

To understand the above, it is important to distinguish between the author of a cinematographic work and the artist participating in the work. The former is the natural person who achieves the intellectual creation, while the latter is the person who acts, sings, reads, delivers, interprets or otherwise performs a work. In this regard, the creator of the work, who in the case of audiovisual works is the director, holds the moral rights and copyright in the work, while the artist is the person who brings a character to life in a unique and singular manner in accordance with a script. It is in view of this singular nature of the artist’s interpretation that Chapter X of Decision 351 grants related rights to artists, including the right to “object to any distortion or mutilation of their performance or any other act prejudicial thereto that could be detrimental to their prestige”.

rodaje, camara, actores

 

This last right granted to artists should not be confused with the economic right of transformation held by the author in relation to the work. What is granted to artists is the right, in certain cases, to “demand protection of their moral right of integrity, when the distortion, mutilation or any other act prejudicial to their performance could be detrimental to their prestige or reputation“.

For their part, directors, as authors of a cinematographic work, have the right to edit the work, including the option of cutting or deleting previously recorded scenes, and to authorise its transformation. Therefore, the rights held by directors can conflict, on certain occasions, with the related rights of artists.

With regard to the above, the question is to what extent the director can edit the work he or she has created without infringing the related rights of artists. The Court states that the author of the audiovisual work, that is, the director, may edit and even delete the performance of an artist, for example, by deleting a scene, with no limitation other than that said deletion must not be for the purpose of intentionally causing harm to the performer’s prestige or reputation.

Moreover, when analysing the infringement of artists’ rights through the deletion of scenes featuring their performances, the Court makes a distinction between the different types of actors (leading actors, supporting actors, etc.) with regard to the protection of their performances. Thus, the actor’s level of protection will be higher or lower depending on his or her participation in the audiovisual work, and the protection of a leading actor will be greater than that of a supporting actor and, in the case of extras or background actors, since they are not artists or performers, they will not have any protection in cases where the scenes in which they appear are deleted.

We may conclude from the above that the director of an audiovisual work is not infringing the related rights of an artist and, therefore, the artist may not object to the deletion of scenes in which he or she appears, provided that the deletion is not being carried out with the intention of causing detriment to the artist’s prestige or reputation. In order to be able to object, the artist or performer must be in a position to prove that the deletion was carried out by the director with the intention of causing detriment.

Author: Claudia Pérez Moneu

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An important step in the protection of designations of origin

champagne, copas, caso champanillo, denominaciones de origen

On 9 September, the Court of Justice delivered a judgment in case C-783/19, in response to a request for a preliminary ruling made by the Barcelona Provincial Appellate Court in the context of an action for infringement of the designation of origin Champagne brought by the Comité Interprofessionnel du Vin de Champagne (CIVC) against some tapas bars that were identified using the name “Champanillo”.

The Barcelona Mercantile Court had dismissed the action at first instance, finding that there was no infringement of the designation of origin because the term “Champanillo” was not being used to designate an alcoholic beverage, but catering services that were not comparable to Champagne wine.

champanillo, bar

 

When ruling on the appeal lodged by CIVC against this decision, the Barcelona Provincial Appellate Court had doubts with regard to the interpretation of the European Union legislation applicable to the case (Regulation No. 1308/2013), and it decided to request a preliminary ruling from the Court of Justice.

The first doubt concerned whether, pursuant to Art. 103.2 of said Regulation, it is possible to protect designations of origin against the use of names that evoke a protected designation in relation to services that are not comparable to the products covered by the protected designation.

In line with the opinion expressed by the Advocate General, the Court responded to this question by declaring that “the Regulation protects PDOs vis-à-vis prohibited conduct in relation to both products and services”.In his view, the Regulation establishes “wide-ranging protection which is intended to extend to all uses which take advantage of the reputation enjoyed by products covered” by the PDO.

The Barcelona Provincial Appellate Court also referred two questions to the Court of Justice concerning the criteria to be applied when assessing whether there is an “evocation” of a designation of origin, within the meaning of the EU regulation. In particular, the questions centred on the relevance in that regard of the comparison between the product protected by the PDO and the product or service designated by the disputed name.

In this regard, the Court of Justice clarifies in its judgment that, first, an evocation “does not require, as a preliminary condition, that the product covered by the PDO and the product or service designated by the disputed name be identical or similar and, second, the existence of an evocation is established where the use of a name creates, in the mind of an average European consumer, who is reasonably well informed and reasonably observant and circumspect, a sufficiently clear and direct link between that name and the PDO.”

With these premises in mind, it is for the Barcelona Provincial Appellate Court to assess in the case in question, taking account of all the relevant aspects of the case, whether the use of the name CHAMPANILLO gives rise to that “sufficiently clear and direct link” with Champagne which confirms the existence of an evocation.

Aside from the decision ultimately adopted by the Spanish court, the importance of this ruling lies in the fact that it is the first time that there has been an express finding from the Court of Justice in favour of extending the protection of PDOs to situations other than the use of similar names to designate products of a similar nature to those protected by the designation of origin.

Moreover, although it is not something new with respect to the Court of Justice’s findings in other earlier rulings, in this judgment it goes further in emphasising that the concept of “evocation” does not require that the products covered by the PDO and the products or services designated by the disputed name be similar. The difference in this regard with respect to the comparison criteria under trademark law is thus highlighted by the Court.

The acknowledgement of the need to protect designations of origin against uses which take advantage of their reputation in different sectors, in relation to both products and services, is very important for highly prestigious designations such as Champagne. This judgment is an important step forward in that direction.

Author: Carlos Morán

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Trademark Infringement in Parallel Importation in China

Background

SPATEN-FRANZISKANER-BRÄU GmbH is the owner of two international trademarks, “Franziskaner” (No. G807592) and “Franziskaner Weissbier” (No. G1241072), licensed to Budweiser Investment (China) Ltd. (hereinafter referred to as “Budweiser”) for the use and maintenance of both trademarks in China.

On March 7, 2019, Budweiser filed a trademark infringement lawsuit, arguing that Guangzhou Oriental Keyuan Import & Export Co. Ltd. (herein after “Keyuan”) had infringed its trademark rights by importing a batch of beer that was identical to the two international trademarks mentioned above without permission. The defendant argued that the imported beer was a legal parallel import, produced in Europe by the trademark owner (SPATEN-FRANZISKANER-BRÄU GmbH) and exported through its affiliated company, which did not constitute an infringement of the trademark rights in question.

barril, cerveza, franziskaner weissbier

 

The Yuexiu District People’s Court ruled in favour of the plaintiff, requiring the defendant to destroy the infringing products and compensate the plaintiff for damages. However, later, on appeal, the Guangzhou Intellectual Property Court overturned the first instance judgment and found that the defendant’s goods constituted legitimate parallel imports.

Findings

The Guangzhou Intellectual Property Court first clarified the definition of “parallel importation of trademarks” as “the cross-border trade of goods produced or sold abroad by the trademark owner with the trademark legally attached, which are imported into a third country or sold through customs without the consent of the trademark owner or its licensee”. Generally speaking, the act of parallel importation of a trademark includes the following five constituent elements:

  1. The right holder has legal authority over the trademark in both the exporting and importing countries;
  2. The parallel imported products are manufactured and released into the foreign market by the trademark owner itself or with its consent;
  3. The trademark rights in the exporting and importing countries are substantially owned by the same person or entity;
  4. The goods are imported into the targeted territory without the consent of the owner of the trademark in the importing country; and
  5. The importation does not violate the normal and lawful customs control procedures of the importing country.

In the main proceedings, the Court found that the beer at issue was originally produced and placed on the market in Germany by SPATEN-FRANZISKANER-BRÄU GmbH, and then sold and exported by INBEV BELGIUM S.A. to OKUNI TRADING BUANGKOK CRESCENT, the authorized importer and distributor of “Franziskaner” beer in Singapore. Later, STARBEV PTE LTD resold the beer purchased from OKUNI TRADING to the defendant, and OKUNI TRADING arranged the shipment from Singapore to China directly in accordance with the sales contract between OKUNI and STARBEV and between STARBEV and the defendant. The evidence available proved that the manufacturer, the seller and shipper in Europe, the licensor who authorized the importation and sale in Singapore, and the plaintiff of this case were all direct or indirect holding companies of ANHEUSER-BUSCH INBEV NV/SA.

Therefore, the court found that the parallel imported goods were genuine.

Secondly, and since the People’s Republic of China does not explicitly prohibit all parallel importation of trademarks, the court shall base its judgment on the legislative purpose and principles of trademark law on a case-by-case basis, i.e., to safeguard the function of trademarks and protect the interests of consumers.

The core function of a trademark is to identify the source of goods. In this case, the trademark used in the allegedly infringing goods was substantially owned by the same right holder in both the country of origin (Germany) and the country of final import (China). Therefore, for the relevant public in the Chinese market, the allegedly infringing trademark did not sever the exclusive link between the trademark owner and the parallel imported goods and did not create a risk of confusion.

In addition, both the parallel imported goods and the goods licensed for sale in the Chinese market were under the control of the same right holder’s product quality control system and were placed on the market by the right holder in accordance with the market rules, which means that the quality assurance inherent in the trademark had been fulfilled.

In view of the above, the court ruled that the Chinese trademark in question had not been infringed, given that the parallel imported goods had neither undermined the functions of the Chinese trademark act nor led to a risk of misidentification of the source of the goods by the consumer public.

Remarks

In this judgment, the court adopted a neutral approach to parallel importation of trademarks, holding that the legality of a parallel importation should be judged on a case-by-case basis considering the circumstances of each particular case. If the trademark rights used on parallel imported goods are substantially vested in the same person as the trademark rights in the importing country, and the function of the Chinese trademark is not affected, there is no reason to prohibit parallel importation.

Author: Dan Liu

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Actress and singer Miley Cyrus is entitled to use name as a trademark

Miley Cyrus

On 16 June 2021 the General Court issued its decision in Smiley Miley Inc v European Union Intellectual Property Office (EUIPO) (Case T‑368/20).

Background

In 2014 Smiley Miley Inc – a company of world-famous artist Miley Cyrus – filed an application with the EUIPO for the registration of MILEY CYRUS as an EU trademark for goods and services in Classes 9, 16, 28 and 41.

Cyrus Trademarks Ltd opposed the application on the ground that it was confusing similar with the earlier EU trademark depicted below for goods in Classes 9 and 20:

CYRUS

In 2018 the EUIPO accepted the opposition in part on the ground that there was a likelihood of confusion between the mark applied for and the earlier mark in respect of most of the goods and services covered by the mark MILEY CYRUS.

That same year, the EUIPO dismissed an appeal filed by Smiley Miley, finding that the signs at issue were visually and phonetically similar to an average degree and that the conceptual comparison was neutral. Smiley Miley lodged an appeal with the General Court.

Decision

Having conducted an in-depth analysis of the case, the General Court annulled the EUIPO’s decision, thus granting the EU trademark MILEY CYRUS.

The General Court focused its decision on two main issues.

First, the court addressed the alleged error made by EUIPO when finding that the element ‘Miley’ (first name) in the mark applied for would be perceived as a less dominant element in comparison with the element ‘Cyrus’ (surname).

The court held that, although there is case law indicating that surnames have, as a general rule, a more distinctive character than first names, it is necessary, however,

to take account of factors specific to the case and, in particular, of the fact that the surname concerned is unusual […], which is likely to have an effect on that distinctive character […] and to take account of whether the person who requests that his or her first name and surname, taken together, be registered as a trademark is well known […].

Bearing in mind that (i) neither ‘Miley’ nor ‘Cyrus’ is a common first name or surname; (ii) the mark applied for refers to the first name and surname of a world-famous artist; and (iii) the artist is known by that first name and that surname taken together, the court stated that those two elements were equally distinctive.

Second, the court held that the EUIPO committed an error when comparing the signs conceptually and considering that the name of the reputed artist Miley Cyrus had no conceptual meaning.

The court underlined that:

a conceptual comparison remains possible where the first name or the surname in question has become the symbol of a concept, due to, for example, the celebrity of the person carrying that first name or surname […].

The well-known character of the American singer and actress meant that it was highly unlikely that consumers would not associate the mark MILEY CYRUS with the name of the artist.

Consequently, the court concluded that, although the marks were similar, the conceptual differences between them were such as to counteract the visual and phonetic similarities.

Comment

The judgment confirms, on the one hand, that names and surnames may have a conceptual meaning and, on the other, the possibility of ‘neutralising’ any visual and phonetic similarities where it is established that the relevant public assigns to one of the signs a clear and specific meaning that can be grasped immediately.

Considering that the courts have followed this same line over the past few years, the decision does not represent a turning point in case law. Nevertheless, it reinforces the protection enjoyed by celebrities through the registration of trademarks, bearing in mind their reputation and worldwide recognition as a result of appearances in the media.

This article first appeared on WTR Daily, part of World Trademark Review, in june, 2021. For further information, please go to www.worldtrademarkreview.com.

Author: Soledad Bernal

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Freedom of information vs the right to honour: The Fariña case

At the beginning of the year the Spanish Supreme Court issued a ruling in the Fariña case. Fariña is a well-known book in Spain that tells the story of Galician drug trafficking and was withdrawn from sale for a period of time as a precautionary measure due to a lawsuit filed for libel and slander.

libro abierto, notas, bolígrafo

 

The book mentions, on several occasions, Mr. Bernabe’s involvement in drug trafficking, which, in the plaintiff’s opinion, violated his right to honor.

To understand the case that concerns us, it is important to bear in mind that Mr. Bernabe has twice been tried for crimes related to drug trafficking and in both cases he was found not guilty with respect to the offences of which he was accused.

The principal issue under debate in this case is the conflict between two fundamental rights: freedom of information and the right to honour.

The Court that what is required of a professional transmitting information are reasonable efforts to verify the facts to avoid undermining the right of everyone to receive truthful information, and the information is to be considered truthful if it is based on objective and reliable sources that are readily identified and verifiable, so that the conclusions reached by the party furnishing the information based on the verified data from those sources are conclusions that the average reader or viewer would also have reached based on the same data.

The Court dismissed the complaint against the book’s author.

This is summary of the case published at Kluwer IP Law Copyright Cases

Author: Inés de Casas

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