The Authors' Take - Hosting public domain into a minefield: the resistance to art. 14 of the DSM Directive and to the related rules that transpose it into national law

Hosting public domain into a minefield: the resistance to art. 14 of the DSM Directive and to the related rules that transpose it into national law



Art. 14 of the DSM Directive plays a role for both economic and non-economic exploitations of works of visual art’s reproductions. The rule helps provide access to information on cultural heritage and therefore facilitates the educational mission of bodies managing cultural heritage. Besides this, this provision also introduces some additional freedom for exploiting some visual art-related material and elaborating derivative works. These initiatives can be taken by both market operators and public sector bodies managing cultural heritage. Basically, art. 14 confirms the policy initiatives according to which what is in the public domain shall remain into the public domain. 

However, art. 14 is only a prima facie manifesto for public domain, and it merely refers to works of visual art. Its aim is under threat from different perspectives, i.e. copyright and neighbouring rights, let alone unfair practices, contractual provisions and national rules on cultural heritage alone. 

First, this threat depends on the low requirements needed to enjoy copyright protection. The threshold of originality is so low that many reproductions of works of visual art can easily access copyright protection, including 3D reproductions that are currently more and more used, also for elaborating a growing number of derivative works, such as augmented or virtual reality experiences. 

Secondly, several neighbouring rights can interfere with art. 14 and limit its impact on public domain. The reference goes not only to the (obvious) protection on non-creative photographs, but also to critical editions, editions principes, that some countries introduced. It also points out to the sui generis protection of databases, even though the latter is somehow limited by the Directive on Open Data

Overall, to accomplish art. 14’s political goal as initially thought, courts shall interpret it in a consistent fashion with modern approaches favouring wide circulation and re-use of cultural heritage’s information.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Uncovering Trade Secrets in China: An Empirical Study of Civil Litigation 2010–2020

Uncovering Trade Secrets in China: An Empirical Study of Civil Litigation 2010–2020



Trading partners of and foreign investors in China have claimed that trade-secret protection in the country is far from adequate. This intuition is rooted in China’s lack of a stand-alone trade-secret act, deficiencies in China’s civil enforcement mechanisms, the unsatisfactory win rate for plaintiffs and damages awarded, and the excessive burden-of-proof requirements imposed on trade-secret owners. Although these issues have been controversial for more than two decades, relevant debates have often lacked even the barest empirical support.

Against this backdrop, and as a byproduct of the US-China trade disputes in 2018 and 2019, China amended the Anti-Unfair Competition Law (AUCL), being the primary legislation that reflects trade secrets, in 2019 to further strengthen its trade-secret protection. The 2019 Amendment of the AUCL had, among others, substantially reformed the damages and evidence rules so as to lift the damages cap and partially reverse the burden of proof in cases concerning trade secret misappropriation. While these reforms have come under the spotlight, their actual impact has yet to be elucidated.

In this article, we investigate all published civil-litigation cases pertaining to trade-secret misappropriation in China from 2010 through 2020. Our empirical findings, which cover various aspects of trade-secret law enforcement in the country, paint a realistic picture of (1) the number and the spatio-temporal distribution of trade secret litigation, (2) the win rates of trade-secret holders and their available remedies, (3) the percentage of cases involving departing employees, and (4) foreign parties’ participation in the private enforcement of trade secrets. By presenting the empirical data with contextual analyses, this article provides a rigorous reflection of the features and patterns of private trade-secret enforcement in China during the studied period.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The national transpositions of the DSM Directive: JIPLP Special DSM Issue and live webinar

In late 2021, we launched a call for articles for a special issue entirely devoted to the national transpositions of the DSM Directive 2019/790.

We are now delighted to inform our readers that the ‘DSM Special Issue’ is just about to be released and that, on 8 June 2022, we will be hosting a webinar during which the Authors of accepted articles will present and discuss the various national approaches to the implementation of some of the Directive’s most important provisions.

Join us for an afternoon of DSM-focused discussions!

Speakers

Chair

For further information and to register, just click here.




Announcing the JIPLP Special Issue on the national transpositions of the DSM Directive: Call for Articles!

The Journal of Intellectual Property Law & Practice (JIPLP) is delighted to announce a Call for Articles for its forthcoming special issue on the national transpositions of the DSM Directive 2019/790, which will be published in 2022.

Interested authors are invited to submit articles in the range of 3,500-6,000 words on a topic of their choice within this theme for consideration for publication in JIPLP. The issue will focus on the national approaches to the interpretation and transpositions of the Directive's provisions. Both actual transposition measures and draft provisions can be the topic of articles. No articles focusing exclusively on the text of the Directive may be considered for this issue.

Relevant articles must be submitted through the online portal, be in accordance with JIPLP house style, and carry the indication that they are for consideration for the special issue on the DSM Directive's national transpositions.

The deadline for submissions is Friday, 18 March 2022. No late submissions will be considered for this special issue.

For authors interested in discussing informally the topic of a possible contribution, please email the Editor of this special issue, Eleonora Rosati, and/or Managing Editor Sarah Harris.

The special issue will be available in complimentary open access for a limited period of time after publication. The Editor is also considering the possible organization of an online conference/meeting with the authors of the special issue after the special issue has been published.

The Authors' Take - Are copyright-permitted uses “exceptions”, “limitations” or “user rights”? The special case of Article 17 CDSM Directive

Are copyright-permitted uses “exceptions”, “limitations” or “user rights”? The special case of Article 17 CDSM Directive


by Tito Rendas


In law, terminology matters a great deal. In the specific case of copyright, it matters because the words we use to refer to permitted uses of protected works – uses like private copying, quotation or parody – may have important practical consequences. With this forthcoming article, I hope to clarify the legal nature of permitted uses in copyright law. For that purpose, I shall tackle two sources of terminological disagreement.

The first relates to the nature of the rules that lay down permitted uses, specifically whether they should be considered “exceptions” or “limitations”. According to conventional wisdom, this terminological choice may affect the way we interpret these provisions: it is said that “exceptions” must be interpreted in a strict manner, whereas “limitations” tolerate broad readings. After concluding that the rules setting forth permitted uses are better described as “exceptions”, I make clear that this qualification should not be taken as carrying a preference for their narrow interpretation or as admitting their hierarchically inferior status in relation to exclusive rights. Despite being exceptions, nothing prevents these rules from being construed extensively.

I then move on to examining the nature of the entitlements conferred by copyright exceptions. I submit that, in general, these entitlements are not rights properly-so-called, since they are not paired with a correlative duty. Instead, we should refer to them as “privileges” or “freedoms”.

In some cases, however, the prerogatives enjoyed by users may be appropriately qualified as “rights”. I argue that the safeguards contained in Article 17 CDSM Directive create one such case. Whereas Article 17(7) puts online content-sharing service providers under a duty not to prevent uses that are covered by exceptions, Article 17(9) gives the beneficiaries of exceptions access to truly offensive means of reaction, instead of mere means of defense. Read together, these safeguards confer actual rights upon users.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Fighting the tech giants – news edition: Competition law’s (un)suitability to safeguard the press publishers’ right and the quest for a regulatory approach

Fighting the tech giants – news edition: Competition law’s (un)suitability to safeguard the press publishers’ right and the quest for a regulatory approach

by Tone Knapstad

As part of the ongoing debate on value-sharing for creators and users of online content, press publishers were granted a neighbouring right under EU copyright. This entailed an opportunity to obtain remuneration through licences for the use of online journalistic content by online aggregation services.

However, the right’s lack of efficiency became visible when press publishers in France, the first country to implement the right, attempted to enforce remuneration for Google’s use of snippets. Google demanded zero-remuneration licences or would abstain from using snippets from news webpages, which has proven to lead to decline in webpage traffic. Accordingly, the press publishers were still not seeing the promised remuneration. Since the strong market position of Google appeared to enable the ultimatum, the publishers claimed the behaviour infringed competition law, constituting an abuse of dominance.

This article argues that EU competition law cannot be relied on to ensure remuneration under the press publishers’ right. This argument is, firstly, based on an analysis concluding that practices similar to that of Google – forcing zero remuneration licences - do not constitute an abuse of dominance under Article 102 of the Treaty of the Functioning of the European Union. Secondly, the argument is founded on the conclusion that competition law, de lege ferenda, should not be applied for such purposes, as the goal of competition law does not warrant securing remuneration. Moreover, it is suggested that the fairness standard, which some argue is becoming a benchmark in EU competition law, is not a steering principle in itself, but rather that fairness is the result of correct competition law enforcement.

Lastly, the article maps the alternative regulatory approaches initiated in the EU (Digital Markets Act), Australia (Mandatory Bargaining Code) and the US. This is done to assess whether these solve the problem of press publisher remuneration and to explore the implications of regulation for competition law.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - The purpose of copyright

The purpose of copyright 

by Simone Schroff

Digital technology has redefined how copyright works are created, distributed and consumed, changing the expectations of creators, commercial intermediaries and users alike. In this environment, clarity about what copyright aims to achieve is crucial to strike a viable bargain between the different groups.

The purpose of copyright has come under intense and sustained scrutiny over the last two decades. Copyright law is traditionally seen as a tool to protect the author, reward creators and investors and ensure societal benefit. While the debates about the right balance are wide-ranging and sometimes highly contentious, any consensus has proven elusive. Stakeholder dissatisfaction and claims of policy failure are increasingly common.

This article argues that the stagnating debates show that the traditional copyright theories do not provide sufficient guidance. Instead, reforms need to be reassessed based on what policy makers actually try to achieve. Using conventional discourse analysis on empirical EU policy evidence, the cross- institutional minimum consensus on what copyright aims to achieve is explored.

The results show how EU copyright policy differs from the theoretical and member state level debates. In particular, all aspects of EU copyright are shaped by the Single European Market: technological change brings economic benefits and copyright is a tool to harness them. As a result, copyright is considered a property right and all interference with it needs be kept to a minimum while competition law provides the safety net. The findings also show that while the narrative of harm to creators mobilises public opinion, reform proposals are more likely to succeed if they treat technological innovation as an economic opportunity rather than a threat.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - For a clarification of the concept of similarity - Critical review of European case-law regarding infringement of a mark with reputation

For a clarification of the concept of similarity - Critical review of European case-law regarding infringement of a mark with reputation


by Louis Louembé, Pierre Massot, and Mythili Thaya


What is similarity between signs? If no one asks us, we know what it is. If we wish to explain, to him who asks when elements of resemblances are sufficient for a sign to be considered similar to a trade mark with reputation, we find it far more difficult! This is the paradox of trade mark lawyers put in the words of Saint Augustine (surely for a more philosophical question). Although more practical, the question of the similarity of signs is of the utmost importance to defend efficiently trade marks with reputation against free-riding.

Indeed, when a trade mark is well-known, it is sufficient for the sign in dispute to repeat a characteristic element of the trade mark with reputation, however minor it may seem, to trigger a mental association with it, as demonstrated in the famous "Master" case (judgment of 11 December 2014, Coca-Cola, T-480/12). It is therefore important to have a method of assessing similarity between signs sufficiently thorough to take into account apparently minor elements but which can be sufficient to create a likelihood of association because of all relevant factors (such as of the reputation of the trade mark, the identity of the products and services offered, etc.).

Our article aims at demonstrating that European case-law is not satisfying in this regard. Indeed, the CJUE has initially modelled the method of assessing similarity in the case of infringement of a trade mark with reputation on the method designed to search for a likelihood of confusion. As a consequence, it excludes any consideration of reputation at the stage of assessing similarity and encourages consideration of the overall impression produced by the signs. Although the CJEU has attempted to make certain adjustments, the method of assessing similarity in relation to trade marks with reputation remains unsatisfactory and a source of uncertainty in the case law. It is also inconsistent with the case law on protected designations of origin, even though the logic governing these two systems is similar. We conclude that the method of assessing similarity in the case of infringement of a trade mark with reputation should be reviewed and defined with regard to its own purpose, i.e. identifying elements of resemblances sufficient to create a mental link between signs, and not a likelihood of confusion.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Comment on Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (2d Cir. March 26, 2021)

Comment on Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (2d Cir. March 26, 2021)

U.S. Second Circuit Court of Appeals tames “transformative” fair use; rejects “celebrity-plagiarist privilege”; clarifies protectable expression in photographs


by Jane C. Ginsburg


In Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (March 26, 2021), the Second Circuit reversed the SDNY’s grant of summary judgment that Andy Warhol’s silk screen adaptation of a photographic portrait of entertainer Prince was a fair use. The Second Circuit’s decision retreats both from its prior caselaw’s generous characterization of artistic reuse as “transformative,” and from the outcome-determinacy of a finding of “transformativeness.” The court also provided an important explanation of copyrightable authorship in photographs.

Lynn Goldsmith's photograph (L);
Andy Warhol's Prince (R) 

Like other recent decisions, this judgment may signal a taming of “transformative use.” Prior caselaw, particularly in the district courts, seemed to accept almost any alleged new meaning or purpose, or added expression, as “transformative,” and then, having racked the first fair use factor into the defendant’s column, lined up the other three to conform to the first. Appellate courts now may be curbing this enthusiasm, both by adopting a more critical assessment of alleged transformations, and by reviving the independent importance of the fourth factor, market harm. In emphasizing the impact of the defendant’s use on the plaintiff’s ability to license derivative works, the Second Circuit may have begun to redress Cariou’s derogatory treatment of the art world proletariat. The court recognized that depriving photographers of licensing markets, including markets for using their works as “raw material” for other artists to stylize, disserves the overall goal of copyright to promote creativity by enabling artists to make a living.

Furthermore, the court’s exposition of protectable expression in photographs should reassure photographers, particularly photojournalists, whose art consists largely of knowing how and when to seize the moment. Against the contention that such images merely convey a reality the photographer did not create, the court’s emphasis on “the image produced in the interval between the shutter opening and closing,” (at *37) recognizes that “the readiness is all.” (Shakespeare, Hamlet V.2).


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Preclusion Due To Tolerance: Conditions For Applying The Acquiescence Rule In Trade Mark Law

Preclusion Due To Tolerance: Conditions For Applying The Acquiescence Rule In Trade Mark Law

by Michal Bohaczewski


The article analyses a rule of the EU trade mark law referred to by the legislature as ‘acquiescence’. The provisions on acquiescence provide for a period of preclusion for filing an invalidation or infringement action against a later registered trade mark which has been used on the market, provided that the proprietor of the earlier right tolerated that use for 5 successive years. 

The study first examines the prerequisites for the commencement of the period of preclusion resulting from the jurisprudence of the Court of Justice of the EU. In particular, the author refers to the requirement of knowledge by the proprietor of the earlier trade mark of the use of the later mark which, in some cases, in the absence of evidence of direct knowledge, may be deduced from the circumstances of the case. 

The article further analyses the conditions which need to be fulfilled for the period of preclusion to expire. The author raises the issue of the form in which the proprietor of the earlier right should oppose the use of the later trade mark in order to exclude his acquiescence. This matter of major practical importance is currently subject to a question referred to the Court of Justice for a preliminary ruling (C-466/20). 

The study also examines the relationship between the preclusion due to acquiescence and the ‘peaceful coexistence’ of the trade marks as a factor to be taken into account in the assessment of the likelihood of confusion between the signs, since prima facie the scopes of application of both rules may seem to overlap. The author concludes however that in reality there is little room for an overlapping between them.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]