The Authors' Take - Justifications for reconsidering initial interest confusion after Interflora


Justifications for reconsidering initial interest confusion after Interflora


In Interflora v Marks & Spencer, the Court of Appeal rejected initial interest confusion as a concept relevant to trade mark infringement claims, calling it “highly controversial” and “an unnecessary and potentially misleading gloss” on the Court of Justice of the European Union’s tests for trade mark infringement. However, Interflora should not be considered the final word on the relevance of initial interest confusion for three reasons.

First, the alleged controversy surrounding initial interest confusion largely concerned its use in the US to find infringement without there being a likelihood of confusion present. However, by the time of Interflora, this controversy had been ameliorated by a change in approach taken by some US appeals courts which insisted on a likelihood of confusion. This brought the reality of initial interest confusion in the US closer to the position advocated for by critics of the doctrine but was not recognised in Interflora.

Further, initial interest confusion reasoning was familiar in England and Wales under the Saville Perfumery v June Perfect approach to trade mark infringement. Under Saville, distinguishing material “outside” the defendant’s mark was to be disregarded when assessing a likelihood of confusion. This meant that material that might remedy a consumer’s initial interest confusion was irrelevant, and it is therefore wrong to treat initial interest confusion as a US concept (although the terminology does originate there).

Finally, the tests that Interflora stated should apply to the facts of that case (following the CJEU) were an application of initial interest confusion despite the Court’s rejection of the concept. This is because in Interflora, the Court was only concerned with whether a likelihood of confusion existed at a particular point in time, the possibility of such confusion being remedied later being irrelevant (in an approach somewhat akin to Saville’s ignoring of extraneous material).

[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 Authors' Take - CJEU rules that taste of a food product is not protectable by copyright


CJEU rules that taste of a food product is not protectable by copyright


In its recent decision Levola Hengelo BV v. Smilde Foods BV, the CJEU ruled that the taste of a food product is not protectable by copyright. According to the CJEU, the subject matter of a 'work' within the meaning of the InfoSoc Directive must be "expressed in a manner which makes it identifiable with sufficient precision and objectivity". The experience of taste, however, is inherently subjective and there are presently no technical means to achieve a precise and objective identification thereof. Consequently, taste cannot be protected by copyright.

Two things are particularly worth noting. 

The first is the scope of the objectivity requirement for works. Does it also cover smells? There are diverging views on copyright protection for smells in the Member States and it is tempting to think that the CJEU's decision sought to put an end to the controversy. Then again, it may well be that smell is easier to objectively identify than taste and the CJEU itself left the possibility of trade mark protection of smells open in Sieckmann. Additionally, the decision in Levola may also have ramifications for copyright in combinations of known elements and industrial designs, two cases where the determination of the work is notoriously subjective.

The second is that the decision is the latest example of the CJEU's preference for pragmatism over dogmatism. The CJEU justified its holding by reference to the Berne Convention and the WIPO Copyright Treaty, but I doubt that their provisions contain the limitation to works it has now proclaimed. In any case, the Berne Convention was signed in 1886 and the CJEU should be lauded for interpreting it in a manner fit for the 21st century. Litigation over copyright-protected tastes would pose serious challenges to litigants and courts and the CJEU did the right thing in closing the door on 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 Authors' Take - AG Szpunar pleads for a cautious use of fundamental rights in copyright

AG Szpunar pleads for a cautious use of fundamental rights in copyright

With his Opinion in Funke Medien (C-469/17) Advocate General Szpunar opened the first (of at least three) rounds in which the Court of Justice of the European Union will test the boundaries of exclusive rights and copyright exceptions, and possibly also the limits of copyright in the EU (see also C-476/17 and C-516/17).

In proceedings before the German courts, the German Government seeks to prohibit the online publication of confidential military reports by invoking its copyright in the documents. The reports had been made available by the Westdeutsche Allgemeine Zeitung, a newspaper owned by Funke Medien. In the absence of an applicable exception in the EU copyright rules, the German courts asks whether Member States can exercise flexibility when implementing the exceptions under Article 5 of Directive 2001/29, and whether the fundamental rights of the Charter create exceptions to copyright beyond those expressly mentioned in the directive.

The Advocate General changes the perspective of the analysis and asks instead whether a restriction of the right to freedom of expression enjoyed by the newspaper can be justified by the government’s interest to protect its intellectual property in the reports. This is not the case when the reason for invoking copyright is to keep the information contained in the documents secret. It is, according to the Advocate General, not the purpose of copyright to protect the confidentiality of information. In such circumstances a limitation to freedom of expression cannot be justified on the grounds of intellectual property. Moreover, even if that were possible, a Member States could not, as a guarantor of fundamental rights, invoke the right to property against a private party.

Advocate General Szpunar cautions against a liberal application of fundamental rights in copyright cases outside of the legal provisions, which already reflect a balance between different interests and fundamental rights. Only in exceptional cases, for example when copyright is abused to achieve goals that are not covered by the purpose of copyright law, fundamental rights can serve as external checks to this property right. This line of argument is important, as it lends legitimacy to copyright rules, which should not be destabilized by challenges based on fundamental rights. Instead, the EU Charter should be used to interpret existing copyright rules. The Opinion can also be seen as an appeal to the legislator to review limitations and exceptions and to recalibrate, if necessary, the balance in copyright 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).

Fashion Law Special Issue - Fashion and IP: in search of the perfect fit (Editorial)

Fashion and IP: in search of the perfect fit 

Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 843, https://doi.org/10.1093/jiplp/jpy144
Published:

18 October 2018

Favouring clean and essential lines, iconic designer Cristóbal Balenciaga used to say that ‘Elegance is elimination’. But is the same, ie that less is more, also true for the legal protection available to fashion creations, accessories, and all those elements that populate the universe of la mode?

In this special issue of the Journal of Intellectual Property Law & Practice(JIPLP), co-edited with Carina Gommers (JIPLP Editorial Board and Hoyng Rokh Monegier) and Sarah Harris (JIPLP Managing Editor), we explore a number of topics relating to the protection of fashion by means of intellectual property (IP) rights. Our authors, who have tackled relevant issues in different jurisdictions and in a number of legal areas, provide readers with an in-depth analysis of some of the most significant developments and challenges facing IP law in this particular sector.
Three main themes are thus explored.
The first one relates to protection. This is a concept that concerns, first, the protection of fashion creations, and signs used to distinguish the products of a certain undertaking from those of other undertakings. The legal saga concerning validity of the Louboutin red sole as a trade mark in a number of jurisdictions showcases the problematic nature of setting an optimal balance between IP protection and free competition. ‘Protection’ may thus have another meaning: it is also about protecting subjects other than designers and fashion houses, including competitors, workers in the fashion industry, and consumers alike. We investigate whether and to what extent models may be regarded as akin to performers and be vested with performers’ rights. We also tackle the increasingly pressing issue of undisclosed advertising by means of sponsored posts. We travel all the way to the United Arab Emirates to learn more about the regulatory approach to social media influencers in that country, at a time when different jurisdictions have adopted or are considering introducing ad hocframeworks with the stated goal of protecting consumers.
The second theme is enforcement. Effective enforcement has proved particularly problematic in the fashion sector, with phenomena like ‘fast fashion’ proving challenging to tame. Our contributions however send a message that, if not altogether positive, is at least one of hope: things are changing and increasingly interesting solutions have been provided at both the legislative and judicial levels. Decisions like that of the Court of Justice of the European Union in Nintendo, C-24/16 and C-25/16, EU:C:2017:724 are good news for holders of design rights. Owners of trade marks with a reputation have been increasingly provided with a clearer idea of how far protection of their signs may go in different jurisdictions, including Europe and China. Copyright is also available in certain jurisdictions for less conventional works, like a store layout. In addition, online enforcement through the involvement of intermediaries has proved a significant tool in the fight against counterfeits.
The final theme is creativity. An optimal IP regime is one that protects effectively the holders of existing rights and the cultural heritage of a certain community, while not stifling the creative work of others. This is particularly true for fashion, where trends, discoveries and re-discoveries are possible thanks to the cumulative efforts of those working in this sector at different levels: designers, fashion houses, journalists and bloggers, celebrities, consumers, and … even lawyers! We travel to Africa to learn more about how the Maasai, an ethnic group that has traditionally led a semi-nomadic life across southern Kenya and northern Tanzania, have been reclaiming ownership of their name, image and reputation and fighting against their unauthorized appropriation and re-use also in fashion. We consider the phenomenon of home-sewn copies of fashion creations in Finland, and the extent of trade secrets protection in the fashion sector.
As early as the 19th century Louis Vuitton had understood the importance of vesting his products with legal protection: to avoid being copied in the aftermath of the great success of his flat-top travel trunk, he first introduced a striped canvas (Rayée) and then a chequered pattern (Damier) to distinguish his own products from those of others. Today effective protection of fashion creations remains as crucial as ever, and so is the need to set an appropriate balance between this and third-party interests and rights. Enjoy JIPLP’s fashion law special issue!

Our special FASHION LAW issue is here!

Below you can find the table of contents of our special fashion law issue!

Please note that you can access articles which have already been edited and processed through OUP's Advance Access feature. For information on subscriptions, please visit the dedicated page at our OUP website - if you only wish to get access to a single article, purchase options will be available on the specific article page. 

Volume 13, Issue 11, November 2018

EDITORIAL

Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 843, https://doi.org/10.1093/jiplp/jpy144

CURRENT INTELLIGENCE

Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 844–845, https://doi.org/10.1093/jiplp/jpy140
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 845–847, https://doi.org/10.1093/jiplp/jpy108
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 847–849, https://doi.org/10.1093/jiplp/jpy087
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 849–851, https://doi.org/10.1093/jiplp/jpy110
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 851–853, https://doi.org/10.1093/jiplp/jpy141
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 853–854, https://doi.org/10.1093/jiplp/jpy088
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 854–856, https://doi.org/10.1093/jiplp/jpy138
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 856–857, https://doi.org/10.1093/jiplp/jpy125
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 858–859, https://doi.org/10.1093/jiplp/jpy112

ARTICLES

Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 860–866, https://doi.org/10.1093/jiplp/jpy117
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 867–877, https://doi.org/10.1093/jiplp/jpy118
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 878–883, https://doi.org/10.1093/jiplp/jpy119
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 884–889, https://doi.org/10.1093/jiplp/jpy132
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 890–895, https://doi.org/10.1093/jiplp/jpy136
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 896–900, https://doi.org/10.1093/jiplp/jpy126
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 901–908, https://doi.org/10.1093/jiplp/jpy120
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 909–916, https://doi.org/10.1093/jiplp/jpy121
Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 917–921, https://doi.org/10.1093/jiplp/jpy096

IP IN REVIEW

Journal of Intellectual Property Law & Practice, Volume 13, Issue 11, 1 November 2018, Pages 922, https://doi.org/10.1093/jiplp/jpy145