The Authors' Take - Functionality, Cumulation and Lessons from Trade Mark Law: the Advocate General’s Opinion in Brompton Bicycle

Functionality, Cumulation and Lessons from Trade Mark Law: the Advocate General’s Opinion in Brompton Bicycle

by Ilanah Fhima

Much has been written about the Advocate General (AG)’s recent Opinion in Brompton Bicycle, C-833/18 (see e.g. here and here), where the AG had to consider whether there is an exclusion from copyright where a shape is functional. Here are some thoughts from the perspective of someone who has been thinking a lot about functionality in trade mark law.

First, after Cofemel, there can be no stricter test for originality for works which are also designs than for other copyright works, nor can there be a test of aesthetic merit. This means that cumulative protection will be common. The AG saw this as a serious problem. Copyright lasts for a long time and so there will little incentive for designers to use the design system. This though fails to take into account that design protection, while shorter is in some ways more expansive. The AG was also worried about the effect on legal certainty, because there is no registration to look back to in copyright. While this may be true, many other IPRs manage to exist without a formal registration (including unregistered designs).

Second, the AG had a mammoth task. On the one hand, the Cofemel court had said that cumulation was a dangerous thing. On the other, it said that for copyright protection, the originality requirement for a design can be no different from other copyright works. Some sort of balance was required. The AG’s chosen tool derived from trade mark law, where a sign will not consist “exclusively” of the shape of the goods which are necessary to achieve a technical result if there are “one or more minor arbitrary elements in a three-dimensional sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect. The trouble is, in trade mark law, the essential characteristics test is designed to examine what competitors need to compete, while in copyright, the explicit justification is to determine the designer’s degree of design freedom, which will in turn impact on originality. It is questionable whether a wholesale importation of ‘essential characteristics’ from trade mark to copyright is advisable, given the very different role it plays in the two systems.

Third, the AG said that an earlier expired patent is relevant but not determinative. A similar approach is apparent in trade mark law in Lego Juris. In practice though, it’s very difficult to find a trade mark case where there is an earlier patent but no functionality finding.

Fourth, the availability of alternatives is said to be relevant but not decisive to copyright functionality. This is in line with the approach to design functionality, but arguably less strict that trade marks. However, no concrete guidance is given on when alternatives will be relevant.

Fifth, the AG has been criticised for saying that functionality is an objective question, but then looking at the intention of the designer, which is subjective. We do this all the time in trade mark functionality though when we take into account functionality claims from the applicant’s advertising, website, and even patent claims. While the question of functionality is objective, the circumstantial evidence used to prove it may be subjective.

Finally, the AG rounds off by saying that even when a shape is functional, in cases of slavish imitation the applicant may be able to rely on unfair competition. It’s true this may lead to inconsistent protection across the EU, but that’s a consequence of the failure to harmonise unfair competition law. The CJEU made an identical point more than a decade ago in Lego Juris.

[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]

Call for articles on 'Love, Passion, and ... IP'!

Today's Valentine's Day and we all know what we love: IP!

That's why today's also the perfect day for us at JIPLP to launch a new call for articles which explore IP issues as relating to the realm of love and passion.

Examples include but are of course not limited to:

• IP controversies between dating apps and websites, eg the recent Tinder/Bumble feud over the swipe;
• Copyright protection of certain types of material, as - eg - discussed here;
• Trade mark registration and protection of love-related signs, as - eg - discussed here.

In sum: anything that (1) comes with an IP angle and (2) relates to the realm of love and passion is something that we would like to consider for publication on the Journal.

We thus invite interested authors to submit articles which:

• Concern IP issues as relating to the realm of love and passion;
• Have a length of less than 8,000 words (footnotes included);
• Comply with JIPLP style guidelines;
• Are submitted through our portal here.

The deadline for submissions is 14 June 2020. All contributions that are submitted will go through our ordinary peer-review process and authors will receive a decision as regards publication by early July.

If you have questions or would like to discuss an idea or a proposal for an article, please email Editor Eleonora Rosati and/or Managing Editor Sarah Harris.

Happy Valentine's Day!

The Authors' Take - Fashion Piracy and Artificial Intelligence - Does the New Creative Environment Come with New Copyright Issues?

Fashion Piracy and Artificial Intelligence - Does the New Creative Environment Come with New Copyright Issues?

by Heidi Härkönen

The development of artificial intelligence (AI) creates challenges both for the copyright system and for the fashion industry. Nowadays and especially in the future, creative outputs by fashion designers are being challenged by AI-generated works. This is likely to create new copyright issues for an industry that is already notorious for its complex copyright environment. What is more, the approach that copyright law takes towards AI-generated fashion designs might have an effect on the sustainable development of the fashion industry. 

The key copyright challenge that the fashion industry faces is related to fashion designs passing the originality threshold and hence qualifying for protection. Because the functionality of a garment dictates its design usually at least to some extent, it is rather difficult for fashion designs to pass the originality threshold. In many cases, this reduces the legal risks of copying fashion designs. As long as the modern fashion industry has existed, it has struggled with copying, imitation and knock-offs. Hence, this paper has a particular focus on copyright infringement issues that the fashion industry is likely to face due to the increasing use of AI fashion designers. 

The lack of protection has helped especially fast fashion companies to knock off popular designs of others. Fast fashion – meaning cheap, mass-produced, low quality garments that imitate popular designs created by, e.g., high fashion houses or indie designers – has played a significant role in driving the fashion industry into an environmentally catastrophic situation. Currently, fashion is one of the most polluting industries in the world. The total greenhouse gas emissions from textile production are more than those of all international flights and maritime shipping combined (Ellen MacArthur Foundation, 2017). Hence, one could state that sustainability is probably the most significant challenge of today’s fashion industry and cannot be excluded when considering the future legal environment for the industry. Thus, the sustainability perspective is also taken into account in this article. 

In the current copyright environment, it seems that AI-generated fashion designs would be more vulnerable for copyists than human-created designs. The copyright system is primarily created in order to protect the creative endeavours of human creators. Since an AI fashion designer is not a human being, in most cases creations generated by it would fall into the public domain if there is not sufficient human input behind the creativity. This means that these AI-generated fashion designs would be free for everyone to copy, and fast fashion companies would have even less legal risks when it comes to their habit of knocking off popular designs by others. This creates a challenge that is especially related to sustainability: according to some previous legal research, copying is the engine of the fashion industry that keeps the industry going. Without copying, the fashion cycle would appear much slower (Raustiala & Sprigman, 2006). However, in today’s world, where way too many clothes are being produces, purchased and disposed, a faster fashion cycle is the last thing that the world needs. Instead, when considering how the copyright system should treat AI generated fashion designs, one should not come up with solutions that make fashion copying even easier. 

This paper concludes that, due to the aforementioned reasons, the copyright system should find a way to include AI-generated fashion designs in its protected subject matters. One option to do so would be that a computer user who initiates the creation of an AI-generated work should be recognized as the author and copyright owner of the resulting work (Denicola, 2016). Another possibility would be to develop copyright protection into a “dual system”, that would be divided to “romantic” protection of human-created original works, and “industrial” protection of investments and development of machine creation (as suggested by Alén-Savikko, Ballardini and Pihlajarinne, 2018). 

Furthermore, this article states that recognizing AI creativity in the eyes of copyright law would be a suitable solution for fashion houses that actually do create designs themselves – with or without the help of AI. It would not serve the business strategy of the kind of fashion operators that just rely on copying successful designs of others, which is what many fast fashion companies tend to do. If the copyright system would consider AI creativity worth protecting, the system could also provide incentives to develop and utilize AI designers, in addition to promoting creativity instead of imitation.

[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 - Liability for trade mark infringement of online marketplaces in Europe: are they 'caught in the middle'?

Liability for trade mark infringement of online marketplaces in Europe: are they 'caught in the middle'?

by Carina Gommers and Eva De Pauw 

Online marketplaces reach potential customers all over the world, but can also be used for goods infringing intellectual property rights. Even when online marketplace operators do not themselves participate in such transactions, they do draw economic benefit therefrom, e.g. by charging a fee per transaction. So, to what extent can they be held liable for the sale of infringing goods through their platforms? 

Whereas such operators qualify as providers of information society services in the sense of the E-Commerce Directive, they are also intermediaries in the sense of Article 11 of the IP Enforcement Directive. And like any economic operator, they must abide by the trade mark laws and other legislation. 

The interpretation of these distinct sets of rules has given rise to a number of decisions of the Court of Justice of the European Union (CJEU). Certain aspects seem to have been settled by now, but many issues remain open. Absent contributory infringement in EU trade mark law, one of the most pressing questions is if, and to what extent online marketplaces can be held liable for direct trade mark infringement. Another question of concern is whether injunctions can be imposed requiring them to take preventive measures without running afoul of the prohibition of imposing general monitoring obligations as provided for in Article 15 of the E-Commerce Directive. The article focuses on these two questions and also discusses the limits of the liability (‘hosting’) exemption of Article 14 of the E-Commerce Directive. 

The Coty/Amazon case (C-567/18), currently pending before the CJEU, might shed some light over the first question, namely the liability for direct trade mark infringement of online marketplace operators, especially when they engage in additional services like they often do nowadays. Such additional services can include supplying the goods to buyers, assisting sellers in promoting the sale of their goods. 

The teaching to be expected from the Coty/Amazon judgment will largely depend on how the CJEU will interpret the preliminary referral. If it sticks to the facts as presented to it by the German Supreme Court, then it will probably not go as far in its analysis as did the Advocate General, who opened the door to direct liability for trade mark infringement of online marketplace operators, and by extension, online intermediaries in general. Hence, further guidance might be on its way … or not just yet. 

In any event, a comprehensive ‘toolbox’ will probably not be available in the near future. In the meanwhile, to deal with that, the authors think that several considerations made in the Google Adwords and L’Oréal/eBay cases (C-238/08 and C-324/09, respectively) are still relevant today. Liability for direct trademark infringement should not be accepted too soon, at least if online marketplace operators clearly communicate their role to the consumer. After all, establishing a direct trade mark infringement requires an adverse effect on one of the functions of the trade mark. At least as far as the essential origin function is concerned, no impairment thereof can be presumed if the advertising is not misleading as to the nature of the operator. As stated by the Advocate General in L’Oréal/eBay, in 2011, and even more so today, consumers are used to the existence of various intermediary economic activities. 

Of course trade mark owners should not be left without ammunition. An equitable balance between the interests of online marketplace operators and the interests of trade mark owners could be found by imposing higher monitoring duties on online marketplace operators assuming an ‘active’ role. Where such ‘active’ intermediaries cannot benefit from the hosting exemption, they can be liable for tort if they have not been sufficiently diligent and a causal link exists between their lack of diligence and the damage suffered. Requiring them to display a higher degree of diligence could therefore solve a lot. It would make sense to have a proactive monitoring duty the extent this is proportionate to the degree of their involvement. 

The article also discusses some interesting examples of preventive measures imposed on operators of online marketplaces or social media by judges in The Netherlands, Belgium and Germany, as well as the CJEU’s ruling in Eva Glawischnig-Piesczek/Facebook (C-18/18). 

In this area – the prevention of infringements – an important challenge for online marketplace operators lies in setting up more performant technologies to reveal potential trade mark infringement by their customers/vendors. Automated identification and/or enforcement and voluntary, non-judicial takedown mechanisms established between online intermediaries and IP rights owners are bound to become increasingly important.

[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]