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

by Bernd Justin Jütte

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).] 

The Authors' Take - Louboutin v Van Haren

AG Szpunar’s position on Louboutin’s red sole mark: 

a shoo-in for a shape mark

by Luxmi (“Lux”) Rajanayagam

Queen Mary, University of London

Is Louboutin’s red sole mark (shown below) a position mark, a colour mark or a shape mark?

That was the starting point for Advocate General (AG) Szpunar in his Opinion in Case C-163/16 Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV EU:C:2017:495 (22 June 2017).

Louboutin sued Dutch footwear retailer, Van Haren, for infringing the Benelux registration of its red sole mark by selling high-heeled women’s shoes with red soles.  In response, Van Haren contended the red sole mark was invalid since it was a 2D mark in which the colour red, when applied to the soles of shoes, conformed to the shape of the shoes, thereby giving them substantial value.     

The District Court of The Hague, Netherlands is now seeking guidance from the Court of Justice of the European Union (CJEU) on whether the notion of ‘shape’ pursuant to the absolute ground for refusal or invalidity under Article 3(1)(e)(iii) of the Trade Mark Directive (2008/95/EC), which concerns signs consisting exclusively of the shape which gives substantial value to the goods, includes non-3D properties of the goods such as their colour.

According to the AG, Louboutin’s red sole mark is neither a position mark nor a colour mark but a shape mark, specifically “a mark consisting of the shape of the goods and seeking protection for a colour in relation to that shape.”  Accordingly, Louboutin’s red sole mark potentially falls within the prohibition under Article 3(1)(e)(iii).  However, as the AG pointed out, the concept of shape which “gives substantial value” relates only to the intrinsic value of the shape and not to the reputation of the mark or its owner.

To overcome the prohibition under Article 3(1)(e)(iii), Louboutin will need to prove that the attractiveness of its red-soled high heels arises from the reputation of its red sole mark or as the owner of that mark and not from the intrinsic value of the shape.  On the face of it, that should not be too difficult since it is because consumers are head over heels for Louboutin’s red-soled high heels that competitors have created their own copycat versions.

Let’s however wait to hear what the CJEU says.

[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).]