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Tugce Kucukali is an IPilogue Writer and incoming LL.M. Candidate at University of British Columbia.

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The European Union (EU) Court of Justice Advocate General, Saugmandsgaard ØE, the long-awaited opinion on the action brought by the Republic of Poland against the contentious Article 17 of . The opinion examines the background of the Directive, the contested provisions, their interference with the right to freedom of expression, and the compatibility of this limitation with

The Advocate General explains the ratio legis of the Directive by referencing the value gap between the value that an online content-sharing service provider acquires from the copyrighted subjects and the value that it distributes to the rights-holders. The amount distributed is quite insignificant compared to the amount earned. The Directive also addresses questions such as whether the providers should themselves acquire rights on a work by licensing and remuneration and whether they could benefit from copyright exemptions, such as caricature, parody, and pastiche. The Directive attempts to achieve an equal footing on which providers and rights-holders could negotiate and eliminate this gap.

Under the Directive, the strict liability of the content-sharing service providers, who communicate the copyrighted works to the public, would require them to change their business model. As per Article 17, the providers shall not solely perform the “notice and takedown” procedure but “notice and stay down,” making the best efforts to prevent future uploads. This provision imposes an obligation of diligence to the providers since removed content is often re-uploaded. Rather than removal of such content ex post, ex ante prevention is set forth.

By this obligation, the providers employ diverse software tools such as hashing, watermarking, or fingerprinting. The Directive does not require the providers to adopt specific measures. Rather than a direct obligation, their use is indirectly imposed as an exemption from liability. The Advocate General emphasizes that this obligation is stipulated for operators that manage a significant, or even huge, volume of content. In each case, the measure is determined by considering the type, audience and size of the service, type of works, availability of suitable and effective means, and proportionate cost.��

The Advocate General agrees that the provision interferes with freedom of expression since users are not completely free to upload any content. However, the content is monitored not to suppress freedom of expression, but to prevent copyright infringement. Even though the providers are currently able to filter and block any content according to their self-regulations, this does not constitute interference by a public authority, as is the case of Article 17.

Regarding the compatibility of this limitation with the Charter, the Advocate General investigated whether the limitation is prescribed by law, respects freedom of expression, and adheres to the principle of proportionality. Since the Advocate General regards this monitoring obligation as a specific and not a general obligation, prohibited by Article 15 of , the limitation does not infringe the “essence of the right”, its untouchable core which must remain free from interference. According to the Advocate General, the EU legislature’s safeguards minimize the freedom of expression risks. This respects the proportionality requirement while considering the value gap created, the difficulties of the notice and takedown system for right holders, and the fact that the obligation concerns a specific group of providers. Even though the Advocate General’s opinion was expected to sway in this direction, the instructions made towards the member states are crucial for the transposition of the Directive into their national laws, eventually leading to the smooth application of the Directive across the EU.

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First, harmonisation of national trade mark laws in the Union has been “tight”. In this regard, for reasons that make sense in the European political and legal theatre, it is different from the international model of so-called “minimum rights” harmonisation that drove convergence of trade mark norms for the preceding century. Second, the Trade Mark Directive (with the aid of the Court of Justice and national courts) has effected almost total harmonisation of substantive trade mark law, belying the claims of limited harmonisation that are found in the recital to that Directive. Third, the Court of Justice has exhibited a tendency to limit any room for member state manoeuvre, for example, finding that even optional provisions of the Directive must be given a single European meaning. The Court has paid little attention to concerns of subsidiarity. Finally, additional pressure to find single European solutions results from the existence of a Trade Mark Regulation that creates a counterpart unitary regional right (the Community Trade Mark, or CTM) and attendant EU institutions to administer and enforce that right.

This parallel EU-level regime tends to reinforce the idea that trade mark law has been wholly Europeanised, and exerts pressure on the content of Directive-driven national law because the demands of vertical coherence have trumped the potential benefits of regulatory competition between national and regional regimes. In short, there has over the past twenty years been an extensive and deep Europeanisation of trade mark law. But this in turn raises ongoing questions about how best to develop harmonised European principles, because harmonisation is a dynamic lawmaking process and not a static legislative instrument.

In this Chapter, I consider how the process of harmonisation has affected the development of optimal principles of trade mark law, an analysis that is necessarily informed by substantive preferences. It is only by measuring harmonisation by reference to some form of substantive metric that a full assessment of the harmonisation process can be made. I suggest that it important to recognise the important role of national courts in the development of EU trade mark law (in part because of the nature of the field of law), and that paying attention to national legal traditions would assist the Court of Justice in improving the quality of European trade mark law.

Featured here is the beginning of a paper by , Professor of Intellectual Property and Information Technology Law at the University of Oxford. He is also Director of the Oxford Intellectual Property Research Centre, and a Professorial Fellow of St. Peter’s College. The full article can be found .

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Granting exclusive rights to control the use of a mark preserves its ability to reliably signal origin. Contemporary EU trade mark law goes further and protects the more expansive brand dimension associated with a successful trade mark. The Court of Justice of the European Union (ECJ) has enabled this by recognising not only the origin indication function of marks, but also their advertising, investment and communication functions as well. The brand is a remarkably elusive and protean, yet undeniably valuable, intangible.

So what are the doctrinal tools and techniques available to courts, registrars and legal practitioners, enabling them to work with such elusive subject matter? What are the corresponding assumptions about brand creation and sustenance that reinforce these techniques? And can they be reconciled with recent conceptualisations of branding emerging from marketing and consumer studies research?

Since brand protection is a controversial development within European trade mark law, this paper unpacks the manner in which the brand is conceived of within European legal doctrine. The ECJ situates branding within a one-way broadcast model, while contemporary marketing research emphasises that brand formation is dialogic and iterative. The ECJ’s approach to brand propertization is therefore not only inaccurate in presuming single author brand creation, but also deeply troubling since it marginalizes consumer agency and reinforces the exploitation of their immaterial labour through the instrumentality of trade mark law.

Featured here is an abstract of a paper by . Dr. Gangjee lectures at the London School of Economics, with a primary research interest in intellectual property, including trademarks, geographical indications and domain names. He is also an IP Osgoode Research Affiliate and an Associate of the Oxford IP Research Centre. As an expert he has advised both governments and law firms in the area of trademark law. The full article can be found .

The post Property in Brands appeared first on IPOsgoode.

The Society is not funded by, nor has been instructed by any particular stakeholders.

The ECS wishes to take the opportunity to put on record its views of the issues before the Court in Case C-466/12, Svensson. The importance of this particular reference should be evident to the Court. Although hyperlinking takes many forms and has multiple functions, there can be no doubt that it is the single most important feature that differentiates the Internet from other forms of cultural production and dissemination. Hyperlinking is intimately bound to the conception of the Internet as a network, and hyperlinks constitute paths leading users from one location to another.�� As the Supreme Court of Canada has stated “[h]yperlinks ... are an indispensable part of [the Internet’s] operation.”[1]

The legal regulation of hyperlinking thus carries with it enormous capacity to interfere with the operation of the Internet, and therefore with access to information, freedom of expression, freedom to conduct business,[2] as well – of course – with business ventures that depend on these types of linkages. Europe has developed a significant sector of SMEs, many of whose web operations depend on the use and provision of links. The Court must not under-estimate the importance of its ruling in this case.[3]

As Tim-Berners Lee, who is regularly accredited as being an inventor of the World Wide Web , explains a link is nothing more than a reference or footnote, and that the ability to refer to a document is a fundamental right of free speech.[4]

In a similar vein, US Law Professor Jessica Litman states, Digital Copyright: Revising Copyright Law for the Information Age (New 91��ɫ, Prometheus Books, 2001), at 183:

“… the public has always had, and should have, a right to cite. Referring to a copyrighted work without authorization has been and should be legal. Referring to an infringing work is similarly legitimate … Drawing a map showing where an infringing object may be found or dropping a footnote that cites it invades no province the copyright owner is entitled to protect even if the object is blatantly pirated from a copyrighted work. Posting a hypertext link should be no different.”

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As previously reported by the IPilogue , the Supreme Court of Canada is not the only national court grappling with the term “communication to the public”. Similar to two of the internet copyright cases earlier this month and reported by the IPilogue , questions related to transmissions of protected content over the internet have also arisen in the United Kingdom.

In the case of ITV v TVCatchup, Justice Floyd of��the UK High Court of Justice has returned with a disposing with a series of issues which arose during his initial decision in the case in July and referring a question relating to the definition of “communication to the public” to the European Court of Justice (ECJ). As , TVCatchup is a live-streaming service that allows users to view television broadcasts on their computers, tablets, smartphones, and other internet-capable devices.�� The service individually identifies users and then serves them content based on their existing television licence (they can access channels like ITV, Channel Five, and the BBC, but viewers can only receive content that they are legally entitled to watch based on their existing television licence).�� TVCatchup funds its operation by showing advertisements before each live stream begins and by “skinning” the stream such that advertisements served by TVCatchup are displayed around the edges of the window displaying the live stream.�� It is also important to note that TVCatchup does not alter the original stream, so any advertisements shown by the broadcasters as part of their television transmission are not affected.

Although he had initially planned to refer two questions to the ECJ this past summer, Justice Floyd deferred the case awaiting a ruling in Football Association Premier League v QC Leisure by the ECJ. As a result, the Justice Floyd was able to apply that judgement to TVCatchup and decide an issue related to “reproduction of a substantial part” of films in memory buffers and on screens. Consequently, Justice Floyd is now only referring a single question to the ECJ on “communication to the public”.

Based on his ruling in July, Justice Floyd entertained the idea of using the definition of “communication to the public” from a case called Airfield.�� This case was actually a set of joined cases heard by the ECJ ( about the encrypted re-broadcasting of satellite television signals. Following a review of the facts, Justice Floyd ultimately distinguished Airfield from TVCatchup and decided to ask the ECJ the following questions:

"Does the right to authorise or prohibit a "communication to the public of their works by wire or wireless means" in Article 3.1 of the Directive extend to a case where:

1.�� Authors authorise the inclusion of their works in a terrestrial free‑to‑air television broadcast which is intended for reception either throughout the territory of a Member State or within a geographical area within a Member State;

2.�� A third party (i.e. an organisation other than the original broadcaster), provides a service whereby individual subscribers within the intended area of reception of the broadcast who could lawfully receive the broadcast on a television receiver in their own homes may log on to the third party's server and receive the content of the broadcast by means of an internet stream?

Does it make any difference to the answer to the above question if:

(a) The third party's server allows only a "one‑to‑one" connection for each subscriber whereby each individual subscriber establishes his or her own internet connection to the server and every data packet sent by the server onto the internet is addressed to only one individual subscriber?

(b) The third party's service is funded by advertising which is presented "pre‑roll" (i.e. during the period of time after a subscriber logs on but before he or she begins to receive the broadcast content) or "in‑skin" (i.e. within the frame of the viewing software which displays the received programme on the subscriber's viewing device but outside the programme picture) but the original advertisements contained within the broadcast are presented to the subscriber at the point where they are inserted in the programme by the broadcaster?

(c) The intervening organisation is:

(i) providing an alternative service to that of the original broadcaster, thereby acting in competition with the original broadcaster for viewers; or

(ii) acting in competition with the original broadcaster for advertising revenues?”

The ECJ’s response to this question could represent an important precedent in the on-going battle over the transmission of protected content over the internet.

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On September 22, 2011, the European Court of Justice handed down on a series of trade mark related questions spurred by the long running dispute between international flower delivery network Interflora and English retailer Marks and Spencer. The case stemmed from a complaint raised by Interflora that Marks and Spencer used Google’s “AdWords” service to create internet advertisements targeting keywords such as ‘Interflora’, ‘Interflora Flowers’, and ‘Interflora.com’.

This use of Interflora related keywords by Marks and Spencer meant that when users visited sites where the name Interflora appeared, ads for Marks and Spencer’s own flower delivery services would be displayed. Interflora Inc. owns a trade mark on the word ‘Interflora’, and as a result, brought an action against Marks and Spencer alleging that their use of words identical to Interflora’s trade mark is unlawful.

The High Court of Justice (England and Wales), Chancery Division, which heard Interflora’s case for trade mark infringement referred questions to the Court of Justice on a series of issues related to the use of keywords identical to a trade mark, without the consent of the trade mark proprietor, by a competitor within an internet referencing service. It is important to note that the European Court of Justice’s decision does not decide the case between Interflora and Marks and Spencer, it simply clarifies the law for the High Courts of each of Europe’s member states.

As outlined in a by the court, because the use of a keyword can only be prevented by a trade mark owner if it is liable to have an adverse effect on one of the functions of that mark, each of the functions of a trade mark were examined and outlined in the course of considering the case. These functions included the origin-indicating function, the advertising function, and for the first time, the investment function of a trade mark.

In dealing with the origin-indicating function of a trade mark, the court followed its decision in Google France (). The Google France case was previously covered by the IPilogue here. In Google France, the court observed that the test to determine whether a trade mark has been infringed should consist of an evaluation of whether a reasonably well informed and observant internet user is able, based on general market knowledge, to determine whether the goods or services referred to by an advertisement originate from the proprietor of the trade mark. Applied to the Interflora v Marks and Spencer case, this element of the trade mark evaluation becomes a question of fact for the lower courts related to whether Marks and Spencer’s advertisement enabled an internet user to recognize whether or not Marks and Spencer is a member of the Interflora network.

Considering the advertising function of a trade mark, the court ruled that a rise in the cost-per-click of advertising online due to a competitor’s use of a trade mark keyword was not sufficient in every case to conclude that the advertising function of a company’s trade mark had been adversely affected. The court also commented that there is nothing wrong with a company using an internet advertising service to create competition by offering alternatives to a particular product of service; however, the trade mark owner must not be prevented from using their mark to attract customers.

The European Court of Justice recognized the investment function of a trade mark for the first time in this judgement. The court ruled that the investment function of a trade mark is adversely affected when use of the mark by a competitor substantially interferes with the owner’s ability to create or preserve a reputation capable of attracting customers and retaining loyalty with the trade mark. This consideration of the investment function of a trade mark was followed by a clarification of the scope of “dilution” (detracting from the distinctive character of a trade mark) and “free-riding” (taking unfair advantage of the distinctive character of a trade mark). The court ruled that choosing to duplicate a trade mark without due cause when selecting keywords for internet advertising may be construed as “free-riding”; however, the court made clear that this was intended to deal with cases where internet advertisers were selling replica and imitation goods by using the trade mark as a keyword to attract potential customers.

Ultimately, the European Court of Justice ruled that the decision in this case would come down to a finding of fact by lower courts as to whether or not Marks and Spencer adversely affected one of Interflora’s trade mark’s functions. However, as re-iterated in the court’s , “Where [an] advertisement displayed on the internet on the basis of a keyword corresponding to a trade mark with a reputation puts forward an alternative to the goods or services of the proprietor of the trade mark with a reputation – without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution of the trade mark or detriment to its repute, and without adversely affecting the functions of the trade mark – such use falls, as a rule, within the ambit of fair competition in the sector for the goods or services concerned.”

It will be interesting to see how the High Court in the UK decides the case of Interflora v Marks and Spencer based on this ruling.

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