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

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A sound can be registered as a trademark if it fulfills the function of a trademark, namely, indicating the origin of the goods and services. Even if it is a well-accepted practice in trademark law, the inherent characteristics of a sound differentiate them from word or design marks. of shed some light on this nontraditional practice and its scope.

The subject of the trademark application was the sound of a can opening, followed by silence and a fizz. Some of the goods associated with the trademark registration sought were metal containers for storage and transport, milk products, coffee, tea, cocoa, beer, non-alcoholic beverages, mineral and aerated waters, fruit beverages, syrups, and preparations of non-alcoholic beverages.

Ardagh Metal Beverage Holdings’ application was rejected both by and the CJEU due to lack of distinctiveness. The Office held that the public is not used to considering a sound as an indication of the origin of beverages. The Office added that a sound should have a certain resonance or a capacity to be recognized to be registered as a trademark. The Office deemed the sound in question intrinsic to the usage of the related goods.

As indicated in the decision of the General Court, assessing distinctiveness involves the same analysis for trademark categories. According to the decision, a sound needs to resonate with the public as representative of the source and not simply as a functional element.

Before the General Court, Ardagh claimed that the sound was not typical of milk products, alcoholic beverages and preparations of non-alcoholic beverages since they do not contain carbon dioxide. Even though the Court agreed with the applicant that the categories of goods were not limited to beverages that may contain carbon dioxide, the opening sound was considered a purely functional element. The Court noted that the fizzing sound was not sufficient to provide the required distinctiveness.

The decision in this case has clarified the European approach to determining the distinctiveness of sound marks. The referred dispute was about a more common sound rather than a jingle as in the Marque Sonore decision. The decision was also in line with the regarding the application for Budweiser’s opening and fizzing sound at the end. These decisions demonstrate that establishing distinctiveness for sound marks is a complicated task.

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

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requires genuine use of a trademark to maintain registration. Lack of use may cancel a trademark’s registration; as well, any oppositions based on a trademark without genuine use may not withstand a non-usage defense.������������������������������������������������

Trademark owners have a grace period of five years to abstain from this obligation. Refilling a trademark is a method for extending this period. Thus, the repeated registration of a trademark can help an owner to circumvent their obligation to prove genuine use.

Hasbro v EUIPO

In , the well-known toy brand Hasbro tried to register the “Monopoly” word mark. In 1998, the “Monopoly” mark was registered for computer, software, electrical, and scientific products (class 9), clothing and apparel products (class 25), and toys and sporting goods products (class 28). By applications made in 2008 and 2010, trademark protection was granted respectively for the education and entertainment services (class 41) and paper and printed material products (class 16). In 2010, a trademark application covering goods and services in classes 9, 16, 28 and 41 was made and subsequently registered in 2011.

Hasbro relied on their trademark to oppose the “Drinkopoly” word mark. As a defense, the owner of the Drinkopoly mark, Kreativni Događaji, claimed that the 2010 Monopoly registration was filed in bad faith and must be invalidated. In 2015, Događaji’s invalidation claim was brought before While the Cancellation Division of the EUIPO rejected the request, the Appeal Board in 2019 held that Hasbro’s trademark application was partially filed in bad faith, particularly for the goods and services that are within the scope of the previous registrations. In April 2021, ) the Appeal Board’s decision.

The that since Hasbro repeated the registration to avoid having to prove usage, the registration is deemed as in bad faith. Bad faith was detected by a Hasbro executive’s statements at the hearings before the Appeal Board. They indicated that the refilling of a trademark is also beneficial to avoid several administrative burdens. Even though Hasbro claimed that it prefers to degrade its trademarks to one, the Court disagreed with this argument since none of the previous trademarks were withdrawn.

Of significance, the Court also pointed out that Hasbro’s applications are atypical. However, the Court emphasized that even though the present case does not conform with the common pattern, Hasbro’s applications are intended to extend the grace period of five years in an artificial and fraudulent way.

It should be noted that bad faith was accepted only for the goods and services that were already covered within the scope of the previous registrations. Bad faith is not precisely defined in European trademark law and its examination must be conducted on a case-by-case basis. Such cases where bad faith is partially accepted are exceptional.

Refilling the same trademark is not legally prohibited and this practice does not constitute bad faith per se. The precedents of the General Court and the EUIPO have accepted various objectives for refilling. For instance, , the Court considered the applications to modernize the logos. , the owner applied to expand the goods and services covered by the trademark. Perhaps if the font or the goods and services list of the “Monopoly” mark changed, the EUIPO and the CJEU would have reached a different conclusion.

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

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On 19 April 2019, and adopted . June 7, 2021 was the deadline for the member states to enact their national laws in accordance with the Directive. On June 7th, through efforts by some member states, in particular Poland, an annulment action was commenced claiming that Article 17(4) of the Directive violated freedom of expression (). The Directive was also not received positively by the European Union.

According to EU law, “directives” provide more flexibility to the member states than “regulations” because member states base their own national laws on directives. The European Parliament and Council’s decision to adopt directives on copyright law, as opposed to regulations, is consistent with the dynamic character of copyright law. Although the legal text provides legislative freedom to the member states, the Directive has been heavily criticized.

Articles 3 and 4 of the Directive, introduce text and data mining as a new copyright law exception. Article 15 sets forth the rights of the press , and Articles 18-22 regulate the rights of content creators.

The Highly-Debated Article 17

Article 17 places more burdens on online content sharing service providers than the current EU copyright law does. The E-Commerce Directive is at the core of current debates. Although the given definitions restrict the Directive’s scope, its proposed content monitoring obligations are stricter than those currently in place.

Service providers should put their “best efforts” to not only license the content shared on their websites, but also prevent the reuploading of content banned by notice and takedown procedures. Even though national laws require due diligence obligations of diverse scopes, each nation’s laws and practice will ascertain the meaning of the “best efforts”.

Article 17’s copyright exceptions are also problematic. CJEU case law has designated criteria for several exceptions; however, the criteria have no clear and decided definitions. Indeed, the CJEU needs time to set forth requirements. Member States may interpret the Directive in accordance with CJEU case law to some extent while transposing it into their own national laws. Service providers must also monitor content on a case-by-case basis to determine whether it meets the exceptions criteria.

The major concern about the Directive is the overly strict banning of content service providers due to the strict obligations placed on them. When considering the scope of the service provided by intermediaries, unfortunately, such cautious approach will not be limited to the EU. One of the main goals of copyright law is to protect freedom of expression and promote creativity. The proposed means can hardly achieve these goals. Consequently, the European Commission has tried to eliminate certain ambiguities by publishing the .

What the Member States Have Done

While for further administrative implementations, the Netherlands and Hungary . Germany, Austria, and Finland each have their draft texts. France into the . However the debate around Article 17 continues. Most member states’ texts have been criticized for their word-for-word adhesion to the Directive.

On July 15, the Advocate General’s opinion will be published on the annulment action initiated by Poland. Following the Commission Guidance, the opinion will provide more certainty regarding Article 17 and instruct each member state as distinct from national draft laws. While the CJEU is coping with the work overload caused by copyright cases, the case initiated by Poland surely will not be the last case to discuss the Directive. More troublesome instances of the Directive’s implementation are likely ahead of us.

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

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Under , a trademark registration filed in bad faith may be subject to a request to invalidate the trademark. However, since the term “bad faith” is not precisely defined in EU law, bad faith is identified by assessing the facts of each case. In several decisions released in April, the Court of Justice of the European Union (CJEU) and the European Union Intellectual Property Office (EUIPO) made evidentiary assessments regarding bad faith and the purpose of interfering with the registration of famous persons’ names and works.

France Agro v EUIPO - Chafay (Choumicha Saveurs)

The trademark registration for the “Choumicha Saveurs” mark was by the General Court of the CJEU in light of the reputation of Choumicha Chafay, better known as Choumicha. When assessing bad faith, the Court considered Choumicha's line of business, the goods covered by the application, and the fact that the applicant company's manager is Moroccan.

Choumicha argued that while she does not possess rights to her brand or trade name in the EU, she is well-recognized in France and commercially uses her brand, the Choumicha mark, and her image in Morocco. Specifically, the Moroccan community in Belgium and France have known Choumicha as a chef since the 2000s. The applicant, who used an Arabic word in the trademark to target the Arab-speaking community in Europe, undoubtedly knew her reputation ��at the time of application. Even the goods under the impugned trademark relate to the culinary industry.

Banksy’s Laugh Now Trademark

One of Banksy’s works, registered as a figurative trademark, was subject to an . As emphasized in , a known example of trademark filing in bad faith is to file an application without intending to use the trademark.

Banksy's anonymity hinders the copyright protection for his works of art. The trademark owner, the company presumed to be Banksy’s legal representative, argued that the filing has the legitimate objective of securing the rights granted through copyright protection. However, the applications filed lacked the necessary purpose of using the trademarked goods and services and additionally, trademark law is not meant to substitute copyright protection. Banksy's attitude towards intellectual property rights is well-known; the ruling cited a quote from Banksy’s book, ‘Wall and Piece’, where he remarked “copyright is for losers.” Although the EUIPO stated that his attitude does not preclude Banksy of claiming his rights, it is relevant by showing Banksy’s intention for filing the trademark.

In recent years, Banksy has permitted third parties to use his works for non-commercial purposes. However, the EUIPO disagreed with the trademark owner that Banksy reserved the right to use his works for commercial purposes. In addition, Banksy has not taken any legal action against such uses by giving consent or negotiating licenses, and no serious trademark use by him was identified prior to the application date.

',” Banksy said in 2019 in a notable UK publication, as quoted by the decision. Even though a trademark application may be deemed as an indication of a will to use the trademark, statements like these undermine that intention. Thus, the EUIPO concluded that the trademark registration was made to circumvent the law rather than to use it for commercial purposes.

The Future of Bad Faith

In both decisions, the assessments concerning the trademark applicant’s intent were made by the factual evaluation of the statements and circumstances relevant to the application. A statement made years ago or the applicant’s background could form the basis for the bad faith assessment. Although each assertion of bad faith is decided on a case-by-case basis, these recent decisions can instruct the EU Member States as they navigate EU trademark law.

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

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Le Centre National d’Art et de Culture Georges Pompidou (“Centre Pompidou”) in Paris, Fondazione Prada in Milan, the French publishing group Flammarion, and American artist Jeff Koons were held liable for copyright infringement amounting to €190,000 in a case heard before in Paris on February 23.

The dispute centered around the photograph ‘Fait d’Hiver’ taken by Franck Davidovici in 1985 for the clothing brand NAF NAF. The photo depicts a dark-haired woman lying on her back in the snow with a pig leaning towards her head.

Jeff Koons featured a modern interpretation of the photograph in his controversial “Banality” series, revealing the sculpture Fait d’Hiver in 1988. , depicting a brunette woman lying in the snow with a pig and two penguins looking on. It was later exhibited in Centre Pompidou in 2014 and continues to be owned by Fondazione Prada. It was also reproduced in a book published by Flammarion.

Lower Court Ruling

In 2014, Davidovici requested the sequestration of the sculpture before the Tribunal de Grande Instance de Paris (“TGI de Paris”). His initial claim was rejected. One year later, he initiated a copyright infringement action against Jeffrey Koons, Jeff Koons LLC, Centre Pompidou, Fondazione Prada, and Flammarion.

Koons’ counter-claims hinged on the parody exception and the freedom of artistic expression stipulated by Article 10 of and Article 27 of . However, the TGI de Paris ultimately ruled in Davidovici’s favour in 2018.

Paris Court of Appeal Holding

Koons’ sculpture contains some disparities from Davidovici’s photograph, primarily the nature of the work and the details such as the flowers around the pig’s neck, the women’s clothing, and the addition of the two penguins. Nonetheless, the Court emphasized that the similarities outweigh the differences between the two works of art. The woman lying down in the snow has the same expression and the pig maintains its position. From this, the Court found that the reproduction of Davidovici’s work constitutes copyright infringement. As per , any reproduction of existing work made without the author’s consent shall be unlawful.

In their decision, the Court reaffirmed the conditions required to meet the parody exception, listed in the Deckmyn decision of the . According to , “the essential characteristics of parody are i) to evoke existing work, ii) contain differences regarding this work and iii) form an expression of humour or mockery.” The Court found that the humour or mockery factor of parody had not been met, citing Koons’ statements on his sculpture where he explained that “rather than being a victim of a ski accident, I thought she looked sad as she had love issues.” In addition, he claimed the sculpture does not remind him of the 1985 advertisement, and so the reminiscence requirement could not be met.����

The Court also found it was unjustified that Koons, as an artist from the same community, could acquire the right to exploit a work of art for inspiration without obtaining the author’s permission. Copyright protection grants each artist the right to obtain a royalty and assert their moral rights in exchange for permission to use their original work. As per the decision, the copyright protection granted to Davidovici for his photograph is a necessary, proportional restraint to Koons' freedom of expression.

As for the other defendants, Centre Pompidou claimed that it was not likely for the museum to be aware of the infringement created by Jeff Koons’ work, citing good faith. Davidovici counterclaimed that the museum failed to perform due diligence, having not conducted any examination to assure the non-infringement as a public service provider. The Court indicated that “the infringement, regardless of bad faith or fault, is constituted by a reproduction, representation, or exploitation of a work of art” and inserted that “Article 10 of ECHR protects the freedom of expression, nevertheless, it cannot be interpreted as exhibiting the infringing works.” ��

Implications of the Decision

Even though Koons describes his works as “,” his art has been subject to this and other controversial judgments. This particular decision could have ramifications for other transformational artists like Andy Warhol or Takashi Murakami, whose art style is primarily reproducing, appropriating, and juxtaposing images from advertising and mass media culture. This kind of art clearly draws attention to the scope of the freedom of artistic expression and the parody exception.

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Granting trademark protection for personal names is an accepted and common practice in European trademark laws, especially for celebrities’ names. In contrast, prohibits the registration of a mark that is merely the name of an individual. The decision rendered by the (“CJEU”) on September 17, 2020 enabled the registration of a trademark consisting of a capital letter “M” and the surname of the world-renowned football player, Lionél Messi. Lewis Hamilton’s legal representatives are currently attempting to register the famous Formula One driver’s name as a trademark.

which was brought before the (“EUIPO”) by the owner of the mark “MASSI” continued before the CJEU and lasted for 10 years. This opposition had initially enabled the rejection of the trademark application made by the renowned football player to EUIPO. The and CJEU have both ordered that there is no likelihood of confusion due to the conceptual distinctions created by Messi’s fame, and granted the registration of the trademark. As stipulated in the court’s decision in EUIPO v Messi Cuccittini “the reputation of the applicant is another consideration to be regarded in risk of confusion examination which has to be conducted globally” (para. 44). Although the conceptual difference created by the reputation had not been claimed by Messi’s lawyers, the Court factored in the said reputation when assessing the likelihood of confusion.

The court’s decision in Messi Cuccittini was important for celebrities who seek to register their names as trademarks. In some cases, semantic content placed on such trademarks may inhibit their successful enforcement. For example, in , Picasso’s heirs were unsuccessful in opposing the aurally and visually similar trademark, ‘PICARO’, on the grounds that their ‘PICASSO’ name was also too famous to not be confused with the said trademark application.

A well-known individual who attempted to benefit from the court’s decision in Messi Cuccittini was the seven-time world champion Formula One driver, Lewis Hamilton. Hamilton had applied to register his full name as a trademark in the ‘jewelry products’ and ‘retail services’ classes. The Swiss luxury watchmaker, “Hamilton”, which owns trademarks in the same classes, opposed Lewis Hamilton’s application.

The racecar driver’s lawyers brought an action against the “Hamilton” trademark, requesting the expungement of the word mark on the grounds that the mark had been filed in bad faith. EUIPO disagreed with this claim and underscored the fact that the Swiss watchmaker had been in the market since 1892, before the racecar driver was born. In this case, perhaps due to made about the decision in Messi Cuccittini, the Office stipulated that “there is no ‘natural right’ for a person to have his or her own name registered as a trademark when that would infringe third parties’ rights” (para. 40). Hamilton’s lawyers’ claim about the conceptual difference is still pending before EUIPO. The claim of the conceptual difference created by Messi’s fame superseding any visual and aural similarities may apply to the “Lewis Hamilton” and “Hamilton” trademarks. Unlike the applicant’s claims in Messi Cuccittini, Hamilton’s representatives had made a point to mention the racecar driver’s fame in their initial application before EUIPO.

Both “Lewis Hamilton” and “Hamilton” trademarks are word marks. They are arguably more similar visually than “Massi” and “Messi”. Indeed, the court had emphasized the influence of a first name from a conceptual point of view in , where Barbara Becker had managed to register her full name despite her application being opposed on the grounds of the risk of confusion with the earlier trademark, “BECKER”. Considering Messi’s full name, Lionel Andrés Messi Cuccittini, the trademark application may not be deemed to imply a name-surname reference.

The Messi Cuccittini decision may be a game-changer for Lewis Hamilton in that his trademark dispute may not be as prolonged as Messi’s. Even though prior registration is important in claiming trademark protections, celebrities’ reputations could also be considered in opposition proceedings or applications for the registration of marks associated with branded products.

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