NEWSLETTER IP LAW 7/2018

THE PROPOSED NEW DIRECTIVE ON THE PROTECTION OF COPYRIGHT IN THE DIGITAL SINGLE MARKET

The holiday period, also known as silly season, brought hot news concerning long-planned reforms of copyright law. This is all the result of the forthcoming vote in the European Parliament on the proposed new directive of the European Parliament and of the Council on Copyright in the Digital Single Market (‘the Directive’). The statements: ‘Acta 2 is coming’, ‘The end of the Internet is near’, ‘A new tax on links’ or ‘Mems are over’ etc. are spreading all over the Internet.

Are thus the worries and the mass panic reasonable and justified? The majority of alarming statements were simply exaggerated, which does not change the fact that the proposed new Directive actually contains some provisions which may arouse controversy and lead to ambiguities.
Regardless of the Directive’s provisions, it should be kept in mind that the Union directives and the regulations (such as the GDPR) have completely different effects. In the case of a directive, the final shape of the law that functions in a particular country depends to a large extent on concrete solutions adopted by the legislature. The main assumptions of the most controversial provisions are stated below. The Articles 11 and 13 of the Directive are the mostly disputed.

The former provides that the editors of press publications are granted the rights regarding digital use of their publications, irrespective of the rights enjoyed by the authors of the articles. The editors would then gain the authorial monopoly for the usage of the texts published by them in the Internet.

Much more controversy has arisen around the proposed Article 13 of the Directive. It is worth quoting its proposed content: providers of information society services that maintain and provide public access to a great number of works or other subject-matter published by their users in cooperation with right-holders shall take the measures in order to assure the functioning of the agreements concluded with right-holders on the use of their works or other subject-matter or in order to prevent the accessibility of the works or other subject-matter identified by the right-holders in the process of cooperation with service providers. The measures, such as the use of efficient technologies that are able to recognise the content, must be appropriate and proportionate.

All in all, the provision worded in that way may indeed impose some kind of preventive censorship. Web portals would have to build algorithms that at the very moment of publishing the text on the Internet would verify whether the intellectual property rights are by any chance violated. By restrictive implementation of such a general provision of the Directive to particular legal orders, it may constitute a very dangerous tool for the Internet censorship.
Further information on the Directive has been postponed. The European Parliament rejected the proposed Directive in its current form on 5 July 2018 and by doing so it did not grant a mandate to open negotiations regarding implementation of the Directive. What this means in reality is that the European parliamentarians will not work on the Directive until September 2018.

CASE LOW: MESSI’S TRADEMARK DEFENDED

Football excitement related to the XXI World Cup in Russia is almost over. Even though Leo Messi and his colleagues on the squad did not collect the happiest memories of the just finished World Cup, the famous star has succeeded to a certain extent in the area of trademarks. Forbes magazine determined Messi’s market value at USD 220.5 million. Also the General Court of the European Union appreciated the reputation of the five-time winner of The Golden Ball. In the fight for the trademark, Leo Messi plays maybe not the most difficult, but definitely the longest game in his entire career.

THE FIRST HALF
The match began in August 2011, at a time when Messi applied to the European Union Intellectual Property Office (EUIPO) for registration of the EU figurative trademark containing a written component MESSI for clothing, footwear and gymnastics and sports items. In November of the same year Jaime Masferrer Coma entered the field by making his objection to Messi’s request, since a similar trademark MASSI has already been registered by the Office for clothing, footwear, bike helmets, protective clothing and gloves. In May 2012 Coma was replaced on the field by JM-EV e hijos, because this company had bought the right to the trademark. In 2013 the Office stated that likelihood of confusion between these trademarks in fact exists. 1:0 to JM-EV e hijos.

THE SECOND HALF
Lionel Messi did not get discouraged by this failure and he lodged an appeal. However, in April 2014 it was dismissed. EUIPO stated that trademarks MESSI and MASSI bear such a strong resemblance in terms of both visual and phonetic aspects and, what is more, only few recipients may tell the difference between them and Messi’s products could have been purchased accidentally by the MASSI’s customers. 2:0 for JM-EV e hijos.

ADDITIONAL TIME
However, Messi would not have been himself if he had not got up and fought. He requested the General Court of the European Union to repeal the EUIPO’s decision. Thanks to his determination, on 26 April 2018, i.e. after a very long additional time, the fortune smiled to him and something unexpected happened – the Court supported him. It stated that EUIPO made a mistake in evaluating the conceptual similarity of the trademarks. Lionel Messi is a well-known star also in the media – he often shows up on the radio or on television. Therefore, he is recognisable and his name is known to a very broad range of recipients, not only those interested in football. Moreover, the Court so to speak turned around the argument that has been made both by EUIPO and JM-EV e hijos. It drew attention to the nature of the goods covered with the trademarks MESSI and MASSI. They are sports products and even though not all of them are related to football, one can assume that a random consumer of these goods would not confuse the trademarks. MESSI is automatically associated with the famous footballer. The consumer will not make a mistake and will not confuse MESSI with MASSI. The degree of similarity between the trademarks is therefore not sufficient so as to constitute a barrier to the registration of the trademark ‘MESSI.’ 2:2 tie. It is already known that EUIPO lodged an appeal to the Court of Justice. One should thus prepare for penalty kicks.

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