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Seminar IP and Creative SMEsWIPO, May 26, 2010
IP reforms: a need for horizontal fair use?
Prof. Dr. Martin SenftlebenVU University Amsterdam
Bird & Bird, The Hague
Contents
• conceptual contours
• rationale
• case study 1: Fiorello Klein
• case study 2: Joran Spauwen
• fair use and trademarks
• conclusion
Conceptual contours
US fair use doctrine (Sec. 107 Copyright Act)
• purposes:‘...such as criticism, comment, news reporting, teaching […], scholarship, or research...’
• factors:‘(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.’
Copyright’s legal traditions
Anglo-America (US)
• fair use doctrine
• open factors
• case-by-case
approach (judge)
• flexibility
• quick reactions to
new developments
Continental Europe
• statutory limitations
• fixed requirements
• closed catalogue of
limitations (legislator)
• legal certainty
• slow reactions to
new developments
International copyright law: specific limitations (civil law model)
• quotations, press summaries (art. 10(1) BC)
• articles on current topics, reporting of current
events (art. 10bis(1) and (2) BC)
• lectures, addresses, works of the same
nature delivered in public (art. 2bis(2) BC)
• illustrations for teaching (art. 10(2) BC)
• ephemeral recordings (art. 11bis(3) BC)
• ‘It shall be a matter for legislation in the
countries of the Union to permit the
reproduction of [literary and artistic] works
in certain special cases, provided that such
reproduction does not conflict with a normal
exploitation of the work and does not
unreasonably prejudice the legitimate
interests of the author.’ (art. 9(2) BC)
= three-step test
International copyright law: open-ended limitations (common law model)
Article 9(2) BC
Article 13 TRIPS
Article 10 WCT
The three-step test family in international copyright law
• ‘Members shall confine limitations or
exceptions to exclusive rights to certain
special cases which do not conflict with a
normal exploitation of the work and do not
unreasonably prejudice the legitimate
interests of the right holder.’
= three-step test becomes general yardstick for
the permissibility of national limitations
Art. 13 TRIPS
Article 13 TRIPS
Article 17 TRIPS
Article 30 TRIPS
The three-step test family in the TRIPS Agreement
Article 26(2) TRIPS
‘Members may provide limited exceptions
to the exclusive rights conferred by a patent,
provided that such exceptions do not
unreasonably conflict with a normal
exploitation of the patent and do not
unreasonably prejudice the legitimate
interests of the patent owner, taking account
of the legitimate interests of third parties.’
Art. 30 TRIPS: patents
‘Members may provide limited exceptions to
the protection of industrial designs, provided
that such exceptions do not unreasonably
conflict with the normal exploitation of
protected industrial designs and do not
unreasonably prejudice the legitimate
interests of the owner of the protected
design, taking account of the legitimate
interests of third parties.’
Art. 26(2) TRIPS: industrial designs
‘Members may provide limited exceptions to
the rights conferred by a trademark, such as
fair use of descriptive terms, provided that
such exceptions take account of the
legitimate interests of the owner of the
trademark and of third parties.’
Art. 17 TRIPS: trademarks
Rationale
freedom of competition
specific, narrow IP rights: fair use unnecessary
Balance between rights and limitations
freedom of expression
freedom of competition
broad, general IP rights: fair use advisable
Balance between rights and limitations
freedom of expression
Overprotection
• copyright law
– flexible originality test
– protection of technological measures
• patent law
– new technologies (software, biotechnology)
• trademark law
– new types of marks
– expansion of protection (well-known marks)
Protection overlaps
• software
– copyright and patent protection
• cartoon characters
– copyright and trademark protection
• product design
– copyright, industrial designs and trademark
protection
Case study 1: Fiorello Klein
Case study 2: Joran Spauwen
Fair use and trademarks
Trademark protection subsystems
• identification
• distinctive character
• protection against confusion
• rights of a defensive nature
• communication
• reputation/repute/ goodwill
• protection of well-known marks
• de facto exploitation rights
exclusive link with a sign
creation of a brand image
advertising
quality control
‘…the proprietor shall be entitled to prevent all third
parties […] from using in the course of trade any sign
which is identical with, or similar to, the trade mark in
relation to goods or services which are not similar
[…], where the latter has a reputation in the Member
State and where use of that sign without due cause
takes unfair advantage of, or is detrimental to, the
distinctive character or the repute of the trade mark.’
(Art. 5(2) EC Trademark
Directive)
Brand protection: EC trademark law
• ornamental trademark use taking advantage
of the distinctive character of the Milka mark
• with due cause as it is justified by the
constitutional guarantee of freedom of arts
‘It is calm above the tree tops/
somewhere a cow is bellowing/
Moo!’ (Rainer Maria Milka)
BGH, 3 February 2005, Lila Postkarte
‘The proprietor shall be entitled to prevent all third
parties not having his consent from using in the
course of trade:
(a) any sign which is identical with the trade mark in
relation to goods or services which are identical with
those for which the trade mark is registered;…’
(Art. 5(1)(a) Trademark
Directive)
= no due cause defence
Brand protection: EC trademark law
‘The Court has already held that [...] the exercise of
Article 5(1)(a) of Directive 89/104 must be reserved to
cases in which a third party’s use of the sign affects or
is liable to affect the functions of the trade mark [...].
These functions include not only the essential function
of the trade mark, which is to guarantee to consumers
the origin of the goods or services, but also its other
functions, in particular that of guaranteeing the quality
of the good or services in question, and those of
communication, investment or advertising.’ (para. 58)
ECJ, June 18, 2009 (L’Oréal/Bellure)
Cartoon characters
Conclusion
A horizontal issue?
technologycommerce
culture
patent lawtrademark law
copyright law
No need for new international standards
• flexible three-step test
– in almost all branches of IP
– may serve as a basis of horizontal fair use
legislation
• fresh approach to interpretation
– three-step test not primarily regarded as a
means of restricting limitations
– but as a provision enabling limitations and
offering breathing space
The end. Thank you!
For further reading, see http://ssrn.com/abstract=1597123.
contact: [email protected]
