ILN IP Insider - International Lawyers Network

EUROPEAN COURT OF JUSTICE: Judgment in Joined Cases C‑775/21 and C‑826/21

Broadcasting of background music – Equitable remuneration – Mere provision of physical facilities – Sound equipment on board trains and aircraft – Presumption of communication to the public as a result of possession of technical means – Implications on Greek case law and practice in relation to use of in-store/background music in business premises.

NATURE OF THE CASE

The above decisions dealt with requests for a preliminary ruling related to the interpretation of Article 3 of Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society.
The requests have been made in two sets of proceedings between, first, in Case C‑775/21, Blue Air Aviation SA (‘Blue Air’) and UCMR – ADA, a collective management organization handling music copyrights, concerning Blue Air’s obligation to pay royalties to the UCMR – ADA for the broadcasting of background musical works on board passenger aircraft and second, in Case C‑826/21, Uniunea Producătorilor de Fonograme din România (UPFR) and Societatea Naţională de Transport Feroviar de Călători (SNTFC) ‘CFR Călători’ SA (‘the CFR’), concerning the obligation to pay royalties for the provision on board trains of physical facilities capable of being used to carry out communication to the public of musical works.

FACTS

A. Case C‑775/21

The UCMR–ADA is a collective management organisation that handles music copyright.

On 2 March 2018, that body brought an action before the Regional Court of Bucharest against the air transport company Blue Air, seeking payment of remuneration for the communication to the public of musical works on board aircraft operated by Blue Air, for which Blue Air had not obtained a licence.

Before that court, Blue Air submitted that it operates 28 aircraft and that, although it has the software necessary for the broadcasting of musical works in 22 of those 28 aircraft, it communicated to the public, after obtaining the required licence, only one musical work as background music, in only 14 of those aircraft.

Following those clarifications, the UCMR – ADA expanded its requests for payment, taking the view that the existence of sound systems in approximately 22 aircraft justified the conclusion that protected works had been communicated to the public in all of the aircraft of Blue Air’s fleet.

By judgment of 8 April 2019, the UCMR – ADA’s action was upheld.

Blue Air appealed against that decision to the Court of Appeal (Bucharest) which is the referring court, claiming that it had not communicated background music on board the aircraft it operates for which no licence had been obtained, and that the mere existence of physical facilities did not amount to a communication to the public of musical works. It also added that, by broadcasting background music, it was not pursuing any profit motive. Lastly, it stated that the existence of sound systems in aircraft is dictated by safety reasons, in order to enable communication between members of the air crew and communication between that crew and the passengers.

The Court of Appeal decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

(1) Must Article 3(1) of Directive 2001/29/EC … be interpreted as meaning that the broadcasting inside a commercial aircraft occupied by passengers of a musical work or a fragment of a musical work on takeoff, on landing, or at any time during a flight via the aircraft’s public address system constitute a communication to the public within the meaning of that provision, particularly (but not exclusively) in the light of the criterion relating to the profit-making objective of the communication?

If the answer to the first question is in the affirmative:

(2) Does the existence on board the aircraft of an address system required by air traffic safety legislation constitute a sufficient basis for making a rebuttable presumption as to the communication to the public of musical works on board that aircraft?

If the answer to that question is in the negative:

(3) Does the presence on board the aircraft of an address system required by air traffic safety legislation and of software that enables the communication of phonograms (containing protected musical works) via that system constitute a sufficient basis for making a rebuttable presumption as to the communication to the public of musical works on board that aircraft?’

B. Case C‑826/21

The UPFR is a collective management organisation handling the related rights of phonogram producers.

On 2 December 2013, that body brought an action against the CFR, a rail transport company, seeking payment of remuneration for the communication to the public of musical works on board passenger carriages operated by the CFR. It maintained, in that context, that the applicable railway legislation required some of the trains operated by the CFR to be equipped with sound systems and argued that the presence of such systems amounted to communication to the public of works within the meaning of Article 3(1) of Directive 2001/29.

That action was dismissed by the Regional Court of Bucharest, which held that while the mere installation of a sound system that makes public access to sound recordings technically possible constitutes a communication to the public of musical works, it had not been proved that the trains in service had been equipped with such a system.
The UPFR brought an appeal against that decision before the Court of Appeal (Bucharest) which is the referring court.

The Court of Appeal (Bucharest) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

(1) Does a rail carrier that uses train carriages in which sound systems intended for the communication of information to passengers are installed thereby make a communication to the public within the meaning of Article 3 of Directive 2001/29/EC …?

(2) Does Article 3 of Directive 2001/29/EC … preclude national legislation that establishes a rebuttable presumption of communication to the public on the basis of the existence of sound systems, where those sound systems are required by other provisions of law governing the carrier’s activity?’

LEGAL CONTEXT

The provisions according to the ECJ decisions in question that were applicable to this case are the following:

Article 8 of the WCT provides that ‘authors of literary and artistic works shall enjoy the exclusive right of authorising any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.’
The Agreed Statement concerning Article 8 of the WCT which is worded as follows: ‘It is understood that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty or the Berne Con…

According to the ECJ decision in question:

The right of communication to the public should be understood in a broad sense covering all communication to the public not present at the place where the communication originates. This right should cover any such transmission or retransmission of a work to the public by wire or wireless means, including broadcasting. This right should not cover any other acts.” But

…

“The mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Directive.”

…

Article 3 of Directive 2001/29, entitled ‘Right of communication to the public of works and right of making available to the public other subject matter’, provides:

1. Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public their works in such a way that members of the public may access them from a place and at a time individually chosen by them.

2. Member States shall provide for the exclusive right to authorise or prohibit the making available to the public, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them:

(a) for performers, of fixations of their performances;

(b) for phonogram producers, of their phonograms;

(d) for broadcasting organisations, of fixations of their broadcasts, whether these broadcasts are transmitted by wire or over the air, including by cable or satellite.

3. The rights referred to in paragraphs 1 and 2 shall not be exhausted by any act of communication to the public or making available to the public as set out in this Article.’

Directive 2006/115/EC

Article 8 of Directive 2006/115/EC, provides in paragraph 2:

Member States shall provide a right in order to ensure that a single equitable remuneration is paid by the user, if a phonogram published for commercial purposes, or a reproduction of such phonogram, is used for broadcasting by wireless means or for any communication to the public, and to ensure that this remuneration is shared between the relevant performers and phonogram producers. Member States may, in the absence of agreement between the performers and phonogram producers, lay down the conditions as to the sharing of this remuneration between them.

Collective management organisations may monitor, through duly authorised representatives, the use of musical works as background music; those representatives shall have free access to any place where music is used as background music. Representatives of collective management organisations may use portable audio and/or video recording equipment in the premises where the musical works are used, and the recordings thus made shall constitute full proof of the use of the musical works as background music.’

“Communication to the public of phonograms published for commercial purposes or reproductions thereof” shall mean the communication of such phonograms or reproductions in public places (whether closed or open), regardless of the manner in which the communication is made, by the use of mechanical, electro-acoustic or digital means (amplification systems, sound or audiovisual recording devices, radio receivers or televisions, IT equipment, and so on).

…

CONSIDERATIONS OF THE ECJ

According to the ECJ,

It is clear that the broadcasting in a means of passenger transport of a musical work as background music by the operator of that means of transport constitutes an act of communication for the purposes of Article 3(1) of Directive 2001/29 since, in so doing, that operator intervenes, in full knowledge of the consequences of its conduct, to give its customers access to a protected work, in particular where, in the absence of that intervention, those customers would not, in principle, be able to enjoy the broadcast work.

As the referring court points out, it is not disputed, in the present case, that the work at issue in the main proceedings had actually been broadcast in half of the aircraft operated by Blue Air, during flights operated by that airline, with the result that the public in question consists in all the groups of passengers who, simultaneously or successively, took those flights, and such a number of persons concerned cannot be regarded as too small, or even as an insignificant number, within the meaning of the case-law referred to in paragraph 54 above.

The ECJ held that the fact, mentioned by the referring court, that the profit-making nature of such a communication is highly debatable at any other time of the flight, is not decisive. A profit-making nature of that kind is not a prerequisite for finding that there is a communication to the public within the meaning of Article 3(1) of Directive 2001/29, since the Court has held that that nature is not necessarily an essential condition which determines the existence of a communication to the public, as is apparent from the case-law referred to in paragraph 50 above.

The court said that the answer to the first question in Case C‑775/21 is that Article 3(1) of Directive 2001/29 must be interpreted as meaning that the broadcasting, in a means of passenger transport, of a musical work as background music constitutes a communication to the public within the meaning of that provision.

The second and third questions in Case C‑775/21 and the first question in Case C‑826/21

The ECJ decided it was appropriate to reformulate the questions referred for a preliminary ruling as follows (1).

“Whether Article 3(1) of Directive 2001/29 and Article 8(2) of Directive 2006/115 must be interpreted as meaning that the installation, on board a means of transport, of sound equipment and, where appropriate, of software enabling the broadcasting of background music, constitutes a communication to the public within the meaning of those provisions.”

The ECJ held that it is apparent from recital 27 of Directive 2001/29 – which reproduces, in essence, the Agreed Statement concerning Article 8 of the WCT, as the Court observed in the judgment of 22 June 2021, YouTube and Cyando (C‑682/18 and C‑683/18, EU:C:2021:503, paragraph 79) – that ‘the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Directive’.

In the light of those considerations, the ECJ held that the fact of having, on board a means of transport, sound equipment and, where appropriate, software enabling the broadcasting of background music does not constitute an act of communication for the purposes of Article 3(1) of Directive 2001/29 and Article 8(2) of Directive 2006/115, since it is a mere provision of physical facilities for enabling or making a communication.

The ECJ noted that it had already ruled that the operators of a public house, a hotel, or a spa establishment perform an act of communication when they deliberately transmit protected works to their customers, by intentionally distributing a signal by means of television or radio sets which they have installed in their establishment. Similarly, the operator of a rehabilitation centre that intentionally transmits protected works to its patients by means of television sets installed in several places in that establishment carries out an act of communication.

However, the ECJ decided the mere installation of sound equipment as a means of transport cannot be comparable to acts by which service providers intentionally transmit protected works to their customers by distributing a signal by means of receivers that they have installed in their establishment, allowing access to such works.

In the light of all the foregoing considerations, the Court ruled that Article 3(1) of Directive 2001/29 and Article 8(2) of Directive 2006/115 must be interpreted as meaning that the installation, on board a means of transport, of sound equipment, and, where appropriate, of software enabling the broadcasting of background music, does not constitute a communication to the public within the meaning of those provisions.

The second question in Case C‑826/21 was

In essence, whether Article 8(2) of Directive 2006/115 must be interpreted as precluding national legislation, as interpreted by the national courts, which establishes a rebuttable presumption that musical works are communicated to the public because of the presence of sound systems in means of transport.

The Court held that acceptance of the proposition that a Member State may give wider protection to copyright holders by laying down that the concept of ‘communication to the public’ also includes activities other than those referred to in Article 3(1) of Directive 2001/29 would have the effect of creating legislative differences and thus, for third parties, legal uncertainty (judgment of 13 February 2014, Svensson and Others, C‑466/12, EU:C:2014:76, paragraph 34), or it follows that Article 3(1) of Directive 2001/29 must be interpreted as precluding a Member State from giving wider protection to copyright holders by laying down that the concept of communication to the public includes a wider range of activities than those referred to in that provision (judgment of 13 February 2014, Svensson and Others, C‑466/12, EU:C:2014:76, paragraph 41).

Such an interpretation is, in the light of the ECJ case-law, applicable by analogy to the concept of ‘communication to the public’ within the meaning of Directive 2006/115.

In the present case, it is apparent from the answer to the first question in Case C‑826/21 that Article 8(2) of Directive 2006/115 must be interpreted as meaning that the installation, on board a means of transport, of sound equipment and, where appropriate, of software enabling the broadcasting of background music for the benefit of travellers independently of their will, does not constitute a ‘communication to the public’ within the meaning of that provision.

That provision therefore precludes national legislation which establishes a rebuttable presumption that there is a communication to the public because of the presence of such sound systems. Such legislation may have the consequence of requiring payment of remuneration for the mere installation of those sound systems, even in the absence of any act of communication to the public, contrary to the aforementioned provision.

In the light of the foregoing considerations, the answer to the question referred is that Article 8(2) of Directive 2006/115 must be interpreted as precluding national legislation, as interpreted by the national courts, which establishes a rebuttable presumption that musical works are communicated to the public because of the presence of sounds systems in means of transport.

In summary the ECJ ruled that:

Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the broadcasting, in a means of passenger transport, of a musical work as background music constitutes a communication to the public within the meaning of that provision.
Article 3(1) of Directive 2001/29 and Article 8(2) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property must be interpreted as meaning that the installation, on board a means of transport, of sound equipment, and, where appropriate, of software enabling the broadcasting of background music, does not constitute a communication to the public within the meaning of those provisions.
Article 8(2) of Directive 2006/115 must be interpreted as precluding national legislation, as interpreted by the national courts, which establishes a rebuttable presumption that musical works are communicated to the public because of the presence of sound systems in means of transport.

Implication of the decision in relation to Greek law had jurisprudence

Comments, implications on Greek case law and business practice

This extremely important decision of the ECJ is very likely to have an effect on the practice of Greek Courts in relation to the presumption arising out of the possession of TV or Radio sets.

In fact, Greek law does not provide such a presumption of “communication to the public” merely because of the possession of TV or Radio set. But the Greek Copyright Office (OPI) in a circular issued in 2017 clearly but obviously erroneously states that the possession of TV or Radio sets creates a presumption of use/communication to the public of works protected by the relevant CMOs.

This apparently erroneous, from a legal point of view, interpretation of the law has been accepted in various occasions by Greek Courts (more recent decision 495/2023. First Instance Court of Volos) who held that the “mere possession of a TV set creates a presumption of communication to the public of copyrighted works enjoying protection under the umbrella of local CMOs.

The reason why this “presumption” is obviously wrong is that the law itself does not introduce such a presumption, although it does so in other instances (for example presumption of representation of art. 7 of Law 4481/2017). The practical result of the Court adopting such a presumption which may seem as a reasonable assumption but does not constitute a presumption under the law is that the burden of proof is unjustifiably and illegally reversed.

Instead of the applicant CMOs having to prove the use of protected works by the users in the form of communication to the public the introduction and application of a “logical” but not legal presumption reserves the burden of proof and imposes to the defendant/alleged user the obligation to prove a negative fact, namely that despite the possession of a TV/Radio set he did not use protected musical works a reversal which, in our view, clearly violates basic principles of Greek civil procedural rules.

It is therefore extremely important that the ECJ considers such a presumption is being incompatible with EU law and it is expected that Greek Courts and the Greek Copyright Office will align itselves with this decision and comply with its contents and will as a result abstain from considering the mere possession of a TV/Radio set as a presumption of act of communication to the public of works “protected” by local CMOs.

An excerpt of this article was first published on www.lexology.com.

Defining Boundaries: IP Law Addresses Exterritoriality, Lexicography & Human Touch

“Yes, the law is about words…,” says Ben Chiriboga in writing about the essential skills that lawyers must have. And Ken White noted more recently that “the entire project of the law is about words meaning specific things.” But our problem often is that the law, or lawyers, frequently use unfamiliar or exotic terms that others claim have no more understood meaning than a reference to a “vermicious knid,” and those or other lawyers may overuse a word that they do not seem to actually comprehend. Indeed, understanding and enforcing the rule of law is itself commonly about defining an undefined concept.

Intellectual property law is all the more a refuge for wordsmiths, linguists, and logophiles, as three recent IP-related matters can help illustrate. One is the case of Abitron Austria GMBH v. Hetronic International Inc., recently argued before the United States Supreme Court, and which presented the question of whether one could understand the language of the Lanham Act to apply outside the United States in some manner, i.e. does it have extraterritoriality and how do we define “commerce”? The second is Finjan LLC v. Eset, LLC, a Federal Circuit decision on which Eset is now seeking Supreme Court review; Finjan raises the question of whether a court must accept a patentee’s own expressly-defined claim terms when reviewing a patent. Finally, a third intriguing development is the US Copyright Office’s March 16, 2023 guidance on works containing material generated by artificial intelligence, which raises the question of what words like “author” and phrases like “human creativity” mean.

Let’s look at them in turn.

I briefly mentioned Abitron here recently, but it deserves more attention in the context of defining the boundaries of US trademark laws and just on the notion of defining words. The question presented in that case is “Whether the U.S. Court of Appeals for the 10th Circuit erred in applying the Lanham Act, which provides civil remedies for infringement of U.S. trademarks, extraterritorially to Abitron Austria GmbH’s foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers,” as noted at scotusblog.com. In brief, as reported by Reuters, Hetronic, an Oklahoma company, makes remote-control systems for cranes and other industrial machinery. Hetronic sued Abitron, which had purchased Hetronic Germany, claiming that Abitron had violated Hetronic’s trademark rights by making and selling Hetronic-branded products with unauthorized parts. Hetronic prevailed at trial to the tune of $114 million in damages, $90 million of which were awarded on the trademark claims. Those damages, however, were largely based on the defendant’s sales of the offending products outside the United States. The trial court and the 10th Circuit Court of Appeals held the damages recoverable because, despite the fact that the sales had occurred outside the United States, Abitron’s infringing activity had a substantial effect on U.S. commerce and “diverted tens of millions of dollars of foreign sales from Hetronic that otherwise would have ultimately flowed into the United States,” as the appellate noted (at Hetronic Int’l, Inc. v. Hetronic Germany GmbH, 10 F.4th 1016, 1046 (10th Cir. 2021).

What the litigants and their counsel battled over was where the boundaries and lines should be drawn under the Lanham Act. The Lanham Act governs federal trademark and unfair competition disputes. It subjects to liability “[a]ny person who shall … use in commerce any … colorable imitation of a registered mark,” 15 U.S.C. § 1114(1) (Section 32), or “[a]ny person who … uses in commerce any” word, false description, or false designation of origin that “is likely to cause confusion… or to deceive as to the affiliation,” origin, or sponsorship of any goods, id. § 1125(a)(1) (Section 43). Notably, the Act defines commerce broadly as “all commerce which may lawfully be regulated by Congress,” id. § 1127, and affords federal courts jurisdiction over all claims arising under it, id. § 1121(a). Though most of the damages the jury awarded to Hetronic flowed from Defendants’ Lanham Act violations, Hetronic argued as a threshold matter that the Act does not apply extraterritorially to their foreign conduct, an argument that they lost in both lower courts.

Central to arguing the issues in Abitron was the notion of definition, which came up at least fifteen different times at the oral argument held before the Supreme Court on March 21, 2023. What did that statutory language mean?

Right off the bat at the Supreme Court, Abitron’s counsel noted that “Hetronic International offers only the text definition of commerce, and this Court has repeatedly rejected the notion that commerce language is enough to extend the law to foreign conduct, even if that language otherwise invokes the full scope of the constitutional commerce power.” Argument Transcript (page 4, lines 4-11). That single sentence illustrates lawyers’ difficult relationship with language, as it couples a concession with what the word commerce means with an argument that the word cannot be understood that way in that context, a position later returned to on rebuttal when counsel argued that “commerce” here must mean “domestic commerce” (page 91, line 13 to 92, line 15), a follow up to the point made in the cert. petition (at 34-35) that the Court has “‘repeatedly held that even statutes that contain broad language in their definitions of ‘commerce’ that expressly refer to ‘foreign commerce’ do not apply abroad.’” And therefore “a fortiori, a statute whose definition of ‘commerce’ at most implicitly could include foreign commerce cannot apply abroad either.”

But there are counterarguments to the suggestion that the law would only have been concerned with uses in domestic commerce. That is because, as the Government’s amicus brief points out (13-14), the Lanham Act permits recovery against any person who “use[s] in commerce” the owner’s mark where such use “is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. 1114(1)(a), 1125(a)(1). So, while the effect of confusion would need to be felt domestically, the cause could be anywhere. As the Government noted (at 14), “To the extent that petitioners’ sales created a likelihood of consumer confusion in the United States, Congress’s purposes therefore are squarely implicated, even though petitioners’ own conduct occurred abroad.” The INTA amicus brief (at page 4) summarizes this position well, noting:

The Lanham Act may be applied to stop foreign conduct that causes substantial impact in the United States within the focus of the Lanham Act, especially where the defendant is a U.S. citizen. Steele v. Bulova Watch Co., 344 U.S. 280, 285-86 (1952). But this does not mean that the Lanham Act has unlimited worldwide application against foreign actors who are not U.S. citizens. Indeed, the Act reaches foreign conduct only to the extent it causes substantial injury in the U.S. Such foreign conduct that causes substantial impact in the U.S. exists in the boundary between “extraterritorial” and “domestic” application of the law and should be reachable whether or not the Court holds the Lanham Act to have extraterritorial application.

Other amici like Intellectual Property Owners Association (IPO) and American Intellectual Property Law Association (AIPLA) also pushed similar views.

In the end though, the test the court applies is less one of defining terms to be applied as law than of determining causation as to any of the impacts felt in fact, always a more case-specific inquiry, as the ABA’s amicus brief noted (at 15). As a long-ago law review note said, “Any legal definition of causation must raise the question whether all the requirements of the definition are found to be present in the particular case. No sound principle can be laid down by which the judge can always determine this question without infringing on the province of the jury.” Note, Legal Cause In Actions of Tort, 25 Harv L. Rev. 303, 305 (1912). It will be interesting to see where the Supreme Court defines these boundaries and draws the lines in the trademark context.

As we wait to see how the Supreme Court will define the reach of the Lanham Act, we also review what it will do in Finjan LLC v. Eset, LLC, a patent case. As one might imagine, patent law frequently comes down to what particular terms in a patent mean, and because the whole point of a patent is to describe a new invention, existing language may sometimes now fully capture what an invention, or element thereof, really is. Consequently, there is a long tradition in patent law of letting patentees and inventors act as their own lexicographers, as the saying goes:

Although words in a claim are generally given their ordinary and customary meaning, a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.

[Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)]

[T]he claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.

[CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)]

What the saying really means is that a patent applicant can give a word, term, or phrase its own definition, and that definition should be applied to that application or later patent.

The problem in Finjan was two-fold. First, the patent applicant used inconsistent definitions of the term “downloadable.” That in and of itself may have rendered the patent indefinite and therefore invalid under US statutory law, which was the ruling of the district court. But the Federal Circuit on appeal created the second problem, at least as the petitioner sees it. The Federal Circuit provided its own definition for the term “Downloadable,” vacated the indefiniteness finding, and remanded to the district court for consideration of the patent in light of the definition of “Downloadable” that the applicant had never considered or argued. Telling a patent applicant that her invention, or a major element of it, does not fit the applicant’s own definition of the invention or such elements sows confusion among many patent lawyers in the US.

But the real problem here is not with the definition of “Downloadable” by the Circuit court, but failure of the petitioner to understand what being a lexicographer means in this context. Like Samuel Johnson, Noah Webster, James Murray or W.C. Minor, one must earn the title or description lexicographer.As Simon Winchester, author of The Professor and the Madman: A Tale of Murder, Insanity and the Making of the Oxford English Dictionary (1998), pointed out, part of that step is the “end to timidity – the replacement of the philologically tentative by the lexicographically decisive.” That simply never happened in Finjan, as there were multiple and inconsistent cross-references and no specific, concluded definition. Thus nothing decisive, and certainly not, in the language of Vitronics or CCS nothing clearly stated nor clearly set forth. Consequently, it does not seem to violate precedent nor ignore an applicant’s would-be status as lexicographer for the Federal Circuit to have come up with its own definition here. The lexicographic enterprise in Finjan just had not happened yet, as there was certainly no OED or even draft, just, as seen in the book and movie version of the Murray/Minor story, some conflicting and separate slips of paper not yet acted decisively upon.

Finally, let us examine the Copyright Office Guidance referenced earlier. The purpose of that guidance was “to clarify its practices for examining and registering works that contain material generated by the use of artificial intelligence technology,” and the guidance reiterated the “well-established [principles] that copyright can protect only material that is the product of human creativity” and that, “fundamentally, the term “author,” which is used in both the Constitution and the Copyright Act, excludes non-humans.” These are principles that I have commented on her before as far back as 2016 and July 2021 (each on the human author vel non question, and I would note that the issue of whether animals have rights of their own remains one others are bringing to court up to this day, as recently noted here). More recently, such as last June and just this February, this poster blogged here on AI issues and commented elsewhere on artificial intelligence generally and specific to this new guidance.

Central to the guidance is the concept that US law presently requires “authorship” to include human touch or contribution, and works that lack human touch will not qualify. The Copyright Office reaches that conclusion in part because, as the guidance states “the Copyright Act refers to an author’s ‘children,’ ‘widow,’ ‘grandchildren,’ and ‘widower,’—terms that ‘all imply humanity and necessarily exclude animals.” But is that so?

It seems to me that one sees in popular culture references to the “children” and “grandchildren” or at least the “next generation” of non-humans all the time. For instance, the Encyclopedia Britannica entry on the racehorse Sea Biscuit describes him as “Man o’ War’s grandson,” thereby impliedly also labeling Man o’ War as a grandfather. Likewise, Elsie the Cow of Borden’s fame was described in the media as being “with child” before she gave birth to a calf. And gorillas at the London Zoo have been described in the press as both “widowed” and “husbands.” All of these instances, and I am sure there are more, suggest that the US Copyright Office may have too quickly found that such statutory references must automatically be understood to refer only to humans. Just as importantly, or maybe even more importantly, courts have used those words in reference to non-humans, as when the Supreme Court of Minnesota referred to “Traffic Secretary, great-grandson of the famous racehorse Secretariat, “

Further, how much human touch is enough touch is a complicated question, and may be even more difficult a question in mediums like art and music, as David Israelite points out in a well-done article. While noting that “AI is already pushing the boundaries,” he also states that “it’s extremely unclear how these lines will be drawn when the human and AI contributions are more intertwined.” So, copyright cartographers and surveyors will remain somewhat unguided in defining those boundaries.

Not fully at sea though. As the Copyright Clearing House has noted and I have mentioned, the Copyright Office is engaged and listening. The Copyright Office’s AI initiative, “has its own dedicated site, will include public listening sessions in April and May, as well as future notices of inquiry,” as CCH notes. So “[w]e’ll all have to stay tuned to see how the initiative develops and to see what other guidance the Office might release,” according to CCH. Sure, “[i]n the eyes of the Copyright Office, the human hand has the upper hand for now, which should be a relief for practicing artists concerned about AI encroaching on the commissions and freelance market,” as one commentator noted. But, as I noted before, “I think the Kraken comes now—help us,”

It also makes sense that AI work should be copyrightable. That does not mean that a copyright should register in the name of the AI program any more than it should in the name of the camera. The economic realities present suggest that some protected status, whether in copyright itself or in some other form makes sense. I draw the analogy to what happened in the patent field where many long debated whether plant patents were obtainable since the novelty was not created by an inventor but, many would argue, by nature. But giving periods of exclusivity to those who wished to do painstaking, long work of plant cross-breeding and genetically modifying organisms was a necessary incentive to spur investment, as Wen Zhou has discussed. Just as “Congress passed the Plant Patent Act in 1930 as a result of plant breeding and other agricultural efforts, making new plant strains derived from crossbreeding patentable,” Id., some modification of, or supplement to, the Copyright Act to make some level of AI-generated images and texts protected seems an economic inevitability. Exactly where that boundary and those borders will be drawn is unclear.

But, as suggested in our title, defining boundaries is a frequent task in the law, and we must not shrink from defining boundaries in a way that expands our minds and our possibilities.

CRITERIA TO AVOID CANCELLATION FOR LACK OF USE OF A TRADEMARK IN COLOMBIA

Exclusive rights over a trademark in Colombia arise from registration. Also, when holding a trademark registration in Colombia, the obligation arises for its owner to use the trademark in commerce, beginning three (3) years from the date when registration was granted.

This means that a trademark registration in Colombia may be canceled by the Trademark Office, if the trademark has not been effectively and publicly used, to identify in commerce, goods or services covered by the registration.

A cancellation action is a formal request, posed by any third interested party, which commences by filing a cancellation petition with the Trademark Office, upon payment of the applicable official fee.

If the cancellation petition is granted by the Trademark Office, the party who requested cancellation has a preferential right to file, within three (3) months following the decision that canceled the initial registration, a new application to register the same trademark that was canceled.

Once a cancellation action has been admitted to proceeding, the owner of the trademark that has been questioned for lack of use will be granted a sixty (60) day term to provide evidence of sufficient, public and continuous use of the trademark in the market, in Colombia or at least one of the countries that are members to the Andean Community, to identify all or some of the products or services covered by the registration.

The evidence provided in defense of the cancellation must show that the trademark has been used in the way that it was registered; this means that the trademark used in the market to identify products or services, corresponds to the one registered, and only variations in non-essential elements would be admitted to support a valid use.

Following is a summary of elements that the Colombian Trademark Office and the case law have identified as relevant to be considered when reviewing if a trademark registration is subject to cancellation:

– The cancellation of trademarks has the ultimate purpose of excluding, from the trademark register, any distinctive signs that have not been used by its owner, and which may be of interest to third parties.

– The concept of sufficient use of a trademark, implies both a qualitative and quantitative analysis of the evidence, to confirm if the evidentiary elements provided by the owner show that products or services have been made available in commerce under the trademark, in the quantities and in the form that is expected for the particular type of products or services.

– To avoid cancellation the trademark must have been used by the owner or a third authorized party. Said use must have happened within the relevant period –three (3) years before the date when the cancellation request was filed– and must be referred to transactions for amounts that are consistent with the type of products or services that are covered by the registration.

– The evidence of use may show that the trademark has been used in Colombia, or in at least one of the member countries of the Andean Community, namely Perú, Ecuador, and Bolivia.

– Also, any evidence that shows use of the trademark in products that are destined to be exported from the member countries, may prevent cancellation, if the quantities are deemed to be sufficient.

– Evidence consisting of advertising materials is not deemed to be sufficient to prevent cancellation by itself, since it only shows an activity that may happen before the actual commercialization of products or services, but does not show that the products bearing the trademark have been available to consumers in the market.

– On a case-by-case basis, the Trademark Office will determine whether the use that is evidenced in the proceeding shows that the transactions reflected in the documents correspond to the normal commercialization of the relevant products. For example, if the trademark is registered to identify massive consumption products, the quantity of products sold must reflect the expected number of transactions over these types of products, during the relevant term.

– Any documents supplied as evidence of use, such as copies of invoices, accounting certificates or affidavits, must depict or make express reference to the trademark and the relevant products, so that the Trademark Office may verify that the information contained therein shows, with a high level of certainty, that the trademark has been used in commerce.

The Trademark Office may decide to partially cancel the registration. In this case, the decision to cancel will declare that the registration remains in force to cover those products whose use has been evidenced by the trademark owner, thus eliminating from the scope of the registration all of the other products that were not covered by the evidence submitted to the proceeding.

A decision to cancel a trademark may be appealed, and the final decision from the Trademark Office may be challenged before the administrative courts.

At Gamboa, Garcia & Cardona we are ready to assist with the defense of your trademark registrations against cancellation actions filed by third parties. Also, we are ready to structure effective strategies to minimize the risk of cancellation, and to update your trademark portfolio so that the legal protection of your brands is in line with how they are currently used in the market, under your business plans and priorities.

Find a firm

Find a firm

Relaxation to provide detail of corresponding applications

Divisional application based on the invention disclosed in a provisional application

Reduction of time for filing a Request for Examination

Application to be filed for claiming grace period

Amendment to the pre-grant opposition procedure

Revision of fee for post-grant opposition

Relaxation in requirements for working statement