Copyright – IP Legal

Five common IP myths debunked

Hristo Raychev — Mon, 27 Jan 2025 15:52:27 +0000

Myth Number One: If a work is published on the internet, it is free to use

A common mistake made equally by individuals, SMEs and even larger corporations is to conclude that any work (video, photo, presentation, etc.) published on the internet becomes free to use by anyone. This assumption is wrong and dangerous. The author of a work has the exclusive right to decide whether, how and when to publish the work – the publication however does not mean an authorization for anyone to use the work. Despite publication, the author retains full copyright meaning that the work or parts of it may be legally used only with the author’s permission (with a carveout for exceptions and limitations to copyright which are subject to strict statutory conditions and are applied restrictively).

Myth Number Two: I do not need to register a mark, my company or business name is unique

Company or business names and registered marks are very different concepts. Normally commercial registers verify and make sure that a company name is unique on the relevant national or regional territory. These names are used to identify the legal entity (company) itself and not the goods and services it markets. Trademarks, on the contrary, are used to indicate the commercial origin of goods and services and a company may own several marks for its different product lines. Consumers are usually confronted with marks, they link the qualities of the goods and services to the marks (and therefore marks are the device which accumulates reputation for the respective product). Therefore, it is crucial to protect the company’s marks by registration in the territories where it markets its goods and services.

Myth Number Three: I have a business model and I want to register it so that nobody can use it

Often businesses develop an idea or a business model, e.g. a new service offered via online platform, and aim to gain exclusivity over such idea or business model. This is an extremely hard task which can hardly be achieved through registration of IP. Ideas on their own are not patentable. Also, under the European Patent Convention, schemes, rules and methods for doing business are not regarded as inventions and are not patentable. In these scenarios it is important to refer to other possibles ways of protection such as trade secrets, combined with other IP rights that could enhance the position and reputation of the business over time (trademarks, designs, etc.).

Myth Number Four: I can protect my patent, trademark or design worldwide

There is no such thing as a worldwide trademark, design or patent. These are all registered IP rights meaning that they are protected in the territory of the country (or regional organisation such as the EU) where the IP rights holder has applied to protect its rights and has received registration. This is why it is critical for businesses to identify the markets where they have present or potential commercial interests so that a sound IP protection strategy can be put in place accordingly.

Myth Number Five: You have to register your copyright to protect it

Although this common misunderstanding tends to disappear, we still receive request for registering works which are subject to copyright in order to protect them. It is important to know that copyright arises automatically from the moment of creation of the work and its fixation into a certain tangible form. The questions of proving copyright, the moment of creation and authorship are another issue. Despite that copyright protection is automatic, steps may be taken to collect enough evidence in advance on the work(s) created, the time of creation and the authorship. Such steps shall be consulted with an IP professional depending on the concrete work at hand and the specific circumstances.

Return to innocence: EU Court of Justice rules on copyright liability of YouTube and other platforms

Hristo Raychev — Sat, 26 Jun 2021 13:58:00 +0000

By its recent judgment of 22 June 2021, the Court of Justice of the EU (CJEU) tackled issues with important implications on sharing online platforms such as YouTube (joined cases C-682/18 and C-683/18). The issues were referred to the CJEU by the German Federal Court of Justice and relate to whether online sharing platforms such as YouTube perform copyright-restricted acts, incl. possible copyright infringements, when protected content is illegally made available by their users.

In a nutshell, the first of the joined cases referred to the CJEU concerns a court dispute for illegally making available of recordings and performances of Sarah Brightman on YouTube. The second case was brought forward by the international publisher Elsevier regarding specialized medical literature which was made available on the “Uploaded” file-hosting and sharing platform.

The CJEU clearly confirmed that when the users of platforms, such as YouTube, illegally upload protected content they generally perform “acts of communication to the public” (Art. 3 of the InfoSoc Directive) of this content and are potentially liable for copyright breach. When assessing the platform operators’ contribution in such cases, however, the Court provided more of a guidance as to when platform operators may be liable. The criteria discussed by the Court were as follows.

The CJEU noted that when the respective platform is indispensable, i.e. when it facilitates the sharing of content which otherwise would be impossible or far more complex, this points towards a copyright-restricted act of communication to the public. However, this is not the sole criterion to be considered. Even if the respective platform is necessary to facilitate the sharing of content, the Court took the view that that it is crucial whether the platform operator acts deliberately, i.e. whether it acts with full knowledge of the consequences of his actions as an intermediary in the illegal content sharing.

Based on the above fundamental premise, the Court concluded that the operator of an online sharing platform such as YouTube performs the copyright-restricted act of “communication to the public”, and is potentially liable, when it contributes, beyond merely making that platform available, to giving access to such content to the public in breach of copyright. Again, in a non-exhaustive fashion the Court gave the following examples of when an online sharing platform such as YouTube may be committing a breach of copyright in the form of illegal communication to the public:

When the operator has specific knowledge that protected content is available illegally on its platform and refrains from expeditiously deleting or blocking access to it. This would be the case when YouTube is sent a copyright takedown request from a legitimate rightsholder and does not delete/block the flagged content (or delays such deletion or blocking for unreasonable period);

When the operator, although it generally knows or must know that users are making protected content available illegally via its platform, has not put in place appropriate and reasonably diligent technological measures to effectively address any copyright infringements on that platform. This would be the case for example when a platform does not provide even basic mechanisms for copyright owners to track down infringing content (such mechanism is, for instance, YouTube’s content-recognition software which enables to identify other videos on YouTube having the same content in whole or in part); and/or

When the operator himself participates in selecting copyright-protected content which is illegally made available on its platform, as well as when the operator provides tools on its platform specifically intended for the illegal sharing of such content or knowingly promotes such sharing. For instance, this would be the case when the platform operator has adopted a financial model that incentivizes users of its platform to illegally post copyright-protected content.

Conclusion

As seen in other cases, the CJEU does not provide clear-cut answers to the issues raised by it, but rather leaves for national courts to decide on a case-by-case basis. Nevertheless, based on the Court’s ruling, it may be concluded that online platform operators, such as YouTube, are “innocent” for illegal communication to the public of a copyrighted work, provided that: (a) they are unaware at all of the concrete infringement(s) committed or delete/block the infringing content immediately upon becoming aware; (b) they have taken appropriate technological measures to fight copyright breaches; and (c) they do not themselves select, promote or encourage in any way the illegal sharing of copyright-protected works.

Court of Justice of the EU on e-books copyright case: no digital exhaustion

Hristo Raychev — Fri, 20 Dec 2019 08:00:40 +0000

By a recent judgment of 19 December 2019 the Court of Justice of the EU ruled, in substance, that there is no “digital exhaustion” of the right of distribution under the EU InfoSoc Directive. The dispute involved the provision of an online service consisting in a virtual market for “second-hand” e-books.

Exhaustion provision

According to Art. 4 of the EU InfoSoc Directive the first sale in the EU of a copy of a program by the rightholder or with his consent exhausts the distribution right within the EU of that copy (with the exception of the right to control further rental of the program or a copy thereof). Effectively this means that, with respect to software, copyright holders in the EU cannot prohibit the “second hand” re-sale of software that has been legally acquired by the re-seller. It must be underlined that the exhaustion, as a form of limitation of the copyright holder’s rights, applies strictly and only to the right of distribution of the particular legally acquired copy of the resold software.

The e-book case

Essentially, the Court of Justice of the EU was confronted with the question whether the making available for download of an e-book constitutes an act of distribution (i.e. the first sale of the e-book exhausts the right to distribution and the making available of the e-book for download IS an act of distribution and is thus freely permitted) or whether such supply is covered by the concept of “communication to the public” within the meaning of the InfoSoc Directive (i.e. the first sale of the e-book exhausts the right to distribution, but the making available of the e-book for download IS NOT an act of distribution and thus requires consent of the copyright holder).

Conclusion

The Court of Justice of the EU concluded that the making available for download of an e-book is covered by the notion of “communication to the public” and, more specifically, by that of “making available to the public of [authors’] works in such a way that members of the public may access them from a place and at a time individually chosen by them” within the meaning of the InfoSoc Directive. In this way the court denied the existence of a “digital exhaustion” related to e-books.

In practice this means that, unlike the re-sale of printed books, legally acquired e-books cannot be re-sold by relying on the exhaustion of the distribution right and making them available for downloading without the rightholder’s permission. This conclusion seems in line with other case-law of the court which considered that e-books are electronically supplied services, rather than goods to which the act of distribution normally applies.