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EU issues Directive for legal protection of designs to harmonize diverse laws in various EU Member States
To harmonize the legal of protection of designs within the EU and to address urgent industry needs, the EU has issued Directive 98/71/EC on the legal protection of designs. The Directive only harmonizes those national laws and regulations that directly affect the EU market, such as the definition of “design”� and “novelty.”� Therefore, it leaves registration procedures, enforcement, remedies and enforcement in the hands of the particular EU Member States. The Directive applies to design rights registered (or applied for) with the industrial property offices in the Member States, the Benelux Design Office, or through international arrangements with effect in a Member State.
The Directive defines “Design”� as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, shape, texture and/or materials of the product itself and/or its ornamentation.”� (Article 1(a)). A design is “novel”� only “if no identical design has been made available to the public before the date of filing the application for registration or, if priority is claimed, the date of priority.”� (Article 4).
The Directive does not protect features that are merely the result of particular technical functions (Article 7). The scope of protection encompasses “any design which does not produce on the informed user a different overall impression.”� (Article 9). Once registered, the law protects the design for 5-year periods for a total of up to 25 years (Article 10). Under Article 17, the copyright law of a particular Member State may also safeguard a design protected under this Directive.
The Member States must implement this Directive into national law no later than October 29, 2001.
Citation: Directive 98/71/EC … on the legal protection of designs, 1998 O.J. of the European Communities (L 289) 28, 28 October 1998.
Filed in: 1998 International Law Update, Issue 11
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German district court holds that plaintiff who put out routine promotional sites on internet could not claim copyright protection to prevent defendant’s inclusion of that material on its site
A copyright dispute arose between two German companies that provide advertising services for home improvement stores on the Internet. The plaintiff owns the domain name “baumarkt.de,” and promotes several stores.
The defendant uses “baumarkt.de” for a kind of on-line journal that allows users to visit the websites of various stores without leaving the defendant’s website. The defendant’s website links and presents the stores’ websites within a frame of its own. The links include websites that plaintiff had created and maintained.
Plaintiff does not complain about the links to its websites, but vigorously objects to its web-pages appearing in the defendant’s website’s frames. Plaintiff argued that the German Copyright Law (UrhG) protects the webpages it has created. Making them appear in a frame on defendant’s website distorts their distinctive colors and design.
Moreover, in plaintiff’s view, such links are anti-competitive because the defendant offers services that rely on the websites that other parties have created at their expense. Because the linked webpages appear in the defendant’s frames, the defendant’s website gives the misleading impression that the stores are the defendant’s clients.
In April 1998, the Dusseldorf District Court dismisses the complaint. It holds that the UrhG does not usually treat internet pages that promote a manufacturer’s products as “works.” In this particular case, the content of the websites that went into evidence is not copyrightable. For example, one of the plaintiff’s pages merely strings together pictures of various bottles of wood glue, presumably furnished by the manufacturer. This does not show any creative effort.
Another of plaintiff’s webpages shows a colorful presentation of a shower along with promotional slogans. This sort of thing is common in catalogues and plaintiff cannot copyright it without more. For these reasons, the District Court did not reach the question of whether the defendant’s frames unduly copied and distorted the plaintiff’s works.
Nor did the Court decide whether the defendant’s presentation was misleading. The defendant had argued that the average internet user knows that a link or the appearance of someone else’s website in a frame does not necessarily connote a business relationship. These are merely ways to navigate from one website to another.
Noting that the internet is a young phenomenon, the Court admits that it lacks the necessary knowledge to take judicial notice of the fact that users are aware of what frames mean. Since plaintiff failed to put on expert testimony, the Court cannot determine the meaning and importance of frames.
Citation: Landgericht Dusseldorf, Urteil vom 29. April 1998, Geschaftsnummer 12 O 347/98. [Readers can find the German text of this opinion on the Internet at www.netlaw.de/urteile].
Filed in: 1998 International Law Update, Issue 10
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Mexico issues regulation specifying requirements of Copyright Act
Effective May 23, 1998, Mexico has issued a regulation that elaborates on the requirements of the Mexican Copyright Act (Ley Federal del Derecho de Autor) [see 1997 Int'l Law Update 27].
The Government agencies in charge of applying the statute and the present regulation are the Secretary of Public Education (Secretaria de Educacion Publica) through the National Institute for Authors’ Rights (Instituto Nacional del Derecho de Autor). In certain instances, the Mexican Institute for Industrial Property (Instituto Mexicano de la Propiedad Industrial) has a role.
Copyright protection generally lasts for 15 years. Certain reasons, however, may justify longer protection such as for works that need unusually large investments (Title III, Chapter I, Articles 16-17). As for written works by anonymous authors, parties may copy them if the author’s name is unknown or if nobody holds identified rights to them (Title IV, Chapter I, Article 27). As for movies and audiovisual works, their contracts must provide for proportional compensation of the authors or holders of rights (Chapter III, Article 34).
Copyrights are, however, not unlimited. Mexican law may restrict their protections or allow use by third parties if it is in the public interest (Title V, Chapter I, Articles 38-43). The regulation also contains rules for resolving disputes regarding copyrights, including arbitration (Title XII).
Citation: Reglamento de la ley federal del derecho de autor, 1998 Diario Oficial de la Federacion [Mexican Official Gazette], May 22, 1998.
Filed in: 1998 International Law Update, Issue 7
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In “grey market” area, U.S. Supreme Court construes the Copyright Act of 1976 as retaining “first sale” defense to charges of unlawfully importing copyrighted items that infringed copyright holders’ exclusive right to distribute
L’anza Research International, Inc. is a California manufacturer and seller of hair care products in the United States. It enters into exclusive U.S. distributorships each of which has specified limits as to geography and authorized retailers. Unlike in its foreign markets, however, L’anza extensively advertises its wares and specially trains retailers in the U.S. Thus, its foreign prices are 35 to 40 percent below those it charges in the U.S.
In 1992 and 1993, Quality King Distributors, Inc. (King), a U.S. distributor, bought three multi-ton shipments of L’anza’s products at foreign prices from L’anza’s Malta distributor. Without L’anza’s authority, King then imported the products into the U.S. and sold them to various distributors at discount.
L’anza then sued King in federal court for violating its exclusive distribution rights under the Copyright Act of 1976 (Act). The court spurned King’s “first sale” defense and gave summary judgment to L’anza. The Ninth Circuit affirmed [98 F.3d 1109].
After granting a writ of certiorari to resolve a split on this issue between the Third and Ninth Circuits, the U.S. Supreme Court unanimously reverses and holds that the “first sale” doctrine in § 109(a) of the Act does apply to imported copies of a copyrighted product.
Although § 106(3) grants the copyright holder the exclusive right to “vend” the product and distribute copies by sale or otherwise, § 109(a) allows owners of the products to resell them without the holder’s permission. L’anza argued that a proper reading of § 602(a) of the Act that bans unauthorized importation of copyrighted items is that it bars its overseas distributors from reselling to U.S. vendors who cannot buy from L’anza’s domestic distributors.
The Court disagrees. After the first sale of a product, whether foreign or domestic, the buyer becomes an “owner” within § 109(a). “The whole point of the first sale doctrine is that once the copyright owner places a copyrighted item in the stream of commerce by selling it, he has exhausted his exclusive statutory right to control its distribution.” [1134] The first buyer is thus entitled to resell the product according to the literal terms of §109(a). Section 602(a) merely makes the unlawful importation an infringement of the exclusive right to distribute copies guaranteed by § 106(3). In turn, § 109(a) applies, “notwithstanding the provisions of” § 106(3).
The Court also sees no merit in L’anza’s argument that, in banning the importation of piratical copies, § 602(a) must also extend to lawfully made or non-piratical copies made by the owner of the copyright. In the Court’s view, § 602(a) pertains to a class of copies that are neither piratical nor “lawfully made under this title.” This class includes copies that some entity has “lawfully made” under the law of a foreign nation.
“…[I]rrelevant [to construing the 1976 Act] is the fact that [since 1991] the Executive Branch of the Government has entered into at least five international trade agreements that are apparently intended to protect domestic copyright owners from the unauthorized importation of copies of their works sold in those five countries [i.e., Cambodia, Trinidad and Tobago, Jamaica, Ecuador, and Sri Lanka]. The earliest of those agreements was made in 1991; none has been ratified [sic] by the Senate.” [1134]
Citation: Quality King Distributors, Inc. v. L’anza Research Int’l, Inc., 118 S.Ct. 1125 (1998).
Filed in: 1998 International Law Update, Issue 5
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In German civil action brought by U.S. singer Bob Dylan against unlicensed distributor of unauthorized recordings of his American concerts, German High Court holds that, though it cannot prevent distribution of these recordings, it does bar unconsented use of singer’s picture
The defendant in the following case is the manager of a German company (defendant) that distributed music CDs of Bob Dylan’s concerts. The defendant had made those recordings in the U.S. without permission and distributed them in Germany with pictures of Bob Dylan on the cover. Because of a gap in international copyright law, Dylan could not stop the distribution of the recordings. [Editors' Note: The Berne Convention for the Protection of Literary and Artistic Works, 828 U.N.T.S. 221, does not protect sound recordings. This gap may be closed in the future under the WTO TRIPS Agreement, Annex 1 C]. Dylan, however, sued to stop the use of his image on the CDs.
The German district court found for Dylan. The Appeals court dismissed the claim. The German High Court (Bundesgerichtshof, BGH) now reinstates the district court judgment in favor of Dylan.
Under German law, third persons may use the image of a “historic personality” without that person’s consent [§ 23 I Nr. 1 KUG]. The public has an interest in receiving information about such a person, for example to see how he holds the guitar, what the concert looked like, and so forth. The image, however, should not “degrade” that person to a mere marketing object. Such uses do not serve any public interest.
Here, the court has to balance the public’s interest in receiving information about a subject with that person’s justified interests. The subject, however, does not have to allow the use of his or her images for marketing purposes. Even though Dylan’s pictures on the CDs have some informational content, the main purpose is to promote the sale of the CDs to the average person.
Citation: BGH, Urteil vom 1.10.1996 – VI ZR 206/95 (Karlsruhe), reported in 1997 NJW, Heft 17, page 1152 (April 23, 1997).
Filed in: 1997 International Law Update, Issue 7
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Mexico issues new law to protect copyright; to enter into force in March 1997
Mexico has published a new copyright protection law. In particular, the purpose of the law is to protect the rights of authors, artists, editors, when their works are broadcast or used in any other form (Article 1). The competent authorities for purposes of this law are the Federal Government through the National Institute for Authors’ Rights (Ejecutivo Federal por conducto del Instituto Nacional del Derecho de Autor), and in special cases the National Institute for Industrial Property (Instituto Mexicano de la Propiedad Industrial) (Article 2).
Foreign authors or holders of rights enjoy the same protection as Mexican nationals, based on this law, other Mexican laws, and additional international agreements in this area (Article 7).
An “author” is defined as a person who has created a literary or artistic work. Protected by the law are works in the areas of literature, music, drama, dance, drawings and paintings, sculptures, caricatures and cartoons, architecture, movies and other audiovisual works, television and radio programs, computer programs, photography, applied arts such as designs and textiles, as well as compilations of works, such as encyclopedias and anthologies, and other data collections that constitute intellectual creations.
Generally, the Mexican law protects such works for a period of 50 years. There are, however, many restrictions and conditions. For example, it covers non-original computer programs for only five years. In contrast, the law protects “patrimonial” works during the author’s life and for 75 years thereafter.
The effective date of the law is March 24, 1997.
Citation: Ley Federal del Derecho de Autor, 1996 Diario Oficial de la Federación [Mexican Official Gazette], December 24, 1996.
Filed in: 1997 International Law Update, Issue 3
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European Community issues directive to protect databases
The EC has issued a directive (to be implemented into national law by the member states) to protect databases. The broad definition of “databases” includes literary, artistic, musical or other collections of material such as texts, sound, images, numbers, facts, and data.
Under the directive, the author of a database has the exclusive right to carry out or authorize:
Reproduction by any means
Translation, adaptation, arrangement and any other alteration
Any distribution to the public
Any display to the public
The directive grants rights of protection to the maker of the database, but also provides for exeptions. For example, databases may be used without authorization for:
Extraction for private purposes
Illustrations for teaching or scientific research
Purposes of public security, as well as administrative and judicial procedures.
The member states must provide appropriate remedies in case of infringement of the rights provided in this directive, and must adapt their laws accordingly before 1 January 1998.
Citation: Directive 96/9/EC of the European Parliament and the of Council of 11 March 1996 on the legal protection of databases, 1996 Official Journal of the European Communities (L 77) 20, March 27, 1996.
Filed in: 1996 International Law Update, Issue 4
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In dismissing federal copyright infringement suit between two Singapore corporations over computer sound cards on grounds of forum non conveniens for litigation in Singapore courts, district court did not abuse discretion, according to Ninth Circuit
Two Singapore corporations, Creative Technology, Ltd. (CTL) and Aztech Systems Pte, Ltd. (ASP) compete in the design, manufacture and distribution of computer sound cards. Through California subsidiaries, CTL distributes its “Sound Blaster” products while ASP markets its “Sound Galaxy” products throughout the United States. After settlement of prior Singapore litigation fell through, CTL sued ASP and its American sub in California federal court alleging ASP’s infringement of American copyright laws by making and distributing “Sound Blaster clones” within the U.S. ASP responded with a countersuit under the Singapore Copyright Act (SCA) in the Singapore courts to which CTL filed compulsory SCA counterclaims on the clones issue. ASP then moved to dismiss the American suit under the forum non conveniens doctrine (FNC) and the federal court granted it. CTL appealed.
In a 2 to 1 decision, the U.S. Court of Appeals for the Ninth Circuit affirms. The majority first finds that, unlike suits under the Jones Act and the Federal Employers Liability Act, FNC does apply to Copyright actions. The exclusivity provision of 28 U.S.C. § 1338 applies only as between federal and state courts and does not rule out the jurisdiction of foreign courts. Nor do the “national treatment” demands of the Uniform Copyright Convention and the Berne Convention change the result since copyright suits by American plaintiffs are also subject to FNC treatment.
Next the majority believes that plaintiff has an adequate remedy in the Singapore courts. Both parties have already submitted to its jurisdiction over similar infringement issues. Since it does not appear that SCA is substantively inadequate, injunctive relief against ASP at its seat would seem highly effective. Moreover, if those courts should conclude that the SCA cannot provide adequate relief to plaintiff for wrongs done outside of Singapore, 28 U.S.C. § 1338 could not operate extra-territorially to keep them from applying U.S. copyright law.
Nor did the lower court abuse discretion in balancing the private interest factors in favor of FNC dismissal. Both of the primary parties, the main infringing conduct and the bulk of the witnesses are in Singapore. The result is the same with the public interest factors. This is basically a suit between two Singapore entities over which first developed the disputed technology in Singapore. It does not involve the scope of American statutory protection for U.S. companies or American products.
The dissenter, however, sees this essentially as a suit for violating American law by the actions of American companies within the U.S. with a focus on the local actions of ASP’s California sub. In his view, the “national treatment” mandates of the above Conventions requires giving foreign copyright plaintiffs the same privilege of litigating in the U.S. courts over a U.S. infringement that U.S. plaintiffs have, thus making Singapore an unacceptable forum. As to the content of the SCA or as to the ability or willingness of the Singapore courts to give appropriate remedies under the complex body of U.S. law dealing with computer software, ASP has made no showing whatever. The dissenter views only U.S. law as applicable, thus calling for American judicial determination to avoid choice-of-law problems. Finally, the interests of the American public demand that we not leave resolution of thorny computer copyright problems under U.S. law to a foreign court.
Citation: Creative Technology, Ltd. v. Aztech System Pte., Ltd., 64 U.S.L.W. 2083, 61 F.3d 696 (9th Cir. 1995).
Filed in: 1996 International Law Update, Issue 1
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