The second day of this year’s IP Case Law Conference at EUIPO included two keynote speakers and three panel sessions, the first of which was on copyright issues.

Ms Eun-Joo Min – Director, WIPO Judicial Institute, gave a keynote address on intra-judicial connectivity in IP. She described the “mosaic of independent systems of territorial rights in each state applied by national or regional courts” and added: “Globalisation brings homogenisation of legal problems.”

For example, courts in Brazil, China, France, Japan and the US have all ruled on the Louboutin trade mark application for the red sole of a shoe.

Partly because decisions of a national court can have an impact on commercial relationships outside the territory, WIPO is seeing an increasing demand to facilitate judicial exchange and build judicial capacities.

It has a network of 3000 judges from 165 countries and focuses on three areas: judicial conferences, training programmes and understanding and/or citation of foreign judgments. “We need to be deliberate in building connections,” said Ms Min.

“Law does not exist in a vacuum. The system exists to serve trade,” said Myrtha Hurtado Rivas – General Counsel Brands, Marketing Properties, Licensing & Anti-counterfeiting at Société des Produits Nestlé in her keynote address. “If we fail to think about how they work in practice, laws will stay mute and not have the impact we wish for.”

Issues she highlighted included: lengthy procedures and legal uncertainty; the need to be supportive of all communities and individuals; sustainability; and the emergence of new players such as big online retailers. Ms Rivas said that these issues must be addressed by “collaboration, simplification and harmonisation”.

Copyright in flux

The first panel of the day focused on copyright in flux. Introducing the panel, leader Julie Samnadda – Member of the Legal Service European Commission, highlighted the impact of international law and agreements on EU case law, referring to the recent KaiKai case on design priority (C-382/21). She also mentioned sensitivities arising from EU member states’ treaty obligations, which may pre-date EU membership.

In her talk, Professor Dr Eleonora Rosati - Of Counsel at Bird & Bird, Professor of IP Law at Stockholm University, asked: Should the EU unify copyright laws? Her short answer was: Yes. “The direction of travel is towards unification of copyright laws," she said.

The question was already raised back in 1998 and it was addressed in Infopaq (Case C-5/08) as well as the Advocate General Opinion in the Amazon case (C-252/11). Most recently, there has been a proposal for a single business code for the EU.

“Unification will be unavoidable in the medium-term … If it feels premature, then codification of copyright laws might be the second-best solution,” she said. “We should have better laws for a future-proofed and better EU copyright system.”

Péter Lábody – Vice President, Hungarian Intellectual Property Office and researcher, Institute of Information Society spoke on The Copyright Register in Action. He noted that one-third of EU member states have a legal deposit system of some sort.

There are three general types of deposit systems worldwide: quasi compulsory registry (eg US), voluntary registry (EU countries) and factual registry (WIPO PROOF – no longer available). In Hungary, there are about 1,000 deposits a year compared to some 0.5 million annually in the US and 9 million in China.

Mr Lábody said that registration can provide more legal certainty, assist enforcement both at home and abroad, facilitate commercialisation and secure other intangible assets such as know how.

“The big game changer is the boom in AI creations,” he said. In particular, deposit systems could make it easier to opt out copyrighted works from AI training and support transparency requirements such as those in the EU AI Act. He added that blockchain and cloud technologies are also “game changers”.

The Vespa case in Italy was the subject of the presentation by Irene Calboli – Professor of Law, Texas A&M University School of Law, who said she had her first Vespa when she was 14. “This could be a very good case to clarify the idea of overlap between copyright and trade marks, and the definition of substantial value,” she said.

The dispute is between the trade mark holder Vespa and Chinese replicas. It led to judgments from the EU General Court and Italian Supreme Court last year. The question, said Professor Calboli, is: are substantial value and artistic value compatible or mutually exclusive? In other words: “Is it the Vespa shape that gives substantial value to the scooter or is it the reputation that the Vespa shape has acquired in many years that confers such value?”

Dr Anastasiia Kyrylenko – Postdoctoral Researcher at the Universidade Católica Portuguesa and IP Consultant elaborated on overlaps between copyright and trade marks. She noted that this topic has attracted attention, for example when Mickey Mouse came out of copyright protection.

Dr Kyrylenko cited examples of EU trade marks that are registered for copyrightable works, which she attributed partly to the lowering of the barrier for copyright work and partly to the removal of the graphical representation requirement in trade mark law, as well as the boom in merchandising.

“The issue is how do we treat works that go into the public domain when copyright expires?” she asked. Grounds of refusal relevant for such marks include lack of distinctiveness and public policy/morality (a trade mark application for the Mona Lisa was refused as was the Vigeland statue of a boy in Norway, which led to a judgment of the EFTA court E-5/16) as well as bad faith (the Banksy case and pending CJEU case C-17/24 CeramTec). “We may soon have some answers to these questions,” she said.

Photos provided by EUIPO