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Good morning everyone. Hope you are all having a good day and are ready to enjoy some IP news.

Banksy lost the trade mark battle over the “Flower Thrower”

The artist created the work in Bethlehem in 2005 and successfully obtained an EU trade mark on the image in 2014. In 2019 he created the London shop "Gross Domestic Product,"  to demonstrate that the trade marks was being used. But British greeting card company Full Colour Black claimed the trade mark should be cancelled as he never intended to use it on any goods.

The European Union Intellectual Property Office (EUIPO) appeal panel ruled against the artist because he could not be identified as the unquestionable owner of such works because his identity remained hidden. “Banksy has chosen to remain anonymous and, for the most part, to paint graffiti on other people’s property without their permission, rather than to paint it on canvases or his own property”.

The EUIPO did not consider that setting up the shop as proof of use. Indeed according to the panel of three judges, “his intention was not to use the mark as a trademark to commercialise goods [...] but only to circumnavigate the law. These actions are inconsistent with honest practices.

This latest affirmation is related to the fact that it cannot be established without question that the artist holds any copyrights to a graffiti. The contested trade mark was filed in order for Banksy to have legal rights over the sign as he could not rely on copyright rights, but that it’s not a function of a trade mark".

This could jeopardise Banksy’s entire trade mark portfolio.

Messi can finally register his surname as a trade mark

10 years ago, Messi filed his trade mark application, ‘”Lionel Messi”, for classes 3, 9, 14, 16, 25 and 28 (covering a wide range of products including fragrances, jewellery, clothing and sports equipment).

However, said application was opposed by Massi, a famous Spanish cycling brand that alleged that “Messi” and “Massi” were very similar and were likely to give rise to consumer confusion. “Massi” has been registered since 1998.

Now, after 10 years of legal battle, the General Court of the European Union ruled that the level of fame enjoyed by Messi was sufficient to preclude any likelihood of confusion, notwithstanding any apparent similarities between the marks and overlap in products.

Sports personalities, who are well known, are unlikely to have their names confused with similar marks or concepts. Lionel Messi’s successful registration is yet further evidence of this and how beneficial it can be for sports stars to register their personal brands.

AG Spuznar opinion on embedding content on website

The dispute involves Deutsche Digitale Bibliothek (DDB), a library website based in Germany, whose main aim is to provide free access to the cultural and scientific heritage of Germany via the Internet (books, archives, pictures, sculptures, films…).

To achieve its goals, the library links to digitised content stored on various Internet portals of its participating institutions, displaying thumbnails of that content in what is described as a “digital showcase”.

DDB operator reached a licensing arrangement with copyright collecting society VG Bild-Kunst to display the thumbnails. However, this agreement came with a requirement for DDB to use technical measures to prevent third-party websites from displaying those thumbnails using the “framing” technique.

Framing is when, for example, a YouTube video is placed on a third-party website in a “frame” but is actually delivered by YouTube itself and is not hosted on the embedding site.

Because DDB considered this requirement unreasonable, the library took the case to courts in Germany requesting a ruling that VG Bild-Kunst is required to grant a license without requiring DDB to prevent framing.

The German Court, present the case before the EU Court of Justice and ask of the ECJ to interpret the Copyright Directive, in relation to the exclusive right to grant or prohibit any communication to the public of their copyright works granted to copyright holders.

Just before the weekend, AG Szpunar’s opinion was published. Although such opinions are not legally binding, in most cases the EU Court of Justice adopts the Advocate General’s recommendations in its final decision. These are the conclusion of the AG:

  • Embedding in a webpage works from other websites (where those works are made freely available to the public with the authorisation of the copyright holder) through clickable links using the framing technique does not require the copyright holder’s authorisation, since he or she is deemed to have given it when the work was initially made available.
  • DDB should not have to implement technical measures to prevent framing by third-parties since,such measures only restrict a manner of displaying the work but not the actual access to the work.
  • Regarding inline linking (when a copyrighted image is published on one site then a second site publishes that image by directly linking to the original source URL), embedding works employing inline linking (normally used to embed graphics and audiovisual files) requires, according to the Advocate General, the authorisation of the rightsholder. Why? Because this constitutes an act of communication to the public, specifically, to a public that was not taken into account by the copyright holder when he/she first made his work available.

So what is the difference between framing and inline linking? According to the AG, with inline linking the user cannot determine where an image came from since there is no visible link to the original publishing site.

This is all for this week!