exhaustion of rights for digital purchases, Switzerland has its own stance on Copyright and the coolest man of Instagram


It’s a new week and we are slowly, but surely, beginning to feel the arrival of the autumn. So let’s enjoy the sunny days and the warmth while we can, and while you are doing that you can have a look at the latest IP news:

Switzerland has a different stance

Starting in 2017, Switzerland has been looking into modifying its Copyright law in a quest to adapt it to the digital age. Whether this was the most appropriate decision or not, Switzerland’s National Council finally passed the amendments which resulted in the following:

  • Private download of illegal content is not criminalized. Meaning, that from the comfort of your house, you can download as many pirated movies, books or videogames as you want, nothing will happen to you.
  • Internet Service Providers cannot be require to block access to pirate sites, unlike what happens in the European Union.

As you can see, the situation in one of our neighbour country is quite different from what we are experiencing here in Europe (see our previous blog post on successful pirate blocking). 

Keeping up with the Kardashians: they might actually go to Court

So this gets a little twisty so bear with us.

On one side, Lee Tillett Inc. a US company, that granted Kroma Makeup EU (an EU company) an exclusive license to resell in Europe “Kroma” branded products.

On the other side, the Kardashians who tried to launch in 2012 their own makeup brand “Khroma” beauty, but had to abort the launch after being hit with lawsuits because of Trademark infringement from the original KROMA beauty (and another Chroma brand, but not relevant for today’ story). Tillett and the Kardashian owned company settled the dispute, but Kroma EU was not part of the action and did not receive its share of the settlement from Tillett.

Kroma EU then began its own battle on US soil. First, before the Courts in Florida, then before the US Court of Appeal for the Eleventh Circuit, who rejected their claims on the basis that, although beneficiary of a license, said license did not afford them with sufficient “power” to file for a Trademark infringement.

Kroma EU had none of it and is now asking the Supreme Court to hear its case based on the fact that, according to them, all the lower courts relied on a restrictive standard when determining if Kroma EU had a standing to file for Trademark Infringement. Apparently, other Circuits have applied the “reasonable interest” test (Kroma EU would have a reasonable interest here in filing for Trademark infringement, since they lost an important share of the European market when the Kardashians launched their Khroma worldwide at the same time they were launching Kroma in Europe) rather than merely analysing the content of the license agreement.

Interesting nevertheless! Let’s see what happens next.

The “coolest man” and Copyright

We don’t even know where to begin… Although this happened in the US, with the rise of the “Influencer” breed, this could have easily happened in Europe and the end result would have been the same. Can you protect the idea of an old rich man, dancing on a boat, surrounded by young women while displaying how much money he has? Short answer, no.

It all started after E*Trade published its commercial “Hard Work” picturing an old men with white hair and white beard, with tattoos, dancing on a boat with young ladies. Vacchi, an apparently very famous 55 year old man (he was named the “coolest man” of Instagram) filled a Copyright claim against E*Trade alleging that not only did they copy his videos registered before the US Copyright Office (remember, we do not have a Copyright registration Office in Europe) but, in addition, they created in the consumers the false impression that he was somehow endorsing E*Trade because of the likeliness of the video’s protagonist.  

The Judge of the District Court for the Southern District of New York rightfully established that:

  • The image of an older man dancing with a younger woman on a boat, as music plays cannot be Copyright protected. Therefore, even if there are similarities, these elements are not protectable. And even if these elements were protectable, Vacchi and the man of E*Trade are nothing alike: they do not have the same tattoos, the same beard shape (Shape? Design? What do you call it?), Vacchi has a “special” way of wearing his shorts (1 side normal, the other high up)  and Vacchi always wears accessories (angle bracelets or wrist cuffs).
  • False endorsement would require Vacchi to establish “substantial similarities”, which he failed to do.

The case was dismissed in its entirety. Rightfully.

Steam and the French Courts

Can you sell a second hand subscription to a platform? According to the Paris Court of First Instance, YES.

When signing up for Steam, users had to give up the possibility to re-sell the licenses acquired in relation to games, contrary to the existing doctrine of “exhaustion of IP rights” in place in Europe, which actually allows you to resell a videogame acquired in a physical format. Although Valve, the business behind Steam’s website, argued that because it is a subscription service, it is exempted from this doctrine, the “Tribunal de Grande Instance” did not agree and considered that Valve is not exempted from the “exhaustion of IP rights”’ doctrine and therefore should allow its members to resell the videogames purchased through its platform.

This is a great victory for the Consumer Association, but we will have to wait for Valve’s appeal and its result to see a change, so stay tuned in!

And with a list of recommended extra readings, that is all for today! See you next week!

Interesting readings:


"News" by Gerard Stolk ( vers la Pâques ) is licensed under CC BY-NC 2.0