EUIPO BoA IP Case Law Conference Report #5 : “Copyright in flux: What does the future have in store?”

Check our reports from Day 1: #1 here, #2 here and #3 here #4 here

Day 2 of IP Case Law Conference, “Decoding Decisions: Insights from Selected Case-Law”, organized by the Boards of Appeal of the European Union Intellectual Property Office (EUIPO) started with 2 Keynote addresses:

Exploring new paradigms of intra-judicial connectivity in IP where Ms Eun-Joo Min (Director, WIPO Judicial Institute) reflected upon cross-border IP disputes and the significance of judicial exchange in “a mosaic of territorial and limited rights” especially in a framework that embody national cases that have economic impacts that go beyond the country 

Shaping Future IP Legislation: A Corporate Wish List where Myrtha Hurtado Rivas (General Counsel Brands, Marketing Properties, Licensing & Anti-counterfeiting at Société des Produits Nestlé) delivered her take on future legislative landscape through a perspectives of the industry underscoring the need of legal certainty for the creation of “strong, fair, and fast frameworks”. 

The 5th Session of the conference was dedicated to copyright with an optimistic — yet realistic — look towards its future, bringing together experts and practitioners to discuss topics related not only to the overlap of copyright, design and trademark protection or copyright registration but also exploring the potential of an EU-wide copyright protection system.

The session was chaired by Julie Samnadda (Member of the Legal Service European Commission) and featured, as speakers, Professor Dr. Eleonora Rosati (Of Counsel at Bird & Bird and Professor of IP Law at Stockholm University), Péter Lábody (Vice President of the Hungarian Intellectual Property Office), Irene Calboli (Professor of Law at Texas A&M University School of Law), and Dr. Anastasiia Kyrylenko (Postdoctoral Researcher at the Universidade Católica Portuguesa and IP Consultant).

The session started with the highly disputed topic of copyright unification with Prof. Rosati highlighting that the journey of EU copyright harmonization is a long one involving a great number of directives, a few regulations, and multiple interventions from the Court of Justice of the European Union.

In discussing the reasons behind the possibility of unification, the emphasis was placed on the essential need to rationalize the framework, as the principle of territoriality no longer feels entirely fit for purpose, and the current fragmentation detrimentally affects the Union’s competitiveness. If the discussion around unification leaves a somewhat bitter taste in some then the blame should be put on these two main factors: the chosen harmonization instrument, namely directives, and the actions taken (or not taken) by member states.

For readers of IPKat, this topic shouldn’t come as a surprise, given the prior buzz surrounding EUIPO’s Executive Director João Negrão’s expressed intention for EUIPO to potentially oversee an EU copyright title if it were to be established. (see Katpost here )

When finally addressing the question, “Should the EU unify copyright laws?” the PermaKat stated loud and clear, and I quote: “The short answer is: yes! It is unavoidable and the direction of travel is definitely that one”

Next, Péter Lábody deep dived into the copyright register, providing a thorough analysis of the existing compulsory, voluntary, and factual/ad hoc registries. Through a comparative lens he showcased the registration trends over the recent years in the examples of US, China and Hungary. Ultimately, he argued that registration serves as an identification tool ensuring legal certainty — a timely point given the rise of Artificial Intelligence and the opt-out mechanism provided in Article 4 (3) of the DSM Directive and the transparency obligation of the AI Act. However, despite available technical measures like different identifiers and blockchain technologies, there are still significant steps to be taken in this direction. 

Shifting the conversation’s center of gravity, Prof. Calboli touched upon the latest chapter of the Italian Vespa Saga (see Katpost on that topic here — for the Italian-speaking IPKat Readers you can access the decision here) discussing the case of overlapping copyright, design, and trademark protection.

After an informative presentation on the history of Vespa’s creation, it became apparent that Vespa, an iconic work of art, can serve as a product identifier, yet its artistic value raises multiple questions concerning its registrability and the possible application of the absolute ground for refusal in Article 4(1)(e)(iii) of the Trade Mark Directive. 

The clash between artistic value and substantive value refers specifically to trademark and copyright cumulation and, according to the Italian Supreme Court, would make the shape mark unregistrable. Surprisingly, for those who read Overlapping Intellectual Property Rights (Edited by Neil Wilkof, Shamnad Basheer, and Irene Calboli), even though Prof. Calboli generally agrees with the decision of the Italian Supreme Court she argued that, if a question is be refereed to CJEU for preliminary ruling, then the discussion will move more towards whether substantial value of the shape derives from that alone or is it rather its reputation that confers such value. (Referring to Opinion of Advocate General (AG) Szpunar in Louboutin, C-163/16, See here)

The session ended with Dr. Anastasiia Kyrylenko, our GuestKat, exploring the case of subsequent overlap between trademark and copyright protection and its implications for the public domain. As this year marked the entry of the very first version of Mickey Mouse into the public domain, several questions arise from the fact that the beloved Disney character enjoys the eternal protection of trademark with multiple figurative marks registered in the EU and beyond.

This issue of “mutant copyright” may raise concerns, but Dr. Kyrylenko believes that the current legal framework is sufficiently equipped to address potential problems. She emphasizes that existing case law, such as the German case involving the Mona Lisa (pertaining to bad faith abuse — though not applicable to Banksy’s situation) and the Vigeland case (related to attempts to register works nearing public domain status for cultural value reasons — See Katpost here), provide effective countermeasures in case of imbalance of the copyright and trademark protection.

At the conclusion of the session, one cannot help but wonder: What might an EU-wide copyright title look like? Will registration – standing the no formalities rule in international law – enhance legal certainty or merely be an administrative matter? Is the overlap of different IP regimes genuinely problematic? And in a world brimming with trademarks, what is the ultimate purpose of the public domain? Katfood for thoughts…

Stay tuned for more from Alicante! Keep an eye out for our own Jocelyn Bosse’s report on Session 6: Crafting the Future—New Perspectives for Geographical Indications.