1. Seminar IP and Creative SMEs WIPO, May 26, 2010 IP reforms: a need for horizontal fair use? Prof. Dr. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

2. Contents conceptual contours rationale case study 1: Fiorello Klein case study 2: Joran Spauwen fair use and trademarks conclusion

3. Conceptual contours

4. US fair use doctrine (Sec. 107 Copyright Act) purposes: ‘...such as criticism, comment, news reporting, teaching […], scholarship, or research...’ factors: ‘(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3)the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4)the effect of the use upon the potential market for or value of the copyrighted work.’

5. Copyright’s legal traditions Anglo-America (US) fair use doctrine open factors case-by-case approach (judge) flexibility quick reactions to new developments Continental Europe statutory limitations fixed requirements closed catalogue of limitations (legislator) legal certainty slow reactions to new developments

6. International copyright law: specific limitations (civil law model) quotations, press summaries (art. 10(1) BC) articles on current topics, reporting of current events (art. 10bis(1) and (2) BC) lectures, addresses, works of the same nature delivered in public (art. 2bis(2) BC) illustrations for teaching (art. 10(2) BC) ephemeral recordings (art. 11bis(3) BC)

7. ‘It shall be a matter for legislation in the countries of the Union to permit the reproduction of [literary and artistic] works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.’ (art. 9(2) BC) =three-step test International copyright law: open-ended limitations (common law model)

8. Article 9(2) BC Article 13 TRIPS Article 10 WCT The three-step test family in international copyright law

9. ‘Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.’ =three-step test becomes general yardstick for the permissibility of national limitations Art. 13 TRIPS

10. Article 13 TRIPS Article 17 TRIPS Article 30 TRIPS The three-step test family in the TRIPS Agreement Article 26(2) TRIPS

11. ‘Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.’ Art. 30 TRIPS: patents

12. ‘Members may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.’ Art. 26(2) TRIPS: industrial designs

13. ‘Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.’ Art. 17 TRIPS: trademarks

14. Rationale

15. freedom of competition specific, narrow IP rights: fair use unnecessary Balance between rights and limitations freedom of expression

16. freedom of competition broad, general IP rights: fair use advisable Balance between rights and limitations freedom of expression

17. Overprotection copyright law –flexible originality test –protection of technological measures patent law –new technologies (software, biotechnology) trademark law –new types of marks –expansion of protection (well-known marks)

18. Protection overlaps software –copyright and patent protection cartoon characters –copyright and trademark protection product design –copyright, industrial designs and trademark protection

19. Case study 1: Fiorello Klein

20. Case study 2: Joran Spauwen

21. Fair use and trademarks

22. Trademark protection subsystems identification distinctive character protection against confusion rights of a defensive nature communication reputation/repute/ goodwill protection of well- known marks de facto exploitation rights exclusive link with a sign creation of a brand image advertising quality control

23. ‘…the proprietor shall be entitled to prevent all third parties […] from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar […], where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.’ (Art. 5(2) EC Trademark Directive) Brand protection: EC trademark law

24. ornamental trademark use taking advantage of the distinctive character of the Milka mark with due cause as it is justified by the constitutional guarantee of freedom of arts ‘It is calm above the tree tops/ somewhere a cow is bellowing/ Moo!’ (Rainer Maria Milka) BGH, 3 February 2005, Lila Postkarte

25. ‘The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;…’ (Art. 5(1)(a) Trademark Directive) =no due cause defence Brand protection: EC trademark law

26. ‘The Court has already held that [...] the exercise of Article 5(1)(a) of Directive 89/104 must be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark [...]. These functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the good or services in question, and those of communication, investment or advertising.’ (para. 58) ECJ, June 18, 2009 (L’Oréal/Bellure)

27. Cartoon characters

28. Conclusion

29. A horizontal issue? technology commerce culture patent law trademark law copyright law

30. No need for new international standards flexible three-step test –in almost all branches of IP –may serve as a basis of horizontal fair use legislation fresh approach to interpretation –three-step test not primarily regarded as a means of restricting limitations –but as a provision enabling limitations and offering breathing space

31. The end. Thank you! For further reading, see http://ssrn.com/abstract=1597123. contact: m.senftleben@rechten.vu.nl