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Should We Bury the Concept of Reproduction – Towards Principle-Based Assessment in Copyright Law?

Abstract

Since of the very beginning of the modern copyright law era, the exclusive right of reproduction has been an integral part of copyright law. However, among the fundamental concepts of copyright, it is perhaps the least suitable for the digital environment due to its technical-functional nature. Flexible, principle-oriented regulation enabling context-sensitive outcomes and balancing of interests is needed in European copyright law. In this respect, often suggested solutions such as a fair use exception or the implied licence doctrine might not create enough adaptability; whereas, a better solution would be to reform the fundamental structures of copyright law. Even though achieving any radical changes to international conventions might not be realistic, this article attempts to find an alternative approach to the concept of reproduction. Structural rather than substantive elements as substitutes for reproduction could be derived from the context of modern trademark law. Such an approach would be consistent with the existing weak signals on convergence between the branches of industrial property law and copyright. As a structural adoption, a formulation stressing the legitimate interests behind the protection and consequences of utilisation of the protected object for these interests could be used in copyright law. One possibility would be a flexible instrument by which it would be evaluated whether the utilisation of copyrighted work affects, or is liable to affect, the legitimate interests of the right holder or alternatively if the utilisation follows honest practice in the particular sector of the creative industry.

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Notes

  1. 1.

    Borghi and Karapapa observe that the development of digitalisation is also reflected in general language: instead of the formerly used expression “copies of copyrighted work” the expression “copyrighted content” is more common today. Borghi and Karapapa (2013), p. 140.

  2. 2.

    Naturally, the possibilities of addressing the problems of the digital era include an assessment of whether copyright should be taken more in the direction of the right to adequate remuneration. For instance, according to Ginsburg, US courts are not often inclined to give right holders a possibility to prohibit new ways of exploiting works, whereas if right holders instead seek to be compensated for such new ways of utilisation, the courts and Congress are more open to such compensation. Ginsburg (2001), pp. 1613–1647. Although the right to adequate remuneration approach is one feasible way of solving problems, this article does not discuss these possibilities.

  3. 3.

    For a general discussion on restrictions and limitations, see, for instance, Geiger and Schönherr (2014a). Synodinou, for instance, states that in spite of the acute need to create new exceptions and limitations, exceptions and limitations are imprisoned in analogue word concepts. Synodinou (2014), p. 82. In the proposed “European Copyright Code” drafted by several academics, more flexible limitations are also proposed. See www.copyrightcode.eu. In addition, see literature on the possibility of adopting fair use restriction in infra note 44. Database protection has also been criticised for having too few exceptions. See, for instance, Derclaye (2013), p. 342.

  4. 4.

    According to Efroni, reproduction should not serve as one of the most fundamental notions of exclusivity in copyright as it should belong to the foregone chapters in the evolution of copyright law. Efroni (2011), pp. 247–248.

  5. 5.

    Dusollier states that the issues of public domain and exceptions and limitations have gained a central role in copyright discussion in recent years. Dusollier (2015), pp. 106–108.

  6. 6.

    On the risks affiliated with producing books for sale, see Gadd (2016), pp. 82–83.

  7. 7.

    However, it is unclear whether the ultimate purpose of the Statute of Anne was to benefit authors, booksellers or the public in general. See more, Lauriat (2016), pp. 22–24.

  8. 8.

    The area of exclusivity of the Statute of Anne covered printing, re-printing and importing of books. It is noteworthy that there was an expansion in types of works protected by copyright: while the Statute of Anne conferred only a narrowly defined right to print books, for instance, the UK Imperial Copyright Act from 1911 also covered music, films, architecture, artistic works, etc. Alexander (2016), pp. 175–177.

  9. 9.

    On this development in general, see, for instance, Koutras (2016), pp. 138–147; Makeen (2000), pp. 1–10.

  10. 10.

    For instance, Shapiro states that Member States’ copyright legislation must take into consideration all the extensively formulated aspects of reproduction set in Art. 2. In addition, Member States must interpret the national provisions in accordance with EU law in a case of any ambiguity between them. Shapiro (2011), p. 31.

  11. 11.

    See, for instance, the UK Copyright, Designs and Patents Act 1988, 16.3(a).

  12. 12.

    Similarly Schloetter (2012), p. 118. Xalabarder argues that it was surprising that the CJEU chose to assess the case on basis of originality rather than utilising a traditional test of substantiality including de minimis-type of assessment. Xalabarder (2012), p. 127.

  13. 13.

    The second and third part of the test may also have a restrictive impact on exceptions and limitations, since they were written from the perspective of right holders. However, they could instead be interpreted as representing tools that can be used for weighing and balancing interests. About the test, see, for instance, Synodinou (2010), pp. 840–842; Geiger (2008), pp. 194–195; and Ficsor (2016), pp. 273–274. However, the interpretation of the three-step test is an issue that depends on Member States’ practice. For instance, during the negotiations that led to the TRIPS Agreement, the US stated that the fair use doctrine and the three-step test share the same goals and are congruent. Halpern and Johnson (2014), p. 156–157.

  14. 14.

    In property rights theory, the concept of property usually refers to normatively created dematerialised property, where copyright is seen as an intangible object of property or as a good that is created in the human mind. In a more proprietarian common law approach, unfair competition assessment is emphasised whereas the civil law approach (author’s rights) could be described as less proprietarian as its basis lies in the protection of the personality of the author. The justification of copyright has often been traced to John Locke’s labour and natural law-based justification of property rights, according to which everybody should be a proprietor of the products of his labour. This theory has been criticised for being an insufficient basis for either tangible or intellectual property. See Rahmatian (2011), pp. 1–67 and 274–275; Ramalho (2016), pp. 3–6; and Koutras (2016), pp. 149–150. A right to exclude is an essential element of a property right. See, for instance, Dusollier (2015), p. 101 and the references therein.

  15. 15.

    In academic copyright discussion, a continuous concern has been expressed on the issue that the current copyright system restricts freedom of speech and free dissemination of information. This issue has significant cultural influences, since it has a negative impact on creative work. See, for instance, Ghidini (2006), pp. 72–73; Hilty (2007), p. 135; Geiger (2008), pp. 178–184; and Correa (2002), p. 585. About using property rhetoric in order to support the expansion of the copyright in EU copyright law, see Sganga (2015), pp. 4–9. Jütte states, on the basis of the cases Ashby Donald v. France (36769/08) of the European Court of Human Rights and Deckmyn v. Vandersteen C-201/13 of the CJEU that both of the courts create a wide margin for Member States when balancing copyright and freedom of expression. Jütte (2016), pp. 21–22.

  16. 16.

    The utilitarian justification, with Jeremy Bentham and John Stuart Mill as its original developers, sees the promotion of social welfare as the main goal of copyright. See, for instance, Guibault (2002), pp. 10–11; Fisher (2011); Ghidini (2006), p. 52; and Ramalho (2016), pp. 4–6. However, copyright might produce a larger incentive than necessary, which would be harmful for competition. See, e.g. Patry (2009), p. 64.

  17. 17.

    For more on 3D printing technology from the piracy point of view, see Silverman (2016), pp. 5–7.

  18. 18.

    Google Books is a private project aiming at scanning and making searchable the collections of books from libraries. See http://books.google.com. Europeana is a project developed by the European Commission in which material is collected from libraries, archives and museums. The objective is, among other things, to make Europe’s cultural and scientific heritage available through the Europeana.eu portal.

  19. 19.

    Activities in these projects are not covered by any of the restrictions or limitations provided by European Copyright Law. However, the fair use defence under US Copyright law might be applied. See Borghi and Karapapa (2013), pp. 8–9.

  20. 20.

    Contractual issues between the authors and publishers on the utilisation of works in these services is also a relevant question, especially from a perspective of adequate remuneration. On this problematic, see, for instance, Hilty and Peukert (2004), pp. 402–450.

  21. 21.

    For instance, Saito (2016), pp. 710–716; Makeen (2000), pp. 289–294. As Saito states, communication to the public as defined in the WIPO Copyright Treaty may mean that many actions in the Internet could constitute both an act of reproduction and act of communication to the public, but this is not always the case.

  22. 22.

    The CJEU has concluded that the work must be directed at a new public, that is to say, at a public that was not taken into account by the copyright holders when they authorised the initial communication to the public (for instance, Svensson, Sjögren, Sahlman, Gadd v. Retriever Sverige AB, C-466/12; Sociedad General de Autores y Editores de España (SGAE) v. Rafael Hoteles SA, C-306/05 and Organismos Sillogikis Diakhirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon v. Divani Acropolis Hotel and Tourism AE, C-136/09).

  23. 23.

    Landes and Posner (1989), p. 326. The theory of Landes and Posner is based on the assumption that the costs of producing a copyrighted work consist of two separate kind of costs: (1) the costs of creating the work, which do not vary with the numbers of copies produced, and (2) the costs of producing a work, which depend on the number of copies produced. In order to create an incentive for creating works, the difference between the expected revenues and the costs of producing a work exceeds or is equal to the costs of expression. Landes and Posner (1989), pp. 326–328. In another analysis, it has been stressed that since unlimited copying reduces social welfare, restrictions adopted on private copying enhance social welfare. See Johnson (1985), p. 211.

  24. 24.

    On various Internet platforms and their relationship to freedom of speech, see Jütte (2016), pp. 11–22; and Murray (2010), pp. 110–124. On search engines and their relationship to the user’s right to receive information, see Herrero Prieto (2014) pp. 218–219. On the freedom of speech argument in the context of news aggregation services, see Stanganelli (2012), 748–750.

  25. 25.

    When evaluating reading and aggregation services it should also be assessed to what extent these services are genuine tools of searching and processing information or are they instead more like content production services using others’ copyrighted works in that activity. Without some of these services, information is virtually impossible to find, while some of them only make control of the material easier. The boundaries between these types of services are far from clear and both of them have a positive impact on freedom of speech interests. However, the strength of the freedom of speech argument is different in these situations.

  26. 26.

    For instance, it has been stated in the TRIPS Agreement that the protection of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology (Art. 7).

  27. 27.

    See, for instance, Ohly (2009), pp. 216–217.

  28. 28.

    Van Eechoud et al. argue that it would be better if, rather than technical issues, it would be possible to consider the legitimate interests of both users and right holders and the purpose of copying when evaluating whether the issue deals with the reproduction of works as specified in the InfoSoc Directive. Van Eechoud et al. (2009), pp. 127–128.

  29. 29.

    Copyright is not in fact technologically neutral. This is proven by the fact that the discussion often shifts to technological details, ignoring core questions. See Rognstad (2009), pp. 531–532. Sydoninou also argues that the area of copyright law is not technologically neutral since copyright is strongly connected to the development of technology. Synodinou (2012), pp. 618–627.

  30. 30.

    The crisis caused by digitalisation has so far only related to the type of works than can be digitised. As 3D printing technology becomes more common, the same kind of loss of control may occur with other types of works as well as with industrial designs, patents and trademark rights, as has happened with music and cinematic works in the Internet era. The reason is that making and modifying three-dimensional objects will likewise become simplified. With regard to copyright, this development could be significant, especially regarding the products of the art industry or even architecture.

  31. 31.

    See, for instance, Stamatoudi and Torremans (2014), p. 402.

  32. 32.

    For instance, in the literature, Sedlmeier has deemed inline linking an act of reproduction. Sedlmeier (2003), p. 57. Similarly, Smith et al. (2007), pp. 63–64. According to Ott, setting an embedded link is an act of reproduction. Ott (2004), pp. 379–380.

  33. 33.

    Applying the implied license doctrine means that certain actions are permitted even when the right holder has not given explicit consent since granting of implicit consent is assumed. A starting point is that a right holder, when placing freely available copyrighted material on the Internet, at the same time tacitly agrees to the links on the page. The justification, in particular, is that the Internet itself is based on linking both from a technical and a financial viewpoint. On implied licenses, see, for instance, Stokes (2009), p. 128. Fischman Afori has suggested that the implied license doctrine could be a general rule functioning alongside the fair use doctrine and thus permitting various beneficial activities in Internet. Fischman Afori (2009), p. 324–325. However, there is a risk that if the application of the implied license doctrine goes too far, this could lead to a situation in which exploiting copyrighted material becomes principally permitted while the traditional demand on gaining explicit permission from the right holder would instead serve as the exception. See, similarly, Klein (2008), p. 480. As an alternative to searching for solutions from contract law, it has been suggested that the use of thumbnail images, for instance, should be covered by a new copyright restriction. See Geiger and Schönherr (2014b), p. 458–459 and references therein. Strowel has suggested the de minimis principle, according to which no infringement takes place if only a small portion of the work is copied. Strowel (2014), p. 1147.

  34. 34.

    Ohly states that it can be assumed that an implied license exists for linking thumbnail images. Ohly (2009), pp. 218–219. In the case of the German Federal Supreme Court, 29 April 2010 (Vorschaubilder I) the plaintiff was an artist demanding that the search engine provider be prohibited from using images of artistic works as thumbnails on the search results page. The Court dismissed the claim, stating that the plaintiff had technical measures available which could have been used to prevent linking. As the plaintiff had not used these possibilities, the search engine service provider had the right to assume that the plaintiff did not object to linking. In its judgment of 19 October 2011, I ZR 140/10 (Vorschaubilder II), the court extended the construction to cases in which the photographs had been uploaded to the Internet by a third party with the author’s permission.

  35. 35.

    In addition, they are not covered by any exception or limitation in the InfoSoc directive. See also Strowel (2014), p. 1147.

  36. 36.

    On this discussion, see, for instance, Rosati (2016), p. 569; Stanganelli (2012), pp. 746–747; and Mukaddam (2013), pp. 3–5. The newspaper industry has encountered financial difficulties due to digitalisation and the change of business models. National legislative initiatives have attempted to tackle these difficulties, and the Commission has recently proposed a neighbouring right for press publishers, including the right for the digital use of their press publications. (Proposal for a Directive of the European Parliament and the Council on copyright in the Digital Single Market COM(2016) 593 final, Art. 11).

  37. 37.

    See more, for instance, Pihlajarinne (2012), pp. 700–710; Klein (2008), pp. 451–483.

  38. 38.

    For more about the case, see, for instance, Arezzo (2014), pp. 524–555.

  39. 39.

    However, the ALAI Report and Opinion on a Berne-compatible reconciliation of hyperlinking and the communication to the public right on the Internet is based on distinct legal status given, in context of communication to public, for cases of hyperlinking, and, on the other hand, for cases of deeplinking and framing. See http://www.alai.org/en/assets/files/resolutions/201503-hyperlinking-report-and-opinion-2.pdf.

  40. 40.

    Jütte also pays attention to the fact that the CJEU did not address the freedom of expression dimension in the Svensson case; nevertheless, freedom of expression is a crucial part of the case. Jütte (2016), p. 18. A similar kind of interest-free, mechanical approach can also be seen in the ruling ITV Broadcasting Ltd et al. v. TVCatchup Ltd, C-607/11, where the CJEU stated that when communication to the public is to be considered, the profit-making nature of the assessed acts or competitive relationships between the parties are irrelevant.

  41. 41.

    In the Paperboy case the court concluded that setting deep links for news articles by the aggregator service was not a copyright infringement. The court stated inter alia that since the plaintiff had placed the material on the site without using technical measures, linking was permitted. On Vorschaubilder I and II, see footnote 34.

  42. 42.

    Similarly, Geiger and Schönherr (2014b), pp. 458–459. However, in general, the need for EU harmonisation of copyright contracts has been discussed. See, for instance, Strowel (2014), pp. 1137–1138.

  43. 43.

    The problem here is that restrictive provisions are narrowly formulated, and, in addition, they are interpreted narrowly. For instance, in the case Infopaq International A/S v. Danske Dagblades Forening, C-5/08, the CJEU concluded that copyright restrictions must be interpreted strictly, since they are derogations from the general principle established by the InfoSoc Directive according to which authorisation from the right holder is required for any reproduction of a protected work.

  44. 44.

    See the argumentation in favour of fair use restrictions, e.g. Geiger and Schönherr (2014a), pp. 128–130; Patry (2011), pp. 223–229. In determining whether the use is fair, four non-exclusive factors need to be considered: (1) the purpose and character of use, including whether such use is of a commercial nature or is for non-profit 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 of the copyrighted work. For more on the test, see Halpern and Johnson (2014), pp. 87–95; and from the perspective of giving a work a new purpose or meaning due to the use of new technology, see Borghi and Karapapa (2013), pp. 21–34. Nimmer criticises US court practice where courts have a tendency to first make a decision whether use is fair or unfair, and after that to formulate their reasoning in a way that the facts in some way fit the four elements included in the fair use tests. Nimmer (2008), p. 378.

  45. 45.

    On this kind of risk associated with the renewal of copyright in general, see Geiger (2008), p. 185.

  46. 46.

    Usually legal principles are seen as elements which have fundamental connections to moral aspects and general societal aims. It is typical that principles can be applied “more or less” not “either/or” as is the case when rules are discussed. Acts of weighing and balancing are distinctive for the application of principles where the values that the principle represents, and other values and aims, are assessed. See Dworkin (1977), Secs. 22–31.

  47. 47.

    For instance, the Agreement on a Unified Patent Court (Arts. 25–26) includes a detailed list of actions meaning direct or indirect use of an invention and patent infringement (for instance, making, offering, placing on the market or using a product which is the subject matter of the patent). Also, according to the Directive on the legal protection on designs (Art. 12), the registration of a design shall confer on its proprietor the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. However, Dusollier states that intellectual property rights are not in fact as distinct as they would seem to be at first sight, because they are all covered by a broader concept of exploitation. She suggests adopting the single concept of exploitation into copyright in order to simplify the definition of exclusive rights. Dusollier (2013), p. 46–48.

  48. 48.

    Also Maniatis states that trademark doctrines have developed in the digital era without losing their connections to existing principles and concepts. Maniatis (2005), p. 267.

  49. 49.

    The principle of distinctive character is tightly linked to the ultimate aim of trademark protection, namely to reduce search costs. A trademark offers information by making the choice between different goods and services faster and easier for consumers. Therefore, a trademark makes it possible for a consumer to choose a product or service based on its quality. See, for instance, Economides (1998), p. 602; Ghidini (2006), p. 80; and Holzhauer (1998), p. 417. The requirement of distinctive character is mentioned, for instance, in Art. 4(1)(b), according to which trademarks devoid of any distinctive character shall not be registered and if registered, shall be liable to be declared invalid.

  50. 50.

    Trademark confusion refers to a situation where use of a mark causes consumer confusion regarding the commercial source of the origin of goods and services. Prohibiting deception as to the origin of goods and services has been a key element throughout the history of trademark law. On this history, see, for instance, Bently (2008), pp. 3–41. Usually confusing similarity under the Trademark Directive 2015/2436 Art. 10.2(b) is based on an overall assessment where each factor is taken into account. See the CJEU cases SABEL BV v. Puma AG Rudolf Dassler Sport, C-251/95; Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV, C-342/97; Marca Mode CV v. Adidas AG, Adidas Benelux BV, C-425/98; Gateway Inc. v. OHIM and Fujitsu Siemens Computers GmbH, C-57/08.

  51. 51.

    The extended protection for trademarks having reputation in Art. 10.2(c) of Trademark Directive 2015/2436 is a notion of the more extensive principle of the protection of a trademark’s independent goodwill, that is to say, the protection conferred independently on the confusion between marks. The CJEU has also explicitly concluded that use which is detrimental to the investment function of a trademark can constitute an infringement under Art. 5.1(a) article of Trademark Directive 89/104 (a corresponding rule is found in Art. 10.2(a) of Directive 2015/2436). See, for instance, the cases L’Oréal SA, Lancome parfums et beauté & Cie SNC and Laboratoire Garnier & Cie v. Bellure NV, Malaika Investments Ltd and Starion International Ltd, C-487/07; Interflora Inc. and Interflora British Unit v. Marks & Spencer et al., C-323/09. The CJEU’s way to construct this essential limit of exclusive rights is, in fact, an enlargement in comparison with a traditional viewpoint, where the trademark proprietor is conferred an exclusive right only to use it as an indicator of source or badge of origin. The CJEU’s view is a reflection of a development in which the increasing importance of the independent goodwill of the trademark has been recognised. One of the earliest benchmarks of this development was a classic article by Frank I. Schechter “The Rational Basis of Trademark Protection” (originally published in 1927). Schechter did not consider a trademark only as a symbol of goodwill, but as an efficient tool for creating goodwill. He recommended recognition of the protection of the preservation of the uniqueness of a trademark. Schechter (1970), pp. 337–345.

  52. 52.

    The ECJ has stated in the case Adidas-Salomon AG, Adidas Benelux BV v. Fitnessworld Trading Ltd., C-408/01 that conferring protection for such trademarks does not require finding a likelihood of confusion between the marks. It is instead sufficient that there is such a degree of similarity between the marks that the relevant sector of the public establishes a link between the sign and the mark.

  53. 53.

    Initial interest confusion is a doctrine based on the assessment of confusion according to which confusion exists even when an average consumer is misled as to the origin of the goods or services when s/he is choosing them, but the confusion is revealed before the purchase. Therefore, a similar sign is used in order to raise the consumer’s interest. Assessment of confusion is therefore solely based on the comparison of a domain name and a trademark. In addition, the distinctiveness of a protected sign and the degree of a sign’s reputation as well as the annexation of a domain name related to the actions of, for instance, a trademark proprietor, may have relevance in the assessment. On the application of the initial interest confusion doctrine in a domain name dispute resolution in general, see, for instance, Pihlajarinne (2010), p. 426–429. On the mentioned doctrine, specifically in the Uniform Domain Name Dispute Resolution Policy procedure, see Kur (2001), pp. 23–24. Kipping states that in the alternative dispute resolution mechanism for “.eu” domain name disputes, assessment is strongly emphasised in comparison between the signs as such. Therefore, the issue of whether domain name use creates actual confusion of origin is not relevant. Kipping (2008), pp. 31–32.

  54. 54.

    The CJEU has issued two preliminary rulings on trademark use in keyword advertisements. The court has focused on the requirements of which respective use might adversely affect the trademark’s origin function or investment function (Trademark Directive 89/104 Art. 5.1(a)) and the requirements for well-known trademarks (Trademark Directive 89/104 Art. 5.2) in its ruling Interflora Inc. and Interflora British Unit v. Marks & Spencer et al. C-323/09. Furthermore, in the case Google France SARL et al. v. Louis Vuitton Malletier SA et al. C-236/08, the court offered more detailed guidance on what kind of use might be considered to have an adverse effect on the origin function or the investment function under Art. 5.1a of the Trademark Directive.

  55. 55.

    Naturally, the level of radical changes needed is a relative issue dependent on the perspective taken by each author. Thus, one could stress the more fundamental nature of trademark law implications. For instance, Friedmann seems to consider the change in balance between trademark proprietors and third-party users of the mark as fundamental. As a solution, he proposes, among other things, the protection of the moral rights of the integrity of the trademark logo and the abolishment of safe harbour provisions. Friedmann (2015), pp. 2–3.

  56. 56.

    The CJEU has stated in its decisions that especially such use that is detrimental to the origin function falls under the protection of the mentioned provision. Also, use that is detrimental to the investment function of a trademark can constitute an infringement according to cases L’Oréal SA, Lancome parfums et beauté & Cie SNC and Laboratoire Garnier & Cie v. Bellure NV, Malaika Investments Ltd and Starion International Ltd, C-487/07; Interflora Inc. and Interflora British Unit v. Marks & Spencer et al. C-323/09.

  57. 57.

    The CJEU has viewed that the prerequisite on honest practices in industrial or commercial matters expresses an obligation to act fairly in relation to the legitimate interests of the trademark proprietor. See the CJEU’s preliminary rulings The Gillette Company and Gillette Group Finland Oy v. LA-Laboratories Ltd. Oy, C-228/03; Bayerische Motorenwerke AG and BMW Nederland BV v. Ronald Karel Deenik, C-63/97; Gerolsteiner Brunnen GmbH & Co. v. Putsch GmbH, C-100/02; Anheuser Busch v. Budéjovicky Budvar, C-245/02; Céline SARL v. Céline SA, C-17/06. This means, for instance, evaluating if the other business actor competes unfairly with respect to the trademark proprietor (the CJEU’s preliminary ruling Gerolsteiner Brunnen GmbH & Co. v. Putsch GmbH, C-100/02). The fact that the trademark proprietor’s interests must be legitimate means that the interests cannot be such that they only take the trademark proprietor’s own interests into consideration. Also, the best interests of other traders, consumers and the public must be taken into account. Indeed, legitimate interests must be acceptable especially from the point of view of functional competition. It can be considered that the legitimate interests of the trademark holder would also mainly have to do with fulfilling the incentive of effectively reducing search costs. From this point of view, using the trademark in a way that does not harm the information link between the trademark proprietor and the consumer is justified from the point of view of the trademark proprietor’s legitimate interests. Roughton (2005), pp. 186–187.

  58. 58.

    However, this development might be somewhat worrying from a different perspective. Focusing on the consequences of trademark use can shift the attention too much towards the position of the trademark proprietor.

  59. 59.

    According to Spinello and Bottis, the intellectual property system has focused too extensively on the utilitarian rationale, and there is a greater need to emphasise non-economic arguments. See Spinello and Bottis (2009), pp. 177–178. For critical analysis on natural rights theories, see Bryer (1970), pp. 284–291.

  60. 60.

    On the general development of intellectual property protection for computer programs, see, for instance, Mylly (2013), pp. 2–5.

  61. 61.

    The same type of development may be expressed by the observation that the differences between the goals of certain related rights and copyrights are narrower, especially in a digital environment. Gyertyánfy (2002), p. 559.

  62. 62.

    De Cock Buning, for instance, observes that copyright law has moved in the direction of industrial property law. She stresses the strong convergence between patent law and copyright law due to the development of information technology. As an example, she mentions stretching the definition of reproduction so that copyright law would also cover all forms of utilisation. De Cock Buning (2010), pp. 64–67. The CJEU’s case Dimensione Direct Sales Srl v. Knoll International SpA, C-516/13, also serves as an example of adopting features similar to industrial property rights to the interpretation of the scope of copyright protection. In this case, the CJEU concluded that a right to distribute a protected work includes the right to prevent an offer for sale or a targeted advertisement of the original or a copy of that work, even though that the advertisement would not have given rise to the purchase of the protected work if the advertisement had invited consumers of the Member State in which that work is protected to purchase it. It is noteworthy that an advertisement is not an act traditionally included in the core of copyright but is instead a basic element of industrial rights.

  63. 63.

    There are few similarities between these factors and the fair use test under US copyright law since according to the fair use test, the purpose and character of use is considered, including whether the use is of a commercial nature or is for non-profit educational purposes. The effect of the use upon the potential market for, or value of, the copyrighted work is also to be taken into account. For more on the fair use test, see supra note 44.

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Pihlajarinne, T. Should We Bury the Concept of Reproduction – Towards Principle-Based Assessment in Copyright Law?. IIC 48, 953–976 (2017). https://doi.org/10.1007/s40319-017-0654-2

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Keywords

  • Copyright
  • Reproduction
  • Fair use
  • Implied licence
  • Legitimate interests
  • Honest practice