BGH: hyperlinks, freedom of expression and copyright infringing software

Already decided on 14 October 2010, even though only published in its entirety now, has been a decision (case reference: I ZR 191/08; 'AnyDVD') by the German Federal Supreme Court (Bundesgerichtshof) concerning a lawsuit brought by several music companies against Heise Verlag, an online publisher specializing in IT and computer news. The claimaint's took objection to reports published on Heise’s website which included links to a third party website (SlySoft) that offered software that allowed circumventing copy protection for DVDs.

While the lower courts, the Regional and Higher Courts of Munich I, had held that Heise's online reports were itself copyright infringing, the First Civil Senate of the Bundesgerichtshof took the view that adding the links on Heise's website which linked to SlySoft's website (where SlySoft offered copyright right infringing software) was covered by the constitutional right of freedom of press and freedom of opinion under Article 5(1) German Constitution (Grundgesetz). Further, in cases where the actual text of a report was protected by freedom of expression and freedom of press, the included links would also be afforded equal protection. The judges stressed that the purpose of the links on Heise's website was not only to technically facilitate to access the SlySoft's website but the links were to be regarded as part of Heise's reporting because they were complementing and 'backing up' what was reported with additional information. The fact that the Heise was aware that the software offered on SlySoft's website was copyright infringing did not change this and so could not be blamed on Heise since the information interest of the general public was of higher importance.

The judges also argued that reports on illegal conduct (here: that SlySoft offering copyright infringing software) could be of particular public information interest. It was also important that Heise had clearly indicated in its report that SlySoft's software was copyright infringing. In this context the Bundesgerichtshof explained that protection of Article 5(1) Grundgesetz encompassed freedom of expression and freedom of media in all its aspects and was thus not limited to the content of the report, but it also included the (outer) form of this reporting. As such, it was up to Heise itself, as the subject entitled to the fundamental right under Article 5(1) Grundgesetz, to decide which form of presentation it chose for its reporting. This also encompassed the decision whether additional information about a company and its products (here: SlySoft) should be expressly used in the report and it could include the decision to publish links to SlySoft's website.

The court, inter alia, based its decision on Article 95 a German Copyright Act which is based on Article 6 of the Copyright Directive (Directive 2001/29/EC) (“Obligations as to technological measures”). Intriguingly, the Bundesgerichtshof interpreted Article 95 a German Copyright Act not only in the light of Article 5(1) Grundgesetz but also in light of Article 11 (1) of the Charter of Fundamental Rights of the European Union which stipulates as follows “(e)veryone has the right to freedom of expression. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers.” Article 11 (2) provides that “(t)he freedom and pluralism of the media shall be respected.” Referring to the ECJ's precedent in Connolly/Commission (C-274/99 P), the Bundesgerichtshof also stressed that content and quality of a report are irrelevant when it comes to the application of Article 11 of the Charter of Fundamental Rights of the European Union.

This interesting decision can be retrieved from the Bundesgerichtshof's website here (in German).

The BGH, the "circulation" of images and a "psychogram of a murderer"

In a decision of 7 December 2010, the German Bundesgerichtshof has decided that an image archive agency which provides images from its archives to an (external) press outlet has no duty to examine the lawfulness of a final press report which uses these images as illustration, (case references: VI ZR 30/09 and VI ZR 34/09 of 7 December 2010)

What had happened? The Bundesgerichtshof's press release of 7 December 2010 tells us as follows (summary and strictly unofficial translation by the IPKat).

The defendant in the proceedings operated a commercial image archive which press and media outlets used for sourcing images. The claimant, who had been convicted for several killings and murders, has been serving a life imprisonment sentence since 1983. German media had extensively reported about the claimant's crimes in the 1950s, 1960s and early 1980s. Upon a request by German Playboy magazine, the defendant provided the magazine with one image depicting the claimant in the 1950s and two images showing the claimant in the 1960s. Playboy magazine then used the images to illustrate a feature article about the claimant under a title which roughly translates into "The file ….psychogram of one of the murderers of the century" ("Die Akte … Psychogramm eines Jahrhundertmörders").

The claimant objected to this, stating that the defendant had circulated the images without his prior consent and as such had infringed his "right to his own image" under § 22 of the German Act on the Protection of the Copyright in Works of Art and Photographs (Kunsturhebergesetz, KUG). The claimants were of the view that their actions were protected by the human of right of freedom of the press under Article 5(1)(2) German constitution.

By way of background: The so-called ‘‘right to one’s own image’’ (Recht am eigenen Bild) under § 22 KUG is a special manifestation of the general personality right, as protected by the German constitution in its Articles 1(1) and 2(1). Under § 22 KUG, an ‘‘image’’, which includes any kind of presentation that reproduces the appearance of a person, so as to be identifiable by third parties, may only be circulated in public with the consent of the person depicted. §§ 22 and 23 KUG contain detailed provisions concerning the protection of an individual’s image.

The claimant's law suits aimed at preventing the circulation of the images. The court of first instance, the Regional Court of Frankfurt, decided in favour of the defendants (case references: LG Frankfurt am Main, 2/3 O 129/07 and 2/3 O 90/07 of 17 April 2008. On appeal, the Higher Regional Court of Frankfurt, found - partly - in favour of the claimant (case references: OLG Frankfurt am Main, 11 U 22/08 and 11 U 21/08 of 23 December 2008).

Upon further appeal, the VI Civil Senate of the Bundesgerichtshof, which is, inter alia, responsible for personality right cases, has now dismissed the claims. In its decision of 7 December 2010, the Bundesgerichtshof reiterated that the exchange/provision of lawfully archived images is protected by (the human of right of) freedom of the press as protected under Article 5(1)(2) of the German constitution. Further, in accordance with established precedents, freedom of the press not only protects the distribution of news and opinions but also protects the process of preparing the process of publication, which in particular includes the gathering of information. The court took the view that this legal background had to be taken into consideration when interpreting the terms "circulating of images" as set out in § 22 KUG. A quasi "press-internal" passing on of images by an image archive could hence not be made dependant on the owner of the image archive having to assess whether or not the press publication using of the images was lawful. It was entirely the responsibility of the actual press publisher to examine whether the use of the images was in accordance with §§ 22, 23 KUG. The depicted individual, here the claimant, did not suffer any "tangible disadvantage". The quasi "press internal" passing on of images at most affected his personality rights in a negligible way.

Merpel, who is familiar with the KUG, notes that the court of appeal, the Higher Regional Court of Frankfurt, had interpreted § 22 KUG more broadly than the Bundesgerichtshof. The Higher Regional Court had held that the defendants had a duty (akin a duty of care) by which they had to examine the lawfulness of the final publication using the images, even in cases where this was "difficult" or "unusual" . While there are good arguments to support the Frankfurt court's stricter view, this Kat feels inclined to agree with the Bundesgerichtshof's approach, which appears is little closer to reality when it interprets "circulation" as an external process, with the crucial moment being once actual publication has taken place rather than the moment when an image is sourced from an archive and passed on to another press outlet. So while this decision strengthens the scope of freedom of press it also appears to confirm that interim injunctions are the instrument of choice when it comes to potential personality right infringements.

The Bundesgerichtshof's press release of 7 December 2010 can be retrieved from the court's website by clicking here, where the lovely picture of the court top left has also been taken from.

Paris not so hot in the Ninth Circuit

In 2007 Paris Hilton, the heiress who is “famous for being famous”, sued Hallmark Cards alleging that one of the greeting card company’s birthday cards constituted misappropriation of publicity and trade mark infringement, under Californian and federal law respectively. The card at issue incorporated a cartoon of a waitress with Hilton’s head superimposed on the body. A caption reading “Paris’s First Day as a Waitress” is placed above the drawing. The cartoon Hilton tells the customer “Don’t touch that, it’s hot.” “What’s hot?” the customer replies. “That’s hot.” For those IPKat readers unfamiliar with Paris Hilton’s body of work, “That’s hot!” is a phrase she employs when, according to Judge O’Scannlain, “she finds something interesting or amusing.” Hilton registered the trade mark “that’s hot” with the USTPO.

The 9th Circuit dismissed the trade mark infringement claim, which Hilton did not appeal, but accepted that Hilton could still argue that the card misappropriated her likeness in the image.

Paris Hilton’s case has apparently raised serious First Amendment issues – a sentence that this IPKat never thought she would ever write. Hallmark’s attorney’s stated:

“Spoofing how a celebrity appears in a work that the public commonly associates with that celebrity is a standard practice of satirists, parodists and other speakers. [The Court’s] unprecedented finding that the publicity rights of an iconic celebrity may trump the First Amendment in the context of fully-protected speech that spoofs that celebrity ... creates uncertain and unreliable legal standards that will drastically chill speech if allowed to stand."

At issue in the appeal is the conflict of the 9th Circuit’s decision with the court's precedent in Hoffman v Capital Cities (2001) which held that an image portraying a celebrity’s name and likeness was transformative (i.e., the addition of creative contributions to the likeness) and therefore protected under the First Amendment. The Court there held that the image of Hilton as a waitress was not sufficiently transformative because Hilton had acted as a waitress on her show “The Simple Life”. The question that the Court of Appeals will hopefully answer is exactly how much transformation is required for a defendant to avail themselves of a claim for misappropriation of publicity.

Next chapter in the copyright dispute over the republication of Nazi newspapers

The Sueddeutsche Zeitung reports on the next chapter in the ongoing battle between the Bavarian State government (Bavarian Ministry of Finance) and a British publisher, Peter McGee, concerning the republication of historical Nazi newspapers in a reprint series (see the IPKat's earlier post here). The reprint series Zeitungszeugen (in English: newspaper witnesses) came with an outer layer of pages that included commentaries explaining the historical context of the original publication and the Nazis' propaganda tricks. German media has previously reported that the state of Bavaria holds the copyright the relevant Nazi publications, such as the Voelkischer Beobachter, after it took over the rights of the main Nazi party publishing house Eher-Verlag after the end of World War II as part of the Allies' de-Nazification programme. It was also reported that Bavarian state officials had confiscated more than 3,200 reprints of an edition of Voelkischer Beobachter. The publisher of this educational series was not amused.

The Sueddeutsche Zeitung now reports that it appears that the the 21st civil chamber of the Regional Court Munich I (21. Zivilkammer, Landgericht Muenchen I) will decide the copyright dispute in favour of the publisher, Peter McGee. While the final decision is expected for 25 March 2009, the presiding judge, Thomas Kaess, seems to have already hinted at the possible outcome, the Sueddeutsche Zeitung reports. Judge Kaess is cited as saying that if the State of Bavaria was interested in stopping such reprints, then it should pass an appropriate law instead of "... poking in copyright law". Moreover, it was doubtful whether the Bavarian State even owned the relevant copyrights, plus these rights may have already ceased to exist. Judge Kaess is further cited as saying that copyright law was, in any case, a difficult basis for the Bavarian State's legal claims. It was further doubtful whether Adolf Hitler had indeed been the editor of the Voelkischer Beobachter, particularly whether he had had the time to contribute to the publication and to take decision as to which articles were to be included in the publication. The mere fact that he had been mentioned as the editor, was not enough to establish a copyright proprietorship in the publication, Judge Kaess is cited.

The Sueddeutsche Zeitung also reports that the Bavarian State had apparently, inter alia, referred to a law of October 1933 - and as such a law passed by the Nazi regime - to support its claim of a copyright transfer. While there are clearly some (moral) questions whether such a law can or should be evoked today, it appears that it was not even applicable because the relevant editions of Voelkischer Beobachter were first published in March 1933 before the law came into force.

An interesting case, which not only raises legal questions. Many of the legal issues that were initially discussed might not even be of importance. However, it appears that the Munich court takes a rather detached and common sense approach, which makes this Kat look forward to the Munich court's final decision. This Kat also seems to recall that the prosecution in Munich had intended to start criminal proceedings against the publisher and wonders how the outcome of the copyright dispute will affect these proceedings...

Republication of "Nazi newspapers" - verboten?

The IPKat has been monitoring for a while a developing story in Germany about the ongoing battle between the Bavarian State government (Bavarian Ministry of Finance) and a British publisher concerning the republication of a series of historical newspapers, including historical Nazi newspapers.

In January 2009 the German media reported about the confiscation of 280 copies of a reprinted Nazi newspaper by Bavarian officials. One the face of it, the case seemed clear: publishing Nazi propaganda is illegal in German and a criminal offence. However, things were not that straight forward, since it transpired that the objectionable publications were part of reprint series which had previously been praised by historians. The publisher Albertas, a British company, appears to have offered facsimile reprint copies of historical newspapers in several European countries. It was also reported that the reprint series Zeitungszeugen (in English: newspaper witnesses) came with an outer layer of pages that included commentaries explaining the historical context of the original publication and the Nazis' propaganda tricks.

According to German media reports (and the Bavarian Ministry of Finance's website) the state of Bavaria holds the copyright for many of the Nazi publications, such as the Voelkischer Beobachter, after it took over the rights of the main Nazi party publishing house Eher-Verlag after the end of World War II as part of the Allies' de-Nazification programme. Bavaria has so far not allowed unannotated reprints of these publications due to the Nazi propaganda content. What is allowed are reprints of parts of articles put in the proper context and combined with historical scholarly comments. In the current case, the Bavarian state also objected to the reprint because the educational comments were only included in the covering pages of the reprint. Once the outer cover pages are removed, which reportedly is easily done, the newspaper looks exactly like it did during Nazi times--something which the Bavarian state does not want see published. The Bavarian state has so far taken a similarly strict approach when it comes to the possible re-publication of Adolf Hitler's Mein Kampf (My Struggle) in Germany, which has not been republished in its entirety in Germany since the end of World War II. It should be noted that the Bavarian State did not question that Albertas was an an educational publisher.

German magazine Der Spiegel reports that, even though some historians have tried to publish a scholarly annotated version to demystify the content once and for all, the Bavarian state has far reportedly refused to give consent. As copyright holder, Bavaria has refused to allow the book to be republished in its entirety, on the grounds that it would promote right-wing extremism. In the case of Mein Kampf, it will have to be seen what Bavaria will do after 2015 when the copyright for Mein Kampf will expire 70 years after the death of its author. The IPKat has done some research himself and has seen that interestingly Mein Kampf is available freely in the UK via Amazon.

By February it was reported that Bavarian state officials had confiscated more than 3,200 reprints of an edition of Voelkischer Beobachter and that prosecutors had launched criminal proceedings against the publisher on the grounds of copyright infringement and the publication of Nazi emblems, which is a criminal offence under the German Criminal Code. The German newspaper Die Zeit reports that the Bavarian government had enough after the second edition of Zeitungszeugen (which included copies of several historical newspapers, such as the social democratic Vorwärts, the liberal paper Vossische Zeitung, as well as the NSDAP Nazi paper Völkischer Beobachter) also enclosed a reprint of a historical poster showing the Reichstag on fire with a call for voters to vote for Adolf Hitler in March 1933. The poster also called to destroy the social democrats and communism and it showed a depiction of the swastika. The edition of Voelkischer Beobachter further included a commentary written by notorious Nazi propaganda minister Goebbels.

Wilfried Krames, a spokesman for the Bavarian justice ministry is cited by the BBC as saying: "The criminal proceedings are under way and the prosecutors are taking this case very seriously." He is further cited as having said that "... because of our country's history, there are regulations in Germany's criminal code which govern the use of Nazi symbols." "Even a reprint of a Nazi newspaper is unconstitutional because the publisher is still reproducing Nazi emblems and this also represents a breach of copyright law".

The British publisher Peter McGee (Albertas) behind the Zeitungszeugen sees matters differently and wants to make the historic content available to the public. He reportedly sought advice from German historians and is quoted as saying that Zeitungszeugen should be read by people who "...would never read a contemporary history textbook, but still value quality analysis of the information". Mr McGee sees an infringement of freedom of press and doubts that the Bavarian state owns the copyright in the Voelkischer Beobachter. His lawyer Ulrich Michel is quoted (again by the BBC) "... even if the state of Bavaria were the rightful owner, under German copyright law, you are allowed to use and publish these works for scientific purposes." "The purpose of the project is scientific. Zeitungszeugen was compiled with the help of 10 renowned historians and other scientists, including the director of the Holocaust Research Centre at the Royal Holloway College in London". Mr Michel reportedly also sought the advice of two (unnamed) university professors in criminal law, which he says have confirmed the republication of the Nazi newspapers would not constitute a criminal offence "... because the law only applies to propaganda material which was published after the German constitution was drawn up in 1949, and not to material which was published before". And even if, the "... law does not apply when the publishing is done for educational purposes." Albertas also states that similar publications in Austria were supported by the Austrian Ministry of Education and without the Bavarian state complaining. Albertas appears to be determined to fight this matter all the way, if necessary to the German Federal Constitutional Court and to the ECHR.

The Sueddeutsche Zeitung reports that the third edition of Zeitungszeugen has now been published in an edited version, which only included the editor's comments but does not include a copy of the actual newspaper. However, the edited version appears to include a coupon which allows the interested reader to order a copy of the actual paper(s). The Sueddeutsche Zeitung also expects that this matter will soon go to court. However, according to Zeitungszeugen's website, edition four of the Zeitungszeugen is again published in its entirety.

This German Kat has mixed feelings about this matter, which has clearly raised several questions. The question of copyright infringement has to be separated from the criminal law question. There is certainly an argument that this kind of republication could be covered as a "quotation" by section 51 No. 1 of the German Copyright Act (so-called "Grosszitat"), which also covers complete republications of newspapers. Section 51 No. 1 of the German Copyright Act ("Quotations") stipulates that "...the reproduction, distribution and communication to the public shall be permitted, to the extent justified by the purpose, where ... individual works are included after their publication in an independent scientific work to illustrate its contents".

Furthermore, does the republication fall under the relevant provisions in the German Criminal Code (StGB) or is there a "get out of jail free card" that it is a historical research and educational? The relevant Criminal Code provisions are in section 86 and 86a StGB. Section 86 StGB (Dissemination of Means of Propaganda of Unconstitutional Organizations) rules that:

(1) Whoever domestically disseminates or produces, stocks, imports or exports or makes publicly accessible through data storage media for dissemination domestically or abroad, means of propaganda: (...)
4. means of propaganda, the contents of which are intended to further the aims of a former National Socialist organization, ...shall be punished with imprisonment for not more than three years or a fine. (...)

However.... (3) Subsection (1) shall not be applicable if the means of propaganda or the act serves to further civil enlightenment, to avert unconstitutional aims, to promote art or science, research or teaching, reporting about current historical events or similar purposes.

Section 86a StGB governs the "Use of Symbols of Unconstitutional Organizations".

This Kat personally has a rather uneasy feeling about publishing historic Nazi content which can be spread further - potentially without any annotations or comments. Yes, Zeitungszeugen's early two editions did include these historical comments but only in their covering pages, which reportedly could be easily removed and the newspaper could then have been passed on. Would this "naked" copy still be an educational copy? Should an educational copy not have the educational content attached in way so it can't be easily removed from the reprinted part? Or would demanding this add additional hurdles that are potentially unconstitutional? This Kat is also aware that moral questions should not be confused with legal issues but sometimes it is not that easy - there is also the question of respect for the victims of the Nazi era. Would that mean rewriting the law?

There are also potential constitutional issues. Freedom of expression, which is protected as a basic human right in Article 5(1) Basic Law/German Constitution is most likely affected. Furthermore, Article 5(1) Basic Law also states that there "...shall be no censorship". Freedom of research, which is equally protected as a basic human right in Article 5(3) Basic Law, could be affected keeping in mind that Article 5(3) Basic Law also stipulates that "...the freedom of teaching shall not release any person from allegiance to the constitution."

The IPKat will continue monitoring this case and is looking forward to readers' comments.

The press release of the Bavarian Ministry of Finance of 16 January 2009 can be found here.
The press release of Zeitungszeugen of 16 January 2009 can be found here (both in German).

Daily Mail editor lambasts Moseley judge, and Moseley responds

For once the IPKat finds himself in the rather strange position of agreeing with Max Moseley. Mr Moseley (who was exposed by the News of the World as enjoying the attentions of a number of German-speaking 'ladies of the night') has spoken out in the Guardian against Paul Dacre's comments regarding privacy. Mr Dacre, the editor of the Daily Mail, gave the opening speech at the Society of Editors' conference. The speech comments on the fallout after the News of the World lost a privacy action, brought by Mr Moseley this summer (reported by the IPKat here) after exposing Mr Moseley's night-time activities and posting a video of one of the events on its website. Mr Dacre accused the judge in that case, Mr Justice Eady, of introducing a privacy law by the backdoor. He began:

But there is one remaining threat to press freedom that I suspect may prove far more dangerous to our industry than all the issues I have just discussed.

'Put to one side the United Nations’ recent attack on Britain’s disgracefully repressive libel laws that have made London the libel capital of the world – something that should be a bitter source of shame for our judicial system.

Concentrate instead on how inexorably, and insidiously, the British Press is having a privacy law imposed on it, which – apart from allowing the corrupt and the crooked to sleep easily in their beds – is, I would argue, undermining the ability of mass-circulation newspapers to sell newspapers in an ever more difficult market.

This law is not coming from Parliament – no, that would smack of democracy – but from the arrogant and amoral judgements – words I use very deliberately – of one man.

I am referring, of course, to Justice David Eady who has, again and again, under the privacy clause of the Human Rights Act, found against newspapers and their age-old freedom to expose the moral shortcomings of those in high places.'

Then, after discussing Moseley's case, and another case:

'Now most people would consider such activities to be perverted, depraved, the very abrogation of civilised behaviour of which the law is supposed to be the safeguard. Not Justice Eady. To him such behaviour was merely “unconventional”.

...

But what is most worrying about Justice Eady’s decisions is that he is ruling that - when it comes to morality - the law in Britain is now effectively neutral, which is why I accuse him, in his judgments, of being “amoral”.

...

What the judge loftily calls the “new rights-based jurisprudence” of the Human Rights Act seems to be ruling out any such thing as public standards of morality and decency, and the right of newspapers to report on digressions from those standards.

But most worrying is that when it comes to suppressing media freedom, the good Justice Eady is seemingly ubiquitous....

[Dacre then lists the cases in which Mr Justice Eady has sat]

But surely the greatest scandal is that while London boasts scores of eminent judges, one man is given a virtual monopoly of all cases against the media enabling him to bring in a privacy law by the back door.

English Common Law is the collective wisdom of many different judges over the ages. The freedom of the press, I would argue, is far too important to be left to the somewhat desiccated values of a single judge who clearly has an animus against the popular press and the right of people to freedom of expression. I personally would rather have never heard of Max Mosley and the squalid purgatory he inhabits. It is the others I care about: the crooks, the liars, the cheats, the rich and the corrupt sheltering behind a law of privacy being created by an unaccountable judge.

If Gordon Brown wanted to force a privacy law, he would have to set out a bill, arguing his case in both Houses of Parliament, withstand public scrutiny and win a series of votes. Now, thanks to the wretched Human Rights Act, one Judge with a subjective and highly relativist moral sense can do the same with a stroke of his pen.

All this has huge implications for newspapers and, I would argue, for society. Since time immemorial public shaming has been a vital element in defending the parameters of what are considered acceptable standards of social behaviour, helping ensure that citizens – rich and poor – adhere to them for the good of the greater community. For hundreds of years, the press has played a role in that process. It has the freedom to identify those who have offended public standards of decency – the very standards its readers believe in – and hold the transgressors up to public condemnation. If their readers don’t agree with the defence of such values, they would not buy those papers in such huge numbers.

Put another way, if mass-circulation newspapers, which, of course, also devote considerable space to reporting and analysis of public affairs, don’t have the freedom to write about scandal, I doubt whether they will retain their mass circulations with the obvious worrying implications for the democratic process.

Now some revile a moralising media. Others, such as myself, believe it is the duty of the media to take an ethical stand. Either way, it is a choice but Justice Eady – with his awesome powers – has taken away our freedom of expression to make that choice .

The IPKat finds Dacre's speech problematic for a number reasons. To suggest that a judge has an agenda needs to be proven with more rigour than demonstrating that he has delivered a number of consistent judgments - if a judge is applying the law, one would hope for consistency. Who, out of interest, does Dacre suggest is granting Mr Justice Eady this 'virtual monopoly'? Mr Dacre also appears to have not quite grasped the concept of the separation of powers. Yes, judges are unelected, but that's the whole point. He calls the Human Rights Act 'wreteched'. That reduces the importance of an Act which enshrines (or at least adumbrates) fundamental values to a spat between editors of newspapers who want to break 'scandals' and those nasty conservative judges who are spoiling all the fun (and ruining the circulation figures). He accuses the law of being 'amoral', but surely the decision to put privacy and family life over free speech in some cases is a moral one, even if it's one he disagrees with. More fundamentally, judges applying the law, and perhaps particularly IP law, generally doesn't moralise (although there's clearly a moral judgment by Parliament in deciding what the law should be in the first place) or look to closely at the 'quality' of what they're protecting - a consequence of the fact that they're there to apply the law, not to make it up as they go along - make your mind up Mr Dacre; either you want judges to defer to the will of Parliament or you don't - you can't have it both ways. The full text of the speech is available here.

Companies object to use of trade marks in films

The IPKat read with bemusement a piece in today's Times describing how Mercedez Benz and the makers of a popular unnamed fizzy drink 'meant to unite the world' insisted that their trade marks be removed from scenes in the film Slumdog Millionaire. The film, the latest by British director Danny Boyle (who sounded off about the issue at the film's premier last night), tells the story of a boy from Bombay's slums who reaches the final of the Indian version of Who Wants to be a Millionaire. The companies are alleged to have thought that their brands would be sullied in shown in the setting of the slums. The film makers were forced to spend thousands of pounds blanking out the logos in scenes were the stars were shown drinking fizzy drinks on a rubbish dump and where a Mercedez car, driven by a gangster, was shown in the slum. According to Boyle:

“We wanted to use a Mercedes because . . . this guy, this gangster would drive a Mercedes . . . but if you use Mercedes then clearly you have to get permission, and we asked for their permission and they refused it.”

Could Boyle have just gone ahead and used the trade marks, the IPKat wonders? The use might lead to unsavoury associations, bringing with it a risk of tarnishment, but is it trade mark use, and is trade mark use even needed? (We've had lots of cases about this, but the answer still isn't clear, and perhaps the answer is different for Art.5(2) anyway). This underlines the accute need for clear guidance from the ECJ on the issue for once and for all. Life would be rather difficult if trade mark owners can use their marks to stop real products being shown in films, or even just in films which are not to their liking. Actually, the outcome in this situation could have been worse - at least the companies don't seem to have argued that their product shapes are trade marks, the use of which they can control. Merpel notes with a degree of regret that it wasn't the association with a gangster that annoyed Mercedez, but rather the association with a slum.

DoJ bans biker trade mark

The IPKat has learned from the Associated Press that the US Department of Justice has effectively seized control of the trade mark of the Mongols motorcycle gang, a picture of a Mongolian warrior wearing sunglasses. The gang appears to have been engaged in violent crime, and at the same time as the injunction banning the use of the trade mark, 79 gang members were indicted. Although the injunction banning the logo originally cracked down on distribution or sale of the logo, it now states that gang members "shall surrender for seizure all products, clothing, vehicles, motorcycles ... or other materials bearing the Mongols trademark, upon presentation of a copy of this order."

The Office of the US Attorney has said that it is drafting a protocol for such seizures, but others have cricised the moves as interfering with free speech.

The IPKat is relatively sanguine about this. He agrees that free speech is a serious consideration where a trade mark offends others. However, this mark seems more than offensive – it seems like it could incite wearers and others to commit violence. Surely this outweighs free speech? The Kat also notes that such moves might be unknown in the US, but in the UK, wearing clothing bearing the insignia of a banned group can result in an offence against anti-terrorist legislation.

Free speech trumps privacy, but only just, in Mosley case

The IPKat has come across a privacy case in which Max Mosley attempted to enjoin the News of the World from showing video footage of his allegedly Nazi-themed orgy with five prostitutes. The footage was posted on the News of the World’s website at the end of March. It was then voluntarily taken down on 31 March, by which time other websites had copied and posted the footage. On 3 April the News of the World gave notice that it intended to repost the footage. Mosley applied to the court for an injunction to stop this.

According to Eady J, Mosley’s Art.8 right to privacy was in conflict with the News of the World’s Art.10 right to freedom of expression. In balancing the two, the court has to take the following into account:

i) No Convention right has, as such, precedence over another;

ii) Where conflict arises between the values safeguarded under Articles 8 and 10, an "intense focus" is necessary upon the comparative importance of the specific rights being claimed in the individual case;

iii) The Court must take into account the justification for interfering with or restricting each right;

iv) So too, the proportionality test must be applied to each

The information disclosed intrustive and demeaning to Mosley. However, the court had to consider two factors which could limit his right to privacy:

1. There was no public interest justification for revealing the edited video footage. The public was already aware of Mr Mosley’s proclivities, and the pictures embodied in the video footage were only of interest because they were “mildly salacious and provide an opportunity to have a snigger at the expense of the participants”.

Although there was a public interest in protecting the public from being misled by statements made by a claimant (in this case, the possibility that Mr Mosley was not telling the truth in denying that the S&M session has a Nazi theme), the News of the World could put the record straight without recourse to the video footage. In particular, the footage in question did not convincingly show that Mosley was lying.

2. However, there was no point in barring the News of the World from showing the material since the material was now widely available on the internet and anyone who wished to view the footage could easily do so. Either Mosley had lost his reasonable expectation of privacy because the information was so widely available, or the information has entered the public domain. In either case, the court had to avoid adopting the role of King Canute and making “vain gestures”.

The judge summarised:

I have, with some reluctance, come to the conclusion that although this material is intrusive and demeaning, and despite the fact that there is no legitimate public interest in its further publication, the granting of an order against this Respondent at the present juncture would merely be a futile gesture. Anyone who wishes to access the footage can easily do so, and there is no point in barring the News of the World from showing what is already available.

The IPKat is a tad puzzled by Eady J’s approach. Although he states that no convention right takes precedence over another, he seems to proceed on the assumption that Mosley has a prima facie right to privacy which would need to be rebutted by free speech concerns. In other words, free speech seems to be being treated almost as a defence, rather than as a right of equal importance to privacy.