The World’s Cutest Dog too commonly shaped to be copyright protected

Here, courtesy of Denise Verdoold (Banning), is a gripping tale of some canine capers from the Netherlands. This is what she writes:

Boo looking cool

Recognise the act of spending an entire afternoon watching and flicking through entertaining yet distracting-you-from-what-you-are-actually-supposed-to-be-doing clips and pictures of charming children and frolicking animals? Well, if you do, you will certainly have come across Boo, the world’s cutest dog. The adorable Pomeranian dog with its distinctive hair-cut has undeniably caused many a smile, appearing dressed up in colourful dog jumpers or taking a walk together with its canine brother Buddy. Since his first appearance in 2007, Boo has become very popular, its own Facebook page having already been ‘liked’ by more than 17 million people. Boo merchandise includes stuffed toys, puzzles, books and calendars.

And here he is again

Boohoo, the creators of Boo must therefore have been surprised when the Presiding Judge of District Court The Hague (Loos J) in summary injunction proceedings on 12 October 2015 ruled that the stuffed toy likeness of Boo was not protected by copyright. The Presiding Judge considered the characteristics of Boo to be, on the one hand, a realistic copy of the real Boo and, on the other hand, common for stuffed animals. Boo might be the cutest dog in the world, but that now seems not enough to entitle him to claim copyrights in its appearance.

A, the owner of Boo whose name is anonymised in the judgement, established Buddy Boo Inc. (‘Buddy Boo’), a company which, inter alia, develops and markets Boo merchandise. Gund, subsidiary company of Enesco LLC (‘Enesco’), incorporated under the laws of the United States of America, develops and distributes toys. Buddy Boo and Enesco entered into a licence agreement under which Buddy Boo granted Enesco (for the benefit of Gund) the exclusive right to make, to have produced, to sell and have sold items, including stuffed animals, under the name and in the likeness of Boo. One of the products marketed by Gund under the licence agreement is a plush stuffed Boo dog, which is available in various sizes, with and without (removable) clothes.

On 21 August 2014, Buddy Boo obtained from the United States Copyright Office a Certificate of Registration for the work ‘Boo - World’s Cutest Dog - 8” Version’, with the description ‘Plush representation of a living dog’. The certificate states 1 March 2012 as the date of first publication of the work.

Dino Trading B.V., incorporated under Dutch law, markets, inter alia, (stuffed) toys, including the stuffed dog Pom. Pom, like the stuffed Boo, is available in different sizes, with and without an (removable) outfit.

Below, images of the Boo stuffed dog and the Pom stuffed dog, are pictured in proximity to one another.

Pom stuffed dog

Boo stuffed dog

Enesco, acting as the claimant in this matter on the basis of the licence agreement granting Enesco this right, demanded Dino Trading to cease and desist the production and sale of the Pom stuffed dog on the basis that it constitutes a copyright infringement of Boo’s stuffed likeness. After the demand letter to Dino Trading turned out not to have the desired effect, Enesco requested the Presiding Judge of the District Court Gelderland to grant an order to seize before judgement 15,131 stuffed Pom dogs and have them sequestrated in order to secure the surrender of the seized goods on the basis of article 28 of the Dutch Copyright Act.

Following the seizure, Enesco instituted summary injunctive proceedings before the Presiding Judge of the District Court The Hague, requesting the court, inter alia, to order Dino Trading to cease and desist the infringement of the copyrights in the Boo stuffed dog and destroy the remaining stock of Pom stuffed animals, both claims subject to an incremental penalty, and order Dino Trading to remunerate the legal costs Enesco incurred in the proceedings.

Substantiating its claims, Enesco argues that the Boo stuffed toy dog is a creative adaptation of the appearance of Boo - which in itself is alleged to be both original and creative - which does not naturally occur. A number of subjective choices were made designing the stuffed Boo toy, rendering the toy to be a copyright protected work in all countries of the European Union as a result of the concept of ‘work’ having been harmonised throughout the EU.

Enesco put forward 7 characteristics vested in the appearance of Boo the (real) dog and no less than 29 elements relating to the adaption of the appearance for the purpose of the stuffed Boo toy. Boo’s real life characteristics include, inter alia, the fur which is cut relatively short, the choice of cutting the hair of the dog’s face in such a way that it seems to have cheeks and a chin, the seemingly disproportionally large size of the dog’s head created by cutting the hair in a round shape and the choice of cutting the hair on and around the ears in such a way that they seem relatively short and round. A selection of the elements characteristic of the stuffed likeness of Boo includes the disproportionally large head, the positioning of the eyes, nose and mouth, the slightly opened mouth which creates a smile, the shape of the face, the choice of the stitching, materials and colour and the clothes that the Boo stuffed dogs wear.

According to Enesco, the Pom stuffed animal contains all the elements included in the design of the Boo toy and therefore creates the same total impression as Boo’s stuffed likeness.

Jiff

Dino Trading disagrees, arguing that the stuffed Boo toy enjoys no copyright protection. Furthermore, the appearance of the Pom stuffed dog is not derived from Boo or the Boo stuffed dog, but from a dog Jiff, also a Pomeranian dog which has its own Facebook page and can even be booked as an actor. Therefore, Dino Trading requests the Presiding Judge to reject Enesco’s claims and lift the seizure of the stuffed Pom dogs.

The Presiding Judge of the District Court The Hague denied Enesco’s claim, ruling that the Boo stuffed dog is not copyright protected.

The design of the stuffed Boo dog constitutes a realistic representation of the appearance of the real Boo. As results, the characteristics of the stuffed animal listed by Enesco as copyright protected which are also vested in the real dog, lack originality, according to the Presiding Judge. This is all the more true, as Enesco failed to show that the appearance of Boo is original for a Pomeranian dog, nor that Boo was the first dog having that appearance. Dino Trading, in substantiating its defence, claimed that the so-called ‘Teddy Bear cut’, which corresponds to Boo’s hair cut (Pomeranian dogs naturally having long hair), had been known before 2007, the year in which Boo had its first Teddy Bear cut. Dino Trading also submitted various pictures of dogs having had a Teddy Bear cut, including Jiff, and referred to a number of internet discussions about this cut, all dating from before 2007. Enesco failed to contest Dino Trading’s arguments sufficiently, merely putting forward that the Teddy Bear cut - even if it would be held that this cut existed before Boo had his - has only enjoyed fame since Boo’s introduction.

Regarding the elements characteristics of Boo’s stuffed likeness, the Presiding Judge held these are all either based on the (unprotected) appearance of real life Boo or are commonly used in stuffed animals. Dino Trading had submitted various pictures of stuffed animals to prove this point. Therefore, the characteristics of the Boo stuffed dog were ruled to be trivial, if not functional or having a technical effect. Even the outfits designed for plush Boo were held to be trivial.

Enesco’s claim that the combination of the characteristics rendered the design of the Boo stuffed dog original nonetheless, was also rejected by the Presiding Judge. The design of the Boo stuffed animal consists of, on the one hand, characteristics of the real dog Boo which were copied as realistically as possible and, on the other hand, (non-creative) choices of material and shapes which are common in stuffed animals and meet the functional requirements of such toys. Accordingly the individual elements, nor the combination thereof, can, according to the Presiding Judge, be regarded as the author’s own intellectual creation. Boo the stuffed dog therefore does not enjoy copyright protection.

As a result of the harmonised concept of ‘work’, the conclusion that the Boo stuffed toy does not enjoy copyright protection in the Netherlands, implies that the toy will also not be held to be copyright protected in other EU countries. Therefore, as Enesco failed to submit other circumstances justifying that Boo’s stuffed likeness would be regarded as a copyright protected work in other EU countries, the EU-wide order claimed by Enesco was also rejected by the Presiding Judge.

As a consequence of the Presiding Judge rejecting the claim that the stuffed Boo dog enjoys copyright protection, the prejudgement attachment of the Pom stuffed dogs was lifted. Enesco is therefore required to return the seized toys to Dino Trading.

Enesco was ordered to compensate the legal costs incurred by Dino Trading, amounting to a total sum of EUR 23,782.01.

Every dog has its day, but Boo’s day turned out not to be on the day of the judgment of the Presiding Judge of the District Court The Hague.

The decision (in Dutch) is available here.

HOT NEWS: Amsterdam Court of Appeal gives Tom Kabinet three days to shut down

Here's some fresh news from Míchel Olmedo Cuevas, who has been following this development closely:

Earlier today, the Amsterdam Court of Appeal  delivered a ruling stating that, as Tom Kabinet provided a platform where both,legal and illegal used e-books could be resold, the website has to close within the next three days or face a fine of €1,000 a day, up to a maximum of €300,000. 

This decision follows the appeal presented by Nederlands Uitgeversverbond (NUV) and Groep Algemene Uitgevers (GAU), two Dutch collective management societies representing the interests of the literary industry, in which they asked for an immediate closure of the site. At first instance, Judge Pompe decided that the activity carried out by Tom Kabinet was lawful and should be allowed to continue. An analysis on the case by this author can be found here. 

At this stage the closure order can still be lifted if Tom Kabinet finds a way to ensure that their selling systems excludes illegally downloaded files. This should prove to be difficult, given that there are legitimate suppliers that do not provide their e-books with DRM (Digital Rights Management), making them very difficult to track. The current Tom Kabinet system provides the sold files with a watermark, so they cannot be sold more than once at a time and only by the last buyer, a system that Judge Pompe considered to be compliant with the current legal framework. 

Significantly, the court avoided deciding whether exhaustion doctrine should be finally applied to e-books, and left the question for future proceedings, where the competent court could refer questions to the CJEU, and ask the highest instance if exhaustion doctrine should apply to e-books. 

At this instance, the only goal for NUV and GAU was to obtain an injunctive relief while they wait for the final ruling, so there is still a chance for Tom Kabinet to resume their activities after the final ruling is delivered. 

The complete ruling can be read here (in Dutch). Tom Kabinet's website is here.

Hardware providers sue Dutch government over private copying levy hike

Further to recent changes to private copying compensation in Spain, change may also be afoot in the Netherlands.

What do you mean we've moved on?

The private levy system in the Netherlands has been frozen since 2008 meaning that whilst blank audio and video tapes, MiniDiscs and blank DVDs and CDs are subject to levies, smartphones and MP3 players are not. To bring the system up to date, the Dutch government announced in October that new, increased, private copying levies would apply to all hardware from January 2013.

The new levies are set out below. They increase from €0.03 for CDs and DVDs to €5.00 for tablets over 8 Gb, PCs and laptops.

Understandably, this sudden propulsion of private copying levies into the modern world has caused some tension: last week three of the big hardware providers (Dell, Hewlett-Packard and Imation) along with other big players in the industry sent a letter to the State Secretary for Security and Justice, Fred Teeven, saying that the levies would "cause trade barriers and serious disincentives to operating logistics hubs and distribution centers in the Netherlands". Further they said that the levies were likely to conflict with the Information Society Directive which, they say, requires that fair compensation be based on assessment of the harm caused by private copying.

Last Wednesday, Hewlett-Packard, Acer, Dell and Imation, went further and filed a claim against the Dutch government at the District Court of the Hague claiming damages caused by the new, higher, private copying levies.

It is not clear to this blogger how a claim for damages can be filed when as yet no damages have been incurred, however the big four say that in 2013 alone they will suffer damages of  "tens of millions" of Euros. Damages aside the main gripe seems to be that the new levies were based on an estimate that the entertainment industry has lost €40 million due to private copying. The hardware providers say that the estimate is "excessive and unfounded" and that it includes losses due to illegal downloads which should not be recovered by way of private copying levies. As we reported here, the question of how the private copying exception applies to illegal content has been referred by the Dutch courts to the CJEU. Further the hardware providers argue that it is not right that the new levies should apply to all devices, including devices for professional use that are not used for private copying.

Private copying levies are always a touchy subject and such sudden increases were never going to be popular. Is the solution to make private copying illegal, as it is in the UK, and so abolish the levies? Or to implement one European-wide levy so that at least particular markets within the EU are not disadvantaged?

And will the Dutch move on to think about imposing levies on the cloud?

Five stripes and you're nicked: copyright and Dutch police cars

A distinguished member of the intellctual property community has contacted this weblog with a question relating to Dutch copyright law. She writes:

"This Dutch opinion was brought to my attention but, because it's in Dutch, I am not quite sure what it says. I'm told that the design of stripes on a police car was considered a valid copyright work, which means that it has ramifications that extend far beyond trade mark law, i.e., stopping anyone else from using the same stripes anywhere. Can you explain it to us?"

Can one or more of our Dutch readers be of assistance? 

Dutch aim to de-clog European copyright law

A Dutch professor and member of a Government committee on copyright has said that it wants to relax copyright laws that stop internet users and others using protected material to make ‘creative remixes’. Bernt Hugenholtz of the Dutch state committee on copyright law said “We all love YouTube" adding "Many of the videos we find there are creative remixes of material protected under copyright. They're mostly for laughs or political commentary, or they're simply absurd. If we applied the law today strictly, we would not be allowed to do these things". Hugenholtz went on to say "We all agree that it's good for creativity, good for laughs, and no one gets hurt. Copyright holders are not harmed, so it makes a lot of sense to allow this. But in Europe, where we do not have open norms like the fair use doctrine in the United States, we can't do these things without infringing the law."

Hugenholtz, copyright law professor at the University of Amsterdam, who reportedly says European copyright law is outdated because the exceptions it allows for the use of protected content do not take new technology into account, discussed his views with representatives of European governments, the entertainment industry, internet entrepreneurs, legal experts, EU representatives, journalists and librarians who were gathered in The Hague for the "Towards Flexible Copyright" conference organised by the Dutch government.

At the conference, Deputy Justice Minister Fred Teeven said he is exploring "a more flexible system of copyright exceptions that would also work in a European contex”.

http://www.rnw.nl/english/article/loosen-copyright-law-says-dutch-government

Image: freefoto.com

Downloads and levies: it's Double Dutch Day!

In "Copyright owners better off in a regime that allows downloading from illegal sources" this weblog reported on the 15 November ruling of the Court of Appeal of the Hague in Eyeworks v FTD. Today the IPKat posted the an English translation of the judgment in full (here) together with a short note from Dutch copyright practitioner and scholar Dirk Visser.

Dirk has now been able to procure an English translation of an even more complex ruling, on some of the same issues and decided by the same court on the same day, in ACI Adam BV and others v Stichting de Thuiskopie and another (here).  Explains Dirk:

"Here is another decision by the same Court from the same day, parts of it are identical (on the private copying from an illegal source), but it is an entirely different case, between different parties, brought by the blank media industry against the home copying levy organisation in the Netherlands. This one is (even) more complicated.

The Court rules that downloading from an illegal source is permitted in The Netherlands -- and has to be compensated by ‘fair compensation’ (through levies or otherwise). The Court considers that this might be in violation of the Three-step test of article 5.5 of the Copyright directive, but also that an interpretation of Dutch national copyright law in line with the directive on this issue would result in an inadmissible interpretation ‘contra legem’".

Dirk feels disappointed that neither case got as far as a reference to the Court of Justice of the European Union and, in terms of clarifying the principles involved and ensuring that courts throughout the EU take the same line ie is quite right -- though a case can be made for saying that, if the Court of Appeal of the Hague could determine the issues before it without needing external help, it was right to do so.

Nintendo games more than just 'computer software'

In November 2008 the Dutch branch of video game producer Nintendo took action against several Dutch resellers of R4 flash cards and mod chips which were intended for use on Nintendo DS, DSi and Wii products. Both the flash card and the mod chip neatly circumvented Nintendo's console technology which was supposed to stop the use of illegally copied and/or unauthorised software. Nintendo’s claims were based both on copyright and trade mark infringement, though in the end the latter turned out to be unnecessary. Dutch copyright lawyers were all curious to see whether the copyright infringement would be argued in respect of ‘computer software’ or for a ‘work protected by copyright in general’, since a video game has elements of both.

Giving judgment on 21 July 2010, the Court of The Hague said it was the element that demanded the producer's most creative efforts that should be decisive as to what sort of work was to be protected: here it was general protection as a copyright work, rather than 'computer software' which was more appropriate. Why was this? Said the Court, Nintendo’s submission pointed to an extensive creative process in which elements such as the storyline, the characters and text (collectively referred to as 'the design') are created – or at least outlined – before the software programming can even begin. Since the programming had to be fitted to the video game designed, the resulting game program was subordinate to the design.

Having ascertained what sort of work it was that Nintendo sought to protect, the next question was: which is the legal provision that protects it? Article 29a of the Dutch Copyright Act turned out to be the most suitable weapon. This Article provides that it is unlawful to circumvent measures that are intended to prevent or restrict acts regarding works protected by copyright, if those acts are not permitted by the producer or its successor. Since the flash cards and the mod chips dodged Nintendo's data copy protection, Article 29a was infringed. The fact that the protective measures by Nintendo were designed to prevent all unauthorised use, whether unlawful or not, was simply irrelevant, though the Court added that Article 29a did not measures that were more far-reaching measures than strictly preventing copyright infringement. Nor was the Court impressed by the defence plea that Nintendo was abusing its powers, since Nintendo does actually grant licences to other producers.

As a result of infringing Article 29a the defendants were ordered not to import, distribute, sell or carry out any commercial activity with the flash cards or mod chips, on pain of a penalty of EUR 10,000 per day or EUR 1,000 per product. Better still for Nintendo, destruction was ordered for all flash cards and mod chips in the defendants' possession. Nintendo still has damages to come, plus the costs of the proceedings. The Court was silent on the trade mark infringement claim: Nintendo no longer had an interest in it that would exceed the legal measures to which it was entitled, based on copyright infringement.

The 1709 Blog thanks Willem Leppink (partner/advocaat, Ploum Lodder Princen, Rotterdam) for this information.

Eyeworks: Dutch court keeps an eye on Newzbin

From Boek9.nl, via Piter de Weerd, comes news of the Hague District Court's judgment in preliminary proceedings of 2 June 2010 in Case KG ZA 10-639, FTD BV v Eyeworks Film & TV Drama BV. Says Piter, this is a ruling in which

"facilitating downloading is ‘making available to the public’. The court explicitly follows Mr Justice Kitchin in Twentieth Century Fox v Newzbin".

According to the Dutch court,

"2.1. The issue of this case is the downloading from Usenet of copyright material and the role played by [the defendant] FTD in this …

2.6. FTD provides a service by which users can find and download files on Usenet in an easy way. To that end it gives access to a computer application, referred to hereinafter as FTD Application, by which users can share information about files stored in Usenet servers. In the FTD Application users post so-called spots, data regarding files which are considered interesting by users. A spot comprises the name under which the file in question can be found on Usenet.

4.3. The present preliminary proceedings concern the question whether by its behaviour FTD makes the work available to the public.

4.4. FTD argues that it does not make available, because the copyright files are not within its power at any time. The servers in which the files are stored are not controlled by it, nor does it have any influence on the downloading by users, so it argues. Be that as it may, provisionally judging it is not relevant whether the copyright files are actually in the power of FTD at any time. Instead it is important whether the behaviour of FTD allows users to download copyright files (in an easier manner) and that it thus makes such files in fact available to the public. This is the case, provisionally judging".

On the decision of Kitchin J the court had this to say:

"4.10. The Preliminary Relief Judge looks for adhesion with a recent decision of the English court. In a judgment with detailed reasons Mr Justice Kitchin finds that Newzbin, a company operating in a way which is similar on relevant points with the behaviour of FTD, infringes copyrights, despite the circumstance that on the site of Newzbin no copyright works have been posted. Just like FTD, Newzbin offers a platform for the exchange of data concerning inter alia the exact location of copyright works in Usenet servers. Thus Newzbin allows its users to download such works (in an easier way). Just like FTD in this provisional judgment, Newzbin was actively and substantially involved in the data posted by users, inter alia by categorizing such data and – at the request of users or not – removing unusable spots. Moreover the activities of Newzbin were aimed, in the view of the English court, at (enabling) large-scale copyright infringement".

You can read the judgment in translation here or, if you prefer it in the original, here. It's good to see how much more comfortable the judiciary in Europe is when looking at decisions of other national courts within the EU: there's no suggestion that a judge is bound by a decision made by a brother judge in another country, but there is at least the prospect of a sanity check, available to any judge who might otherwise feel he was heading in the wrong direction.