NEWSLETTER April 2023
Trademark LAW
Use of the trademark GODT SMIL as Google AdWords violated the Danish Trademark Act and the Danish Marketing Practices Act
In a decision on 21 April 2023 the Danish Maritime and Commercial High Court found that the defendants - 3 clinics from the Nord-Smil dental chain – had infringed the plaintiff Godt Smil ApS’ trademark GODT SMIL.
The Court found that Nord-Smil’s search-strategy, which included using the trademark in keyword insertions and as Google AdWords, violated Godt Smil’s rights under the Danish Trademark Act as well as the Danish Marketing Practices Act. The Court concluded that Nord-Smil had acted deliberately and unfairly exploited Godt Smil’s trademark, which constituted a breach of fair trading practices, since their advertisement was misleading – causing a likelihood of confusion among consumers between Nord-Smil and Godt Smil.
Lastly, the Court rejected Godt Smil’s notion that their trademark was a well-known mark and rejected Godt Smil’s claim that Nord-Smil should be ordered to add the word combinations “Godt Smil” and “Godtsmil” as negative keywords on their Google Ads account.
The Court ordered the defendants to pay 100.000 kr. in solidum to the plaintiff. Furthermore, The Court granted an injunction prohibiting the defendants from incorporating the trademark in their advertisements on Google.
The decision can be read in full in Danish here.
Patent LAW
EU unveils their new draft legislation on supplementary protection certificates (SPCs)
On 27 April 2023 four new proposals for regulations on SPC’s were published by the European Commission. The proposed legislation will, if adopted, reform the existing legal regime on SPCs for medicinal products and plant protection products and bring with it a new SPC-division within the EUIPO which would function as a centralized SPC filing and examination office.
The proposals involve the introduction of a unitary SPC, which can be obtained based only on a unitary patent – and for medicinal products a centralized marketing authorisation too.
The proposal includes the option of filing a single ‘centralized SPC application’ which will grant multiple national SPCs in Member States designated in the application.
Lastly the proposal suggests a single ‘combined’ SPC application including both a request for the grant of a unitary SPC and for the grant of national SPCs in specific Member States.
The proposed regulation can be read in full here.
Copyright Law
The Danish Eastern High Court refrains from deciding on copyright protection of digital font
In a recent case with the potential of becoming a Danish (and potentially European) landmark decision on the copyright protection of digital fonts, the Danish Eastern High Court refrained from considering the highly principal matter in its decision on legal costs, although the defendant, Studio 6 ApS, before the Court, had acknowledged and admitted the claims of the plaintiff, A2/SW/HK Limited.
The main proceedings before the Danish Maritime and Commercial High Court pertained to the legal protection of the digital font “A2 Typewriter” (“A2”), developed by the plaintiff, by copyright and/or section 3 of the Danish Marketing Practices Act. The case was initiated by the plaintiff with a view to obtain an injunction against the defendant’s use of the font “Codan Typewriter” (“Codan”).
The Danish Maritime and Commercial High Court ruled that A2 was distinctive and thus protected under section 3 of the Danish Marketing Practices Act, yet it did not find that Codan constituted an infringement. As to copyright, the Danish Maritime and Commercial High Court found that it was not sufficiently substantiated that the requirements for copyright protection were fulfilled.
In consequence of this outcome, the plaintiff was ordered to hold the legal costs. This was, nevertheless, reversed in a judgement on admission by the Danish Eastern High Court, according to which the plaintiff was to be considered as fully successful in its claims. Notwithstanding this, the plaintiff was, accordingly, awarded costs for the appeal proceedings. However, the parties were ordered to bear their own legal costs before the Danish Maritime and Commercial High Court.
In its assessment of the legal costs, the Danish Eastern High Court turned down the applicability of directive 2004/48/EC on the enforcement of intellectual property rights (the “Enforcement Directive”) as interpretated by the ECJ in case C-57/15 (United Video Properties), as the Danish Maritime and Commercial High Court had solely granted A2 protection under the Danish Marketing Practices Act, i.e., not intellectual property law.
However, by admitting the claims of the plaintiff, the defendant also acknowledged the allegation that A2 was protected by copyright and under section 3 of the Danish Marketing Practice Act. Accordingly, as this was no longer contested between the parties, the Court ought to have taken this for its basis in the costs order.
It could be argued that the decision to apply the Enforcement Directive falls within the competence of the court, and that the application of the Enforcement Directive to a work that does in fact not deserve protection by copyright, could be considered an incorrect application of the law. However, in this case the Court would set aside the agreement on copyright protection between the parties.
A2/SW/HK Limited was represented by BUGGE VALENTIN in the case before the Danish Eastern High Court.
The decision is not yet published. Read more about the decision in our article here.
The USCO publish guidance on copyright registration of works containing AI-generated material
IThe USCO (the United States Copyright Office) has on March 16, 2023, published guidance on copyright registration of works containing material generated by AI.
The document is a ‘Statement of policy’ meant to clarify the USCO’s approach to registration of work containing AI material.
The USCO centers their approach around the ‘Human Authorship Requirement’ which aims to distinguish “whether the traditional elements of authorship in the work…were actually conceived and executed not by man but by a machine.” If a work’s traditional elements of authorship were produced by a machine, the work lacks human authorship, and the Office will refuse to register it.
In the case of AI-generated work the decisive factor is whether the AI contributions are a result of “mechanical reproduction” or of a human author’s “own original mental conception, to which [the author] gave visible form”. The answer – the Office writes – will depend on the circumstances, particularly how the AI tool operates and how it was used.
The USCO then sets out different examples:
The work lacks human authorship, when the AI has received only a prompt, and produced complex works in response. In these cases, the prompts’ function more like instructions to a commissioned artist, since the AI “determines how those instructions are implemented in its output.”
The work contains sufficient human authorship if a human selects, arranges or modifies the AI-generated material in a “sufficiently creative way that (…) meet the standard for copyright protection”. In such cases only the human-authored aspects of the work are protected by copyright.
The Guidance concerns copyright in the US, which has significant differences (such as registered copyright) compared to the European legal systems. However, the USCO’s statement of policy could set forth an example for the further development of principles concerning IP and AI.
The USCO’s Guidance can be read in full here.
Copyright protected shelter was not infringed by another shelter due to different overall impression
The Danish Maritime- and Commercial High Court found on 31 March 2023 that the ‘Norwin-shelter’ sold at Grønagergård Savværk did not constitute an infringement of Morten Rathkes copyright to the ‘Rathke-shelter’.
The Court first stated that it was undisputed that Morten Rathke has the copyright to the Rathke-shelters. The Court then listed the characterizing features of the shelter as: the double-curved roof structure, the shape and position of the entrance at an acute angle in the structure, the platform that goes all the way around the shelter, and the height of the structure.
The Court found that all characteristics of the Norwin-shelter and the Rathke-shelter were alike, except the shape of the door and the height of the shelter. The Court concluded that these differences meant that the overall impression of the two shelters were sufficiently different so that the Norwin-shelter did not infringe the copyright to the Rathke-shelter.
Furthermore, the Court stated that the Rathke-shelter was distinctive, but since the Rathke-shelter, according to Morten Rathke himself, is intended to be a one-off product, the Rathke-shelter had not been sufficiently marketed and was therefore not protected under the Danish Marketing Act.
The decision can be read in full in Danish here.
Marketing Practices Law
The Danish Maritime- and Commercial High Court rules in case between DBU and Power regarding Power’s use of football-imagery in their advertisements
On 20 April 2023 the Danish Maritime- and Commercial High Court ruled in a dispute between DBU (the Danish Football Union) and the retailer Power. Both parties claimed that the other party had breached the Danish Marketing Practices Act.
The Court found that statements made by DBU’s commercial director about Power, criticizing their marketing practices and claiming they had many cases pending before the Danish Consumer Ombudsman, did not constitute a breach of the Danish Marketing Practices Act nor the Danish Trademark law. The Court also rejected DBU’s claim that Power’s advertisements infringed DBU's rights under the Danish Marketing Practices Act to the name and brand of the Danish national football team, including the national football jersey.
The judges found that Power’s advertisements did create associations to football and the 2020 European Championship event in general and therefore also some association to the Danish national football team. However, the Court concluded that the association to the Danish national football team was so weak that it did not constitute commercial exploitation of the team or the team’s goodwill.
The judges also considered that the disputed advertisements were brought in connection with a major national event in the form of the 2020 European Championship, which partially took place in Denmark. The Court found that it is natural for a retail chain such as Power to market itself in connection with major events, just as it usually does during major holidays, such as Christmas.
The decision can be read in full in Danish here.