The legal framework relevant for copyright protection.
According to the 1971 Berne Convention “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression” (so Article 2) is suitable to enjoy copyright protection. However, the Convention leaves it to the national legislation of the adhering countries to define the exact limits of such protection, allowing a certain flexibility as to extending or restricting some of the aspects covered by copyright. The WIPO Copyright Treaty (WCT) of 1996, while extending such protection to other ‘productions’ (e.g. computer programs, databases), clarifies that “copyright protection extends to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such”(so, Article 2).
The struggle to define what is protected and what is not.
This provision – by making clear that under copyright provisions it is not possible to protect ‘ideas’ or ‘concepts’ but only their tangible results of execution – over the years has proved difficult to keep up with progress, in general, and with technological development, specifically, resulting the outcome of such progress and development more and more in ‘original creations’.
When the Courts step onto the playground.
To no one’s surprise the discussion about the limits of copyright protection frequently ended up in lawsuits, leaving it to the Courts to define such limits and to offer some general criteria for addressing the problem.
TV show formats, are they protectable?
We all recall several extremely successful TV shows, broadcasted in many countries all over the World. Most of them are associated with serious legal disputes where the claimants argue that their format had been illegally copied by competitors. The problem has gone to a point where it has been addressed, with serious concern, by the Format Recognition and Protection Association (FRAPA) at an international conference in spring 2018. Already, back in 2017, the issue had been the object of a UK High Court decision (case: Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Anor). Then the Court concluded that under UK law ‘dramatic works’, once recorded, whether in writing or otherwise, qualifies for copyright protection. It then went on stating that a TV format could be considered as a ‘dramatic work’, only if it results characterized by “a number of clearly identified features which, taken together, distinguish the show in question from others of a similar type; and that those distinguishing features are connected with each other in a coherent framework which can be repeatedly applied so as to enable the show to be reproduced in recognisable form”. The specific case was then dismissed by the Court due to the absence of characterizing elements. However, the relevant take away is that a TV show format, meeting certain requirements, can claim copyright protection.
Do recipes qualify for copyright protection?
Now that cooks have turned into ‘TV Stars’ the never-ending issue (in the US the first court cases go back to the beginning of the 20th century) has suddenly heated up again and Courts have been called once more to have their saying on whether recipes may enjoy copyright protection or not. The Judges answer is usually “NO”, save the case when they are associated with a certain degree of ‘creative elaboration’, i.e. when they are contained in a book focusing not only on ‘functionality’ and ‘combination of components’ but also deals the recipe’s geographic or historical origin. However, in certain cases, a recipe offering a solution to a technical aspect may result ‘patentable’ or be considered as a ‘trade secret’ if it proposes the – completely new - use of known substances.
How about a flavor or taste?
In a recent trademark infringement case the Court of Justice of the European Union issued an interesting decision (case no. C-310/17, decision of November 13, 2018). A Dutch cream cheese producer claimed that a competitor, producing a similar product, had infringed on the copyright he owned with respect to the taste of his own cheese and had the case referred to the CJEU to clarify “whether the taste of a food product can be protected” under copyright provisions. The Court found that to benefit from copyright protection “the taste of a food product must be capable of being classified as a ‘work’ within the meaning of the Directive” that to meet such definition “the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity”. On such premise, the Court held that “the taste of a food product cannot be identified with precision and objectivity”, as it “will be identified essentially on the basis of taste sensations and experiences, which are subjective and variable ..”, depending on “amongst other things, factors particular to the person tasting the product concerned, such as age, food preferences and consumption habits, as well as on the environment or context in which the product is consumed”. Hence, the conclusion of the CJEU that the taste of a food product is not eligible for copyright protection.
Can advertisers achieve protection for concepts and ideas used in their marketing campaigns?
In the past it has been difficult for advertisers, practitioners and agencies to efficiently protect concepts and ideas used in their marketing campaigns, being one of the basic principles of IP rights that setting that protection cannot be achieved for 'ideas' but only the tangible results of their execution. Recently the Italian Supreme Court of Cassation has offered some clearance on the problem whether and when ‘creative concepts’ qualify for protection under IP law. The case was brought to court when an ad agency found out that a former client (a company selling tools and products to ‘do-it-yourself’ fans) had re-used one of its concepts elaborated for out-door posters and a product catalogue by transferring the assignment of a further promotional initiative to a different agency but maintaining the ‘idea’ and the basic characteristics of the original campaign. Specifically, the concept in dispute consisted:
a) in presenting a model in the likes of a modern ‘Minerva’ with do-it-yourself tools spilling out of the head,
b) in a headline which – playing around with the advertiser’s business name ‘Do it Yourself’ – addressed potential clients with the slogan “Want to do it your own way? Do it Yourself does it for you”.
The agency who had authored the original campaign claimed for illicit use of its creative ideas and for damages compensations. The First Instance Court found plaintiff’s allegations as grounded and therefore accepted the claims. So, did a Second Instance Court, on appeal. However, the advertiser insisted in his court action and brought the case before the Italian Supreme Court arguing that the previously accessed Courts had erred in considering the defendant’s work as ‘original’ and ‘creative’, as such capable of benefitting of protection under IP law. The Supreme Court disagreed on such argument finding (in its decision no. 24062 of October 12, 2007) that the elements of ‘creativity’ and ‘originality’ are present – even when a work consists of simple ideas or basic concepts, widely known as part of the intellectual capital of certain sector – any time they are organized in an ‘autonomous’ and ‘personal’ way (which the lower courts had assessed – by proper reasoning - being the case, an evaluation the Supreme Court, competent only on reviewing the legality of the earlier decisions, was not allowed to overcome).
How and when Copyright protection may be achieved for “productions in the literary, scientific and artistic domain” is not always a simple issue to define. The evaluation will frequently be left to a case-by case assessment of the Courts, ‘standard’ that requires sound knowledge of IP issue to avoid legal trouble.