alai international congress 2016 · law definition. the scope of the term ... appearance of the...

ALAI International Congress 2016

Rome, 14-16 settembre 2016 - Roma eventi Fontana di Trevi

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“Applied Arts under IP Law: The Uncertain Border between Beauty and Usefulness”

COUNTRY REPORT: The Czech Republic AUTHOR OF THE REPORT: Pavel Koukal, Faculty of Law, Masaryk University, [email protected] 31 May, 2016



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1) APPLIED ARTS a) Is the term “Applied Arts” used in the Copyright Law and/or in other legal provisions in your country? Generally, the term “applied arts” (“uzite umeni”) covers two categories of intangible assets - “copyrighted works” and “design” (see further). However, the term “applied art” is in the legislation explicitly used just in the Art. 2 para. 1 Copyright Act

1 which defines “copyrighted works”. Among other kinds of copyrighted works (literary works, musical

works, dramatic works, choreographic works etc.), works of applied art are considered as a sub-category of copyrightable objects. Works of applied arts include items such as toys, puppets, glass products, porcelain and ceramics, medals, furniture, carpets, jewellery works, tools etc. which meet daily needs and simultaneously affects the human sense for beauty.

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If so, is there a legal definition of this term in your law? Please quote the relevant statutory provision and/or case law definition. The scope of the term “applied arts” itself is not defined neither in the statutory provision nor in the case-law. Czech legal doctrine

3 concludes that “applied arts” include two types of intangible assets. The first category is

represented by works which can be generally considered as a design. Such creations usually fulfil the definition of the industrial design within the meaning of Art. 2 (a) Industrial Designs Act

4. They are result of a human creative activity

and consist of the combination of technical and aesthetic features. The second category of “applied arts” are “works of applied arts” which are protected as artistic works within the meaning of Art. 2 para. 1 Copyright Act. The division between these two categories of “applied arts” is based on the interpretation of Art. 7 para. 4 Berne Convention which distinguishes between the concept of a “simple” works of applied arts and works of applied arts protected as “artistic works”. It is assumed that every product of human creation can be described as a “work of intangible nature” (Art. 2631 et seq. Civil Code

5). Depending on the degree of originality which is embodied in the

object, the work may be protected as an industrial design (if it fulfils conditions of novelty and individual character) or as a copyrighted work (if the creative outcome is unique). Cumulative protection which is established by Art. 17 EU Design Directive,

6 is permitted (see later).

Another possible form of protection of “applied arts objects” is the unfair competition stipulated by the Civil Code (see further). b) What is included in the scope of the term “applied arts” in your law: 1. Copyright protection of applied arts Works of applied arts are a subset of copyrighted works. Works of applied arts include item such as toys, puppets, glass products, porcelain and ceramics, medals, furniture, carpets, jewellery works, tools etc. which meet daily needs and simultaneously affects the human sense for beauty (see Fn2). Only three-dimensional objects are traditionally recognized as works of applied arts. With the reference to the statutory definition of copyrighted works (Art. 2 para. 1 Copyright Act) legal doctrine makes a distinction between applied arts, architectural works and two dimensional objects such as graphic design or photography. Reason for such distinction arises from the different legal regulation of each category of copyrighted works (e.g. architectural works are not eligible for the private-use exception - Art. 30 para. 3 Copyright Act), limitations of economic rights and different requirements on the level of originality (different originality requirements on photographs, see below). 2. Applied arts in the framework of the industrial property protection (industrial designs, trademarks)

1 Consolidated version of the Act No. 121/2000 Coll. of 7 April 2000 on Copyright and Rights Related to Copyright

and on Amendment to Certain Acts (the Copyright Act), as amended. English translation available [online] at: http://www.mkcr.cz/assets/autorske-pravo/Act_no_121_2000.doc 2 Telec/Tůma, 2007, p. 40; Koukal, 2012, p. 97. 3 Ibid. 4 Act No. 207/2000 Coll. of 21 June 2000, on the Protection of Industrial Designs and the Amendment to Act No. 527/1990 Coll., on Inventions, Industrial Designs and Rationalisation Proposals, as amended. English translation available [online] at: https://www.upv.cz/dms/pdf.../207_2000.../207_2000_A_CS.PDF. 5 Act. No. 89/2012 Coll. of 3 February 2012, Civil Code. English translation [online] available at: http://obcanskyzakonik.justice.cz/index.php/home/zakony-a-stanoviska/preklady/english. 6 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.



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If applied art is embodied in an item which fulfils definition of the industrial design7 then it might be protected both by

national registered industrial design (Art. 4 Industrial Designs Act) or registered or unregistered Community design (Art. 1, 11, 12 Community Designs Regulation

8), depending on the compliance of the protectable object with the

requirements of the industrial designs protection (novelty, individual character, conformity with the good morals and public order).

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If the applied art meets requirements of the trademark protection (Art. 1, 4 and 7 Trademark Act)10

- especially the distinctiveness criterion - then it may be protected as three-dimensional trademark as well. However, according to the decision of the CJEU in Henkel KGaA v. OHIM (C-456/01 P and C-457/01 P) and Procter & Gamble Company v. OHIM (C-468/01 P and C-472/01 P) and the similar case-law of the Industrial Property Office of the Czech Republic, the mere shape of the product is not perceived by consumers as a mark until it has some remarkable (verbal or graphic) element. The shape of the product must be sufficiently strange, unusual and contrasting in order to obtain distinctiveness (this fact must be proved to the Industrial Property Office in the course of registration proceedings). 3. Unfair competition protection The unfair competition protection does not constitute absolute (erga omnes) rights but only relative rights which may lead to the formation of special claims between the parties (inter partes) of the dispute. It should be especially noted that the right of protection against unfair competition cannot be transferred (it is not a proprietary right). On the other hand claims which arise from the breach of the unfair competition (damages, unjust enrichment, and monetary satisfaction) may be assigned to another person (assignee). Under the framework of the unfair competition the appearance of the product may be protected especially by the tort of likelihood of confusion (Sec. 2981 Civil Code) or the parasitic exploitation of the competitor´s reputation (Sec. 2982 Civil Code).

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Categories of applied arts protection: - industrial design (registered and unregistered) - protected by national registered industrial designs or EU registered or unregistered Community designs (industrial property protection); - graphic design - protected by industrial designs (industrial property protection) or as a graphic work

(copyright protection); - fashion design - usually protected by unregistered Community designs (industrial property protection) or as

work of applied arts (copyright protection); - interior design - usually protected as work of applied arts (copyright protection); - decorative arts - usually protected as work of applied arts (copyright protection); - engineering design - usually protected by industrial designs protection (industrial property protection); - architecture - protected as architectural works (copyright protection); - photography - protected as sub-category of copyrighted works (the uniqueness of the creative outcome is not

required; for the copyright protection of photographs it is sufficient if the photograph is original in the sense that it is the author’s own intellectual creation - Art. 2 para. 2 Copyright Act).

Explain and quote/summarize relevant statutory and/or case law for each of the above. Whenever feasible, please attach the picture of the work/object considered in the case (or the relevant hyperlink). There is almost no relevant case-law on any of above mentioned categories. The only-one publicly known court decision concerns dispute over the unauthorized use of the logo between a designer and the company.

12 The designer won the competition organized by the Design Centre of the Czech Republic in 2004

7 “Industrial design means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation” (Art. 2a Industrial Designs Act). 8 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs. 9 Koukal, 2015, p. 7. 10 Act. Act No. 441/2003 Coll. of 3 December 2003 On Trademarks and on amendments to Act No. 6/2002 Coll. on judgements, judges, assessors and state judgement administration and on amendments to some other Acts (Act on Courts and judges) in the wording of later regulations, as amended. English translation [online, available at: https://www.upv.cz/dms/pdf.../441_2003.../441_2003_A_CS.PDF. 11 Ondrejová, 2014, p. 1770, 1813-1822. 12 Nosal. v. Narex Bystřice, Decision of the High Court in Prague No. 1 Co. 39/2012. Graphical symbol which was subject matter of the lawsuit, can be found [online] at: http://www.designcabinet.cz/vyhrany-soudni-spor-mezi-designerem-a-firmou-neni-sroubovak-jako-sroubovak-rozhovor-s-advokatkou-judr-sonou-illner-pajerovou.



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which had been proclaimed by the NAREX Bystrice Company. The aim of the competition was to find a new shape and visual design of the screwdrivers handle. The winner of this competition Krystof Nosal had chosen black-yellow design with the graphical symbol in the form of a letter S which had not only aesthetical but also ergonomic purpose. The Company and designer entered into a contract for creation of the design and its use (license), including the reward. According to the contract it was possible to use the logo only on a specified type of screwdrivers. Later the designer found that the company was also using the design on other types of products (micro-screwdrivers designed in a different shape with the same graphical symbol). The author filed a lawsuit at the Regional Court in Prague after unsuccessful negotiations. The plaintiff argued that the use of copyrighted design had been unauthorized, since the contract between parties was allowing just the use of the logo on one type of screwdrivers. The court had to assess whether the logo is copyrighted work in the sense of Art. 2 para. 1 Copyright Act. In particular, the court dealt with the defendant’s objection that the work is not sufficiently original (the Copyright Act stipulates that copyrighted work has to be unique

13 outcome of the author’s creative activity). The Court of the First Instance had dismissed the

action, noting that while the work was a result of designer’s creative activity it was not an unique creation belonging to the category of artistic works. However, the Court of Appeal (High Court in Prague) had taken the experts' reports into account and concluded that the plaintiff’s work was an unique creative outcome (and therefore copyrighted work) which had been used without author’s permission. For this reason the court awarded the plaintiff compensation based on the unjust enrichment claim. Quote any legal provisions and/or case law highlighting the relationship and/or distinction between:

applied arts and fine arts Art. 2 para. 1 Copyright Act defines works of applied arts as a special category of copyrighted works. No other conditions are required. Within the framework of the copyright protection there is no difference between applied arts and fine arts. However, if the work of applied arts is not sufficiently original, then the copyright protection is excluded and the work shall be protected just by industrial designs regime (see above).

applied arts and technical solutions for products/methods or principles of construction According to Art. 2 para. 6 Copyright Act the copyright protection does not cover protection of technical solutions. Similarly, Art. 3 para. 2 (b) Patent Act

14 stipulates that aesthetic creations are not considered as inventions. Because of

that the overlap of protection between applied arts and protection of technical solutions is not permitted. Functional or technical features may be protected by patent or utility designs law. Neither industrial designs law (Art. 7 para. 1 and 2 Industrial Designs Act) nor copyright provide protection of technical aspects of a product.

applied arts and products of craftsmanship None.

applied arts and the role of computer aided design (CAD software) The general copyright protection of software is stipulated by the Art. 65-66 Copyright Act. 2) TYPES OF PROTECTION APPLICABLE TO APPLIED ARTS a) What forms of protection are granted by law or case-law in your country for each of the items under 1.b) above? - copyright - granted (Art. 2 para. 1 Copyright Act); - industrial designs (registered and unregistered) - granted [Art. 2 (a) Industrial Designs Act; Art. 1 para. 2, Art.

11 and 12 Community Designs Regulation]; - trademarks - granted (Art. 1 Trademark Act; Art. 4, Art. 9 para. 3, Art. 45 EU Trademark Regulation

15);

- patents/utility models - not granted (aesthetical features are excluded from patent protection - Art. 3 para. 2b Patents Act).

13 “The subject matter of copyright shall be a literary work or any other work of art or a scientific work which is a unique outcome of the creative activity of the author and is expressed in any objectively perceivable manner including electronic form, permanent or temporary, irrespective of its scope, purpose or significance” (Art. 2 para. 1 Czech Copright Act). 14 Law No. 527/1990 Coll. of 27 November 1990 On Inventions and Rationalisation Proposals, as amended. English translation [online], available at: www.upv.cz/dms/pdf_dokumenty/.../527_1990_AJ_CS.pdf. 15 Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (EU) No. 2015/2424.



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- unfair competition - granted (Art. 2981, 2982 Civil Code); - other – none. b) Can more than one form of protection be granted to one product? Under which conditions? Cumulatively or exclusively? The cumulative protection is possible and relevant provisions of the domestic law correspond with the requirements of Art. 17 EU Design Directive. The cumulative protection may be classified as “partial overlap”.

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Sec. 1 Industrial Designs Act provides: “The protection given to the identical objects according to the author, civil, trademark rights, or to another legal regulation, is not affected by provisions of this Act”. Similarly, Copyright Act governs that the subject matter of copyright protection shall not be excluded from the protection stipulated by other legislation (Art. 105 Copyright Act). When interpreting Art. 1 para. 2 Industrial Designs Act the key question is what does the term "identical objects" mean. "Identical objects" in the context of the decision of the CJEU in Flos v. Semeraro (C-168/09) are registered industrial designs which correspond to the definition of an intangible asset laid down in another laws (i.e. in Copyright Act). It is important to point out that the copyrighted work should be a unique result of creative activity (not only an outcome having just “individual character” within the meaning of the industrial designs legislation). If we compare a set of objects which are unique and set of objects having individual character, we conclude that every object which is unique, has the individual character. A unique item by its nature will always differ from the existing design corpus in a way that it makes a different overall impression on the informed user (Art. 5 para. 1 Industrial Designs Act). Sec. 1 para. 2 Industrial Designs Act therefore stipulates that the set of objects having individual character and satisfying the condition of novelty, complying with good morals and public order, may also be protected by the copyright, but only in those cases, where this object meets stricter requirements of the copyright protection (i.e. this object is an unique outcome of human creative activity). Certain exceptions may be applied to photographs, because the Copyright Act requires just the originality

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their protection. c) Specify for each form of protection:

Copyright

the types of rights granted

Based on the absolute rights principle, copyright grants: - exclusive moral rights – the right to decide about publishing the work (divulgation right), the right to claim authorship (attribution right), the right to the protection of integrity of the work (integrity right). Moral rights are non-waivable and non-transferable (Art. 11 Copyright Act). - exclusive economic rights (Art. 12-23 Copyright Act) – the right to use the work (the right to reproduce the work, to distribute, rent, lend, exhibit an original or a copy of the work and to communicate the work to the public; the list of uses is non-exclusive). The communication of the work to the public contains: the right to perform the work, the right of transmitting the performance of the work, the right to broadcast the work, the right to retransmit of the broadcasting of the work, the right of performing the broadcasting of the work. Economic rights may not be waived by the author and they are non-transferable (the only possible disposal of these rights is granting a license). They cannot be subject to the levy in execution, but they are inheritable (Art. 26 para. 1 Copyright Act).

limits and exceptions Exceptions and limitations are stipulated in Art. 29-39 Copyright Act. Copyright exceptions and limitations shall apply only in certain special cases specified in the law and only if the use of the work in such special cases shall not conflict with the normal exploitation of the work and shall not unreasonably prejudice the legitimate interests of the author (so called three-

16 Telec/Tůma, 2007, p. 844; Koukal, 2012, p. 48, 107; Koukal, 2015, p. 6. 17 “A photography or a work produced by a process similar to photography, which are original in the sense that it is the author’s own intellectual creation shall be protected as a photographic work” (Sec. 2 para. 2 of the Copyright Act). Telec/Tůma, 2007, p. 42.



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step test incorporated into the national law by Art. 29 para. 1 Copyright Act). Economic rights related to the works of applied arts are specifically limited by Art. 38d Copyright Act.

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duration of the protection

Moral rights shall expire upon the death of the author (Art. 11 para. 4 Copyright Act). Duration of economic rights is stipulated for the time-period of life of the author and 70 years after his death (Art. 27 para 1 Copyright Act).

threshold requirements for protection

To be protected by copyright, a work has to be a unique outcome of the creative activity of the author expressed in any objectively perceivable manner (Art. 2 para. 1 Copyright Act). For works of applied arts the higher level of creative input is not required.

formalities to obtain the protection (if any)

There are no formalities to obtain copyright protection (the protection starts when the work is materialized in an objectively perceivable form).

original owner of the right

The author of a work is the original owner of the copyright. Concerning employees’ works the employer is entitled to exercise economic rights (Art. 58 para. 1 Copyright Act). Concerning computer programs, databases, cartographical works, and collective works the commissioner shall be deemed as an employee and is entitled to exercise economic rights even if the work has been created outside the framework of the course of employment.

who has the right to sue

The author as the original holder or his/her heir (Art. 40 Copyright Act);

a person who is entitled to exercise the rights (employer in case of employee work or a commissioner in specified cases);

a licensee who was granted an exclusive license (Art. 41 Copyright Act).

treatment of foreigners

With regards to foreigners the rule of national treatment (Art. 3 Berne Convention) and the “most-favoured-nation treatment” rule (Art. 4 TRIPS Agreement) is applied. On EU citizens the principle of non-discrimination on grounds of nationality applies (Art. 18 TFEU). However, copyright in the works of foreign nationals shall not subsist for longer term than copyright in the state of origin of the work (“shorter-term rule”; Art. 107 para. 3 Copyright Act).

any other element affecting/determining the protection

None.

Industrial design


National registered industrial designs - exclusive rights are granted to the design holder (owner) upon the registration; exclusive rights cover the right to use design and to prevent any third party not having holder’s consent from using it (Art. 19 Industrial Designs Act). Registered Community Designs - exclusive rights are granted to the design holder upon the registration; registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it (Art. 19 para. 1 Community Designs Regulation). Unregistered Community Designs - the protection is granted informally upon the fact that the design was first made available to the public within the Community (Art. 11 para. 1. Community Designs Regulation).

limits and exceptions National registered designs - limitations and exceptions are stipulated in Art. 23-25 Industrial Designs Act: (i) acts done by the third persons for non-commercial purposes, (ii) acts done by the third persons for experimental purposes, (iii) acts done by the third persons for the purposes of citation or of teaching; (iv) use of the design in respect of: (iv-a) the equipment on ships and aircrafts registered in another country when these temporary enter the territory of the Czech Republic, (iv-b) the importation of spare parts and accessories in the Czech Republic for the purpose of repairing such craft, (iv-c) the execution of repairs of such craft, (v) exhaustion of rights (national and EU exhaustion of rights) and (vi) right of previous user (rights conferred by a registered industrial design shall not apply to third persons being able to prove that before the date of priority they have commenced or have carried out serious

18 “Copyright is not infringed by anybody (who): a) leases, lends or exhibits the original or reproduction of a work of applied art expressed in its applied form ...” (Art. 38d Copyright Act).



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preparations to use the contested industrial design on the territory of the Czech Republic, if the prior industrial design was created independently on the registered industrial design). Registered and unregistered Community designs - almost the same principles are stipulated by the Community Designs Regulation as with respect of national registered designs: limitation of rights (Art. 20), exhaustion of rights (Art. 21), rights of prior use (Art. 22).


National registered designs - the protection of a registered industrial design lasts 5 years from the date of filing the application; the protection term can be renewed each time for 5 years up to 25 years (Art. 11 Industrial Designs Act). Registered Community designs - ibidem (Art. 12 Community Designs Regulation). Unregistered Community designs - an unregistered community design shall be protected for a period of three years as from the date on which the design was first made available to the public within the Community (Art. 11 para. 1 Community Designs Regulation).

threshold requirements for protection, e.g. originality, novelty, distinctiveness

National registered designs - an industrial design shall be protected, if it is new and has individual character and if it is not conflicting with public policy or with principles of morality (Art. 2-5, 8 Industrial Designs Act). Registered and unregistered Community designs - ibidem (Art. 4 para. 1, Art. 9 Community Designs Regulation).


National registered industrial designs and registered Community designs are protected upon the registration (the applicant has to pay a registration fee as well); unregistered Community design protection is informal regime of IP protection (based on the first making of the design available to the public).


National registered industrial designs - right to the industrial design shall belong to the designer or his successor in title (Art. 12 para. 1 Industrial Design Act); the original holder of the design rights may be a different subject from the designer (even a legal person); if the creation of industrial design was created in the course of employment by the employee, the right to the industrial design passes to the employer (Art. 13 Industrial Design Act). Registered and unregistered Community designs - ibidem (Art. 14 Community Designs Regulation).


National registered industrial designs, registered Community designs - pursuant to Art. 2 para. 1 Enforcement of Industrial Property Rights Act

19, the design owner or a licensee is

authorized to enforce rights; the licensee may enforce the rights only upon the consent of the design holder; the consent shall not be required where the holder failed to commence the proceedings on the infringement himself within 1 month from the receipt of the licensee’s notification of the infringement (with regards to Community Designs the holder has to begin with enforcing rights “within an appropriate period” and only if the licensee was granted exclusive license - Art. 32 para. 3 Community Designs Regulation). Unregistered Community designs - in proceedings in respect of an infringement action or an action for threatened infringement of an unregistered Community design, the Community design court shall treat the Community design as valid if the right holder offers the proof that the conditions laid down in Art. 11 have been met and indicate what constitutes the individual character of his Community design (Art. 85 para. 2 Community Designs Regulation).


According to Art. 2 Paris Convention and Art. 3 TRIPS Agreement foreigners of other Member states of this Convention are treated equally as nationals. Similarly, the rule of the “most-favoured-nation treatment” (Art. 4 TRIPS Agreement) is applicable to foreign nationals. EU citizens are protected by the principle of non-discrimination on grounds of nationality (Art. 18 TFEU). However, persons who do not have a place of residence or headquarter on the territory of the Czech Republic, must be represented by a patent attorney or solicitor during the proceedings before the Industrial Property Office (Art. 45 Industrial Designs Act).

19 ACT No. 221/2006 Coll. of April 25, 2006 on Enforcement of Industrial Property Rights and on the Amendment of Industrial Property Protection Acts, as amended. English version [online], available at: https://www.upv.cz/dms/pdf.../221_2006.../221_2006_A_CS.PDF.



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None.

Trademarks20


National trademarks - the trademark owner has the exclusive right to use the mark in connection with goods or services for which it is protected (Art. 8 Trademark Act); the

trademark owner is also entitled to use the symbol ®.

EU trademarks - EU trademark protection provides substantially the same exclusive rights (Art. 9 EU Trademark Regulation) for the whole territory of the EU (unitary character of the trademark). well-known trademarks - provide exclusive rights which are vested to the owner of trademarks which are well known in the territory of the Czech Republic within the meaning of Art. 6bis Paris Convention and Art. 16 TRIPS Agreement.

limits and exceptions National trademarks - pursuant to Art. 10 Trademark Act the trademark owner is not entitled to prohibit third persons from using in the course of the trade (a) their name and surname, corporate name or name or address, (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, (c) a sign where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided they use them in accordance with honest commercial practices, good morals and competition rules; the owner of a trademark has to tolerate in the course of trade the use of an identical or similar sign, where the rights to this sign were created prior to the date of filing the application for registration and the use of that sign is in accordance with the laws of the Czech Republic; national trademarks are subject to the national and EU exhaustion principle (Art. 11 Trademark Act) and the prior use limitation (Art. 12 Trademark Act). EU trademarks - limitations and exceptions on EU Trademark are regulated in a substantially similar manner (Art. 12, 13 EU Trademark Regulation).


National trademarks, EU trademarks - trademark registration is valid for 10 years from the date of filing; it can be renewed on the request of the trademark owner for another 10 years (Art. 29 Trademark Act, Art. 46 EU Trademark Regulation).


National trademarks - as a trademark a sign capable of being represented graphically may be registered, provided that such sign is capable of distinguishing goods or services of one undertaking from those of another undertakings (Art. 1 Trademark Act); the Industrial Property Office during the registration procedure examines if the sign is not conflicting with the absolute and relative grounds for refusal of protection (Art. 4 and 7 Trademark Act). EU trademarks - an EU trademark may consist of any signs provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b) being represented on the Register of European Union trademarks in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor (Art. 4 EU Trademark Regulation); the EUIPO during the registration procedure examines if the sign is not conflicting with the absolute and relative grounds for refusal of protection (Art. 7 and 8 EU Trademark Regulation).

formalities to obtain National trademarks, EU trademarks - trademark protection is grated upon the registration

20 International trademarks, which are registered under the Madrid Agreement or the Madrid Protocol with effects for the Czech Republic will not be subject of further analysis since these international agreements stipulate primarily procedural rules on the registration of international trademarks, length of protection, renewal of international trademarks, or their transfer. Substantive provisions are governed by the Trademarks Act.



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the protection (if any) in the Register and a payment of a registration fee. Well-known trademarks - informal protection is provided under the condition that the sign has become well-known on the territory of the Czech Republic [Art. 2 (d) Trademark Act].


National trademarks, EU trademarks - the owner of the trademark is a person who has successfully registered the trademark; the owner proves his rights with an extract from the trademark Register or by means of a certificate of registration (Art. 8 Trademark Act; Art. 17 para. 8 EU Trademark Regulation); where an EU trademark is registered in the name of the agent or representative of a person who is the owner of that trademark, without the owner’s authorization, the latter shall be entitled to oppose the use of his mark by his agent or representative if he has not authorized such use, unless the agent or representative justifies his action (Art. 11 EU Trademark Regulation). Well-known trademarks - the owner of the well-known trademark must prove the mark has become widely known among relevant consumers’ sector; generally, the substantial reputation in the minds of consumers must be established in every proceeding where rights from the well-known trademark are to be enforced

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National trademarks, EU trademarks - pursuant to Art. 2 para. 1 Enforcement of Industrial Property Rights Act, the trademark owner or a licensee is authorized to enforce rights. The licensee may enforce the rights only upon the consent of the trademark holder. The consent shall not be required where the holder failed to commence the proceedings on the infringement himself within 1 month from the receipt of the licensee’s notification of the infringement (with regards to EU trademarks the owner has to begin with enforcing rights “within an appropriate period” and only if the licensee was granted exclusive license - Art. 22 para. 3 EU Trademark Regulation).


According to Art. 2 Paris Convention and Art. 3 TRIPS Agreement foreigners of other Member states of this Convention are treated equally as nationals. Similarly, the rule of the “most-favoured-nation treatment” (Art. 4 TRIPS Agreement) is applicable to foreign nationals. EU citizens are protected by the principle of non-discrimination on grounds of nationality (Art. 18 TFEU). However, persons who do not have a place of residence or headquarter on the territory of the Czech Republic, must be represented by a patent attorney or solicitor during the proceedings before the Industrial Property Office (Art. 46 para. 3 Trademark Act).


None.

Patent/utility models Aesthetical features are excluded from patent protection (Art. 3 para. 2b Patents Act); this principle applies on the protection of utility designs as well (Art. 2 Utility Models Act).

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Unfair competition


The unfair competition protection does not constitute absolute (erga omnes) rights but only relative rights which may lead to the formation of special claims between the parties (inter partes) of the dispute; the authorized person is entitled to request the competitor to refrain from competing unfairly or to remove a defective state; he/she may also request adequate satisfaction, compensation for damage and restitution of unjust enrichment (Art. 2988 Civil Code).

limits and exceptions Unfair competition does not provide a right to restrict activities which are carried out outside the course of business or by a person whose interests are not competing with the claimant.


No duration is specified by the law; as soon as the general clause of unfair competition requirement is fulfilled (Art. 2976 para. 1 Civil Code) the entitled person may pursue unfair

21 Horáček/Biskupová/de Korver, 2015, p. 14. 22 Act No. 478/1992 Coll. of 24 September 1992 on Utility Models, as amended. English translation [online] available at: http://www.wipo.int/wipolex/en/text.jsp?file_id=126135.



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competition claims.


The general clause of unfair competition prohibits acts carried out in business relations which are conflicting with good morals of competition and causing harm to other competitors or customers (Art. 2976 para. 1 Civil Code). The Civil Code further defines (Art. 2976 para. 2) an open list of business activities which are considered as unfair: misleading advertising; misleading identification of goods and services; creating a likelihood of confusion; free-riding on the reputation of an enterprise, product or services of another competitor; bribery; disparaging a competitor; comparative advertising; breach of business secrets; unsolicited advertising; and threat to health and the environment.


None.


There exist no “owner of rights” since the unfair competition protection provides just the liability based (inter-partes) form of protection.


Usually, unfair competition claims may be enforced by a competitor whose product, packaging or performance was imitated (Art. 2981 para. 3 Civil Code), or his product reputation was abused (Art. 2982 Civil Code).


According to Art. 2 with the reference to Art. 10bis Paris Convention the principle of a national treatment applies; EU citizens are protected by the principle of non-discrimination on grounds of nationality (Art. 18 TFEU).


None.

3) 3D PRINTING 1) Overview

a) Is there reason to distinguish, in legal terms, depending on whether the three-dimensional object is reproduced by an additive manufacturing process or by a material-removing manufacturing process? Do you believe that additive manufacturing requires a special legal treatment? No, the Czech copyright law has been traditionally independent

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works and their utilizing. For these reasons it is not reasonable to distinguish between the adding and removal processes.

b) Are there, in your country, public or private initiatives aiming at supporting and legally framing the printing of three-dimensional objects? If this is the case, can you summarize the main lines and conclusions? In the Czech Republic there is no special legislation either for 3D printing processes or for the protection of their

outcomes. There are no attempts to pass any new legislation on 3D printing industry as well. Currently, 3D printing is a

subject matter of academic debates24

which aim to subsume 3D printing processes and their outcomes under the

framework of existing regimes of protection.

c) Several different steps can be distinguished in the chain of 3D printing: modelling/scanning (by acquisition device or CAD software), digital distribution of 3D models, printing of three-dimensional objects. Do you believe that there are other important steps requiring specific legal analysis? Yes. Probably the most important issue which requires detailed legal analysis is the process of collection, retention, distribution and re-use of the data which were scanned or developed in order to create the immaterial 3D object and later its material (printed) copies (see later). 2) 3D modeling / Creation of the file that will allow, downstream, the reproduction of an object with a 3D printing

process

23 Telec/Tůma, 2007, p. 24; Koukal, 2012, p. 105. 24 E.g. workshop “Legal aspects of 3D printing” organized at the Faculty of Law, Masaryk University in October 2014 (http://www.muni.cz/research/publications/1210776?lang=en) which was focused on the designs, patents, copyright and competition protection of 3D printing processes and their outcomes. The key discussion was held on the possible amendment of Art. 25 Copyright Act which would introduce a private copying levy on 3D copies, cartridges, copiers and other items which are currently subjected to the equitable remuneration with regards to 2D objects [see argumentation at 3-3c) below].



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a) If a pre-existing (two or three-dimensional) object is scanned/digitalized or modelled, must we consider that the person who carried out the digitalization or modelling can claim rights to the file? If so, under what conditions? The answer depends on the condition if the scanned object itself is protected by any kind of exclusive rights. For example if the work itself (e.g. architectural or sculptural work) is protected by copyright, then the data file is protected by the copyright as well. In this regard the same principles as towards 2D scanning should be applied. On the other hand, digitalization as such, or digitalization of historical objects (works in public domain) cannot be regarded as a process which gives rise to the exclusive rights. The only exception is the sui-generis protection of databases (Art. 88 ff. Copyright Act).

25 If the person who has compiled significant amount of data from large number of scanned objects

and arranges them in such a way that they form a database, then this person is considered to be a “maker of the database” (Art. 89 Copyright Act) who has exclusive right to extraction or re-utilization of the entire content of the database or of its substantial part, and the right to grant to another person the authorization to execute such a right (Art. 90 para. 1 Copyright Act).

b) Is the modeling and the 3D scanning/digitalization of an object for private use allowed by the law in your country, and if so under what conditions? Distinguish, if necessary, according to the nature of the modelled or scanned/digitalized object (work of the spirit, model, invention ...) or the source of the used object. What about acts made for non-private use?

1. Copyrighted works

In general, the application of the private-use exception has to comply with the strict conditions of the three-step test as is stipulated by Art. 9 para. 2 Berne Convention and Art. 29 Copyright Act.

26 Similarly to the findings of French courts,

27

also in the Czech Republic the private-use of copyrighted work is not considered as a “private right” of the user, but as an exception from the copyright protection.

28 The private-use exception is applicable only on published works (“works

that have been made public”) and may not harm the legitimate expectations and aims of the author. The copyrighted work may be used under the private use exception by a natural person for non-commercial purposes of this person and his/her closest relatives (family).

29

Private use exception may not be applied (Art. 30 para. 3 Copyright Act) on computer programs (back-up copy is permitted), architectural works and fixation of an audio-visual work in a cinema during the performance.

Private-use exception is allowed only upon the condition that the copy is made by the person, whose personal needs (or needs of his/her family) are to be satisfied (i.e. the user cannot use a third person for making the copy). The term "personal needs" or “internal needs”

30 is a strictly limited concept. Making copies for personal needs may be done only

in the context of "personal privacy”. Therefore, any other use of such a copy, e.g. sale, sharing, offering for these purposes, public performance, and rental or lending would constitute a breach of the copyright.

Concerning the use of the copyrighted object for non-private use the user must have the author's consent; consent provided by a collecting society or the use must be justified by statutory licenses (Art. 31-39 Copyright Act).

2. Registered or unregistered industrial designs

In general, rights of national registered industrial designs apply only to commercial use of the protected subject-matter (Art. 19 Industrial Designs Act). The rights conferred by a design shall not be exercised (Art. 23 para. 1 Industrial

25 Telec/Tůma, 2007, p. 717 ff.; Kohutová, 2013, p. 124 ff. 26 “(1) Copyright exceptions and limitations shall only be applied in certain special cases specified herein and only if the use of a work in such special cases shall not conflict with the normal exploitation of the work and shall not unreasonably prejudice the legitimate interests of the author. (2) Free uses and compulsory licences, except official and reporting licences (Article 34), licence for a school work (Article 35 3), licence for temporary reproductions (Article 38a), licence for photographic portrait (Article 38b) and licence for immaterial accessory exploitation of the work (Article 38c), shall only apply to works that have been made public” [Art. 29 Copyright Act]. 27 Perquin v. Films Alain Sarde (TGI Paris, 3e ch., 2e sect., 30 avril 2004); quoted from Sterling, 2008, p. 523. 28 Telec/Tůma, 2007, p. 346. 29 With respect to the use of copyrighted work for internal use of the legal person see Fn. No. 30. 30 Art. 30a) Copyright Act enables making printed copies on a paper or similar base for the “internal use” of legal persons if an equitable remuneration is paid to the collecting society.



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Designs Act) in respect of: (a) acts done for non-commercial purposes, (b) acts done for experimental purposes, (c) acts done for the purposes of citation or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.

31 The same rules

apply also for the registered or unregistered Community Designs (Art. 20 Community Designs Regulation).

The private use of registered or unregistered designs is therefore permitted. The experimental modelling and scanning of 3D objects is also considered as a permitted use.

3. Trademarks

Private-use of trademarks is generally permitted, because the trademark protection grants exclusive rights just in the “course of a trade/business” (Art. 8 para. 2, Art. 12 EU Trademark Regulation). Use of a 3D trademark for private purposes is therefore generally allowed.

However, scanning or modelling of 3D objects in the course of trade may be prohibited by the owner of a trademark (Art. 8 para. 2 Trademark Act, Art. 9 para. 2 EU Trademark Regulation). The owner of an EU trademark is currently

32

entitled to apply for preventive steps in order to prohibit the potential infringement of his/her rights. This provision may possibly be applied to the process of unauthorized scanning or modelling of trademark protected objects.

Contrary to the industrial designs protection, there are no limitations which would permit the use of a trademark for experimental purposes.

4. Patentable inventions

If the process of the 3D scanning or modelling is protected by a patent, Patent Act provides similar regulation which we can find in regards with industrial designs protection. According to Art. 19 para. 2 Patents Act the rights of the patent owner shall not be infringed by acts done for non-commercial or experimental purposes. Experimental scanning or modelling is therefore possible even in the course of trade. However, such experimental use of the patented invention may not conflict with the indirect use of an invention (Art. 13a Patents Act).

c) When modelling or three-dimensional scanning for private use is permitted by the law (application of general law or special text), is this accompanied by a compensation mechanism in favour of the right-holders of the printed object? If so, can you specify the methods of collection and distribution? This issue has been subjected to the discussion at the workshop “Legal aspects of 3D printing” organized by the Faculty of Law, Masaryk University in October 2014 (see Fn 24). Currently, there is no remuneration provided to the authors of 3D objects which are scanned or modelled. The application of the current model (Art. 25 Copyright Act) which is used for charging 2D printed copies, copiers, cartridges, data carriers etc. with a private copying levy and their subsequent distribution by collecting societies is generally conceivable. However, the major opinion of the workshop participants was that such a charging should apply only when it was proved that copyrighted objects were scanned or modelled without the permission of copyright holders. Workshop participants were rather in favour of the conclusion that the application of private copyright levies should not be based on the principle of probability (in the sense that the use of copyrighted work for private purposes might occur), but rather on a general experience that in the process of 3D scanning and modelling there is a significant number of copyrighted works used for personal use. In other words, there must be real threat that, thanks to 3D printing, economic interests of right holders are undermined and 3D printing causes them real damage. Given the current state of 3D printing processes, such situation has not happened in the Czech Republic yet. 3) Dissemination of 3D models / Making available of files for 3D reproduction

a) Are there in your country websites legally distributing 3D files, for free or for a fee? If so, can you specify the business model and the legal model (licensing models, liability, etc.)?

31 Another exception is the use of registered design in the equipment on ships and aircraft registered in another country when these temporary enter the territory of the Czech Republic; the importation of spare parts and accessories in the Czech Republic for the purpose of repairing such craft; the execution of repairs of such craft (Art. 23 para. 2 Industrial Designs Act). 32 See the wording of the Art. 9a EU Trademark Regulation.



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Users who want to share their 3D creations usually use foreign websites such as http://www.thingiverse.com/ or http://www.shapeways.com/. Concerning the websites located in the Czech Republic see the description presented below (3-4c).

b) Are there in your country platforms allowing users to share 3D files? If so, do these platforms raise legal problems (distribution licensing models, unauthorized making available ...)? Has there been any litigation? To your knowledge, did the right-holders conclude contracts with this type of platforms to authorize the making available of models created by users? If so, how the question of moral rights has been perceived. As has been stated above, the users of 3D objects use platforms which are usually available at foreign websites. 4) 3D printing / Reproduction of a work, a model or any other object protected by intellectual property rights

a) Is in your country the 3D printing of an object for private use authorized by law (special law or application of general law), and if so under what conditions? Distinguish, if necessary, according to the nature of the modelled or scanned object (work of the spirit, model, invention, etc.) or the source of the file used. What about acts made for non-private use? The same rules on the making of 3D objects and their dissemination (sale with a profit or just payments for the printing and handling costs) should be applied as has been described above.

b) When the 3D printing for private use is permitted by the law, is this accompanied by a compensation mechanism in favour of rights-holders of the printed object (and if so, which ones)? If applicable, can you specify the methods for collection and distribution? In general, do exist in your legislation legal license mechanisms or compulsory collective management benefiting different categories of intellectual property rights-holders (for example, copyright and designs and models)? Concerning the reasons against compensation mechanism see argumentation above.

c) How does your legislation consider the activity of a service provider that prints 3D object at the request of an individual, for his private use? Is this service provider responsible for the acts of reproduction carried out? If so, can it absolve itself, totally or partially, of this responsibility? The service provider (manufacturer) is fully responsible and his activity may not be covered by the private use exception (see above). His legal position is the same as in the past was the situation of “copy-shops” which were making copies of CDs/DVDs with music or film files. If these copy shops wanted to provide their services legally, they had to concluded license agreement with collecting societies and paid fees from each copy or a flat fee based on the expected number of copies. It can be assumed, that same principles would be applicable on the legal position of 3D manufacturers.

d) Are there in your country websites offering 3D printing services on demand? If so, do the users have the option to share the object transmitted for printing? Are these websites implementing control measures of the transmitted or shared objects (control keywords, fingerprinting ...)? What is under your legislation the liability regime applicable to those websites (distinguish, if necessary, according to the nature of the service provided)? The liability regime of the “information society services provider” (website provider) is regulated by the Information Society Services Act

33 which represents the implementation of several EU Directives.

34 The internet service provider is

not liable for the uploaded copyright infringement content if he/she (a) does not have actual knowledge of illegal activity or information and, with regards to claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or (b) the provider, upon obtaining such knowledge or awareness, acts

33 Act No. 480/2004 Coll., of 29 July 2004 on certain Information Society Services and on Amendments to some Acts (Act on Certain Information Society Services). English translation [online]. Available at https://www.uoou.cz/zakon-c-480-2004-sb-o-nekterych-sluzbach-informacni-spolecnosti/ds-1497/p1=1497. 34 Directive No. 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market ('Directive on electronic commerce'); Directive No. 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications); Directive No. 2006/24/EC of the European Parliament and of the Council of 15 March 2006 on the retention of data generated or processed in connection with the provision of publicly available electronic communications services or of public communications networks and amending Directive 2002/58/EC. See Vaníček/Maissner, 2012, p. 40.



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expeditiously to remove or to disable access to the information (so called “notice and takedown” procedure, Art. 5 para. 1 Information Society Services Act, Art. 14 para. 1 E-commerce Directive).

35

It is possible to order 3D printing online and to disseminate 3D models at several Czech websites.36

Website Future3D provides gallery

37 which contains models and patterns for private 3D printing. Some of them are provided by website

operator, but users themselves can upload their own content. Models which are uploaded to the gallery are freely distributable (anyone is free to download and print them) but concurrently they become a “property” of Future3D Ltd. and they can be used for commercial or other purposes.

38 This provision of business conditions should probably be

interpreted as providing the operator a non-exclusive license which covers also the commercial use of the uploaded item. Another website which is used for printing 3D objects is https://www.3dhubs.com/ where the user can find out information about local 3D printers and can print a desired 3D object. 5) Technical protection and information measures

a) In the light of possible precedents in your country, does it seem to you that the apprehension of 3D printing acts within the private sphere through technological protection measures implanted in 3D printing devices or software is appropriate and feasible? There are no courts or administrative precedents on this issue. Technological protection measures are necessary step in the expansion of 3D printing, but not primarily for the purpose of securing intellectual property rights. The main reason why the state should control the 3D printing services is the prevention of terrorism and violent crime. The 3D printing industry is also a potential threat to consumer’s safety. These areas of public interest are more important than IP protection itself.

b) Are there in your country regulatory precedents or soft law aiming to impose to an industrial sector the implementation of technological protection measures to prevent copying? No.

c) Are there in your national legislation legal obligations to adapt certain categories of software to security standards? If so, how are these obligations applied in the field of free software? No.

d) Are digital signature or watermarking techniques (fingerprinting, watermarking, etc.) likely to be implemented to monitor and control the distribution and/or printing of 3D models? Is there any of such devices in your country? If so, can you describe it? In case it is or will be used a database of protected 3D models, what are or will be the obligations of the technical service? And what is or will be the consequence of the lack of registration of a model in such a database Such techniques are not required or implemented in the Czech Republic. As was stated above, the 3D printing technology should be controlled by the state primarily for security reasons. In this respect the EU might adopt legislation which will regulate legal aspects of 3D printing (another aspect of 3D printing is its impact on traditional industries such as glass making, jewellery, foundry and modelling). Issues of intellectual property protection might be just one area of such harmonized legal regulation.

35 For further conditions of the responsibility of ISP see also decisions of the CJEU in UPC Telekabel v Constantin Film (C-314/12), Scarlet Extended SA v. SABAM (C-70/10), Bonnier Audio v. Perfect Communication Sweden (C-461/10). 36 http://www.3dees.cz/; http://www.printup.cz/; http://www.kohinoor.cz/cz/3d-tisk/; http://www.futur3d.net/ etc. 37 http://www.futur3d.net/galerie. 38 http://www.futur3d.net/obchodni-podminky.



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LIST OF LITERATURE: Kohutová, R.C. Databáze ve věku informační společnosti a jejich právní ochrana. Praha: C.H.Beck, 2013 Koukal, P. Právní ochrana designu – průmyslové vzory, autorská díla. Praha: Wolters Kluwer, 2012 Koukal,P, Černý, M., Charvát, R. Zákon o ochraně průmyslových vzorů. Komenář. Praha. Wolters Kluwer, 2015 Horáček, R., Biskupová, E., de Korver, Z. Práva na označení a jejich vymáhání (Zákon o ochranných známkách, Zákon o ochraně označení původu a zeměpisných označení, Zákon o vymáhání práv z průmyslového vlastnictví). Komentář. 3

rd

ed. Praha : C. H. Beck, 2015 Ondrejová, D.,In. Hulmák, M. a kol. Občanský zákoník VI. Závazkové právo. Zvláštní část (§ 2055 - 3014). Komentář. Praha: C.H.Beck, 2014 Sterling, J.A.L. World Copyright Law. 3rd ed. London: Sweet & Maxwell, 2008 Telec, I., Tůma, P.: Autorský zákon, komentář. Praha: C.H.Beck, 2007 Vaníček, Z., Maissner, M. Odpovědnost za obsah přenosu v elektronických komunikacích. Praha: Wolters Kluwer, 2012

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