Dua Lipa faces copyright lawsuit – Advocate General’s Opinion in Case C-361/22

 

Dua Lipa Faces Third Copyright Lawsuit Over 'Levitating'

In the ongoing legal saga over Dua Lipa's song "Levitating", the pop star is facing a new copyright lawsuit. The musician Bosko Kante has filed a lawsuit in Los Angeles, alleging that Dua Lipa and Warner Music Group used his "Talk Box" recording in remixes of the song without obtaining his permission.

This lawsuit is the latest in a series of legal challenges related to "Levitating". Previously, Dua Lipa faced two copyright infringement lawsuits, one from reggae group Artikal Sound System which was dismissed in June this year, while the other is still ongoing, brought by songwriters Sandy Linzer and L. Russell Brown.

In this particular case, Bosko Kante is the inventor of the Talk Box, a device that can transform vocal vibrations into musical instruments and which has been used by notable artists such as Kanye West, Big Boi and J. Cole.

Kante claims he and producers reached a verbal agreement when they signed the collaboration, whereby he would write and record the vocal lines with his device for the original song, making it clear that his work would not be reused at a later date. Under that premise, he argues that Dua Lipa reused his work without his permission to create remixes of “Levitating” such as the "Blessed Madonna Remix" that she recorded with DJ The Blessed Madonna, the famed singer Madonna and Missy Elliott; a second remix with rapper DaBaby; and, most recently, in Dua Lipa's performance during the American Music Awards.

The lawsuit alleges both copyright infringement and breach of a verbal agreement, and Kante is seeking $2 million in damages, plus $20 million in profits from the infringement. This case stands out from prior copyright disputes involving "Levitating" because Kante was acknowledged as a collaborator on the song, which leads to questions about the rights related to his contributions and how they were employed in the remixes.

 

 

Advocate General Maciej Szpunar issued his Opinion in Case C-361/22 between INDITEX v. Buongiorno

On 7 September, the Opinion of Advocate General Maciej Szpunar ('AG’) was published in Case C-361/22 between the textile giant INDITEX and Buongiorno Myalert ("Buongiorno"), a provider of internet information services.

The facts date back to 2010. In the context of an advertising campaign, Buongiorno offered as a free gift participation in a prize draw in which one of the prizes was a Zara gift card, the image of which was presented in the context of that advertising campaign.

ZARA brought infringement proceedings against Buongiorno, considering that it had taken advantage of the reputation of the trade mark and had caused damage to that reputation.

According to European trade mark legislation (specifically the directives harmonising national laws, which are the ones relevant here), the owner of a trade mark registered in one of the Member States is entitled to prohibit any third party from making certain uses of the registered sign, when such uses do not respect its intellectual property rights. But the right of the proprietor is not absolute. For instance, the proprietor may not prohibit third parties from using, in the course of trade, the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular accessories or spare parts).

The present case arises from the request for a preliminary ruling to the Court of Justice ("CJEU") by the Spanish Supreme Court which, before deciding the case, wished to ask the CJEU about the interpretation of two Community provisions, namely Article 6(1)(c) of Directive 2008/95 (which applied to the present case, as it took place in 2010) and Article 14(1)(c) of Directive 2015/2436 (which later replaced the 2008 directive). In particular, the question was to determine whether Article 14(1)(c) of Directive 2015/2436 had in fact altered the scope of the limitation in question (broadening the limitation set forth in the 2008 directive) or whether that provision refers to limitations which were already implicit in Article 6(1)(c) of Directives 89/104 and 2008/95. In other words, this would help determine whether the uses made of the Zara mark by Buongiorno were allowed under the 2008 Directive (i.e. whether Zara’s exclusive trade mark rights were already broadly limited by that text, in favour of Buongiorno), or whether they would only be allowed under the new Directive (i.e. whether Zara’s rights were limited more restrictively in the 2008 Directive, thus not allowing Buongiorno to use its mark).

We would remind you that the Advocate Gene’al's opinion is not binding on the Court of Justice, as his role is to propose, in complete independence, a legal solution to the case before it. The judges of the Court of Justice are now beginning their deliberations in this case.

Legislation

Article 6(1)(c) of Directive 2008/95 deals with the limitation of the effects of a trade mark and, to this effect, establishes th“t "the rights conferred by a trade mark shall entitle the proprietor to prohibit a third party from using the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare pa”ts".

For its part, Article 14(1)(c) of Directive 2015/2436, analogous to Article 6 of the earlier Directive, states th‘t 'a trade mark shall not entitle the proprietor to prohibit a third party from using the trade mark for the purpose of identifying or referring to goods or services which correspond to the proprietor of that trade mark, in particular where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare pa’ts'.

*In both cases, the exception only applies where the use is in accordance with honest practices in industrial or commercial matters.

According to the case-law of the CJEU, the limitation of the effects of the rights of the proprietor of a trade mark provided for by the EU legislation is intended to reconcile the fundamental interests of the protection of trade mark rights and those of the free movement of goods and the freedom to provide services in the common market.

Background to the dispute

In 2010, Buongiorno launched an advertising campaign for the subscription to a service for the transmission of multimedia content via SMS which it marketed under the name "Club Binko", in which it offered as a free gift participation in a prize draw in which one of the prizes was a ZARA gift card for the sum of EUR 1 000. After clicking on the label to access the prize draw, the subscriber saw on the next screen the ZARA sign framed in a rectangle, evoking the format of the gift cards.

INDITEX brought an action against Buongiorno for infringement of the exclusive rights conferred by a national (Spanish) trade mark protecting the sign 'ZARA'. In support of its claim, INDITEX relied on the existence of a likelihood of confusion, as well as the advantage taken from the reputation of the mark and the damage caused to that reputation.

Buongiorno denied infringement of the rights conferred by the ZARA trade mark, claiming that the sign had been used on an ad hoc basis, not as a trade mark, but to indicate what one of the gifts offered to the winners of the prize draw consisted of. According to Buongiorno, such "referential" use falls within the scope of lawful use – in other words, it would be covered by the limitations to the scope of trade mark rights mentioned above, set forth in the Directive and transposed into Spanish law.

Both the court of first instance and the court of second instance in Spain dismissed the claims of INDITEX, which brought an appeal in cassation before the Tribunal Supremo, the referring court in the present case.

The Spanish Supreme Court, before deciding the case, decided to refer the following question to the CJEU for a preliminary ruling:

Is Article 6(1)(c) of Directive 2008/95 to be interpreted as implicitly including the more general conduct now referred to in Article 14(1)(c) of Directive 2015/2436 within the limit to trade mark rights?

Question referred for a preliminary ruling and procedure before the CJEU

By its question for a preliminary ruling, the referring court seeks to ascertain, in essence, whether Article 6(1)(c) is to be interpreted as meaning that the use in the course of trade of the trade mark 'to designate or refer to goods or services as those of the proprietor of that trade mark or of referring to them', to which Article 14(1)(c) now refers, falls within the scope of the former Article 6.

First of all, the AG pointed out that the fact that a third party displays a trade mark owner’s sign in the context of an advertising campaign in order to refer to a prize that its customers can win in a prize draw may amount to indicating a characteristic of the owner's product rather than a characteristic of the multimedia content supply service offered by that third party. It cannot therefore be considered that the reproduction of those gift cards in that advertising campaign was intended to provide an indication relating to a characteristic of the service provided by Buongiorno.

Next, the AG considered whether Buongiorno's conduct fell within the scope of Article 7 of Directive 2008/95 'Exhaustion of the rights conferred by a trade mark. According to the exhaustion of rights principle, rights conferred by a trade mark do not entitle the proprietor to prohibit the use of the mark for goods put on the market in the Community under that mark, by the proprietor or with his consent, unless there are legitimate reasons justifying his opposition to further commercialisation of the goods.

However, INDITEX argued that, in the absence of a first sale of the product, namely the gift card or a first placing on the market consented to by it, when Buongiorno used its trade mark, there had been no exhaustion of its trade mark rights.

Article 6(1)(C) of Directive 2008/95

In order for a third party to be able to invoke the limitation of the effects of the trade mark referred to in Art. 6(1)(c), the use of a sign must meet the requirements set out in that provision (namely, that it is necessary to indicate the intended purpose of a product or service) and be in accordance with honest practices in industrial or commercial matters.

Firstly, the Advocate General pointed out that the CJEU seems to have restricted the scope of the limitation set out in Art. 6.1.c) to the use necessary to indicate the intended purpose of the product. This is because, according to the CJEU, the purpose of that provision is to allow suppliers of goods or services that are complementary to goods or services offered by the trade mark proprietor to use the trade mark to inform the public of the functional link between their goods or services and those of the trade mark proprietor (eg. spare parts).

The AG stated that the CJEU has considered that only a use that indicates the intended purpose of a product or service of a third party constitutes legitimate use within the meaning of Art. 6.1.c). For example, the use of the trade mark to inform the public that the advertiser repairs and maintains goods bearing that trade mark constitutes use indicating the purpose of a service within the meaning of that provision.

In the light of the foregoing considerations as a whole, the Advocate General proposed that the CJEU answer the question referred for a preliminary ruling by the SC as follows: Article 6(1)(c) of Directive 2008/95 must be interpreted as meaning that the use, in the course of trade, of the trade mark for the purpose of designating goods or services as those of the proprietor of that mark or of referring to them, to which Article 14(1)(c) of Directive 2015/2436 now refers, does not fall within the scope of the first provision (Article 6(1)(c)), unless it is necessary in order to indicate the intended purpose of a product or service of that third party. In other words, the AG clearly opined that the limitations to the trade mark owner’s rights are narrower in the 2008 Directive (which concerns the case) than in the legislation currently in force (2015 Directive, which appears to leave more space for allowed / non-infringing uses).

If the CJEU's interpretation is in line with the Advocate General's opinion, Buongiorno will not be able to rely on a broad understanding of the limitations introduced by Article 6(1)(c) of Directive 2008/95, unless the use is necessary to indicate the intended purpose of a product or service of the trade mark proprietor, which does not appear to be the case.

We will await the CJEU's response on this case, after which the Spanish Supreme Court will have to rule on the merits of the case in accordance with the interpretation put forward by the European High Court.