Martin Senftleben is Professor of Intellectual Property Law and Director of the Institute for Information Law (IViR), University of Amsterdam. His activities focus on the reconciliation of private intellectual property rights with competing public interests of a social, cultural or economic nature. Current research topics include institutionalized algorithmic copyright enforcement in the EU, the interplay between robot creativity and human literary and artistic productions, the preservation of the public domain of cultural expressions, and the impact of targeted advertising on supply and demand in market economies.
Professor Senftleben studied law at the University of Heidelberg. He worked as a researcher at IViR and the Max Planck Institute for Innovation and Competition in Munich. In 2004, he was awarded a Ph.D. by the University of Amsterdam. From 2004 to 2007, he was a legal officer in the trademarks, industrial designs and geographical indications law division of the World Intellectual Property Organization (WIPO) in Geneva. From 2007 to 2020, he was Professor of Intellectual Property at the Vrije Universiteit Amsterdam. As a lawyer at Bird & Bird (2008 to 2019), he litigated copyright and trademark cases, including lawsuits about hyperlinking and website blocking.
Professor Senftleben is a member of the Copyright Advisory Committee of the Dutch State. He provided advice to WIPO in several trademark and copyright projects. He is the President of the European Copyright Society (ECS), President of the Trademark Law Institute (TLI), and a member of the Executive Committee of the Association littéraire et artistique internationale (ALAI) and the International Association for the Advancement of Teaching and Research in Intellectual Property Law (ATRIP). In 2017, New York University invited him as a Senior Research Fellow in the Hauser Global Law School Program. From 2017 to 2020, he was Visiting Professor at the Intellectual Property Research Institute of Xiamen University. His numerous publications include Copyright, Limitations and the Three-Step Test (Kluwer Law International 2004), European Trade Mark Law – A Commentary (with Annette Kur, Oxford University Press 2017) and The Copyright/Trademark Interface (Kluwer Law International 2020). As a guest lecturer, he provides courses at the Centre for International Intellectual Property Studies (CEIPI), Strasbourg, the Munich Intellectual Property Law Center (MIPLC), and the Universities of Catania and Krakow.
For publications, see below and: https://papers.ssrn.com/sol3/cf_dev/AbsByAuth.cfm?per_id=1440600
|Horen, F. van, Senftleben, M.|
In: The Trademark Reporter, 111 (4), pp. 739-777, 2021.
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The architecture of trademark protection systems rests on the assumption that brand imitation strategies are particularly harmful when they seek to achieve a high level of similarity by copying specific trademarked features of the original brand. Marketing research, however, shows that this assumption is doubtful. Subtle, theme-based imitation strategies – aiming at a modest degree of similarity – may allow copycats to garner greater profits and manipulate consumers’ purchasing decisions. Like an enchanting siren song, they may lure customers away from the original products of brand owners. Against this background, the paper discusses the question whether trademark law should be recalibrated.
To lay groundwork for this discussion, the analysis outlines central functions of trademarks in today’s market economy before describing, on the basis of EU trademark law, the traditional approach to copycat strategies from a marketing and legal perspective. Introducing insights from recent marketing research, the paper explains why subtle, theme-based strategies may be more harmful than blatant, feature-based copying. The further examination places this insight in a legal context. Contrasting the empirical findings of marketing research with traditional assessment schemes in EU trademark law, it becomes apparent that there is a remarkable mismatch between legal theory and market reality. Current trademark provisions are not aligned with “real life” consumer perception. As a result, copycats with a subtle imitation strategy remain under the radar of applicable infringement tests. This dilemma is taken as a starting point to discuss the need for reforms in trademark law.
|Angelopoulos, C., Senftleben, M., Thije, P. ten|
In: Auteursrecht, (3), pp. 120-142, 2021.
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Met de Richtlijn auteursrechten en naburige rechten in de digitale eengemaakte markt (‘DSM-RL’) zijn nieuwe wettelijke verplichtingen op het terrein van het filteren van online content ontstaan. Aanbieders van onlinediensten voor het delen van content (‘OCSSPs’) dienen – op basis van door rechthebbenden verstrekte informatie – ervoor te zorgen dat beschermd materiaal niet beschikbaar is op hun platforms. Tegelijkertijd bevestigt artikel 17 lid 8 DSM-RL dat de nieuwe auteursrechtelijke regels niet tot een algemene toezichtverplichting moeten leiden. Ondanks de nieuwe filterverplichtingen heeft de Uniewetgever het traditionele verbod op een algemene toezichtverplichting – dat al 20 jaar deel uitmaakt van de regeling van aansprakelijkheidsprivileges in de Richtlijn inzake elektronische handel (‘REH’) – uitdrukkelijk overeind gehouden. Ook het voorstel van de Europese Commissie voor een Digital Services Act (‘DSA’) houdt het verbod op algemene toezichtverplichtingen in stand. Tegen deze achtergrond rijst de vraag hoe de nieuwe auteursrechtelijke filterverplichtingen moeten worden uitgelegd om een verboden algemene toezichtverplichting te voorkomen. De volgende analyse geeft antwoord op deze vraag op basis van een nadere bespreking van het verbod op algemene toezichtverplichtingen in de REH, de DSM-RL en het DSA-voorstel. Naast relevante rechtspraak van het HvJ EU komt het nauwe verband tussen het verbod op algemene toezichtverplichtingen en fundamentele rechten aan de orde.
|Antal, D., Bodó, B., Handke, C.W., Kretschmer, M., Margoni, T., Poort, J., Quintais, J., Schwemer, S., Senftleben, M., van Gompel, S.|
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In the European Strategy for Data, the European Commission highlighted the EU’s ambition to acquire a leading role in the data economy. At the same time, the Commission conceded that the EU would have to increase its pools of quality data available for use and re-use. In the creative industries, this need for enhanced data quality and interoperability is particularly strong. Without data improvement, unprecedented opportunities for monetising the wide variety of EU creative and making this content available for new technologies, such as artificial intelligence training systems, will most probably be lost. The problem has a worldwide dimension. While the US have already taken steps to provide an integrated data space for music as of 1 January 2021, the EU is facing major obstacles not only in the field of music but also in other creative industry sectors. Weighing costs and benefits, there can be little doubt that new data improvement initiatives and sufficient investment in a better copyright data infrastructure should play a central role in EU copyright policy. A trade-off between data harmonisation and interoperability on the one hand, and transparency and accountability of content recommender systems on the other, could pave the way for successful new initiatives.
|Correa, C., Dusollier, S., Geiger, C., Griffiths, J., Grosse Ruse-Khan, H., Hilty, R.M., Köklü, K., Kur, A., Lin, X., Markiewics, R., Moscon, V., Nérisson, s., Peukert, A., Senftleben, M., Xalabarder, R.|
In: IIC - International Review of Intellectual Property and Competition Law , 52 , pp. 62-67, 2021.
In: pp. 381-403, 2020, (Chapter in: Oxford Handbook of Online Intermediary Liability, G.F. Frosio (ed.), Oxford: Oxford University Press.).
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The erosion of the safe harbour for hosting in the EU Directive on Copyright in the Digital Single Market (CDSM Directive) leads to a remarkable climate change in the field of EU copyright law and the civil law jurisdictions of continental EU Member States. Inevitably, it raises the question of potential repercussions on the safe harbour for hosting and filtering standards in trademark cases. Even though online marketplaces are explicitly exempted from the new copyright rules and the CDSM Directive is not intended to neutralize the safe harbour for hosting in trademark cases, the adoption of a more restrictive approach in copyright law may quicken the appetite of trademark proprietors for similar measures in trademark law.
The extension of the new copyright approach to trademark cases, however, is unlikely to yield satisfactory results.Due to the different conceptual contours of trademark rights, a system mimicking the filtering obligations following from the CDSM Directive would give trademark proprietors excessive control over the use of their trademarks in the digital environment. Such an overbroad system of automated, algorithmic filtering would encroach upon the fundamental guarantee of freedom of expression and freedom of competition. It is likely to have a chilling effect on legitimate descriptive use of trademarks, comparative advertising, advertising by resellers, information about alternative offers in the marketplace, and use criticizing or commenting upon trademarked products.
As a result, consumers would receive less diverse information on goods and services and the free movement of goods and services in the internal market would be curtailed. The reliability of the internet as an independent source of trademark-related information would be put at risk. The analysis, thus, leads to the insight that a proliferation of the new filtering obligations in copyright law is undesirable and should be avoided.
In: pp. 209-225, 2020, (Chapter in: Cambridge Handbook on International and Comparative Trademark Law, I. Calboli & J.C. Ginsburg (eds.), Cambridge: Cambridge University Press 2020.).
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In the European Union (EU), the criteria for determining a sign’s eligibility for trademark protection are harmonized to a large extent. On the one hand, the trademark legislation and office practices in EU Member States have to keep within the harmonized legal framework set forth in the EU Trade Mark Directive (TMD). On the other hand, the European Union Trade Mark Regulation (EUTMR) provides for a set of eligibility criteria that apply to European Union Trade Marks (EUTM) with equal effect throughout the EU territory. As the rules in the Regulation are in line with those in the Directive, the two legislative instruments constitute a robust body of harmonized norms informing the decision on the registration of a sign as a trademark. The harmonizing effect is enhanced by the fact that national courts have to refer questions relating to the application and interpretation of eligibility criteria to the Court of Justice of the European Union (CJEU).
As in other regions of the world, the criteria applied to determine eligibility for trademark protection are quite flexible in the EU. The open-ended definition of protectable subject matter leaves room for the extension of trademark protection to non-traditional types of marks, such as shape, sound and colour marks. Trademark offices applying EU trademark law have also accepted, for instance, abstract colours and colour combinations, motion and multimedia marks, melodies and sounds, taste marks, hologram marks and position marks.
The analysis of the trend to register non-traditional marks in the EU outlines the legal framework which the CJEU developed to assess the eligibility of non-traditional types of source identifiers for trademark protection. On this basis, it discusses the objective to safeguard freedom of competition and the legal instruments which the CJEU employs for this purpose: the requirement of providing evidence of the acquisition of distinctive character through use in trade and the categorical exclusion of functional signs from trademark protection. Drawing conclusions, it will become apparent that the basic requirement of distinctive character plays an ambiguous role in the regulation of access to trademark protection for non-traditional marks. It is both an obstacle to trademark protection and an incentive for enhanced investment in non-traditional types of marks.
|Angelopoulos, C., Senftleben, M.|
The Odyssey of the Prohibition on General Monitoring Obligations on the Way to the Digital Services Act: Between Article 15 of the E-Commerce Directive and Article 17 of the Directive on Copyright in the Digital Single Market
2020, (Amsterdam: Institute for Information Law & Cambridge: Centre for Intellectual Property and Information Law).
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EU law provides explicitly that intermediaries may not be obliged to monitor their service in a general manner in order to detect and prevent the illegal activity of their users. However, a misunderstanding of the difference between monitoring specific content and monitoring FOR specific content is a recurrent theme in the debate on intermediary liability and a central driver of the controversy surrounding it. Rightly understood, a prohibited general monitoring obligation arises whenever content – no matter how specifically it is defined – must be identified among the totality of the content on a platform. The moment platform content must be screened in its entirety, the monitoring obligation acquires an excessive, general nature. Against this background, a content moderation duty can only be deemed permissible if it is specific in respect of both the protected subject matter and potential infringers.
This requirement of 'double specificity' is of particular importance because it prevents encroachments upon fundamental rights. The jurisprudence of the Court of Justice of the European Union has shed light on the anchorage of the general monitoring ban in primary EU law, in particular the right to the protection of personal data, the freedom of expression and information, the freedom to conduct a business, and the free movement of goods and services in the internal market. Due to their higher rank in the norm hierarchy, these legal guarantees constitute common ground for the application of the general monitoring prohibition in secondary EU legislation, namely Article 15(1) of the E-Commerce Directive ('ECD') and Article 17(8) of the Directive on Copyright in the Digital Single Market ('CDSMD').
With regard to the Digital Services Act (‘DSA’), this result of the analysis implies that any further manifestation of the general monitoring ban in the DSA would have to be construed and applied – in the light of applicable CJEU case law – as a safeguard against encroachments upon the aforementioned fundamental rights and freedoms. If the final text of the DSA does not contain a reiteration of the prohibition of general monitoring obligations known from Article 15(1) ECD and Article 17(8) CDSMD, the regulation of internet service provider liability, duties of care and injunctions would still have to avoid inroads into the aforementioned fundamental rights and freedoms and observe the principle of proportionality. The double specificity requirement plays a central role in this respect.
In: Florida International University Law Review, 14 (2), pp. 299-328, 2020.
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Algorithmic copyright enforcement – the use of automated filtering tools to detect infringing content before it appears on the internet – has a deep impact on the freedom of users to upload and share information. Instead of presuming that user-generated content ("UGC") does not amount to infringement unless copyright owners take action and provide proof, the default position of automated filtering systems is that every upload is suspicious and that copyright owners are entitled to ex ante control over the sharing of information online. If platform providers voluntarily introduce algorithmic enforcement measures, this may be seen as a private decision following from the freedom of companies to run their business as they wish. If, however, copyright legislation institutionalizes algorithmic enforcement and imposes a legal obligation on platform providers to employ automated filtering tools, the law itself transforms copyright into a censorship and filtering instrument. Nonetheless, the new EU Directive on Copyright in the Digital Single Market (“DSM Directive”) follows this path and requires the employment of automated filtering tools to ensure that unauthorized protected content does not populate UGC platforms. The new EU rules on UGC licensing and screening will inevitably lead to the adoption of algorithmic enforcement measures in practice. Without automated content control, UGC platforms will be unable to escape liability for infringing user uploads.
To provide a complete picture, however, it is important to also shed light on counterbalances which may distinguish this new, institutionalized form of algorithmic enforcement from known content filtering tools that have evolved as voluntary measures in the private sector. The DSM Directive underlines the necessity to safeguard user freedoms that support transformative, creative remixes and mash-ups of pre-existing content. This feature of the new legislation may offer important incentives to develop algorithmic tools that go beyond the mere identification of unauthorized takings from protected works. It has the potential to encourage content assessment mechanisms that factor the degree of transformative effort and user creativity into the equation. As a result, more balanced content filtering tools may emerge in the EU. Against this background, the analysis shows that the new EU legislation not only escalates the use of algorithmic enforcement measures that already commenced in the private sector years ago. If rightly implemented, it may also add an important nuance to existing content identification tools and alleviate the problems arising from reliance on automated filtering mechanisms.
|Buijtelaar, L.D., Senftleben, M.|
In: European Intellectual Property Review, 42 (12), Forthcoming.
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Today texts, paintings and songs need no longer be the result of human creativity. Advanced artificial intelligence (AI) systems are capable of generating creations that can hardly be distinguished from those of authors of flesh and blood. This development raises the question whether AI-generated works could be eligible for copyright protection. In the following analysis, we explore this question. After a discussion of the traditional copyright requirement of human creativity, the rationales underlying copyright protection – in particular the utilitarian incentive theory – will serve as a compass to decide on the grant of protection and delineate the scope of exclusive rights. In addition, the analysis will address the question who the owner of protected AI creations should be. Finally, the discussion of pros and cons of protection will be placed in the broader context of competing policy goals and legal obligations, such as the prospect of enriching the public domain and the question of liability for AI creations that infringe the rights of third parties.
|Buijtelaar, L.D., Senftleben, M.|
In: AMI, (3-4), pp. 77-93, 2020.
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Vandaag de dag zijn teksten, schilderijen en liedjes niet noodzakelijkerwijs het resultaat van menselijke creativiteit. Geavanceerde robotsystemen zijn in staat om output te genereren die nauwelijks te onderscheiden is van de werken van makers van vlees en bloed. Dit doet de vraag rijzen of door robots gegenereerde creaties in aanmerking kunnen komen voor auteursrechtelijke bescherming. In de volgende analyse staat deze vraag centraal. Na een inleidende bespreking van het traditionele vereiste van menselijke creativiteit in het auteursrecht dienen de ratio’s van auteursrechtelijke bescherming – met name de economische incentivetheorie – als maatstaf om over nut en noodzaak van de toekenning van bescherming te beslissen. Voorts wordt aandacht besteed aan de vraag wie de houder van rechten op robotcreaties zou kunnen zijn. Ten slotte vindt een afweging plaats van de voor- en nadelen van bescherming, mede in het licht van de mogelijkheid om robotcreaties vrij te laten en het publieke domein te verrijken.
In: IIC, 51 (6), pp. 751-769, 2020.
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In the ongoing discussion about the impact of fundamental rights on EU copyright law, the Pelham judgment of the Court of Justice of the European Union (CJEU) has received much attention. However, the decision also raises important legal-doctrinal issues. The CJEU employs the harmonized right of reproduction as a vehicle to regulate adaptations of pre-existing source material. Moreover, the Court insists on a balancing of interests within the EU matrix of exclusive rights and limitations. The closed list of limitations in EU copyright law, however, can hardly be expected to offer sufficient breathing space for adaptation scenarios. As the Information Society Directive did not harmonize the right of adaptation, there was no need to include indispensable free adaptation rules that have evolved at the national level, such as the German “free use” doctrine. Instead of embracing national rules of equity and fairness to fill the gap, the CJEU is reluctant to borrow from the legal traditions of EU Member States and misses an important opportunity to provide guidance for the regulation of adaptations outside the sound sampling arena. After an introduction to the German “Metall auf Metall” saga that led to the Pelham decision, the following analysis sheds light on these developments in EU copyright law and discusses problems arising from the approach taken by the CJEU.
|Dreier, T., Derclaye E., Geiger, C., Griffiths, J., Hilty, R., Hugenholtz, P., Metzger, A., Riis, T., Rognstad, O.A., Senftleben, M., Strowel, A.M., Synodinou, T., Xalabarder, R.|
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The national implementation of Article 17 of the Directive on Copyright in the Digital Single Market (DSMD) poses particular challenges. Article 17 is one of the most complex – and most controversial – provisions of the new legislative package which EU Member States must transpose into national law by 7 June 2021. Seeking to contribute to the debate on implementation options, the European Copyright Society addresses several core aspects of Article 17 that may play an important role in the national implementation process. It deals with the concept of online content-sharing service providers (OCSSPs) before embarking on a discussion of the licensing and content moderation duties which OCSSPs must fulfil in accordance with Article 17(1) and (4). The analysis also focuses on the copyright limitations mentioned in Article 17(7) that support the creation and dissemination of transformative user-generated content (UGC). It also discusses the appropriate configuration of complaint and redress mechanisms set forth in Article 17(9) that seek to reduce the risk of unjustified content removals. Finally, the European Copyright Society addresses the possibility of implementing direct remuneration claims for authors and performers, and explores the private international law aspect of applicable law – an impact factor that is often overlooked in the debate.
In: 2020, (Chapter in T. Mylly/J. Griffiths (eds.), The Transformation of Global Intellectual Property Protection, Oxford: Oxford University Press 2020, forthcoming.).
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In the international intellectual property (IP) arena, the so-called “three-step test” regulates the room for the adoption of limitations and exceptions (L&Es) to exclusive rights across different fields of IP. Given the openness of the individual test criteria, it is tempting for proponents of strong IP protection to strive for the fixation of the meaning of the three-step test at the constraining end of the spectrum of possible interpretations. As the three-step test lies at the core of legislative initiatives to balance exclusive rights and user freedoms, the cultivation of the test’s constraining function and the suppression of the test’s enabling function has the potential to transform the three-step test into a bulwark against limitations of IP protection.
The EU is at the forefront of a constraining use and interpretation of the three-step test in the field of copyright law. The configuration of the legal framework in the EU is worrisome because it obliges judges to apply the three-step test as an additional control instrument. It is not sufficient that an individual use falls within the scope of a statutory copyright limitation that explicitly permits this type of use without prior authorization. In addition, judges applying the three-step test also examine whether the specific form of use at issue complies with each individual criterion of the three-step test. Hence, the test serves as an instrument to further restrict L&Es that have already been defined precisely in statutory law. Not surprisingly, decisions from courts in the EU have a tendency of shedding light on the constraining aspect of the three-step test and, therefore, reinforcing the hegemony of copyright holders in the IP arena.
The hypothesis underlying the following examination, therefore, is that the EU approach to the three-step test is one-sided in the sense that it only demonstrates the potential of the test to set additional limits to L&Es. The analysis focuses on this transformation of a flexible international balancing tool into a powerful confirmation and fortification of IP protection. For this purpose, the two facets of the international three-step test – its enabling and constraining function – are explored before embarking on a discussion of case law that evolved under the one-sided EU approach. Analyzing repercussions on international lawmaking, it will become apparent that the EU approach already impacted the further development of international L&Es. Certain features of the Marrakesh Treaty clearly reflect the restrictive EU approach.
|Frosio, G., Hugenholtz, P., Husovec, M., Jütte, B.J., Quintais, J., Senftleben, M., van Gompel, S.|
In: JIPITEC, vol. 10 (nr. 3 - 2019), 2020.
|Frosio, G., Hugenholtz, P., Husovec, M., Jütte, B.J., Quintais, J., Senftleben, M., van Gompel, S.|
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On 17 May 2019 the new Directive (EU) 2019/790 on copyright and related rights in the Digital Single Market was officially published (DSM Directive). Article 17 (ex-Article 13) is one of its most controversial provisions. Article 17(10) tasks the Commission with organising stakeholder dialogues to ensure uniform application of the obligation of cooperation between online content-sharing service providers (OCSSPs) and rightholders, and to establish best practices with regard to appropriate industry standards of professional diligence.
This document offers recommendations on user freedoms and safeguards included in Article 17 of the DSM Directive – namely in its paragraphs (7) and (9) – and should be read in the context of the stakeholder dialogue mentioned in paragraph (10).