‘Copyright holder’ as plaintiff in summary proceedings

Bringing a successful product to market for some time without being treated by third parties may not be sufficient to qualify as a copyright holder, according to a ruling by the judge in Amsterdam.

Summary lawsuit on shoes

Inuikii AG markets (luxury) shoes under its INUIKII brand and has been selling INUIKII winter sneakers through online stores for some time now. Est’Seven will import and sell a similar sneaker under the name Est’Mouton boot from the end of 2021. Est’Seven imports shoes from the former manufacturer of INUIKII winter sneaker.

At the Amsterdam District Court, Inuikii takes the view that the INUIKII winter sneaker can be considered a copyrighted work and that Est’Seven infringes its copyrights by marketing a similar sneaker.

In support of its position that it is the copyright holder, Inuikii has issued a statement from its Manager (President of the Board of Directors) presented, from which it follows in short that it Manager van Inuikii designed the sneaker in 2014, and that year it gave Zeitneu GmbH an exclusive right to use all rights to the sneaker. Zeitneu GmbH subsequently marketed the sneaker in 2015 under the brand name IKKII and at that time outsourced the production of the sneaker to a (former) manufacturer in Istanbul. From the statement from Manager It further follows that Zeitneu GmbH would have transferred its rights in respect of the sneaker to Inuikii in 2016. At the same time, the brand name under which the sneaker was marketed was changed from IKKII to INUIKII.

Est’Seven disputes the claim, arguing, inter alia, that there is no infringement because INUIKII is not the copyright owner and the marketed sneaker cannot be considered a copyrighted work. The reason for this will be, among other things, that the former manufacturer of the INUIKII winter sneaker would have made the design of the sneaker in question, as it would follow from an email sent in 2010 from the previous manufacturer containing a drawing of the sneaker. In response, Inuikii issued a statement from her Manager brought an action in which Manager has stated that the 2010 email in question was allegedly forged and that the former manufacturer has never before claimed rights to the design or approached Inuikii to share in the sneaker’s success. The former manufacturer would have been the sole manufacturer and made no creative contribution to the design of the INUIKII winter sneaker. In support of this has Manager referred to an agreement between Zeitneu GmbH and the former manufacturer, from which it follows that the designers – albeit with regard to shoes other than the INUIKII winter sneaker – are the property of Zeitneu GmbH and that the former manufacturer is only a manufacturer and not a designer. .

-onecopyright owner?

The interim rights of the court in Amsterdam decide in favor of Est’Seven. Although Inuikii may be considered the copyright owner at first glance: “it has, after all, marketed the INUIKII winter sneaker, of which it is undisputed that it is a successful design, for some time now without third parties (e.g. by [naam voormalige producent]) must be addressed “, according to the legal aid judge, it has no longer been proved beyond any reasonable doubt that Inuikii can be considered the copyright holder in these preliminary ruling cases.

The Legal Aid Judge finds that Est’Seven has raised sufficient doubts about the question of who owns the copyright by, in short (motivating) arguing that 1) it has not been proven that the director of Inuikii is the copyright holder due to a defect on evidence concerning the design process that 2) Inuikii has not demonstrated that Inuikii is currently the copyright owner due to the lack of (transfer) deeds and 3) the former manufacturer of the INUIKII sneaker – from whom Est’Seven currently imports Est’Mouton boot – would be the designer of the sneaker.

Therefore, the self-declaration of the challenged by the Inuikii Manager van Inuikii, according to the court, without further evidence, insufficient to assume that Manager van Inuikii is the designer of the sneaker and that Inuikii is the (ultimate) copyright owner.

Inuikii’s appeal to the presumptions of evidence under Articles 4 and 8 of the Copyright Act also does not help Inuikii, because it cannot be ruled out that Est’Seven – given his reasoned disagreement that the (former) manufacturer of the INUIKII winter sneaker is the designer case will succeed in the case to refute the evidentiary presumptions.

Conclusion

In order to meet a claim based (in part) on a copyright infringement in a summary case, the plaintiff must (be able to) sufficiently prove that it is beyond any reasonable doubt that it is the owner of the copyright.

In this context, this judgment confirms the importance of providing sufficient (additional) evidence. Therefore, always save design drawings, (introductory) sketches, transfer letters and / or other documents relating to the design process as far as possible to substantiate the notion that you are the copyright holder.

Dieuwertje Bouchier, copyright lawyer

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