Case Summary and Outcome

The Amsterdam Court of Appeal partly overturned a previous ruling from the Amsterdam District Court prohibiting the online publication of two out of seven images of Miffy, a well-beloved fictional character for children, based on the infringement of copyright and trademark rights, assigned to the company Mercis, under art. 2.20 par. 1d of the Benelux Convention on Intellectual Property (BCIP). In these images, Miffy was portrayed in relation to aggressive language, drug use, and terrorism, subjects that stand in sharp contrast with Miffy’s usual child-friendly and non-violent portrayal. The actions were brought by Mercis —the company that holds the copyright and trademark rights to Miffy—, and Dick Bruna, the creator of Miffy, who considered that Punt.nl violated their copyright and trademark rights by facilitating the online publications of the images of Miffy in which the character was depicted as a drug user and a terrorist. Mercis and Dick Bruna filed a motion to take down the images as well as to prevent Punt.nl from allowing their websites to publish any images with the likeness of Miffy under the Dutch Copyright Act (AW) and the Benelux Convention on Intellectual Property (art. 2.20 par. 1c and 2.20 par. 1d BCIP). The Amsterdam District Court allowed the reproduction of five of the seven images under the parody exception of art. 18b of the AW and prohibited the reproduction of the two remaining images concluding that there was trademark infringement under the art. 2.20 par. 1d of the BCIP. When considering the two images prohibited by the first instance court, the Amsterdam Court of Appeal decided that all seven images adhere to the requirements of the parody exception of art. 18b of the AW, as they have a clear humorous intent and keep sufficient distance from the original work. The Court allowed the reproduction of the images due to their evident status as parodies.   

Facts

Miffy (Nijntje in Dutch) is a fictional character of a rabbit found in picture books and on toys intended for children. Miffy was created and drawn by Dick Bruna as a child-friendly non-violent character. Both the word-mark “Nijntje” and some distinctive figurative marks of Nijntje are assigned to the company Mercis. The word-mark “Nijntje” is registered at the Benelux Trademark Office and therefore it has trademark protection in the Netherlands.

Punt.nl owns the domain www.punt.nl, which hosts numerous websites and is one of the largest hosting companies in the Netherlands. On three of the websites hosted by Punt.nl a total of seven images that held a close likeness to Miffy were published online. In these images, Miffy was depicted as a criminal, drugs user and terrorist—subjects that stand in sharp contrast to Miffy’s normally non-violent and child-friendly portrayal. 

In 2009 Mercis and Dick Bruna brought legal action against Punt.nl regarding the online publication of seven images depicting the likeness of Miffy on websites hosted by it. The plaintiffs requested the removal of the images from the websites and a prohibition from publishing the images in the future, based on the infringement of their copyright and trademark rights —in the case of Mercis—, and Dick Bruna’s personal rights, regarding Miffy. 

The District Court of Amsterdam considered that five images of Miffy were parodies and thus were exempted from protection under art. 18b of the Dutch Copyright Act. Nonetheless, the district court held that two images were in violation of the plaintiffs’ rights, under art. 2.20 par. 1d of the Benelux Convention on Intellectual Property, as they did not keep sufficient distance from the figurative marks registered by Mercis and were considered detrimental to the reputation of Mercis’ trademarks without a valid reason. 

The judge of the first instance court ordered Punt.nl to remove the two images of Miffy from its websites within five days after the judgment was issued, not to publish the aforementioned images in the future, and to remove copyright or trademark infringing content within 48 hours after receiving a report by Mercis regarding the publication of images infringing Mercis’ trademark rights. 

On 15 January 2010, Mercis and Bruna filed an appeal before the Amsterdam Court of Appeal against the judgment of the first instance court that allowed the online publication of the five images of Miffy that appeared on the defendant’s websites.

Decision Overview

The main issue that the Amsterdam Court of Appeal analyzed was whether the seven images of Miffy published on three websites hosted by Punt.nl —in which the likeness of the popular children’s character was depicted as a criminal, drugs user, and terrorist— infringed on the copyright and trademark rights of Mercis and Dick Bruna, or if they fell under the parody exception as set by art. 18b of the Dutch Copyright Act. 

Mercis argued that Miffy is a copyright-protected work under art. 10 of the Dutch Copyright Act. According to the company, by copying the literal elements of Miffy with only minimal changes, the images published on three of the websites hosted by Punt.nl are an infringement of this copyright as they are “an unauthorized reproduction as meant in art. 13 of the Dutch Copyright Act.” [par. 3.2] In addition, Mercis held that the previously mentioned images of Miffy were a violation of the trademark rights of the company, under art. 2.20 par. 1c and art. 2.20 par. 1d of the Benelux Convention on Intellectual Property, as the hosting provider Punt.nl “takes unjustified advantage of, or is detrimental to, the brand’s distinctive character or reputation without due cause.” [par. 3.2] Lastly, Mercis argued that the contested images of Miffy breached the moral rights of Dick Bruna as the creator of Miffy, in accordance with art. 25 of the Dutch Copyright Act, since the aggressive language and associations of Miffy with drugs and terrorism detract from Miffy’s child-friendly character.  

For its part, Punt.nl invoked the liability exclusion of art. 6:196c par. 4 of the Civil Code. They argued that since they did not publish the images of Miffy themselves, they cannot be held liable for copyright and trademark infringement. In addition, they argued that Miffy is not a copyright-protected work but a style, which cannot be protected by copyright. However, the defendant held, even if Miffy were determined to be a copyright-protected work, then the contested published images of Miffy would not infringe its copyright because they fall under the parody exception provided by art. 18b of the Dutch Copyright Act. The images of Miffy, according to Punt.nl, should be considered a form of parody due to their humorous intent, the absence of likelihood of confusion between the parody and the original work, and the lack of competitive intent. As such the images are protected by freedom of expression, Punt.nl noted. Due to their status as parodies, the images of Miffy are also not a violation of the trademark rights held by Mercis. 

The Court began its argument by adopting the argument levied by the first instance judgment regarding Miffy’s status as a copyrighted work. According to it, Miffy is a copyright-protected work —as per art. 10 of the Dutch Copyright Act—, because “Miffy is characterized by elementary colors, thick lines, the characteristic relationship between head and body, the shape of the head, the ears, the (position of the) eyes, and the so-called ‘Andreas cross’, which indicates not only the nose but (…) also the mouth. All this implies that the figure Miffy has its own original character and bears the personal stamp of its creator.” [par. 4.5] 

These copyright-protected characteristics, the Court considered, were copied in the contested images. Nonetheless, the Court agreed with Punt.nl and the District Court of Amsterdam by considering that “the purpose of illustrations [2 to 6] —which in combination with the accompanying texts contrasts sharply with the original figure of Miffy— is unmistakably to evoke laughter, which does not detract from the fact that by no means everyone will find the contested images equally funny or appropriate. This is parodying use, i.e., imitations in a slightly altered form that make the figure Miffy the object of laughter and change the tenor of the original work in a humorous, mostly ironic way. This contrast is reinforced by the accompanying texts. Whereas Dick Bruna’s texts are eminently child-friendly and non-violent, the texts accompanying the contested images are mostly coarse and aggressive.” [par. 4.8] 

Regarding images 1 and 7, the Court agreed with the defendant in that they were also permissible under the parody exception set in art. 18b of the Dutch Copyright Act, as these images met the necessary conditions laid out in that provision to be considered parody: both images 1 and 7, “while maintaining the recognizability of the original necessary for a parody, took sufficient distance from the original not to qualify the parody as a mere copy. Regarding the apparently humorous and ironic intention of the parody, again, it is not necessary for everyone to  laugh at it.” [par. 4.13]

Hence, the Amsterdam Court of Appeal partly overturned the decision of the first instance court and decided that all seven images of Miffy were admissible under the parody exception of art. 18b in the Dutch Copyright Act and did not violate any trademark or copyright law, as argued by the plaintiffs.