For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 1 September 2014

Monday miscellany

News from Eleonora: a competition -- and a course.  A lot of readers of this weblog were away last week when fellow Kat Eleonora posted this item on the contest she is running, which carries the generous prize of free registration (worth £239) for this year's Copyright and Technology one-day conference on Wednesday 1 October in which she is participating.  To enter the competition, all you have to do is create an artistic work, whether a photograph or something more challenging, that best reflects the relationship between copyright and technology.  But that's not all: ever creative in her own right, Eleonora has just come up with another of her highly-rated bespoke copyright courses, masterminded via her e-LAWnora copyright consultancy.  On the afternoon of Wednesday 24 September, she offers "The Fabulous World of EU Copyright: what's (just) happened and what will be next".  Tickets are limited but, in response to consumer demand, the course can be followed through the simple expedient of live streaming.  Click here for details.


Around the weblogs. "Mirror, mirror on the wall, who has the biggest banana of them all?" No, Ben Challis hasn't taken a sudden interest in plant breeders' rights -- this is the title of his most recent CopyKat feature on the 1709 Blog.  Zooming off to Djibouti, Afro-IP happily reports on the restoration of the ULKER BISKREM trade mark to its rightful Turkish owner, after it was hijacked by a bad faith application by a local business. Now crossing the Atlantic to Canada, we ponder -- along with Katfriend and fellow blogger Howard Knopf -- whether Canada is to blame for Europe's current spell of unsettled weather impetus towards copyright reform [Merpel enjoys the idea of blaming the former colony for the woes of its one-time British and French masters, since it's usually the former colony that does the blaming ...]. Finally, Tomasz Rychlicki, writing on Class 46, discusses recent Polish jurisprudence on whether a law criminalising the affixing of a trade mark on counterfeit goods applies also to trade marks for services.


Great campaign, shame about the rubbish brands ... "City’s anti-littering ad campaign pulled due to trademark issues" is the title of a staff article published by CityNews, Toronto, and spotted by Chris Torrero (katpat!)  This piece reads, in relevant part:
"... Livegreen Toronto had launched a clever marketing campaign to shame litterbugs in the city. The ads, which featured insults put together with pieces of garage, were posted on various sites ...  Some examples include a Du Maurier cigarette pack and a Red Bull combining to say “Dumb,” a bag of Lays chips and packaging from Crazy Glue put together to read “Lazy,” and a Reese’s Pieces wrapper with a Gatorade bottle to make “Pig.” The ads were set to be put on the sides of buses and in newspapers.

City spokesperson Siobhan Ramsay said the city launched the campaign earlier this month, but it was “discontinued” over trademark concerns. “Concerns were subsequently raised by various companies about the use of their trademarks and the potentially negative effect that this campaign might have on their brands, even though the affected companies have indicated their support for the City’s anti-littering initiatives,” Ramsay said .."
A good try, thinks Merpel, who wonders what would have happened if the City had dug its heels in and decided to persevere with the campaign.  After all, it's not as if the municipality was actually selling anything, and there can be few consumers who are reluctant to carry on purchasing a branded product on the basis that they've seen it in an anti-litter campaign (or as real, live litter, come to think of it).

Fair deal or iMoan? Kate Bush’s request to leave the smartphones at home

Love them or loathe them, mobile communication and recording devices have become an integral part of our lives. They not only accompany us through many of the most intimate and meaningful experiences in our lives but allow us to record them and share them with others. There can be occasionally heard, however, the still, small voice of someone asking us not to.  One such moment is discussed here by Katfriend and occasional guest blogger Dorothea Thompson. This is what she says:

Kate Bush (right), the idiosyncratic songstress of 'Wuthering Heights' fame, played her first live show in 35 years at London's Hammersmith Apollo last Tuesday night, kicking off 22 dates at the venue, all of which sold out in minutes. But before Bush made her celebrated return, she made a request via her Fish People website: that it would “mean a great deal” if fans refrained from taking photos or filming during the shows. The reason given was that she wanted to have contact with the audience, “not with iphones, ipads or cameras”. But the request is pertinent to the persistent issue of photos and video recordings at live events, and stakeholders' attempts to control them.

Copyright may subsist in various elements of a live performance including music, lyrics, choreography, sound recordings, and visuals. Taking a photo or a video of such elements may constitute copyright infringement as a reproduction of the respective copyright works. The dissemination of that image or recording, such as sharing via social media, may itself constitute infringement as communication of the work(s) to the public by electronic transmission.

The Hammersmith Apollo
A potential exception to infringement may be private use, but this could only be relevant to capturing the photo or video, and not to its dissemination. An alternative may be criticism, review or reporting of current events or as, of 1 October, the UK's new fair dealing quotation exception. But it seems unlikely that the casual naming and dating of a clip online (accompanied by those irritating hashtags) would inadvertently constitute sufficient acknowledgment. Further, these exceptions apply only in relation to works not previously made available to the public -- possibly barring this exception for one-off, first-time, or highly secretive events.

So it seems that taking and sharing photos and videos, without permission, are likely to remain potentially infringing acts. For rights-owners, practically speaking, what can be done?

Like initial responses to control file sharing, heavy-handed user-directed action is likely to be both ineffective, and bad PR (a July white paper from the American Bar Association states that US anti-file sharing lawsuits “have been expensive, do not yield significant financial returns, and can cause a public relations problem for the plaintiff”).

Almost everyone attending an event now has at least one device on their person, and there are no means of telling those who wish to take photos or clips for private mementos from those who seek to publish them online (likely the majority). Smartphones, tablets and the like are seen as essential items, and are high-value in terms of not only financial but sentimental worth. This makes control measures such as confiscating devices on entry not only logistically difficult, but also a potential brand perception disaster: 'criminalising' your fans may not make good business.

There was the 2011 story about an Apple patent for infrared technology for iOS device cameras that could prevent copyright infringement by blocking users from taking pictures or shooting video at concerts, cinemas, etc (where infrared would be emitted into the audience), but it seems that was never implemented. With the continual blurring of interests between the hardware producers and content industries, however, perhaps technology will provide future solutions.

In the meantime, and with merely a few words, Kate Bush resolved the issue, for her at least, and only furthered her brand loyalty: the media output thus far has apparently been limited to official photographs. This suggests there is a way to handle the situation, and it isn’t via the courts (apologies, fellow lawyers!)

By further example, at a recent Secret Cinema ‘Back to the Future’ immersive cinema events, attendees were asked to leave phones and personal cameras at home -- apparently in keeping with the 1950s theme. But the allowance of disposal cameras (sold at the event) somewhat undermined strict historical reasoning; and with official digital photos published via social media throughout, the suggestion was more that there was something to be gained by the audience from the lack of constant distraction provided in particular by smartphones.

Technology has undoubtedly completely changed the way in which audiences consume content and interact with artists, performers, and events. Aspiring musicians, actors, writers, etc almost universally use social media and other technological tools for direct, instant access to fans and potential fans. Perhaps the price of this constant access is the expectation from audiences that in return they are able to share their experiences across social networks -- such sharing probably only increasing with advances such as the roll-out of 4G.

Conceivably, to overcome the mass urge for media-sharing (otherwise encouraged by brands and rights holders), an event must highlight the benefits to its audience of a technology-free experience. Roger Daltry of The Who recently summed it up, stating that experiencing a gig via a phone is “weird”: “Looking at life through a screen and not being in the moment totally -- if you’re doing that, you’re [only] 50% there”.

But what would happen with less adoring, respectful.. (middle-aged!) fans than those of Ms Bush? Would a polite request similarly work for a brash, anarchic punk rock gig? Or a main-stream, mass-market huge capacity festival? With Bush herself drawing a distinction, stating she had purposefully chosen an intimate theatre setting rather than a large venue or stadium, her request may in fact have been a unique solution for a wholly unique artist.

Never too late! If you missed the IPKat last week ...

Here's the ninth in our series of weekly round-ups of Katposts from the previous week, brought to you so that, if you were off on your holidays last week, you can see at a glance what you've missed without having to burrow through cyberspace or quantities of emails in order to find out.  Last week's Katposts, in chronological order, run as follows:
* Court in the act: how many European Courts are there? The first post of the week clarifies the misleading terminology that has been used in defining ‘European Courts’. The Court of Justice of the European Union (CJEU) is often referred to as the European Court of Justice by various organisations, including the UK IPO. As for the European Court of Human Rights (ECHR), this is not a European Union institution, but originates from the Council of Europe. Neither court should be confused with the European Free Trade Association Court (EFTA) which, far from being connected to the EU, operates only for non-EU States.

* Copyright, technology and a Katcontest! Eleonora invites the public to submit an original work illustrating the relationship between copyright and technology. The winner will receive a ticket to the 1-day conference Copyright and Technology taking place at Reed Smith LLP’s London offices on 1 October 2014. In addition, the IPKat will publish the best submissions! Entries should be emailed to katcontest1@gmail.com by Monday 8 September 11 pm GMT.

* Letter from AmeriKat: Judge Koh declares Takeda takes it too far with Mylan Dexilant declaration: The AmeriKat is back with a case review of Takeda Pharmaceutical Co., Ltd. et al v Mylan Inc. et al (here). US District Judge Koh dismissed Takeda’s application for a declaratory judgement against Mylan, as it would be ‘going overboard’. Takeda had sought an application stating that Mylan was infringing its patented acid-reflux drug Dexilant.

* In Cold Comfort Farmers Cards: Californians feel New Zealand chill, Katfriend Ken Moon (AJPark) writes about ruling of the New Zealand Court of Appeal in a software copyright and trade secrets dispute, Karum Group LLC v Fisher & Paykel Finance [2014] NZCA 389. The dispute concerned alleged copying and misuse of confidential information. This is the first case on non-literal software copyright infringement case in New Zealand. The Court of Appeal upheld the High Court’s decision that the software copyright had not been infringed and that there had been no breach of confidence.

* Sparks fly as sharks fly, but attack on patent validity loses its bite is a post from occasional guest blogger Paul England. He comments on the decision of Judge Hacon in the Intellectual Property Enterprise Court in William Mark Corporation & Another v Gift House International Ltd [2014] EWHC 2845 (IPEC). The claimant owned two patents, both entitled ‘Flying Shark’. The defendant, also devised toys, known as ‘Mega Flier’, and imported them for sale in the UK. The ‘Mega Flier’ was alleged to infringe the claimant’s patents while the defendant argued that those patents were invalid. The patents were held valid and infringed.

* Television Show Fan Does Not Own Facebook Likes. Marie-Andrée discusses the recent decision of the Southern District Court of Florida in Stacey Mattocks v Black Entertainment Television LLC. The case raised issues of ownership of ‘likes’ generated by a social media account. The plaintiff created a fan page for a TV show ‘The Game’ on Facebook. The page grew in popularity, and BET eventually took over its management, allowing Ms Mattocks some rights which were later withdrawn. This is the first time a court had to examine a case where a fan is claiming ownership rights over an account promoting a show. The court decided that it is the corporation which owns the IP rights over the content, not the fans. Note Rebecca’s post on a similar issue later in the week.

* "Cultivated capsicums!" Peppers resist insect, breeders resist patent comments on an article published by a national Dutch newspaper. The published item called for crowd-funding of opposition proceedings against a European patent EP2140023, granted last year to Syngenta. The patent was for insect-repellent pepper plants. However, it appears that the patent gives Syngenta ownership over all paprika (and pepper) seeds, plants and -fruits that have a natural defence against whitefly. More details on this can be found in the post and the comments.

* Patent Law in Greater China: a new title.  This is a book review of Patent Law In Greater China, edited by Stefan Luginbuehl and Peter Ganea. The book was published by Edward Elgar Publishing as part of its Intellectual Property Law and Practice series, which itself is co-edited by two Katfriends, practitioner Trevor Cook and academic Jo Gibson. The book gets a positive feedback: “Chapters from practitioners, administrators, academics and the business world give this work a degree of relevance and immediacy and show how the complex and initially puzzling interplay of law and practice in China and the economies within her orbit can be depicted and understood.”

* The Blue Jay Trade Mark Battle Commences...  Lucas Michels writes about a Notice of Opposition (Proceeding No. 91217791) filed by the Canadian baseball team Toronto Blue Jays against a design trade mark application of a bird head in International Class (IC) 025 for athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms. The application was filed by Creighton University (a US university) and depicts a new version of the university's sports mascot Billy Bluejay, which has been in use since October 9, 2013. The Blue Jays assert in their notice that Creighton’s new Billy Bluejay logo creates a likelihood of confusion.

All is Fair (Use) in Love (Lace). Marie-Andrée discusses the recent decision of Judge Thomas P. Griesa from the Southern District of New York (SDNY) in TPG Arrow Productions, Ltd v The Weinstein Company L.L.C. et al, 1:13-cv-05488. The plaintiff produces and distributes films, owning copyright in the 1972 movie Deep Throat, starring Linda Lovelace, and the trade mark “Linda Lovelace”. Claims of copyright and trade mark infringement against the producers of the movie Lovelace were dismissed.

* The secret life of Hello Kitty is a promising title and reveals that Hello Kitty is not a cat, but a young British girl! Her character has been registered for an array of trade marks, and the Kat notes that the lucrative appeal of brand extensions makes them an attractive area to invest in. The post divulges more details about her secret life, in particular some of unsuspected trade marks for which she is registered.

* Seriously, did you really assign your IP rights to all members of the group? Neil discusses the various clauses usually incorporated into licence or assignment agreements relating to intellectual property rights. He lists some common clauses and warns against their pitfalls.

* Lindsay Lohan and New York Right of Publicity: An Update ✌ ✌ ✌ ✌. Marie-Andrée updates us on what happened since her previous post on Lindsay Lohan. Ms Lohan sued Take-Two Interactive Software Inc. and Rockstar Games, the makers of the video game Grand Theft Auto V (GTAV). She claimed that the character “Lacey Jonas” and the portrayal of young, blonde women in two transition screens were unauthorized commercial uses of her image and thus violated her rights under New York right of publicity law. The defendants have now applied to dismiss the action and are asking for sanctions, saying that “her claim is so legally meritless that it lacks any good-faith basis and can only have been filed for publicity purposes.”

* Facebook in the fast lane: Ferrari moves up a gear. The last post of the week tells the story of a Ferrari fan, Sammy Wassem, who created a Facebook page for the brand. The page was eventually taken over by Ferrari and his administration rights were removed. He has now filed an action in Switzerland against Ferrari, claiming unpaid work and infringement of the copyright of the Facebook page. Ferrari counterclaimed for misuse of its trade marks.

A matter of life and death? No, it's more important than that. Life sciences in the limelight

Shakespeare's three witches in Macbeth: 
life sciences, but no available patents ...
If you ever want evidence of the enthusiasm of intellectual property practitioners for patents, you need look no further than this weblog. While the IPKat, Merpel and their friends report, review and discuss all IP topics, some generate little more than academic interest while others stir the bile, boil the blood and generally kick-start a selection of bodily fluids that less emotive rights often fail to stimulate. But patents are the irresistible bait to which no true practitioner can fail to rise. Even subjects as apparently unsexy as the publication of patent applications and time-limits for the filing of divisional applications have been demonstrated to draw spiky comments and venomous responses from otherwise staid, stoic and respectable readers. It is therefore no surprise that, when patent law crosses the path of another enthusiast-driven topic -- in this case what is usually called "life sciences" [a term which, Merpel thinks, embraces "death sciences" too], fur flies, sparks sparkle, tempers rise and you can boil your kettle on a protagonist's forehead.

Life sciences have been mired in controversy in the European Union since most of today's patent practitioners can remember. Directive 98/44 on the legal protection of biotechnological inventions -- the so-called "Biotech Directive" -- started off as a proposal some ten years earlier, and even after its passage it was subjected to a fearsome legal challenge from the Netherlands in Case C-377/98 that was not resolved until late 2001.  Ever since then, pretty well every aspect of the patentability of life forms has been discussed, debated, dissected and diced in judicial or office proceedings [if you require further persuasion, recent Katposts touching on life science issues may be perused here, here and here].

Unwanted news
for patent owners
But that's not all.  Life sciences are a zone in which patent term extension is available via supplementary protection certificates for certain pharma and agrochemical products. This in turn has generated speculation and litigation which has spilled out from patent law into the neighbouring areas of regulation of market authorisations, abuse of monopoly and market distortion. This spillage has caused confusion, uncertainty and untold agony as litigants and their adversaries watch the clock tick down on the patent's term while questions are referred to the Court of Justice for rulings which, far from clarifying the law, often leave it more confused, less fit for purpose than it was before [you can sample the mess that is patent term extension in Europe on the SPC weblog here].

These topics are among the fare offered in C5's forthcoming Life Sciences IP Summit 2014 (which this weblog is, somewhat belatedly, partnering). Subtitled "Powering Business Growth through Practical and Innovative Patent Monetisation and Protection Strategies", this event is destined to address some of the most sensitive issues in the life sciences sector, and more besides.  While it's described as a "Summit", the event actually starts in the foothills with a brace of pre-conference afternoon workshops (hoe to develop and cultivate a "free-to-operate" strategy and how to craft agreements that limit the potential for future litigation).  If their synopses are an indication of their content, they will indeed require participants to do some work. The programme then ascends to the summit through a familiar list of nightmare-inducing issues, together with some relatively light though deadly serious entertainment in the form of a mock trial and some no doubt amusing speculation as to how the life sciences patent ecology might be affected by the shift to the new unitary patent and unified patent court.

Maybe I'm naive, says
Merpel, but I still can't
see the point of a
Red Light district ...
This Summit takes place from Wednesday, 12 November (that's for the afternoon workshops) and carries on through to Friday, 14 November, the venue being the Novotel Amsterdam City, Amsterdam. Merpel thinks it's quite appropriate for an event of this nature to be held in a city that is notorious for its Red Light district. After all, as a subject, life sciences is currently as sexy as they come; she's sure that the Novotel will be literally a hot bed for industry-driven discussion, dialogue and debate leading to industry-driven solutions. There's an amazing list of speakers, including too many Katfriends to mention them all by name.  This Kat would love to be there, but he'll be in Australia at the time so he hopes his friends will do a spot of blogging and tweeting on some of its finer points.   If you want to know more, you can access the event's website here. The pricing schemes are a bit complex for a fictional Kat to get his head round, but some discounts are available to suitably designated souls.  If you book quoting the organisers' Katcode LSIPKAT, they might just be even nicer to you ...

A matter of life and death here
More important than life and death? Bill Shankly here

Friday, 29 August 2014

Facebook in the fast lane: Ferrari moves up a gear

Most big companies are present on social media these days, whether it is on Twitter, Facebook or Instagram. In fact, when establishing a brand today, an important consideration is to create its social media pages, and especially to do so before anyone else does it. This concern was not as predominant a few years ago as it is now.

Ferrari Facebook page: currently over 15 million fans
Sammy Wassem, a Ferrari fan, created a Ferrari fan page on Facebook in 2008, when he was just 15 years old. He managed the page himself, until he was contacted by Ferrari in 2009. They congratulated him on reaching 500,000 fans on Facebook, but said that “unfortunately legal issues force us in taking over the formal administration of the fan page.” No contracts were signed, but an oral agreement was eventually reached between Sammy and Ferrari, allowing him to continue to control the page alongside a few other supervising managers. Sammy asked Ferrari for some compensation in return for working on the page, but never received any. He nevertheless continued to create content for the page for the next four years, until Ferrari withdrew his administration rights two years ago.

In February 2013 Sammy and his father filed a lawsuit against Ferrari, alleging that it owed them payment for over 5,500 hours of work and for infringing the copyright of the Facebook page. Following the filing of the lawsuit, Ferrari counterclaimed for their trade mark, citing two instances of misuse in particular: advertising merchandise on the page and using the page to send invitations to Sammy’s 18th birthday party. Stefano Lai, a spokesman for Ferrari said: “The issue isn’t with Facebook or with our fans but with those who try to use Ferrari’s intellectual property to make money out of it”.

The issue is complex. Ferrari’s intellectual property is clearly involved. Its trade marks were used, as well as their copyright-protected works. However, no money was made from this unauthorised use. Sammy may have advertised some merchandise on the page, but he did not receive any monetary compensation in exchange. In fact, he helped create valuable content for the Ferrari page and contributed to some extent to its popularity. He may himself be considered to have created copyright-protected content and to be thus entitled to his intellectual property.

The action was filed in Switzerland, but what might have been the outcome if it were filed in the UK?

Sammy’s Ferrari fan page would most likely be seen as a literary work. This could be either under s.3(1)(a) of the Copyright, Designs and Patents Act 1988 as a compilation or under s.3(1)(d) as a database It is plausible for the page to be seen as a compilation as it contained various facts about Ferrari on one page. Alternatively, it could be a database, defined under s.3A(1) of the Act as a ‘collection of independent works, data or other materials’ which have been arranged in a ‘systematic or methodical way and which are individually accessible by electronic or other means.’ S.3A(2) specifies that the database would be considered to be original if ‘by reason of the selection or arrangement of the contents of the database the database constitutes the author’s own intellectual creation.’ When Sammy created the page, he was solely responsible for what was posted there, and of its arrangement, suggesting that he may have created content which was entitled to copyright protection.

Other brands have faced similar issues to those currently faced by Ferrari. For example, in 2008 the Coca-Cola Company hired the creators of a Coca-Cola Facebook page which had reached two million ‘likes’. It offered them the possibility to make their page the official page of the brand, and gave them resources to improve the page. Wendy Clark, who works for Coca-Cola explained their decision in an email statement: “In a socially networked world where everyone has 24/7 access to media to express a point of view –­ good or bad –­ it is crucial that we embrace our fans and followers,”


Indeed, court proceedings can do irreparable harm to a brand, in particular when it is targeting its own fans. The power of social media is increasing and, while the content and administration of a fan page is important, decisions that could alienate fans are unwise.

More on the story here and here.

Lindsay Lohan and New York Right of Publicity: An Update ✌ ✌ ✌ ✌


Readers of this blog may remember that last July Lindsay Lohan sued Take-Two Interactive Software Inc. and Rockstar Games,  the makers of the video game Grand Theft Auto V (GTAV). The actress claimed that the character “Lacey Jonas” and the portrayal of young, blond women in two transition screens are unauthorized commercial uses of her image and thus violated her rights under New York right of publicity law. This law, New York Civil Rights Law §§50-51, prevents the use of a “name, portrait, picture or voice…within [the state of New York] for advertising purposes or for the purposes of trade without … [prior] written consent].” Defendants have movedto dismiss the complaint with prejudice.

Defendants are arguing that the parts of GTAV where “Lacey Jonas” does appear are not advertising or trade, but is instead an artistic work, and thus out of the scope of New York right of publicity law. Defendants cited several New York cases to support this claim, such as Costanza v. Seinfeld and Krupnickv. NBC Universal.
BREAKING: Lohan Sues Twin, Claims Unauthorized Use of Likeness and Hair Brush

Defendants are also arguing that the First Amendment is an absolute bar to the complaint , as “a creative work like GTAV simply cannot give rise to a right of publicity claim,” quoting Lohan v. Perez, a 2013 Eastern District of New York (EDNY) case (not a SDNY case, as stated in Defendants’ memorandum of law). In this case, Lindsay Lohan lost her right of publicity suit against rapper Pitbull. She had claimed that the lyrics of Pitbull’s song “`Give Me Everything'" which stated “So, I'm tiptoein', to keep flowin'/ I got it locked up like Lindsay Lohan" violated her right of publicity, but Pitbull’s First Amendment defense prevailed. The EDNY noted that “the use of an individual's name — even without his consent — is not prohibited by the New York Civil Rights Law if that use is part of a work of art.

Defendants also claim that Plaintiff’s voice is not used in GTAV, and that “she is not visually depicted or mentioned by name.” As for being chased by paparazzi, this is not a portrayal of “identical events to [Plaintiff’s] life,” as stated in the complaint, because such events are “hardly unique to [Plaintiff].” The young, blonde women portrayed in the transition screens, one taking a ‘selfie’ wearing a bikini and making the “V” sign, the other leaning over a car while being frisked, could be any other young, blond woman, and do not resemble Plaintiff. Indeed, blondes have more fun.

Lindsay Lohan claimed that the “Escape Paparazzi,” a GTAV “random event” where the “Lacey Jonas” character is chased by paparazzi is based on her life, but Defendants argue that New York right of publicity law “does not recognize right of publicity claims based on life story.”

Defendants are also seeking sanctions against Plaintiff and her counsel claiming that the action is frivolous, and that “her claim is so legally meritless that it lacks any good-faith basis and can only have been filed for publicity purposes.”

Friday fantasies

IP editors and publishers, hold the date! Following a hiatus last year, the IPKat weblog's annual IP editors and publishers meeting and buffet lunch takes place on 25 November 2014, from 12.30 pm to 2.30 pm, at the offices of London law firm Bircham Dyson Bell LLP.  We have a list of people who have attended the previous event, back in 2012, but it's now somewhat out-of-date: promotions, career moves and maternity leave being the main culprits.  So if you are professionally involved in publishing or editing IP journals, books, online services and the like -- or if you are part of the IP media scene, supplying information, text or media releases for IP news sources -- and you'd like to be invited when we've finalised our arrangements, just email the IPKat at theipkat@gmail.com with the subject heading "IPPub" and we'll do the rest!  Merpel's already excited to find out who this year's keynote speaker is, but she'll just have to wait ...


Whatever happened to Astellas? Readers may still be looking forward to a ruling from the Court of Justice of the European Union (CJEU) in Case C-661/13 Astellas Pharma Inc. v Polpharma SA Pharmaceutical Works, which was excitedly publicised by this Kat here and here on account of its potential for clarifying the scope of Bolar exemptions from patent infringement in favour of experimental use.  However, it appears that the Oberlandesgericht Düsseldorf informed the CJEU that it was withdrawing its request for a preliminary ruling. Th request for a reference has now been removed from the register. Does anyone know why? Merpel guesses that it's because the Oberlandesgericht Düsseldorf decided it knew the answers after all, but this Kat thinks there may be a more prosaic answer ...


Here's a different sort
of ice bucket challenge
Bucketing down. A katpat goes to Richard Holmes (Marks & Clerk) for spotting this item in the Washington Post on the ALS (that's amyotrophic lateral sclerosis) Association's plan to register the words "Ice bucket challenge" as a US trade mark. Fellow IP blogger Erik Pelton (who has already written on this issue here and here) is quoted as saying: "The reason in general one seeks to protect a trademark is to prevent others from using it.  I find this to be shameful, because I hope that they would never consider … preventing some other charity from using the phrase.” This Kat is somewhat inclined to agree, which is why he thinks the charity's other target trade mark, "ALS ice bucket challenge", is more appropriate. He is also amazed that the ALS ice bucket challenge has raised more than US$ 94 million in such a short time and thinks it's a great idea -- but it's unlikely to produce a result like this more than once in a generation, so she doubts that it will be done again in a hurry.  Merpel however suspects that the ALS Association may have had grand schemes to earn more money not by preventing the use of "ice bucket challenge" by other charities but by profitably licensing the term and its associated know-how.


Around the weblogs. SOLO IP has been industriously posting away this week: there's speculation as to how one might address a judge of the soon-to-be-constituted Unified Patent Court, while Sally Cooper frets about background copyright and Barbara Cookson writes about diversity and skill sets in the patent profession.  The 1709 Blog's sidebar poll on that blessed black-crested photo-taking macaque, with three days left till the close, now has 334 respondents. Meanwhile, on the Class 46 trade mark law blog, former guest Kat Laetitia spots some non-confusingly similar diamond marks, here, and Katfriend Pedro Malaquias points to a recent Portuguese opposition involving "KART"-based marks. Finally, Stefano Barazza reports on research that reveals that the behaviour of patent trolls can be somewhat opportunistic.


The Once and Future Narrative.  Although he is far too modest to tell everyone, fellow Kat Neil has just had an article published in the International Trademark Association (INTA) Trademark Reporter. Titled "Trademark Licensing: The Once and Future Narrative", it appears in volume.104, issue 4 of that venerable publication and its abstract reads as follows:
"This article sets out the narrative of trademark licensing on the basis of the following: (i) the ever-evolving nature of licensing in response to changing uses of marks in commerce; (ii) challenges to the legal validity of licensing under classic trademark doctrine; (iii) the role of quality control; (iv) diversity in the legal approach, even between countries that are part of the common law tradition; (v) blurred boundaries between licensed use of marks and other forms of use of marks by third parties; and (vi) the future directions of trademark licensing".
Readers who are INTA members, or who can access the Trademark Reporter, and who have a soft spot for Neil's pet subject of trade mark licensing, are in for a treat!

Seriously, did you really assign your IP rights to all members of the group?

How many times have Kat readers encountered, or even been complicit in, the drafting of, an agreement where the licensc or assignment of IP rights purportedly applies to multiple members of the “corporate group” or the like? The impetus for such a provision usually comes from a tax or corporate law source, and it is often found where there is a contribution of technology by one party to the other, such as in the context of an acquisition or an investment. In such a case, the owner of the IP underlying the technology will either license or assign its IP rights to multiple named related entities (this Kat will call them “Named Group”) or, more generally, to the entire “corporate group” (this Kat will call them “Corporate Group”), which is broadly defined and may well span an indeterminate number of entities that are somehow all members of the group. Whatever the reason, such a provision often places the IP lawyer in an awkward situation in attempting to explain to his colleagues the potential problems of such a provision. It is useful to consider further the various circumstances in which such a provision appears and the problems that may arise by virtue of such a clause.

1. The owner licenses the IP to either all members of the Named Group or to Corporate Group—In principle, this arrangement should not pose a problem, since the law contemplates that an IP licence may be either exclusive or non-exclusive. On its face, the licence described here would appear to fall comfortably under the rubric of a “non-exclusive” licence. There are, however, a number of possible pitfalls here.

The agreement can explicitly recite that the licence is “exclusive” (this Kat not discuss here the situation where the licence recites that it is “exclusive” except for the following named entities, and leaves this possibility for perhaps another time). True, one is not bound by the contractual characterization of the licence as “exclusive” or “non-exclusive” and the actual provisions of the licence will prevail. But what happens where the parties draft the licence in terms of an exclusive licence, whereby the only material aspect of the licence that supports the conclusion that it is non-exclusive is the existence of multiple licensees by virtue of their inclusion within either the Named Group or the Corporate Group? If ever put to legal challenge, will the court simply impose the relevant provisions appropriate for a non-exclusive licence, which would effectively require the court to rewrite a portion of the licence as agreed-upon? Or would a court find that the licence provisions are invalid, because they have failed their essential purpose, or have run afoul of a similar contract doctrine?

A second potential problem arises when the licence involves a trade mark and the jurisdiction requires quality control to maintain the validity of the licence. Here, the licensor needs to pay particular attention to which members of the Named Group or Corporate Group (if the licensor can even successfully identify which of them are relevant) are actually using the licensed mark. Even in jurisdictions where there is no formal quality control requirement, the practicality of the situation will place a burden on the licensee to monitor use of the trade mark properly, lest one or more of the licensees is using the mark in a way that does harm to the integrity of the mark, especially when it is part and parcel of the licensor’s brand.

2. The owner assigns the IP to either all members of the Named Group or Corporate Group—This type of provision may pose an even more fundamental problem because transfer (and receipt) of ownership of the IP right is involved. Let’s first take the situation where the grant provision simply provides that the assignor assigns its IP rights to all members of the Named Group or Corporate Group, without further stating the proportional interest granted to each entity. Depending upon the laws of the relevant national jurisdiction, there may be a presumption that the proportional interest received by each assignee is equal. The national jurisdiction may also provide either explicitly or by case law the terms and conditions for the exploitation of the IP right (as well as an accounting to the other assignees for profits obtained) by each of the assignees. Here too the open-ended nature of the entities included within the Corporate Group may pose a difficulty of identification. Also, where the law does not provide an easy way to determine the proportional interest or the right of exploitation for each assignee, uncertainty will prevail and may well require the various assignees to enter into a further agreement to resolve the situation. And did we mention the tax consequences?

Perhaps of more interest is a further clause in the assignment agreement that provides all members of the Named Group or Corporate Group, as assignees, undertake to subsequently designate a single entity from among the relevant group that will be the ultimate owner of the IP rights. A number of possibilities arise. If the assignees do not thereafter designate the ultimate owner of the IP rights, does that invalidate the entire assignment arrangement or does such failure to designate simply mean that each of the assignees as members of the Named Group or Corporate Group becomes the owner of a proportional interest of the IP right? In any event, which part (ies) has a right to seek termination of the assignment for failure to comply fully with its terms, or to the otherwise challenge the assignment?

In a variation, consider that the assignment agreement itself provides the identity of the ultimate owner of the IP rights, while still preserving the initial assignment grant to each of the members of the Named Group or Corporate Group? In such a situation, at least two possible alternatives (there well could be more) suggest themselves to explain the outcome of such a provision: (i) a two-stage assignment arrangement has been created, whereby at the first stage each of the assignees takes ownership, subject to the considerations discussed in the previous paragraph, followed by the later assignment to a single entity; or (ii) the first stage creates a situation where the assignor remains the constructive owner of the IP rights, wherein the members of the Named Group and Corporate Group hold merely a legal right in the IP rights; it is only after the second stage is consummated that beneficial and legal rights are joined in the hands of a single ultimate owner.

For Kat readers who have braved this post until the end, the discussion has been intended to emphasize one overarching point. Absent extremely unusual circumstances, it is advisable to avoid the kind of grants of IP right discussed above, lest uncertainty cloud the outcome of the disposition for all concerned.

The secret life of Hello Kitty

"Hello Kitty: not a cat?" is the striking but -- to this Kat quite unsurprising -- title of an article by Hannah Marsh, published in The Telegraph earlier this week. in relevant part, the article reads (with spellings corrected):

"... D]id you know that Hello Kitty is not a cat, but a young British girl with a twin sister and an entire backstory? Christine R Yano, an anthropologist from the University of Hawaii and visiting professor at Harvard, has spent years studying the phenomenon that is Hello Kitty and her lasting appeal. Speaking to the LA Times, she explains some of the lesser-known facts about the cutesy character.

"Hello Kitty is not a cat," she says. "She's a cartoon character. She is a little girl. She is a friend. But she is not a cat. She's never depicted on all fours. She walks and sits like a two-legged creature. ..."

... She's actually British. She has en entire backstory that sees her living at home outside London with her parents, George and Mary White. Her full name is Kitty White. She has a twin sister called Mimmy White, a cool grandpa called Anthony and a sweet grandma called Margaret. She's a Scorpio. She loves apple pie. As well as her own pet cat, Charmmy, she has a hamster called Sugar, given to her by her friend Dear Daniel."
The reason why this Kat is not surprised to learn that Hello Kitty is not actually a cat is that, many years ago, he did some consultancy work for Express Newspapers, in the course of which the subject of another fictional character arose, Rupert Bear. This nominal ursine (right), despite his ears and facial features, is not a bear at all but a boy (also apparently British) with the face of a bear [a cursory surf of the internet has not yet revealed any source to support this contention but, like Hello Kitty, Rupert behaves in human fashion].  This Kat is fairly certain that there may be others and has a hunch that his readers may be jogging his memory ...

Merpel notes that there is a seamier side to Hello Kitty's existence. Like all valuable intangible assets, she is the subject of a thicket of trade mark registrations.  This is quite normal: while brand extensions can be lucrative, they are most attractive to invest in when the shifting of a popular brand or icon from one product to another is underpinned by legal protection. However, some of these registrations are for quite surprising goods.  For example, Community trade mark EU000103721 (a figurative mark, depicted on the left) is registered for a large number of products that even a pretty imaginative reader would not immediately associate with Hello Kitty.  The list includes:
Class 3 cleaning, polishing, scouring and abrasive preparations
Class 5 preparations for destroying vermin; fungicides, herbicides
Class 8 side arms; razors
Class 9 fire-extinguishing apparatus
Class 11 apparatus for ... sanitary purposes
Class 18 whips
Another of Hello Kitty's Community trade mark registrations, EU003142247 covers some even more unpromising products:
Class 4 industrial oils and greases; diesel oil; gasoline; kerosene; petrol
Class 6 materials of metal for railway tracks
Class 10 artificial limbs, eyes and teeth; tongue scrapers.
Class 12 non-skid devices for vehicle tires.
Class 34 tobacco; smokers' articles.
To the best of this Kat's knowledge, the Hello Kitty portfolio of IPs has not been licensed for use on any of these products, and he doubts that they will be.

Here's one further little-known fact about Hello Kitty: "Goodbye Cathy: Hello Kitty and Miffy settle copycat case", penned in June 2011 by Catherine Lee ("Cat the Kat") and available here, is the all-time most-visited blogpost on this weblog. As of this morning, this post has been visited no fewer than 238,983 times.

Thursday, 28 August 2014

All is Fair (Use) in Love (Lace)

I learned about this interesting fair use case from a tweet posted his week by Eleonora. Thank you @eLAWnora!

On August 25, 2014, Judge Thomas P. Griesa from the Southern District of New York (SDNY) dismissed the copyright and trademark infringement complaint of Plaintiff Arrow Productions against Defendants The Weinstein Company LLC, the producers of the movie Lovelace. The case is TPG Arrow Productions, Ltd. v. The Weinstein Company L.L.C. et al, 1:13-cv-05488.

Plaintiff is a company producing and distributing films. It owns the copyright to the 1972 movie Deep Throat starring Linda Lovelace. It also owns the trade marks “Linda Lovelace,” one for films and the other for adult sexual aids. It also owns the trade mark “Deep Throat” for alcoholic beverages and energy drinks. Defendants produced and distributed the 2013 movie Lovelace, a biopic about the (in)famous actress, starring Amanda Seyfried.

Plaintiff filed a copyright and trademark infringement suit in the Southern District of New York (SDNY) in August 2013 against The Weinstein Company LLC, which produced the movie Lovelace, claiming copyright and trademark infringement. Defendants moved to dismiss.

As explained by the SDNY, “Deep Throat is a famous pornographic film replete with explicit sexual scenes and sophomoric humour.” It has achieved cult status. I have not seen it, but one time I found at a library sale a tattered copy of the autobiography of Linda Lovelace, Deep Throat. I bought it, as I cannot resist a 10 cent price tag. I was not expecting much, but the book is quite interesting because it depicts the story of a woman who was abused by her entourage and forced to play in pornographic movies. The movie produced by Defendants was inspired by this book as it describes Linda Lovelace’s life and the physical and emotional abuse she suffered. It does not contain pornographic scenes or nudity.
She Is Doing Whaaaaaat?

Plaintiff alleges that defendants infringed its copyright by copying three scenes from the Deep Throat movie into their Lovelace movie. Indeed, some scenes of the Lovelace movie show behind-the-scenes accounts of some of the most famous Deep Throat scenes. The court found no infringement, because it was fair use.

The doctrine of fair use, originally created by the courts, is now codified in the Copyright Act of 1976, 17 U.S.C. §107, and provides an affirmative defense to a copyright infringement claim. 17 U.S.C. §107 lists four factors which the courts consider when determining if a particular use of a protected work is fair:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.”

As the determination of fair use is a mixed question of law and fact, the SDNY reviewed and compared both movies to undertake its fair use analysis. Some days at work are better than others.

The SDNY found that Lovelace is “entitled to a presumption of fair use” under the first fair factor, the purpose and character of the use, as it is a “critical biographical work,” and biographies are generally considered fair use. The more important question, under the first factor, is whether the use was “transformative.” In Campbellv. Acuff-Rose Music, Inc., the Supreme Court explained in 1994 that the first factor aims at determining whether the use is transformative, as adding something new, or if it merely supersedes the original work.

Here, the court found that the three scenes added “a new, critical perspective on the life of Linda Lovelace and the production of Deep Throat.” The Lovelace movie is not pornographic but instead focuses on Linda Lovelace’s life and her emotional state while filming Deep Throat. It portrayed her “as an unsuspecting amateur, anxious about her role in the film” and how she was intimidated by her then-husband Chuck Traynor into participating to the film. As such, the Lovelace scenes serve a different purpose than the original, pornographic scenes.

Even if Lovelace is a commercial work, this does not prevent finding fair use. As explained by the Supreme Court in Campbell, “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”

The second factor, the nature of the copyrighted work, also weighed in favor of defendant, as it was of creative and expressive nature, which provides “a greater leeway… to a claim of fair use” (Cariou v. Prince, Second Circ. 2013 at 709).
Is This Fair Use? 

The third factor, the amount and substantiality of the use, also weighed in favor of the defendants. Lovelace copied or recreated three scenes from Deep Throat but they contained original dialogues and lasted about four minutes, while Deep Throat is sixty-one minutes. Therefore, the SDNY found “that defendants did not copy any more than necessary to achieve its creative purposes.” The purpose of Deep Throat was pornographic while Lovelace is a critical, biographical film.

The fourth factor, the effect of the use on the market, also weighted in defendant’s favor. Courts consider whether the allegedly infringing work harms the market for derivative works for the copyright owner of the original work. Lovelace is a transformative use of Deep Throat as it has a different subject and thus could not supplant demand for the original work.

For all these reasons, the SDNY found that defendants had not infringed Plaintiff’s copyright.

Plaintiff also claimed trade mark infringement and trade mark dilution by blurring and tarnishment because Defendants named  its movie Lovelace and referred to Deep Throat when marketing it. However, the SDNY found no trademark infringement as consumers were not likely to be confused by believing that Plaintiff was involved in the production of Lovelace. The dilution claim failed as a matter of law, as Plaintiff had failed to provide any basis for its dilution claim beyond reciting the law.

The SDNY entered judgment in favor for Defendants and dismissed the complaint in its entirety.

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