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

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.

Thursday thingies

Mother knows best
Southampton, alma mater ...  This week's Monday Miscellany excitedly announced that fellow Kat Eleonora was taking up a lectureship in IP Law at the University of Southampton, mentioning a couple of famous IP lawyers who had emanated from this notable establishment. In his excitement he overlooked mention of IP omnivore Trevor Cook (now with WilmerHale) and James Tumbridge (Pillsbury). There are surely others too so, if you are heavily into IP and Southampton is your alma mater [translated by Wikipedia as "nourishing mother"] do let us  know!  Meanwhile, Eleonora's own unique form of intellectual nutrition continues to benefit us all. For the second time in recent weeks, one of her Katposts has been avidly seized upon by leading professional law magazine Legal Week, this time on the question whether taking a selfie inside London's National Gallery [a place where lots of selfies from pre-digital days are exhibited] a copyright infringement? You can read Legal Week's take on the subject here.  Oh, and here and here are a couple of Rembrandt selfies, hanging in that very institution.


Monkey selfie poll.  The 1709 Blog's sidebar poll on the ideal resolution of the copyright issues relating to the now celebrated selfie taken by a black-crested macaque is now close to receiving its 300th response.  At present, marginally more than half those who have participated are of the opinion that there should be no copyright at all in such a work.  This is the position taken by Wikipedia and endorsed by the US Copyright Office. However, there are still four days to go and there is not inconsiderable support for the proposition that copyright should subsist and be enjoyed by what one might describe as the nearest available human.  Do please participate if you have not done so already!


Kat-chats and dialogues.  Next Thursday's Kat Chat between Christopher Rennie-Smith and Darren Smyth about life in the fast lane at the European Patent Office, detailed here, is now pretty well full to capacity. We have however opened a reserve list for people who can come if someone else has to cancel (there are are usually a few on-the-day cancellations as work, illness and unexpected occurrences take their toll) so, if you've not yet signed up there might still be a chance for you.  In contrast, the dialogue on Tuesday 16 September between IAM editor Joff Wild and IP guru Neil Wilkof about the impact of patent litigation on patent values, a joint IPKat-IP Finance blog production which is detailed here, still has spaces available. If you'd like to come, just sign up!


Question 1: "How many
European Courts are there?"
Error of their ways.  The IPKat's friends at the UK Intellectual Property Office (UKIPO) did a bit of a whoopsie last week when they somehow managed to confuse with that tyrannical tiger of a court, the Court of Justice of the European Union with that tired and toothless tabby, the EFTA Court [see "Court in the act: how many European courts are there?", here]. Fortunately. no doubt having read Monday's blogpost, the UKIPO has put matters right, confirming that Case E-16/14 Pharmaq SA v Intervet International is indeed an EFTA Court case which involves some fascinating questions (six in all, of which some are more fascinating than others ...) involving marketing authorisations for veterinary medical products upon which supplementary patent certificates for patent term extension may be based.  Better still, the closing date for interested parties [proprietary drug manufacturers, their generic competitors and pet owners, says Merpel] to make their comments, thus indicating to the UK government what position it should take on the questions, has been extended from tomorrow, 29 August, to 4 September.  Thanks, UKIPO, says this Kat: you've done the noble thing.


PAEs: do they come in
peace -- and should they
go in pieces ...?
Around the weblogs.It isn't really a blog, but Way Better Patents looks and feels like one. Here, on "Let the Dance Begin: the FTC PAE Study is On", Arleen Malley Zank writes on the fact that, in the US, the Federal Trade Commission has received the go-ahead for a major review of patent assertion entities: the budget allows for nearly 30,000 person-hours between now and the end of August 2017 to examine the impact of PAEs on the IP monetisation ecosystem (katpat to Nigel Sywcher for unearthing the link).  Elsewhere, a couple of new books have been given the once-over: PatLit opens the covers of the latest England and Wales IP litigation thriller, Intellectual Property Enterprise Court: Practice and Procedure by Angela Fox, while Art & Artifice ponders a slim but subtle new title, Comic Art, Creativity and the Law, a decidedly US-pitched tome by Marc Greenberg and none the worse for that.   IP Finance asks some questions about Singapore's imaginative IP ValueLab, while the 1709 Blog's post on Portuguese proposals to expand the scope of that country's private copying levy indicates that this notion is not universally welcomed.

Wednesday, 27 August 2014

The Blue Jay Trade Mark Battle Commences...

New Billy Bluejay
(U.S. Application Serial No. 86067719)
A cross-border trade mark dispute arose late last week when Canada’s only Major League Baseball team, the Toronto Blue Jays (Blue Jays), filed a Notice of Opposition (Proceeding No. 91217791) at the U.S. Trademark Trial and Appeal Board 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 (Serial No. 86067719; the “Application”). The Application, owned by Creighton University—a small university in the U.S. mid-west (Omaha, Nebraska to be precise), 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 (15 U.S.C. §1052(d)) with several of the Blue Jays’ prior-registered U.S. marks including Registration Nos. 4314074, 4314078, and 2619938 to name a few (collectively, “Registered Marks”).
Toronto Blue Jays Logo
(U.S. Registration No. 4314078)
Although news reports mentioned that Creighton representatives were in negotiations with the Blue Jays to resolve this trade mark dispute, some recent reports also show that Creighton may dispute the Blue Jays’ opposition claims. As reported in the Globe and Mail, Creighton’s general counsel James Jansen stated that, “there’s nothing that should confuse Creighton University with the [Blue Jays]” and that the Application’s design is a “remake” of Billy Bluejay, which has had multiple variations since it was chosen as Creighton's mascot in 1878. He further commented that “I don’t know how many different ways you can depict a bluejay head.”  
If the Application’s design is considered a remake of prior variations of Billy Bluejay dating back to the 19th century, Creighton may claim that the Application’s logo obtained common law protections well before the Registered Marks’ first use in commerce or even the Blue Jays' founding in 1977. This may allow Creighton to claim priority trade mark rights to the Application (15 U.S.C. §1057(c)15 U.S.C. §1052(d)).
Creighton's
Old Billie Bluejay
However, an examination of the Application and previous variations of Billy Bluejay shows that unlike Mr. Janson’s assertions, there are actually multiple ways to depict a bluejay head. Unlike the Application’s navy, light blue and grey coloring of Billy's head, previous Billy Bluejay images show Billy colored royal blue with yellow eyes and beak (no to mention he is wearing a white jumper!), which would likely be considered substantially different from the Application's depiction of Billy. Beyond these substantial differences, Creighton claims in the Application that their first date of commercial use of the new Billy was in October 2013—likely preventing the University from arguing that Creighton has prior use rights in the Application.
Absent priority, Creighton will likely have to show that the Application does not cause a likelihood of confusion with the Registered Marks. This will be determined based on the multiple factor likelihood of confusion test laid out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Although any of the ten factors of this test may determine the outcome of such an assessment, one of the most contentious factors will likely be the similarity of the Application and the Registered Marks in their entireties as to appearance, sound, connotation and commercial impression. See, e.g. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (C.C.P.A. 1976); TMEP § 1207.01.
J
(U.S. Registration No. 3080408)
Within this factor, one of the most contentious and highly subjective evaluations will be the similarity of the visual appearance of the Application and the design-only Registered Marks due to the Application’s design-only status. In evaluating the likelihood of confusion between design marks, the similarity of the marks must be decided primarily on the basis of visual similarity. In re Vienna Sausage Mfg. Co., 16 U.S.P.Q. 2d 2044, 2047 (T.T.A.B. 1990). Although the Application and the main design-only Registered Marks have triangular shaped bird heads and are depicted in public with similar navy and light blue coloring, most of such Registered Marks have something distinguishable from the Application such as a maple leaf (see above left; Reg. No. 4314078), a large letter J (see left), or a baseball background (Reg. No. 1256175). Further, neither the Application nor the Registered Marks claims color as a feature, meaning that their similar coloring will not be a determinative factor in a likelihood of confusion analysis. However, whether the visual differences between the marks are distinguishable enough in general to rule out confusing similarity amongst the general public remains to be seen.
Further, as has been excellently highlighted by Ms. Mari-Elise Taube in the Trademarkologist, there remains a burning question as to whether the public will be confused as to the source of the Application owner's goods or services. The likelihood of confusion between similar marks in general is not determined on whether people will confuse the marks, but rather whether the marks will confuse people into believing that the marks’ goods or services derive from the same source. Paula Payne Prods. Co. v. Johnson’s Publ’g Co., 473 F.2d 901, 902 (C.C.P.A. 1973); TMEP § 1207.01. Although likely unfamiliar to most European readers, Creighton is primarily known in U.S. sports for its previous mid-major, now major conference college basketball teamthink of a U.K. football club moving from League One to the Championship League or directly to the Premiership, e.g. Hull City A.F.C. but in an amateur status. In contrast, the Blue Jays are a professional baseball team. As raised by Ms. Taube, it may be difficult for the Blue Jays to argue that the general public will be confused as to Creighton's sponsorship or affiliation by the Blue Jays, who play a different sport, in a different league, in a different professional status, and who even originate from a different country.  
Although it is unknown how this dispute will be resolved, it is clear that the fate of bird head sport logos hangs precariously in the balance.

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