04 March, 2015

Retrospective - IP Infringement and Free Speech

Almost as holy as expression in its many forms, is the fact that, in most countries at least, expression is largely free of limitations, and that even dissenting opinions can, and should be voiced. With this vast freedom, especially in the United States, one can argue that the freedom of expression can be misused and utilized for nefarious means, or to harm others or their more intangible assets such as reputation or notoriety. In any instances where one's reputation is harmed through the freedom of expression (assuming that expression falls within the letter of the law), those parties would clearly want to prevent that speech through any means necessary; even more questionable ones. The attempted curtailment of speech has been discussed on this blog before, but that still leaves the question of can intellectual property rights be used to prevent freedom of expression? A case in the US Court of Appeals attempted to face this very question some decades ago.

The case in question was Rogers v Grimaldi, decided in the late 80s, which concerned a movie made by Frederico Fellini for the defendants in 1986. The subject matter of the movie, wonderfully titled as "Ginger and Fred", were two fictional cabaret dancers, Pippo and Amelia, who were known for their imitation of both Ginger Rogers (an Academy Award winning actress in the 1940s, and the plaintiff in the case), and Fred Astaire, who Ms. Rogers often co-starred with in various productions. The cabaret dancers were known as "Ginger and Fred" to their viewers in Italy, and the movie's title, and subsequent plot, refers to their reunion after years of retirement. After distribution within Europe and the US the movie was received rather negatively, and undoubtedly in the wake of this negative publicity, Ms. Rogers sued and claimed false designation of origin under 15 USC section 1125 and a violation of her common law rights to publicity.

Effectively what the case is assessing is a balance between free speech and the protection of an individual's (or entity's) rights in their trademarks, albeit more in the context of passing off than registered trademarks (more on which can be found here). Justice Newman presented the question well in the majority's opinion: "Poetic license is not without limits. The purchaser of a book, like the purchaser of a can of peas, has a right not to be misled as to the source of the product. Thus, it is well established that where the title of a movie or a book has acquired secondary meaning — that is, where the title is sufficiently well known that consumers associate it with a particular author's work — the holder of the rights to that title may prevent the use of the same or confusingly similar titles by other authors".

Frank was worried he would not be heard
In answering this question, the Court of Appeal approached the matter through a balance of public interest and those of any affected parties: "We believe that in general [15 USC 1125] should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity's name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work". What Justice Newman's opinion states, is that the potentially misleading title has to apply to the work it represents, or in other words, has to showcase or illustrate the work somehow, and not merely mislead a person to pay for the work thinking it is connected to a potentially affected party such as Ms. Rogers. Arguably this approach is sensible, as the use of IP rights to protect those rights has to be legitimate, just as much as the use of those rights in conjunction with newer works is. Free speech should be promoted through legitimate use, and not stifled merely to further shallow interests such as fame.

The Court of Appeal lengthily discuss the nuances of this approaches application, yet, what remains relevant is the use and applicability of those rights to the underlying work, and the legitimacy of that use. Ms. Rogers relied heavily on survey and anecdotal evidence in establishing a claim of false advertising of designation of origin; however this was dismissed handily by the Court: "...the title "Ginger and Fred" surpasses the minimum threshold of artistic relevance to the film's content. The central characters in the film are nicknamed "Ginger" and "Fred," and these names are not arbitrarily chosen just to exploit the publicity value of their real life counterparts but instead have genuine relevance to the film's story". No amount of confusion, arguably at least, will counteract freedom of speech, so long as the use of a name or names is relevant to the underlying work. As such the Court of Appeal dismissed Ms. Rogers' appeal.

Freedom of expression poses an interesting balancing act of human rights and commercial interests (or even other human's rights against said expression). The European Court of Human Rights weighed on the issue of copyright interfering with freedom of expression in the case of Ashby Donald and Others v France (case text only in French), and deemed that "...a conviction based on copyright law for illegally reproducing or publicly communicating copyright protected material can be regarded as an interference with the right of freedom of expression and information under Article 10 of the European Convention". Even so, the case saw that the copyright interests asserted did trump the appellants' human rights, as their interests were purely commercial and did not contribute to a specific expression or discussion of opinion. As such, the case can be seen to align with the view that intellectual property rights should not hinder legitimate expression, but can, and should, be used to protect commercial interests.

Overall one can appreciate that freedom of speech is seen as a valuable tool for discussion and a strong point of public interest, yet it should not overshadow the protection of some rights, at least in some instances. A blatant use of copyrighted material, or trademarks, for the purposes of making a quick buck should be dissuaded; however one man's folly should not silence a nation.

22 February, 2015

Art Anew - Fan Art and Copyright

A big aspect of the modern scene of artistic expression is fan art. This, to the uninitiated, is using prior existing art, be it movies, music or pictures, as inspiration for your own works, often using the same characters, themes or settings, and constructing your own take on the heroes and heroins of your favorite stories. Prima facie a very innocent activity, and potentially quite beneficial for both parties, fan art is an important part of the creator and audience interaction; a form of silent appreciation and discussion on different views and fantasies of said art works. Even with this in mind, fan art does have its greyer areas, especially when it comes to profitability and potentially gaining from the fame of a work, effectively riding its coattails to success. A great example of fan-art-turned-success is the current hit movie 50 Shades of Grey, which (by many accounts) started its humble life as fan fiction of the popular book/movie franchise Twilight under the moniker "Master of the Universe". Where there is money there are lawsuits to be had, which begs the question: does fan art infringe copyright?

As has been discussed on this blog many of times (for example here and here), copyright protects expression, not ideas. Therefore a fan is more than capable of writing a story using similar elements (putting things simplistically), and won't necessarily be infringing the copyright in the original work your fan fiction or art draws from, or even illustrate those stories, especially if no official illustrations exist. Even with major differences (but not enough to be able to distinguish the work completely), what usually draws the line is the commercial use of your derivative works, at least in the interest of the copyright holders, as for most instances fan works just aren't worth the hassle of taking down or demanding licences for; after all, it's free marketing for your works.

This writer's take on a popular movie character
In terms of fans' derivative works, fair use or fair dealing offer the best avenue of protection should you choose to create your own works from existing copyright protected material. In the UK, under the Copyright, Designs and Patents Act 1988, fair dealing protects a finite set of categories under which the use of copyrighted material can be used without infringing the rights given. These categories, including use for criticism and review and for the creation of personal copies, don't offer a category through which to create new, derivative works. A new exception for use in terms of parody or pastiche (discussed here) clearly would allow for the use of copyrighted material for legitimate parody purposes, however leaving a non-parody based use outside of its scope. Overall, the UK leaves fans in the dark, at least in the fair dealing side of the law. What fans can argue, however, is that their work is a new, original artistic work, meriting protection in itself, much like the original works they've branched out from. Again, this is a rough road to travel, as the characters, settings etc. would have to differ quite significantly from the original piece, or become a story wholly unto its own in its development; something, which would be much harder to prove.

There is hope for fans within the common law, as the scheme for fair use in the US and Canada (more on the newer fair use considerations in Canada can be found here), offers a much more robust and flexible approach to the use of copyrighted material. Fair use allows for the use of copyrighted material assessed through four criteria: the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work.

If the fan creation in question is created for the purpose of entertainment, i.e. to share with other like-minded fans, and isn't solely to gain from the popularity of the work in a commercial sense (although this, by itself, doesn't negate fair use, so works can be sold and fall under fair use), most likely the work will be fine under the first criterion. If the work where the fan piece derives from is a lesser known, even potentially a non-commercial piece, the more likely it is for the fan piece to not infringe it. The second criterion is hard to assess in itself, without having a concrete example, but offers an insight into an important part of protecting the copyrighted work; the more commercial and/or successful it is, the more likely it is that the potentially infringing fan piece actually is infringing on its copyright. The third criterion is a case-by-case assessment of just how much the fan piece takes from the original work, i.e. how substantial is its use of the work in question. The less elements you use, the less likely it is to infringe, at least prima facie. Finally, the last criterion looks at the effect on the original work. Again, this is much harder to assess without a concrete example; however one can argue that the more commercially successful the fan work is, the more likely it is to affect the value of the original work. It has to be noted that fan pieces existing outside of the remit of the commercialization of the work probably will not infringe the original work, i.e. a song written about Harry Potter, not having been used for the purposes of the films or books.

In Canada the Copyright Act also allows for the creation of non-commercial user-generated content (discussed here) giving fans a real avenue to use works for their own purposes so long as the use isn't commercial. Where the line of commercialization is drawn is hard to say yet, but this writer speculates that small commercial aspects of the works could be forgiven. Other than that, fans are welcome to create their own content in Canada without fear of being sued for copyright infringement - a fact that the UK sorely has missed in its copyright legislation.

Overall the US and Canadian schemes offer much more flexibility and use of copyrighted works for derivative fan works, so long as they comply with the above. This writer for one believes that fan participation should be encouraged by the legislature, yet still protecting the legitimate interests of the copyright holders by not allowing for those works to be overstepped by the (overt) commercialization of fan works, such as an unofficial knitted hat being sold on Etsy. A balance has to be struck between freedom of expression and the protection of legitimate commercial interests, even in the domain of derivative works.

12 February, 2015

Passing Off on Persons - Rihanna Wins Appeal Case

If reality TV has taught something to most individuals is that personality, and personas especially, are valuable. This, along with other celebrities, musicians and actors, illustrates an interesting aspect of humanity; a self-imposed value on the eccentric and the unusual, making people and their respective persons more than salable. People often buy things based on association, be it quality, notoriety or just through the endorsement of the right person. Because of this there is a huge amount of value in the right brand or good being associated with the right person, even if that image is conjured up through more 'nefarious' means, i.e. through the illusion of association or endorsement, which can potentially damage the 'brand' of an individual. After a recent case, this writer was inspired to answer one question: can you pass off on a person, not just a brand?

The case in question was Fenty & Ors v Arcadia Group Brands Ltd, decided in the Court of Appeal in the early days of 2015, which dealt with the sale of a simple article of clothing; a t-shirt. Topshop, a well-known store for all that is clothing, sold a t-shirt printed with the image of Robyn Fenty - more commonly known as Rihanna. The image itself was one of her posing, taken during the shooting of a music video for one of her songs. The picture was taken by a third-party photographer, and not commissioned by Rihanna herself, allowing the photographer to sell the rights to the image to Topshop, which he promptly had done, leading to its use in the aforementioned garment. Rihanna subsequently objected to this use, and initiated proceedings against Topshop for the image's use, citing an infringement of her rights, and claiming its use can confuse consumers to believe she endorses the shirt, amounting to passing off (more on which can be found here).

The starting-point for the discussion surrounding the law was set out by Lord Justice Kitchin: "There is in English law no "image right" or "character right" which allows a celebrity to control the use of his or her name or image". In the United States, under various State legislation, an individual's personality or persona can be protected; something that isn't protectable per say under UK legislation.

Some faces are just made for t-shirts
Nevertheless, the protection offered under passing off can potentially extend to individuals, at least on a prima facie application of the requisite elements: there has to be goodwill associated with that individual; a misrepresentation as to that goodwill applying to goods and/or services not associated with that individual; and actual or potential damage to said goodwill. Should Topshop have sufficiently misrepresented a connection with Rihanna, they could be liable under passing off. To put things in more simplistic terms, as described by Lord Justice Kitchin: "...it was [Rihanna's] case that the misrepresentation that she was associated with the t-shirt made it more attractive and so played a material part in the decision of the public to buy it".

Lord Kitchin turned to the earlier decision in Edmund Irvine Tidswell Ltd v Talksport Ltd, where Justice Laddie formulated two criteria that needed to be established for a successful case in passing off in a false endorsement matter: "It follows from the views expressed above that there is nothing which prevents an action for passing off succeeding in a false endorsement case. However, to succeed, the burden on the claimant includes a need to prove at least two, interrelated facts. First, that at the time of the acts complained of he had a significant reputation or goodwill. Second, that the actions of the defendant gave rise to a false message which would be understood by a not insignificant section of his market that his goods have been endorsed, recommended or approved of by the claimant".

Whether the public perceive the image of Rihanna as an endorsement or not is very much irrelevant, As long as an image of a potential endorser is used, the use can amount to a misrepresentation to that individual's endorsement of that product. This, however, does not allow a celebrity to unilaterally prevent all uses of their images, but is an assessment that has to be made in every instance and relating to every specific use separately. Topshop had attempted to use Rihanna's fame to their advantage through prior campaigns and contests, clearly leveraging her image to boost their sales. This does not amount to passing off itself, but is a contributing factor usable by the courts. In the end the Court saw that Topshop were indeed liable under passing off, and prevented the further sale of the above t-shirt.

While this case is not a landmark one, it serves an interesting curiosity in the world of celebrity and marketing, and showcases that even images can carry weight and value. Next time you print an image of your loved ones on custom-made t-shirts, think twice.

Source: BBC

05 February, 2015

Court Fashionistas - The ECJ Takes on Unregistered Designs

Oft forgotten by many intellectual property law practitioners and academics (including this writer, sadly), designs are put on the back-burner, and developments are overlooked or rare. With this in mind, a new development quietly emerged from the chambers of the European Court of Justice some time ago, which piqued this writer's interest. When dealing with designs designers have two distinct avenues of protection: registered designs and unregistered designs. Much like in the world of trademarks, registration is the preferred and stronger part of protecting your fashion creations, yet for less affluent or successful designers this might be an avenue beyond their means, or simply a fact of ignorance as to registration. In that event their only remedy is through the protection of unregistered design rights, protected under the Copyright, Designs and Patents Act 1988 in the UK. An important aspect of protectability in unregistered designs is that it has to have 'individual character', i.e. has to be something unique (to put into more common terms). What amounts to individual character then? This is what the ECJ sought to answer.

The case that faced this question was Karen Millen Fashions Ltd v Dunnes Stores, decided in the Summer of last year. At issue in the case was a shirt designed by Karen Millen, a designer from the lovely island of Ireland. The shirt in question was a blue striped shirt, sold by Ms. Millen in Ireland since 2005. Dunnes Stores are a chain of stores in the same country, partaking in the sale of women's clothing, much like Ms. Millen. Dunnes Stores had, at some point, designed and begun selling a very similar shirt, to which Ms. Millen clearly objected, taking the store chain to court over design infringement. Dunnes objected (appealing to the Irish Supreme Court), claiming her shirt had no 'individual' character, and therefore could not be afforded protection under the Council Regulation No 6/2002, which protects those designs, given they have both novelty and individual character - leading to a final decision in Europe's highest court.

The questions posed to the Court seemed quite simple on the outset: 1. when assessing individual character in an item, should the overall impression (as defined in the Regulation) be based on  a single or a combination of similar design features used; and 2. whether the burden of proof designates a need for merely the definition of what amounts to individual character, or that the article in question indeed possesses individual character?

Who ever said judges aren't snappy dressers?
In its assessment the Court took on the first question, and after some discussion, saw that "...Article 6 of [the Regulation] must be interpreted as meaning that, in order for a design to be regarded as having individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user by one or more earlier designs taken individually and viewed as a whole, not by an amalgam of various features of earlier designs". What the Court decided was that the overall impression, in assessing individual character, must be decided on whether the article itself produces a unique impression on the individual, given the body of similar designs viewed as a whole (i.e. similar designs, not just a patch-work of all designs), and not as merely a collection of designs. Should the article give the overall impression of uniqueness and true individual character in light of that body of designs, then the article possesses individual character under the Regulation.

The second question, was answered almost just as easily. To prevent a designer from bringing an action under the Regulation, without first proving the article's individual character and not simply just identifying the infringed article, would, in the Court's mind, go contrary to the intention of the law. As such, the designer would only have to "...both prov[ide] when his design was first made available to the public and indicate[] the elements of his design which give it individual character". From a practical perspective this makes sense, and having a designer effectively contest the validity of his or her design prior to proceedings seems nothing short of silly.

In the end the case was brief, and quite concise, giving us a peek at the often ignored topic of designs. This writer will fully admit to not being wholly familiar with design law, yet attempts to keep track of happenings and wrap his (non-fashionable) brain around them.

Source: JDSupra

26 January, 2015

Framed Questions - ECJ Takes on Content Framing

As social media has changed how we interact with one another, it also has profoundly changed the culture and environment where copyright (and other intellectual property rights) reside. Videos, pictures and other content can very easily go 'viral', especially through sharing via Facebook, Twitter and other websites, even sans the original source of the content. This aggressive sharing and consumption of content can clearly yield huge benefits, both monetary and other positive outcomes; however it presents a much darker side to the sharing of this content, more specifically the copying and distribution of infringing content. Whether it be re-hosting a video originally on YouTube, or copying and watermarking other people's popular images, the Internet is full of opportunistic people rearing and ready to cash in on the next 'viral' hit. Not all sharing is bad, and often websites can host content and rightfully attribute the content to its source, or just link directly to it - which presents a question: can you share copyrighted content, especially through what is called 'framing' (placing someone else's content within the confides of your own website, but not directly hosting the content), or are you infringing on the rights through linking to this content and placing in within your own website?

The case, which endeavored to answer this question, was BestWater International GmbH v Michael Mebes (judgment only available in German or French). BestWater International are a company in the business in making and selling water filtration systems, and in an effort to boost their sales, made a 2-minute promotional video and uploaded it to YouTube, undoubtedly attempting to reach the droves of water filtration enthusiasts using the site. Michael Mebes and his co-defendant Stefan Potsch are independent agents for BestWater's competitor, who embedded a video link to BestWater's promotional video on YouTube (which they themselves uploaded onto the service). BestWater subsequently sued the pair for copyright infringement, and the case finally culminated in the European Court of Justice late last year. In the absence of a judgment in English (which this writer was waiting for) the information conveyed in this post has been parsed from several sources; however hopefully represents an accurate reading of the case.

The question posed to the Court was simple: "Does the embedding, within one’s own website, of another person’s work made available to the public on a third-party website... constitute communication to the public within the meaning of Article 3(1) of Directive 2001/29/EC, even where that other person’s work is not thereby communicated to a new public and the communication of the work does not use a specific technical means which differs from that of the original communication?" In a lot of ways the case is similar to one discussed on this very blog on an earlier note; Svensson v Retriever. Even so, Svensson merely discussed the distribution of content, which is freely available on another website, when BestWater's focus is on framing that content within your own site, arguably presenting it, in a roundabout way, as your own. 


One should always be careful when framing things
Thinking back to Svensson, the decision in the case established, quite firmly, that if a work is communicated to the public, and is freely available, distributing that content without actually making new copies of it, does not constitute a communication to a new public and infringe copyright. Unceremoniously the Court saw that "[t]he embedding in a website of a protected work which is publicly accessible on another website by means of a link using the framing technology … does not by itself constitute communication to the public within the meaning of [Directive 2011/29/EC] to the extent that the relevant work is neither communicated to a new public nor by using a specific technical means different from that used for the original communication"

What is key in the BestWater decision, much like in Svensson, is the authorization of the party who communicates the original work to the public. If the content is beyond the reach of most Internet users, framing the content clearly infringes copyright; however, should the party provide the content for all Internet users (i.e. freely available through services like YouTube), it will not infringe copyright. Should a third-party, without the consent of the copyright holder, upload a video to YouTube, and then promptly frame it on their website, they will be infringing copyright within the meaning of BestWater and Directive 2001/29/EC.

The two decision reflect a clear need for change in attitudes of copyright holders when posting content online. Framing applies just as well to images and sound files as it does to video, potentially causing issues to those who are not careful in their communication of their copyrighted content. This writer, for one, believes this approach is correct, even with the hazards it potentially presents. Should you choose to share content with very little regard to its restrictions, you choose to share your content with more people that you might have intended to, and for users to be punished for your mistake seems highly inequitable. Nevertheless, individuals and companies should be more careful in their content sharing, especially when considering the openness of the Internet, and the potential benefits more open sharing can give you.

Source: IPKat

20 January, 2015

Tripping the Trapp - Trademarks in the Third Dimention

Trademarks can be an interesting novelty, especially when it comes to what is actually sought to be protected through trademarks. This ranges from trademarking the color of your football field to the phrase "Let's Get Ready to Rumble!", and only illustrates just how complex and varied trademarks can be, while offering a near perpetual right to protect what you have registered. With this kind of longevity, having a strong trademark, especially in an area where it could benefit you beyond just one product or product line, is incredibly valuable and desired by many (a lengthy legal battle over the color purple is a great example of just how much it can mean to a company). Most of the time though, trademarks are registered as one-dimensional items, which poses the question: could you register a three-dimensional trademark? The European Court of Justice aimed to answer this very question in the latter part of 2014, in a case anticipated by many.

The case in question was Hauck GmbH & Co. KG v Stokke A/S, in which the dispute centered around children's chairs. Peter Opsvik, a co-defendant in the case, had designed a children's chair called "Tripp Trapp", being sold under the Stokke brand since the early 1970s. The chair itself consisted of two L-shaped upright pieces, which contained slots, into which platforms and other pieces could be slotted into, forming the chair. The company sought to protect the highly-regarded chairs, and their look, by lodging a trademark application in 2003 (for example application 003514171). Hauck have also been involved with the production and sale of children's articles, including two chairs, Alpha and Beta. Hauck were subsequently taken to court for trademark infringement, due to the sale and manufacture of its Alpha chair in the German courts (with Stokke winning in the German courts), and also in the Netherlands, culminating in the ECJ some years later.

What the Court of Justice faced was a decision under Directive 89/104/EEC, which governs the registration of certain marks within the EU, as to whether the registered mark would be considered invalid under the Directive.

The first question posed to the Court sought to clarify "[d]oes the ground for refusal or invalidity in [the Directive], namely that [three-dimensional] trade marks may not consist exclusively of a shape which results from the nature of the goods themselves, refer to a shape which is indispensable to the function of the goods, or can it also refer to the presence of one or more substantial functional characteristics of goods which consumers may possibly looks for in the goods of competitors?" The question poses, in more simplistic terms, the conundrum of whether the grounds for refusal would encompass either a three-dimensional shape. which is indispensable to the function of the item and exclusively being only that shape, or would it include the functional shape of the item containing one or more parts that are integral to the function of that item, which consumers find desirable in that type of item.

The Court quickly clarified that, for a shape to be ineligible to be registered, due to the shape resulting from the nature of the goods themselves (Article 3), the shape has to be one which would unduly prevent competitors from using a similar shape, effectively giving a monopoly for similar items; or to put in better terms: "...[the Article's aim is to] prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors".  This also applies to efforts in extending protection through trademarks to subject matters, which should be protected through other means (e.g. patents), or have been exhausted prior to the mark's registration. In the end, the Court poignantly answered the first question: "...[the] directive must be interpreted as meaning that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors"; meaning a trademark cannot claim a monopoly on e.g. adjustable children's chairs, through registering that functional shape as a trademark.

Kids should not be placed on all traps.
The second question referred to the Court necessitated the assessment of whether a registered sign, consisting of several elements adding value to the product itself, much like the changeable pieces of the Tripp Trapp chair. Value does not, by itself, only mean aesthetic qualities, and the distinction between aesthetic and functional can often be blurry as well. The Court saw that the Directive must be interpreted "...as meaning that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with several characteristics each of which may give that product substantial value. The target public’s perception of the shape of that product is only one of the assessment criteria which may be used to determine whether that ground for refusal is applicable". The public's perception of the mark is not the sole deciding factor, as was seen by the Court, but is one of a number of factors, such as ones described by the Attorney General: "...such as the nature of the category of goods concerned, the artistic value of the shape in question, its dissimilarity from other shapes in common use on the market concerned, a substantial price difference in relation to similar products, and the development of a promotion strategy which focuses on accentuating the aesthetic characteristics of the product in question". Whether a mark would be rejected as only adding substantial value to the item is a case-by-case assessment, with no clear deciding criteria as the only guidelines in this question.

Finally, the Court faced its third question, essentially asking whether a mark can be rejected based on a combination of the first and third indent in the Article (questions one and two, respectively, deal with the first and then the third indent). The Court put things bluntly, as, even from a prima facie assessment, the three indents are wholly separate from each other, and thus operate differently in each given argument. If a product fails over one indent, it will fail overall; an assessment based on the two other indents is wholly irrelevant past that point, and failing in more than one indent will not make the invalidity any more serious - the mark will fail either way. In the end the question of whether Stokke's mark will fail is up to the Dutch courts, as the answer has since been sent back for a final decision.

The Directive has been applied to domestic UK legislation, within the Trade Marks Act 1994, and thus is fully relevant within a UK scheme of things. In the United States the protection of three-dimensional marks falls under trade dress (defined in 15 USC 1127), and is more mailable than legislation applying purely to registered trademarks.

Overall the world of 3D marks is interesting, but a question filled with a lot of uncertainties. As the regime is not in place to protect patentable subject matter, or even registerable designs, the provisions serve as a protective means for items falling outside of those regimes. Whether a registrant would be successful depends largely on the mark for which protection is sought for, and is an assessment done on a case-by-case basis, with no clear bright line rules to follow.

Source: JDSupra

12 January, 2015

Names and IP Law - Do You Have a Right to Use Your Name?

Your name is a part of who you are, your own identity, and for a lot of people, a very important indicator of their history and origin. As such, a name carries immense weight and importance to some, even if it is 'generic' such as Smith or Johnson. Often it is simply easy, and identifiable, to start trading under your own name when you start a business, e.g. Ihalainen LLP (I'm a dreamer, what can I say), but should your name conflict with a well-known brand, such as McDonald's, the use of your own name can be tricky. This begs the question: can you use your own name when doing business, or should you refrain from it outright, especially if a more well-known brand uses that very same name in its business?

In the UK a person can use their own name in conjunction with their business under the Trade Marks Act 1994, through the implementation of EU Directive 2008/95/EC, so far as the use "...is in accordance with honest practices in industrial or commercial matters". On the face of it this entails the use of your name, such as Ihalainen LLP, even if there is an existing Ihalainen Ltd with registered trademarks over the name. The name, however, does have to be distinctive in its use as a trademark, irrespective of its unique characteristics (i.e. Ihalainen clearly is more unique in an Anglo setting vis-a-vis a Finnish setting). Surprisingly, at least from a prima facie assessment, the provision applies equally to corporate names, not just natural persons' names.

People, and businesses, can be hurt by mistaken names
One still has to remember that the defense only applies to a bona fide use of one's name in their business, and adopting a name that clearly infringes a well-established and famous mark will not be overlooked only because the person has the very same name. As was stated by Lord Justice Gibson in Asprey & Garrard Ltd v WRA (Guns) Ltd: "...the defence has never been held to apply to names of new companies as otherwise a route to piracy would be obvious". Clearly one can appreciate that the position of the Court of Appeal in the case is correct; however should an individual trade under their own name, at the same time or prior, as one that is well-known, the defense clearly applies, as they have not sought to use the name to illegitimately gain from its notoriety. Even if the use of the name is honest from a subjective point of view, the use might still not fall under the defense, as was elaborated by Lord Justice Gibson further in the case: "I would add that however honest his subjective intentions may be, any use of his own name which amounts to passing off cannot be in accordance with honest practice in industrial or commercial matters".

A similar provision exists in the United States under 15 USC section 1115, through which a defense is given if the "...use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin". This affords someone protection over the use of their own name in business, although with a similar caveat as to its proper and bona fide use. This view is generally accepted within the common law, with similar provisions existing under the Australian Trade Marks Act 1995 and the Canadian Trade-Marks Act.

The defense described above does not detract from the contestable requirements of registering a trademark, and as said above, a name still has to fulfill all requirements for a valid trademark. Should the name used not be distinctive enough it clearly will not merit protection, and potentially will not be registrable from the outset.

Source: JDSupra