Ringing Hollow - Ringtone Trademark Rejected by EU General Court

Since the introduction of the new Trade Mark Regulation No 2015/2424, this writer for one has been awaiting the inevitable landslide of unusual trademark registrations, particularly for sounds and even smells. While this rush has yet to materialize, some attempts have been made, and quite recently one of those applications ended up in the EU General Court. This writer laments his lateness in relation to this case; however, it is interesting enough to have to be discussed even a month or two after the fact.

The case of Globo Comunicação e Participações S/A v EUIPO concerned the registration of a mobile phone ringtone by Globo for goods and services in classes 9, 16, 38 and 41, covering a wide array of tangible and intangible goods (the musical notation for the sound can be viewed here). The mark was rejected by both the Examiner and the Board of Appeal for a lack of distinctive character under Article Article 7(1)(b) of the old Trade Mark Regulation No 207/2009. The matter was subsequently appealed to the General Court, who handed down their judgment in mid-September.

The first matter dealt with by the General Court was a simple procedural point, where Globo argued that no reasons were given by the Board of Appeal as to why the mark was rejected under Article 7(1)(b). While the Court acknowledged that the Board of Appeal does have a requirement to state their reasons for rejecting a mark, this was not omitted in the case at hand, as the reasons issued (namely on the banality of the sign with regard to the relevant goods or services) and their correlation with the classes was clearly given, even if regarding all of the classes of goods as a whole. A single conclusion did not result in reasons only being given to one class, but all classes summarily.

The Court then moved onto the meat of the matter, namely whether the mark infringed Article 7(1)(b) through a lack of distinctive character. Globo argued that, contrary to previous findings, the brevity or the simplicity of the sound in question should not impact the assessment of its distinctive character. 

Some combinations of notes are a little less simple

As with 'traditional' marks, the assessment of distinctive character is based on the goods or services in respect of which registration of the mark is sought and to the relevant public’s perception of that mark. While this is much more straightforward in word or image marks, as observed by the Court: "...although the public is used to perceiving word or figurative marks as signs which identify the commercial origin of goods and services, the same is not necessarily true when the sign consists solely of a sound element". Arguably it is much more difficult to build an association with a sound, but a good example of a an arguable successful campaign to do so is the whistle adopted by McDonald's in their TV advertising.

The unfamiliarity of peoples' perceptions on sound marks is also added to by the classes of goods or services the mark is registered for. The use of sound marks in TV, for example, would lead to a much higher likelihood of consumer identification and association, while physical media does not lend itself to this perception. The Court explained that "...as regards certain goods and services linked, in particular, first, to tools for communicating or entertaining by means of television broadcasting or radio broadcasting and to telephony and, secondly, to IT media, computer software or to the media sector in general, sound elements, such as jingles or melodies, are used in order to enable the product or service at issue to be identified aurally as coming from a particular undertaking". Consumers would therefore have to perceive the sound as indicating a particular brand of goods or services via these mediums.

The Court found that, a sound that only consists of merely a banal combination of notes would not be perceived as referring to any particular brand, as it would cause a 'mirror effect', meaning it only refers back to itself. Following this, the General Court considered whether the sound in the mark in question would be distinctive, and found that it isn't, as the simple two note combination would only "...be perceived by the relevant public only as a mere function of the goods and services covered and not as an indication of their commercial origin". This was further exasperated by the excessive simplicity (only sounding like an alarm or a telephone ringing) and only therefore refers to itself, rather than the goods or services in was applied for. The Court concluded that the Board of Appeal did not err in their findings and dismissed the appeal.

The case shows the difficulty in the registration of simple sound marks, especially ones that are not 'jingle-like', i.e. serve as a longer, more distinctive part of a product or show for example. It will be interesting to see how the change in the requiremet of graphical representation changes things; however, as the sound was played in court, it seems unlikely that the addition of a playable example would sway the pendulum the other way.

Source: Ars Technica

Pour Some Infringment On Me

Not often can you put the pop ensemble One Direction and the 1980s metal band Def Leppard in the same sentence. Even though the two styles of music differ vastly, a recent turn of events have placed both bands at odds over potential issues relating to the former's new music and possible similarities to Def Leppard's older productions.

One Direction's song called "Midnight Memories" has perked up the ears of Def Leppard and their legal team, allegedly containing parts which eerily match their 80s hit song "Pour Some Sugar On Me". Arguably as pop music has gone even more generic in recent years similarities to older song will occur even when not intended; however according to The Mirror's source: "...it’s clear the two songs sound alike".

Whether this will result in any legal action will remain to be seen, but others have noted the similarities as well. Nick Catucci mentioned this in his review of their album for Entertainment Weekly, stating that "The title track [Midnight Memories] sounds like Def Leppard's ''Pour Some Sugar on Me,'' criminally de-boogied". As such the similarities are much clearer to merely be one person's opinion, and present Def Leppard with an opportunity to get a piece of the boy band's recent success.

For any who might be interested in making their own conclusions as to any potential infringement on the youngster's part, a mash-up of both tracks can be found here. This writer for one believes this issue will not see the light of day in litigation, and will be settled outside of the courts. As One Direction has exploded in popularity since their rise to relevancy some time ago, surely Def Leppard will be interested in not letting this slide.

Source: MetalHammer

Music Playlists and Copyright

Services like Spotify and Pandora have become huge in the last few years, allowing for users to listen to music on-the-go, sorting it according to the type of music they like and even allowing for the creation of custom playlists. Before the era of digital music becoming the predominant format, there were music compilation albums (which still exist believe it or not); an old analog format of a playlist if you will. Collections like Now That's What I Call Music! have been around for decades, selling millions upon millions of copies of albums with a collection of recent (or old) hits put into a convenient playlist on the album. As such there is very little correlation between the old compilation albums and modern digital music services and their playlists, but could playlists actually infringe copyright?

In a recent filing Ministry of Sound have alleged that Spotify have infringed their copyright in their creation of custom playlists which contained the same songs in the same order as what can be found in their compilation albums. These playlists are freely available on Spotify's service and even labeled as "Ministry of Sound". In Ministry of Sound's argument their playlists are protected under copyright as argued by CEO Lohan Presencer: "What we do is a lot more than putting playlists together: a lot of research goes into creating our compilation albums, and the intellectual property involved in that".

Not to be confused with the Ministry of Sound

What some of the readers of this blog, and intellectual property law enthusiasts in general, should notice is that this rationale goes against what has been long since argued in Feist (more of which can be found on this very blog here); effort does not necessarily equal copyright, and copyright does not protect ideas, merely their expression. Although Feist is an American case, this position has been adopted in a similar fashion by the European Court of Justice in Football Dataco and Others, thus applying in the UK.

So should a list of songs be protected under copyright? Arguably no, as the mere presentation of information in a list should not garner protection. Admittedly Ministry of Sounds probably do spend time in the arrangement and selection of the particular songs in any given compilation album, but this is only a collection of information. Each song individually will garner protection, but the listing of those arguably would not. Whether Ministry of Sound are successful is yet to be seen, but this writer in particular does not see their argument going very far.

Source: Digital Music News