QMJIP

Queen Mary Journal of Intellectual Property

Month: March, 2016

The Big Bang Lawsuit: “Soft Kitty” Copyright Claim Now Out Of The Bag

by Lisa D. Rhooms

Please say it isn’t so! “Soft Kitty”, a lullaby beloved by character Dr Sheldon Cooper on the hit American sitcom, the Big Bang Theory, and fans of the show at large, has become the bone of a recent copyright contention. The essence of the claim is that this song, so cherished, is an infringement of the copyright of an earlier poem “Warm Kitty”, which was published in a book of nursery rhymes.

The action, filed December 28, 2015 and brought by the plaintiffs, the children and beneficiaries of the copyright of Edith Newlin, set out in the pleadings[1] that the producers, distributors and other parties to the series, including merchandisers, and Willis Music Company, have used their mother’s words, the “Soft Kitty Lyrics”[2] in their entirety, except with minor change to the word order[3], without their authorisation. The plaintiff’s further contend that such use has resulted in great success to the show, the song having become iconic, and that the words have been reproduced, again in their entirety, on various items of merchandising, which has been beneficial to the defendants. The “Soft Kitty Lyrics”, it is claimed, were written by Edith Newlin in the 1930’s and later published in 1937, with her permission by Willis Music Company, a defendant to the claim, in a book of nursery rhymes. The plaintiffs plead that in 1964, when the copyright registration of 1937 was renewed by Willis Music Company, their mother’s copyright was also renewed.[4]

Another interesting point raised by the pleadings, is the fact that the executives of the Big Bang Theory, actually sought to licence the “Soft Kitty Lyrics” and did so, securing an agreement with Willis Music Company. The plaintiffs claim however, that they too hold copyright in the lyrics, and such deal was brokered without their consent. Further, the executives failed to credit their mother for the lyrics, instead crediting Bill Prady, a principal of Chuck Lorre Productions, one of the defendants.[5]

Jurisdiction for the action is claimed under section 101, the definition section of the 1976 United States Copyright Act[6] and sections 1331 and 1338 (a) of the US Code, title 28.[7] Later in the pleadings, the plaintiffs set out specifically, the instances in which the “Soft Kitty Lyrics” have been used on the show[8], to illustrate that these lyrics, sung by Dr Cooper and other characters, has become a well-known feature, sung to comfort a character who is sick or otherwise distressed. The plaintiffs also set out in detail, the use of the lyrics in merchandising, on articles such as t-shirts, hoodies and singing toys, among other items.[9] Also set out, are other occurrences of where the lyrics have been used, for example in promotional competitions.[10]

The plaintiffs’ claim for relief, falls within section 106 of the Copyright Act[11] which sets out the exclusive rights of a copyright owner to the copyrighted work, including the right to reproduce the work, create derivative works based upon the earlier work, and publicly perform or display the work.[12] The plaintiffs assert that these rights have been infringed by the defendants, and such has been “…with knowledge or reckless disregard for the plaintiff’s exclusive rights”[13]. Further, it is contented by the plaintiffs that the alleged agreement between the defendants, regarding the licence sought for the “Soft Kitty Lyrics” amounts to contributory infringement.[14] They therefore claim for damages, profits made from the infringement, their attorneys costs, and injunction to restrain further infringement, by virtue of sections 502 (injunction), 504 (damages and account of profit) and 505 (attorneys’ fees) of the Copyright Act.[15]

As the plaintiffs have demanded a trial by jury to deal with all the triable issues, it will be interesting the see each party’s arguments, and in particular how they will deal with the issue of the licence, where Willis Music Company is in fact, as well, a copyright holder of the “Soft Kitty Lyrics”. Issues to be determined could possibly be whether as copyright holders, there was authority by Willis Music Company to issue the licence to the use of the lyrics, and whether the executives of the Big Bang Theory can rely upon the fact of copyright ownership by Willis Music Company, to claim any indemnity against infringement, on the basis of some sort of assurance that Willis Music Company indeed had the right to negotiate a licence.

While the fate of “Soft Kitty” hangs in the balance, and Dr Sheldon Cooper and the fans of the series look on to see what will happen to this iconic song, which they sometimes find themselves singing out of the blue, the decision of the jury will be of massive importance and financial consideration for both parties. Either way this decision goes, the losing party might be left clutching the ever heartening, now sadly contentious, lyrics of this lullaby.

 

Lisa Diana Rhooms,

Assistant Editor, QMJIP

 

[1] See pleadings here http://graphics8.nytimes.com/packages/pdf/arts/big-bang-lawsuit.pdf

[2] ibid para 1

[3] ibid para 26 “Warm Kitty” reads “Warm kitty, soft kitty, Little ball of fur, Sleepy kitty, happy kitty, Purr! Purr! Purr!” while, ibid para 48 “Soft Kitty” reads “Soft kitty, warm kitty, Little ball of fur, Happy kitty, sleepy kitty, Purr! Purr! Purr!”

[4] ibid paras 3 and 33. Further information on renewal may be found here http://copyright.gov/history/1909act.pdf in the 1909 Act s. 23

[5] Pleading (n 1) paras 6 and 53

[6] Copyright Act, 1976

[7] US Code: Title 28 Judicial and Judiciary Procedure

[8] Pleadings (n 1) para 50

[9] ibid  para 51

[10] ibid para 54

[11] Copyright Act (n 6)

[12] ibid s. 106

[13] Pleadings (n 1) para 60

[14] ibid para 59

[15] ibid paras 61-63

‘The Red-Sole Saga Continues… Christian Louboutin heads back to Court’

by Maria Tsouvali

From catwalk to sidewalk, the name of Christian Louboutin is automatically linked in our minds with his famous red-sole shoes. The red-sole treatment was born more out of an accident than design. One afternoon, one of Louboutin’s assistants was painting her nails, when he grabbed her nail polish and painted a shoe-sole red. After that glimpse of inspiration, the red sole became his trade mark[1]. For Louboutin, red means love, passion, blood and it is definitely his warehouse-symbol.

His designs have made his shoe-shaped gems iconic in the fashion industry and as a result the red sole has been protected as a trade mark in several countries. Litigation has nevertheless taken place in various disputes in which Louboutin claimed infringement of his rights. Generally litigation involved discussion over the validity and the scope of protection. One of the first cases to bring the red sole in front of the court was in the US. In 2011 Louboutin filed a claim for trade mark infringement against another well-known designer, Yves Saint Laurent. [2] The claimant was seeking revocation of the design as well as US$1 million in damages. The U.S District Judge Victor Marrero denied the firms request while he questioned the validity of the trade mark, writing:

‘Louboutin’s claim would cast a red cloud over the whole industry, cramping what other designers do, while allowing Louboutin to paint with a full palette’[3] […]’Louboutin is unlikely to be able to prove its red outsole brand is entitled to Trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning’.[4]

In general the court observed that the law should not create restraints to creativity while granting a monopoly right to one designer by excluding the use of an ornamental or functional medium necessary for artistic expression. As a result District Judge Marrero denied Louboutin’s request for an injunction preventing YSL’s sale of the shoe.

However, the Appellate Court had a different view and overturned in part the above mentioned decision[5] Circuit Judge Jose Cabranes stated that:

We see no reason why a single-color mark in the specific context of the fashion industry could not acquire secondary meaning―and therefore serve as a brand or source identifier―if it is used so consistently and prominently by a particular designer that it becomes a symbol, “the primary significance” of which is “to identify the source of the product rather than the product itself.”[6]

As an upshot, Louboutin retained his trade mark protection and the exclusive right to use the red colour on the bottom of its shoes, whenever the outer is any other colour besides red. [7]

There has been a recent referral to the European Court of Justice regarding the red-sole protection, this time from the Dutch court[8]. Louboutin brought an infringement case against a Dutch shoe retailer, Van Haren Shoenen. In response to the claim, Van Haren counterclaimed that the trade mark which Louboutin relied on was invalid due to three reasons:

  • It did not meet the strict criteria for registering, regarding colour marks and shape marks and therefore it lacked distinctive character.
  • The colour red for shoe bottoms is no longer distinctive in the fashion industry, and
  • The sign as registered consisted solely of a shape which gives substantial value to the goods which is contrary to Art. 2.1.2 of the Benelux Convention on Intellectual Property, in accordance with Art. 3(1)(e)(iii) of Directive 2008/95.[9]

On the first two claims, the Dutch court confirmed the fact that the red-soles are highly distinguishable from other brands and perceived from the consumers as originating from Ch. Louboutin’s Firm. As far as the third claim is concerned, the court acknowledged the fact that the shoe is given substantial value because of the colour, but Art. 3(1)(3)(iii) of the Directive states that ‘signs which consist exclusively of the shape which gives substantial value to the goods’ should not be registered or if registered could be liable to be found invalid. It is obvious that the Directive does not mention colour.

Consequently, just recently, the Court of Hague referred for preliminary ruling to the European Court of Justice. The court asked if the concept of ‘form’ in the sense of Article 3(1)(e)(iii) of Directive 2008/95 is restricted to the three dimensional characteristics of the product (outlines, dimensions and volume thereof) or, does the concept of form also provide for other (non-three dimensional) properties of the product, such as colour. [10]

If the CJEU in answering the question, will find that the Louboutin trade mark is not covered by the shape element under the Article 3(1)(e)(iii) of the Directive, then Louboutin’s trade mark will still be valid and Van Harren will be found liable for trade mark infringement. Will our famous red-soles get protection once again? This is something that remains to be seen…

Maria Tsouvali

Assistant Editor QMJIP

[1] http://www.cbsnews.com/news/christian-louboutin-the-inspiration-behind-the-red-sole/

[2] Seeing Red: A Critical Analysis of Christian Louboutin S.A. v. Yves Saint Laurent America, Inc. [notes], Alabama Law Review ,Vol65, Issue 2 (2013)

[3] Louboutin fights to keep red sole trademark”. CBS News (CBS). Associated Press. 12 August 2012. Archived from the original on 2012-04-03.

[4]  Abraham, Tamara (15 August 2011). “Christian Louboutin to appeal after rival YSL wins right to sell shoes with red soles while court battle continues”. Daily Mail (London). Archived from the original on 2013-06-09.

[5] http://www.ca2.uscourts.gov/decisions/isysquery/8a711951-095b-4a1b-8ebc-9248ae64a274/1/doc/11-3303_opn.pdf

[6] http://ipkitten.blogspot.co.uk/2012/09/breaking-news-appeals-court-decision.html

[7] http://www.thefashionlaw.com/archive/louboutin-is-facing-yet-another-battle-over-its-red-sole-trademark

[8] http://ipkitten.blogspot.co.uk/2016/03/breaking-louboutin-case-referred-to.html

[9] https://www.udl.co.uk/news-events/ip-information-news/ip-information-amp-news-detail/2016/03/11/can-a-colour-be-a-shape

[10] https://www.udl.co.uk/news-events/ip-information-news/ip-information-amp-news-detail/2016/03/11/can-a-colour-be-a-shape

Wearable Tech needs more Women but less IP protection?

by lauraadrianagrinschgl

Everyday we receive news about the fast evolving fashion tech space.

“Amazon selling its own clothes actually makes a lot of sense” (Wired), “Apple shipped 11.6 Million Apple Watches in 2015, says IDC” (Fast Company), “Is 3D Printing the next industrial Revolution?”(TechCrunch), “Ferragamo to Microchip shoes and bags” (Vogue UK).[1]

This shows that we are experiencing an extraordinary period of transformation through convergence of disciples like fashion and technology. But one thing continues to be a concerning problem. The lack of female participation in engineering and technology has crucial effects on the possibility to understand and engage consumers as well as for further innovation.[2]

“ Women should be the creators, not just the consumers, of our increasingly digital future. ”                                             

                                                                                                            – Rebecca Minkoff

The good news is that there is currently a big deal of money and time invested in programmes, created to empower young women to pursue a career in technology.

An overview on the leading ladies in the world of wearables can he found here:

But as much as the Fashion – Tech Revolution needs more women, does it also need broad IP protection?

Wearable technology comes to the market at a fast pace and whether the application is for health and medicine or sports and fitness, companies will want to protect their intellectual property. Companies need to look at the IP inside and outside the wearable technology device, for each component, appearance, method step, functionality and all content.[3]

The question to keep in mind is: is IP protection actually a good solution?

Taking the Piracy Paradox into account, which is heavily discussed in the fashion industry, too much protection can also have its downsides.

The piracy paradox is the idea that the lack of IP rights for fashion design actually helps the fashion industry because it accelerates the diffusion of designs and styles which allows for a shorter trend cycle. This causes consumers to purchase more than is needed to stay up to date, which benefits designers and the fashion industry as a whole [4]

The Piracy Paradox however, is definitely something to be critical about and for now, wearable technologies are protected by utility patents (for the technology part), registered designs (for example sleeves will need to be tailored a certain way to hold wires, handbag redesigned to accommodate circuit boards, glasses made to hold lasers and so on) and a bit of copyright and trademark law protection for the data and the brand reputation.[5]

The future will show wearable tech`s full potential and the extraordinary possibilities coming with it, as well as the amount of protection needed.[6]

Last but not least – Happy belated (tech) women’s day!

 

Laura Adriana Grinschgl

Assistant Editor QMJIP

 

[1] http://www.businessoffashion.com/articles/bits-bytes/bits-bytes-amazon-clothes-apple-watch-shipments-souq-com-funding

[2] http://www.businessoffashion.com/articles/opinion/op-ed-the-fashion-tech-revolution-needs-more-women

[3] R S Berman, ‘Intellectual Property Law and Wearable Technologies Functional technology with style’ (3/2015) JMBM

[4] A Lucas, ‘IP Protection of Fashion Design of Wearable Technology’ (2014) IP Theory

[5] A Lucas, ‘IP Protection of Fashion Design of Wearable Technology’ (2014) IP Theory

[6] WIPO Magazine

April 2016 #IPEvents

by Giancarlo Moretti

Here is the list of Intellectual Property events occurring in April 2016. If you have knowledge of or are organising any IP event not shown on the list, we would be grateful if you would let us know. Simply leave us a comment or tweet us @QMJIP and we can add it to the list.

We also invite you to consult the IPKat’s list of forthcoming events, available here.

As a final note, on behalf of QMJIP blog community, we would like to thank Pedro Malaquias for his efforts in setting up this IP Events list and for his amazing work during these years.

UNITED KINGDOM & IRELAND

  • 1 April – Leeds – MBL – All you need to know about the UK Patent Box – Link.
  • 5 April – London – King’s College London – 10th Annual International Graduate Legal Conference – Link.
  • 5 April – London – Osborn Clarke – The Internet of Things II | The Internet of Things II: connected homes and healthcare Link.
  • 6-8 April – London – Marcus Evans – Complying with the GDPR: International Data Protection and Privacy Excellence ForumLink.
  • 7 April – Dundee – UK IPO – Digital Creative Workshop Link.
  • 7 April – London – CILIP – CILIP Copyright Executive Briefing 2016Link.
  • 8 April – London – Queen Mary, University of London – CCLS – More than just a game: Interactive Entertainment and Intellectual Property Law (second edition)Link.
  • 11 April – London – SCL – SCL Junior Lawyers’ Group: Limitation Clauses Workshop – Link.
  • 11-15 April – London – UCL Institute of Brand and Innovation Law – IP Transactions: Law and PracticeLink.
  • 12 April – Cowes – UK IPO – Understanding IP – An interactive workshop – Isle of WightLink.
  • 13 April – London – LES Britain & Ireland – Trade Secrets: A round table discussion hosted by the LES Young MembersLink.
  • 13 April – London – Publishing Licensing Society – Charles Clark Memorial Lecture 2016Link.
  • 14 April – London – ALPSP/PSL – From Earthworms to Earthquakes: Driving public engagement with academic contentLink.
  • 14 April – London – ACID – 3D PRINTING : Identifying the Opportunities & Exploring the IP Challenges Link.
  • 14 April – London – MBL – A Practical Guide to draft IT Contract – Link.
  • 14 April – London – Osborne Clarke – Intellectual property | key issues and practical tips for protection and exploitationLink.
  • 14 April – London – SCL – Storing the firm’s knowledge – is the document management system the right place?Link.
  • 14 April – London – Taylor Wessing – Data Privacy Breakfast Seminar – Link.
  • 18 April – London – AssimilateIP – Freedom to OperateLink.
  • 18 April – London – New IP Lawyers – Performers’ Rights: An Evening of Discussion & Performance Link.
  • 18 April – Southampton – University of Southampton – The Institute for Law and the Web – ISP Liability in the Converging World – Link.
  • 19 April – London – Bristows & Marques– Arbitrating and Mediating Trademarks – Link.
  • 19 April – London – UK IPO – Intellectual Property: Snakes and Ladders for Start-ups – Link.
  • 20 April – Leeds – UK IPO & ITMA – IPO & ITMA RoadshowLink.
  • 20 April – London – ITMA – ITMA London Evening Meeting Link.
  • 20 April – London – MBL- The A to Z of Intellectual Property Law – In one day – Link.
  • 21 April – Bournemouth – CIPPM – The Unified Patents Court and the Unitary Patent – Link.
  • 21 April – Bristol – Osborne Clarke – Intellectual property | key issues and practical tips for protection and exploitationLink.
  • 21 April – Edinburgh – The WS Society – WS Intellectual Property Law Conference 2016 Link.
  • 21 April – Edinburgh – LES Britain & Ireland – LES Scotland World IP Day DinnerLink.
  • 21 April – London – Bristows – Medical Device Seminar with ABHI – Link.
  • 21 April – London – Osborne Clarke – Digital disruptors: the latest developments in digital mediaLink.
  • 22 April – Edinburgh – The Faculty of Advocates – World IP Day 2016 Link.
  • 22 April – London – MBL – Copyright Law& Practice – An update – Link.
  • 25 April – London – Osborne Clarke – Cybercrime | current threats, prevention and the role of criminal enforcement – Link.
  • 26 April – Birmingham – IoD West Midlands World Intellectual Property DayLink.
  • 26 April – London – Bond & Dickinson – Celebration of World IP Day – Branding – Link.
  • 26 April – London – MBL – IT, IP & Data Protection: What’s New? – Link.
  • 26 April – Yorkshire – Bond & Dickinson – Celebration of World IP Day – Innovation – Link.
  • 27 April – London – ITMA – ITMA Design Seminar – the Trunki case Link.
  • 28 April – London – LES Britain & Ireland and CIPA – IP Portfolio & Strategy Building for Start-Ups & Spin-OutsLink.
  • 28 April – London – MBL – The Legal Issues of Social Media – The Risks & Liabilities Explained – Link.
  • 28-29 April – London – Medicines for Europe – Ebg Biosimilars Conference 2016 – Link.
  • 29 April – London – Management Forum – The Patent Box – Link.

CONTINENTAL EUROPE

  • 1 April – Paris, France – CEIPI – La protection des secrets d’affaires : perspectives nationales et européennesLink.
  • 4 April – Helsinki, Finland – IPR University Centre – IPR in New Value Creation -projektin avoin seminaari – Link.
  • 5 April – Amsterdam, the Netherlands – SURFAcademy – Symposium Designing and shaping open scienceLink.
  • 6 April – Amsterdam, the Netherlands – FORUM – IP Agreements – Link.
  • 7 April – Amsterdam, the Netherlands – FORUM – Patent options – Link.
  • 7 April – Helsinki, Finland – IPR University Centre – Liikesalaisuus ja muuttuva sääntelyLink.
  • 7 April – München, Germany – FORUM – FTO In practice: Life science and PharmaceuticalsLink.
  • 7 April – Paris, France – ASPI – Synthèse “Droit des Marques” – Exploitation du droit sur la marqueLink.
  • 7-8 April – Geneva, Switzerland – WIPO – International Conference on Intellectual Property and Development – Link.
  • 8-9 April – Tutzing, Switzerland – Women in IP – Überzeugend Kommunizieren – Konstruktive GesprächsführungLink.
  • 11 April – Amsterdam, the Netherlands – EPLIT – EPLIT’s 3rd Annual Meeting – Link.
  • 11 April – Vienna, Austria – Nexa Politecnico di Torino – Is Your Smart Thermostat Yours? Reflecting on the Impact of the Internet of Things on Ownership and Control of Consumer GoodsLink.
  • 12 April – Alicante, Spain – EU Intellectual Property Office (former OHIM) – Webinar: Changes to the website and online tools as a result of the new EU trade mark RegulationLink.
  • 12 April – Geneva, Switzerland – WIPO – Global Challenges Seminar on Patents and the WHO Model List of Essential Medicines (18th Edition): Clarifying the Debate on IP and AccessLink.
  • 14 April – Paris, France – LES France – Conférence LES France: Journée Mondiale de la Propriété IntellectuelleLink.
  • 19 April – Strasbourg, France – CEIPPI – Le système de protection de la propriété intellectuelle de l’OAPI – Link.
  • 21-22 April – Berlin, Germany – DevOps – Define the future of Continuous Delivery & Improvement in a DevOps World – Link.
  • 21-22 April – Trier, Germany – ERA – The Protection of Geographical Indications – Link.
  • 21-23 April – Helsinki, Finland – AIPPI Finland & AIPPI Sweden –AIPPI Symposium 2016Link.
  • 21-22 April – Vienna, Austria – EPO – East meets WestLink.
  • 22 April – Frankfurt, Germany – FORUM – US and EU Licensing Law Link.
  • 22 April – Strasbourg, France – Les propriétés intellectuelles devant la Cour de justice de l’Union européenne – Link.
  • 23 April – Amsterdam, the Netherlands – CIPIL Univeristy of Cambridge and University of Amsterdam – Copyright, related rights and the news in the EU Assessing potential new laws Link.
  • 26 April – Milan, Italy – EUIPO – Make the most of your online IP management tools – Link.
  • 26 April – Tamppi, Finland – IPR University Centre – Maailman henkisen omaisuuden päiväLink.
  • 26-27 April – Graz, Austria – LES Austria – World IP Day und LES100 Seminar – Link.
  • 27-29 April – Nice, France – Management Forum – Biotechnology for non-biotechnologistLink.
  • 28 April – Helsinki, Finland – IPR University Centre – IPR klinikka startup-yrityksille – Link.
  • 28 April – Rome, Italy – Make the most of your online IP management tools – Link.

USA & CANADA

  • 31 March – 1 April – New York, NY, USA – Fordham IP Institute – Annual Fordham Intellectual Property Law & Policy Conference – Link.
  • 1 April – Bloomington, IN, USA – Maurer Law School – The Centre for Intellectual Property Research – Legal Profession Career Choice: IP Session – Link.
  • 1 April – San Jose, CA, USA – USPTO – Silicon Valley USPTO Public Tour – Link.
  • 4 April – Chicago, IL, USA – IPLAC, John Marshall Law School and the Copyright Society – Challenging Copyright in the World’s Most Popular Song: From Academic Article to $14 Million Settlement – Link.
  • 5 April – Atlanta, GA, USA – LES USA & Canada- Perspective on Commercialisation of Technology ResourceLink.
  • 5 April – Chicago, IL, USA – John Marshall Law School – Two Views of the U.S. Patent and Trademark OfficeLink.
  • 5 April – New York, NY, USA – The Copyright Society USA – Brown Bag Lunch: Music Licensing 101Link.
  • 5 April – Philadelphia, PA, USA – The Copyright Society USA – Copyright and Choreography: Copyright Issues Affecting Dance Companies, Choreographers, and DancersLink.
  • 5 April – Seattle, WA, USA – The Copyright Society USA – Jane Ginsburg on “From Humor to Eternity: The Reciprocal Relationship of Copyright & Trademark Law” – Link.
  • 5-15 April – Various cities, USA – INTA – As the World Turns – International Trademark Developments – Link.
  • 6 April – New York, NY, USA – Managing IP – MIP Africa Roadshow 2016Link.
  • 6 April – Santa Monica, CA, USA – CLA – Reading between the line of a publishing agreement – Link.
  • 6-8 April– Bethesda, MD, USA – ABA Section of Intellecutal Property Law – 31st Annual Intellectual Property Law Conference – Link.
  • 7 April – Chicago, IL, USA – Centre for Intellectual Property Law & Information Technology – DePaul University – IP Theory and Practice Session 6 – Patents 2 – Link.
  • 7 April – Stanford, CA, USA – Stanford Law School – Free Speech and the Internet: Paul Levy of Public CitizenLink.
  • 7 April – Toronto, ON, CAN – LES USA & Canada – Transfer Pricing & Tax Aspects of IP Offshoring Link.
  • 8 April – Santa Monica, CA, USA – LAIPLA – Spring Patent Luncheon – Link.
  • 11 April – Northfield, IL, USA – IPLAC – IPLAC Happy Hour at Happ Inn in Northfield, IL  Link.
  • 11 April – Stanford, CA, USA – Stanford Law School – Women in IP – Link.
  • 11 April – Portland, OR, USA – Lewis & Clark Law School – IP In the Trees – Link.
  • 12 April – Chicago, IL, USA – Center Force – The IP Strategy Summit: Enforcement Link.
  • 12 April – Chicago, IL, USA – IPAC – Women in IP Committee Eleventh Annual Federal Judicial Panel – April 11 2016 – Link.
  • 12 April – Durham, NC, USA – LES USA & Canada – Identifying Corridors of Indifference and Sprinting Down Them To In-License Pipeline ProductsLink.
  • 12 April – St Louis Park, MN, USA – LES USA & Canada – Abacavir: a Licence Success StoryLink.
  • 12 April – New York, NY, USA – Columbia Law School – Kernochan Center for Law, Media, and the Arts- Fair Use and the limits of transformative useLink.
  • 13 April – Nashville, TN, USA – WIPO Roving Seminar on WIPO Services and Initiatives – Link.
  • 13 April – Los Angeles, CA, USA – LAIPLA – LAIPLA Techtainment: Technology + EntertainmentLink.
  • 13 April – Vanderbilt University, Nashville, TN, USA – AIPLA, USPTO & WIPO – Protecting Your IP Overseas: WIPO Services and Initiatives
  • 14 April – Berkeley, CA, USA – BCLT – Software IP: The 20th Annual BCLT/BTLJ Symposium – Intellectual Property Protections for Computer Programs: What’s Going Right and What’s Going Wrong? – Link.
  • 14 April – Oakland, CA, USA – CLA – The Merch Table: Licensing & Merchandising for Creative ArtistsLink.
  • 14 April – Washington, DC, USA – George Washington University Law School – 4th Annual IP China Conference – Link.
  • 15 April – Atlanta, GA, USA – AIPLA, USPTO & WIPO – Protecting Your IP Overseas: WIPO Services and Initiatives
  • 15 April – Atlanta, GA, USA – WIPO Roving Seminar on WIPO Services and Initiatives – Link
  • 18 April – Alexandra, VA, USA – USPTO/AIPLA/ABA-IPL/IPO/IDSA – 2016 USPTO Design DayLink.
  • 19 April – New York, NY, USA – Columbia Law School – Kernochan Center for Law, Media, and the Arts- Open Access to Government and University-Funded Research Link.
  • 19 April – New York, NY, USA – Managing IP – MIP Luxury Brand & Retail Foeum – Link.
  • 20 April – Palo Alto, CA, USA – LES USA & Canada – 16th Annual Conference – Behind the Curtain: Money in Silicon Valley Intellectual PropertyLink.
  • 21 April – New York, NY, USA – World Trade Mark Review – Trademark Litigation 2016: Practical Strategies – Link.
  • 21 April – Palo Alto, CA, USA – The IP Strategy Summit: Enforcement/monetization – Link.
  • 21 April – San Jose, CA, USA – Patent Brown Bag “Lunch and Learn”Link.
  • 26-28 April – Houston, TX, USA – LES – LES 2016 Spring PanAm Meeting – Link.
  • 27 April – Los Angeles, CA, USA – CLA – Copyright Infringement in Movie Characters – Link.
  • 28 April – Los Angeles, CA, USA – The Copyright Society USA – Copyright Conversation with Martin Singer – Link.
  • 28 April – Stanford, CA, USA – Fashion, Art, and Design Law Society: A Conversation with Simon FrankelLink.
  • 29 April – Houston, TX, USA – CLP – CLP Exam Review CourseLink.
  • 29 April – Houston, TX, USA – LES USA & Canada – IP Business Basics 101 – Link.

LATIN, CENTRAL & SOUTH AMERICA

  • 6 April – Sao Paulo, Brasil – ASPI – 16th International Congress ASPILink.
  • 6-8 April – Buenos Aires, Argentina – LES –Innovation and new technologies in the IP Environment – Link.

ASIA & OCEANIA

  • 5 April – Singapore, Singapore –IP Academy – Intellectual Property (IP)/IPManagement Course for Public Agencies Link.
  • 5 April – Sydney, NSW, Australia – LES Australia & New Zealand – LESANZ & KCA Source IP Workshop Link.
  • 6-7 April – Adelaide, SA, Australia – IP Australia – Trade Marks for Startups – Link.
  • 6-8 April – Instanbul, Turkey – AIPPI Turkey – 4th IP Law Seminar – Link.
  • 8 April – Melbourne, VIC, Australia – University of Melbourne Law School – Hypernudge: Big Data as a Mode of Regulation by DesignLink.
  • 12 April 2016 – Taipei, Taiwan – IPBC Taiwan – Corporate IP Best Practice – Link.
  • 13-16 April – Gold Coast, QLD, Australia – IPTA – IPTA 2016 Annual Conference Link.
  • 14 April – Selangor, Malaysia – WIPO & UKM – Conference on International Technology Transactions – Intellectual Property and Dispute Resolution Link.
  • 15 April – Seoul, Korea – IPBC Korea – Corporate IP Best Practice – Link.
  • 15 April – Sydney, NSW, Australia – IP Australia – Trade Marks for Start-ups – Link.
  • 20 April – Brisbane, QLD, Australia – LES Australia and New Zealand – Branding & Trademarks for Consumer ProductsLink.
  • 20 April – New Dehli, India – LexisNexis – Global Legal Confex – Link.
  • 21-22 April – Beijing, China – IAM – IP Business Congress China – Link.
  • 22 April – Perth, WA, Australia – IP Australia – IP 101 and patents for Start-ups – Link.
  • 19 April – Singapore – Singapore – IP Academy – Fireside Chat with IP Senior Lawyers Link.
  • 26 April– Melbourne, VIC, Australia – ACC Australia & Gilbert Tobin – Melbourne: Digital innovation/disruption (half-day seminar)Link.
  • 26 April– Melbourne, VIC, Australia – ACC Australia & Watermark – Working with your marketing team to manage your company’s brandsLink.
  • 29 April – Toowoomba, QLD, Australia – IP Australia – IP 101 and patents for Start-ups

 

Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GiancaMoretti

Here’s one to watch: Trade mark Battle of the Kylies- Kylie M. v. Kylie J.

by Lisa D. Rhooms

It is particularly difficult to register a name as a trade mark, as it is difficult for a name, which many people may have, to fulfil the purpose of a trade mark which is to denote origin. Nevertheless, names have been registered, and this is usually easiest where one has a unique name, and better yet, a completely made up name which relates only to one person, as the origin function will be more easily achieved. Just this February past however, gloves are off in a new trade mark battle between Kylie Minogue and Kylie Jenner. For those who may be unfamiliar, Kylie Minogue is a well-known pop artiste from Australia, while Kylie Jenner is known more widely as the last born sibling of the Kardashian/Jenner family, an American reality TV family, though she is also a socialite, model and entrepreneur.

In April 2015, Kylie Jenner filed an application to register her first name ‘KYLIE’ as a trademark in the United States, for International Class 35, which relates to advertising services, that is to say: branding, endorsement and promotion of goods[1]. This application was published for opposition in August 2015, and has prompted objection from Kylie Minogue, who, on February 22, 2016, filed a notice of opposition[2] with the United State Patent and Trademark Office, to be heard before the Trademark Trial and Appeal Board.

In the notice of opposition, Kylie Minogue cites three grounds for opposition, these being: priority/confusion, dilution by blurring and dilution by tarnishment. Each will now be dealt with in turn. Section 2(d) of the Lanham Act[3], speaks to confusion, and states the conditions under which a mark may be refused registration on the principal register. Such a case is where the mark seeking to be registered:

“Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive…”[4]

This section continues to describe the issue of priority where marks may be deemed as not having met the confusion threshold, which will lead to a situation where there is concurrent registration of the marks, which can extend to uses of such marks in commerce.[5]

The next ground of opposition is dilution and in the United States, there are two forms of dilution, both raised by Kylie Minogue, which are dilution by blurring and dilution by tarnishment. Dilution by blurring and tarnishment are dealt with in section 43(c) of the Lanham Act. While section subsection (1)[6] of 43(c) speaks to the relief available to the owner of a famous mark in a dilution matter, section 43(c)(2)(b) defines what blurring is as “…association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”[7] It then list the factors the court may consider, including how similar the marks are,[8] and the extent to which the owner of the mark had previously significant, within the relevant market, unshared use of it.[9]Section 43(c)(2)(b) continues, to describe dilution by tarnishment as being an “…association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”[10]

In the factual background to the opposition, Kylie Minogue, sets out that she is the owner of several registered trade marks in the United States, some from even as early as 2006, including “KYLIE MINOGUE DARLING” for body products and cosmetics[11], and the mark “KYLIE” for several categories, these being for, “Education and entertainment”[12], also in International Class 9 which deals with music videos and even accessories for cellular devices[13], International Class 14 which deals with jewellery and the like,[14] International Class 16 dealing with printed material, fashion and stationary[15] and International Class 28, dealing with children’s toys.[16] Kylie Minogue claims that she is also the holder of the mark “LUCKY- THE KYLIE MINOGUE MUSICAL”[17] for concerts, live performances and similar events, and the owner of mark for “KYLIE MINOGUE & Design” for perfumes and jewellery.[18]

Referring to Kylie Jenner as a “secondary reality television personality”,[19] Minogue opposes the application by Jenner on the basis that not only does her use of the mark predate Jenner’s use, but also that Jenner’s use of the mark has not been “use in commerce”[20], and to grant the mark would “violate and diminish the prior superior rights”[21] held by her. Further, as described above, that the mark “KYLIE” sought to be registered by Jenner, and the services for which registration has been sought, is so visually and aurally similar, almost identical to registered marks owned by Minogue, that registration would likely cause confusion within section 2(d), which then, is likely to cause her damage and injury to her reputation, as the public might be led to incorrectly believe that Jenner’s mark is her mark, or they are somehow connected. Minogue also raises the investment argument, that being, that much money has been spent protecting the “KYLIE” mark, which would be disturbed by the registration of Jenner’s mark, and further her exclusive use of the mark would be damaged.[22]

On the grounds of dilution, Minogue claims that her marks are indeed famous as required by section 43(c)(2), and the relevant market now associates the mark “KYLIE” with her. Additionally, her marks and particularly “KYLIE”, are distinctive, granting them protection under section 43(c), and making them subject to the provision relating to blurring and tarnishment. Minogue therefore puts forward, that the registration of Jenner’s mark will harm the “KYLIE” mark’s distinctiveness and even damage its reputation all together.

Surely this case will be decided in line with the clear provisions of section 2(d) and 43(c), as well consider other sections, including perhaps seeking the direction of the definitions in section 45 of distinctiveness, and whether there has been “use” by Jenner in commerce, as required. This will be an interesting battle, and definitely one to watch, as it will be quite fascinating to see which Kylie will reign supreme. Her name might very literally depend on it!

Lisa Diana Rhooms

Assistant Editor, QMJIP

 

[1] ttp://tsdr.uspto.gov/#caseNumber=86584742&caseType=SERIAL_NO&searchType=statusSearch <accessed March 4, 2016>

[2] See notice of opposition here http://ttabvue.uspto.gov/ttabvue/v?pno=91226456&pty=OPP&eno=1 <accessed March 1, 2016>

[3] Lanham (Trademark) Act, 1946

[4] ibid s. 2(d)

[5] ibid s. 2 (d)

[6] ibid s. 43 (c) (1) “Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.”

[7] ibid s. 43(c)(2)(b)

[8] ibid s. 43(c)(2)(b)(i)

[9] ibid s. 43(c)(2)(b)(iii)

[10] ibid s. 43(c)(2)(c)

[11] Notice of Opposition (n 2) para 8

[12] ibid para 9

[13] ibid para 10

[14] ibid para 13

[15] ibid para 13

[16] ibid para 13

[17] ibid para 11

[18] ibid para 12

[19] ibid para 17

[20] ibid para 22

[21] ibid para 23

[22] ibid paras 38 and 39

Absence of decoration can be feature of design, adding to overall impression – says Supreme Court

by Sahana Pal

The United Kingdom Supreme Court on Wednesday 9th March 2016, unanimously ruled in favour of “Kiddee Case” manufacturer PMS International, whose animal suitcase design was allegedly ripped off from another popular ride-on luggage for children, called “Trunki”, manufactured by Magmatic Limited.

Without denying the similarities between the two products, the five judge bench of the Supreme Court stressed on the fact that the overall impression they created on the mind of an informed customer, taking into account their shape and markings, was very different.

Magmatic’s founder, Robert Law, won a prize in 1998 for conceptualizing a design of a four-wheeled ride-on suitcase for children, called “Rodeo”. Subsequently he updated the design and proceeded to register it at the OHIM, who published it as a Community Registered Design (CRD). The commercial product “Trunki” was launched soon afterwards and was an instant hit. However, the monopoly did not last long as PMS International started producing their own line of ride-on suitcase “Kiddiee Case” with what seemed to be very minor changes in colour and style.

In February 2013, Magmatic issued proceedings seeking damages and injunction against PMS, and got a ruling in their favour from the High Court. [1] In June 2014, the decision was overturned by the Court of Appeals, who was of the opinion that the trial judge erred in restricting his evaluation by taking into account just the shape of the two cases and did not pay attention to the other distinguishing surface decoration features like colour, strap, stripes, eyes, whiskers and covered wheels.[2]

Confirming the stance of the Court of Appeal, the Supreme Court President Lord Neuberger observed that

[T]he conception of the Trunki, a ride-on wheeled case which looks like an animal, seems to have been both original and clever; [..] Furthermore, it appears clear that Mr Beverley of PMS conceived the idea of manufacturing a Kiddee Case as a result of seeing a Trunki, and discovering that a discount model was not available. Unfortunately for Magmatic, however, this appeal is not concerned with an idea or an invention, but with a design.[3]

He then went on to say that the any alleged infringement of a CRD has to be tested on the basis of whether the infringing item “produce[s] on the informed user a different overall impression” from the original design. The design claimed in this case [Trunki] was for a wheeled suitcase in the shape of a horned animal, but that it was not a claim for the shape alone, but for one with a strap, strips and wheels and spokes in a colour (or possibly colours) which contrasted with that of the remainder of the product. Given the rest of the design elements were different in the Kiddiee Case, the Supreme Court saw no reason in believing the latter infringed the former.

The Court also took note of Magmatic’s contention that absence of ornamentation cannot be a feature of a Community Registered Design, accepting that it raises a valid point of EU law and commenting that “Minimalism can self-evidently be an important aspect of a design just as intensive decoration can be.”[4]

The judgment generated an array of mixed reaction – with PMS Managing Director Paul Beverly seeing this as a “victory of fair competition”[5] whereas Trunki founder Robert Law claiming his brand was “willfully ripped off.”[6] But one thing that appears likely is that the judgment has opened a flood-gate of “inspired products” at cheaper costs, along with some serious questions regarding the best way to protect a design, especially with regard to colour and surface decorations.

[1] Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181.

[2] Kiddee Case rides high as Court of Appeal overturns decision on Trunki design right, Ashurt LLP Technology & IP newsletter, June 2014, available at https://www.ashurst.com/publication-item.aspx?id_Content=10569

[3] Para 57 of the judgment

[4] Para 60 of the judgment

[5] Trunki trumped by Kiddee in design battle of the suitcases, The Guardian, 9 March 2016, http://www.theguardian.com/business/2016/mar/09/kiddee-trumps-trunki-in-battle-of-the-suitcases

[6] Seller of Trunki children’s suitcases LOSES a Supreme Court fight with rival Kiddee Cases in a ruling called ‘disastrous’ for brands trying stop products being ‘copied’, Daily Mail UK, 9 March 2016 http://www.dailymail.co.uk/news/article-3483880/Seller-Trunki-children-s-suitcases-LOSES-High-Court-fight-rival-Kiddee-Cases-ruling-called-disastrous-brands-trying-stop-products-copied.html

Sahana Pal

Assistant Editor, QMJIP