QMJIP

Queen Mary Journal of Intellectual Property

Month: May, 2017

Here we laugh again! The eternal controversy over parody scope in Copyright law

by federicapezza

Remix, mash-up, fan fictions and “other strange animals”:  welcome all to the taking from-era.The eternal tension between original creator property rights and guarantee of social interests in Copyright law, is becoming even more crucial nowadays, due to the increasingly common practice of elaborating and reinterpreting copyrighted material.

One of the latest issues comes from the US.

Again, a balance is required. This time, however, the bone of contention lies in the drawings of comic books. Here we go again my dear copyright lawyer! Well, here we laugh again, to be fair.

But first things first. Let’s have a look at the facts.

Comixmix has been sued by Dr Seuss Enterprises(DSE), the estate of late children’s author and illustrator Theodor Seuss Geisel, for trying to sell a book called Oh, The Places You’ll Boldly Go!, proposed on Kickstarter as a “mash-up” of Dr. Seuss and Star Trek. In particular, the plaintiff, in its formal complaint, alleges that the unauthorized publication of the book,” by using innumerable copyrighted elements” of the original and iconic Dr Seuss “Oh the Place You’ll Go” , presents a clear infringement of his copyright under the US Copyright Act s. 106. Further, it would also amount to a trademark infringement under the Lanham Act, due to the distinctiveness of Dr Seuss marks[1]. On the other side, the creators, although totally aware of the risks connected to their work, rely on the fair use defence under s. 107 of the US Copyright Act. [2]

Quite interestingly, the lawsuit follows another complaint, based on the same reasons, which has been filed by CBS and Paramount Pictures over another crowd-funded project — a professional-quality “fan film” titled Axanar[3].

But there is more.

What makes the dispute even more intriguing to the non-geeks is the fact that the plaintiff, Dr Seuss, had already been involved, a few years ago, in one of the US leading cases on Copyright Law and Fair Dealing. [4]In that instance the US Court, having to decide whether the “Cat NOT in the Hat “by Dr Juice constituted an infringing copy of Dr Seuss book “The Cat in the Hat”, found for the plaintiff, ruling out the justifiability of the work under the US fair use doctrine. In that occasion the court adopted a narrow[5] interpretation of parody notion, which excluded the applicability of the exception any time the new work, rather than targeting the previous one(target parody),made use of it as a weapon against society.

Thus, how can one draw the line between authorised fan fiction and infringing copy?        As always, when talking about copyright, the answer is not a straightforward one.Law changes, society evolves, judicial interpretation is subjective…

So keep calm and go back to your Marvel Comics, my dear copyright lawyer.  That’s the daily lesson: he who laughs last, laughs best.

Federica Pezza

Assistant Editor, QMJIP


 

[1] https://www.documentcloud.org/documents/3219155-Seuss-Suit.html

[2] Noticeably, on their webpage, anticipating the lawsuit, they already proclaimed While we firmly believe that our parody, created with love and affection, fully falls within the boundary of fair use, there may be some people who believe that this might be in violation of their intellectual property rights. And we may have to spend time and money proving it to people in black robes. And we may even lose that.”

[3] https://www.documentcloud.org/documents/2660454-Startreklawsuit.html

[4] DR SEUSS ENTERPRISES v. PENGUIN BOOKS USA INC http://caselaw.findlaw.com/us-9th-circuit/1384979.html

[5] For the developmets on the fair use defence in US look at Cariou v Prince where a broader notion of fair use based on the transformativeness of the work has been elaborated.

Bogus Buys: Trade marks and Counterfeiting

by Lisa D. Rhooms

Counterfeiting comes in many forms, and is nothing new in business or in the law of Intellectual Property. However, where counterfeit goods are becoming nearly imperceptible, they pose a real risk to the owners of the goods being “knocked off”, and the buyers who believe they are getting the real thing. In a recent press release from the Organization for Economic Cooperation and Development[1] about their new report[2], they found that:

“nearly one in five mobile phones and one in four video game consoles shipped internationally is fake, as the growing trade in counterfeit IT and communications hardware weigh on consumers, manufacturers and public finances…”[3]

Counterfeiting however, does not begin or end with IT or communications goods, as nearly every good can, and probably has been counterfeited.

Counterfeiting and the Trade mark- Confusion and Passing Off

Whether under United States (US), United Kingdom (UK) or European law, counterfeiting of a mark, particularly a famous trade mark, affects the mark, though the degree or harm may vary. The case of Hermes Intern v Lederer de Paris Fifth Avenue., Inc.[4] spells out skillfully, the harms that can arise where there is confusion because of the similarity of marks and goods, one counterfeit and one real. The judgment states:

“a loss occurs where a sophisticated buyer purchases a knock off and passes it off to the public as the genuine article, thereby confusing the viewing public and achieving the status of owning the genuine article at a knock off price… the creation of confusion in the post sale context can be harmful in that if there are too many knockoffs in the market, sales of the original may declines because the public is fearful that what there are purchasing may not be an original… the purchaser of an original is harmed by the widespread existence of knockoffs because the high  value of originals, which derives in part from their scarcity, is lessened.”[5]

This case looks at the harm in a post sale context, including the harm to owner of the mark, in terms of reduced sales, the fear of the prospective consumers that the goods they may be purchasing are fake, and the actual loss to owners of the goods due to a lack of scarcity. This case helps to illustrate the multifaceted harm counterfeiting can cause.

In the United Kingdom, even an unregistered trade mark is protected against counterfeiting by the law of passing off because of the harm it can cause to a trader. This is demonstrated in the case of Reddaway v Banham[6], where the judgement made clear that “nobody has any right to represent his goods as the goods of somebody else”[7]which is a clear shot at counterfeiting, as where there is passing off, there is harm, and when a trader commits passing off, he for all intents and purposes steals another trade’s patron and his reputation.

Counterfeiting and the Trade mark- Dilution

Another problem with counterfeiting is that it may cause dilution, which is a concept found in the US, UK, Europe and elsewhere. In the US, sections 43(c)(2)(b) and 43(c)(2)(c) of the Lanham Act relate to dilution by blurring, and dilution by tarnishment respectively. Dilution is a concept in respect of a famous trade mark, and dilution by blurring arises where the marks are so similar that the distinctiveness of the famous mark is impaired by the other mark. Cases such as Levi Strauss & Co v Abercrombie & Fitch Trading Co.[8] have determined that there need not even be an identity or substantial similarity of marks for there to be blurring, so a counterfeit item, intended to be a replica, would almost certainly cause dilution by blurring. Dilution by tarnishment arises where there is a similarity of the marks which gives rise to an association between the marks, and which harms the reputation of the famous mark. Thus, in the case of V Secret Catalogue inc, v Mosely[9], the court found that there was a rebuttable presumption of tarnishment where the famous mark was connected with sex products. Another scenario where tarnishment is possible is where the product, similar to one bearing the famous mark, is of poorer quality. Counterfeits are generally cheaper and of poorer quality than famous more expensive brands, and thus, a counterfeit good could very easily cause dilution by tarnishment. Again, in the UK, unregistered marks are protected by passing off, and dilution is a category of harm under passing off.

Conclusion

Counterfeiting is a sin against a genuine good as it can steal, kill and destroy. A counterfeit good can steal a customer from a trademarked brand, kill its reputation and destroy the business of the holder of the trade mark. Intellectual Property law, trade mark law in particular must therefore take serious steps in addressing counterfeiting through the policing of brands, bringing action against counterfeiters, and imposing other sanctions including heavy fine, and imprisonment. Trade mark law must be very careful, but also unyielding in disallowing bogus buys from hindering genuine products, and the resources which have gone into engineering them.

Lisa Diana Rhooms

Assistant Editor, QMJIP

[1] http://www.oecd.org/gov/trade-in-counterfeit-ict-goods-9789264270848-en.htm

[2] OECD (2017), Trade in Counterfeit ICT Goods, OECD Publishing, Paris.
DOI: http://dx.doi.org/10.1787/9789264270848-en

[3] Ibid 1

[4] 55 U.S. P.Q 2d 1360 (2nd Cir. 2000)

[5] ibid

[6] [1896] AC 199

[7] ibid

[8] 633 F.3 1158 (9th Cir. 2011)

[9] 605 F.3 382 (6th Cir. 2010)

May 2017 #IPEvents

by Giancarlo Moretti

Here is the list of Intellectual Property events occurring in May 2017. 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.

UNITED KINGDOM & IRELAND

  • 3 May – London – BLACA – The scope of “communication to the public” under EU law: is there still a borderline with indirect liability? Link.
  • 4 May – Glasgow – AIPLA – Women in IP Law EventLink.
  • 4-5 May – Glasgow – CREATe – Early Career Researcher Camp – Link.
  • 6 May – London – IAL – Study Forum in London – Link.
  • 8 May – Cambridge – CIPIL – Book Launch: Henning Grosse Ruse-Khan “The Protection of Intellectual Property in International Law”Link.
  • 9 May – London – CIPA & CITMA – Canadian IP and Patent Practice CPD Seminar – Link.
  • 9 May – Leamington Spa – LES Britain & Ireland – IP Strategy at Critical Points in the Life of a BusinessLink.
  • 9-10 May – London – Management Forum – The Formal Requirements of the European Patent SystemLink.
  • 10 May – Bournemouth – CIPPM – The Doctrine of Implied Licence and Copyright Balance Link.
  • 10 May – London – SCL – Big Data, AI, technology and the lawLink.
  • 10 May – London – IPSoc – Latest Developments in Copyright – Link.
  • 11 May – London – CITMA – IP Inclusive Afternoon Seminar – Link.
  • 11 May – Newport – CITMA – IP Inclusive Afternoon Seminar – Link.
  • 11 May – Edinburgh – MBL – Due Diligence on Intellectual Property – Link.
  • 11 May – Edinburgh – MBL – Intellectual Property in R&D Collaborations Link.
  • 11 May – London – QMUL – CCLS – The Intellectual Property CovenantLink.
  • 15 May – London – MBL – Copyright – Advanced Aspects Explored – Link.
  • 15 May – London – SCL – Renegotiation and DisputesLink.
  • 15 May – Bristol – MBL – All you need to know about the UK Patent BoxLink.
  • 16 May – Manchester – MBL – All you need to know about the UK Patent BoxLink.
  • 16 May – Oxford – FLJS – Free Speech: Ten Principles for a Connected World – Link.
  • 16 May – Oxford – Oxford University Intellectual Property Research Centre – Behind the Steele Curtain: An Empirical Study of Trademark Conflicts Law, 1952-2016Link.
  • 16 May – London – IPR – Data Risk Management in Financial Services Summit – Link.
  • 16 May – London – CITMA – Copyright Law refresher – Link.
  • 16 May – London – Management Forum – The Impact of Patent Construction – How to Prove Infringement and ValidityLink.
  • 17 May – London – ALPSP – Understanding Copyright – Link.
  • 17 May – London – Bird&Bird – The Unified Patent Court Breakfast Seminar Series Link.
  • 17 May – Cambridge – CILIP – Getting to grips with Copyright and Open Access – Link.
  • 17-18 May – London – Management Forum – How to Avoid Common Pitfalls in Combined EU/US Patent ApplicationsLink.
  • 18 May – London – MBL – Taking Security over Intellectual Property – Link.
  • 18 May – Cambridge – CIPIL – ‘Behind the Steele Curtain: An Empirical Study of Trademark Conflicts Law, 1952-2016 Link.
  • 18 May – Glasgow – CIPA – The Scotland Meeting 2017 – Link.
  • 18 May – London – Osborne Clark – Copyright in the digital environmentLink.
  • 18 May – Oxford – Oxford University Intellectual Property Research Centre – Trademarks and private governance – Link.
  • 22 May – Cambridge – MBL – All you need to know about the UK Patent BoxLink.
  • 22 May – Oxford – Assimilate IP – Freedom to Operate Link.
  • 22 May – Oxford – Assimilate IP – Introduction to Intellectual Property Link.
  • 23 May – Bristol – MBL – A practical guide to draft IT Contracts – Link.
  • 23 May – Manchester – MBL – Intellectual Property Law Update – Link.
  • 23-24 May – London – IQPC – Information Governance and eDiscovery SummitLink.
  • 26 May – Glasgow – CREATe – Copyright Innovation Network (CIN) LaunchLink.
  • 30 May – London – UCL – IP Licensing: An Advanced Level Drafting Workshop – Link.
  • 30 May – Bristol – MBL – Valuation of IP Rights, Intangible Assets & Goodwill Link.
  • 30 May – Oxford – Oxford University Intellectual Property Research Centre –Implied Licences in Copyright Law – Link.

CONTINENTAL EUROPE

  • 3 May – Paris, France – APEB – Tables Rondes Commission Innovation & RechercheLink.
  • 3-4 May – Munich, Germany – EPO – PATLIB 2017 Link.
  • 4 May – Porto, Portugal – SME IPR Helpdesk – The importance of IP in internationalization strategies: the case of Latin America Link.
  • 4 May – Strasbourg, France – CEIPI – Propriété intellectuelle et numérisation- Quels enjeux pour le management de la propriété intellectuelle?Link.
  • 4-5 May – Munster, Germany – Munster University – Trading Data in the Digital Economy: Legal Concepts and ToolsLink.
  • 5 May – Milan, Italy – Università Bocconi – Second-hand Markets for Digital Copies – An EU copyright chimera? – Link.
  • 5 May – Strasbourg, France – CEIPI – La jurisprudence européenne en propriété intellectuelle Link.
  • 7-9 May – Cascais, Portugal – ACC Europe – ACC Europe Annual Conference – Link.
  • 9 May – Basel, Switzerland – FORUM – FTO in Practice: Life Sciences & PharmaceuticalsLink.
  • 9-10 May – Munich, Germany – Pharmaceutical Patent Term ExtensionsLink.
  • 9-10 May – Luxembourg, Luxembourg – ICT – ICT Spring Europe 2017 – Link.
  • 9-10 May – Bucharest, Romania – WIPO – Sub-regional Seminar on Teaching Intellectual Property to the YouthLink.
  • 11 May – Strasbourg, France – CEIPI – Séminaire de préparation à l’examen français de qualification spécialisation «brevets d’invention» Link.
  • 11 May – Amsterdam, the Netherlands – Symposium on Copyright and Culture – Link.
  • 11-12 May – Munich, Germany – EPLIT – EPLIT’s 4th Annual MeetingLink.
  • 12 May – Paris, France – Sciences Po – Building a EU Unitary Copyright– Link.
  • 16 May – Paris, France – IRPI – Droit d’auteur et droits voisins – Link.
  • 16 May – Paris, France – LES France & YMC – La révolution ‘blockchain’ Link.
  • 16-17 May – Berlin, Germany – Marcus Evans – IT Governance Risk Compliance – Link.
  • 17 May – Paris, France – IRPI – Droit des marques et autres signes distinctifs – Link.
  • 16-18 May – Brussels, Belgium – Informa – EU Pharmaceutical Law Forum Link.
  • 17-19 May – Barcelona, Spain – IACC – IACC 2017 Annual Spring Conference – Link.
  • 17-19 May – Tilburg, the Netherlands – Tilburg University – Regulating a connected world – Link.
  • 17-20 May – Copenhagen, Denmark – ALAI – Copyright: to be or not to be?Link.
  • 18 May – Madrid, Spain – LES Spain – Caso práctico sobre protección y comercialización de secretos industriales y comerciales Link.
  • 18 May – Bern, Switzerland – AIPPI – AIPPI General Assembly and Swiss Day Link.
  • 18-19 May – Trier, Germany – ERA – Intellectual Property Enforcement and the Fight against Counterfeit Goods in the EULink.
  • 20-24 May – Barcelona, Spain – INTA – INTA 139th Annual Meeting – Link.
  • 22 May – Barcelona – EUIPO – TM5 Mid Term MeetingLink.
  • 25 May – Budapest, Hungary – Dentons – IP breakfast seminar on the present and future of collective rights managers Link.
  • 25 May – Bucharest, Romania – WIPO – National Seminar on Intellectual Property Protection and Enforcement Relating to the Automotive Spare PartsLink.
  • 30 May – Madrid, Spain – FIDE – Sociedad Digital- “Modelos de negocio digitales del siglo XXI regulados por marcos normativos analógicos del siglo XX – Link.
  • 30 May – Paris, France – FORUM – Gestion Stratégique de la Propriété Intellectuelle Link.
  • 31 May – Amsterdam, the Netherlands – FORUM – Quo Vadis, SPC? Link.
  • 31 May-1 June – Munich, Germany – EPO – Examination Matters 2017 – Link.
  • 31 May – Aci Castello, Italy – Union IP – Union Congress 2017 – Link.

USA & CANADA

  • 3 May – Seattle, WA, USA – Centerforce – IP Strategy – Link.
  • 4 May – Detroit, MI, USA – Global Business Media – IP In the Auto Industry Link.
  • 4 May – Sacramento, CA, USA – CLA – Common Trademark Issues Every Client Faces Link.
  • 5 May – Houston, TX, USA – USPTO – Lone Star Strategies for IP in China Link.
  • 5 May – L’Auberge del Mar, CA, USA – LAIPLA – LAIPLA Spring Seminar – Link.
  • 5 May – Chicago, IL, USA – John Marshall Law School – Ethics in the practice of Intellectual Property Law – Link.
  • 8 May – Stanford, CA, USA – Stanford Law School – The Unregulated Certification Mark(et)Link.
  • 8 May – Detroit, MI, USA – USPTO – Developments in trade secret protection – Link.
  • 8-9 May – Washington DC, USA – LES USA & Canada – Best Practices in Licensing: Developing, Negotiating & Executing Transactions Link.
  • 9 May – Boston, MA, USA – Dennemyer – The future of IP and Technology Law Forum – Link.
  • 9-12 May – Washington DC, USA – LES USA & Canada – LES Spring MeetingLink.
  • 10 May – Berkeley, CA, USA – CLA – Protecting Intellectual Property Rights in a Work-Made-for-Hire Economy – Link.
  • 10 May – Boston, MA, USA – Centerforce – IP Defense – Link.
  • 10-12 May – Palo Alto, CA, USA – IP Counsel Cafe – Where Are We in Eradicating Weak Patents? – Link.
  • 11 May – New York, NY, USA – Dennemyer – The future of IP and Technology Law Forum – Link.
  • 11 May – Vancouver, BC, Canada – LES USA & Canada – The European Unified Patent Court and Unitary Patent – What to ExpectLink.
  • 15 May – Ithaca, NY, USA – How to avoid pitfalls in IP deal making – Link.
  • 15 May – New York, NY, USA – CSUSA – Computing Machines Creating Protectable Works: The Future of Copyright?Link.
  • 16 May – Washington DC, USA – George Washington Law School – 2017 GW IP Law Symposium – Link.
  • 16 May – New York, NY, USA – Managing IP – PTAB Forum 2017 Link.
  • 17 May – Chicago, IL, USA – Centerforce – IP Defense – Link.
  • 17 May – Palo Alto, CA, USA – LES USA & Canada – Penny or a Pound: Apportioning Damages in Patent CasesLink.
  • 17 May – Montgomery, AL, USA – USPTO – Alabama Digital Governance Summit Link.
  • 17-18 May – Michigan, MI, USA – Michigan State University – The Ninth Annual Junior Scholars in Intellectual Property (JSIP) Workshop – Link.
  • 17-19 May – San Diego, CA, USA – AIPLA – AIPLA Spring Meeting 2017 Link.
  • 18 May – San Francisco, CA, USA – Global Business Media – The Software IP Summit – Link.
  • 18 May – San Jose, CA, USA – USPTO – Patent Brown BagLink.
  • 18-19 May – Mountain View, CA, USA – Berkeley Centre for Law and Technology & MLRC – Legal Frontiers in Digital Media 2017 Link.
  • 20-25 May – Atlanta, GA, USA – PIUG – PIUG 2017 Annual Conference – Link.
  • 23 May – Sacramento, CA, USA – CLA – Contract Basics for Creative Artists – Link.
  • 23 May – Chicago, IL, USA – CSUSA – Picture This: The “Monkey Selfie” and Granting Copyrights to Nonhuman Animals Link.
  • 23 May – San Jose, CA, USA – USPTO – Design Patent Brown BagLink.
  • 25 May – Stanford, CA, USA – Global Competition Review – GCR Live IP & Antitrust California – Link.

LATIN, CENTRAL & SOUTH AMERICA

  • 11 May – Sao Paulo, Brazil – ASPI – O Novo Cpc Em Seu Primeiro Ano De Vigência E A Propriedade IntelectualLink.
  • 17-19 May – Sao Paulo, Brazil – IBA – IBA 5th Biennial Technology Law Conference – Link.
  • 18-19 May – Sao Paulo, Brazil – SCL – Technology beyond the bounds: enterprise benefits and social and regulatory limitsLink.
  • 31 May – 2 June – Buenos Aires, Argentina – WIPO – Segundo Taller de Entrenamiento de la OMPI sobre información y búsqueda de patentes y la prestación de servicios de información de valor añadido para el personal de la Red Nacional de Centros de Apoyo a la Tecnología y la Innovación (CATI) de Argentina Link.

AFRICA, ASIA & OCEANIA

  • 4 May – Melbourne, VIC, Australia – ACC – Drafting IP Clauses: tips and tricks for in-house lawyersLink.
  • 9 May – Melbourne, VIC, Australia – IP Australia – Patent 101 for Startups – Link.
  • 9-12 May – Melbourne, VIC, Australia – LES Australia & New Zealand – 7th LES Asia Pacific conferenceLink.
  • 11 May – Melbourne, VIC, Australia – ACC – Protecting your brand in an online worldLink.
  • 17-18 May – Khartoum, Sudan – WIPO – National Seminar on Intellectual Property Policies for Universities and Research InstitutionsLink.
  • 25 May – Sydney, NSW, Australia – IP Australia – Patent 101 for StartupsLink.
  • 31 May-7 June – Nairobi, Kenya – ICANN – Africa Internet SummitLink.

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