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Intellectual Property Matters – January 2016

Intellectual Property Matters – January 2016

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The Washington Redskins and other disparaging trade marks

In July this year, a US District Court ordered the removal of the Washington Redskins […]

In July this year, a US District Court ordered the removal of the Washington Redskins trade mark from the register. The trade mark is the name of the Washington Redskins, an NFL team. The judge did so on the ground that the registration was disparaging to Native Americans and therefore unlawful. The ruling followed a petition presented by a group of Native Americans complaining to the federal Trademark Trial and Appeal Board, which then ruled the mark offensive, a decision upheld by the District Court.

The revocation does not become effective until the appeal process had become exhausted and the proprietor of the mark, Pro Football, Inc. has confirmed that it will be appealing the decision.

The grounds for appeal were published in November and a central argument is that the trade mark register is already populated (“infested” is the word used) with racist and/or offensive names. It lists some of them: TAKE YO PANTIES OFF, DAGO SWAGG (for clothing), RETARDIPEDIA (useless information), MIDGET MAN (for condoms and inflatable sex dolls) and BAKED BY A NEGRO (bakery products). The argument is that if the Redskins trade mark cannot stand, then neither should any of these marks or otherwise confusion will reign and the term “disparaging” will be meaningless. Pro Football also maintains that the name honours Native Americans rather than disparages them and the team is supported by a number of Native Americans.

Pro Football is also arguing that the provisions of the trade mark statute permitting the government to cancel trade marks that are “disparaging” is unconstitutional, being in violation of the First Amendment. The appeal is to be heard by the Fourth Circuit Court of Appeals and it would be a big call for the Fourth Circuit to rule federal legislation unconstitutional, this being more something for the Supreme Court. Even so, the appeal does raise an important question of what is “disparaging” and what is not, so this case is certainly one to watch.

The UK IPO and scam invoices

In recent years an increasing number of clients have received solicitations encouraging them to submit […]

In recent years an increasing number of clients have received solicitations encouraging them to submit payment for trade mark services. The correspondence originates from organisations with official-sounding names, but which are not in fact associated with the UK Intellectual Property Office (UK IPO) or the European Office for Harmonisation in the Internal Market.

The services offered typically include:

trade mark renewal services for fees greatly in excess of official fees;
entries into publications or registers which do not appear to offer any additional benefit than the official trade mark register which is a free database; and
Community trade mark filing – an offer to apply for EU-wide trade mark protection at inflated prices.

A recent case is indicative of the nuisance. A company trading as “Intellectual Property Agency Ltd” (IPA) regularly sent letters to trade mark proprietors reminding them of their trade mark (and patent) renewal fees and requested payment, typically of up to six times the actual renewal fee. The UK IPO instituted proceedings in the Intellectual Property Enterprise Court for trade mark infringement and passing off against IPA and its director, a Mr Jonasson. Both the IPA and Mr Jonasson were found to have deliberately set out to deceive proprietors into thinking that their letters and invoices were issued by the UK IPO and were jointly liable for trade mark infringement and passing off. They were ordered to pay £500,000 plus legal costs.

Should you receive such solicitations please contact the Walker Morris Trade Marks and Designs Unit and refrain from making any payments to organisations offering trade mark services until their authenticity has been assessed.

The need for clarity when transferring copyright

The Court of Appeal has delivered judgment in BSI Enterprises Ltd and another v Blue […]

The Court of Appeal has delivered judgment in BSI Enterprises Ltd and another v Blue Mountain Music Ltd [1] over the ownership of copyright in some Bob Marley songs, including No Woman No Cry.

The facts of the case were quite complicated as Marley had deliberately misattributed songs to his associates, meaning that the Court had to trawl through a number of assignments and licences to ascertain who owned the copyright. However, the central question was whether an agreement made in 1992 between Cayman Music Inc, a company with whom Marley had entered into a publishing agreement in the 1970s, and Island Logic Ltd, his own record label, was effective to transfer copyright in the songs from Cayman to Island. The songs were not referred to in the 1992 agreement and the issue was whether the songs were covered by the agreement.

The High Court held that the copyright in the songs had been assigned to Island and nothing should be inferred from their not having been named in the 1992 agreement. The Court of Appeal agreed with this interpretation, applying the usual rules of contractual interpretation, namely to “ascertain the meaning which the language would convey to a reasonable person having all the background knowledge which would reasonably have been available to the parties in the situation in which they were at the time of the contract”. Having regard to the definitions used in the 1992 agreement, it was clear to the Court of Appeal, as it was to the High Court, that the songs were covered by the agreement.

Although concerned with copyright, this case is really about how to draft a contract and the judicial approach to contractual interpretation. If the songs were intended to be excluded, this should have been expressly stated. Conversely, the no doubt costly litigation that arose could have been avoided by clear drafting that the transfer was intended to apply to all songs.

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[1] [2015] EWCA Civ 1151

The Church of Scientology and the consequences of trade mark registration

The Church of Scientology is the registered proprietor of a number of US and international […]

The Church of Scientology is the registered proprietor of a number of US and international trade marks, notably the mark SCIENTOLOGY. The Church has, however, discovered that religion and trade marks do not sit well together in Russia.

The Moscow City Court has ordered the dissolution of the local branch of the Church on the basis that its ownership of trade marks means that the Church is not a religious organisation. Under Russian law, religious organisations must be registered in order to be authorised to carry out their activities. The Russian Government has said that it cannot maintain a registration for the Church because the Church’s trade mark registrations show that the Church is a commercial organisation. The Government’s position is that the Church cannot be simultaneously a religious and a commercial organisation. It says that the appropriate regulatory landscape for the Church is not the religious one but consumer protection law.

The Church of Scientology has said it will appeal against what it calls the “anti-religious” abuse of its parishioners’ rights, claiming that the Russian authorities have long been biased against the Church.

The Church of Scientology is, of course, no stranger to controversy with its detractors arguing that it is more akin to a cult than a true religious organisation. Critics of the Moscow Court’s decision (and the Government’s position) say that the decision is based less on the nuances of trade mark law and more on distrust of the Church.

There is a separate criminal investigation ongoing in Moscow against the Church after hidden microphones and cameras were allegedly found in the Church’s Moscow premises.

How do global time zones affect a patent’s priority?

Birss J, in the Patents Court, recently had to consider the impact of global time […]

Birss J, in the Patents Court, recently had to consider the impact of global time zones on a patent’s priority.

The effect of the world’s time zones means that an act that is happening at the same moment in time may be happening on Monday 1 January in one country and Tuesday 2 January in another. This has implications for priority dates in the international patent regime.

In Unwired Planet International Ltd v Huawei Technologies Co Ltd and others [1] a patent had a priority date of 8 January 2008. The defendants were relying on prior art which had been uploaded on 8 January 2008 but which, because of the difference in time zones, was publicly available to and was downloaded by people in Western time zones on 7 January 2008. The defendants therefore asserted that the document relied on formed part of the state of the art as at 7 January 2008 and, as such, represented prior art on the patent’s 8 January date.

Birss J ruled that since, at any given moment, the dates and times around the world are different, a patent’s priority date had to be based on some frame of reference and the only one that made any sense was the date at the patent office in the jurisdiction at which the priority document was filed. A disclosure on the same day as the priority date, albeit earlier in time, was not prior at and a document disclosed on the internet on the same day as a patent’s priority document had been filed was not part of the prior art because, by the operation of different time zones, it was available in some parts of the world where the date was that of the previous day.

Accordingly, the document relied upon by the defendants was not part of the state of the art on 8 January 2008.

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[1] [2015] EWHC 3366 (Pat)

H&M found in breach of Stretchline patent for a second time

We have written previously about the patent dispute between the retailer, H&M, and Stretchline, the […]

We have written previously about the patent dispute between the retailer, H&M, and Stretchline, the proprietor of a patent concerning fabric tubes used to encase the under-wires in bras. The High Court, and subsequently the Court of Appeal, ruled that the terms of a settlement agreement between the parties precluded H&M from raising the issue of the validity of the patent whether by way of defence to infringement proceedings or counterclaim for revocation of the patent.

The dispute has now returned to the courts with Stretchline again claiming against H&M for infringement. The Patents Court ruled in November [1] that H&M was using the patented technology in 12 of its bra ranges, in each case without a licence. This was in breach of the settlement agreement previously considered by the High Court and Court of Appeal.

In its defence H&M argued that the patent was invalid in light of common general knowledge. The Court gave this argument short shrift, ruling that this was not relevant to the construction of the patent but rather was an attempt to introduce an argument that H&M was barred from raising.

Damages are to be assessed in the New Year as the scale of the infringement is not currently clear.

H&M has indicated that it may appeal.

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[1] Stretchline Intellectual Properties Ltd v H & M Hennes & Mauritz UK Ltd [2015] EWHC 3298 (Pat)

Who owns the copyright in Anne Frank’s Diary?

Anne Frank wrote her diary between June 1942 and August 1944 during the period in […]

Anne Frank wrote her diary between June 1942 and August 1944 during the period in which she and her family were in hiding in Amsterdam. She died in 1945, aged 15, in the Bergen-Belsen concentration camp.

Under EU law, copyright lasts for 70 years from the author’s death, which, in the case of Anne Frank, takes us into 2015. Assuming Anne Frank was the sole author, therefore, the Diary is due to come out of copyright imminently – and indeed a French MP, Isabelle Attard, is preparing to publish the text online on 1 January next year.

However, the Anne Frank Fonds, the Swiss foundation established by Anne’s father Otto in 1963, has informed publishers that the Diary will not be coming out of copyright in 2016 because Otto had done so much work on the most widely published version of the Diary that he had “earned his own copyright”. Otto died in 1980.

This is more than simply a copyright dispute. Right-wing revisionists have attempted in the past to attack the Diary’s credibility and, Isabelle Attard maintains, casting doubt on Annes’ authorship of the Diary bolsters this type of argument.

Isabelle Attard is not the only person planning to publish the text of the Diary in the New Year; a lecturer at the University of Nantes, Olivier Ertzscheid, is also preparing to publish the text of the original Dutch edition of the Diary on 1 January with plans for a French translation later in the month.

The position of the Anne Frank Fonds is not that Otto is the co-author in the sense that he wrote the Diary alongside Anne. However, it maintains that, after the war, Otto, together with Mirjam Pressler, merged, or compiled, the two versions of the Diary that Anne left, which individually had been incomplete and partly overlapped, into one reader-friendly version. The version he created, the Foundation maintains, is his creation and, as such, any publication by Attard or Ertzscheid would be copyright infringement.

The Foundation is attracting a considerable amount of criticism for its stance and it would be surprising, to say the least, if someone does not take the risk of being sued and publish in January, without “authorisation” from the Foundation. One argument that has been put forward is that it is also 70 years since the death of Adolf Hitler, meaning that his writings, Mein Kampf, in particular, also come out of copyright and that there needs to be a counterpart to this.

Merry Christmas Ya Filthy Animal

Christmas wouldn’t be Christmas without a showing of Home Alone (or, in this case, Home […]

Christmas wouldn’t be Christmas without a showing of Home Alone (or, in this case, Home Alone 2).

The movie, of course, needs no introduction and the slogan “Merry Christmas Ya Filthy Animal” is possibly its most famous quote.

Those words have become the subject of a US trade mark dispute. An online retailer based in Columbus Ohio operates YaFilthyAnimalStore.com and sells clothing bearing the words “Merry Christmas, Ya Filthy Animal”. Another retailer, based in Nevada, claimed trade mark and copyright infringement.

On a preliminary injunction application issued by the Columbus company, a US District Court ruled in favour of that company, holding that the Nevada company and its owner had not legal right to claim registered trade mark or copyright protection for the words “Merry Christmas Ya Filthy Animal”. It appears that the Nevada company did not file its application for trade mark registration until 30 October this year, just a week before instituting infringement proceedings. The launch of those proceedings had an immediate economic effect in that the Columbus’ company had its listings deactivated by peer-to-peer trading website Etsy.com, which was prepared to leave it to the two companies to sort out their differences between themselves.

The Columbus company – DT Fashion – was registered as proprietor of the mark “Ya Filthy Animal” in 2013 and its merchandise is not restricted to holiday season offerings (or Home Alone references). It claims that “Ya Filthy Animal” is a recognised stand-alone brand. The effect of the injunction is to stop the Nevada company from selling “Ya Filthy Animal” merchandise.

Contacts

Alan Harper, Senior Associate, Intellectual Property & Trade Marks at Walker Morris LLP

Alan Harper
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