Intellectual Property Matters – November 2015
Print newsletter18/11/2016

How should Schweinsteiger play it? The footballer and the offensive doll
In one of the more unlikely IP news stories we have seen this year, the […]
In one of the more unlikely IP news stories we have seen this year, the Manchester United and Germany footballer Sebastian Schweinsteiger is reportedly considering his legal options after discovering that a Hong Kong company is making dolls in the uniform of World War Two German soldiers, which bear an uncanny resemblance to the Bavarian midfielder.
The manufacturer denies that the similarity was intentional – although it is undeniably striking – maintaining that the doll’s appearance is what it thought all Germans looked like! Unfortunately, the Wehrmacht figure, complete with Third Reich insignia, is also called Bastian. The manufacturer says that this is just an unfortunate coincidence, that Bastian is a common German name.
Schweinsteiger’s lawyers are talking about defamation and insult but it Is not clear on what basis they would bring the claim. An infringement of Schweinsteiger’s “image right” is a possibility but this is a concept that varies greatly from jurisdiction to jurisdiction and begs the even harder question of where to bring the claim. Schweinsteiger’s best prospects of success might be in Germany but it is unlikely, for obvious reasons, that the dolls will be marketed there or, if they are, that they will be a commercial success. Bringing proceedings in China would be challenging to say the least.
It will be interesting to see how Schweinsteiger takes this forward. His PR agents may well advise him to do nothing as instituting proceedings will only keep this in the spotlight and any claim he does bring will not be straightforward.

The Batmobile Gotham deserves
The US case of DC Comics v Mark Towle, recently determined by the Ninth Circuit, […]
The US case of DC Comics v Mark Towle, recently determined by the Ninth Circuit, was concerned with copyright in the Batmobile. The Batmobile has been featuring in comics since the 1940s and, more recently, in television adaptations and in the Batman films. DC Comics is the publisher and copyright owner of the comic books featuring Batman. Subsequent screen appearances have been under licence.
The dispute arose from the making of unauthorised replicas of the Batmobile by the defendant. DC Comics issued proceedings for copyright and trade mark infringement, claiming that the defendant sold the replicas with the clear intention that they be associated with the Batman brand.
The first issue for the judge was what sort of copyright protection was available to a comic book character (or, in this case, vehicle). The judge set out a three-part test:
- Does the character have physical as well as conceptual qualities? In other words, does it exist other than as a literary concept, e.g. it has been depicted in films?
- Is the character sufficiently delineated to be recognisable as the same character irrespective of where it is depicted?
- Is the character especially distinctive and does it contain some unique elements of expression?
The answer in each case, in respect of the Batmobile, was affirmative. It clearly had conceptual and physical qualities and, notwithstanding some changes to its appearance since its first appearance, it had at all times remained clearly “the Batmobile”. The vehicle contained unique elements, including its distinctive name and its status as part of Batman’s crime fighting armoury.
The defendant relied in part upon the defence that his works were themselves copies of derivative works rather than the real thing but the judge had no truck with this argument, stating: “… if the material copied was derived from a copyrighted underlying work, this will constitute an infringement of such work regardless of whether the defendant copied directly from the underlying work, or indirectly via the derivative work”.
Featuring technical discussion worthy of a comic book convention, the judgment is required reading for Batman fans (as well as copyright fans), even if solely for the “Holy copyright law, Batman!” comment.

Tinder and reverse confusion
Tinder, the online dating app, is a very big business. The app allows users to “swipe […]
Tinder, the online dating app, is a very big business. The app allows users to “swipe right” if they like a person’s profile and to “swipe left” if they don’t. If users swipe right in respect of one another’s profile then they are matched and, hopefully, romance is born. It may not be courtship as Jane Austen understood it, but at around one and a half billion “swipes” worldwide per day, her early twenty-first century counterparts are loving it.
It is therefore a bold step for a California based web design company called WidFireWeb to have launched trade mark infringement proceedings against the owner of the app, IAC Interactive Group. WildFireWeb runs a service called Tinder which enables users to edit content directly onto a web page. It was granted a trade mark for the word mark TINDER in 2011. IAC, by contrast, was not granted its trade mark for the sign TINDER until 2014.
WildFireWeb is suing IAC for using an “identical name” and “confusingly similar” design. It claims that the dating app could harm its ability to market its own software. The two signs are visually similar. Each uses orange lettering and both names have a flame above the letter “i” – although, given that the word in question is “tinder” this is less of a coincidence than it might be in other circumstances.
There is a problem, however. Trade mark litigation is not cheap and IAC is likely to have considerably deeper pockets than WildFireWeb. WildFireWeb has therefore launched a crowdfunding campaign to help raise the funds to fight the litigation but even given the current boom in crowdfundings on both sides of the Atlantic (as colleagues in the Walker Morris Corporate Group have previously described) WildFireWeb have a big task ahead of them although, given the value of the TINDER mark to IAC, it is possible they may be tempted to settle to keep the mark.
This case is an example of “reverse confusion” – where a trade mark with prior rights is confused with the rights of newer company with the same or similar name. This happens where the newer company becomes so well known that that consumers associate the goods or services of the first company with the newer, more well known company. This can adversely impact the first company’s ability to control its brand.

Representation before the Unified Patent Court
The European Patent Office and EU Member States are finalising the detail for the establishment […]
The European Patent Office and EU Member States are finalising the detail for the establishment of the Unitary Patent and the Unified Patent Court, which will amount to the biggest overhaul of European patent law in decades.
The new regime will establish a single approach to patent registration and litigation across participating EU Member States. Under the current regime, national courts and authorities are competent to decide on the infringement and validity of European patents. Divergent national systems create enforcement difficulties and encourage forum shopping as parties look to exploit differences in national law and procedure to their advantage.
The establishment of the Unified Patent Court has been, to say the least, protracted but there is no a feeling that the end may at last be in sight, with early 2017 being trailed as the likely establishment date. One of the most recent announcements relating to the Court concerns representation.
Parties will not be able to appear before the Court without representation. The answer to the question of who may be a qualified representative has now been confirmed. Qualified European patent attorneys and UK qualified solicitors and barristers will be able to represent clients before the Court. This is both wide and welcome and should result in the Court becoming more accessible to patent owners than might have been the case had the qualification requirements been more narrowly drawn.
The wide range of potential qualified representatives makes sense. Patent disputes invariably, of course, involve technical detail but they may also extend beyond the confines of patent law to, for example, competition law or contract law or disputes about jurisdiction. This will require specialist advice which solicitors, in particular, are well positioned to give.
The Intellectual Property, Trade Marks and Design Team will keep you updated with further developments concerning the Unitary Patent and the Unified Patent Court.

Why did the application for registration of Halloumi as a Community trade mark fail?
The General Court has dismissed an appeal by the Republic of Cyprus against the refusal […]
The General Court has dismissed an appeal by the Republic of Cyprus against the refusal of its application for registration of the mark HALLOUMI (and its Cyrillic equivalent) as a Community trade mark [1].
The Republic of Cyprus had applied for registration of the sign HALLOUMI in respect of cheese, milk and milk products. The Office for Harmonisation in the Internal Market (OHIM) refused the application on the grounds that HALLOUMI referred to a speciality cheese from Cyprus and therefore described, for the Cypriot public, the characteristics of the goods covered by the sign, namely the kind and geographical origin of the cheese, milk and milk product. As such, the signs were not distinctive.
The applicant had certification marks (essentially a mark providing a guarantee that the goods bearing that mark meet a certain defined standard or possess a particular characteristic) for the word HALLOUMI (and its Cyrillic equivalent) but there was no requirement for certification marks to be registered under the Community Trade Mark Regulation [2].
The General Court agreed with the OHIM analysis, finding that “the marks applied for could not be accepted for registration by reason of their descriptive meaning, for the Cypriot public, with regard to the goods in respect of which registration was sought”.
The General Court rejected the argument that the fact that the certification marks had been in place since 1992 meant that Cypriot consumers saw the signs as a guarantee of compliance with specific legal requirements rather than being simply descriptive. The General Court also reiterated that the Community Trade Mark Regulation does not provide for the registration of certification marks, which can only be registered if they meet the criteria required for registration as a Community trade mark.
For food producers an alternative to a trade mark application, may be to consider whether the product in question may benefit from “protected food status” – a topic we have written on previously.
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[1] Republic of Cyprus v OHIM, Joined Cases T-292/14 and T-293/14
[2] 207/2009/EC

“Make America Great Again”: the trade mark
The American public are becoming increasingly used to the sight of Donald Trump festooned in […]
The American public are becoming increasingly used to the sight of Donald Trump festooned in a baseball cap proclaiming the slogan “Make America Great Again”. Supporters can buy the caps; apparently, demand in the States is huge. “Make America Great Again” is Trump’s campaign slogan, unveiled at some point in all his election rallies.
Aware that, whatever else he is, Trump is an astute, businessman, the US public were probably not too surprised to learn that Trump has trade marked the slogan. Indeed, he first applied for registration in November 2012, shortly after Barack Obama defeated Mitt Romney in the last Presidential election, an interesting indicator, perhaps, that Trump has held fairly long-term political ambitions. The registration is in respect of “promoting public awareness of political issues and fundraising in the field of politics”.
Trump has shown a willingness to pursue those who use the trade mark. He criticised fellow Republican challengers, Scott Walker and Ted Cruz, for using the slogan as part of their campaigning, reminding them “That’s my expression”. His lawyers have reportedly also sent cease and desist letters to companies offering alternative, unauthorised “Make America Great Again” merchandise.
How did Trump manage to register the slogan? If one stands in the position of a Republican Presidential hopeful, presumably dissatisfied with the present regime, proud patriots and hankering after the Reagan era, it is actually quite hard to conceive how they could make a speech without saying something similar to “Make America Great Again”. In other words, the slogan appears to be descriptive, rather than distinctive and, as such, it should not be capable of registration. Further, the slogan is, essentially, advertising – the product in this case being the concept of Donald Trump as President of the United States – and advertising slogans are very difficult to register as trade marks.
A brand owner seeking registration of a slogan must show that the slogan has acquired a “secondary meaning” on its own. A slogan will be considered to have acquired such a secondary meaning if the brand owner can demonstrate that its use by another party would cause confusion among consumers as to the producer or provider of the goods or services in question. Trump obviously persuaded the US Trademark and Patent Office that his slogan met that threshold. It would not be a surprise at all, if a political opponent were to challenge its registration and seek revocation.
Interestingly, Obama never sought to trade mark the arguably better known “Yes We Can” slogan but his team did trade mark the campaign’s “Rising Sun” logo and sued an online marketer who sold merchandise bearing the logo without authorization.

Copyright in musical works: another victory for Jay Z
The US District Court has rejected a copyright claim brought against the rapper, Jay Z, […]
The US District Court has rejected a copyright claim brought against the rapper, Jay Z, in respect of his 1999 – and first big – hit, “Big Pimpin'”.
The claim was brought by the nephew of the composer of a 1950s Egyptian love ballad, called “Khosara Khosara”. Specifically, the nephew claimed that Jay Z, whose real name is Shawn Carter, and his producer Timbaland, real name Timothy Mosley, had copied the flute notes which are a distinctive part of “Big Pimpin'”. The nephew claimed that Jay Z did not have permission to exploit his uncle’s song.
Whilst there was no dispute that “Khosara Khosara” is sampled on the Jay Z song, in their defence Jay Z and Timbaland maintained that they believed they had a valid licence to use the “Khosara Khosara” notes. They maintained that they had paid $100,000 in 2001 to settle an out-of-court claim from a record company with rights to distribute the composer’s music outside Egypt and that paying other artists to sample their work was commonplace in the rap music industry.
The claim was in fact thrown out on the basis that the claimant lacked the necessary standing to pursue the claim so that the question of whether “Big Pimpin'” infringed “Khosara Khosara” did not need to be put before the jury. The nephew had argued that Jay Z and Timbaland needed to receive permission from the composer’s family. Whilst this might be the case under Egyptian law, it was not the case under US law nor was there any such international rule applicable to this case.
Jay Z is no stranger to copyright litigation, having successfully defended an action earlier this year brought by a sound engineer who was claiming to be the joint owner of the copyright in three albums produced by Jay Z’s record label (and co-defendant). As we have previously reported, that claim was rejected on the basis that the claim was brought out of time and a substantial costs award was made in Jay Z’s favour.