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Intellectual Property Matters – October 2015

Intellectual Property Matters – October 2015

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Dismaland, Disney and trade mark parody

In August, the Dismaland “bemusement” park opened its doors in Weston-super-Mare. The brainchild of the street […]

In August, the Dismaland “bemusement” park opened its doors in Weston-super-Mare. The brainchild of the street artist Bansky, the venture, which had a run of just five weeks, parodied the famous Disneyland theme parks. The attractions were Disney take-offs – there was a “dismalised” version of Disney’s castle, for example, and the park features characters resembling Disney favourites but in compromising positions – but also similar is the logo, which employs the Disney font and can be seen here.

An application for registration of the mark as a Community trade mark has been filed with the Office for Harmonisation in the Internal Market. It is not clear whether Disney will oppose the application and whether, if it does so, such opposition would be successful.

Last year saw the introduction of a parody exception into UK copyright so that an act that would otherwise constitute copyright infringement would not be infringement where it is parody. (We have written before on the parody exception.) To benefit from the parody exception, however, there must be “fair dealing” and it is arguable that the very fact of the trade mark application militates against fair dealing.

With trade marks, the central question when determining whether one trade mark is infringing the rights of another is whether there is a likelihood of confusion on the part of consumers as to the origin of the goods or services. In other words, in this case, would the public believe that the experience being offered by Banksy was actually being provided by Disney. This seems unlikely. The tenor of Dismaland – with its focus on the dismal – is decidedly different from the uplifting, “feel good” experience that Disney claims to promote. There is also a disclaimer in the Dismaland small print: “The following are strictly prohibited in the park – spray paint, marker pens, knives and legal representatives of the Walt Disney Corporation”.

For its part, Disney could argue that Banksy is riding on the coattails of its trade marks and is gaining an unfair advantage from doing so. Banksy might justifiably argue that the primary rationale for Dismaland is artistic but the public are charged for ticket prices so there is at least some commercial aspect to it. Whilst the show only ran for five weeks a Community trade mark application may last a lot longer and Disney may be concerned that the registration of the DISMALAND mark may affect its own brand. On that basis, it is probably more likely than not that Disney will oppose the registration.

From the point of view of trade mark practitioners, it is to be hoped it does so as it would be fascinating to watch Dismaland v Disney unfold.

Kit Kat and the registrability of shapes as trade marks

Under the Trade Mark Directive [1], a shape that is capable of being represented graphically […]

Under the Trade Mark Directive [1], a shape that is capable of being represented graphically may qualify for trade mark protection if it is capable of distinguishing the proprietor’s goods or services from those of its competitors. However, where the shape is borne out of the nature of the product that it is, or takes on a form that is necessary to obtain a technical result, then an application for registration must be refused.

The Court of Justice of the European Union (CJEU) ruled in September [2] that the shape of a Kit Kat bar is unlikely to be protectable as a trade mark.

Nestlé had applied unsuccessfully for registration of the shape of the four-fingered Kit Kat bars in the UK. Nestlé appealed to the High Court and the case was eventually sent to the CJEU for a ruling. At issue was the grooves in the Kit Kat bar which enable the consumer to separate the individual wafer finger.

Nestlé succeeded to some extents on the arguments concerning whether the shape resulted from the product itself and whether the shape was necessary to achieve a technical result. The CJEU ruled that for the exclusion based on achievement of a technical result to apply, the exclusion had to relate to the whole product and not just elements of it. This is helpful to Nestlé, as the UK Intellectual Property Office (UK IPO) had determined that the Kit Kat bar comprised three essential features, namely the shape of moulded chocolate bars, the breaking of the bars and the portion size. The CJEU also ruled that the technical result referred to in the exclusion was limited to the way in which the goods functioned and not the manner in which they were manufactured.

However, the CJEU concluded that, for the purposes of the registration of the mark, the applicant must demonstrate that that mark alone, as opposed to any other trade mark which may also be present (such as a logo on the packaging) identifies the origin of the goods. This reflects the IPO ruling that the shape of the Kit Kat bars was not distinctive and failed to call to mind the Nestlé brand as there were similar shaped products on the UK market.

The case is now remitted back to the High Court although the expectation must be that, applying the CJEU ruling, Nestlé’s appeal against the UK IPO decision will be refused.

The CJEU ruling shows how difficult it is to win trade mark protection for a shape. Most goods are not solely identifiable from their shape, but rely on, for example, their packaging or other branding to make the product distinctive.

There is however, one notable exception in the chocolate bar context: Toblerone has successfully registered its triangular prism shape.

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[1] 2008/95/EC
[2] Case C-215/14

Can a monkey own copyright?

In what is perhaps the strangest case on which we have reported, an animal rights […]

In what is perhaps the strangest case on which we have reported, an animal rights group, People for the Ethical Treatment of Animals (PETA), has instituted proceedings in California asserting that a monkey owns copyright in a photograph.

The photograph has already achieved considerable fame. (It can easily be found online). A British wildlife photographer, David Slater, was on the island of Sulawesi, tracking a troop of macaques. He set up his equipment and waited. A monkey duly obliged – grinning into the lens and clicking, producing the now renowned “selfie”. The photographer published a book featuring the photograph.

PETA is claiming that the monkey owns the copyright in the photograph and, as such, should reap the financial benefits. Mr Slater contends that he set up the arrangement and, indeed, held the tripod in place, while the monkey pressed the button. As such, he maintains that he, and not the monkey, is the copyright owner.

For a court to rule that a monkey owned copyright would obviously be groundbreaking and, to say the least, startling. But it is not wholly inconceivable that it may happen, if not in this case, in the future. Women and children, for example, now enjoy legal rights that would have been unthinkable in the past. The rights of prisoners and the mentally ill are currently controversial topics for the courts in this country. If a court were to decide, as a first step, that a monkey had a right to property, it would not be a big leap to say that a monkey could own copyright. Additionally, if the monkey “selfie” shows one thing it is just how close monkeys and humans are biologically related to one another.

In the UK at least, the monkey would not have a case, falling at the first hurdle. To qualify for copyright protection under the Copyright Designs and Patents Act 1988, the author of a work must be either an individual or a company, which rather precludes monkeys.

The future of wearable technology

Elsewhere in this newsletter we have reviewed patent disputes concerning mobile phone technology in general […]

Elsewhere in this newsletter we have reviewed patent disputes concerning mobile phone technology in general and Apple in particular. With the mobile phone now so ubiquitous it is easy to forget the amused cynicism with which the early mobile phone technology was greeted a generation ago. In the last few weeks we have seen significant developments in respect of wearable technology which, although currently regarded with some scepticism, may well prove to be an IP battleground in the future.

The most celebrated examples of early wearable technology are probably the Apple iWatch and Google Glass. Following the iWatch, we now have the iRing, for which the patent has just been published. According to the patent, the iRing is an “external electronic device with a finger-ring-mounted touchscreen that includes a computer processor, wireless transceiver, and a rechargeable power source”.

The iRing can apparently perform functions like sending and receiving calls, accessing apps for email and text messaging and biometric sensors, to monitor fitness for example. The use of hand gesture tracking will allow the user to control devices across the range for Apple devices, from iPhones and iPads to Apple TVs. For those who doubt whether there is any benefit to this, Apple state, among other things that the “use of existing touchpads and touch-screen displays, […] may be cumbersome, inconvenient, or inefficient for certain tasks and applications. A user’s hands may be preoccupied with another task, for example, or the user’s hands and/or arms may become fatigued after holding the device in a viewing position for extended periods of time”.

Google’s experience with Google Glass suggests that consumers will take some convincing. Google Glass, it will be recalled, projected a computer image in front of the wearer. Consumers who tried the technology found it impressive but wondered what the point was. Now Google has just received approval for a patent for technology that makes it possible to see holograms on a wearable device to go on the head. This technology will superimpose computer-generated images on top of the wearer’s current real world view. This is “augmented reality” [1]. It is not yet clear, and may not be for some time, how Google intends to apply the new technology but it is clearly convinced that there will be a market for it.

Intellectual property law has been playing catch up across the world in recent years as rights in particular, copyright, have suddenly seemed ill-suited and inadequate to cope with new technologies. With the emergence of augmented reality, there will be more challenges for courts and legislators as they seek to apply established laws to new concepts.

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[1] Whereas “virtual reality” replaces the real world with a simultaneous one, “augmented reality” modifies (by augmenting – though it is also possible to diminish) reality through a computer. As such one’s perceptions of reality are enhanced. Essentially, there is an illusion of digital data having a physical substance and interacting with the real, three-dimensional world.

Good news and bad news for Apple

In the latest round of the patent litigation involving Apple and Samsung, the US Court […]

In the latest round of the patent litigation involving Apple and Samsung, the US Court of Appeals for the Federal Circuit has ruled that a lower district court should have granted an injunction prohibiting Samsung from selling devices that infringed Apple’s patents. The Federal Circuit decided by a 2:1 majority that Samsung would be able to sell its devices without the features in issue protected by Apple’s patents. These features included the autocorrect function, lock screens and data detection applications. In the words of majority, “This is not a case where the public would be deprived of Samsung’s products. Apple does not seek to enjoin the sale of lifesaving drugs, but to prevent Samsung from profiting from the unauthorised use of infringing features in its cell phones and tablets”. The majority considered that the balance of hardships and public interest militated strongly in favour of granting the injunction.

The background to the dispute is that Apple sued Samsung in 2012 for patent infringement and was awarded $119 million in damages. Apple then sought a permanent injunction in respect of the infringing products. In support of its application, Apple adduced survey evidence showing that US consumers would not have bought the infringing products if they did not have the patented features. That application was refused, although the majority of the Federal Circuit, on appeal, criticised that decision as flawed saying it was “predicated on incorrect understanding of the nature of the causal nexus requirement”. The Chief Judge disagreed with the majority, ruling that the District Court had made no legal error in refusing to grant the injunction, an opinion which Samsung has latched on to, stating that it intends to seek a review of the Federal Circuit’s decision.

Closer to home, Apple has been less successful. In Germany, Apple’s slide-to-unlock European patent has been declared invalid by the Federal Court of Justice (Germany’s highest court). In this case, the opposition to the grant of the patent was brought by Motorola. The Federal Court ruled that the subject matter of the patent was not patentable under Article 52(1) of the European Patent Convention because it did not involve an inventive step. Specifically, a Swedish company, Neonode, had beaten Apple to it, having invented a slide-to-unlock gesture system before the iPhone was launched. Similar decisions have been reached in other European jurisdictions including the UK, leaving the United States as the only jurisdiction where that particular patent is still valid.

Lindt’s chocolate bears: did a three-dimensional mark infringe a word mark

In December 2012, the Regional Court of Cologne ruled that Lindt’s chocolate bear infringed Haribo’s […]

In December 2012, the Regional Court of Cologne ruled that Lindt’s chocolate bear infringed Haribo’s GOLDBÄREN (in English “Gold Bear”) word marks. The Court accepted that Lindt did not use the word GOLDBÄREN but it held that the sight of Lindt’s three-dimensional chocolate bears would call to mind Haribo’s gold bears, resulting in a dilution of its mark. The Lindt mark is depicted here.

Lindt appealed to the Higher Regional Court of Cologne. The Appeal Court ruled that although a word mark, such as GOLDBÄREN, could be infringed by a three-dimensional shape, there was no such infringement in this case. There would only be an infringement where the sign was the obvious, unforced, self-contained and distinctive title and thus the most fitting description of the shape sign. In the Court’s opinion, that was not the case here as there were additional levels of abstraction that separated Lindt’s chocolate teddy shape from the GOLDBÄREN mark. The Court considered that the first instance court had attached too much importance to the colour and shape of the Lindt bear. In particular, it ruled that the overall impression conveyed by Lindt’s chocolate teddy was affected by the imprints of “Lindt”, “Lindt-Teddy” and the Lindt logo, a factor to which the first instance court had attributed insufficient weight.

Haribo in turn appealed to the German Federal Court. The Federal Court agreed with the Appeal Court and dismissed the appeal. It explained that a similarity between a word mark and a three dimensional shape can only result from a similarity in meaning; only the word mark and the allegedly infringing shape are to be compared. In other words, it was not a case of comparing the shape of the Haribo bear with the Lindt bear.

A similarity in meaning required that the word mark was the obvious and natural designation of the shape. In this case, there was no such similarity of meaning The Lindt bear was not obviously and naturally referred to as GOLDBÄREN (or, in English, Gold Bear). Words like (in English) “chocolate bear” or “chocolate teddy” were at least as obvious.

Haribo was also the proprietor of the mark GOLD-TEDDY but it had only filed this mark after it had known that Lindt was bringing its chocolate bear to the market and use of the mark against Lindt would be unfair.

Branding on clothing and the importance of acquired distinctiveness

The EU General Court has upheld an opposition by Lacoste to an application for registration […]

The EU General Court has upheld an opposition by Lacoste to an application for registration as a Community trade mark of the name “Kajman” (meaning caiman in Polish) inset into a crocodile-shaped figure for leather goods, clothing and footwear. [1]

Lacoste relied on its earlier Community trade mark and argued that there was a likelihood of confusion between the two marks. The two marks can be seen here. Each mark consists of the representation of a reptile of the order of crocodilians presented in profile with the tail curved.

The Court considered that the two signs had a low degree of visual similarity, given that both signs have in common a representation of a reptile of the order of crocodilians and that the general public keeps in mind only an imperfect picture of a mark. The Lacoste mark did not contain any verbal elements so there was no question of phonetic similarity. Overall, there was at least an average degree of similarity, given that the figurative elements of both signs referred to a reptile of the order of crocodilians.

There was no dispute that the Lacoste mark had acquired through use a highly distinctive character for leather goods, especially bags, clothing and footwear. As regards to those three types of goods, there was a likelihood of confusion between the two marks, given that the general public was likely to believe that the goods came from the same undertaking or economically linked undertakings.

The interesting aspect of this decision is that the Court reached its conclusion despite its acknowledgement that there was a low degree of visual similarity between the signs. In the clothing context, the visual element is usually particularly important when conducting the assessment of likelihood of confusion. The key factor in this case was the enhanced distinctive character of Lacoste’s crocodile logo. The case recalls to mind the UK High Court judgment in Jack Wills Ltd v House of Fraser (Stores) Ltd [2], which we reviewed previously, where the issue was whether House of Fraser’s use of a pigeon logo on clothing infringed Jack Wills’ registered trade mark, also used on clothing, and which featured a silhouette of a pheasant with a top hat and cane.

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[1] Case T-364/12 Eugenia Mocek, Jadwiga Wenta KAJMAN Firma Handlowo-Uslugowo-Produkcyjna v OHIM
[2] [2014] EWHC 110 (Ch)

Happy Birthday to You: the final verse?

We have charted the progress of the dispute concerning the copyright in the song “Happy […]

We have charted the progress of the dispute concerning the copyright in the song “Happy Birthday to You” over the past few months (see here and here).

The US District Court for the Central District of California ruled in September that Warner/Chappell did not own copyright in the song. The judge ruled that the two sisters who composed the song in the nineteenth century and who later purported to transfer copyright in it – with Warner/Chappell claiming title as successor to that transferee – did not in fact transfer the rights in the song’s lyrics, only the rights to the melody and the rights to the piano arrangement.

The ruling will be a blow to Warner/Chappell, who reportedly have been making around $2 million a year in royalties, from whenever the song is performed in public, including on television or radio. Warner Chappell have said they are considering their options. In the meantime, we may start to see “Happy Birthday to You” sung on UK TV soap operas, rather than an unconvincing substitute. Or, as the successful attorney in the lawsuit put it: “Happy Birthday is finally free after 80 years”.

Contacts

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

Alan Harper
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