Category: Entertainment & Arts

1
Netflix and Italian SIAE Reach Agreement for Protection of Music Catalogue on Online Platform
2
To Perform a Technical Function or Not: This is Rubik’s Question.
3
Fashion Law Newsletter – Spring/Summer 2016 Edition
4
Jelly-sy – A Warning to e-Commerce Retailers About the Risks of Infringing Copyright
5
Trademark Law Update: SCOTUS to Decide Whether Ban on Registering “Disparaging Marks” Is Unconstitutional
6
Design Confusion Post-Trunki?
7
When a picture can be considered deceptively similar to a word
8
In Role-Playing Card Games, Where is the Line Between Protectable Expression and Unprotectable Rules of the Game?
9
European Court Considers Whether Hyperlinking to Unauthorised Content on Third-party Websites Infringes Copyright
10
Is Purchase of a Google AdWord use of a Trade Mark? Case Examined by Australian Federal Court

Netflix and Italian SIAE Reach Agreement for Protection of Music Catalogue on Online Platform

In November 2016 the Italian collecting society SIAE announced that it closed a license agreement for the use of the musical and audiovisual compositions with Netflix, one of the main international operators for online video-on-demand services. The aim of the agreement is to grant  equitable remuneration to authors of audiovisual works as well as remuneration to authors and publishers of soundtracks included in audiovisual works distributed by Netflix to its Italian subscribers.

The president of SIAE commented that the execution of this agreement represents an important achievement for the recognition of creative works in the sector of digital distribution. The economic value generated by the works protected by SIAE and their distribution by Netflix is a concrete contribution to the Italian audiovisual market, providing an important opportunity for product innovation.  The agreement also should encourage professional creative activity by younger talent.

By: Alessandra Feller and Alessia Castelli

To Perform a Technical Function or Not: This is Rubik’s Question.

After the CJEU decision in case C-30/15 P, fans of three-dimensional trade marks will be wondering if the opportunity to register them is as straightforward as it appears from the recent reform of the Regulation No. 207/2009.

For 10 years, Simba Toys and Seven Towns have been involved in the Rubik’s cube saga, which began in 1999, when the three-dimensional sign reproducing the popular Hungarian toy was registered as a Community trade mark.

The application for a declaration of invalidity filed in 2006 by Simba Toys was based mainly on the infringement of Article 7(1)(e)(ii) of Regulation No 40/94, which prevents a trade mark consisting exclusively of the shape of goods which is necessary to obtain a technical result to be registered.

The EUIPO Cancellation Division as well as the Board of Appeal and the General Court rejected the arguments of the German firm on the grounds that the essential characteristics of the sign at issue are a cube and a grid structure on each surface of the cube and that they do not perform any technical function.

Hence, the appellant’s argument was rejected because the rotating capability of the lattices did not result from the shape presented, but from the invisible internal mechanism which was not part of the graphical representation filed in the trade mark application.

As often happens, the above decisions have been overturned by the CJEU. In particular, the approach of the lower courts was found to be too narrow as they did not take into account the additional elements relating to the function of the actual goods in question.

Lastly, the court held that not taking into account the rotating capability of the cube would extend the trade mark protection to any other kind of puzzle with a similar shape. On the other hand, the technical function behind the cube falls within the scope of Article 7(1)(e)(ii), which precludes the granting of a permanent monopoly on technical solutions. Therefore, in this case it would be more appropriate to consider a patent protection as it has a limited life unlike trademarks.

In conclusion, while the Rubik brand will continue to ensure its exclusivity through other trademarks, copyright, passing off and unfair competition protection, this case made it clear that an effective access to the registration of unconventional trade marks remains as uncertain as the interpretation of Article 7(1)(e)(ii).

By: Serena Totino and Michał Ziółkowski

Fashion Law Newsletter – Spring/Summer 2016 Edition

Fashion has always been a repetition of ideas, but what makes it new is the way you put it together.” – Carolina Herrera

Welcome to the latest edition of Fashion Law, this edition touches on issues that demonstrate the impact of world events and technological changes on all businesses.

Fashion Law gives you the latest updates on legal issues affecting the fashion industry.

Please click here to read the Spring/Summer 2016 edition of Fashion Law.

Contact: Lisa Egan

Jelly-sy – A Warning to e-Commerce Retailers About the Risks of Infringing Copyright

It seems only fitting that with “Schoolies Week”[1] around the corner, the Federal Circuit Court has delivered judgment in the matter of Weller & Anor v Smith [2016] FCCA 2827 which relates to intellectual property rights and commercial reputations in the jelly wrestling products industry.

The matter relates to a dispute between the partnership of John Weller and Jake Weller trading as “Crazy Town Parties” and Ian Smith.

The Wellers trade in the party supply and party hire industry. One aspect of their business is the sale of a range of products, including a substance sold in crystalline form, that are used for jelly wrestling. The Wellers utilise a number of photos for marketing purpose in both digital and hardcopy formats including on the packaging of their jelly wrestling products.

Read More

Trademark Law Update: SCOTUS to Decide Whether Ban on Registering “Disparaging Marks” Is Unconstitutional

Under section 2(a) of the Lanham Act, the Patent and Trademark Office (USPTO) may refuse to register any trademark that “[c]onsists of . . . matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” This spring, the U.S. Supreme Court will decide in Lee v. Tam whether this provision of the Lanham Act is facially invalid under the First Amendment. Here’s what you need to know about this important case.

Please click here to view the full alert.

By: Joanna Diakos and Thomas W. Dollar

Design Confusion Post-Trunki?

The UK Intellectual Property Office Publishes Helpful Guidance on the Use of Representations When Filing Registered Design Applications.

Following the recent Supreme Court judgement in PMS International Limited v Magmatic Limited [2016] UKSC 12, otherwise known as the ‘Trunki case’, the UK Intellectual Property Office has published helpful guidance on the use of representations when filing Registered Design applications. The guidance is directly relevant to design applications filed in the UK but will also be useful for Community design applications filed at the EUIPO.

Read More

When a picture can be considered deceptively similar to a word

The Trade Marks Office has taken a sword to the hopes of applicants wanting to register device trade marks which are perceived to match existing registered word marks in its decision on the SAMURAI WARRIOR (device) submitted for registration by Teraglow Pty Ltd.

IP Australia repeatedly rejected the SAMURAI WARRIOR mark at examination stage under s 44(1) of the Trade Marks Act 1995 (Cth), citing prior registered word mark SAMURAI, owned by Globeride Inc.

Read More

In Role-Playing Card Games, Where is the Line Between Protectable Expression and Unprotectable Rules of the Game?

By Mark Wittow and Eliza Hall

The United States District Court for the Southern District of Texas recently examined the scope of copyright protection for role-playing card games, parsing the use of parallel themes and characters.  The court ultimately granted summary judgment in favor of a distributor accused of infringing a role-playing card game by creating a substantially similar game, but in a parallel (different) setting. This case provides guidance to companies that create games in traditional or digital media, clarifying where the line should be drawn between the protectable expressive aspects of a game and unprotectable rules or underlying ideas and concepts. The court’s decision also provides a helpful illustration of the differing standards applied to motions to dismiss and motions for summary judgment.

Read More

European Court Considers Whether Hyperlinking to Unauthorised Content on Third-party Websites Infringes Copyright

By Alessandra Feller and Alessia Castelli

Following the provision of a recent Advocate General opinion, the Court of Justice of the European Union (CJEU) is expected to give further guidance on hyperlinking soon.

A dispute arose in the Netherlands between Sanoma Media Netherlands BV (and others) and GS Media in relation to the posting of website hyperlinks to third party sites which contained photographs the communication of which was not authorised by Sanoma and the other right holders.

Specifically, the Dutch Supreme Court has referred certain questions to the CJEU, asking whether

  1. hyperlinks to a freely accessible third party website which displays material without the consent of the copyright owner should be considered a “communication to the public” within the meaning of Art 3(1) of the Directive no. 2001/29 (“InfoSoc Directive”).
  2. In such circumstances, whether the following factors are relevant:
    • the awareness of the hyperlinker of the failure of authorisation from the copyright owner, and/or
    • the facilitation role played by the hyperlink on the accessibility of the material.Such conclusions were based on the grounds that the photographs were “freely accessible” to the general internet public on third party websites.

The CJEU decision on this case is much awaited, and it will be complementing the argument introduced by the Svensson case on hyperlinking. The decision in Svensson left some ambiguity as to whether it made a difference that works had been published on a site linked to without the copyright owner’s consent.

On April 7, 2016, Advocate General Wathelet  released an opinion that hyperlinking to unauthorised content does not constitute an act of communication to the public under Article 3(1) of the InfoSoc Directive, because the intervention of the hyper linker is not essential to the making available of the copyright works to users. He also held that it is irrelevant whether the hyperlinker is aware that the linked content is unauthorised. In the AG’s view, the only criterion that mattered is whether the linked website is freely accessible or whether the hyperlink is used to circumvent a restriction put in place in order to limit access to a protected work. Only in the latter case would a hyperlink constitute a communication to the public.

Is Purchase of a Google AdWord use of a Trade Mark? Case Examined by Australian Federal Court

By Lisa Egan and Allison Wallace

The Federal Court of Australia has examined the issue of trade mark infringement by advertisers using competitors’ trade marks as Google AdWords. Advertisers need to ensure they do not use competitors’ marks as a ‘badge of origin’ to avoid trade mark infringement.

Veda Advantage Limited v Malouf Group Enterprises Pty Limited concerned Veda, a financial services company and Malouf, a credit repair business. A “VedaScore” is a number that summarises the information in a person’s credit file and is expressed as a number between 0 and 1200. In simple terms, the higher a person’s VedaScore, the better that person’s credit profile and the more likely that person will receive credit.

Malouf purchased a series of keywords that contained the word “veda”, so when a consumer typed “veda” into Google’s search engine, their search results would include sponsored ad links for Malouf’s services.

Read More

Copyright © 2019, K&L Gates LLP. All Rights Reserved.