Tag: Court Decisions

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Down N’ Out – Down on their luck
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Court finds ‘flagrant’ copyright infringement of ‘Love is in the Air’
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After the CJEU’s decision now there is a final High Court judgment in the Sky v SkyKick case
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Kraft v Bega: Australian appeal court decision reaffirms the perils of relying on unregistered trade mark rights
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Is it a bird? Is it a plane? No, it’s an infringement of a reputable mark!
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Photographer Unsuccessful in Copyright Case Over Use of Embedded Instagram Photo
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Henley Arch obtains significant damages award in copyright claim against home owner
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PTAB designates additional decisions precedential relating to its discretion to deny petitions
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Beware the pitfalls of informal licensing agreements
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Cofemel’s first UK outing – The wooly world of copyright and designs

Down N’ Out – Down on their luck

In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193

Sydney burger chain Down N’ Out is looking to appeal Federal Court Justice Anna Katzmann’s ruling in a case brought by American fast food giant In-N-Out Burgers, Inc. (In-N-Out). In her decision handed down earlier this year, Justice Katzmann found that Down N’ Out infringed In-N-Out’s registered trade marks and engaged in misleading and deceptive conduct and passing off. At a hearing last week, her Honour made declarations regarding Down N’ Out’s infringing conduct and granted Down N’ Out leave to appeal the orders. The determination of compensation will take place after any appeal.

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Court finds ‘flagrant’ copyright infringement of ‘Love is in the Air’

In its recent judgment (Boomerang Investments Pty Ltd v Padgett (Liability) [2020] FCA 535), the Federal Court of Australia has found that an American electronic musical duo copied the celebrated Australian disco song ‘Love Is In The Air’. The decision confirms that the sound of lyrics as sung forms part of a musical work. Furthermore, a short sung lyric with attending music can be the ‘essential air’ of a song.

While determining only “modest” levels of copyright infringement occurred and dismissing most claims for damages, Justice Perram described the copying as “flagrant” and indicated there will be a further hearing to assess damages.

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After the CJEU’s decision now there is a final High Court judgment in the Sky v SkyKick case

After the CJEU’s ruling earlier this year (as discussed here), the Sky v Skykick case has now returned to the English High Court and Lord Justice Arnold on 29 April 2020 issued a final judgment in the case (see full text of the judgment here).

Although Sky’s trade marks were found to be partially invalid on the ground that they were applied for in bad faith, Sky was still ultimately successful in establishing infringement.

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Kraft v Bega: Australian appeal court decision reaffirms the perils of relying on unregistered trade mark rights

In the case Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65, the Full Court of the Federal Court of Australia has dismissed Kraft’s appeal of a decision entitling Bega to exclusive use of the iconic yellow lid and yellow label with a blue or red peanut device on its peanut butter jars.

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Is it a bird? Is it a plane? No, it’s an infringement of a reputable mark!

The EUIPO recently upheld an opposition by DC Comics to protect its reputable SUPERMAN mark from a similar sign, despite the applicant’s sign covering a different class of goods. The decision confirms that, for there to be a sufficient risk of injury under Article 8(5) EUTRM, the public must perceive a ‘link’ between the sign and the earlier mark. The mere fact the two marks cover different classes of goods and services is not inherently a barrier to such a link. Here the link arose largely from the earlier mark’s reputation, and commercial connections between the two classes in question.

Some will see the EUIPO as swooping to the rescue to protect the hard-earned reputations of brands; others will see this as an unreasonable expansion of rights beyond a mark’s designated classes, and a Kryptonite to legitimate activity.

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Photographer Unsuccessful in Copyright Case Over Use of Embedded Instagram Photo

User beware – you will be held to a social media platform’s terms of use. Most people are aware by using a social media platform that they give up some rights to the content that they share. What rights and to what extent depends on the platform and the specific terms of use.

A district court in the recent Sinclair case found no copyright infringement by the website Mashable, where it used one of photographer Sinclair’s Instagram photos in an article, even after an unsuccessful attempt to license the photo directly from Sinclair. Sinclair v. Ziff Davis, LLC, and Mashable, Inc., No. 1:18-CV-00790 (S.D.N.Y. April 13, 2020).

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Henley Arch obtains significant damages award in copyright claim against home owner

Late last year, Judge Baird of the Australian Federal Circuit Court handed down a decision in the case of Henley Arch v Del Monaco, a copyright infringement matter in respect of a project home design.

The claim was brought by well-known Australian builder Henley Arch, who readers might also recall from the 2016 decision in Henley Arch v Lucky Homes. The respondent in this case, Dorian Del Monaco, was an individual who owned a property in Pakenham (Melbourne), Victoria.

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PTAB designates additional decisions precedential relating to its discretion to deny petitions

On Tuesday, the Patent Trial and Appeal Board (PTAB) designated two decisions precedential and one as informative explaining the circumstances under which the Board will exercise its discretion under 35 U.S.C. § 325(d) and 35 U.S.C. § 314(a) to deny petitions.  The cases analyzed situations where the prior art and invalidity arguments advanced by Petitioner were similar/identical to those previously considered by the examiner and where the timing of a final decision may coincide with another body’s findings (e.g., a district court trial) regarding validity.  These cases provide guidance to Petitioners and Patent Owners alike about how to construct discretionary denial arguments, in particular regarding the appropriate way to address art that may or may not be cumulative to already-considered references. 

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Beware the pitfalls of informal licensing agreements

The Federal Court of Australia recently handed down its decision in the copyright case of Hardingham v RP Data. This decision serves as a warning about the risks of informal licensing arrangements. The case centres around copyright infringement regarding the use of photographs and floorplans without authority.

The applicants in the case were Real Estate Marketing (REMA) and its sole director, Mr Hardingham. REMA had been operating its business since 2009 and entered into informal agreements with real estate agencies to create and provide photos and floorplans of properties for marketing campaigns. It was understood by REMA that, as part of marketing campaigns, the agents would upload the commissioned photos to platforms such as realestate.com.au. However, the scope of the permitted uses by the agents was not clearly agreed or recorded in writing.

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Cofemel’s first UK outing – The wooly world of copyright and designs

In Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC), the Intellectual Property Enterprise Court (“IPEC”) has issued the first UK decision made since the Court of Justice of the European Union’s controversial decision in Cofemel (C-683/17).

Why does this matter?
The Cofemel decision indicated that there is a harmonised concept of what constitutes a ‘work’ under copyright law throughout the EU, which is not restricted by any defined categories and should not take into account any aesthetic considerations.

Accordingly, there has been much discussion about the UK’s closed list of copyright protectable subject matter under the Copyright, Designs and Patent Act 1988 (“1988 Act”) and the concepts of ‘artistic works’, ‘sculptures’ and ‘works of artistic craftsmanship’ under section 4 of the 1988 Act and whether these are incompatible with EU law. Previous prominent Court decisions such as the Lucasfilm decision in the Stormtrooper Helmet case have also been thrown into question.

This decision is the first time that a UK Court has had to deal with this apparent incompatibility.

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