Tag: Entertainment & Arts

1
Don’t mess with Ferrari: the Prancing Horse legal drama
2
UK Advertising Regulator makes first ever ruling on disclosures required for commercial marketing via a TikTok video
3
Air France restrained from using song that infringes “Love Is In The Air”
4
What an awful racket… Acoustic product trade mark case provides opportunity for brands being piggy-backed to drive search traffic
5
Deep fakes, inventorship and ethics – WIPO revised issues paper on Artificial Intelligence
6
Reputation and likelihood of confusion – it’s all a bit of a Messi…
7
Court finds ‘flagrant’ copyright infringement of ‘Love is in the Air’
8
Is it a bird? Is it a plane? No, it’s an infringement of a reputable mark!
9
Cofemel’s first UK outing – The wooly world of copyright and designs
10
Does AI generated work give rise to a copyright claim?

Don’t mess with Ferrari: the Prancing Horse legal drama

Use of Ferrari’s trade mark in a fashion show or on social media requires consent. This is the lesson we assume Philipp Plein has recently learnt following a couple of legal defeats before the Italian Courts that ruled in favour of Ferrari.

In a ruling issued by the Court of Genova last June, the Court ruled in favour of Ferrari for the illegitimate use of Ferrari’s trade marks on Plein’s Instagram account. The designer on that occasion posted several pictures as well as Instagram stories showing some of his clothing line with Ferrari’s trade marks in the background. Ferrari successfully argued that in those shots Philipp Plein was unlawfully appropriating the positive image and reputation of the well-known car company by using its trade marks for promotional purposes.

In another recent case, the Court of Milan ordered Plein to remove from its website, social media, and other online platforms all the videos and images showing Ferrari cars and trade marks. The Court also ordered the payment, in favour of Ferrari, of €300,000 in damages plus legal fees as well as the publication of the decision in two national newspapers. Furthermore, in the event in which that Philipp Plein would not promptly remove the contested images and videos representing Ferrari cars and trade marks, it will have to pay a penalty of €10,000 for each day of delay in the removal of the infringing images and videos. To view the decision, click here.

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UK Advertising Regulator makes first ever ruling on disclosures required for commercial marketing via a TikTok video

A TikTok post on an Emily Canham’s account, a beauty blogger and YouTube star, is the first TikTok video found to be in breach of the Advertising Standards Authority’s (ASA) requirement for disclosure in the UK (see here).

The post, which featured a video of Emily Canham using a branded hairdryer and straighteners, included a caption alongside the video stated:

hiii just a lil psa there’s 20% off the [Brand] website TODAY ONLY with the code EMILY … #fyp #foryourpage“.

The brand in question had entered into an agreement with Ms Canham, which required Ms Canham to post a number of social media posts while at a music festival. The music festival was cancelled as a result of COVID-19. However, the contract was varied and still required several social media posts featuring a certain promotional code.

It was submitted to the ASA that the TikTok was created without the oversight or approval of the brand, and did not form part of Ms Canham’s contract. Additionally, both Ms Canham and the brand pointed to the fact that she had not been compensated for the promotional code featured in the TikTok video.

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Air France restrained from using song that infringes “Love Is In The Air”

In April, we wrote about the judgement Boomerang Investments Pty Ltd v Padgett (Liability) [2020] FCA 535 (Decision), in which Glass Candy and Air France were found to have infringed the copyright in the well-known 1970s hit song “Love is in the Air” (Love).

Now, in the recent judgement Boomerang Investments Pty Ltd v Padgett (Scope of Injunction) [2020] FCA 1413, the Federal Court of Australia has finalised the injunctive orders necessary to give effect to the Court’s earlier conclusions on the issue of liability in the Decision, amongst other matters.

Injunctive Relief
Principally, Justice Perram addressed the appropriate injunctive relief against Air France in relation to its use of the adaptation of the infringing song “Warm in Winter” (Warm) called “France is in the Air” (France).

Air France contented that the injunction should only go as far as preventing the act of infringement which it was found to have committed, being the use of France as hold music for callers to its Australian toll-free number. However, Justice Perram agreed with the applicants that a wider injunction to restrain Air France from communicating France to the public without the licence of the copyright owner was appropriate.

This would encompass:

  • allowing France to be played on Air France’s YouTube channel (or other such channels) if the licensing arrangement with APRA was altered in the future such that ‘infringing uses’ of Love were no longer covered by the APRA licence
  • further efforts by Air France to use France on services which do not hold an APRA licence, and
  • the authorisation by Glass Candy of any such conduct.

Justice Perram ruled that a wide injunction was appropriate, as there was risk of Air France repeating the infringing behavior which, absent the licence of the copyright owner, ought to be restrained. This was especially so due to the fact that Air France had declined to undertake not to continue using France, leaving open the possibility for Air France entering into a fresh licence agreement for the use of France with Glass Candy and recommencing its ad campaign.

It was decided that the injunction would refer to the ‘copyright owner’ rather than a specific party, to account for any future ownership changes.

Declaration of flagrancy
Justice Perram held that it would be inappropriate to make a declaration regarding the flagrancy of Air France and Glass Candy’s conduct, since:

  • the various factors for assessing additional damages set out in s 115(4)(b) of the Copyright Act 1968 (Cth), which includes the flagrancy of the infringement, were neither necessary nor sufficient conditions for the award of additional damages. Rather, these factors, like any finding of flagrancy, are intermediate steps along the way to another legal conclusion, and
  • the claim for damages against Air France failed as the owner of the communication right comprised in the right to digitally stream Love was incorrectly identified by the applicants (as detailed in the Decision).

Assessment of additional damages
Glass Candy submitted that the Court should not proceed to any assessment of additional damages since the conduct found to be flagrant in the Decision related to the creation of Warm and not the infringements that the Court found Glass Candy committed (which mainly related to the exercise of the communication right in Love). Justice Perram acknowledged that there might be some force in these submissions, but that the additional damages case should proceed.

Key takeaways
While the Court found a broad injunction to prevent the widespread communication of a musical work was appropriate in this case, a declaration of flagrancy was not.

Further developments will be reported once damages are assessed.

By Chris Round, Bianca D’Angelo and Talia Le Couteur Scott

What an awful racket… Acoustic product trade mark case provides opportunity for brands being piggy-backed to drive search traffic

An interesting recent decision by the Intellectual Property Enterprise Court (IPEC) on an unusual set of facts may provide an opportunity for brand owners to prevent unauthorised third parties from piggy-backing off a trade mark to drive traffic to their competing sites or product offerings. Uniquely, this has been found in circumstances which do not amount to traditional “bait and switch” or passing off and where consumers are not confused about the origin of the goods.

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Deep fakes, inventorship and ethics – WIPO revised issues paper on Artificial Intelligence

One thing is clear about artificial intelligence (AI) and intellectual property (IP) at the moment: there are more questions than answers. Who should be author? Who is responsible for a work’s liability? What about moral rights? Is a computer programme capable of making an ‘inventive step’ or forming an ‘intellectual creation’ normally reserved for humans? And for those Matrix fans – should we let machines make decisions for us, lest we become seen as the planet’s true virus?

In September 2019, the World Intellectual Property Organisation (WIPO) launched a much-needed conversation on IP and AI, and consulted with member state representatives on the potential impact of AI on IP. Over the course of the consultation, WIPO received more than 250 responses from a wide range of global stakeholders.

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Reputation and likelihood of confusion – it’s all a bit of a Messi…

CJEU determines no likelihood of confusion between footballer’s “Messi” figurative mark and earlier MASSI mark.

Whilst debate will continue to rage as to whether Messi or Ronaldo is the world’s best male football player, the Court of Justice of the European Union (the “CJEU”) has ruled that Argentine superstar can register his name as a trade mark after an almost decade long legal battle.

In an interesting decision for trade mark fanatics, irrespective of their interest in football, the CJEU stated that Lionel Messi’s reputation could be taken into account, without any evidence of said reputation being provided, when weighing up whether the public would be able to determine the uniqueness of Messi’s mark.

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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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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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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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Does AI generated work give rise to a copyright claim?

The right to intellectual property protection in “Artificial Intelligence” generated work gives rise to numerous legal, economic and moral issues. “Artificial Intelligence” (AI) is a comprehensive term used to describe the ability of computer systems to perform tasks normally requiring human intelligence, ranging from translation processes and visual perception to brain simulation.

In this post, we give a brief introduction to the legal issues surrounding claims to copyright in AI generated work in the context of UK law and specifically, who can claim ownership of the work produced.

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