The IP Specialist Group of our international contact network Consulegis is very active in exchanging legal news from across the world, allowing all partner firms to remain on top of all relevant evolutions in IP-law.
As of January 2015, this will allow us at Sirius Legal to periodically share on our firm’s website relevant legal news in IP related topics from different jurisdictions.
We will provide a regular update with contributions from our partner firms UP12 in Germany, Marxman in The Netherlands, Collen IP in New York, Wynnne-Jones and Capital Law in the UK, Rothstein in Australia on all Ip related topics.
Below you will find a series of interesting articles in copyright, trademarks, patent law, media law, consumer protection, internet law, data protection, …
If you have any questions relating to these articles, please feel free to contact our partners directly with our compliments or to contact us at Sirius Legal.
Current Discussion about Possible Protection Rights (e.g. Ancillary Copyrights) for Organizers of Sport Events
Due to indications of the European Court of Justice combined with surveys and legal opinions initiated several (legal) questions have been raised (again) and (new) approaches are offered. One point of discussion is, whether such a specific protection right in favour of the organizer can improve the existing protection against media and commercial exploitation of sport events (e.g. through betting shops, ambush marketing etc.). On the other hand the questions is raised, whether such right would wise and reasonable for the economy.
Even a Rather Sharp and Excessive Criticism of Professional Performance by a Market Participant Must Not Necessarily Be Considered as Insult.
In its verdict as of December 2014, the German Civil Supreme Court (“Bundesgerichtshof” – BGH) decided against the previous levels of jurisdictions, as long as comments combining facts and opinions are mainly based on point of views, they are in general protected by the German basic right of freedom of expression; even if criticism on professional performances is expressed in a sharp and excessive way. Only under very narrow circumstances such criticism can be interpreted as unlawful vituperations.
The Wording “for you” in Context with Goods from the Health and Food Sector Does Not Contain a Product Description.
After the previous levels of jurisdictions came up with different decisions the German Civil Supreme Court (“Bundesgerichtshof” – BGH) ruled in 2014 against the party, which requested the deletion of a trademark including the slogan “for you” for goods of food and health. The Supreme Court did not see a product describing declaration through this trademark.
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The detaining of a person for failure to comply with a judicial order
After a Dutch District Court ordered a person (with the imposition of a penalty) to stop publishing defamatory statements on his weblog, the person incurred the maximum amount of penalties (20,000,- EUR) and had no assets from which the debt could be covered. However, the publication of defamatory statements went on.
Therefore, the Court of Appeal detained the person for failure to comply with a judicial order, in a ruling dated 24 March 2015.
Design of a disposable beer tray is not new
In the plaintiff’s opinion the defendant infringed his (alleged) rights of a ‘one metre beer tray’-design. A Dutch District Court ruled in a recently published judgment that the design of this beer tray was made available to the public before the date of filing of the application by other business organizations, and therefore the design was not new. The end result of the plaintiff was that he was left with nothing but a void design.
Dutch Supreme Court on the likelihood of confusion in trademark law
The Dutch Supreme Court set out instructions for judges deciding questions of facts regarding the analysis of the likelihood of confusion (an important criterion in trademark law). In a judgement dated 20 February 2015, the Dutch Supreme Court ruled that even when a trademark and an other sign have some, even slight, similarity the judge has to make an analysis of the likelihood of confusion.
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ECJ determines who is liable to pay under an artists’ Right to Follow his works
The ECJ recently determined who is liable to pay an artist under this peculiar IP right, and cleared up some confusion about the possibility of transferring this liability under contract. In the recent case of Christie’s France SNC v Syndicat National des Antiquaires (2015), the CJEU ruled that the EU Resale Right Directive 2001 should not be interpreted so as to preclude the parties to a sale from contractually agreeing that the burden of paying the resale royalty shall be borne by somebody other than the person who is required to pay it under national law. In reaching this conclusion, the CJEU noted that the Directive did allow for differences in national laws, and that Member States should have as much scope as possible to determine such matters provided that this not affect the functioning of the internal market. However, the CJEU noted that the parties to such a sale could not contract out of the liability to pay the royalty, they could only transfer it. This decision confirms that Member States must ensure the royalty is paid, fulfilling the purpose of the Directive, however it also allows some discretion as to who actually has to pay the royalty.
Red Bully? Another allegation of trademark infringement from the energy drink giant
Red Bull has opposed a trade mark application by a local Northern Virginia brewery, the Old Ox Brewery. The bullish Austrian energy drink giant filed its opposition at the United States Patent and Trademark Office, claiming that Old Ox’s proposed trade mark for the name ‘Old Ox Brewery’ was too similar to Red Bull’s existing trade marks. Even though Old Ox do not make energy drinks and Red Bull do not make beer, Red Bull are concerned that if the brewery were to develop and sell a soft drink then they could be taking advantage of Red Bull’s reputation and infringing on their registered trademark. Indeed this is something which Old Ox has not ruled out as they have suggested that they are looking to offer root beer to their customers. Although Red Bull’s case looks strong on the facts, they are again facing the problem of adverse publicity due to an open letter which was published by the small brewery. This dispute raises some interesting points about brand protection and illustrates the challenge facing brands when considering how to act in the face of an infringement claim.
Dispute over rights in 3D printed model of Katy Perrys Left Shark
After a video clip of the singer’s hapless backup dancer went viral, an interesting IP dispute has arisen around unauthorised 3D-printed models of the dancer’s shark costume. Singer Katy Perry performed during the half-time show at the most recent Superbowl and was left slightly red-faced when one of her backup dancers – dressed as a shark – appeared to lose track of his dance moves. A clip of “Left Shark” and his high-profile blunder quickly went viral on social media sites, and appears to have spawned an interesting marketing strategy for certain entrepreneurial individuals. One such individual was Fernando Sosa, who created of a 3D printable design of Left Shark. Mr Sosa was offering his design for $24.99 (£16) through 3D printing site Shapeways.com, but when Ms Perry’s legal team became aware of this they quickly sent him a cease-and-desist letter. Whether this case will go as far as the US courts remains to be seen, but if this dispute had arisen under UK law then under copyright there would be automatic protection in the original character design drawings. If the character had been registered as a trade mark or a design then these could also afford protection under UK law, and if Ms Perry could demonstrate goodwill in the character then she may have been able to bring an action for passing-off (however on the facts this seems doubtful).
Dallas Buyers Club LLC v iiNet Limited  FCA 317
On 7 April 2015, the Federal Court of Australia ordered several Australian internet service providers (ISPs) to hand over to a film studio the identities of thousands of account holders whose internet connections were allegedly used to share without authorisation the Dallas Buyers Club movie. The case centred on whether Dallas Buyers Club LLC should be given access to details of internet account holders whose connections it alleges were used to share its movie using peer-to-peer file sharing software such as BitTorrent. In a landmark judgment the Court ruled in favour of Dallas Buyers Club LLC’s preliminary discovery application requesting that the ISPs disclose the identities of people it alleges shared the movie online. In addition the ISPs will also be required to hand over customer details.. The ruling means about 4700 Australian internet account holders whose service was used to share Dallas Buyers Club on the internet from as early as May 2013 are soon likely to receive legal letters from Dallas Buyers Club LLC’s Australian lawyers threatening legal action. This occurred in the US, where legal action was threatened against account holders claiming they were liable for damages of up to $US150,000 in court unless settlement fees of up to $US7000 were paid. This practice is commonly referred to as “speculative invoicing”. But in a win for the Australian ISPs, Perram J ordered that any letters sent to alleged illicit downloaders must first be seen by the Court. Perram J said this would “prevent speculative invoicing”, which under Australian law may constitute misleading and deceptive conduct as well as unconscionable conduct The judge also ordered that the privacy of individuals should be protected, meaning Dallas Buyers Club cannot disclose the identities of alleged pirates. Perram J also said he would soon order that Dallas Buyers Club pay the ISPs’ costs for participating in the proceedings including the ISPs’ costs of searching for documents that identify alleged pirates. The details to be handed over include names and email and residential addresses of those whose connections were allegedly used to share the film. Now that the Court has ordered the ISPs to hand over the details, it opens the floodgates for other rights holders to do the same thing – track who is sharing their content on the internet and then get courts to order the handing over of the identities of suspected pirates.
Copyright in Commercial Broadcasting: Phonographic Performance Company of Australia Ltd v Commercial Radio Australia Ltd  FCAFC 11
Broadcasters of radio programs should not assume that their license to “broadcast” copyright material covers all communication platforms available. In this case a radio station was simulcasting a radio program on the radio as well as online. This was found to be a copyright infringement as their license only covered the radio program. Commercial radio broadcasters cannot rely on their existing “broadcasting” license to stream sound recordings globally over the internet as this involves a separate means of communication. As such, broadcasters now require separate licenses to stream certain sound recordings online.
WIPO releases Statistics on 2014 IP Filings
There has been an uptick in IP filings worldwide, according to World Intellectual Property Organization (WIPO) statistics released in March 2015, with China leading the way. Inventive activity is increasing, with standard patent applications now at 2.6 million annually, up 9.6 per cent. Businesses continue to boost protection for their brands, with 7 million trade mark applications filed annually, up 6.4 per cent. Close to 1 million utility models (second-tier patent) applications were filed in the most recent year for which we have statistics, up 18.2 per cent. China accounted for 90 per cent of these filings.
Limited recovery of legal fees in IP litigation under Belgian law contested before ECJ
The Antwerp Court of appeal referred a preliminary question to the ECJ in order to know if the Belgian system of limited recovery of legal fees for the winning party in a trial is compatible with EU Directive 2004/48/EG on IP litigation, which allows for “reasonable and proportional reimbursement” of legal cost. The decision of the ECJ, that is expected by the end of 2016, can potentially completely change the way in which legal fees are paid in Belgian (and European) IP litigation. Read more on our firm’s blog. https://siriuslegaladvocaten.be/ecj-decide-full-recovery-litigation-fees-ip-cases/
The fine line between inspiration and plagiary in contemporary art
Following a 15 January decision of the Antwerp civil court, Belgian painter Luc Tuymans violated the copyright of photographer Katrijn Van Giel, by using one of her photos as a basis for a portrait painting. The case brought up an interesting discussion on the limits to copyright in a digital world, the freedom to copy and the limits of the parody exception under Belgian copyright laws. Read more on our firm’s blog (in Dutch). https://siriuslegaladvocaten.be/pleegt-een-schilder-auteursrecht-inbreuk-door-zijn-schilderij-te-baseren-op-een-bestaande-foto-een-juridische-analyse-van-het-vonnis-van-giel-t-tuymans/
No unequal treatment of cable distributors compared to sellers of dvd-recorders and hard disks
On 12 February, the Belgian Constitutional Court denied the unequal treatment claim made by Belgian cable distributor Telenet (part of Liberty global).
Telenet considered that the Flemish Media Decree is creating an unequal treatment of cable distributors compared to sellers of digital recording devices, because under the Media Decree cable distributors have to obtain broadcaster’s permission (against payment) to “alter the signal of the distributors” (this is to say to allow for fast forwarding of commercial messages by offering recording or delayed watching, whereas sellers of recording devices offer the same technical possibilities (skipping advertisements) but do not need to negotiate with the broadcaster.
The Constitutional Court ruled, as was to be expected, that in order for there to be unequal treatment, the two parties concerned have to be in a comparable legal and factual situation and such is not the case for tv-distributors ans sellers of recording devices, because tv-distributors take up “an important and specific role in tv-distribution”, that allows for a different, more stringent treatment.
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Bart Van den Brande & Bart Van Besien
Mail: firstname.lastname@example.org& email@example.com