The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Tuesday, 20 March 2018

The 5 Pointz case: a response (on the risk of cultural gatekeeping in copyright)

The piece of (street) artwork at stake
in the '5 Pointz' case
The recent decision in the 5 Pointz case [here] has brought back to centre stage one of the quirks of US copyright law: the right to object to any intentional or grossly negligent destruction of works of ‘recognized stature’ (US Code, Title 17, §106). As explained by Katfriend Mira Sundara Rajan in a recent commentary of the case [here], this right was introduced by the 1990 Visual Artists Rights Act (VARA) under the umbrella doctrine of moral rights (although this right goes beyond what the moral right doctrine traditionally entails).

From one vantage, the decision is to be welcome, inasmuch as  it protects a notable piece of street art [per the court  and mainstream media, here and here], thereby  enabling the preservation  of more contemporary forms of our cultural heritage. However, this Kat has some reservations regarding the ability of the IP law framework to embrace such a role. In particular, who determines what is ‘recognized stature’ and under criteria is it determined? The answer: mainly as the court decides (read: judges), for the simple reason that Congress offered little in the way of definition or guidance on this point [see Cheffins at 600]. This places US judges in the difficult position of acting as cultural gatekeepers, given that they have the final say as to what is worthy  of such protection.
Judges themselves have noted  the challenge in being asked to rule on the protection of works of recognized stature [see Martin v City of Indiana (1999) ; Cheffins v Stewart (2016)]. This is especially so in that  they are called upon to render judgment on an issue in which they are not expected to have any  necessary expertise, namely, when is a work of "recognized stature”.
Some may argue that a concern about judges serving as cultural gatekeepers is allayed by the fact that the context is unique to US law and it is an unusual form of moral right. Moreover, since few decisions are actually rendered under this provision, this risk of cultural gatekeeping is well-contained. However,  in this Kat’s view, this it is not the only occasion in which judges are in the position of playing the part of cultural gatekeepers. After all, copyright law applies selectively to prescribed categories, and only these categories, of original creative works in a fixed form – conditions which are themselves culturally-bounded [here and here].
Furthermore, once copyright subsists in a work, it provides a platform to control its dissemination, thereby fundamentally impacting on the nature of our cultural landscape. Right holders, artists and their heirs can even pursue claims bordering on strategies of ‘heritage preservation’ or ‘heritage safeguarding’, either through the moral right doctrine of integrity, or the economic right to control some most derivative works, and of course, the US right to object to the destruction of works of recognized stature. Cultural gatekeeping thus can be seen as underpinning almost every aspect of copyright long before the right to object to the destruction of works of ‘recognized stature’ was introduced in the US.
Thus, the larger question is how to make sure no (or limited) cultural gatekeeping takes place there? First, we do so by reiterating  that copyright law does not deal with cultural quality or aesthetic considerations, something both commentators and  judges in various jurisdictions (including in the US) have often emphasised [see Gracen at 304; Schott Musik (1997) 145 ALR 483, 486, Hensher v Restawile (1974) 2 All ER 420, 423]. In many ways, eschewing any consideration of cultural or aesthetic quality is one of the main safeguards within copyright law to prevent cultural gatekeeping. Indeed, judges have been vigilant not to behave as art critics [see Bleinstein at 251]. When they have, they have been corrected thanks to the appeal mechanism, i.e. corrective mechanisms built into our legal systems.

A notable example was  the Victor Hugo decision (2003) in which the Court of Appeal of Paris had extended the moral  right of integrity enjoyed  by  Hugo’s heirs  so as to ban the publication of sequels of Les Miserables (focusing on the main character Jean Valjean).
The Paris Court of Appeal stated:
"… [O]utlawing sequels of Les Miserables does not, as the parties contend, breach the principle of free creation since, in the facts presented before us, this work, being a  pillar of world literature. [Les Miserables] […] is not a mere novel for it presents a philosophical and political approach”
“Considering that, it follows that no sequel shall ever be given to a work such as Les Miserables, forever complete, and that the company Plon has, by editing and publishing Cosette ou Le Temps Des Illusions and Marius ou le Fugitif, by presenting the works as sequels to Les Miserables, violated Victor Hugo’s moral right as vested in the latter literary work” [Kats’ translation]
This decision was subsequently overturned by the Court of Cassation [here and here], the highest court in France for matters of civil law, which stressed that the cultural significance of the work could not be taken into consideration in construing the law or in balancing the fundamental rights at stake.  
But are these safeguards enough? The appeal process suffers from a major drawback: it depends upon the claimants’ financial ability to pursue appeal proceedings. Even more, what about more subtle cultural references made in connection with determining the subsistence or infringement of copyright, another slippery slope of cultural gatekeeping? 

Thus,  in Hadley v Kemp (1999), Park J draw a (bold) comparison between the creative process followed by members of the Spandau Ballet and that of  Beethoven to, it seems, reach his  conclusion on the difficult distinction between authorship, joint-authorship and performership in copyright law ([1999] EMLR 589, 645-6).

The Spandau Ballet

The decision reads:
After all, when Mr Kemp [Spandau Ballet’s lead composer and musician] devised the song he devised it for performance, not by himself as a solo artist, but by Mr Hadley [Spandau Ballet’s lead singer] and the whole band. A composer can ‘hear’ the sound of his composition in his mind before he ever hears it played. Beethoven could hear his music in this sense even when he was deaf. When Mr Kemp was devising his songs the sound which he had in his musical consciousness must surely have been the sound they would have when performed by Spandau Ballet, not the sound they would have when sung by Mr Kemp alone to the accompaniment just of his own guitar.’

Beethoven and his cat unimpressed
by the comparison
Why use a canon of classical music to inform a decision on copyright about pop music marks?  The analogy drawn here by the Court between Beethoven and the Spaudau Ballet (or rather between their respective practices) begs the question of how much this comparison weighed on the outcome of the case. Would the court have sided with Kemp had the decision been informed by another cultural reference, say Björk, Aretha Franklin, Daft Punk or…Kim Kardashian?
There may be a risk of indirect cultural gatekeeping in shepherding a select few fountainheads of our culture as relevant illustrations for the ‘hows’ and ‘whys’ of creativity for copyright purposes. This question is particularly important when it affects the distribution of rights between claimants or the eligibility protection of creative expressions for copyright protection.  In this regard, Hadley v Kemp is not an isolated instance (see Rockford Map Publishers at 148-9; Miller v Civil City of South Bend at 1093-5; Garcia v Google at 742-3).
What could be the safeguard against cultural gatekeeping? The answer is discussing, disputing and engaging those who favour a select few canons of so-called ‘high-culture’ in copyright law? To be clear— the result of this process is not predetermined. It is only through critical inquiry that we can reach reasonable positions on whether cultural gatekeeping and the biases that it entails, are welcome parts of the copyright law, or   is it an inevitable deviance of copyright law-making processes?

Never Too Late: if you missed the IPKat last week!

The 186th edition of the IPKat’s news roundup.


Kat friends Nina O’Sullivan and Victoria Wilson reported on the 2017 key design cases brought before both the EU and the UK’s courts in The best and the brightest: key UK and EU design decisions from 2017.

Speaking of key decisions, following the DOCERAM v CeramTec CJEU judgement (C-395/16), Kat friend Alexander Haertel discusses the decision in detail and its possible repercussions in German design law on the brink of change following yesterday's CJEU decision in DOCERAM v CeramTec.


A few months back, the IPKat reported on the adoption of an administrative enforcement model in Greece. Now the law has come into force and Kat friend Theodoros Chíou gives a detailed overview of the system in Greece: new notice and take down administrative mechanism for online copyright cases now in force.

Frida Kahto
A new type of authors' organization: an exclusive interview with the Executive Director of Authors Alliance. The IPKat, through the pen of Kat Neil, had the pleasure of engaging in a written interview with Brianna Schofield, the Executive Director of the Authors Alliance, which represents the interests of authors wanting to take advantage of digital opportunities.

Can Mattel be prevented from making its own Frida Kahlo Barbie doll? Mattel has launched the “Inspiring Women Series” of Barbies, which counts on its ranks also the 11 1/2 version of Mexican artist Frida Kahlo, but this decision, and especially the appearance of the doll, were not well-received by everyone. Kat Eleonora discusses whether an image right’s infringement claim by the Frida Kahlo Corporation would have legal ground under Mexican law. 

Does 5 Pointz, a.k.a. the “world’s largest open-air aerosol museum”, fulfil the standard of recognized stature? The almost 30 year old site has been at the centre of a legal battle after it was whitewashed overnight. Kat friend Mira T. Sundara Rajan in The 5 Pointz case: Should works of art be protected from destruction? If you are interested in the protection of graffiti, you might enjoy reading this IPKat post.

9th Circuit ‘slam-dunks’ claim of copyright infringement by Nike photograph of Michael Jordan and ‘Jumpman’ logo: the story behind the legendary Jordan’s silhouette and the legal dispute which followed. GuestKat Nedim reports.

Kat Mirko discusses how loses to German publisher and is found liable for damages. is an online database of free e-books, following US copyright law. The books, however, could be translated into German among other languages and, after doing the math on the difference in copyright terms in the two jurisdictions, did not end up well for the website.


AIPPI UK Event Report: Registration, notice and infringement - is certainty an illusion? Kat friend Lucie Fortune fought the cold to attend the latest AIPPI UK event and kindly reported on it for us.

Rare as an Ojos Azules Kat
Should you register your exclusive patent licence with the UK IPO? Well, it would be better, as illustrated by the case L'Oréal v RN Ventures: exclusive licence registration and costs recovery. GuestKat Eibhlin reports.

They are rare but their occurrence in nature has been reported from time to time: the Eighth Granted Petition for Review was obtained before the EPO. Intern Kat Rose discusses its intricacies.

In Memoriam Trevor Baylis: the life-saving wind-up radio and the precarious lot of the sole inventor. On March 5th, the inventor, sportsman, stuntman and underwater escape artist passed away at the age of 80. In his post, Kat Neil remembered Mr. Baylis’ life and accomplishments.

Weekly Roundups: Monday Miscellany


Never Too Late 185 [week ending 4 March] Exclusive interview with Johanne Bélisle, Chief Executive Officer of the Canadian Intellectual Property Office| Patents and the Fourth Industrial Revolution. What indications for the future on the basis of patent activity? | GuestPost: Is there really a problem with NPE litigation in Europe? |  Do patents and literature have something in common? | The 1st specialized IP Tribunal of Northwest China unveiled in Xi'an |  Sweet! (or not?): cookie-shaped cushions without trade mark owner's permission |  Sieckmann kicks in once again: when is a representation of a sign an acceptable representation for the sake of registration? | GUCCI as a well-known mark, with special attention to evidence, surveys, and unfair advantage | Book Review: Copyright User Rights, Contracts and The Erosion of Property

Never Too Late 184 [week ending 25 February] BREAKING: UK IPO launches technical consultation on draft regulations transposing the EU Trade Secrets Directive | Here we go again? Strong brands as a barrier to entry, this time from "The Economist" | UK IPO publishes consultation on implementing Trade Mark Directive 2015 into UK law | Top 10 issues from submissions before UK Supreme Court in Warner-Lambert v Actavis second medical use battle | EPO looking for new legally qualified members of the Boards of Appeal | Repair or reconstruction: Where do you draw the line for exhaustion under patent law? | L'Oreal v RN Ventures - The Registered Design Perspective | More than Just a Game: Music, video games, GDPR & technical protective measures” (Report 2 and Report 3) | German FCJ: doctors can have their profile deleted from rating site - but can they?

Never Too Late 183 [week ending 18 February] Mr Justice Carr's L'Oreal v RN Ventures decision bristles with warnings on Actavis v Lilly claim interpretation, equivalents and prosecution history (Parts I and II) | Can Wenzhou and cigarette lighters tell us something about why there are IP rights? | Surveying the scene - passing off & surveys | Copying the counterfeits | 2017 Canadian trademark cases: progressive and regressive | Linking under US copyright law: green light to its inclusion in the scope of public display right comes from New York | Isgrò and Waters, problem erased | Stockholm Administrative Court orders ISP to provide customers’ details to Swedish police | (No) privacy by default? German court finds Facebook in breach of data protection law | More than Just a Game (Report 1): eSports | Blockchain my IP | Strategies for Combating Counterfeiting and Piracy (The USA and The EU Perspectives) | AIPPI UK Upcoming Event: Professor Bently to debate how far the "zone of exclusivity" of registered IP rights goes

Never Too Late 182 [week ending 11 February]  BREAKING: in his new Opinion in Louboutin AG Szpunar (confirms and) advises CJEU to rule that a trade mark combining colour and shape may be refused or declared invalid |  The new AG Opinion in Louboutin: is it really bad news for the famous red sole? | Yet another horse – The Polo/Lauren Company L.P. v Royal County of Berkshire Polo Club Ltd. | When passing off is enough to successfully oppose a trade mark |  BREAKING: Sky's the limit for CJEU references in Sky v SkyKick trade mark battle |  Influencers and undisclosed sponsored activities: where do we stand? |  Brand Finance 500 … What’s the value of music IP? |  The Céline affair: what moral rights can and can’t do…even in France |  Can Nativity scene characters attract copyright protection under Italian law? | Blackcurrant, public interest and the first ever compulsory licensing application at the Community Plant Variety Office? |  Costs of intermediary injunctions: Sir Richard Arnold's review of a recent publication | Alternative ways for financing and incentivizing research: a Nobel laureate and his colleagues state their case |  Event Report: IP inclusive - Inappropriate Behaviour

Book Review: Certification and Collective Marks

Katfriend Alex Mogyoros is a doctoral student at the University of Oxford, St. Peter’s College. Her research focuses on trade marks and certification marks, and is supported by a Canadian Social Sciences and Humanities Research Council Doctoral Fellowship. She has kindly provided us with a review of Belson's Certification and Collective Marks: Law and Practice : 

Jeffrey Belson’s book is a very welcome and highly needed contribution to trademark law scholarship. Certification and collective marks are an often-overlooked area of trademark law. They have been described as “shy beasts [i] that “cast almost no shadow.” [ii]  So it is perhaps not surprising that little has been written on the subject.

For those new to this exotic area of trade mark law, certification marks and collective marks are special forms of trade marks, often regulated under trade mark legislation, but distinct from ordinary trade marks. Certification marks indicate that the goods or services bearing that mark are certified as meeting a particular set of standards or have certain characteristics or qualities. Collective marks, as Belson explains, are marks that generally function as a sign of membership, such as association with a trade or industry association.

This book is the second edition of Belson’s earlier book entitled Certification Marks: Law and Practice published in 2002, and is likely the only major treatise that has been written on the subject in the last 15 years. This book will be of particular interest to those who were keen to see the recent introduction of the EU Certification Mark.

In keeping with the first edition, Belson offers a comprehensive and mostly descriptive account of the law concerning certification and collective marks. It is self-described as a “wide-scope, research-based treatment of both the historical development and present state of applicable laws and policies,” and the book more than lives up to its promise. In eight chapters, Belson is able to bring a lot of clarity and insight to this topic. He positions the law of certification and collective marks in its historical context (Chapter 1), explores the statutory and doctrinal aspects of these legal entities (Chapters 3-5), and consider their application and use in practice – namely in regulation and standard setting, the use of ecolabels and the authentication marking of digital products (Chapters 6-8). His increased focus on collective marks, and focus on ecolabels (those signs that indicate a product is environmentally friendly) are two of the contributions to this new edition that stand out.

His chapter on ecolabels (Chapter 7), which Belson defines as “a voluntary sign, used on or with products, to represent that the product causes significantly reduced harm to the environment) is of particular interest given the growing prominence of such signs, and the increased value sustainable and environmentally friendly brands enjoy. Belson takes a broad approach to ecolabels, considering the legal status and typology of these signs, and the different intellectual property rights that may be engaged by their use. It would have been interesting to see a more focused examination of how ecolabels challenge traditional understandings of certification marks – especially, as Belson notes, some ecolabels are registered as trademarks and others as certification mark. Even still, Belson aptly identifies the different moving parts that are engaged where ecolabels are used, such as the trust consumers need to have for an ecolabel’s message, so these marks can be relied on to ultimately generate a positive environmental impact.

Kats love napping reading
While this book does put forward original arguments on the issues raised by the law of certification and collective marks, these arguments are at times obscured by the thorough and rigorous account of the law. Nevertheless, Belson undoubtedly brings to light some of the emerging issues and debates in this area of intellectual property law. Belson is particularly interested in, for instance, the controversial rule that a certification mark owner cannot make use of his or her own mark. This rule is often due to the idea that for certification marks to be able to perform their purported public interest role, the certifier must remain independent and detached. Belson notes that this rule may be a cause of the under-utilization of certification marks, and is somewhat in “tension” with the EU’s regulatory policy on self-certification of one’s own products, and is an area ripe for further exploration.

While there is no doubt the area of certification marks and collective marks could benefit from more scholarship, and theoretical work, on the issues they raise, this book is an extremely valuable contribution to the intellectual property community. It will no doubt be of value as a reference text, or those looking for a well-researched and thoughtful introduction into the often-under explored world of these shy trademark beasts.

Book details:
ISBN: 978 1 78536 879 0
320 pp
Available from Edward Elgar Publishers here.

[i]               Dev Gangjee, 'The Business End of Collective and Certification Marks' in Illanah Simon Fhima (ed), Trademark Law and Sharing Names: Exploring Use of the Same Mark by Multiple Undertaking (Edward Elgar Publishing Limited 2009) 79.
[ii]               Jeremy Phillips, Trademark Law: A Practical Anatomy (Oxford University Press 2003) 621.

cat pic credit: H. Wechsler

Monday, 19 March 2018

Swedish Supreme Court says that painting based on photograph is new and independent creation and hence … non-infringing

Mr Lemberger's picture (left) 
and Mr Andersson's painting (right)
Exhausted after several days of intense work, I (finally) afforded the luxury of watching some TV. Zapping my way through the channels, I stumbled upon something called “Domstolen” (ENG: “The Court”), a reality TV-show in the form of a reportage, based on somewhat recent court cases and judicial developments in Sweden. Just as I was about to zap away to the next channel there appeared a case concerning copyright infringement.

The case reported is colloquially known as Swedish scapegoats – a case from 2017 that made all the way up to the Swedish Supreme Court, and concerned a copyright dispute between the author of a close-up photograph and the author of a painting that was based on that photograph.

Markus Andersson is a Swedish artist who primarily paints images in oil and watercolor. In 2006 he was invited to exhibit his oil paintings at the Moderna Museet in Stockholm (The Museum of Contemporary and Modern Art). Mr Andersson exhibited a number of oil paintings of Swedish people, represented as scapegoats (a scapegoat is someone that is used to lay the blame on for all that goes wrong). Amongst others, there was a painting depicting the prosecuted – but subsequently freed of charges – Christer Petterson, ie the alleged murderer of former Swedish Prime Minister Olof Palme.

The portrait used as a basis for the painting of Christer Pettersson was a photograph by Jonas Lemberg. Mr Lemberg had followed and photographed Christer Petterson for a few days in 2005. One of the photographs taken by the Mr Lemberg was a close-up portrait of Christer Petterson that was consequently circulated on Swedish media.

The painting

The painting used dull colours in a rugged landscape and – compared to the photograph - featured a goat depicted in the upper right corner in the background. A photograph of the painting was subsequently uploaded onto Mr Andersson’s website and also sold in poster format.

When finding out about the painting, Mr Lemberg claimed that the artist had infringed the copyright in his close-up portrait of Mr Christer Petterson. 

The District Court and the Court of Appeal’s decisions

The Solna District Court held that, because main focus of the painting was Christer Petterson, which was also the case in the close-up photograph, the painting could not be considered a new and independent work, but rather an adaptation of the original work. This was the case despite the alteration of the environment, such as the dull colours, the rugged landscape and the goat. 

The Court of Appeal, however, held that the painting could not be regarded as an adaptation of the close-up portrait but rather as a new and independent work. In the Court of Appeal’s judgment it is stated that “the face of Christer Petterson has … been highlighted and the face seems less angular than in the photograph. In addition, the colours in the painting are more subdued and adapted to the background, which also causes some differences in how the light falls over the face”.

The Swedish Supreme Court

The main issue subsequently raised before the Swedish Supreme Court was whether the work in question should be regarded as an adaptation of the photographer’s existing work or rather as a new and independent work.

According to 4 § of the Swedish Copyright Act (SCA), a person who has made an adaptation of a work or shall have copyright in the work in the new form, but the right to exploit it shall be subject to the copyright in the original work. Hence, the exclusive rights of the author of the adaptation would be dependent on the original photographer’s rights. The former would therefore not be allowed to dispose of the painting by, for example, making copies of it without obtaining the prior approval of the original copyright owner. If however the work was regarded as an independent work, the artist’s rights in relation to his painting would be separate from the photographer’s rights and he would be free to exploit his painting as he wishes. 

The IPKat reflects on 
scapegoats and adaptations
According to the preparatory works for 4 § SCA, for a work to be regarded as an adaptation of the original work, the adaptation must leave the individuality and form of the original work unaffected. The original features of the original work must therefore be left unaltered in the work as adapted. In order to receive separate copyright protection, instead, the adaptation must be so independent and original that a new work would be created, taking into account, inter alia, the older work that has been used as a model. 

If the artistic individuality that embodies the older work appears as dominant in the new work, then it would be merely regarded as an adaptation. If, however, the new work is characterized by the author’s own expression of individuality and originality, it would be regarded as a new and independent creation.

In making its assessment, the Supreme Court stated that the painting must be considered in its entirety. Hence, even though Christer Petterson is at the centre of the painting, the dominant composition thereof essentially differs from the photograph. The dull colours, the rugged landscape and, above all, the symbolic goat – all give the painting a completely different meaning than the one conveyed by the original photograph. Instead of a strong close-up portrait, the painting conveys an allegory that suggests criticism of mass media’s need for scapegoats.  The painting is therefore a provocation in the form of commentary: Christer Pettersson is only portrayed a subject that has been prone to such media attention. Together with the goat, he is the carrier of such a symbolic message, a message which is also emphasized by the colours in the background.

The Supreme Court, therefore, held that the artist had transformed the photograph in such a way that he had created a new and independent work that gives expression to the painter’s individuality. Therefore he had not infringed the photographer’s rights over the underlying photography of Christer Petterson.

While the case might seem rather peculiar, it is interesting because it protects transformative uses of existing works … is this the Swedish fair use doctrine?

Will trade mark law stop Marine Le Pen’s new campaign?

Marine Le Pen, current leader
of 'Front National'
Last week, Marine Le Pen, leader of the political party National Front (‘Front National’), announced the re-branding of her party, following a defeat in the latest presidential elections in France. A new name, a new team, and a new programme, are all on the cards. The National Front is now to be called ‘Rassemblement national’ (read: National Rally). The objective is to ‘soften’ the image of the National Front, and thereby to distance the party from its tumultuous past (here and here).

Ironically, perhaps, this is not the first time that the name ‘National Rally’ has featured as the name of a national party. Indeed, it had already been used by a collaborationist party known as ‘National Popular Rally’ (‘Rassemblement National Populaire’), founded in 1941 by Marcel Déat during the period of Vichy France (through 1945) (here).

Evidence of prior use of the phrase
'National Rally' by the National Front
in the 1986 elections
In fact, the phrase ‘National Rally’ had already been used by her father (Jean-Marie Le Pen) back in 1986 (here), and Marine Le Pen claimed that the party had registered it as a trade mark with the French Intellectual Property Office. However, there  does not appear to be any evidence that any such application was ever filed on the behalf of the National Front or its key members (past or present), much less than it was ever registered or renewed. That said, the French Intellectual Property Office (INPI) advised the press (here) that it is still checking whether an application was indeed filed back in 1986.

'RN Rassemblement National'  (National Rally) 
mark purchased by the 'Front National' f
rom Mr Bigrat
As for the new brand, a number of registrations for similar signs, owned by other right holders and in other classes of goods and services, appear on the INPI registry (here). For example, the INPI records show that the ‘Rassemblement national Nin-Jutsu’ (read: National Gathering of Nin-Jutsu) used by an association dedicated to the martial arts is registered (here) and already in use (for the classes 16, 25, 28, 41).

There is one registered mark, using the exact same phrase for the purposes of an (apparent) political association, that might have prevented the National Front from using its new brand. However, contrary to what was reported online, the ‘National Front’ was able to purchase this mark from its right holder, Mr Frederick Bigrat, on 22 February 2018, and it can be expected that the records of the French Intellectual Property Office will indicate the re-assignment of the mark soon.

As such, the apparent controversy on the ownership of the trade mark, which occupied the national press for the best part of last week, had in fact been resolved before it even started. Having said that, commentators (here and here) have rightly noted that the other right holders may still file an opposition or pursue other proceedings to prevent a claimed risk of confusion following the renewed attention given to the mark by the National Front.

Sunday, 18 March 2018

Unlawful street art used in a promotional campaign: H&M withdraws its complaint

The H&M advertisement
Street art and copyright have been increasingly at the centre of attention. Katfriend Angela Saltarelli (Chiomenti) reports on a case that was initially brought by H&M against a street artist and – nearly as fast as the creations of fast fashion-focused businesses -  has been now settled.

Here’s what Angela writes:

“H&M, the famous Swedish fast fashion retailer, sued on March 9 last an LA-based graffiti artist, Jason “Revok” Williams, before the US District Court for the Eastern District of New York, requesting a court order that would enable the company to use Revok’s artwork in the background of its new men’s sportswear campaign called “New Routine”, without paying any royalty.

Before the lawsuit, on January 8, 2018 the street artist had sent H&M a cease and desist letter, complaining about the unauthorized use of his artwork in the fashion retailer’s new campaign, requesting compensation for copyright infringement, negligence and unfair competition.

H&M reverted back to Revok’s letter with this complaint, arguing that the graffiti was unlawful and constituted mere vandalism. The retail giant claimed that the making of an illegal act, including criminal trespass and vandalism to the detriment of property of New York City, would entail that the artist does not own any enforceable copyright on his work.

On a subsidiary basis, H&M stated that its production team for the campaign went to the New York City Department of Parks and Recreation (“DPR”) to request whether it needed to pay royalties for using the graffiti images as part of its campaign. H&M stated that DPR confirmed that the company should not pay anything.

This case created in few days a heated debate in both the legal and artistic community [see, eg, here].

As to legal debate, some commentators have held the view that the US Copyright Act does not make any difference between artworks that have been legally created and those which have not, only requiring the work to be original and created on a fixed medium. On the other hand, others have submitted that illegal artworks are not copyrightable, because they fail to promote the progress of science and useful arts, as stated in the US Constitution.  

As to the artistic community, street artists lashed out at H&M harshly over the past few days … so much that last Friday H&M announced via Twitter to have withdrawn the court complaint, saying that it “respects the creativity and uniqueness of artists, no matter the medium. We should have acted differently in our approach to this matter. It was never our intention to set a precedent concerning public art or to influence the debate on the legality of street art.”H&M announced also that they contacted Revok to find an amicable solution.

The legal debate over copyright protection of street art created in conditions of unlawfulness remains therefore open.”

Friday, 16 March 2018

Friday Fantasies

IPKat is here with your weekly update of IP news and events! This week we have news of the ratification of the Hague Agreement by the UK, a new IP inclusive group and a number of seminars and events on copyright reform. 

UK ratifies the Hague Agreement

The UK has ratified the Hague Agreement Concerning the International Registration of Industrial Designs. The agreement will come into force on 13th June 2018. Since 2008, it has been possible to achieve design protection for the UK through the Hague system via the EU’s membership. UK ratification of the Hague Agreement will allow access to the UK as a contracting party in its own right.  

Changes in New Zealand

Amendments to the New Zealand PatentDesign and Trade Mark Regulations have recently been notified. The amendments include changes to micro-organism deposit requirements for patent applications and changes to the extension of time provisions for filing a counter-statement in patent revocation proceedings. See the recent statement on the changes from the New Zealand Intellectual Property Office for further details. 

IP Inclusive

Last month Baker McKenzie hosted IP & ME’s inaugural event, which went ahead in defiance of "The Beast from the East". The theme of the event was Chinese New Year and the speakers were Jenny He (IBM) and Gabriel Goh (Taylor Wessing). Attendees learned about Chinese New Year and how it is observed by businesses in China and other countries. 

Maneki Neko
Next month will see the launch of IP Inclusive's new initiative Careers In Ideas. The launch party will be held at the Royal Society of Medicine on Tuesday 10th April 2018. See more details on the IP Inclusive Blog. Careers in Ideas aims to raise awareness of all types of jobs within the IP sector, from those suitable for school-leavers to those that require further education. 

IP Strategy Survey

AISTEMOS is a London based IP data analytics company. They are currently conducting a survey on IP strategy, focusing on the impact of disruptive technologies, such as blockchain and AI, on the attitudes to IP within organisations. See here to participate in the survey. AISTEMOS's report on their IP strategy survey last year can be found here

The IV Edition of More Than Just A Game (MTJFG) will focus on Culture, Identities, Freedoms & Artificial Intelligence, and will be held on Thursday 5th to Friday 6th April 2018 at Ironmongers Hall, Shaftesbury Place, London EC2Y 8AA. The focus will be on the impact of "AI and Immersive Technologies on Interactive Entertainment and our Culture, Identities and Freedoms". During the two days of the conference, leading international academics, publishers, lawyers, industry experts and policymakers will discuss a wide range of legal and regulatory topics, including Intellectual Property Law, Technology, Content & Communities Regulation, Data Protection and Privacy, E-sports and Streaming, Monetisation Regulation and Loot Boxes. The full programme and registration can be found here

EU copyright reform

Geo-blocking is the practice of restricting or denying access to certain services or content outside a specified territory. As part of the Digital Single Market Strategy, the Council of the European Union recently adopted the EU Anti-Geoblocking Regulation, now published. See more on the history of the EU's approach to geo-blocking herehere and here.

COMMUNIA is an EU project with the stated aim of advocating "for policies that expand the public domain and increase access to and reuse of culture and knowledge". Next week COMMUNIA is organizing a series of European Copyright Action Days in Brussels, in order to highlight "the broad opposition of civil society, libraries, the users, industry and many others concerning the restrictive aspects of the copyright reform proposal [Copyright in the Digital Single Market Proposal]" (Kat post here). Full details of the planned events can be found here

In the library
If you want to learn more about the issues involved in copyright reform, The City Law School is hosting a free seminar: Exceptions, Institutional Uses and the Construction of Copyright Norms, on the evening of 6th April 2018. The seminar will focus on one of the most controversial areas of EU copyright reform: the use of works in institutions such as libraries, museums, archives or schools. The speaker is Professor Guido Westkamp from Queen Mary University. See here for full details and registration. 

There will be another free seminar at The City Law School on 20th March 2018 on Derivative Works in Copyright and Improvement Inventions in Patent Law. The seminar will particularly focus on comparing the different approaches of copyright and patent law  to second-generation creators and inventors. Would a patent-like approach to copyright help promote creativity for the public benefit? The speaker is Professor Maurizio Borghi from Bournemouth University. More information can be found here

WIPO roving seminar series

The WIPO roving seminar series continues. There will be a free Slovenian Roving Seminar on WIPO services in Ljubljana on 27th March 2018. The event and materials will be in both English and Slovenian. Additional information, such as the seminar’s programme and a link to the registration page, can be found here

Ljubljana, Slovenia

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