A little bit of IP before Christmas

Submitted by leslynowak on Tue, 12/17/2019 - 15:26

With a week left before Christmas, we are bringing you the latest news in IP.

DeLorean and Back To The Future

If you are familiar with “Back to The Future”, then you are also familiar with the iconic car: the DMC 12. Back in the days, John DeLorean, the owner of DeLorean Motor (who went bankrupt) reached an agreement with Universal: they could use the name and appearance of the DMC 12 for their movie in exchange of 5% of the benefits. Fast forward to 1997, DMC Texas bought assets from the bankruptcy including all trade marks, logos and commercial names. The result? Universal payed the agreed benefits to DMC Texas and not to the DeLorean family. The DeLorean family filed a lawsuit but finally reached an agreement with DMC and the matter was settled in 2015.

With the new franchise of Back to The Future in the making, it was DMC Texas, as the right holder of the trade mark and related rights, who licensed the rights to Universal for this new franchise. Sally DeLorean did not agree. According to her, the agreement they reached in 2015 did not allow DMC Texas to grant licenses. The Court informed miss Sally DeLorean that this was not the case: by acquiring the assets of DeLorean Motor, the company also acquired the rights to grant any licenses and to receive the corresponding royalties, regardless of what settlement agreement was reached in 2015.

Kim Kardashian and the Vampire Facial

The story goes along these lines: Kim K went and got a “vampire facial” seven years ago while filming in Alabama. The clinic (Cellular Medicine Association) then, allegedly, used Kim K’s image, name (protected as a trade mark) and photos (copyright protected) to endorse the Vampire Facial technique and promote it; all this without Kim’s authorization. Therefore, Kim K is now filing for trade mark and copyright infringement.

Nice twist to the plot. Cellular Medicine Association is actually filing a counterclaim stating that it is actually Kardashian who is in the wrong because she used the trade mark protected names “Vampire Facial” and “Vampire Facelift” to promote her TV shows and herself without the authorization of the right holders. Who is in the right?

Can someone own a dance move?

Well, Fortnite’s creator, Epic Games, does not think so. This is Matt Geiler’s dancing jack-o’-lantern. This is Fornite’s dancing pumpkin. The problem? Apparently, although Epic Games received the authorization and reached an agreement with Geiler to use this dance for Fortnite, Geiler sent them a Cease and Desist letter due to an alleged copyright and trade mark violation. Epic Games decided to take the initiative by seeking a declaration of non-infringement from a Court in order to avoid any problem in the future.

EU General Court bars “marijuana” trade mark

The General Court has spoken. Logos implying the sale of marijuana products will not be granted trade mark protection under EU law because they are contrary to public policy. Does this entail that any trade mark referring to cannabis will be barred? In principle no, as long as the “average person” does not assume that the mark refers to narcotic marijuana, then trade mark registration should still possible. Where is the exact limit? We will have to see how this decision is effectively implemented.

Patagonia Jackets vs. Patagonia beer

Patagonia Jacket is a 40+ year-old company well-known for its high-performance outdoor clothes. The company also has another division, “Patagonia Provisions”, that offers responsibly sourced food, including beer. On the other side there is Anheuser-Busch, a multi-national drink company that has decided to launch “Patagonia Beer”. In doing so, Patagonia Jacket considered that Anheuser is actually:

  • Infringing its trade mark, by use of the same word and overall same look.

  • Misappropriating the goodwill that the company has built. Indeed, Patagonia Jackets is viewed as a famous and reliable brand, qualifications that a consumer might now extend to Patagonia Beers by associating said brand to Patagonia Jackets.

It is now up to the Court to decide on the matter.

This is all for today! You can expect our monthly topic blog post on Thursday.

Schedule wise, please take into account that the blog (and only the blog, the Helpline remains very much active) will take a two-week hiatus until the 7th of January. We will then make a two-week update of relevant IP news that occurred during the holidays.