Summary of Summer

Submitted by leslynowak on Tue, 09/03/2019 - 11:37
 
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Happy Tuesday! I hope you had an amazing vacation time (we all deserve nice resting time) and you are slowly but surely getting back into it (we are all struggling here, ok?). Let me bring you a nice and fresh summary of what happened over the course of the last month.

Oracle vs. CryptoOracle

The American multinational computer technology Oracle filed a lawsuit in the US a couple of weeks ago against a blockchain startup named “CryptoOracle”… guess for what? You’ve got it right, Trademark infringement. Oracle claims that CryptoOracle intentionally included their brand name to benefit from the original brand’s high reputation.

WIPO and the indigenous woman

At the beginning of August, the World Intellectual Property Organization (WIPO) launched an innovative program aimed at training and mentoring women entrepreneurs coming from indigenous peoples and local communities on IP related issues. This is all the most relevant as fashion brands seems to be unable to be kept away from indigenous designs (see here an article from The Fashion Law). WIPO seeks to enlist a maximum of 20 women from different regions that will be trained on IP basics and then mentored and supported during the implementation of their project on IP related aspects. We welcome the initiative from here!

The Fantastic Four vs. Piracy

News from Australia. Netflix + Warner Bros. + Disney + Universal City Studios (and others, but then the title is no longer cool nor applicable) have allied and managed to have over 100 domain names associated with torrent, streaming and similar sites blocked by local Internet Service Providers (ISP). It took the team three month to have a Court force local ISPs to prevent their subscribers from accessing the infringing websites. Not only that, but given the tricks used by these websites to circumvent prohibitions, studios have been allowed to keep in touch with ISPs to quickly communicate them any additional information regarding infringers. This “direct line” will enable ISPs to swiftly deal with new infringers.

Music world is raging 1: Led Zepellin

I love it when the music industry gets… creative.

As the “Stairway to Heaven” case is about to be heard in appeal, the US government has declared that it will be backing up Led in its Copyright claim. Although initiated in 2014, a Jury cleared the band in 2016 by stating that “Stairway to Heaven” and “Taurus” were two different songs. However, after an appeal was filled, the Ninth Circuit concluded that the judge in charge of the case back in the day, gave the jury erroneous instructions about how Copyright Law works in the US (mainly, that although individual notes or scale cannot be Copyright protected, the way in which they are combined could potentially be if sufficiently original). In addition, during the trial, the jury only had access to expert’s report but were not allowed to actually hear both songs to judge the overall impression. With all this information in hand, do you think the new jury will rule differently?   

Music World is raging 2: Taylor Swift edition

If you are not a TS fan (no shade), you might not really care about this (but you DO care about Copyright related issues) but after Scooter Braun acquired “Big Machine label, and due to an old beef between them, Taylor decided that “they are never ever getting back together” and she lost her rights over her old songs (how “treacherous”). After shedding a few “teardrops on her guitar” she announced that she would start re recording her songs as of 2020. Is this actually viable? Economically for her new record company and herself… Is this what she meant by “better than revenge”? We shall find out…

Music World keeps raging: Katy Perry is in trouble?

The District Court of California has ruled that Katy Perry, the producers and the corporation that released the song “Dark Horse” are all liable for Copyright infringement since Katy’s “Dark Horse” has copied “Joyful Noise” by Flame (listen to them and give me an honest opinion… are they similar? Here is a side by side comparison). How did the Court assess infringement?

  • Access: although Katy and her team said that they had never heard this song before (neither did I) the Court consider that 3.8 million views on Youtube (over the course of 10 years) and the fact that the song was included in an album that was nominated for a Grammy, made it feasible that Katy and her crew could have heard the song.
  • Infringement: the existence of the infringement was based on the bellow musical score and the fact that the Court consider that the “quarter notes descending in a minor scale from a third degree” were original to Flame’s work. Beware, this might have lowered the threshold for originality…

Where is the limit between inspiration and copying? Will this limit creativity in the musical business? We have no answer. Although note that the case is under appeal.

Music world strikes again: Eminem’s publisher vs. Spotify

Not the actual Eminem but its publishing company “Eight Mile Style” (the one that administrates Eminem’s past catalogue) is going after Spotify. Apparently, Spotify has been streaming old Eminem’s songs without license and Eight Mile’s has not perceived the corresponding royalties. Needless to say they are not thrilled about the situation and are taking actions.

Olaplex, L’Oreal and hair things

I have to admit that I only heard of Olaplex because of a Youtuber who fried (maybe not literally) her hair by bleaching it way too much… Well this 2 year long legal battle is “heating” up again. After being awarded 100 million dollar in damages after a jury finding that l’Oréal willfully infringed Olaplex patent (by launching its l’Oréal Professionel Smartbond), misappropriated trade secrets and broke its confidentiality obligations, l’Oréal is striking back and has filed an appeal. At the same time, l’Oréal is trying to barre registration of patent claims from Liqwd Inc. (for which, OH SURPRISE, Olaplex is the exclusive licensee) alleging that they fail to meet the novelty requirement. We will have to wait and see how the Court decides.

Netflix (again), Fyre Festival Documentary and Jerry Media and the widely controversial Fyre Documentary

In a nutshell (and if like me you haven’t watched this documentary), this is about a festival fraud. The set up was nice (an island in the Bahamas), hopes were high (people paid up to 250,000€ for tickets (are they aware of what you could actually do with that amount?) and the word “luxury” was tagged to the festival. The reality: almost no food, accommodations were less than Decathlon’s camping tent (not shaming) and apparently… there was no music entertainment (No music during a festival… maybe this is a new concept?).

When creating this documentary, Netflix and Co. have decided to use videos taken by someone else without being granted a license or receiving permission or consent to use them, therefore committing Copyright infringement. This will probably settled out of court but we will surely keep you updated!

The A-team against Cannabis

Everybody remembers Mr. T from the A-team, right? (maybe millennials don’t even know what the A-Team is…) I’m guessing that not everybody knows about Leafly (I had to look it up) and I would describe as the Cannabis version of Yelp. So, because Leafly is Cannabis centered, you can imagine that when they promote something, well, it’s usually cannabis related. Here, they were promoting a cannabis strain named “Mr. Tusk” and the logo to promote Mr. Tusk’ strain was “Mr. T”. The authentic Mr. T, not thrilled about this situation, decided to sue Leafly for Trademark infringement claiming that using this logo could lead to consumer to think that he has some kind of ties with the company or that he somehow endorse cannabis. Let’s see where this heads…

Aldi vs. Charlotte Tilbury (or when brands get mad at dupes)

For those of you who don’t dwell in the world of makeup, this case involves Charlotte Tilbury’s “Filmstar Bronze and Glow” with a packaging that imitates sun rays that contains a bronzer and a highlighter with said sun rays pressed onto the powders. On the other side, we have Aldi’s “Broadway Shape and Glow” (no longer available for sale) palette with the same sun ray lid and sun ray bronzer and highlighter. The first one costs 65€, the second one around 6€. If you want swatches, sorry this is not a beauty channel (I will not admit that I have actually read the reviews). A couple of different questions were addressed by the High Court of Justice of England and Wales here:

  • Taking into account that, with its use a powder design will fade, can we consider that Copyright subsists? The answer is yes, just as Copyright protects sand or ice sculpture, that will eventually fade away, the design imprinted in makeup, even though destined to fade away, is susceptible to be protected through Copyright.
  • There is no doubt regarding the originality of both the lid design (diamond, Charlotte Tilbury monogram and sun rays) and the powder. Indeed, although individually taken these elements (sunrays and the words “sculpt” and “highlight”) are not original, it is the work and the way they are assembled as a whole that makes them original.
  • Under UK law, determining if there is copyright infringement requires a visual comparison of the designs, taking note of the similarities and differences. And so did the Judge to finally conclude that indeed the similarities between both items were substantial, thus infringement was committed.

Steve Madden vs. Rothy

Finally, something other than Copyright and Trademarks (kind of)! (no shade). It all started that summer of 2019 with a love cease and desist letter (the stop it or you’ll be in trouble letter) from Rothy to Steve Madden. This letter threatened legal actions against Madden based on “federal trade dress infringement, dilution and misappropriation”. What is a trade dress? In the US, trade dress is a subtype of trademarks, you can call it a visual trademark and obtaining it takes time and a high degree of exposure (the red bottom of the Louboutin shoe is trade dress in the US).

So, having received this, Madden went to the District Court of Delaware and asked the Judge to lift the vail of uncertainty by declaring that no, Madden’s pointy flats are not infringing Rothy’s pointy flat + declare that this so called “trade dress” is invalid. Why? Well because the design is functional (meaning that it is very likely that other shoe producer will make a flat pointy ballerina with a nice opening) and has not acquired “secondary meaning” (meaning that when a consumer see a pointy ballerina they should immediately associate it to ROTHY!). Madden, appropriately argues that the pointy design is actually very common and it is, therefore, unlikely that consumer will link the pointy design to a single source or brand.

The eighties are back

Believe it or not, scrunchies are a thing and are the subject of a design patent lawsuit… (don’t mind me, just chillin’ while writing some scrunchie lawsuit). It all unfold on Amazon, when one retailer received an email informing them that their scrunchies were removed due to a third-party complaint for potential IP infringement. Apparently, a design patent for the ornamental design of a scrunchie is a thing. The issue at stake here is what is the extent of this scrunchie patent? Because, visually (although a scrunchie is a scrunchie from whatever angle) one is round and very… wrinkled, while the other one is wrinkled but looks like a flower. I don’t know, let me know what you think, because I am terribly confused. I think Stranger Things has done us wrong.

Fun links to look at

See you next week for the regular weekly IP news and you can expect another IP Blogpost from us this month!