We wish you a happy beginning of the week and, for those coming back to work or to school we send you all the strength for this new coming year. The world of IP never takes a rest and here are the most important news from last week:
Michael Kors takes a different route
In an era where brands fight counterfeits online, Michael Kors has decided to take a different approach and go against a well-known flea market, “The Boulevard”, located near Yale’s University (USA). Apparently, this flea market has a reputation of selling fashion knockoffs and has been doing so for years. Although it is true that the defendants here (the owner of the land where the flea market is located and the owner of the business that runs the flea market) are not actively selling counterfeits, they have taken no actions against the infringing sellers. As such, they could be seen as trademark infringers. Given US precedents in similar cases (COACH, Inc. v. Fredrick GOODFELLOW) Michael Kors has chances to prevail.
Music industry strikes… again: Drake v. Sam Skully
The music industry is boiling. Sam Skully is the author and owner of the copyright of both the original and instrumental version of “Roll Call”. Apparently, he created the Instrumental version specifically so that DJs could use it to create mixes (not for free though). Allegedly, Drake’s producer has used the beat of “Roll Call” in two of Drake’s songs “In My Feelings” (Kiki, do you love me…) and “Nice for What” (How can I explain myself?). Strangely, Skully (unlike other musical Copyright strikes) does not identify where the infringement occurs, the only claim is it is a “copy”. As all other Copyright claims pending in the music industry, Court’s decisions will allow musicians and producers to be on the lookout as to what to expect.
YouTube, ContentID and fairness
Back in the day we reported on YouTube’s ContentID and the fact the YouTube’s team was trying to make improvements. Until know, a Copyright holder was capable of filing a claim against any video that uses their content without their permission, no matter how short or if the use was involuntary (imagine your favourite vlogger passing by a store playing Copyright protected music). No more! In a quest for “fairness and balance” YouTube has established that when the use is “very short or unintentional” no copyright claim could be filed through the Manual Claiming Tool (when the copyright holder himself goes through the video and flag the use of its song). This will not apply for claims made through their Content ID match system (which is comprehensible, since programs are not able to make the difference between intentional and unintentional). However, we have a question… What should we understand as “short”? 5 seconds? 1 minute? What about unintentional? This and the “cancelled” culture… What is next for Youtubers?
PD: Members of the US Congress are currently questioning YouTube’s CEO regarding its ContentID system. Stay tuned! (the copy of the letter was made available by our colleagues from the IP Watch Dog)
Facebook’s fight against piracy
Have you read Facebook’s recently updated Community Standards? First of all, for anyone wondering, Facebook explicitly states that you are the OWNER of everything you choose to publish on Facebook. Second, given that Facebook is committed to protect other’s Intellectual Property Rights (“IPR”), Service Conditions states that it is strictly forbidden to publish any content infringing IPRs belonging to a third party. In connection to that, it is expressly stated in its Terms and Conditions (section 3.2) “You cannot use our platform to share content that infringes third parties’ rights including intellectual property rights”. This translates into the impossibility (we know that none of our readers have tried, so we are here to gracefully inform you) to share links belonging to the following websites: LimeTorrents; YTS; Torrentdownloads and Zooqle. These regular and continuous blocking efforts are more than welcome!
Forever 21 and a misfortunate advertising strategy
You might have already heard that Forever 21 is facing financial trouble and was looking into ways to re-boost its image and economy. After a failed deal with Ariana Grande (Forever 21 was unable to pay the price) they took what we could call a “faux-pas”. Indeed, the company has published Grande’s image in its Instagram has part of its advertising campaign, as well as copied Grande’s image, likeness and music (mimicking the image of her latest album) to give their teenage public the wrong idea that Ariana Grande was, somehow, endorsing or part of the campaign. If you take a look at the picture, the model chosen by Forever 21 does bear a resemblance to miss Grande (similar pose, hair, attire and a soft pink light) and in the description box they used part of the lyrics of Thank U, Next “Gee thanks, just bought it”. The overall aspect of the campaign evokes, indeed, miss Grande’s Thank U, Next videoclip. Grande is therefore claiming Trademark infringement (for the unauthorized use of her name) and Copyright infringement (unauthorized use of the photos that she, herself, posted on her Instagram) and false endorsement.
AMS Neve or an important decision for Trademark owners
The scenario is as follows: an infringer established and domiciled in Spain, advertising and offering online infringing goods on a website that was targeting the UK. Question: Where can I file for EU Trademark infringement (not national, this was already resolved by the Court in Wintersteiger)? In a nutshell, and without entering in all the delightful underlying debates, as the owner of an EU Trademark, and when facing an online infringement such as the one described above, you are allowed to file your complaint before the Courts of the Member State within which the consumers or traders, targeted by the online advertising, are located. In the case described above, you are allowed to bring actions in the UK, since the infringer developed its website to target those consumers.
Louboutin v. Amazon
The Paris-based brand, famous for his red soles won his latest trademark battle against the European branch of Amazon. The issue: Amazon’s lack of correctly monitoring its platform in the fight against counterfeits + advertising said counterfeits through its targeted consumer ads (you know, when you visit Amazon in a quest to find a new blender and then suddenly you are bombarded with ads wherever you go of… BLENDERS). Not only that, but in the EU said counterfeits were marked as “shipped and sold by Amazon” and benefited from sponsored ads, leaving the authentic Louboutin retailers on the trail. Although Amazon tried to exonerate itself by stating that the red colour of Louboutin’s shoes was not that unique and should not be covered under Trademark protection, the Court disagreed. Indeed, as already awarded in 2018, the red sole is Louboutin’s identifier in commerce, regardless of the shade of red (red, not burgundy), Amazon EU is therefore liable for knowingly promoting counterfeits.
That’s all for this week! See you Thursday for our monthly blog post!
- A very interesting article, on Common Clauses and open source licences, from the IP Kat: http://ipkitten.blogspot.com/2019/09/commons-clause-in-open-source-licences.html
- Competition Law: after the EU sanctioned Google for abuse of dominant position, it is now the turn of the US to initiate an antitrust investigation against Google: https://www.washingtonpost.com/technology/2019/09/08/facebook-google-face-off-against-formidable-new-foe-state-attorneys-general/?noredirect=on