From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 15 September 2014

Never too late! If you missed the IPKat last week ...

Our good friend Alberto Bellan has been kept particularly busy in composing this weekly round-up (our eleventh) of blog posts which you may have missed if you were away last week. This is because, inclusive of regular features like the Monday Miscellany and Friday Fantasies, the IPKat team posted a total of 22 items -- the largest number of Katposts in a single week since this blog was founded in 2003.  

Last week's offering looks like this:


Last week, the Court of Justice of the European Union (CJEU) issued its decision in Case C-201/13 Deckmyn [on which see earlier posts herehere and here]. The ruling concerned the notion of parody under Article 5(3)(k) of the InfoSoc Directive and stressed the need to "strike a fair balance" between copyright protection and freedom of expression. With regard to the latter, the Court held that the relevant right holder has "in principle, a legitimate interest in ensuring that the work protected by copyright is not associated" with a parody that conveys a discriminatory message. What did the Court mean by "legitimate interest" if not "moral rights", wonders Eleonora?

* Trade secrets: even more exposed!


After Jeremy’s review of Trade Secrets and Undisclosed Information last week here, Sam Davies of the International Chamber of Commerce informs Kat-readers that the ICC has just released a new publication entitled Trade Secrets: Tools for Innovation and Collaboration. Penned by Jennifer Brant and Sebastian Lohse, the paper is freely accessible on the ICC’s website. In the words of Daphne Yong-d'Hervé, Chief IP Officer at ICC, the paper “explains what trade secrets are, then looks into the challenges that companies face in managing trade secrets in the real economy”. Jeremy praises the initiative and wonders why ICC lacks general visible participation in mainstream IP circles. Merpel meows and asks more details about the authors of this paper.

* A Most Un-Magical of U.S. Trade Mark and Copyright Disputes


There’s a harsh IP battle going on in the US between Disney and Canadian electronic musician and performer Deadmau5.  As Lucas reported in April, it concerns a US trade mark application covering a mouse-head design that Disney considers confusingly similar, also diluting its several trade marks that depict the globally famous head of Micky Mouse. Lucas updates readers on the recent twists of this story, the most intriguing of them being the cease and desist letter that Disney received from Deadmau5 for having used one of his songs without the artist’s consent.

* Spirit Bear: not an Urban myth, rules court


“The Spirit Bear” is a nickname for the Kermode bear, a white, non-albino species of the black bear, which can be found on the Northwest coast of British Columbia, Canada. The City of Terrace and Kitasoo Band Council, in British Columbia owned trade mark rights over the name “Spirit Bear” and opposed to its use on vodka and gins by a local distillery. The Federal Court that heard the case just issued its decision, and Rebecca recounts how it went. 

* A Transatlantic Battle Over Ownership of Vivian Maier’s Photographs


This is about an intriguing multi-jurisdictional case concerning the photographic works of Vivian Maier. The latter was born in New York City to a French mother and an Austrian father. She lived most of her life in Chicago working as a nanny for well-to-do families, and died in Illinois in 2009. While a nanny, she took thousands of photographs, but most of them were never developed during her life, remaining in thousands of undeveloped rolls that she stored in a storage facility. When she failed to pay storage rent, her photographs, films, and negatives, were auctioned off and bought by several bidders, some of which published and used them in various ways. After Vivian shuffled off her mortal coil, various subjects between the US and France claimed copyright and copyright infringement over her works. Moral rights over unpublished works appear to be the big issue here, Marie-Andrée explains.

* The Copyright and Technology contest has now a winner

On 1 October 2014 the London offices of Reed Smith LLP are hosting the 1-day Copyright and Technology conference, which promises to be very engaging and carries a discounted registration fee for IPKat readers. On 25 August last the IPKat launched a contest, requiring aspiring entrants to create an artistic work that would illustrate in the best/most humorous/saddest/etc the relationship between copyright and technology. After a tough selection process, Eleonora announces the winner.

* Broadcast Monitoring Service is (Partly) Fair Use for New York Judge


In  Fox News Network, LLC v TVEyes Inc., No. 1:13-cv-05315, Fox News sued TVEyes, a US company that monitors and records “all content broadcast by more than 1,400 television and radio stations twenty-four hours per day, seven days per week, and transforms the content into a searchable database for its subscribers”, among the latter being the White House and the U.S. Army. The searchable database that TVEyes created provides portions of the transcript highlighting the keyword and a thumbnail image of the show that used that keyword, along with video fragments of the indexed show. Does the defendant's activity fall within the scope of fair use? Do read Marie-Andrée’s report of the decision just issued by the Southern District Court of New York (SDNY) if you want to know!


After filing a Micky Mouse-looking trade mark and suing Disney for copyright infringement over one of his songs, Canadian electronic musician and performer Deadmau5 goes on the Katfloor again, this time for having de-branded his Ferrari and affixed a wrap in the design of the Nyan Cat 2011 YouTube phenomenon, as well as a a ‘Purrari’ badge and the image of a prancing cat on the bumper.  The iconic automotive company Ferrari was not particularly happy with his interpretation, and Katfriend Lucy Harrold speculates how things would go if the eclectic Canadian would have done that in the UK.

* BREAKING NEWS: CJEU says that libraries may digitise books and make them available at e-reading points, and that licences do not prevent exceptions


Eleonora pens about the CJEU’s decision in Case C-117/13 Technische Universität Darmstadt v Eugen Ulmer KG. As the very same Eleonora reported at the time when the case was refereed, it concerns unauthorised digitisation of one book by a university library to allow the latter’s electronic consultation from the library terminals, as well as the possibility to allow users to print out the work on paper and store them on a USB stick. It is all about the Infosoc-Directive system of exceptions and its national implementations, a matter on which the Copyrightkat has a lot to say.  

* BREAKING: AG Cruz Cruz Villalón suggests adoption of new 'causal event' jurisdiction criterion for online copyright infringement cases

An Austrian photographer sees his works diffused over the internet by a German company without his consent. Which national court owns the jurisdiction to hear the case under Article 5(3) of the Brussels I Regulation? This is a tricky question, as the CJEU’s case law has been adopting different approaches for assessing jurisdiction in such cases. And it might become even trickier, Eleonora explains in this post, should the CJEU agree upon the Advocate General (AG) Cruz Villalón’s Opinion in Case C-441/13 Pez Hejduk v EnergieAgentur.NRW GmbH. Between the “intention to target” criteria of Sportradar [here and here] and the “accessibility” one adopted in Pinckney [herehere and here], the AG identifies a third way for assessing jurisdiction when it comes to infringements causing “delocalised” damages. Can the “causal event” criterion lead to a revolution in EU jurisdiction rules for copyright litigations?

* BREAKING NEWS: AG Cruz Villalón thinks that there can only be "analogue" exhaustion and suggests that the right of adaptation has not been harmonised


Another groundbreaking opinion comes from AG Cruz Villalón, this time on case Case C-419/13 Art & Allposters International BV v Stichting Pictoright. As Eleonora explains in this post, the case is basically about the question: "Can the person who owns copyright to a painting and has previously consented to having the image represented therein marketed as a poster later object to the commercialisation of the same image transferred on canvas?”. AG Villalón provides for his take on this issue, focusing on the meaning of “right of adaptation” and on the hot topic of exhaustion in digital and physical environments.

* Bye-bye Mike -- but will we soon say hello to an IP Tsar?


The IPKat weblog has carried numerous pieces on the advantages of having an Intellectual Property Enforcement Coordinator of the sort that has emerged in the US (see eg here, here, here and here). The guy who held a none-too-similar position in the UK is Mike Weatherley MP (Intellectual Property Adviser to the Prime Minister, Member of Parliament for Hove and Portslade and unashamed promulgator of Rock the House), who is hanging up his Parliamentary boots at the next Election in order to pursue an honest career outside Westminster. Jeremy reflects again on the importance of this figure, hoping that the debate over its possible implementation and strengthen in the UK may be soon re-opened.

* Examining IP PhDs: a Katchat with IP profs


Three learned IP Professors, namely Lionel Bently (University of Cambridge), Eoin O'Dell (Trinity College Dublin), and Estelle Derclaye (University of Nottingham), answers Eleonora’s questions upon the sense of IP PhD (“What are you looking for in a PhD thesis when you examine it?”; “Have you noticed any changes in the average quality of IP PhD theses over the past few years?”; “Do you find it difficult to fail a thesis?; When a thesis goes wrong, whose fault is it?”; “If you could make one change to the current system for examining PhD candidates, what would it be?”; “How marketable do you think are the skills of PhD candidates you are used to examine inside academia, as well as outside it?”). Like earlier Eleonora’s posts on this topic [here, here, here], here’s another must-read for those who are thinking of going in for this life-changing experience. 

* Copyright dispute relating to "Ascot" photograph: will a Munich model now receive "100,000 Euros for her boobs"?


Birgit tells of a copyright suit currently pending before the Court of Munich upon a photographic composition of the late eccentric German and Swiss photographer Gunter Sachs. The photograph at stake, called “Ascot”, depicts the German model Kirsten Klie bare-chested in a mostly unbuttoned white blouse, wearing a hat and binoculars. The very same Kirsten alleges to have contributed to the work with further added value, creatively advising Sachs before the composition was made and claiming royalties accordingly. Hot stuff, here.


Retro Bag Shop’s application; opposition by Brian Poulton (Case 0/358/14) is a trade mark case decided last month by Hearing Officer Oliver Morris in the UK Intellectual Property Office. The case concerned an application to register a figurative trade mark with the text “NORTHERN SOUL - KEEP THE FAITH” and the image of a black fist. For those to which those elements do not ring a bell, “Northern Soul” is one of the musical genres that characterized the Mod movement, a youth current born in the UK in the '60s. The very same black fist is rooted in that movement’s cultural tradition. Can symbols of the glorious “rage and style” guys be monopolised by a bag seller? Jeremy leaves the floor to Katfriend Shalini Bengani, who recounts how it went.


There has been plenty of coverage of the UK IPO/FCO-led China-UK Intellectual Property Week, with even the  BBC's Today radio show picking it up.  Put together by Britain’s multi-tasking China IP attaché Tom Duke, the visit took in eight cities in five days, spreading the word for and about IP in the UK.  It has been equally well received in China, with meetings on the margins at a high level and TV coverage on their national broadcaster, CCTV.   But what did our reporters on the ground think?  Participants and Katfriends Gwilym Roberts (CIPA, Kilburn & Strode) and Catherine Wolfe (ITMA, Boult Wade Tennant) share their thoughts.
* Those European Courts: a Venn diagram
Last month, here, Jeremy bemoaned the confusion caused by there being so many courts that have the word "European" in them. Fellow blogger Kuan(self-described as "half lawyer, half geek, mainly harmless") must have felt the same anxiety when he depicted a useful visual graphic that displays the overlap (or absence of overlap) of these noble institutions.

Neil addresses the issue of trade marks co-owned by a number of persons under the lens of that IP right’s rationale. How we conceptually justify multiple ownership of a trade mark, eg, with reference to the quality control notion? Can it be said that all owners use, or potentially use, the mark, in a uniform manner -- or the “quality control” is just another legal fiction of the magical IP world?

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