Foley says relax
Artists , Trade Mark / July 2007
UK

TRADE MARK Artists Thatcher’s children will be familiar with the band Frankie Goes to Hollywood. The band had a number of chart hits. The lead singer was Holly Johnson, although the band also had (at various times) four other members. Johnson left to pursue a solo career in 1987, upon which the band ceased performing. However, they reformed, minus Johnson and with a new lead vocalist, for the ‘Bands Reunited’ TV programme in 2003. In April 2004, Johnson applied to register Frankie Goes to Hollywood as a trade mark. The remaining band members opposed the application, citing an earlier right protected by passing off and bad faith. Mr Hearing Officer Foley allowed the opposition on both grounds. The key issue for s.5(4) (passing off) was whether the goodwill gravitated to Johnson alone, as the lead singer, or whether it could be attributed to the band as a whole. It was irrelevant that Johnson had thought of the name, and it was likewise irrelevant that it was somewhat creative. The legal arrangements in force meant that, at the time Johnson left the band, it existed as a partnership at will, meaning that any goodwill attached to the partnership, rather than its individual…

Rockbass not valid trade mark
Artists , Trade Mark / July 2007
EU

TRADE MARK Artists ARTICLE LINK From The IP Kat Advocate General Eleanor Sharpston has rendered her opinion in case C-301/05  Hans-Peter Wilfer , this being an appeal to the European Court of Justice, Luxembourg, from a decision of the Court of First Instance (CFI) involving Wilfer’s application to register Rockbass as a Community trade mark for guitars, technical sound equipment, amplifiers and the like. The application was rejected on the basis that the word was sufficiently descriptive to be incapable of serving as a trade mark; the Board of Appeal and the CFI agree. http://ipkitten.blogspot.com/2007/06/rockbass-heads-for-further-trouble-in.htm

Trade marks vs free speech
Trade Mark / June 2007
UK

TRADE MARK All areas ARTICLE LINK:  Our feline friend the IPKat brings news of a tricky little case involving the interface between trade mark dilution and free speech. In Miss World Ltd v Channel 4, a judgment delivered on 16 April, Pumfrey J ruled on the conditions under which interim relief should be refused in a trade mark case on free speech grounds under s.12 of the Human Rights Act. http://ipkitten.blogspot.com/2007/05/free-speech-v-tms-high-court-approach.html

Beach Boys lose case to reclaim memorabilia
Image Rights , Trade Mark / May 2007
USA

TRADE MARK / IMAGE RIGHTS Merchandising Former Rock ‘n Roll musician Roy A. Sciacca has won a victory against The Beach Boys’ company, Brother Records, when Judge Manuel L. Real of the United State District Court for the Central District of California turned down a $60 million lawsuit. The lawsuit accused Sciacca of stealing a treasure trove of original Beach Boys lyric sheets, sound recordings, videotapes, photographs and other items from a warehouse in 1994. Sciacca is an avid collector of memorabilia. Following the $1.25 million sale in 2005 John Lennon hand written lyrics, Sciacca contacted auctioneer CooperOwen’s Music Legends to arrange the sale of some of The Beach Boys’ original lyric sheets and other items he had purchased at a warehouse sale in the 1980s. This alerted Brother Records who filed the lawsuit claiming, among other things, copyright, trademark, and right of publicity infringement. Judge Real ruled that there was no evidence to suggest that Roy Sciacca and warehouse owner Allen Gaba had stolen the memorabilia and Sciacca is now free to sell the items. See http://www.sys-con.com/read/359811.htm

Queen protect mark against new application
Artists , Trade Mark / April 2007
UK

TRADE MARK Artists, merchandisng Ilanah Simons from the purrfect IPKat webblog reports a victory for the rock group Queen before the Trade Marks Registry. Julia Ruhnke made a Madrid Protocol application to register the term QUEEN FOR A DAY for clothing. The surviving members of the rock group Queen opposed the application based, inter alia, on their registration of the word QUEEN for the same goods. Since the goods were identical, the issue came down to whether there was a likelihood of confusion taking the similarity between the marks into account. Yes, there was, said Mr Hearing Officer Reynolds. Although the number of words in the two marks was different, there was a strong conceptual link between them. QUEEN, when used on clothing, would be viewed as referring to the concept of a female monarch, which would be fanciful in relation to clothing. QUEEN FOR A DAY contained a conceptual difference, as it suggested how the wearer would feel when donning the clothes but (hold on to your hats folks), this conceptual difference actually enhanced the degree of similarity between the two marks because it reinforced the connection with royalty by suggesting that the lucky lady wearer would feel like a…

Did he? He did, didn’t he? Richard Dearlove (trading and professionally known as “Diddy”) v Sean Combs (trading and professionally known as “Sean ‘Puffy’ Combs”, Puffy” and “P. Diddy”) [2007]
Artists , Trade Mark / April 2007
UK
USA

TRADE MARK Artists EWHC 375 (Ch). Sean Combs had already been ordered to stop using the name ’Diddy’ in previous litigation which saw him pay over £10,000 in damages to British DH Richard ‘Diddy’ Dearlove as well as £100,000 on costs. Now Mr Justice Kitchen has ordered Mr Combs to drop a lyric in which he calls himself “Diddy” when he performs at Wembley Arena. In a High Court ruling, Mr Justice Kitchin said that Mr Combs had breached the agreement which resulted from the previous litigation. That agreement provided, inter alia, that Combs would refrain from advertising, offering or providing, or causing/procuring others to advertise, offer or provide any goods and services not being the Claimant’s goods and services as a remixer, producer, songwriter, recording artist and DJ under or with reference to the word “Diddy . Kitchen J agreed that Combs had clearly advertised himself as “Diddy” in a song called The Future on his latest album Press Play. The judge ruled: “The second verse refers to Mr Combs as ‘Diddy’ as he invites the listener to ‘mainline this new Diddy heroin’. Mr Combs expressly refers to iTunes and asks the listener to ‘Download me in every resident’. He refers to his CD…

Heritage band name dispute drifts towards the High Court
Artists , Contract , Trade Mark / April 2007
UK

TRADEMARK / CONTRACT Artists The Drifters are one of the longest serving groups in the history of popular music – and hits like Under The Broadwalk., Saturday Night at The Movies and Save The Last Dance for Me have made them pretty influential as well. But now members in the current line up – who are amongst the fifty or so singers who have been in the Drifters, face a legal action from the wife of the band’s ex-manager who claims she owns the right to the name The Drifters. Faye Treadwell claims she is the legal owner of the name – which her husband brought from the original band in 1954 – and that he ran the band as a business, employing various signers to tour and record as The Drifters. Ms Treadwell is bringing an action in the UK against the band known as the Drifters (who themselves have lodged UK and European CTM trade mark applications for the name) and in the USA against a number of ‘Drifters’. A number of states in the USA have already passed laws protecting ‘heritage acts’ saying that at least one original member must be still involved. Recent band name disputes involving original members included…

Apple Computers and Apple Corp end two decades of litigation
Trade Mark / March 2007
UK

TRADE MARK  All areas Apple Inc will now take full control of the Apple brand and license certain trademarks back to the Beatles’ record company Apple Corps for the Beatle’s companies continued use. The dispute dates back to 1980, when the late George Harrison noticed an advert for Apple computers in a magazine. In 1976 Apple Computer’s founder Steve Jobs had adopted a white apple on a black background – with a small bite taken out – as the fledgling company’s logo. Whilst now multicoloured this was very similar to Apple Corp’s own logo which was a ‘plump green Granny Smith’ apple. Harrison felt there was potential for trademark conflict between Job’s mark and Apple Corp trade mark. Apple Corp had been set up by The Beatles in 1968 to manage their business affairs from recording, merchandising and books. The legal battle over the trademark (both the name and the logo) will now end with the added carrot that Beatles’ tracks may now be finally available for legal download – and they are likely to be very popular! The sides reached a settlement in 1981 allowing Apple Computer to use the name as long as it stuck to computers, while The Beatles’…

Domain Name Disputes – The Battle Is Joined
Internet , Trade Mark / March 2007
USA

TRADE MARK Internet ARTICLE LINK  There was a time when it seemed that powerful trademark holders generally prevailed when they sought the transfer of Internet domain names that contained their trademarks. However, recent decisions show that domain name registrants have a fighting chance. This does not mean that trademark holders will not succeed when they seek the transfer of domain names that incorporate their marks – far from it. Yet, recent arbitration results stand for the proposition that domain registrants can try to fight off trademark holders when they can show legitimate uses for their domain names and lack of bad faith. This article is a useful overview of recent ICANN arbitration panel decisions by Eric Sinrod, looking at the marks ‘www.wargames.com’ and ‘www.pig.com’ http://news.com.com/Big+names+may+not+prevail+in+domain+disputes/2010-1030_3-6160795.html?tag=nefd.top

ECHR says TM applications are “property”
Artists , Trade Mark / February 2007
EU

TRADE MARK Artists ARTICLE LINK:  In an important decision ( Anheuser-Busch v Portugal) the European Court of Human Rights have held that trade marks are a possession and therefore qualify for the purposes of the right to peaceful enjoyment of property (Article 1, Protocol 1, European Convention on Human Rights) saying the Court takes due note of the bundle of financial rights and interests that arise upon an application for the registration of a trade mark. It agrees with the Chamber that such applications may give rise to a variety of legal transactions, such as a sale or licence agreement for consideration, and possess – or are capable of possessing – a substantial financial value. See the IPKat athttp://ipkitten.blogspot.com/2007/01/echr-says-tm-applications-are-property.html

Two home wins for Wayne Rooney
Artists , Trade Mark / January 2007
UK

TRADE MARK / DOMAIN NAMES Artists ARTICLE LINK: By Sally Dunston, Bristows Two recent decisions by WIPO and Nominet on the domain names www.wayneroony.com andwww.waynerooney.co.uk are reviewed and compared. See November Law Updates for more. http://www.mondaq.com/article.asp?articleid=44796&email_access=on

Knievel takes exception to Kanyevel
Artists , Image Rights , Trade Mark / January 2007
USA

TRADE MARK /IMAGE RIGHTS Artists Motorcycle stuntman Evel Knievel is suing Kayne West for trade mark infringement over the latter’s “Evel Kanyevel” character who is featured in the ‘Touch The Sky’ promo video. West’s character is dressed in a jumpsuit similar to that which Knievel is famous for wearing recreates a stunt similar to one performed by Knievel in the 70s. Knievel, who has trade marks over his name and image, argues that the video is “directly counter to Evel Knievel’s long-established public persona, utterly inconsistent with his toy products and appeal to children, and harms the reputation of the Evel Knievel trademark and the Evel Knievel costume.” You cans see what our friends at the IPKat say http://ipkitten.blogspot.com/2006/12/kayne-he-do-it.html And see http://www.washingtonpost.com/wp-dyn/content/article/2006/12/12/AR2006121201219.html

The Last Emperor’s image rights cannot be owned
Artists , Image Rights , Trade Mark / January 2007
China

TRADE MARK / IMAGE RIGHTS Artists The brother of the last Emperor of China, Aisin Giorro Pu yi, has lost a claim to protect his late brother’s image rights. Jin Youhzi (originally Aisin Giorro Pu Ren, now aged 88) filed the suit in Bejing saying that an official exhibition in the Forbidden City on his brothers life who ruled China from boyhood till his forced abdication in 1911 “violated the image rights of the deceased and hurt Pu Yi’s survivors”. The exhibition was in the former imperial palace of the Ming and Qing dynasties. Jin’s case which asked for the exhibition’s closure, the payment of legal costs and apologies by organizers to be printed in five national newspapers was first rejected on July 14 by the Beijing Dongcheng District People’s Court before the appeal went to Beijing No. 2 Intermediate People’s Court. The appellate court found against the claimant saying that Pu Yi was a public figure whose life was closely connected with China’s history and these rights were in the public domain. http://www.china.org.cn/english/culture/192106.htm http://newsinfo.inquirer.net/breakingnews/world/view_article.php?article_id=37650 http://english.people.com.cn/200612/11/text20061211_331143.html

A case of look-alikes and smell-alikes: L’Oreal v Bellure (2006)
Artists , Live Events , Trade Mark / December 2006
UK

TRADE MARK Live event industry, artists ARTICLE LINK – Article by Lindsey Wrenn, Lee Curtis and Rebecca Tilbury, Pinsent Masons On the 4th October 2006, the English High Court handed down a judgment which appears to make it easier for trade mark owners to prevent so-called look-alike products by holding that ‘look-alike’ products can infringe a trade mark. Here the packaging of a rival perfume was not identical to L’Oreal’s trade mark so a claim under S10(1) of the Trade Marks Act 1994 could not be brought. The court also held that whilst the packaging was similar to L’Oreal’s and was for the same nature of goods, the defendant had not produced packaging that was confusingly similar to the claimants so a claim failed under section 10(2) of the TMA failed. However, the court found that section 10(3) DID apply in that a person infringes a registered trade mark if he uses in the course of trade in relation to goods and services a sign which (a) is identical with or similar to the trade mark,… where the trade mark has a reputation in the United Kingdom and the use of the sign being without due cause, takes unfair advantage of, or is detrimental to, the distinctive…

Buffet fights online merchandisers
Artists , Trade Mark / December 2006
USA

TRADE MARK Artists Country Singer Jimmy Buffett has filed law suit asking a U.S. federal judge to stop a Web site operator from infringing Buffett’s trademarks. The lawsuit filed in U.S. District Court in Galveston, Texas, accused Robert Akard of operating a Web site, underonehut.com, which sells Buffett-trademarked items without permission. Buffett, one of the biggest selling artists in the world, won a previous court order in Nevada, but it “wasn’t comprehensive enough” and Akard has since surfaced in New York, Florida and Texas, Buffet’s lawyer alleges. Buffett complains that Akard advertises as “Jimmy Buffett’s Online Store for Merchandise,” and sells T-shirts, music CDs and other items that Buffett sells himself. Buffett is asking a judge to order Akard to stop using the singer’s name and likeness, account for his profits, turn infringing goods over to Buffett and pay unspecified damages. http://www.billboard.biz/bb/biz/newsroom/legal_management/article_display.jsp?vnu_content_id=1003381582

BPI welcome successes against CD and DVD pirates
Artists , Copyright , Record Labels , Trade Mark / December 2006
UK

TRADE MARK /COPYRIGHT  Mechandising, record labels, artists  The BPI has welcomed two success stories in the ongoing battle against counterfeit CD and DVD piracy in the UK. The BPI successfully prosecuted James Cowan, his wife Ann Cowan and Andrew Wood, all from County Durham, after a routine anti-piracy operation unveiled a sophisticated bootleg CD enterprise. The three defendants made pirate of copies of CDs and DVDs at a property above a video rental store, and are thought to have made £10,000s a week by selling the pirated material at markets, pubs and industrial units all over the North East. James Cowan was last week found guilty on counts of conspiracy to defraud, tax evasion and benefit fraud. Ann Cowan was found guilty of defrauding the music and film industries, benefit fraud and attempting to pervert the course of justice. Wood, who was allegedly in charge of the pirating operation, had earlier pleaded guilty to counts of conspiracy to defraud and tax evasion. CMU Daily reported that all three will be sentenced in the New Year. The BPI also welcomed the seizure of over 200,000 Bollywood CDs and DVDs following a raid in West London last week. With a value of…

Court Rules Google’s use of trademarks as keywords is non-infringing
Internet , Trade Mark / November 2006
USA

TRADEMARK Internet A federal judge in New York has just ruled that Google’s practice of selling trademarks as keywords that trigger links to particular Web sites other than those of the trademark holders does not constitute infringement because Google does not actually “use” the trademarks within the meaning of the law. This ruling was entered on September 28 by Norman Mordue, the Chief Judge of the United States District Court for the Northern District of New York in the case Rescuecom Corporation v. Google, Inc. Judge Mordue granted a motion by Google and dismissed Rescuecom’s complaint which alleged trademark infringement with respect to Google’s selling of the trademark “Rescuecom” to Rescuecom’s competitors as a keyword that triggers the appearance to the competitors Web sites among the search results of Internet users when they enter “Rescuecom” in the Google Internet search engine. Written by Eric Sinrod of Duane Morris LLP. For more information please see Findlaw.com

Macca applies for trade mark
Artists , Trade Mark / November 2006
UK

TRADE MARK Artists Former Beatle Paul McCartney – known to Sun readers as Macca – has applied to register the surname McCartney for use on goods as wide-ranging as pantihose, waistcoats and vegetarian food. The application was made by his company, MPL Communications, and specifies such disparate items as bath robes, articles of fancy dress, overalls, sports clothing and swimwear. The application also covers meat and poultry, products of which the vegetarian celebrity strongly disapproves. A spokesman for McCartney said the inclusion of meat products was purely defensive. “It would give him protection against his name being used on products he does not approve of” he said. Thanks to our friends at the IPKatfor this (see link details in the next update).

Rooney gets back domain name
Artists , Trade Mark / November 2006
UK

TRADE MARK Artists England and Manchester United football star Wayne Rooney’s has been successful in his bid to have the waynerooney.com domain name transferred to him. The registrant claimed that he obtained the domain name in 2002, after seeing the then sixteen-year old Rooney playing for Everton, being convinced of his potential, and then being motivated to obtain the domain name to set up a fan site which never eventuated. The Administrative Panel of the WIPO Mediation and Arbitration Centre ordered that the mark be transferred. The domain name was found to be identical or confusingly similar to a trade mark, even though Wayne Rooney only registered his trade mark after the domain name was registered, since trade marks registered after domain names can result in a finding of identical or confusing similarity under the UDRP (though it’s harder to find bad faith where the domain name predates the trade mark). The registrant’s supposed desire to set up a fan site did not give him a legitimate interest because this intention was not particularly believable. The panellist in particular highlights that the registrant had no programming experience at the time of registration and did nothing subsequently in order to acquire such skills….

P Diddy settles with DJ Diddy
Artists , Trade Mark / October 2006
UK

TRADE MARK Artists Sean Combs aka Puff Daddy aka P Diddy has agreed not to shorten his name to just ‘Diddy’ after the threat of a High Court action from Richard ‘Diddy’ Dearlove, a successful music producer who has been using the name since 1992. Mr Dearlove sued Combs after learning that the rap superstar was dropping the ‘P’ from his name. The action was listed for a hearing on the 23 rd October. Combs is meeting £100,000 of Dearlove’s costs (subject to court taxation) and paying £10,000 in agreed damages. Combs will have to re-brand any ‘Diddy’ activities in the United Kingdom. The Guardian 9 th September 2005 p3 http://www.guardian.co.uk/uk_news/story/0,,1868383,00.html

US reality show band have problems with name
Artists , Trade Mark / October 2006
USA

TRADE MARK Artists The makers of the second series of the US reality show Rock Star have run into problems over the name of the supergroup the show is aiming to create. The second series of Rock Star, which was responsible for recruiting a new frontman for INXS in series number one, is looking for a frontman to lead a new supergroup that will also include Motley Crue’s Tommy Lee on drums, former Guns N Roses member Gilby Clarke on guitar and former Metallica member Jason Newsted on bass. The plan was to call the new group Supernova, and as such the show is called Rock Star: Supernova. However, there is already a Californian punk band called Supernova, and they have sued the programme’s makers, Mark Burnett Productions and CBS Broadcasting, over their use of their name. With the TV show reaching its conclusion, a judge in San Diego has issued an injunction which bars the programme’s makers or the band they create from “performing rock and roll music, or recording, or selling rock and roll music recordings under the same [name], pending a trial of this action on its merits, or until otherwise ordered by the court”. It appears that the…

Setback for Love in Beach Boys name dispute
Artists , Trade Mark / October 2006
USA

TRADEMARK Artists Mike Love has suffered a set back in his bid to pursue sole ownership of the ‘Beach Boys’ name after Super Court Judge James R Dunn dismissed part of a $2 million lawsuit against ex-bandmate Al Jardine which says that Jardine illegally used the band’s name. Judge Dunn threw out claims of breach of contract and breach of fiduciary duty but gave Love’s lawyer a chance to amend the case before it goes to trial on Nov. 6. The suit claims that Love is the only person legally allowed to perform under the name “Beach Boys” but that Jardine had toured with “knockoff bands” using names such as “Beach Boys Family & Friends.” http://www.billboard.com/bbcom/news/article_display.jsp?vnu_content_id=1003122397

French court bars Google from selling trade marks as adwords
Internet , Trade Mark / August 2006
France

TRADE MARK Internet The Cour d’appel de Paris found that Google had infringed Vuitton’s trade marks, by selling Vuitton’s marks as adwords that were used by sellers of counterfeit or infringing Louis Vuitton products. The most interesting part of the decision is that  Google is ordered to refrain from using adwords on its websites if they are accessible in France, regardless of their top level domain extension (such as .com or hk). From the IPKat – the most excellent and feline friendly IP weblog athttp://ipkitten.blogspot.com/2006/07/bonjour-from-france.html

Europe and US to fight global battle against counterfeit goods
Copyright , Patents , Trade Mark / July 2006
EU
USA

COPYRIGHT / PATENTS / TRADE MARK All areas European and US creative industries have welcomed a new joint EU and US strategy launched by US Commerce Secretary Carlos Gutierrez, EU Trade Commissioner Peter Mandelson and EU Industry Commissioner Gunter Verheugen in Vienna aimed at fighting the soaring global trade in counterfeit and pirate goods. The US President George W. Bush and Commission President José Manuel Barroso will endorse the strategy at the EU-US Summit in Vienna. The industries from many sectors stressed the enormity of the counterfeiting and piracy problem, estimated to be worth 360 billion euros a year: In 2005 film piracy in China was calculated at $2.7 billion and in the US at $3 billion. Music piracy in the UK alone was valued at £414 million last year and in China $400 million – china has a 90% piracy rate.  Overall it is estimated that 5 – 7 % of the global economy is based on counterfeit and pirated goods which can endanger consumer safety, erodes the competitiveness of legitimate businesses, fund crime and undermine the livelihood of workers in innovative and creative industries. The IFPI add that the “June 20th announcement of a joint EU-US strategy and…

Apple Computers survive assault from The Beatle’s Apple Corps
Contract , Internet , Trade Mark / June 2006
UK

TRADE MARK / CONTRACT The internet, technology, all areas Apple Computers survive assault from The Beatle’s Apple Corps: Apple Corps Limited v Apple Computer, Inc. (2006) EWHC 996 (Ch) Apple Corps has lost its High Court action in the United Kingdom to prevent Apple Computers using the mark (name) Apple in connection with it’s iTunes online music store. Mr Justice Mann held that the ongoing use by the computer company has not broken a 1991 deal aimed at ensuring there would not be two ‘Apples’ in the music industry. The first agreement between the parties was in 1981 concerned the use and registration of the word “Apple” and various apple logos. Mann J said “I do not need to set out the detailed terms of that [1981] agreement. In general terms, Computer was allowed to use its marks in relation to computer goods and services, but not use them in relation to computer equipment specifically adapted for use in the recording or reproduction of music, or in relation to operational services relating to music. It was also prevented from using its marks in relation to apparatus specifically designed and intended for synthesising music unless certain restrictions were met. Corps could use its…

Confusion Reigns in Conflicting Keyword Internet Search Cases
Internet , Trade Mark / May 2006
USA

TRADE MARK Internet The US District Court for the Southern District of New York has dismissed trade-mark infringement allegations made by Merck & Co Inc (Merck) against several Canadian online pharmacies.  The pharmacies purchased “Zocor”, the name of Merck’s cholesterol reduction drug, as a keyword to trigger the display of links to the online pharmacies’ web sites on search result web pages. The Court held that: “The ‘Zocor’ mark is ‘used’ only in the sense that a computer user’s search of the keyword ‘Zocor’ will trigger the display of sponsored links to defendants’ Web sites,” and found that: “This internal use of the mark ‘Zocor’ as a key word to trigger the display of sponsored links is not use of the mark in a trademark sense.” Allegations of trade-mark dilution and false advertising against the online pharmacies were not dismissed and will be considered at a later date. The Court’s decision contradicts a recent ruling in the District Court for the District of Minnesota (Edina Realty Inc v TheMLSonline.com) which held that a purchase from a search engine of keywords which were variations of Edina Realty’s business name to trigger advertisements by a competitor was a “use in commerce” and,…

Apple vs Apple By By Nancy B. Adams, MacNewsWorld
USA

CONTRACT / TRADE MARK Internet, record labels ARTICLE LINK  A neat update on the current litigation over the Apple mark which is primarily centered on the agreement between Apple Computers and the Beatle’s Apple Corp in 1991 where the computer firm said it wouldn’t use the Apple mark in connection with the distribution of music …. “It’s an interesting contract interpretation question, since today’s understanding of what is content versus services seems not to have been the understanding at the time the language was agreed upon” http://www.macnewsworld.com/story/K8HE5jy5zmMirn/Logo-Lawsuit-Could-Get-Sticky-for-Apple.xhtml see also http://makeashorterlink.com/?U1892450D and see the article Apple SuesApple Again by Katherine McGinnis in E-Tips Volume 4 No 21 www.dww.com

French court protects a TV programme format using passing off laws: Saranga Production v Canal Plus
Copyright , Trade Mark / March 2006
France

TRADE MARK, COPYRIGHT Television, radio, film ARTICLE: Jonathan Coad, solicitor and Eleanor Adams, solicitor, of Swan Turton After Simons Cowell and Fuller backed away from a full out battle over the format rights to Pop Idol and X-Factor, Jonathan Coad and Eleanor Adams look at a French decision which shows how a programme format can be protected even where no copyright is found to subsist in a format, here by using the laws of passing off. The Paris High Court has given protection for a television programme format under the law of passing off. The claimants, Saranga Production, produced a format for a political docu-drama show entitled Crise en direct. The broadcaster, Canal Plus, one of the defendants, sought proposals from production companies for a new politically themed programme. The claimants met with the defendants and presented their ideas. Canal Plus then commissioned a different production company to produce programmes using themes and characteristics in the claimants’ format. The defendants, Canal Plus, a production company and two journalists involved in production, were then responsible for producing and broadcasting a programme entitled C’est déjà demain.  The claimants brought an action for passing off in respect of the programme C’est déjà demain….

Search Engine Marketing & The Law – an Update
Copyright , Internet , Trade Mark / March 2006
UK
USA

COPYRIGHT, TRADE MARKS Internet ARTICLE: By Nicola McCormick, solicitor, Michael Simkins LLP Search advertising is presently estimated to account for around 40% of US/UK online marketing spend and the total spend will almost certainly continue to increase. The purchase of key words to trigger banner ads or sponsored listings is hugely important- although crawler listings cannot be bought and rankings cannot be guaranteed.  The public understand this and largely trust organic search results to point them to the most relevant content-rich sites. For this reason a good search result ranking is a hugely significant means of driving traffic to a website.   No matter what ingenious new marketing techniques are developed, online ranking manipulation will remain popular, so in what way does UK law apply to search engine optimisation (“SEO”)? Solicitor Nicola McCormick explains   More than just Meta-tagging A couple of years ago much was written about the legality of using a competitor’s trade marks in meta-tagging as a form of SEO.  The reported UK and US cases did not give a definitive statement as to when such use was permissible; cases rarely do.  However, the broad principle was that such use was permitted when it was justified.  US cases in particular were more…

Whose On-line is it anyway?
Internet , Trade Mark / March 2006
UK

TRADE MARK Internet ARTICLE Article by Matthew Dick A recent appeal from the UK Trade Marks Registry to the High Court has emphasised the need for trade mark owners to file evidence correctly, particularly when seeking to establish a reputation in a mark. E! Entertainment Television Inc applied to register the mark E! ONLINE in relation to a broad range of goods and services in the field of telecommunications…. LINK TO http://www.mondaq.com/article.asp?articleid=37622&email_access=on

GEICO v Google settlement still provides food for thought
Internet , Trade Mark / February 2006
USA

TRADE MARK Internet ARTICLE by Jason Patrick Kairalla of Jorden Burt LLP With little fanfare, the presiding federal district judge in the GEICO v. Google case issued the much anticipated and long-awaited written order on Google’s motion for judgment on the pleadings in the action of using competitors trade marks in internet search engine based advertising. Whilst Google may have escaped a decision on their liability the fact remains that it appears that actual use of a competitors trade mark in advertising to drag internet customers to a competitors site may well result in liability for trade mark infringement in the US. http://www.mondaq.com/article.asp?articleid=37262&lastestnews=1

When marks are confusingly similar
Artists , Record Labels , Trade Mark / February 2006
UK

TRADE MARK Merchandising, artists, record labels ARTICLE by Lee Curtis, Pinsent Masons Probably one of the most subjective areas of trade mark law is the question of when are two trade marks confusing similar. Whether one trade mark will be confused with another is dependent on a number of factors and this article examines the UK law in this area. http://www.mondaq.com/article.asp?articleid=37184&lastestnews=1

Wyrder And Weirder – Choosing And Protecting A Name
Artists , Trade Mark / January 2006
Canada

TRADE MARK Artists Article by Sharon E Groom of McMillan Binch Mendelsohn LLP This article looks at protecting band names and uses the recent law suit by the Canadian band The Wyrd Sistersagainst Warner Bros. for the alleged use of their name The Wyrd Sisters as the name of a band in the new film Harry Potter and the Goblet of Fire. The real life band has been around for 15 years and is claiming that the publicity that has been generated by the use of their name in the film (even prior to the film’s release) has created an unwanted association between their band and the film. As a result, they claim that people are going to be confused between the real band and the fictitious movie band. In addition to damages, the group is seeking an injunction to delay the release of the movie in Canada pending the resolution of this matter. The article goes on to review how you should go about choosing and protecting a name, slogan or logo for your business or other venture, to ensure that you do not infringe the rights of others and that you have the best possible protection for your name LINK http://www.mondaq.com/article.asp?articleid=36620&email_access=on

The Royal Society of Arts launches Adelphi Charter
Copyright , Patents , Trade Mark / December 2005
UK

COPYRIGHT, TRADE MARKS, PATENTS All areas The UK-based Royal Society for Arts (Royal Society for the Encouragement of Arts Manufacture, and Commerce – the RSA) has released their Adelphi Charter which outlines how the international community could and should change domestic and international intellectual property laws to better serve the public interest.  In particular, the Adelphi Charter calls for a better balance between rights protection and the public domain, since the RSA suggests that the current schemes overly favour the protection of rights.  The Charter lays out a “public interest” test that governments should have to meet before creating or extending intellectual property rights.  The proposed test includes a presumption against creating new areas of intellectual property protection, extending existing privileges or extending the duration of rights, unless those seeking the change can establish though rigorous analysis and proof that the change will promote basic rights and economic well-being.  The Charter also calls for extensive public consultation regarding changes to intellectual property laws.  The charter recognises that creative effort should be rewarded but at the same time states that the laws breadth, scope and term over the last 30 years has resulted in a modern intellectual property regime which is radically out…

Hong Kong – are slogans registerable as trade marks?
Artists , Internet , Trade Mark / December 2005
Hong Kong

TRADE MARK Merchandising, artists, internet ARTICLE:  This useful article looks at decisions in Hong Kong where the registrar of trade marks has confirmed that the same test of distinctiveness applies to slogans and other types of mark. The test of distinctiveness is laid down in British Sugar plc v James Robertson & Sons Ltd [1996] PRC 281 and elaborated in Nestle SA’s Trademark Application (Have a Break) [2004] FSR 2. Pursuant to British Sugar the question is whether a mark can be regarded as distinguishing, without first telling the public that it is a trademark. Nestle’s Have a Break adds that the distinctiveness must identify a product as originating from a particular undertaking. Reference to the goods for which registration is sought and the expectations of reasonably well-informed and circumspect consumers are factors to be considered. In Hong Kong noneof ‘Im lovin it’, ‘Your world is myworld’, ‘The Game Des!gners Studio’ and ‘Life made easier’ passed these tests (although the McDonalds slogan, I’m lovin it has been registered in Australia and New Zealand). LINK to http://www.mondaq.com/article.asp?articleid=35698&email_access=on

Beatles claim Apple mark continues to infringe
Internet , Record Labels , Trade Mark / December 2005
UK

TRADE MARK Record labels, internet John Lennon’s solo material will be made available for digital downloading before this Christmas – on almost every platform (like HMV and Virgin) save Apple’s iTunes. The Beatle’s Apple Corp remain locked in a trademark battle with the computer company over use of the name ‘Apple’. The band reached an agreement in 1981 with Apple Computers over the use of the trademark – which they claim has been breached by Apple branching out into the music download market – and therefor the music business itself. It is understood that in 1981 the computer company agreed that it would not use the mark in the music business The Times 9 th November 2005

Beach Boys litigation resumes as Love takes on Wilson
Artists , Trade Mark / December 2005
USA

TRADEMARK Artists Beach Boy Mike Love has filed a law suit against cousin and former Beach Boy Brian Wilson over the latter’s release of the concept album Smile which Wilson released in 2004 and a free CD giveway. The suit alleges the misappropriation of Love’s songs, likeness and the Beach Boys trademark. Smile was first recorded in 1967 but was disowned by Love and the album was, in effect, a Wilson solo project. However album was never completed and Wilson suffered a breakdown and withdrew from public life. Wilson was the Beach Boys main songwriter and although most tracks on Smile are written by Wilson and lyricist Van Dyke Parks, Love co-wrote the classic ‘Good Vibrations’ and maintains a share of the copyright in this. The trade mark issue relates to the band’s name: The remaining band members continued to perform after Wilson’s departure although both Dennis Wilson and Carl Wilson have now died (in 1983 and 1998 respectively). Love has continued to perform as the Beach Boys and has a licence to do so granted by Brother Records Inc which owns the Beach Boys Trademark. Brother itself is equally owned by four original members, Brian Wilson, Alan Jardine, Mike Love and…

Image Rights: new article
Artists , Image Rights , Trade Mark / December 2005
UK

TRADE MARK Artists This is a link to the article Intellectual Property; Protecting image as trade mark by Dr Peter Groves, Solicitor. Bircham Dyson Bell “ There are no image rights in English law, unlike the position in several other countries.  However well-known a person might be, their image is not something that attracts protection of itself.  They cannot stop photographs being taken, or even published. But the law has come to their assistance in small ways, such as the recognition by the courts that falsely claiming the endorsement of a celebrity may amount to passing-off (Edmund Irvine v TalksportLtd[2002] EWHC 367).  Copyright, libel, malicious falsehood and the Trade Descriptions Act 1968 may also be useful. In addition, the Trade Marks Act 1994 tells us that among the various things that can be registered as trade marks are personal names ….. “ http://www.spr-consilio.com/art11.htm Also see Law Updates November 2005 Trademark – Manchester United’s manager fails to protect his own name on posters

ICANN approves more top level domain names
Artists , Record Labels , Trade Mark / November 2005
EU
USA

TRADE MARK Telecomms, Artists, Record Labels, Film, Television ICANN (Internet Corporation of Assigned Names and Numbers) has approved the designation of three new generic Top Level Domain Names (TLDs)- mobi, .travel, and .jobs.- and is reviewing six more TLDs. Applications for domain names in the .jobs and .travel TLDs are now being accepted. ICANN has approved the .mobi TLD, and details regarding the beginning of registration will soon be available. In addition, ICANN has also preliminarily approved the launch of four more TLDs -.post, .cat, .tel, and .xxx and has entered into commercial and technical negotiations with the sponsors of these TLDs. Finally, ICANN is reviewing the applications for .asia and .mail TLDs. See : http://www.mondaq.com/article.asp?articleid=35082&email_access=on

Manchester United’s manager fails to protect his own name on posters
Artists , Trade Mark / November 2005
UK

TRADE MARK Artists, Merchandising Sir Alex Ferguson, manager of the iconic and world famous Manchester United Football Club has claimed that his human rights have been abused after the United Kingdom’s Trade Mark registry (Patents Office) refused an application to trade mark his name for posters because he is ‘too famous’. The adjudicator, Charles Hamilton, found that when consumer purchased a poster featuring Ferguson’s name they would not think that this was an ‘endorsement’ by the manager. The test is whether or not a consumer buying the poster thought that ‘Alex Ferguson’ referred to the person featured on the poster OR to the person who made the poster. If it only applies to the former then no protection will be granted as this is just descriptive. This is has led to the position that non famous sports, entertainment and music stars can trade mark their (distinctive) names before they are famous but once a name passes into the public’s consciousness it is far more difficult to secure a registration especially for items such as posters where a name would not be seen as a ‘badge of origin’, merely a name on that poster which may or may not be endorsed by the…

BBC paid $375,000 for domain name
Artists , Internet , Trade Mark / November 2005
UK

TRADE MARK Television, Artists, Internet The British Broadcasting Corporation (BBC) have finally admitted that they paid US $375,000 to Boston Business Computing to secure the www.bbc.com top level domain (TLD) in the late nineties. As the US firm had a legitimate claim to the acronym ‘BBC’ there was no question of bad faith or trade mark infringement and it is difficult to see how any legal challenge (usually by way of a WIPO domain name claim) would have resulted in the British Broadcasting Corporation securing the domain name. The domain is still not used fully by the BBC and just directs users to the bbc.co.uk website which is the main UK URL for the BBC. The .com domain may be used in the future for an international portal for the BBC’s website. The Times, 9 October 2005

Ownership of domain names used for criticism and review
Internet , Trade Mark / November 2005
USA

TRADE MARK Internet “In a victory for free speech advocates and operators of so called internet gripe sites” the U.S. Court of Appeals for the Fourth Circuit reversed a summary judgment ordering domain name registrant Christopher Lamparello to cease using the name “fallwell.com” and to transfer it to the controversial televangelist and political commentator Jerry Falwell. In its decision, the Fourth Circuit rejected Falwell’s trademark infringement and cybersquatting claims because there was no likelihood of confusion between Falwell’s web site and trademarks and Lamparello’s use of the domain name “fallwell.com” to criticize Falwell’s views on homosexuality. Lamparello v. Falwell, Case No. 04-2011, 2005 U.S. App. LEXIS 18156 (4th Cir. Aug. 24, 2005) (Motz, J.)” For a link to this article by James Griffith go to : http://www.mondaq.com/article.asp?articleid=35338&email_access=on

Use of ‘Doors’ name restricted
Artists , Trade Mark / September 2005
USA

TRADE MARK Artists Original Doors members Ray Manzarek and Robby Kreiger along with ex Cult frontman Ian Astbury have been banned from using the band’s name while touring. This follows legal action brought by original drummer John Densmore and the families of Jim Morrison and Morrison’s then girlfriend in the United States. Keyboard player Manzrek, guitarist Krieger and vocalist Astbury have been touring as the Doors of the 21st Century since 2002. The suit from the parents of late rock star Jim Morrison claimed that by re-forming the band with another singer, Manzarek and Kreiger had “maliciously misappropriated” the name. George and Clara Morrison claimed breach of contract, unfair competition and trademark infringement in a Los Angeles Superior Court lawsuit and sought unspecified damages and to put a stop to the new incarnation of the band. Manzarek and Kreiger were also sued by the parents of Morrison’s late girlfriend, Pamela Courson, who, according to the lawsuit, owns half of the rock icon’s share in the Doors. The Morrison lawsuit alleged that “over the past 37 years the legendary rock band the Doors … has become one of the most distinctive names in contemporary music,” the lawsuit said and that the…

Megadeth singer sues bassist over use of band name in advert
Artists , Trade Mark / September 2005
USA

TRADE MARK Artists In a slightly unsual case Megadeth’s lead singer has accused their ex-bassist of using the heavy metal group’s name without permission. However the use is not as part of a touring band or on an album but as a historical record of the bassist David Ellefson’s membership. Band founder and vocalist David Mustaine claims he and Ellefson had an agreement restricting Mr Ellefson’s use of the group’s name. Mr Mustaine says an advert Mr Ellefson made for musical equipment contravenes this deal. He is seeking unspecified compensatory and punitive damages. In the legal action filed at Los Angeles’ Superior Court, Mr Mustaine stated that Mr Ellefson “shall not use the work or mark ‘Megadeth’ to advertise, market or promote any product or service”. Mr Mustaine claims that an advertisement in Bass Player magazine, which features Mr Ellefson holding a pedal tuner for bass guitars and includes the names of bands he is involved with – including Megadeth – breaks a settlement agreement both parties entered into which prevented Mr Ellefson using the band’s name – even thought the use is not as a direct endorsement. See: http://news.bbc.co.uk/1/hi/entertainment/music/4721497.stm

Trademarks in India
Trade Mark / September 2005
India

TRADEMARKS General This is a link to the article India: Trade Marks: Identity that Demands Protection by Rajkumar Dubey (Dubey & Partners, Advocates) which gives a good descriptive account of trade mark law in India. See: http://www.mondaq.com/about.asp?section_id=5&product_id=9

Websites and the law in the UK
Copyright , Data Protection , Internet , Trade Mark / September 2005
UK

COPYRIGHT, TRADE MARK, DATA PROTECTION Internet This is a link to a useful article by John Simmons of Collyer-Bristow, solicitors, on managing to stay within the law with a UK website: ‘Keeping Your Website Legal’. See: http://www.mondaq.com/article.asp?articleid=33903&email_access=on