The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Tuesday, 24 April 2018

No likelihood of confusion between ‘Bobo Cornet’ and ‘Ozmo Cornet’, says the General Court

In November 2013 the intervener before the General Court (GC), Elka Zaherieva, filed for an application for registration of an EU trade mark (EUTM) for the following figurative sign:


The application was for a trade mark for goods and services in Classes 29 (milk beverages, milk products), 30 (Frozen Yoghurt, confectionary ices), and 32 (Non-alcoholic beverages, milk, chocolate and peanut beverages) of the Nice Classification.

The application was published in January 2014 and was subsequently opposed by Şölen Çikolata Gıda Sanayi ve Ticaret (the party to the GC proceedings) pursuant to what is now Article 46 of Regulation 2017/1001 (EUTMR). 

Based on what is currently Article 8(1)(b) EUTMR, the opposition claimed that the applicant's sign conflicted with the earlier international registration for goods and services in Class 30 (Cocoa, cakes, chocolates, chocolate creams, cakes with cocoa milk and chocolate cream) of the Nice Classification:


The EUIPO Opposition Division rejected the opposition in its entirety. The decision was subsequently appealed to the Fourth Board of Appeal, which also dismissed the appeal.

The decision of the Fourth Board of Appeal

The Fourth Board of Appeal took in fact the view that the signs are visually dissimilar (notwithstanding the word ‘cornet’), in view of the dominance of the figurative elements in the mark applied for, and in particular the element of the rabbit which constitutes a “striking feature” of the applicant’s sign. The mere fact that the word ‘bobo’ and ‘ozmo’ share the same vowel ‘o’ does not make the two marks similar. In addition, the initial element ‘ozmo’ of the earlier international registration and the initial element ‘bobo’ of the mark applied for are likely to have had more of an impact on the overall visual and phonetic impression than the final element ‘cornet’. 

The General Court’s installment

The holder of the OZMO CORNET trade mark appealed the decision to the General Court (GC) on two grounds:

i)        First, holding that the Fourth Board of Appeal had infringed Article 8 (1)(b) (likelihood of confusion in relation to relative grounds for refusal) EUTMR, and
ii)       Secondly, alleging infringement of Article 94 EUTMR, in particular breach of the duty to state reasons and breach of the duty of diligence.

The GC issued its decision (T-648/16) a few days ago.

The present analysis will only focus on the first point, i.e. the likelihood of confusion, as this appears to me the most interesting aspect of the decision.

Likelihood of confusion between BOBO CORNET and OZMO CORNET?

The holder of the earlier trade mark claimed that the Board had erred in its comparison of: (1) the goods; (2) the signs (visually, phonetically and conceptually); as well as (3) likelihood of confusion between them.

The relevant public

The GC started by noting that the goods in question are everyday consumer goods directed at the general public with an average level of attention.

Comparison of the signs

In order to assess the similarity of the goods the Court conducted a global assessment of the signs, bearing in mind their distinctive and dominant components. The average consumer normally perceives a sign as a whole, rather than in its individual components. Only if other components are negligible would the assessment of similarity be carried out solely on the basis of the dominant elements.  

(1) The visual comparison

According to the holder of the earlier trade mark, the dominant element in the mark applied for consists of the terms ‘bobo’ and ‘cornet’ and not the image of the rabbit.

The Court did not accept this and found that the Fourth Board of Appeal had not erred when it found that the representation of the rabbit holding an ice cream cornet is the dominant feature. This is because that representation occupies two thirds of the mark applied for, and therefore constitutes a particularly striking feature of that sign.  

Furthermore, the verbal elements ‘bobo’ and ‘cornet’ framed by a thin black line depicting a cloud in the upper left-hand corner, even though not insignificant, occupy a less prominent position than does the representation of the rabbit holding the ice cream cornet. Among those verbal elements, the initial element ‘bobo’ has a more visual impact than the final element ‘cornet’, given the larger size of its letters in relation to those of the word ‘cornet’.

Therefore, the Fourth Board of Appeal was correct in finding that the initial element ‘ozmo’ is likely to have a greater visual impact than the element ‘cornet’. The word ‘ozmo’ is written in larger letters than the word ‘cornet’ and is framed by a thin black line. 

(2) The phonetic comparison

Also with regard to this point, the Fourth Board of Appeal did not err in finding that the words ‘bobo’ and ‘ozmo’ will have a greater phonetic impact amongst the relevant consumers than the word ‘cornet’. This is because the two words considered together constitute a relatively long combination and it is therefore likely that the relevant public will pronounce only the first word of each of them when purchasing the goods designated by those combinations. This is especially the case for the part of the relevant public with an understanding of the meaning of the word ‘cornet’ which will perceive that word as having a descriptive character and will therefore refrain from pronouncing it when making the relevant purchase.

Kat cornet
(3) The conceptual comparison

The assessment of the degree of conceptual similarity involves consideration of the distinctive and potentially descriptive character of the common elements of the sign at issue in light of the goods or services in question.

In the present case, regard must be taken of the presence of the rabbit holding a cornet which assumes a dominant character in the mark applied for, the absence of any comparable figurative element in the earlier international registration, and the absence of any concept conveyed by the words ‘bobo’ and ‘ozmo’, respectively.

The GC observed that as for the word ‘cornet’, it is correct that the verbal element is present in the two signs. However, that word is descriptive and, as such, is a non-distinctive element. Having regard to the absence of any concept conveyed by the words ‘bobo’ and ‘ozmo’,  and to the presence of a dominant figurative element in the mark applied for – the mere circumstance that that verbal element is present in the two signs at issue cannot in itself introduce even a low degree of conceptual similarity. Therefore there is no conceptual similarity.

Global assessment of the likelihood of confusion

According to settled case law, the existence of a likelihood of confusion presupposes both that the mark applied for and the earlier international registration are identical or similar. Furthermore, the goods or services that are the subject of the application for registration ought to be identical or similar to those in respect of which the earlier international registration has been registered. These conditions are also cumulative (Gateway v OHIM, C57/08 P).

In light of the above , the dominant character of the rabbit holding the cornet in the mark applied for, the visual and phonetic difference between the two marks in question, the words ‘bobo’ in the mark applied for and ‘ozmo’ in the earlier registered mark, and the secondary character of the word ‘cornet’ having regard to its position, size and descriptive character,  the GC found that the Fourth Board of Appeal was correct in finding that there is no likelihood of confusion between the two marks. Hence, registration of the BOBO CORNET sign would not conflict with the earlier OZMO CORNET registration.

Monday, 23 April 2018

BREAKING: 9th Circuit rules that Naruto has no standing under US Copyright Act

Naruto 😍
If you thought that the infamous Monkey Selfie case was over, well, you were ... wrong!

A few weeks ago IP enthusiasts were in fact 'thrilled' to learn that - despite the out-of-court settlement agreement concluded in 2017 - the US Court of Appeals for the 9th Circuit would rule anyway on the case brought by PETA (as next friend) against now economically struggling wildlife photographer David Slater over copyright ownership of a series of selfies taken by Celebs crested macaque Naruto.


Today, the Court has ruled that 'an animal ha[s] constitutional standing [Article III standing] but lack[s] statutory standing to claim copyright infringement of photographs known as the "Monkey Selfies."' 


More specifically, the panel confirmed that the "[US] Copyright Act does not expressly authorize animals to file copyright infringement suits."


Background



But what happened before today's ruling? Here's a quick recap.

In 2014 the Wikimedia Foundation rejected Slater’s takedown request to remove from a Wikipedia page one of the photographs taken by Naruto. The Foundation did so on grounds that no copyright could subsist in a work created by an animal. It also concluded that the argument by Slater that he had befriended a group of macaques and set up the photographic equipment, so that they would use it and possibly take pictures (with him editing the resulting photographs) held no value.

In a separate lawsuit against Slater, PETA – admittedly on behalf of Naruto (as 'next friend') – sought a decision that would acknowledge that works created by an animal hold a valid copyright, of which the animal, as author, is the owner. More specifically, PETA alleged that the defendants had infringed Naruto’s copyright pursuant to sections 106 and 501 of the US Copyright Act, by displaying, advertising, reproducing, offering for sale, and selling copies of the Monkey Selfies.

In 2016 the US District Court for the Northern District of California dismissed the action, on grounds that “the [US] Copyright Act does not confer standing upon animals like Naruto”.The court recalled that the notions of ‘works of authorship’ and ‘author’ are not defined in the statute. This was a deliberate choice on the side of the legislature, intended “to provide for some flexibility.” 

However, the court referred to a case decided in the area of environmental law: CetaceanThere, the Cetacean Community, created by the “self-appointed attorney for all of the world’s whales, porpoises, and dolphins,” had brought an action on behalf of the Cetaceans for violations of the Endangered Species Act, the Marine Mammal Protection Act, and the National Environmental Policy Act. The 9th Circuit examined the language of each statute and excluded that US Congress had wished to confer standing on animals. The court concluded that: “if Congress and the President intended to take the extraordinary step of authorizing animals as well as people and legal entities to sue, they could, and should, have said so plainly.” 

According to District Court hearing the Monkey Selfie case, a similar conclusion could be reached in relation to the US Copyright Act. Decisions of the US Supreme Court and 9th Circuit have referred to ‘persons’ or ‘human beings’ when addressing issues of authorship. In addition, in its Compendium of Copyright Practices, the US Copyright Office clearly states that:

“To qualify as a work of “authorship” a work must be created by a human being. See Burrow-Giles Lithographic Co., 111 U.S. at 58. Works that do not satisfy this requirement are not copyrightable. The Office will not register works produced by nature, animals, or plants.”

Kat Selfie
The Compendium specifically refers to “[a] photograph taken by a monkey” as an instance of work that cannot be protected. Courts take into consideration the US Copyright Office’s interpretation in appropriate circumstances, and in this case the District Court also referred to the Compendium to conclude that Naruto could not be the author of a protectable work.

Further to an appeal filed by PETA before the 9th Circuit, the case was (initially) settled out of court. 

Today's ruling

In today's ruling Circuit Judge Bea questioned, first of all, PETA's assertion of its 'next friend' status to represent claims made for Naruto, also because an animal cannot be represented by a 'next friend'. Concluding otherwise would conflict with Cetacean, in which the 9th Circuit held that a group of cetaceans could demonstrate Article III standing. Hence, Naruto's Article III standing would not depend on PETA's sufficiency as a guardian or as a 'next friend'.

This said, Circuit Judge Bea turned to consideration of Naruto's standing under the Copyright Act, and concluded that "[s]everal provisions of the Copyright Act ... persuade us against the conclusion that animals have statutory standing to sue under the Copyright Act." Among other things, the judge referred to the fact that the Act:
  • Allows the children (whether legitimate or not) of the author to inherit certain rights;
  • The author's widow/widower owns the whole of the author's entire termination interests, unless there are surviving children/grandchildren (in which case he/she would own half).
"The terms 'children', 'grandchildren', 'legitimate', 'widow', and 'widower' all imply humanity and necessarily exclude animals that do not marry and do not have heirs entitled to property by law.", wrote the Court.

Comment

The conclusion is not particularly surprising. While the Monkey Selfie case might seem like an 'unusual' one, it raises important issues that will likely become more sensitive in the foreseeable future. 

The question of non-human authorship and ownership of copyright in works created by non-humans is not really (or just) about whether a monkey can be the owner of copyright in the photographs that it takes, but whether increasing sophisticated technologies, eg under the umbrella of artificial intelligence, would (and should) result in the broadening of the understanding of what (rather than who) an author is. 

If you are wondering what artificial intelligence is already doing in the creative field, you can listen to this or take a look at this.

Never Too Late: if you missed the IPKat last week!

The 190th edition of Never Too Late is here to help you with your catch-up of everything on IPKat over the last couple of weeks (2nd-15th April)! Highlights include an event report on autonomous cars, user-rights relating to the "first Instagram masterpiece" and a book review of a mystery novel written by a former patent attorney. 

Copyright

Guest Kat Nedim Malovic asks whether an ISP can be required to hand over its subscribers' IP addresses in online copyright infringement cases: Swedish Patents and Market Court of Appeal says that an ISP may not be required to hand over information about subscribers’ IP addressesThe Swedish Patents and Market Court of Appeal ruled that this might not always be the case, in contrast to the decision at first instance and other Swedish courts' recent decisions (see here). The case concerns UK-based Copyright Management Services (CMS) and the Swedish internet service provider Tele2. 

Kat Eleonora Rosati summarises her contribution to the 26th Fordham IP Conference, one of the most notable annual events for the IP enthusiasts: The EU copyright reform and the legacy of CJEU case law: lip service?


Enjoying the spring sunshine

In Rich writer, poor writerAsia Correspondent Tian Lu explores the meaning of "IP-able" in China, i.e. the films and television plays adapted from popular copyright works such as animations, novels, games and songs. Tian analyses the income disparity between "pure-literary" writers and screenwriters, a situation exacerbated by the relatively low damages awarded by the Chinese courts for copyright infringement of literary works. 


Patents

InternKat Rose Hughes turns her attention to the topics of claim interpretation and infringement in a recent decision by the UK Court of Appeal: Regeneron v Kymab - Part II: Interpretation and Infringement. Also, here is Rose’s previous analysis of the court’s conclusions on sufficiency in the same judgement.


Social Media

Departing from the heated topics currently involving Facebook, privacy and data protection, David Serras Pereira (SPAutores) reflects on the social media giant’s global music strategy and its investment in music-related activities: Facebook and music rights: the “not-so-heard-not-GDPR-related-news”. Will it be the new music global service?

A social media project created by an Argentinian artist, Amalia Ulman, may be “the first Instagram masterpiece”, a “sensation of contemporary art”, but what light does the user-rights context shed about this “experiment”? Kat Neil Wilkof explains: Are viewers of on-line contents entitled to the truth? “Excellences & Perfections” and the saga of Amalia Ulman

Event Reports - Autonomous Vehicles

Guest Kat Luke Maunder (Bristows) reports on the British Computer Society event on whether we are ready for autonomous vehicles: What is the final destination of autonomous vehicles? Luke provides an overview of the talks, covering the story of self-driving cars to-date, the current situation, predictions for the future, and the practical and ethical issues associated with autonomous vehicles. 


Does this car have a mind of its own?
GuestKat Rosie Burbidge shares her impressions from a panel discussion, More Than Just a Game Conference London IV. The focus was on a wide variety of perspectives on IP and interactive entertainment from the publisher and developer points of view,  from both  the UK and US legal perspectives: More than just a game - IP and interactive entertainment.

Trade Secrets

Kat friends Sture Rygaard and Emil Jurcenoks (Plesner) report on the recent adoption of The Danish Act on Trade Secrets: The Danish Act on Trade Secrets has now been adopted. The new act is a very literal implementation of the EU Trade Secrets Directive ("Directive"). Sture and Emil provide an outline of the parts of the act of particular importance to Denmark, including the provisions for damages and criminal sanctions.


Book Review

Kat Neil Wilkof reviews a new mystery novel, entitled “The Devil’s Dice”, written by  former patent attorney Roz Watkins, together with an interview with the author as she reflects on migrating from patent law to fiction: From IP practioner to murder mystery author: Roz Watkins and "The Devil's Dice" (a pity about that patent attorney in the opening scene).


*This is a joint post by InternKats Ieva and Rose*

PREVIOUSLY ON NEVER TOO LATE

Never Too Late 189 [week ending 1 April]  It is the year 2050, and the last trademark litigator has retired | RETROMARK: A year of trade marks - Part 1: Costs after Cartier | Right of publicity not a right to control one's own image by censoring disagreeable portrayals, says appeals court in de Havilland case | EU Commission publishes paper on consequences of Brexit on copyright | Brexit 'cliff-edges' - Alliance for Intellectual Property paper | Del Toro and The Shape of a Lawsuit | Copyright, exceptions and cultural institutions: Australia is listening! | Google cannot hide behind its algorithms, German court finds | Does the InfoSoc Directive envisage digital exhaustion? Questions in the Tom Kabinet CJEU reference finalized (at last) | Court of Appeal, following EPO, reverses Carr J in Regeneron v Kymab dispute | Regeneron v Kymab - Part I: Sufficiency | How do you protect patents from judicial and expert hindsight? | Weekly Roundups: Monday Miscellany

Never Too Late 188 [week ending 25 March]  Shenzhen court issues written judgment in Huawei v Samsung case | Controversy looming for this year's pre-EQE | Courts continue to struggle to find appropriate forms of injunctive relief when social media is involved: Frank Industries versus Nike | Investment disputes, trademarks and licences, and ICSID tribunals-"Bridgestone v. Panama| Will trade mark law stop Marine Le Pen's new campaign? | Eventt Report: INTA Designs Conference 2018 | French court finds appropriation of photograph not sufficiently 'transformative' and therefore infringing | Swedish Supreme Court says that painting based on photograph is new and independent creation and hence...non-infringing | The 5 Pointz case: a response (on the risk of cultural gatekeeping in copyright) | National and EU text and data mining exceptions: room for coexistence? | Book Reviexs: Research Handbooks on Copyright Law and History of Copyright Law | Book Review: Certification and Collective Marks | Weekly Roundups: Around the IP Blogs!

Never Too Late 187 [week ending 18 March] Irish Government proposes introduction of Irish text and data mining exception | Infighting at Nigeria’s main collecting society – Powers of the sector regulator | Unlawful street art used in a promotional campaign: H&M withdraws its complaint | General Court confirms that ‘La Mafia se sienta a la mesa’ cannot be a trade mark on public policy grounds | Nando's v Fernando's: Food for thought | Spanish Supreme Court puts an end to a “sui generis” case concerning database “sui generis” right |  The protection of genetic resources, traditional resources and folklore 35 meetings later… | Book review: ‘Rethinking Intellectual Property – Balancing Conflicts of Interest in the Constitutional Paradigm’ | Friday Fantasies

Never Too Late 186 [week ending 11 March]
 The best and the brightest: key UK and EU design decisions from 2017 | German design law on the brink of change following yesterday's CJEU decision in DOCERAM v CeramTec | Greece: new notice and take down administrative mechanism for online copyright cases now in force | A new type of authors' organization: an exclusive interview with the Executive Director of Authors Alliance | Can Mattel be prevented from making its own Frida Kahlo Barbie doll? | The 5 Pointz case: Should works of art be protected from destruction? | 9th Circuit ‘slam-dunks’ claim of copyright infringement by Nike photograph of Michael Jordan and ‘Jumpman’ logo | Gutenberg.org loses to German publisher and is found liable for damages | AIPPI UK Event Report: Registration, notice and infringement - is certainty an illusion? | L'Oréal v RN Ventures: exclusive licence registration and costs recovery | Eighth Granted Petition for Review | In Memoriam Trevor Baylis: the life-saving wind-up radio and the precarious lot of the sole inventor


China to adopt punitive damages for IP infringement – An economic commentary

The IPKat is happy to publish the following guest post by Roya Ghafele (OxFirston the important issue of punitive damages from an economic perspective.

Here's what Roya writes:

“China is to adopt punitive damages for IP infringement, according to information from Reuters and the New York Times. This is an approach with which the United States is intimately familiar with. To the skilled political economist, the key question in applying legal remedies, be they damage awards or injunctions is that they should be welfare enhancing: ‘If Courts understate damages, the distributional damage remedy may disappear altogether. However, if Courts overstate remedies, then this gives way to strategic behaviour and opportunism and extortion.’  

How to strike such a balance should be core to any governance structure for IP enforcement. The advantage of damages awards is that they allow to offer an award based on the value of the patented technology and not the nuisance from an injunction. For this to happen under fair and equitable conditions, damage awards need to be more systematically assessed from an economic point of view and the practice of IP valuation and damage calculation further promoted. When sound economic principles are applied to the assessment of damages, they allow indeed to model the value of a patent, be it in the eye of the infringer or of the rightholder.

For this to happen, China, like many other countries, would need to come to grips with the economic analysis of damages. Raising the traditionally low damage awards in China may hence be in fact welfare enhancing as it will allow to model damage awards according the economic merits of the case, provided China or its trading partners are willing and able to help build economic competences as they relate to the assessment of damages. This will require to further promote the practice of IP valuation when assessing damages. If Courts want to apply damage awards correctly, they will need to systematically apply IP valuation methods. Finding the right amount of damages is not infeasible: IP valuation methods are used for sales, licensing, litigation, tax, and accounting purposes.

At the same time, China may want to consider to re-think its practice of issuing quasi-automatic injunctions. In fact, UC Berkeley scholar Renjun Bian analysed all publicly available final patent infringement cases decided by local people’s courts in 2014, which amounted to a total of 1,663 patent infringement judgments.  He finds that all plaintiffs won in 80.16% of all patent infringement cases and got permanent injunctions automatically in 90.25% of cases. Hence China, has been reported to issue a permanent injunction on a quasi- automatic basis in over 90% of all cases where a judge ruled that a patent was valid and infringed.

The inherent challenge with an injunction that is issued on a quasi-automatic basis is that it dictates a purely one-size-fits-all approach. It is not necessarily related to the economic worth of the harm and deprives the Court of the ability to issue a damage award reflective of the value of the IP at stake. Rather, the injunction will reflect the value of the business or business line that is to be closed down.

Hence, a major short coming of quasi-automatic or automatic permanent injunctions can be that it deprives the Court of the ability to issue a nuanced statement on the value of damages and adequately reflect the economic value of the patents at stake. Overall, automatic or near-automatic injunctions are likely to bring the infringed party an arbitrary remedy (if at all) as an injunction is not linked to the economic value of the patent.
If China is hence to depart from a tradition where damage awards are rather low and adopts a more US type rationale for damage awards, it may want to consider to consider to tie the issuance of an injunction also to a U.S. style four factor test, which is required in this country since the 2006 decision of the Supreme Court in eBay Inc. v. MercExchange, LLC. In an article published with the Iowa Law Review, Seamen finds that during a study period of 7.5 years, injunctions in the United States remained fully available for all market participants except patent assertion entities, which obtained an injunction only in 16% of all district Court decisions. Measures along those lines, could alongside a more systematic understanding of patent damages from an economic point of view allow China to find its way to an equitable IP enforcement system!”

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