Although 2018 is more likely to be remembered as the year in which the dreaded GDPR came into force, there was also a good deal of action on the Intellectual Property (IP) front.
To recap on the main events of the year here is a round-up of some of the more interesting IP law cases involving trademark and copyright issues. Stretching copyright a step too far
Did you think the taste of a food product capable of copyright protection
? If you answered ‘no’ you would be right! Something as appetising as cheese is rarely the focus of copyright cases but in this case the claimant’s arguments proved to be among the more inventive of the judgments of 2018. Try as they might, however, they failed to persuade the court, which held that taste is simply too subjective to be capable of being a ‘work’ in the copyright sense. The court denied copyright protection to food products on the basis that the consumer’s perception ‘will be identified essentially on the basis of taste sensations and experiences, which are subjective and variable’. Food producers can continue to sleep easy in the knowledge that their competitors can’t bring legal action against them merely for selling similar tasting goods. We predict that 2019 might see its own fair share of novel arguments trying to test the scope and boundaries of this ubiquitous IP. You can find further information on IP and other business legal considerations within the Food & Beverage sector in our Free Resources section
. Cadbury’s iconic purple trademark at risk
Moving from cheese to chocolate, colour trademarks were once again in the spotlight last year when Cadbury took a blow to its trademark portfolio
after the Court of Appeal ruled that its iconic purple packaging mark was not a series mark. In short, ‘series marks’ can be applied for in the UK for up to 6 very minor variations of the same mark, as part of one and the same application. A few years back, Nestlé successfully opposed an application by its chocolate-making rival for the colour purple where the description of the mark indicated that it “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”. The court refused the mark on the basis that it could include an unknown number of signs, saying that the use of the word "predominant" ‘opens the door to a multitude of different visual forms…over which the colour purple may predominate.’ Realising that another of its marks with the same description was now vulnerable to attack, Cadbury tried to avoid invalidity proceedings by interpreting the description as two marks within a series, the second of which (‘being the predominant colour applied to the whole visible surface’) could be deleted. The judge disagreed, holding that the alternatives were ‘parts of a generalised but imprecise description of a single mark’, showing that the courts are extremely reluctant to allow amendments to existing trademark registrations except where they do not substantially affect the identity of the mark. Had Cadbury’s applied for a series mark at the outset then the result would have been different. To help you to avoid some of the pitfalls when making a trademark application we recently posted 5 Tips to Get it Right
on our blog. Now, its purple trademark could be at risk again. if they were to lose another time, Cadbury’s monopoly on this particular shade of purple will be gone. The case is a reminder that longstanding trademarks (even iconic ones) can be cancelled and of how vital it is to ensure trademarks are always sufficiently clear and precise. Where colour marks are concerned, the description is all the more crucial. Think twice before reposting online content
In another landmark judgment, the Court of Justice of the EU (CJEU) handed down its decision about reposting copyright content in Renckhoff, C-161/17
. The case, was brought by a photographer who sued a school because of a photograph used by one of its pupils which the school then reposted on its website. The question to be determined was essentially whether the reposting of copyright protected content freely available on a third-party website constitutes a new ‘communication to the public’. (Such communications are one of the exclusive privileges of copyright owners when it comes to making use of their works). Answering in the affirmative, the court clarified that any such reposting would thus be illegal copyright infringement. (This is in contrast to hyperlinks, the reposting of which do not generally give rise to infringement provided the underlying content is freely and legally accessible to all.) While the case won’t win any prizes for the damages award (just €300), it is a big win for content owners whose control of their online works has been clarified and bolstered. Of course, the EU’s Copyright Directive was one of the most controversial developments in IP law last year and, while being received positively by content creatives, was seen as a massive blow to SME publishers. We covered this in our ‘Copyright Directive - Winners and Losers
’ article. Content hosting platforms beware
A brief mention of an interesting decision by a Viennese court which held that YouTube was on the hook for secondary liability copyright infringement
after being sued by TV station Puls4 after its content was uploaded to the platform without consent. YouTube failed to persuade the court that it should fall under the protection of the EU’s ‘safe harbour’ regime by virtue of the fact it provided a technical service and was thereby merely a neutral intermediary host. The fact that YouTube actively intervenes by sorting, filtering and linking content was its apparent downfall in this particular case. The trend in 2018 seems to be increased liability in general for hosting platforms and the new Digital Copyright Directive (which we report on further in our IP in 2019 article which will be available on our blog
in the coming week) is only likely to fuel this movement. At risk when sharing internet connections at home?
If the internet police came knocking, how many would think to blame an infringement on their cohabitees? Well this is exactly what one German man tried to do when he argued that he used the same internet connection as his parents and should, therefore, be absolved of liability for online copyright infringement since it could have been one of them instead. The CJEU was having none of it, confirming that the right to respect for family life (one of the fundamental human rights) does not necessarily trump IP protection and deprive copyright owners from protecting their rights. The fact that dissuasive (albeit proportionate) measures are necessary to ensure rightsholders’ interests are protected weighed heavily in the court’s decision. Music producers take note
Yet another CJEU judgment wrapped up a lengthy feud between the rapper Moses Pelham and Kraftwerk, confirming that a two-second sample of a sound recording used without consent can constitute infringement. The court refused to accept the such a sample was a ‘quote’ and therefore capable of benefiting from one of the limited exceptions to copyright infringement since it was a modified sample which neither entered into any sort of dialogue with the work quoted nor indicated the source. Lines no longer blurred for Thicke and Pharrell
While on the topic of music cases and even though it took place in the U.S., it would be amiss to conclude this post without briefly touching upon the huge windfall earned last year by the Marvin Gaye Estate to the tune of $5.3m in damages plus royalties. This came off the back of a win in the US Court of Appeals which held that Pharrell and Robin Thicke’s 2013 hit song ‘Blurred Lines’ copied Marvin Gaye’s earlier song ‘Got To Give It Up’. The decision among the judges was not unanimous and has led to much criticism, not least due to the focus placed on the similar style of the songs, provoking critique that copyright is not intended to protect a whole music genre. Nevertheless, the case is a stark reminder of the dividing line between inspiration and unlawful appropriation generally. And of course just last week a court ruled that Ed Sheeran must go to court
to answer to claims of copyright infringement of another Marvin Gaye classic ‘Let’s Get it On’ in his hit ‘Thinking Out Loud’. Quite a year as I’m sure you’ll agree! Look out for our next IP post in which we look to the future and touch upon the case law and legislative reforms which we expect to shape 2019. To speak to the author of this article, Laura Symons, or for expert advice on any business legal matter please do enter an enquiry
or call us today on: 020 7148 1066 and speak to a member of our friendly Client Care Team.