IP Top 10 – October: Bentley Bent out of Shape
IP Top 10 October
October has been and gone in the flash of an eye! With the spookiest month of the year came a range of scary IP stories (depending on which side of the dispute you are on). Here, in our IP Top 10 are those which caught our eye…
TikTok uptick ticks off NMPA
In the United States the National Music Publishers’ Association (NMPA) has called for greater scrutiny of TikTok, arguing that the video-sharing platform has consistently violated US copyright law – along with the rights of songwriters and music publishers alike.
NMPA President David Israelite stated “while some publishers have been able to negotiate with TikTok to licence their catalogues, a large part of the publishing industry does not have agreements in place, meaning numerous works continue to be used unlawfully as the platform’s popularity grows exponentially.”
Music Business News Worldwide take a view on this here.
Katy Perry copyright controversy
Katy Perry is subject to another action for copyright infringement. This time, however, it’s not music but rather an Instagram post featuring her in a Hillary Clinton Halloween costume, which brings her into our IP Top 10.
Owners Backgrid USA have brought an action as Perry failed to licence their photo before sharing it with her 80 million Instagram followers, alleging that she has hurt ‘the existing and future market for the original photograph.’
Backgrid are seeking $150,000 in damages, supporting their claim on the basis of the commercial nature of Perry’s Instagram account, which they argue is used to ‘promote business interests and maintain her desirability as an actress and entertainment personality.’
Billboard.com cover this here.
YouTube strike back against Troll
An infamous YouTube ‘Copyright Troll’ has been banned from any submitting any further notices of alleged copyright infringement, having notoriously abused the DMCA takedown system to extort money from fellow YouTubers.
Christopher Brady has been ordered to pay $25,000 in damages as part of the settlement, having cost YouTube ‘substantial sums’ as part of an investigation to detect and punish his behaviour.
YouTube chose to pursue legal action when it became aware that Brady was misusing the protocol in order to extort money from other notable users.
Brady had allegedly been striking two videos down from targeted channels, before demanding money to prevent a third strike which would result in the automatic termination of a channel.
Digital Information World have the overview here.
Rubik’s Cube puzzled by trade mark defeat
The owner of the Rubik’s Cube has lost the rights to its EU shape mark following an initial challenge from Simba Toys in 2006.
The General Court of the European Union upheld the earlier decision: “Given that the essential characteristics of that shape are necessary to obtain the technical result consisting of the rotating capability of that product, the shape could not be registered as an EU trade mark.”
Simba Toys have argued that the rotating technicality should have been protected under patent law as opposed to trade mark, in order to avoid creating an effective monopoly on a functional characteristic.
Sky News have a run down of the story here.
McGregor braced for IP fight
Conor McGregor is fighting a trade mark opposition from a Dutch company who claim that his prospective trade mark would cause confusion with its own pre-existing brand.
McGregor Sports and Entertainment (MSE) have filed to trade mark the ‘Conor McGregor’ brand at the EUIPO in classes 3, 9, 16, 25, 28, 41, 43 and 44, to include goods such as clothing, video games and aftershave.
However, Dutch company McGregor IP hold an established trade mark for ‘McGregor’, applicable to goods such as clothing and cosmetics under classes 3, 18 and 25.
In October, MSE responded to the opposition, arguing that their Dutch rival was seeking to enforce a restrictive monopoly on the ‘McGregor’ surname, which should not extend to prevent the registration of ‘Conor McGregor’ in alternative classes.
This conflict is the latest in a series of trade mark tussles to confront Conor McGregor since he initially sought to launch the ‘Notorious’ whiskey brand (a product now available as “Proper No. 12”).
The World IP Review have an overview of this story here.
IPO centre of moral debate as ‘Queers & Co’ trade mark request is rejected
An LGBTQ+ campaigner has called for change at the Intellectual Property Office after her trade mark application as rejected for ‘Queers and Co’.
Gem Kennedy sought to register the mark as part of her plans to expand on her growing Facebook community of the same name, including the launch of a podcast.
However, the IPO rejected her application on the basis of Ofcom guidelines which state the phrase to be ‘derogatory and unacceptable’.
Despite sections of the LGBTQ+ reclaiming the term as an identity, the IPO are placed in an unenviable position attempting to balance the sensibilities of society as a whole.
As an IPO spokesman surmised; “We have a legal responsibility to ensure that the trade marks we register do not have the potential to offend.”
The Lawyer Monthly cover this discussion here.
“David beats Goliath” as Bentley is defeated by punchy namesake
Luxury car manufacturer Bentley Motors have lost a trade mark dispute against Manchester-based Bentley Clothing and will have to limit its clothing range to “jackets, silk ties, caps and scarves” as a result.
Having chosen to initiate proceedings against the comparatively modest clothing company themselves, the motoring giant may now be liable for damages and will have to surrender or destroy any infringing items.
The dispute between the two companies has been a source of friction for over twenty years.
In October, the Judge ruled in favour of the clothing company, reasoning that the evidence gave a ‘strong impression’ that Bentley Motors had made a conscious effort to develop the Bentley brand in clothing.
However, in recent years, it was apparent that the manufacturer’s actions amounted to a “steady encroachment of Bentley Clothing’s goodwill”, as evidenced by their failed attempts to cancel the clothing firm’s trade mark.
The BBC cover this remarkable result here.
Apple to revive iPhone innovation with new patent filing?
Apple have seemingly revived the concept of a wraparound phone screen, with the filing of a patent in October which builds on the portfolio of patents relating to wraparound screens which date back to 2013.
The patent, posted by the US Patent and Trademark Office, specifies that the glass screen would constitute a “continuous loop around a periphery of the electronic device.”
Apple also added in its filing that; “there exists a need for an improved form factor for portable electronic devices which allow functionality to extend to more than one surface of the device.”
As such, the company outlined that it is actively investigating ways to maximise the utility of unused portions of these devices. Such a registration may demonstrate Apple’s desire to reclaim it’s position as design leader in the sector – after the success of Samsung’s curved displays.
Business Insider have coverage of this here.
“Invisibility cloak” a step closer to reality with patent applications filed
Hyperstealth Biotechnology Corp. have announced a patent application relating to their pioneering Quantum Stealth Light Bending Material, which can bend light in a way that means only things very far or very close can be seen.
The information within the patent application has been published by Hyperstealth, with over an hour of footage available to watch on their website which demonstrates the prototype material.
The Daily Mail have some video and further details of the innovation here.
Trump trumped with fake news trade mark
Canadian advertising agency WAX Partnership Inc has teamed up with Florida’s chapter of the Society of Professional Journalists to launch a satirical campaign against US President Donald Trump’s ‘fake news’.
Since entering the White House, Donald Trump has tweeted the term in excess of 600 times in order to smear various news organisations and stories of which he is not fond.
In response, the joint campaign has applied to trade mark the term and also this month sent a mock cease and desist letter to the White House.
Whilst there is no expectation that the application will succeed, creative director of WAX Partnership Inc Nick Asik has explained the campaign as an attempt to “start a wider conversation about fake news and how, ever since President Trump has taken office, he has weaponised it to cast doubt on any stories which criticise his administration or his personal conduct.”
The New York Post has more detail on this here.
That rounds up our round-up for October. We will see you next month for November’s IP Top 10, including, as always, all the IP news that may well have slipped past your radar.
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