Virtuoso Legal IP Top 10: February – Whisky Business, Article 13’s “Door in the Face” and Football Stickers

IP Top Ten: A picture of a glass of whiskey on ice. It is set in a dark and ominous setting.
IP Top 10 Febrary: The news this month is proving to be “dark and stormy”​
IP Top Ten by Lauren Waterman
Lauren Waterman

Whilst February was the shortest month of the year, it was also extremely eventful. Across the World of IP there were a host of headlines that hit our radar. Here (in no particular order) is a slightly humorous look at 10 stories from the month that caught our eye. Without further ado, here’s our IP Top 10 for February.

#10 EU Digital Copyright Directive, Article 11 and 13 in their Final Form: a (Small) Compromise?

After much worry about what form the EU Copyright Directive would take in its final form – it appears that a compromise (of sorts) has been reached.

Some may argue that this was simply a case of the “door in the face” technique, insofar that earlier drafts had concerned digital platforms so much that any concession would be seen as acceptable.

The two articles under scrutiny were Article 11 (“link tax”) and Article 13 (concerning the prima facie liability of digital platforms for hosting content infringing copyright.

The latter caused much distress for YouTube who were very worried about having to suddenly filter all video content uploaded to their platform (300 hours of video uploaded every minute) to discern for unlicensed content.

(You wouldn’t envy them in that task, even with all the powers available to them.)

In its final form, Article 13 determines that YouTube will have to make “best efforts” to approach copyright infringement on its platform in a number of ways.

The BBC has produced an excellent overview of these changes which can be read here.

#9 Wax On, Wax Off: Halloumi UKIPO debacle quickly followed by Babybel decision

Cheese seems to be the order of the day in IP news. With case law last year being tested in Europe relating to copyrighting its taste, to Cyprus’ slip up in losing “HALLOUMI” as a trade mark in the UK – it seems to be an area which is ripe (sorry) for contention.

The latest fromage fracas comes in the form of a successful invalidation action levied by Sainsbury against the iconic red Babybel wax. Fromageries Bel, the creator of Babybel’s registered 3D mark for the wax invalidated because of “a mismatch between the verbal description of the trademark and the colour(s) shown in the pictorial representation of it”. Then also suggesting the mark was customary and thus “devoid of distinctive character”.

Novagraaf’s post on Lexology offers a really fascinating insight into this case.

#8 Facebook Found liable by Italian Court for hosting unlicensed content

Who needs Article 13? In this case, w­ithin the Italian courts, Facebook has been found liable for hosting links to unl­icensed content.

Where before online platforms such as the social media giant had successfully deferred accountability for nefarious content to its users… this result may alter their role and responsibility.

The content in question was the Italian version of the Japanese TV series “Kilari”. Italian singer Valentina Ponzone had performed the introduction to the TV show dressed as the titular character. This had led to the creation of a critical account which had posted videos and comments relating to this performance.

After several failed attempts at having the page taken down – Ms. Ponzone took the litigious route, remarkably alleging liability on Facebook, whose lack of effective response led to this outcome.

IPKat looks at this decision in detail and the potential consequence for internet platforms moving forward.

#7 “Glen Buchenbach” CJEU decision leaves a bitter taste in the mouth for Scottish Whisky Association

German liquor producer Micheal Klotz’ attempt to name their whisk(e)y “Glen Buchenbach” met quite a lot of resistance from the Scottish Whisky Association. This was primarily because they believed that use of the term “Glen” was geographically misleading and would lead customers to believe that the spirit was scotch.

AG Saugmandsgaard Øe’s preliminary opinion was not to the taste of the SWA – suggesting that use of the word “Glen” would not evoke Scotland to the point of breaking EU law around geographical indications.

The Telegraph has more on this story here.

#6 Amazon Announce Initiative to Take on The Fakes

This month Amazon announced, “Project Zero”, a new operation programme to address counterfeiting on its platform. [Sound of brand owners spitting out their tea.] Whilst its motivation is well placed, the announcement has resulted in some backlash in so far as the campaign appears to place responsibility for brand policing upon brand owners! This renewed effort on the part of brand owners coincides with a suite of new AI tools to be deployed on the network to spot and police bad actors.

The Fashion Law have an excellent post on this which covers the key points.

#5 OneMix is All it Takes to Fall Out with Nike

Chinese shoewear producer OneMix have drawn the ire of Nike for a series of perceived trade mark, design and patent infringements. These were seen by the US producer as a concerted campaign to generate an association between OneMix’s products and their own.

There has been a storied history between OneMix and Nike in this regard, but have they flown too close to the sun this time?

World IP Review takes a look at the story here.

#4 UK Courts Critiqued Over FRAND

When it comes to patent litigation and enforcement it’s all about jurisdiction. In two recent cases UK jurisdiction was sought for claim. Nothing to see here, right? Wrong. One case Conversant v Huawei, ZTE was granted UK jurisdiction whereas Apple v Qualcommwas not. But why?

FRAND is why. The recent disparity in these judgments has led to a lot of conversation about these terms and the UK Court’s decision to discern jurisdiction.

IPKat take a detailed view on the issues at play.

#3 Kim Kardashian sued over “Kimoji”

It is often rare that one of the Kardashian troupe are not in the news in relation to intellectual property disputes. In perhaps the biggest Kardashian IP debacle in recent times, Kim [the main one] is being sued by developers who allege they had generated the concept for the wildly successful “Kimoji” – a set of custom emoji based on the reality star turned entrepreneur.

As per, the Fashion Law have an excellent overview of the story here.

#2 The Last Dance for Fortnite?

With the seemingly ceaseless furore surrounding dance creators and the video game “Fortnite” – larger questions have arisen relating to the ownership of copyright in the dances included in the game. Little US case law exists at the time and enforcement would result in significant legal precedent.

The Verge take a look at this phenomenon and its broader implications.

#1 Manchester United a Stickler for Stickers

Finally, it is well known that Manchester United are a branding and licensing behemoth. It is part of the reason why despite their recent on field drought, that they had remained at the top of the perch for richest clubs in the world.

Part of maintaining their position at the top of this league table is robust brand protection. Case in point, a request levied at “Panini Cheapskates” who produce humorously crudely drawn football stickers. As one might expect, the sticker aficionados have decided to remove their Manchester United related stickers – leaving their collector’s books sadly unfinished like so many others in the past.

BBC News take a closer look at this story.

Conclusion: IP Top 10: February

As per usual, the world of IP has an abundance of significant and strange stories to dig into. We hope you have a fantastic March and join us again next month for the latest IP Top 10.

To speak to any of our intellectual property specialists please call:

0113 237 9900

Virtuoso Legal IP Top 10: February – Whisky Business, Article 13’s “Door in the Face” and Football Stickers was written by Lauren Waterman

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