Virtuoso Legal IP Top 10: January 2019 – Big Mac, Fortnite and Trade Mark Reform

So without further ado, in no particular order, here’s everything you missed, but need to know, in IP this month from outside of Virtuoso Legal.

(And also a few bits from December).

#10 Big Mac Under Attack in the EU

In one of the most remarkable pieces of trade mark revocation / cancellation news we have ever come across. McDonald’s suffered a hammer blow as their word mark for BIG MAC was revoked after cancellation proceedings from Irish chain “Supermac” were concluded at the EUIPO.

The reason given for cancellation was that McDonald’s could not prove sufficient usage of the mark across the EU. McDonald’s can appeal the decision, but will do so at great cost.

More information about this story can be read in the Guardian here.

#9 Epic Games Dances into a Class Action Lawsuit over Fortnite Emotes

When something becomes as ubiquitous and successful as Epic Games’ Fortnite has – you often see strange unpredictable consequences emerge. Whether it was Pokémon GO’s strange set of headlines and law suits, or people suing over exploding fidget spinners – big crazes often result in some strange headlines.

This month was no different with legal attention boiling over in relation to Fortnite and the dances that players in game can use to celebrate their “victory royale“. Many of these dances are apparently based on a range of viral routines (or older iconic dances in the case of Alfonso Ribeiro’s “Carlton” dance.

Where before many of these creators were largely non-plussed at this homage – the news that Epic Games made $3billion in profit last year (likely as a consequence of runaway hit) has drawn the attention of these creators in a more substantial way.

More information on this ongoing battle royale for royalties can be read in The Verge here.

#8 US Biker Gang Loses Trade Mark in Criminal Action

An American biker gang known as “The Monguls” have found themselves losing trade mark protection over their insignia after a 10 year chase from prosecutors.

The trade mark was revoked as part of a tactic to disband the biker gang who had been found guilty of racketeering and conspiracy.

More information on this first of it’s kind decision can be read here courtest of NBC news.

#7 Google Moves for Deepmind Patents

Entirely new areas of technology are hotbeds for IP registration. For those with the foresight, ownership over a crucial piece of technology early on can be (incredibly) valuable.

Just ask 80s musician Thomas Dolby who licensed the technology for polyphonic ringtones to Nokia at the height of their popularity~!

DeepMind have begun doing exactly that in relation to AI technologies, and specifically those which generate audio, video and process sequences.

Patent registration in new areas can be tricky, as part of patentability is about novelty – which can be hard to discern if a whole field of technology is new.

More information (for the technically minded_ can be found here in the IPKat’s round up on the matter.

#6 Marc Jacobs vs… Nirvana?

Surprising in it’s perceptive flagrancy, Marc Jacobs was in the news as it was announced that Nirvana launched a case against them for use of an iconic logo of theirs.

The original t-shirt in question features a dazed smiley face (yellow on black) with the name Nirvana above.

Marc Jacobs version features a near identical face (with the crossed out eyes being replaced with “M” and “J” respectively – and the word Nirvana substituted for Heaven (which of course is a synonym).

Needless to say, Nirvana’s representatives felt some angst and have filed a copyright suit against the renowned designer.

More detailed information about this case can be read on The Fashion Law blog here.

“Smells like copyright infringement” – doesn’t quite have the same ring to it.

In an age where Marc Jacobs could quite easily have obtained a licence from Nirvana to use the copyright in the iconic ‘smiley face’ design on their clothing, it is difficult to see why they would apply such a high-risk strategy to their next season of clothing whilst there is ever a threat of a lawsuit.

Marc Jacobs would inevitably have the bottomless pockets to pay such a fee. Is litigation simply becoming fashionable and therefore preferred over doing things legally? Potentially – after all, bad publicity is still publicity at the end of the day.

Jordan Davies – Solicitor

#5 “Let Me Be Frank, Kevin – That’s (Potentially) Copyright infringement”

In a rather strange turn of events, Kevin Spacey reappeared this month in the guise of his House of Cards character Frank Underwood

The only issue with this, is that he is on an indefinite hiatus from the Netflix hit as a consequence of some serious allegations of sexual misconduct. As such, representing himself as the Machiavellian character might be construed as a copyright infringement.

IPKat looks into the intricacies of such a claim, should it be brought, here.

"Kevin Spacey’s controversial depiction of his most famous character certainly caught attention when he broke his social media silence on Christmas Eve.

Whilst Spacey did not actually incorporate any copyrighted materials into his video, his parodic portrayal raises significant questions about whether laws in the US offer enough protection for the concept of popular characters."

Gemma Wilson – Trainee Solicitor

#4 EU Trade Mark Directive 2015 Implemented into UK Law

On the the 14th of January, the UKIPO implemented the EU Trade Mark Directive 2015 into UK law.

Amendments come in the form of the Trade Marks Regulations 2018; and include a host of changes across prior law.

The big changes include:

• representation of trade marks (now allowing for electronic formats such as MP3 and MP4)
• no longer notifying owners of expired marks that might conflict upon examination of applications
• several changes to opposition proceedings (which we are keeping an eye on)

And much much (much) more.

For the full gamut of changes, click here to read the government guidance on the subject.

#3 Public Domain Day!

The beginning of January meant that a host of works entered the public domain following the lapse of their copyright protection. 70 years plus death of the author/creator is a long, long time.

Every year this occurs there a discussion arises about the balance of protecting creators, and allowing the public to benefit from creative works. These discussions will reach boiling point soon as Mickey Mouse plods slowly but surely(?) toward the open-domain…

For more information about this, check out The Verge’s post here. (Gemma Wilson also took a look at this for us here.)

#2 Can You Infringe Copyright When Sharing a Picture of Yourself? Ask GiGi.

And finally, in another copyright bust GiGi Hadid’s Instagram account was drawn under scrutiny for posting photographs of… GiGi Hadid. The only issue here being that the photographs in questions were shared without the consent (or license) from the photographer – who under the principle of copyright are the sole owner of the image.

This happens quite often, in cases where those who appear in magazine shoots (or their teams) post up imagery without consent. In this case however, Hadid is directly implicated insofar as she was seen to have direct control over her account and what it posts. Oops!

For more detail on this story, check out The Fashion Law’s write up here.

#1 China Announces its IP Appeals Court

In a move welcomed by many, China has established a dedicated IP appeals court within the Supreme People’s Court. The dedicated court will feature IP specialist judge’s whom will oversee appeals from China’s lower level courts.

This is broadly seen as an positive move by China who have come under some scrutiny (especially from the US) in relation to the even-handed enforcement of IP.

Business Today’s online journal has some more interesting links and information​