The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Wednesday, 22 November 2017

Damages awarded for the ‘loss of opportunity’ to commercialise photographs following infringement

The Paris Tribunal (Tribunal de Grande Instance) recently handed down a decision on the copyright infringement of a photographer’s work by the fashion textile company Renoma. The judgment is consistent with the recent jurisprudence on the questions of originality, moral rights and infringement of photographic works; nothing special here. What caught this Kat’s interest is the Tribunal’s position on the compensation for the claimant’s ‘loss of opportunity’ to commercialise his own photographs due to the infringement. In an area of law where we already struggle to fix the appropriate level of compensation for the harm due to the violation of economic rights, how should we go about measuring the ‘loss of opportunity’ to commercialise one’s copyright work? Perhaps the honest answer is: no idea. The Tribunal appears to have plucked a sum out of thin air; that or they followed a formula but did not think necessary to share it in their judgment.

Renoma's publicity material for the exhibition
In this dispute, Renoma had used three photographs taken by the claimant, Mr X., in the context of the publicity campaign for an exhibition dedicated to the Chelsea Hotellocated in New York City (see here, here and here). The three photographs had been reproduced on Renoma’s social media accounts, official blog, online invitations to the event and in the exhibition itself. One of the photographs also featured a derivative work created by the defendant, namely as it was integrated into the reflection of a model’s sunglasses as photographed. In addition, the claimant’s photographs had been reprinted on t-shirts, which were subsequently sold on the premises of the exhibition.


The credits associated with the photograph were also problematic because the copies mentioned the name of yet another artist (Mr. Y in the decision) reading: ‘photo credits: Mr Y’ and ‘artistic creation: Mr Y’.

In its judgment, the Paris Tribunal confirmed the originality of each photograph, both citing to and directly quoting from the Painer decision of the ECJ (see here), which held that

a photograph [in that case a portrait] is an intellectual creation of the author reflecting his personality and expressing his free and creative choices in the production of that photograph’ 

This is consistent with the jurisprudence emanating recently from first instance decisions (see for example the Hendrix case, here).

Chelsea Hotel in NYC
The judges were then asked to rule that Renoma had committed a breach of the claimant’s moral rights of integrity and paternity pursuant to Article L 121-1 of the French Intellectual Property Code. As a result, the defendant was ordered to pay 13,425 euros in damages for the infringement of the claimant’s economic and moral rights.

To reach this amount, the Tribunal referred to the standard royalty fees used by photographers’ societies (such as ADAGP), focusing on the number of days that the photographs were available online and the sum the photographer would have received had there been an agreement with the defendant. To establish this number, the judges applied a weight factor of 50% on account of the defendant not seeking the consent of the artist in the first place, yielding the amount of 13, 425 euros. This total is considerably lower than the amount requested by Mr X (no less than 35,381.50 euros), which had been met by Renoma’s claim that it was liable only for  340 euros (based on a price quote provided  to them by Getty Images).

Over several paragraphs, the judgment gives a detailed account of the calculations put forward by each party, before giving its own calculation.   However, the court is surprisingly brief in explaining how it reached the award of compensation for the claimant’s ‘loss of opportunity’ to commercialise the photographs.

On this point, the Tribunal merely states:

‘the photographs of [the claimant] have been widely reproduced and made available to the public without his consent, he is indeed in a position to argue that he suffered a loss of opportunity to hope to sell the original prints of the photographs since he is a professional photographer and has taken part in a number of exhibitions showcasing his work. Consequently, [the claimant] is able to request compensation for this damage, the latter being distinct from the actual opportunity if it had materialised. As a result, the Court grants [the claimant] a sum which ought to amount to 2,000 euros for the loss of opportunity …’.

Author’s rights now cover actual economic loss, moral prejudice as well as ‘the loss of opportunity to hope to sell’ one’s work. To those who dare say that the world is bereft of hope-- wrong. Hope is still alive and even may give grounds for damages under French copyright law. That said, this privilege seems to be reserved to professional photographers only, if we are to read the latter part of this sentence (that is, ‘since he is a professional photographer’) as a requirement for this type of compensation.
Not buying this...

Finally, it should be noted the phrase ‘loss of opportunity to hope to sell’ could also be translated ‘loss of opportunity to be able to hope to sell’, following a literal translation of the original text which reads ‘celui-ci peut en effet se prévaloir d’une perte de chance de pouvoir espérer vendre des tirages originaux de ces photographies’. This second translation, though convoluted, may be truer (and arguably more romantic!) to the meaning intended by the Tribunal with this choice of words.

Decision commented: Paris Tribunal, 3rd chamber, 2nd section, judgment of the 22nd of September 2017: Mr. X. v Mr. Y., Société Textile des Articles Renoma and Renoma Invest (see here for decision in French).

Never Too Late: If you missed the IPKat Last Week!

Been away and want to catch up with the recent IP news? No problem! As always, the IPKat is here to bring you a quick summary -- the 170th edition of Never Too Late (for week ending 29th Oct and 5th Nov inclusive).

Week ending 5th November

We started off the week talking about Brexit, specifically about What future for UK copyright after Brexit? Report on IPKat-BLACA panel discussion. Kat Eleonora moderated the panel and reported on it for us.

Talking about abusive forum shopping by non-practicing entities, Kat friends Bryan Kohm, David Tellekson, Melanie Mayer and Reilly Stoler guided us on how US patent litigation on the move again following In re Cray.

Does the doctrine of equivalents apply to novelty? Guest Kat Eibhlin answers the question by analyzing the recent decision Generics (U.K) v Yeda, a practical application of the Supreme Court’s Actavis v Eli Lilly.

Internet and Digital Media Law conference returns to London! The conference will be held on 5 December and a discount for participation is kindly offered for IPKat readers…register away! Also on 5 December: Christmas UNION-IP event: "IP - Past, Present and Future", with notable speaker Mr Justice Colin Birss. Don’t miss out on it!

Registering EUTMs with pictorial characters can be challenging, as Kat friend Matej Michalec knows all too well. In The Relevant Public and Likelihood of Confusion in Respect of Chinese Character Trademarks he discusses this topic.

The AmeriKat continued with her report from AIPPI Congress with incredible instalment numbing number 14: GUI Goo for Chewy Chewing.

What happens to user rights when IP serves the basis for a product, How far to take user rights into consideration? Repair? Kat Neil reports.

Bringing a counterclaim for patent revocation: not so fast in Singapore: Kat friend Sheena Jacob talks about how this may not be possible any longer.

SPC consultation - call for input: the European Commission is seeking for contributions!

When Twitter, football and copyright law meet: Linking in the US: is an embedded tweet an infringement of the public display right? Kat Eleonora discusses the improbable encounter.

Are you interested in being an InternKat or a Guest Kat? Then respond to our Katcall: Openings for GuestKats and InternKats!

Important news on the second medical use claims world as Dutch Supreme Court in Merck v Teva holds that second medical use claims can be directly and indirectly infringed, no matter the type. As the decision was mint fresh and no English was available, Kat friend Tobias Cohen Jehoram provided a translation and a summary in English for us.

Unpredictable times come with unpredictable patent decisions. Kat Annsley talks about Court of Appeal’s decision Actavis v ICOs  in The rise of "obvious to try" is over as Court of Appeal finds CIALIS dosage regimen patent obvious.

Weekly roundups: Wednesday Whimsies

Two Never Too Late are Better than One!
Week ending 29th October

Rosie informs us on the recent High Court appeal of Abanka DD v Abanca Corporacion Bancaria SA [2017], which concerns the revocation of two international trade marks for ABANKA and the related opposition to the application to register ABANCA. No prizes for guessing which party was attacking which mark.

IP Federation declares no role for IP disputes in proposed Hague Convention, while INTA takes a different approach
Annsley talks us through a new draft legislative instrument - the draft Hague Convention on the Recognition and Enforcement of Foreign Judgments.

Book review: Grounds of the Immaterial - A Conflict-based Approach to Intellectual Property Rights
Mathilde reviews Niels van Dijk’s book, Grounds of the Immaterial, A Conflict-Based Approach to Intellectual Rights.

Teva v Gilead: Swiss court bashes ECJ on SPC "mess"
The Swiss Federal Patent Court issued a judgment confirming the validity of Gilead’s Supplementary Protection Certificate (SPC) for a composition containing tenofovir disoproxil with emtricitabine (marketed as TRUVADA). The UK arm of the same dispute has led Arnold J to refer a question to the ECJ ("What are the criteria for deciding whether 'the product is protected by a basic patent in force' in Article 3(a) of the SPC Regulation?", [2017] EWHC 13 (Pat)).

Book Review: Form in Intellectual Property Law
Mathilde reviews David Booton’s book, “Form in Intellectual Property Law.” The author develops a comprehensive theoretical framework which explores the basics of legal norm-making as they occur in the field of intellectual property law.

T 1201/14: EPC's substantive requirements for valid transfer of priority right surprisingly substantial
In T 1201/14 of 9 February 2017 (grounds published on 5 September 2017), the Board of Appeal 3.5.05 took the opportunity to clarify some aspects on the ever- challenging assignment of the priority right for a European patent application.

Qatar diplomatic crisis: “beIN Sports” and potential violations of the TRIPS Agreement – Part 2
Katfriend Riyadh Al-Balushi continues with part 2 of his post, whichtackles the TRIPS-relevant aspects of the crisis, including with regard to TV network beIN Sports.

TV formats potentially eligible for copyright protection as dramatic works under UK law
In Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Anor [2017], the court held that a TV format can potentially be protected by copyright, although in the specific case the action failed.

Image credits: tashgheel


PREVIOUSLY ON NEVER TOO LATE


Never Too Late 169 [week ending Sunday 22 October] From Alicante to Munich - the EPO appoints its new President I Waldemar Haffkine: Pioneer of plague vaccine and the "Little Dreyfus Affair" Another German decision questions reasonableness of GS Media presumption if generally applied I Another German decision warns against broad application of GS Media presumption for for-profit link providers I Letter from AmeriKat: Trade secrets long arms, NDAs go bust and sharing of passwords I the AIPPI's World Congress in Sydney : Report 13, Report 12, Report 11, Report 10, Report 9, Report 8, Report 7, Report 6, Report 5, Report 4 I Book Review: EU Intellectual Property Law and Policy I Book review: Intellectual Property Rights and Climate Change: Interpreting the TRIPS Agreement for Environmentally Sound Technologies I Intellectual Property Rights and Climate Change – Interpreting the TRIPS Agreement for Environmentally Sound Technologies I A defensive non-assert? Philips v Asustek and HTC I Recommendation on measures to safeguard fundamental rights and the open internet in the framework of the EU copyright reform I BGH gifts shape mark owners sweet victories I Standards, patents and competition law conference I New episode of copyright mini-series 'The Game is on!'

Never Too Late 168 [week ending Sunday 15 October] Book review--Create, Copy, Disrupt: India’s Intellectual Property Dilemmas | Freedom of Panorama: would it hurt architects? Survey among Italian-based architects says NO | The new unjustified threats bill – do's and dont’s| International Copyright Law returns to London| Retromark Volume II: the last six months in trade marks and Volume I| Book Review Times Two: GI at the Crossroads of Trade, Development, and Culture and GI - Global and Local perspectives|Does the retreat from internationalism mean the retreat of IP? |Event report: I3PM General Assembly 2017 at WIPO in Geneva |copyright and music 

Never Too Late 167 [week ending Sunday 8 October] Is the German press publishers' right lawful? More details on the CJEU reference | Community registered designs & the CJEU - Nintendo v Big Ben | In memoriam Maurice Bluestein: "Baby--it's cold outside"; the story and nomenclature of the Wind Chill Index | Book Review: The Fundamental Right to Data Protection | Brexit: The IP Position Paper and trade marks | Brexit and Brands: 536 days and counting – what is the UK going to do? | Sunday Surprises

Never Too Late 166 [week ending Sunday 1 October] Book Review: What if we could reimagine copyright? | Italian Supreme Court confirms availability of copyright protection to TV formats | EU certification mark: It's coming your way on October 1st | Pemetrexed pops up in Milan | Medical data in a twist - Technomed v Bluecrest | Proposed EMA relocation: staff survey update | Event: The impact of Brexit on the UK copyright regime | Waiting for the approval of the EU Directive on copyright in the Digital Single Market | 'TOBBIA' EU trade mark declared invalid for conflict with 'PEPPA PIG' EU trade mark

Lost their marbles? When can you register a geographical name as a trade mark? Mermeren v Fox

Marble can cause all kinds of dispute
photo credit: Sean Hickin
"Since the time of the Roman empire marble has been extracted from quarries near the city now called Prilep, in the Balkan peninsula. The marble was and is famed for its white colour and homogenous appearance which have made it a marble suitable for statuary, for use in the Emperor Diocletian's palace and more recently in the Grand Mosque in Abu Dhabi and in upmarket bathrooms."  And so, begins Mermeren v Fox Marble [2017] EWHC 1408 a (relatively) recent IPEC decision about trade marks and geographical names.

The Claimant, Mermeren, is a Macedonian company which has been extracting marble from the Prilep area since 1950 and owns the EU mark SIVEC for "marble of all types" and other things.  Sivec is also the name of a mountain pass in the Prilep region of Macedonia, a popular location for extracting marble. 

Fox Marble is a UK company which extracts and sells marble and has been selling that marble under the sign 'Sivec'.  When Mermeren alleged infringement of its EU mark, Fox argued, amongst other things, that it was justified in using the sign because 'Sivec' indicated the geographical origin of the marble to people working in the marble trade.  Therefore, Fox said it had both a defence to infringement and grounds for invalidating the mark (under Art.7(1)(c) of the Regulation).  Mermeren countered that to the extent this was true, the mark had acquired distinctiveness.

What is the test?

HHJ Hacon noted that it was hard to reconcile the principles from Windsurfing Chiemsee (which covers both immediate perception and potential future perception) with Spear v Zynga, Technopol and Doublemint (where the court required immediate perception by the average consumer that the mark designates a geographical origin). 

In Hacon's view in most circumstances, the effect of use of a trade mark must be ignored when assessing the prohibitions to its registration under art.7(1)(b), (c) and (d).

But does the average consumer like playing with marbles?
Who is the average consumer?

It was agreed that "the average consumer was a specialist dealer in marble or a person who advises their customers on the choice of materials to be used in a building, such as an architect or designer of interiors." Because the average consumer came from within the EU, this excluded Macedonians (i.e. the people who are most likely to connect the word Sivec with a geographical location because that is where the mountain pass is located).

Inherent character of the Trade Mark under art.7(1)(c)

The judge concluded that Fox had to show that the Trade Mark inherently denoted a geographical origin to the average consumer.  Because Sivec "is a very obscure place".  The few people that may have heard of it (i.e. people who live near the mountain pass) are not the average consumer and not located in the EU.  As HHJ Hacon put it:
"This was fatal to Fox's case under this head. If the average consumer has never heard of a place the name of that place cannot inherently designate a geographical origin in the mind of the average consumer. The only possible way such a designation could have arisen for the average consumer was by use of the name in the EU, which must be disregarded." 
Acquired distinctiveness

Even if the mark was invalid under Article 7(1)(c), Mermeren could still have a valid mark if it could establish that SIVEC had acquired distinctiveness through use on the filing date. The more famous a geographical name, the higher the threshold for establishing acquired distinctiveness (i.e. long-standing and intensive use is required).  As Sivec is "very obscure" the threshold was correspondingly lower.

After a review of the various authorities, HHJ Hacon summarised the position regarding acquired distinctiveness as follows (with emphasis added):
(1) The overall criterion which governs whether a trade mark has acquired distinctive character is whether the average consumer perceived that trade mark identified the relevant goods or services as originating from a single undertaking. (The average consumer, as ever, is reasonably well-informed, reasonably observant and circumspect.) 
(2) This perception is to be assessed as of the date of filing the application for registration of the trade mark. 
(3) The perception of the average consumer in (1) is to be distinguished from the circumstance in which the average consumer recognised the mark and associated it with the applicant's goods; such recognition and association is not of itself sufficient to confer distinctive character on a trade mark. 
(4) The average consumer will be taken to have perceived that the trade mark identified the goods or services as originating from a single undertaking if at least a significant proportion of the relevant class of persons had that perception. 
(5) Such a perception must have arisen in consequence of the use of the mark as a trade mark. That will be more easily established if the proprietor explicitly promoted it as a trade mark. 
(6) When making its assessment of the distinctive character of a trade mark, the tribunal may take the following into account: (i) the market share held by the mark; (ii) how intensive, geographically widespread and long-standing use of the mark has been; (iii) the amount invested by the undertaking in promoting the mark; (iv) the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and (v) statements from chambers of commerce and industry or other trade and professional associations. 
(7) If the tribunal is in difficulty in making that assessment, as a matter EU law it may have recourse to a public survey, subject to national rules. 
(8) It is legitimate for a tribunal to consider whether a significant proportion of the relevant class of persons would have relied on the sign as denoting the origin of the goods or services. Such reliance is not a precondition for establishing the distinctive character of a trade mark, but if established it is sufficient to show that the mark has distinctive character
(9) In relation to a trade mark consisting of a geographical name, regard must be given to the specific nature of the name. Where the name was very well known, it could have acquired distinctive character only if there had been long-standing and intensive use of the mark by the proprietor. A fortiori, where a name was already familiar as an indication of geographical origin in relation to the relevant category of goods, the proprietor must show that the use of the mark – both long-standing and intensive – was particularly well established. 
(10) Distinctive character must be established in the part of the EU in which it initially had descriptive character for the purposes of Article 7(1)(c)

In practice this meant that the mark had "distinctive character if a significant proportion of the relevant class of persons perceives goods designated by the mark as originating from a single undertaking".  A "significant proportion" is "markedly greater than de minimis but not necessarily over half".

How does the average consumer perceive Sivec?

The perception of whether Sivec was a real place mattered for acquired distinctiveness, not the "messy reality".  The judge found that "as of August 2013 use of the Trade Mark by Mermeren had led some relevant persons in the real world to think that it meant the place from which the marble was quarried; others had moved on to think that it meant marble quarried and/or supplied by Mermeren. There was probably a third group of relevant persons who gave the matter no thought beyond 'Sivec' being a type of marble."

Following a review of the documentary evidence and, to a lesser extent, witness testimony, the judge concluded that in August 2013 at least a significant proportion of relevant persons perceived that the Trade Mark, when used in relation to marble, identified it as originating from a Mermeren.

Because the average consumer did not perceive Sivec as indicating geographic origin, the trade mark was found to have been validly registered.

Tuesday, 21 November 2017

Around the IP blogs!





The 2017 Black Friday shopping storm will kick off soon. However, the Black Friday battle has already begun in Germany. The dispute circles around a German Black Friday trade mark, the Hong Kong-based owner of the trademark, and its German licensee. In fact, all traces “lead to Vienna”, as media summarized the results of their investigations in this “thriller” – Oliver Löffel (Löffel Abrar) shares his opinion on the case. 


Thomas Hvammen Nicholson (Protector IP Consultants AS) brings a follow up to the blog post of 4 September, regarding Oslo Municipality’s attempt to obtain trade mark protection for the body of works of art of Norwegian artist Gustav Vigeland [also covered by IPKat here]

JIPLP (The weblog of the Journal of Intellectual Property Law and Practice)

Black Friday Kat ...€$€
The Authors' Take:
by L Donald Prutzman 
Tannenbaum Helpern Syracuse & Hirschtritt LLP 

by Tito Rendas 
Universidade Católica Portuguesa – Faculdade de Direito 

The 1709 Blog

As usual, the 1709 blog presents readers the routine collection – THE COPYKAT, which recaps the recent copyright cases/updates all over the world. 


MARQUES has set out its position with regard to Brexit in a nine-page paper which is available to download on its website here

The paper states that Brexit "has the potential to be a material threat to the interests of the significant number of businesses that own and/or rely on valuable trade mark, design and geographical indicator rights protected in the EU". 

MARQUES Class 99 (designs) 

Nominations open for DesignEuropa Awards 2018 

The second edition of the DesignEuropa Awards is now open for nominations and applications. Organised by EUIPO, the DesignEuropa Awards honour outstanding design, designers and businesses that have brought their designs to the marketplace with the protection of the registered Community design (RCD). The Awards take place every two years. The nomination and application period for the DesignEuropa Awards runs from 15 November 2017 until 15 May 2018. 



Photo courtesy of Qi-cheng.

Katcall Reminder

The deadline is approaching
Merpel wants to remind those interested in the openings for GuestKats and InternKats positions (as was announced here) to submit their complete applications by no later than Friday 24 November 2017 (midnight, GMT).

Complete applications must contain CV details, motivation, and a 400-word writing sample (or a link to an existing piece in the case of GuestKats applications). Incomplete applications will not be considered. 

Furthermore, please keep in mind that you need to have your employer’s permission to be part of the IPKat team. 

GuestKats and InternKats will start on 1 January 2018. Previous applicants are encouraged to apply.

Apply here for GuestKats and here for InternKats positions.

Monday, 20 November 2017

EMA relocation: and the winner is...

Voting has been taking place today by EU affairs ministers to decide the forum for the relocation of the European Medicines Agency.  The results are in, and the winner is Amsterdam.

The Dutch have beaten off stiff competition from 18 other candidate cities in a complex voting procedure, where each member state had the same input as any other.  Votes were cast by secret ballot, where it is reported that Milan had 12 votes, Amsterdam 9 and Copenhagen 5.  When Copenhagen was knocked out, its votes went mostly to Amsterdam (feels a bit like Eurovision, no?)
At which point Amsterdam and Milan tied at 13-13.  The final decision was taken by pulling a name out of a hat.   Actually.

So how did Amsterdam do in the EMA's relocation staff retention survey in September 2017?  In summary, Amsterdam received a glowing "green" rating (meaning equal or greater than 65% staff retention).  They also did well for location accessibility and access to labor market, medical care and social security.  Detailed results of that survey can be found here.

The UK will say goodbye to 900 people who are employed by the EMA in London.

Congratulations to our Dutch friends - our loss is your gain!

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