Will Tyson's Tattoo KO Hangover II?

You wouldn't want to provoke a fight with Mike Tyson.  But his tattoo artist also seems to be pretty punchy.  Victor Whitmill (trading as Paradox Studio of Dermagraphics) is suing Warner Bros, the makers of Hangover II, to try to get the release this weekend delayed, presumably in order to extract the necessary number of greenbacks along the way. 
The basis of the claim is copyright in the tattoo which adorns Tyson's battered-yet-formidable viz.  He took the trouble to register this thing at the US Copyright Office and, since they conduct some minimal examination, there is perhaps some form of presumption that copyright subsists.  The infringement is apparently parodic, which might save it in the US (but not every country has a parody defence) - we are not familiar with the Hangover series, but the gentleman in the film (pictured courtesy of The Age) appears to be physically pretty much the opposite of Iron Mike.
We thought this might be the first tattoo copyright case, but apparently not - there are reports that back in 2005, tattooist Matthew John Arthur Reed of TigerLilly Tattoo and DesignWork sued in the District of Oregon in respect of adverts featuring NBA star Rasheed Wallace, the man who he had actually tattooed.  He too had registered tattoos as copyright works, though in his case the registrations do not make it clear that this is what the drawings are.  Case settled, apparently. 
"Crazy Americans", I hear you mutter - but not so fast, for this is a truly global IP issue.  One Louis Malloy, a UK celeb tattooiste, threatened (and may have carried through with) a copyright action in respect of tattoos he created on the person of clothes-horse and occasional footie star David Beckham, according to the Daily Mirror.
Why does this strike me as wrong?  The subsistence of copyright isn't the problem - you have a design of some kind, applied to a material substrate, and there might be a preliminary drawing too.  But is the reproduction in the human body of the tattooee any kind of infringement?  That doesn't feel quite right.
Commercially, too, when you tattoo a celeb, you must surely grant some kind of implied licence that they can walk around doing the stuff celebs are so very well paid to do - which includes advertising (unless you also took the trouble to tattoo in some small print with it).  Finally, if anyone has rights in that Tyson tattoo, isn't it the Māori?  They might be more of a match for Tyson than poor Hungover Ed Helms.

Auto news from Belgium

We are grateful, as always, to play Boswell to Intellectual Property's own Dr Johnson, Peter Groves, for steering us to NautaDutilh's report of their success in enforcing copyright in Belgium in respect of car spare parts.  If anyone has more details of the case, please post a comment - sounds interesting.
Another reminder of the curious state of affairs by which the EU Design Directive requires European States to provide copyright protection for designs, without harmonising such copyright protection either with that of other States or with design law.  The result is that parts which could not be protected by copyright in the UK, or by Community design right in Belgium, can nonetheless obtain copyright, for perhaps as long as 70 years after the death of the "artist" (whoever that might be in this case).
On the general theme of copyright, it surely cannot be long now before the UK Supreme Court hands down its decision in the Lucasfilm v Ainsworth Star Wars case.  Watch this space - we will keep you posted.
Finally, since we are plugging NautaDutilh, our congratulations to Professor Charles Gielen for his elevation to Officer of the Orange Order.  We don't know whether orange trousers are part of the regalia - if so, perhaps best to avoid the footie!  Amongst Charles' many services to the industry is his editorship (together with Verena von Bomhard) of the long-awaited, and now hot-off-the-press, text Concise European Trademark and Design Law - recommended for your design law bookshelf.

Copied design cancelled

Alicante News brings word of a rare success in cancelling a Community design (RCD 001595737-0001) on the basis of an earlier national European copyright. The reasons for the relative underuse of copyright as a ground of attack are probably threefold - firstly, copyright in designs is a matter of unharmonised national law which varies widely across Europe, secondly, OHIM (with its allergy to hearings and live witnesses) is ill suited as a forum for assessing copying and thirdly, where the copyright work is already published, it is available for a straightforward prior art-based attack.
But in this case, the designs (of textiles) are the kind of thing that is going to be protected by copyright in most places, and the opponent managed to file evidence of a chain of correspondence from the original Belgian designer of the copyright work to the RCD applicant. In any event, the designs do appear so close that the inference of copying is pretty well unavoidable.

Italian Copyright in Transition

We have previously reported on several references from the Italian Courts to the European Court of Justice concerning "resurrected" copyrights. Before the Design Directive 98/71, copyright was largely denied to designs, but this was incompatible with the "cumulation" provided for by Article 17 of the Directive. But what to do about those resurrected copyrights, particularly those where infringement had already started, given the lack of transitional provisions in the Directive?
Professor Cesare Galli of IP Galli Law Firm reports, in the International Law Office newsletter, that following the Flos case there is a new Italian law providing for a five year transitional run-in period for continuing infringement - expiring in 2006, however, so that anything on the Italian market in future should be copyright-cleared.

Pilgrim's Pyrrhic victory?

"I bought it in China - I had no idea it was a copy". Can a company these days pass the buck to their Chinese supplier, or should they not at least ask the question? This seems to have been the issue in Pilgrim A/S v Dansk Smykkekunst A/S (Maritime and Commercial Court, August 17 2010, Case V-6-09), reported by Mads Marstrand-Jørgensen of Norsker & Co in the ever-helpful International Law Office newsletter.
Pilgrim sued on the basis of a men's necklace. They failed to cross the copyright threshold, and Denmark's usually-reliable Marketing Practices Act let them down because they did not establish Danish sales, apparently. However, subsistence and infringement of Unregistered Community Design right were found. A good result? Alas, no. The Court held that Pilgrim should have no damages or compensation because "the Court is not satisfied that Dansk Smykkekunst has known or should have known Pilgrim's necklace" and, indeed, they made Pilgrim pay Dansk's costs.
Somehow, it seems wrong to us that the proprietor, after infringement has been shown, has to pay the infringer's costs because the infringer did not determine that the goods were infringements. On the one hand, of course, it is generally better to chase the copyist and manufacturer rather than the retailer. But on the other, that is far from easy when they are located abroad - and they know it. So we think it is just a bit too easy these days to play the innocent or ignorant importer. Is there anyone out there who is unaware that fakes can be bought in the Far East? We doubt it.
But what do you think?

Triumph over Beyoncé

The Munich District Court wants Beyoncé to take off her underwear - only to avoid further copyright infringement, of course!

Sony, the producer of a music video with Beyoncé, received an injunction order issued by the court on behalf of the Munich lingerie company Triumph due to copyright infringement in December 2009. In this video, the famous US singer wears an unusual and stylish combination of underwear with bracelets and a pair of sunglasses.

Sony’s appeal has recently been refused by the court. The design of Beyoncé’s underwear, says the court, is similar to what a design student from Bulgaria drafted for a lingerie competition organised by Triumph in 2009. The student had become one of the finalists of this competition, and his design was even published in Italian Vogue. In an interview he said that he had been inspired by Picasso.

In the judge’s opinion, the design has a high level of individuality and, therefore, it assumes a high level of protection. The decision is only based on copyright, but protection as an unregistered Community design also comes into consideration. So far so good, but in addition to the legal matters, Triumph showed its probably deeper interest in publicity: it offered Sony and Beyoncé to withdraw the order if she would become an honorary member of the Jury for the next lingerie competition. She declined.

It is rather certain that this case will go to a higher court. Let's hope that underwear labels and attractive singers will find harmony soon again.

This post was contributed by Adrian Kleinheyer, trainee lawyer in the Munich office of Bardehle Pagenberg.

"... Unless by the judgement of his peers"

Jury trials have long been a feature of the common law, and a right at criminal law enshrined by Magna Carta in 1215. We had juries in England for patent trials right into the 19th century, and of course they remain an active feature of US patent and design litigation (though this is not uncontroversial: see this discussion on Prof. Crouch's excellent Patently-O site).

But does a patentee get "the judgment of his peers"? A standard jury is selected from the general public at random, after exclusion of lawyers and others in the legal trade, and in many cases consists of those who lack the intellect to escape jury duty. Is it fair to expect a decision on a patent or design issue from the man in the street?

It was not ever thus. When jury trials were the norm for civil matters in the UK, "special juries" were often empanelled, consisting of people from the trade concerned. The system seems to have died out (at least for City of London financial cases) as late as the 1970s according to Vidmar.

Professor Mario Franzosi's excellent JIPLP article Design Protection Italian Style discusses the institution of the Italian Design Jury, which provides opinions on design subsistence and validity, and we note that in the recent Swedish Maglite case (discussed on Class 99 last month) the Supreme Court followed an opinion on copyright subsistence of the Copyright Panel of Svensk Form, the Swedish Society of Crafts and Design. Juries, such as for example Red Dot's jury, are common enough in judging excellence in design. Could something like this work for design cases in common law countries? Or would a jury of designers be too harsh a tribunal for an essentially consumer-focussed intellectual property right?

Good news for copyright infringers, or a Trapp to Tripp designers?

This posting is by Class 99-er Henning Hartwig.

German case law isn’t famous for awarding exorbitant damages in IP infringement matters. Now, it appears as if German Courts are even going into reverse: Just published, the German Federal Supreme Court has only recently decided, in Case I ZR 98/06 Tripp-Trapp-Stuhl, that copyright infringers are not obliged to render the whole profit made with the infringing copy even when imitating one-to-one the work-in-suit (in this case, the well-known Tripp-Trapp child's chair). The court found that, in such a case, the decision of the consumer to buy the copy (and not the original) was not based “entirely on the infringement” but rather on other factors such as “functionality” or “good price” of the copy. In short, the consumer is buying the copy not only because of it being identical with the original, but because it is cheaper.

This observation doesn’t seem to be new or surprising – why should I buy a copy if it isn’t even cheaper than the original? In fact, there is most probably no copy that isn’t offered at a better price than the original. But this is no excuse for courts to let copyright infringers get away with some of their profits. Should these people really be rewarded by being allowed to keep a part of their profits because they sell their copies for less (and clearly detracting buyers from acquiring the original), whereas infringers selling their copy at the price of the original (highly unlikely, though) would have to render the entire amount of their profits? And how can a court determine and weigh factors such as “functionality”, “low price”, “imitation” etc., factors that are decisive, according to the court, for calculating the percentage to be deducted from the profits?

The decision raises more questions than it answers – including the critical question to what extent this reasoning will be transferred to other IP rights. If German courts answer this in the affirmative, Germany would indeed find itself before a change of paradigm.

Fabrics - no Design Copyright in India

Our friends at K&S report the appeal judgment in Microfibres v. Giridhar & Co (taken together with two others: Mattel Inc & Ors v. Jayant Agarwala & Ors and Dart Industries v. Techno Plast & Ors). The plaintiff had not registered their fabric design, and now sought to enforce artistic copyright in the painting on which it was based.
The defence was that, once the artistic work had been industrially applied by 50 articles having been made, copyright could not be used to prevent competitors from doing likewise, under Section 15(2) of the Copyright Act, 1957 (a provision having counterparts in many other countries which share a common copyright ancestry with the UK) which
is in the following terms:

Copyright in any design, which is capable of being registered under the Designs Act, 1911 (2 of 1911), but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.

The Court upheld the defendants. Indian public policy was to protect industrially exploited articles by design registration, or not at all. In this case, in fact, the plaintiff had indeed registered the designs in the UK (possibly as GB 0602285 or GB 0600566) - but not in India.
Along the way, the Court considered arguments that the intention in creating the copyright work was relevant, or that the artistic quality was relevant, and rejected both - quite correctly, we think.
There was, however, an interesting argument in the judgment for IP practitioners. Greybeards will remember Catnic v Hill & Smith [1978] FSR 405, [1982] RPC 183 - one of Catnic's interminable lintel battles. In that judgment, Whitford J held that on applying for a patent, one effectively elected to waive copyright in the corresponding drawings. According to Whitford:

"In my view, by applying for a patent and accepting the statutory obligation to describe and if necessary illustrate embodiments of its invention, a patentee necessarily makes an election accepting that, in return for a potential monopoly, upon publication, the material disclosed by him and the specification must be deemed to be open to be used by the public, subject only to such monopoly rights as he may acquire on his application for the patent and during the period for which his monopoly remains in force, whatever be the reason for the monopoly rights.

That decision certainly had a chequered history. Whitford J. cited himself with approval in Rose Plastics GmbH v. William Beckett & Co. (Plastics) Limited and Another [1989] 1 F.S.R. 113, but no other UK judge did so, and the decision was not followed in Ireland (House of Spring Gardens Limited and Others v. Point Blank Limited and Others [1985] F.S.R. 327), New Zealand (Wham-O Manufacturing Co. v. Lincoln Industries [1982] R.P.C. 281), Australia (Ogden Industries Pty. Ltd. v. Kis (Australia) Ltd [1983] F.S.R. 616) or Hong Kong (Interlego AG v. Tyco Industries Inc. and Others [1987] F.S.R. 409 CA). On the other hand, it was apparently followed in Canada (see Gordon J. Zimmerman), and statutory provision was made in New Zealand to enshrine it in the Copyright Act. It was pointedly distinguished in a later UK design case, Gardex v Sorata [1986] RPC 623, and it is now widely thought to be bad law here. It is therefore strange and sad to see it cited as authority for the proposition that you can't have your design cake and still eat copyright, and a shame that the Court did not take the chance to rule the argument out in India.

New ECJ reference on design copyright

The UK IPO mentions a new reference to the ECJ, link here. Polish readers may prefer this link. The case relates to Articles 17 and 19 of the Design Directive 98/71; the former enshrines the principle of "cumulation" of copyright and design protection, and the latter is the implementation provision.

In implementing Art 17 without explicit transitional provisions, Italy did away with the principle of separability, and reintroduced copyright protection. Some Italian cases have precluded copyright protection for pre-existing works, whereas others have held copyright to exist in even those pre-existing works which have been around for many years.

This reference will, hopefully, enable the ECJ to sort out the Italian dilemma at their usual stately speed. It is, however, pretty outrageous to legislate with such flimsy transitional provisions, and the EU knows full well it is not meant to do this; Art 20 of the Interinstitutional Agreement of 22 December 1998 on common guidelines for the quality of drafting of Community legislation states that "Provisions laying down ... transitional provisions (in particular those relating to the effects of the act on existing situations) ... shall be drawn up in precise terms."

Parliament, the Commission and the Council all signed up to that, so when were they thinking of applying it?

Serbian design & copyright changes in sight

Our friends at S.D. Petosevic, a trans-Balkan IP firm, report that changes to Serbian design, copyright and chip protection laws are under consultation. On designs, the changes "intend to bring Serbian IP legislation in line with the international and European regulations, namely the TRIPS Agreement, the Geneva Act of the Hague Agreement, and various EU directives". For example, a right of appeal is to be introduced. We will keep you posted.