Letter from Amerikat: Birthday Bits 'n Bobs

The AmeriKat is celebrating her 2nd birthday this week (she will leave you to calculate her age in Kat years). During the past few days she has cast her mind back to reminisce over the past two years in music, film, politics, and law. When she was a fresh kitten, the radios were booming with Madonna, Queen, Beastie Boys and Peter Gabriel and movie theaters were welcoming audiences to watch Top Gun, Pretty in Pink and Aliens. And in law, in the January that the AmeriKat was born, Kodak lost a patent infringement case with Polaroid, a loss which signalled Kodak's exit from the instant camera business. Today, we may still have Madonna booming away, but this time it is through our iPods. Patent law has also come a long way from the instant camera days. Nowadays our patent wars focus on mobile phone technology, albeit still concerning their camera technology as well as their touch-screen capabilities. This brief journey down memory lane just goes to show that over the past two *cough* years, everything changes, but everything stays the same be it in music or in IP law.

Lawyer Barbie back in the Federal Circuit dealing with Bratz - Something else that has not changed all that much from last year is the continuation of the Barbie v Bratz battle (previously reported by the AmeriKat here) which last week heard the parties' opening arguments in Californian federal court before Judge Carter. Barbie's maker, Mattel, alleged that the maker of the Bratz doll - MGA Entertainment- stole the idea for the Bratz doll by entering into a deal with the designer of the doll who had previously worked for Mattel. Mattel subsequently filed for copyright infringement and trade secret violations, while MGA alleges unfair competition and also trade secret theft. The case being heard by the court last week follows the previously overturned $100 million verdict of Judge Larson in favor of Mattel. MGA appealed this 2008 ruling on the grounds of incorrect jury instructions and an overly broad injunction. The US Court of Appeals for the Ninth Circuit agreed holding that the federal court judge had erred in ruling that Mattel automatically owned the designer's sketch of the doll under the terms of the 'Employee Confidential and Inventions Agreement' between Mattel and the designer and remanded the case back to the federal court. At the end of 2010 both parties applied for summary judgment on the issue of copyright infringement for the first and second generation Bratz dolls. Judge Carter granted summary judgment in MGA's favor in respect of the second generation Bratz dolls, but the remaining issues, including breach of copyright for the first generation of Bratz dolls and the breach of confidence/trade secret claims, remained for trial.

Following Judge Larson's departure from the federal bench, Judge Carter will now be rehearing Mattel's claims, but unlike the first trial the court will be tasked with determining whether the Inventions Agreement entitles Mattel to the designer's ideas for names like "Bratz" together with sketches that he created outside working hours. Also, ripe for ruling is MGA's trade secret claim against Mattel. Last year, MGA filed a counterclaim alleging that Mattel conducted an elaborate corporate espionage scheme in which Mattel employees, including general counsel Robert Normile and their attorneys from Quinn Emanuel, engaged in a racketeering conspiracy in order to gain access to MGA's private showrooms to obtain confidential information of Mattel's competitor's plans. According to a report last year in Am Law Litigation Daily, Quinn Emanuel partner Michael Zeller said that MGA's claims were "second-rate tactics by desperate lawyers" that "won't survive the pleading stage." Well, apparently they have! Mattel's lawyers say that in so far as the information MGA shared was shared at toy fairs, this information does not constitute a trade secret and therefore MGA is not entitled to their claimed $475 million in damages. The trial continues.

MJ's estate increases litigious activities - Last week, Michael Jackson's estate sued a website who is selling a book written by the singer's mother, Katherine Jackson, alleging copyright infringement. As reported by the Associated Press, Howard Mann, who operates the domain name www.jacksonsecretvault.com (picture, right - a shot of the allegedly infringing website left) is on the recieving end of the suit that alleges that he and the website are infringing copyright and are also liable under unfair competition laws. The complaint is reported to allege that the site is using the late singer's likeness and sketches that he drew and is said to creating a fasle endorsement by virtue of the inclusion of a "special thanks" to the estate. In a statement, the estate's attorney Howard Weitzman said that

"The Estate had hoped Mann would voluntarily cease his conduct but that was not to be. People who trade off of Michael's personality, copyrights and trademarks should not be allowed to exploit the legacy of one of the world's most recognized talents for their own benefit."

For more information see these reports in Hollywood Reporter and AP.

Koons's Balloon Dog to pop gallery's bubble? - Artist Jeff Koons has claimed copyright infringement against San Francisco gallery Park Life over a set of bookends that look like Koon's Balloon Dog, i.e. they look like balloon dogs. What do we think IPKat readers? Can Koons claim copyright infringement for anything that resembles a balloon dog? The AmeriKat thinks his lawyers, reported to be Jones Day, must have a field day at children's birthday parties.... For a more in depth look at that saga please see this excellent article in the New York Times. For how to make a balloon dog or an allegedly infringing Koons dog, please click here. (Pictures below from left to right - Koon's Balloon Dog; Park Life's balloon dog bookends; a balloon dog)

USPTO renews its IP Australia vows - Last week USPTO and IP Australia announced the extension of their existing pilot Paris Convention Patent Prosecution Highway (PPH) agreement and the formation of a new PPH pilot agreement utilizing the Patent Cooperation Treaty (PCT-PPH) results. PPH agreements improve efficiency by allowing patent examiners to use work already undertaken in respect of the same claim or claims already reviewed at other patent offices and PCT Authorities. USPTO Director Kappos has stated that by including the PCT "more work can be shared between our two offices. This will benefit applicants by reducing patent pendency and improving quality.” According to the USPTO press release the addition of the PCT international phase work

"will greatly expand the usefulness of the PPH program to applicants and the offices. The new PCT-PPH pilot is scheduled to launch on January 24, 2011. The PPH pilot program and the PCT-PPH pilot program between the USPTO and IPAU are both currently scheduled to continue until April 13, 2012."

Pancake house drops suit against a house of God - Last year the AmeriKat reported on the trade mark suit filed by US eatery chain IHOP which stands for the International House of Pancakes against the International House of Prayer also known as IHOP. Unfortunately, however, there will be no courtroom fireworks in battle between pancakes and God, because four days before Christmas IHOP dismissed its case against the church citing "ongoing mediation with the defendants."

BGH decides in "Hartplatzhelden.de" case

The first civil senate of the German Bundesgerichtshof, which is, inter alia, responsible for competition law matters, decided yesterday in the "Hartplatzhelden.de" case (28 October 2010, case reference I ZR 60/09) that a football association has to accept it when video film clips of amateur football games held by its member clubs are made publicly accessible via the Internet. While the full decision has not been published, the court has issued a press release which is summarised below and which can be accessed by clicking here (in German). In case you wondered: Hartplatzhelden is German for hart court heroes...

On the its website "www.hartplatzhelden.de" the defendant operates an Internet portal that is financed by advertising. Users of the website can upload their on clips of amateur football games showing excerpts from such games that are up to 1 and 1.30 minutes long. Other Internet users can access and watch these videos free of charge. The claimant, the Württembergischer Fußballverband e.V. (the football association of Württemberg), which organises the football games, is of the view that it should have the exclusive commercial exploitation rights in relation to the games. As such, it asked the defendant to cease publication of the video clips and based its claim on 'misappropriation' ("unzulässige Leistungsübernahme"), anti-competitive obstruction and an unlawful interference with its right to an established and operative business ("Recht am eingerichteten und ausgeübten Gewerbebetrieb"). The Regional Court of Stuttgart (Landgericht Stuttgart) decided in favour of the claimant. On appeal, the Higher Regional Court (Oberlandesgericht Stuttgart) agreed but allowed a further appeal to the Bundesgerichtshof, Germany's highest court in civil matters.

The Bundesgerichtshof in turn denied an exclusive exploitation right of the football association of Württemberg and dismissed the claimant's case. The Bundesgerichtshof disagreed with the Higher Regional Court in some points and held that the publication of the video clips could not be considered as an unfair imitation of someone else's protected work (geschütztes Leistungsergebnis) in the sense of § 4 No. 9 letter b UWG (German Act of Unfair Competition). The court stressed that the claimant's work in the form of organising and executing football games also did not require this type of protection. The judges took the view that claimant could adequately ascertain its commercial exploitation of the football games held by its member clubs through prohibiting under its house rules (Hausrecht) that visitors make video recording of such games. Finally, the court also did not accept the claimant's further arguments concerning a exclusive exploitation right of sport associations.

The claimant, the Württembergischer Fußballverband e.V., has issued a press release on its website stating that it will wait for the full decision and the court's detailed reasoning before deciding how to proceed in the future as a "football family". Well, the association clearly appears to be a good sport about it... for now. Hartplatzhelden.de has also commented about the decision stating that they are "happy and relieved" and that it has been a tough game for them. This Kat can't help but whether the Württembergischer Fußballverband e.V. should perhaps just regard the short 1 minute fan videos as free advertisement for its games? Or is this a little naive of me? Thanks go to follow blogger Mark Schweizer... why do I think you may have a comment or two to make here....?

Dilution, free-riding, damage and the 'investment climate'

The IPKat's friend, Advokat Mats Björkenfeldt (Hjalmar Petris Advokatbyrå HB, Sweden) is known to have some strong opinions on various areas of intellectual property law (see earlier IPKat posts here, here and here). Well, now he's having another rage! This time he writes:

"The more I read about European Trade Mark Law and Unfair Competition, the more confused I get. The latest is this: I read in EU Competition Law in Context, Hart Publishing, 2009 [details here], the following:

Nina Korjus, réferendaire to a judge at the General Court of the European Union, has in that book an article called "Unfair Competition and Trade Marks". When it comes to ‘Dilution and free-riding’ she says that there are ‘three types of injury against which Article 5(2) of the [Trade Mark] Directive ensures such protection for the benefit of trade marks with a reputation…’ But when she analyses the LÓréal case [see earlier IPKat posts here and here], she could not find any injury; instead she gives this answer to the outcome of the case in the end of her article (p. 181):

‘Protection of trade mark rights is important not only for the right owners but also for the society as a whole. In fact, it is in the interest of countries to have the strongest possible enforcement mechanism to protect the investment climate and labour markets and also to reduce the loss of tax revenues that are directly affected by the lack of efficient protection against, inter alia, trade mark counterfeiting. Efficient protection of trade mark rights against unfair competition should thus be provided…’

But, one question is still unanswered: if there's no injury in sight, in what way is the ‘investment climate’ influenced by a free-rider?"

Good point, says the IPKat, if my return on investment is not diminished by another's activity, why should I worry? Merpel says, I'm not so sure the question is a valid one: a failure to obtain a maximised profit is as much a part of the 'investment climate' as the likelihood of actual damage, is it not?

Breaking news -- and it's bad for Google and Lego

Here are two pieces of breaking news: Google has lost its appeal against the CTM opposition lodged by a German businessman with a mark including the word "G-mail" in its bid to secure pan-European protection for the word Gmail (see here) and Lego's attempt to use unfair competition law to resist competition from makers of compatible bricks has failed in Italy (see here). Time permitting, the IPKat hopes to revisit each of these decisions at greater length.

eBay France challenged

The IPKat has been a bit slack in failing to report that the French Council of Sales is taking eBay to court in France, arguing that it is failing to comply with a 2000 Act on the regulation of auctions. The Council is arguing that eBay has an unfair advantage over other auctioneers in failing to comply with the Act. As well as the potential for the sale of counterfeits, concerns have been raised regarding tax evasion by eBay users and fakes more generally, such as the user who want sent a photocopy of the picture he thought he had purchased, stuck to a block of wood. eBay counters that that it is not an auctioneer, and so does not fall within the scope of the Act since it only acts as an intermediary to put buyers and sellers in touch with each other.

The IPKat can sort of see the point of the unfair competition argument, if eBay really can be counted as an auction house, but wouldn’t it rather be the equivalent of the the classified pages at the back of a newspaper? However, he has a limited degree of sympathy for the consumers. Yes, they shouldn’t be duped, but they’re well aware of the limited safeguards that are available on a forum like eBay.