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27 March 2018Copyright

You may have missed: Four court rulings from last week and why they matter

Last week, WIPR reported on four important senior court rulings, including one case involving Marvin Gaye’s estate. Below we outline why they are important for lawyers.

Lines sharpened in Marvin Gaye copyright clash

In a split opinion handed down on Wednesday, March 21, the US Court of Appeals for the Ninth Circuit upheld a $5.3 million judgment against Robin Thicke and Pharrell Williams, finding that their hit song “Blurred Lines” infringed the copyright of Marvin Gaye’s 1977 tune “Got To Give It Up”.

Lauren Greene, associate at Gerard Fox Law, said the decision was correct in her opinion.

“In copyright cases, the issue of substantial similarity between two marks should be left to the trier of fact”, and as such the appeals court should not “disturb” the verdict the jurors reached, she said.

The “Blurred Lines” creators had appealed against the jury’s finding of infringement in 2015. Their calls for a retrial were rejected, but the US District Court for the Central District of California did reduce the jury award of $7.4 million in damages to $5.3 million in 2015.

Greene noted the award acts as a warning—“the cost of a licence pales in comparison to the potential impact” such a lawsuit can have on artists’ finances, she said.

In 2016, Thicke and Williams appealed against the ruling. They gained the  support of more than 200 musicians, including Danger Mouse, Fall Out Boy, and Train, driven by concerns that there would be an adverse impact on artist creativity if the judgment was allowed to stand.

The Ninth Circuit upheld the jury verdict and the reduced award of damages as there was “not an absolute absence of evidence” that the two songs were similar. The concerns of other musicians were labelled “unfounded hyperbole” in the majority decision.

Dissenting, Circuit Judge Jacqueline Nguyen said the decision allowed the Gaye family to “accomplish what no one has before: copyright a music style”. She added that there is “no evidentiary basis” to conclude that the two songs are substantially similar.

Greene said the case will have a practical impact on how artists and producers approach any attempt to “capture the ‘feel’ of another work”. Creators should be diligent and ensure they acquire licences for works which may appear to reflect earlier creations.

She added that Nyugen’s dissent understates the similarities between the two works.

Greene explained: “In the years between ‘Got To Give It Up’ and ‘Blurred Lines’ hundreds, if not thousands, of works were created in the soul and classic R&B style which sound nothing like ‘Got To Give It Up’. Artists will still be able to create soul music, but will have to be cautious when they create soul music by copying the elements of one song.”

Lessons learnt in love

Last week, WIPR  reported that the EU General Court’s Second Chamber affirmed the European Union Intellectual Property Office’s (EUIPO) refusal to register a figurative mark due to its descriptive character.

Webgarden Szolgáltató és Kereskedelmi Kft’s mark, applied for in 2015, featured a red figurative pattern in the shape of two hearts next to the words “Dating Bracelet” in blue text. It covered classes 9, 41, 42, and 45, including computer software, entertainment services, and online networking sites.

On appeal, the Hungarian web design company argued that consumers would associate the phrase “dating bracelet” with a physical object such as jewellery rather than the IT goods and services covered by the mark, but the court disagreed.

Iain Connor, partner at Pinsent Masons, said that practitioners typically advise clients to include a logo element in trademarks which might otherwise be considered descriptive by the courts. This can provide a distinct overall impression and ultimately overcome any descriptiveness of the words alone, Connor added.

However, in this case, the court said that “rather than serving to distinguish the mark, the figurative elements of two entwined hearts served only to provide a ‘direct and concrete link’ to the public of the descriptive meaning”, Connor explained.

The court said that “dating bracelet” could mean bracelets intended to be worn in entertainment venues which could be connected with electronics or computer chips to allow for networking, providing consumers with an “obvious” link between the meaning of the mark and the goods and services it relates to.

Connor noted that it’s not clear on what basis the court found that consumers would regard the figurative element of the entwined hearts as meaning “dating”.

He concluded that while the decision may appear “quite harsh” it should serve as a lesson to applicants. They should ensure that any figurative elements of a brand “serve to distinguish the goods and services rather than complement or confirm a connection to them”, Connor said.

Retailer out of the dog house

On Tuesday, March 20, a German retailer of dog accessories emerged victorious when the General Court rejected a Spanish alcohol company’s trademark appeal.

Georgina Shaw, senior associate at Burges Salmon, said the decision is reflective of commercial reality: the interests of the right owners involved, that being a dog accessories company and an alcohol company, are completely different.

As such “they should both be free to trade under their respective marks within the EU without confusion arising”, she added.

The owner of online shop  Dontoro applied to register a figurative sign featuring the words ‘Dontoro dog friendship’ below a crown in 2012, covering dog accessories and advertising material relating to the wholesale of clothes.

Spanish alcohol company Grupo Osborne filed a notice of opposition based on its own mark ‘Toro’ (EU trademark number 2,844,264), which covers leather goods and clothing.

Osborne appealed against the EUIPO’s First Board of Appeal’s decision which found only a low degree of similarity based on the “clear connection” between its own goods and those covered by class 35 of the applied-for mark.

The appeal board had made an error in finding that the goods covered by the marks were only similar to a low degree, according to the court. The General Court concluded that the goods actually share a “close relationship”, but upheld the board’s overall finding of low visual, conceptual, and phonetic similarity.

“Whilst it is a technical point, it is one which can impact on the overall assessment of a likelihood of confusion and so cannot be overlooked”, Shaw said. “It is settled law that such goods and services are complementary, but there have been conflicting decisions historically on their degree of similarity as a result.”

The court said the board was wrong to find the respective class 25 and 35 goods and services to be similar to a “low” degree as there was instead a “certain” degree of similarity. However, Shaw noted that the court still agreed that there was no likelihood of confusion due to the low degree of similarity.

Gina Lodge, managing associate at Marks & Clerk, said it is interesting that the court was prepared to find a level of similarity in a case where the applied-for mark was “a complex mark consisting of several word and figurative elements, which merely reproduced the earlier mark as part of one such element”.

She explained: “It has long been accepted that coincidence in a standalone element can be sufficient to support a finding of similarity between two marks, but it is one step further to say that coincidence between an earlier mark and part of one of the elements of a later mark is enough.”

Ultimately, the case is a reminder to right owners that just because a figurative mark contains the wording of the earlier registered mark as one of its elements, the other aspects of the sign may well be enough to overcome the likelihood of confusion, Shaw concluded.

Mobile living TM comes to standstill

‘Mobile Living Made Easy’ cannot be registered as a trademark as it would be understood as an “advertising slogan”, the General Court’s Eighth Chamber said on Thursday, March 22.

Domestic Sweden, a provider of mobile living products and services, applied to register the mark in 2015, to cover a number of products and services related to mobile living such as cleaning products and maintenance relating to mobile homes.

The EUIPO rejected the application as the sign relates to the products and services it covers, and would be interpreted as a promotional “laudatory” message.

On appeal against the decision, Domestic Sweden argued that the EUIPO had erred when it considered all of the goods and services together, within the homogeneous category of goods and services which facilitate mobile life, rather than assessing each distinct category in relation to the mark.

Elna Jönsson, attorney at Swedish firm Lindahl, said the the decision is in line with previous case law.

The court affirmed the EUIPO’s finding, finding that the goods and services can be assessed in one single category given their common characteristic. Because the goods and services are sufficiently interlinked, the board was correct to reject the application.

Based on this reasoning, the court said that the applied-for mark would be perceived as an “advertising slogan” and that it doesn’t feature any distinctive element.

Although goods and services of a trademark application “may have very different specific characteristics, it does not exclude the possibility that they may also have a general characteristic in common”, said Jönsson.

She noted that, in light of this judgment and from a practical perspective, it would be useful for applicants and practitioners to consider whether the goods and services covered by an applied-for trademark may form such a homogeneous category “in order to be better prepared for a possible rejection” on such grounds.

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