Lovely jubbly - English Courts provide guidance on when an intended parody becomes copyright infringement

Intellectual Property | Judgment update

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SHAZAM PRODUCTIONS LTD -v- ONLY FOOLS THE DINING EXPERIENCE LTD & ORS [2022] EWHC 1379 (IPEC)

A recent decision by the IPEC should act as a warning to anyone who is intending to base their own productions or works on existing works, particularly where they intend to do so for their own commercial gain.

The Case

The Intellectual Property Enterprise Court (“IPEC”) has provided (perhaps overdue) guidance on some key copyright issues, including whether fictional characters themselves are eligible for copyright protection, and when a parody or pastiche defence to copyright infringement may be raised.

The case concerns whether an interactive dining experience based on the BBC comedy series Only Fools and Horses constituted copyright infringement and/or passing off.

The claimant alleged copyright subsisted in particular scripts, the body of scripts as a whole, and the character Del Boy.  The claimant first needed to show that each of these was a copyright work under the Copyright, Designs and Patents Act 1988 (“CDPA”).

In relation to the scripts, the Judge concluded that they were dramatic works under Section 3 (1) of the CDPA, rather than literary works, as they were intended to be performed.

The “world of Only Fools and Horses” contained in the body of scripts however was not found to be a dramatic work (as it would never be performed in one go), or a literary work (as there was no intellectual creation in the arrangement of the scripts together).  Each script was simply a separate dramatic work.

In relation to the Del Boy Character, the claimant was ordered to identify five features of the character in which they allege copyright subsists from a particular script, and came up with the following:

Copyright

The claimant alleged copyright subsisted in particular scripts, the body of scripts as a whole, and the character Del Boy.  The claimant first needed to show that each of these was a copyright work under the Copyright, Designs and Patents Act 1988 (“CDPA”).

In relation to the scripts, the Judge concluded that they were dramatic works under Section 3 (1) of the CDPA, rather than literary works, as they were intended to be performed.

The “world of Only Fools and Horses” contained in the body of scripts however was not found to be a dramatic work (as it would never be performed in one go), or a literary work (as there was no intellectual creation in the arrangement of the scripts together).  Each script was simply a separate dramatic work.

In relation to the Del Boy Character, the claimant was ordered to identify five features of the character in which they allege copyright subsists from a particular script, and came up with the following:

  • His use of sales patter with replicated phrases

  • His use of French to try to convey an air of sophistication

  • His eternal optimism

  • His involvement in dodgy schemes

  • His making sacrifices for Rodney

There was no English case law authority that provided that copyright subsisted in the concept of a character. However, the Judge proceeded to apply the standard two part copyright test for whether copyright subsists from the EU Cofemel decision (C-683/17 Cofemel v G-Star Raw [2020] ECDR 9):

  1. that there exists an original subject matter, in the sense of being the author’s own intellectual creation” - the subject matter must reflect the personality of its author, as an expression of his/her free and creative choices.
    The Judge found that Del Boy as a character is an original creation of John Sullivan (the writer) which is the expression of his own free and creative choices. In deciding this, the Judge described the unique characteristics of Del Boy, including that he was “a fully rounded character with complex motivations and a full backstory”.

  2. classification as a work is reserved to the elements that are the expression of such creation” - the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.
    The Judge found that the character of Del Boy is clearly and precisely identifiable to third parties in the scripts, and in particular the five characteristics identified by the claimant.

The Judge therefore concluded that the character Del Boy constituted a literary work for the purposes of section 3(1) of the CDPA.

Once this had been decided, the question of infringement was much easier, as the Judge found that “the evidence of infringement by the defendants is overwhelming and obvious” and that the level of copying was far more than the substantial copying required for infringement.

Fair Dealing Defences - Parody/ Pastiche

Section 30A of the CDPA provides: “Fair dealing with a work for the purposes of caricature, parody or pastiche does not infringe copyright in the work”.  The defendant sought to rely on this.

However this defence only applies where it does not conflict with a normal exploitation of the work or other subject matter and does not unreasonably prejudice the legitimate interests of the right holder (found in EU Directive: 2001/29/EC – the Info Soc Directive, in which section 30A has its origins.)

In order to qualify as a parody, the Judge noted that there should be an expression of some kind of opinion by means of imitation, but noticeable difference, from the work parodied.  This is more difficult, and far less common, where the parodied work itself is a comedy - mere imitation of a work of comedy (as in this case) is not enough to constitute parody.

In order to qualify as a pastiche, the use must either imitate the style of another work, or be an assemblage/medley of a number of pre-existing works, but must be noticeably different from the original work.  In theory this may therefore apply to a broad spectrum of ‘mash-ups’, fan fiction, music sampling, collage, appropriation art, medleys, and many other forms of homage and compilation – with each to be assessed on their own facts and merits.  The defence did not apply to these facts however, as the dining experience merely took the characters, back stories, jokes and catch phrases, and presented them in a live dining format, and so was more akin to reproduction by adaptation than pastiche.

Even if the use was found to properly fall within the definition or either a parody or pastiche, the Judge concluded that the use was not fair either, because:

  • the taking from the scripts was very extensive both in terms of the quantity of material and its quality;

  • the use made of the scripts was not a type of expression which attracts particular protection or engages fundamental rights e.g. political views, artistic dialogue or aesthetic criticism;

  • the aim was of putting on the show was simply to entertain the audience by bringing them into contact with the copied characters;

  • the use competes with the claimant’s own exploitation of the works, through promotional items and its own musical production, and conflicts with its legitimate interests in such.  The claimant would ordinarily look and expect to be able to control use of the works e.g. by licencing to third parties.

Passing Off

The Judge also found that the dining experience “passed off” the claimant’s rights in the Only Fools and Horses show, with the facts meeting the three part test in Reckitt & Colman Products Ltd v Borden Inc (No.3) [1990] 1 WLR 491:

  1. The claimant had significant goodwill in the name and characters, from for example the broadcast and merchandising since 1981;

  2. The name “Only Fools The (cushty) Dining Experience” was liable to confuse and mislead (misrepresentation); and

  3. There was a real likelihood of damage in the form of diversion of trade from the official musical production to the defendants’ (cheaper) dining experience.

Comment

This decision shows that copyright in the UK may be used to protect more abstract concepts such as characters within a script, mirroring similar protection granted in Germany for the character of Pippi Longstocking, and the US for the characters Sherlock Holmes and Dr Watson.  There was previously some concern that the UK courts had to stick rigidly to the specific types of ‘work’ listed in the CDPA, but following Cofemel this decision shows that the UK courts may be more flexible in finding that something is protectable by copyright.  Here they found that a character in a script, with five key characteristics, was classed as a “literary work”.

However, it also shows that not everything will be protectable, as the body of scripts, or the “world of Only Fools and Horses”, was not separately protectable outside of the individual scripts constituting such.

The decision should also be a warning to anyone who is intending to base their own productions or works on existing works, particularly where they intend to do so for their own commercial gain.  This may constitute copyright infringement and passing off.  Where the pre-existing work is as well-known as Only Fools and Horses, it may be both more likely that the owners of the relevant rights will take action and also that they will succeed.

Just because the derivative work is a comedy does not mean that it will fall within the parody or pastiche defences, particularly where the original work was also a comedy itself.

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Danny is an associate in our Intellectual Property team, with a specific focus on contentious intellectual property matters.

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'Invisible’ trade marks. Is it possible to protect or infringe something you can’t see or touch? Yes it is

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The complex and constantly evolving art of SEO (search engine optimisation) has kept marketers and content writers busy in recent years but now lawyers are getting involved too.  A recent trade mark infringement case between US dating site group Match Group, owner of Tinder and OkCupid, and smaller UK dating site Muzmatch, a Muslim dating app, has centered on the use of trade marked words and phrases that appear in a company’s SEO strategy and metadata. The judgment was handed down on 20 April 2022.

It is not uncommon for businesses in a similar marketplace to employ various tactics to take advantage of a competitors brand presence but there has been an increase in companies using competitors’ trade marks in metadata and SEO strategies, in an attempt to compete directly with each other online.

Incorporated into copy or buried deep in code, these are often referred to as ‘invisible’ trade marks, creating a grey area when it comes to infringement.  As a relatively new ‘marketing’ tactic, the impact of using this approach for both parties involved is only now being fully understood and as it is still comparatively new, lawyers are now taking a closer look.

The background

Search engines use algorithms and will crawl and trawl web pages to find keywords to help with page rankings.  Incorporating invisible trademarks into page content can drive traffic to a site and in this case, Muzmatch had created individual landing pages for approximately 5,000 keywords relating to Muslim marriage or Muslim matchmaking, which then directed browsers to the organisation’s main page.

This approach proved an incredibly effective marketing tool for the business, with an estimated 32,770 searches of three specific URLs leading to 11,725 click-throughs to the landing pages on the Muzmatch website.

Other companies have also hidden trade marked keywords on their websites by adding them in the same colour text as the website background so they cannot be seen, or by making the font size so small that it looks like a simple black line until the user zooms in. While the end user is unlikely to see them, search engines will.

Another way for companies to use trade marks ‘invisibly’ is by incorporating them into metadata and metatags, which is information used by search engines to identify the content of a website.

Both of these strategies are employed by many businesses very successfully but it can also open opportunities up for legal action too.  Match.com’s central argument was that Muzmatch used the word ‘match’ in its SEO and metatags to boost web traffic and therefore piggyback off the Match.com name. The word ‘match’ unsurprisingly appears in multiple registered trade marks owned by Match.com.

What is the current law?

Current law does not explicitly cover specific use in a digital setting – so law makers are applying existing trade mark law to new situations.    As the law is not distinct to a digital setting, the facts of each potential case of possible infringement are absolutely key and, as businesses are finding out, there are a vast number of variables involved – such as the wording of the trade mark itself, the goods or services on offer, the consumer demographics, similarity of the mark which is actually registered to the one used, how it is used, and even the trading history and size of the parties involved. Muzmatch’s response argument was primarily based on the trade mark itself, claiming that they had used the word ‘match’ in a purely descriptive sense, yet they were still found to have infringed Match Group’s trade marks incorporating the word ‘match’.

While it is entirely possible (and common) to trade mark an everyday phrase or word, it is highly unlikely that any company could prevent it ever being used elsewhere – that would provide too wide a scope for protection. However, as Muzmatch had included the word ‘match’ in its SEO strategy it was decided that it was using it in such a way as to potentially confuse a customer into thinking Muzmatch was affiliated with match.com - and therefore infringed its trade mark.  Such a finding is more likely in circumstances such as this where the goods/services offered by the potential infringer are identical to those for which the trade mark is registered.

Muzmatch’s second argument revolved around concurrent trading history. As the business had been trading since 2011, it felt that there had been sufficient time for Match Group to bring a case during this period, if it truly believed infringement had taken place. There is precedent for the ‘honest concurrent use’ defence, which briefly provides that if two companies use the same or similar words or phrases concurrently for a sufficiently long period, that mark may have come to indicate the goods or services of either of those parties.  Either company may then be entitled to register the mark notwithstanding that the other company had also used the mark, and may be able to defend an infringement claim brought by the company. It was however ruled in this case that this defence did not apply to Muzmatch as Match Group had filed the trade mark in 1996, 15 years before Muzmatch was formed and started trading.  It was found that they were therefore technically infringing from the beginning of their trading.

How can companies mitigate the risk of this happening?

There are a number of ways that companies can minimise the chance of legal action when planning their SEO and metadata marketing strategies. If there is any possible chance of brand confusion, putting a disclaimer on the website clearly stating there is no affiliation can help to sway a judge in the business’ favour should a competitor accuse them of infringement. Beware – it must be used in good faith and if found to be buried in the small print or is difficult to find then this may be viewed by a court as deliberately obscuring it, allowing for confusion.

Companies should also consider consulting a legal specialist before deciding and embarking on a SEO marketing strategy. As mentioned there are many variables and seeking legal advice ensures the correct due diligence has been carried out from the beginning, for example checking or clearing the metatags and keywords to be used, ensuring they will not be infringing another company’s trade marks.

This case could be viewed as a David v Goliath style situation - larger companies, such as Match Group with more time and deeper pockets bringing action against possible smaller infringers, who may not have the resources to engage in a costly legal battle.

The term ‘ invisible’ trade marks is also slightly misleading as while they are hidden from a user, any analytics software can find them and any code can be found using an internet browser. Therefore ‘invisible’ is not be confused with invincible and businesses should proceed with caution.

We wait to see how the law surrounding trade marks evolves to fit the digital world of today. With current decisions in this area primarily based on case law, they are subject to change and are always fact specific, creating a distinct lack of certainty. Many past decisions have also been influenced by EU laws, which now of course become less relevant in the years following Brexit.

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Mauro has over 25 years’ experience in advising clients on contentious and non-contentious intellectual property related issues.

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Ed Sheeran wins Shape of You copyright case - a ‘note’ of caution

Blog | Intellectual Property

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Ed Sheeran has had his day in the High Court and the judge has decided that his 2017 chart topper has not plagiarised the work of Sami Chokri.

Sheeran’s hit ‘Shape of You’ is one of the most played and downloaded songs of all time. It has been streamed more than three billion times on Spotify, and reputably generates over five million pounds per year from that platform alone. When a song is as successful as this, it becomes a tempting target for those who thinks they can rightfully claim a share of that success for themselves. If you have a legitimate case for copyright infringement, for the right song, pursuing a claim can be a very shrewd investment of time and legal fees. However, as we’ve seen here in the ruling, that investment is not without risk.

This High Court ruling may embolden artists to be more brazen in ‘taking inspiration’ from each other, without fearing the consequences of copyright infringement. While this makes the process of creating (and publishing) music easier, in some cases it might deprive smaller artists of income that should have gone to them.

It is rare for a copyright infringement case to get this far in court and it is a scenario that has plagued Sheeran before.  Often these cases reach an out of court settlement, as it’s usually a less expensive result for both parties. Clearly, in this instance, Chokri believed he had a strong case but unfortunately it wasn’t strong enough and he now faces a considerable legal bill.

This ruling indicates that the UK IP courts aren’t going to support US-style speculative litigation. It will take more than a short section of ‘basic minor pentatonic pattern’ which is ‘entirely commonplace’, to establish a successful claim of copyright infringement. All music is derivative to a certain extent. This ruling shows that clear similarities throughout two songs are needed to form a substantial case.

Copyright is designed to encourage creativity by rewarding original creators, and this case shows how the law attempts to balance the rights of creators at every stage in a song’s development.

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Isaac is a trainee solicitor working within the Intellectual Property team.

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Trade mark disputes in the spirits industry

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Breweries have made the news in recent months with some top brand drinks involved in trade mark disputes. However, it is not just breweries in the food and drink sector that encounter these issues when looking to apply for trade marks for new brands and product names - other alcoholic drinks manufacturers have too.

What should drinks manufacturers do?

All drink manufacturers (and their respective brands teams) should generally follow the same steps as breweries when deciding on a new brand or trade mark:

  • Decide what they would like to register (a word or phrase, a logo, or a combination), ensuring that it is not overly descriptive of the goods or services and not a generic phrase.

  • Decide which goods or services are to be covered by the registration. For distilleries, the obvious choices are in Class 33 which includes alcoholic beverages other than beer, such as gin, vodka and whisky.

  • Decide which territories to be covered by the registration(s). Ultimately this depends on where the brand intends to trade.

  • It would then always be advisable to search for existing similar or identical brands and trade marks. If budget allows, a proper clearance search by a suitably qualified professional will be a sound investment.

There have been a number of recent decisions at the UK Intellectual Property Office relating to trade mark applications for other alcoholic drinks, such as spirits, where the applications were opposed by proprietors of earlier registered, similar trade marks.

Brewdog’s ‘Tiger Strike’ v ‘Tiger Vodka’ - A Tiger in the (Distilling) Tank?

Throughout Brewdog’s rapid expansion in the alcoholic drinks market, they have regularly encountered issues with their branding and trade mark strategy – both when enforcing their trade marks and when their applications have been opposed by a competitor with an earlier brand.

A recent decision illustrates that Brewdog’s trade mark difficulties are not limited to their beer brands and trade marks.  In June 2020 Brewdog applied for a trade mark for ‘Tiger Strike’ for the following goods in class 33:

Alcoholic beverages (except beer); spirits; distilled spirits; whisky; blended whisky; liqueurs; gin; vodka; rum.

There was however an existing ‘Tiger’ brand used by a separate company for various spirits, which was protected by way of six UK trade marks registered for what were found to be identical goods.  These were registrations for the following marks: ‘Tiger Gin’, ‘Tiger Rum’, ‘Tiger Spirits’, ‘Tiger Tequila’, ‘Tiger Vodka’, and ‘Tiger Whisky’.

The decision focused on comparing Brewdog’s ‘Tiger Strike’ with ‘Tiger Vodka’, as the officer noted that the other marks would not put the opponent in a better position (as they each consist of the word ‘Tiger’ followed by the name of an alcoholic drink).

The opponent relied on section 5(2)(b) of the Trade Marks Act 1994, which provides that:

a trade mark shall not be registered if because—

(A) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, OR

(B) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

The opposition to Brewdog’s trade mark application succeeded in this case, after the hearing officer made a global assessment of all relevant factors, with the decision noting in particular that:

  • The first words are identical, the marks have medium visual, aural and conceptual similarity, and the second word in the earlier mark is descriptive;

  • The use of ‘Tiger’ in the earlier mark was inherently distinctive of the goods covered by that trade mark to a medium degree - it neither alludes to nor describes the goods;

  • The identity of the goods covered by the marks may be used to offset a lesser degree of similarity between the marks; and

  • The goods will be purchased with no more than a medium level of attention, a significant proportion of average consumers will note the differences between the respective marks but conclude that the marks relate to economically-linked undertakings, e.g. ‘Tiger Strike’ might be perceived as a range or line of drinks under an overarching earlier brand ‘Tiger’.

This decision shows again that choosing a distinctive and unique name for a new sub-brand of goods is important – it may be difficult to obtain trade mark protection for your new brand, and it may also leave you open to a trade mark infringement claim and a costly rebrand exercise.  As mentioned, a clearance search prior to deciding on a new brand may of course help to avoid such situations, or at least provide a better picture of the potential risk. Filing an application itself can also flush out existing rights.

The decision also shows that what may be seen as a smaller competitor can succeed against a larger competitor, provided they have the relevant, earlier registered rights (as the opponent did here).  The protection afforded by an earlier registered trade mark can have real value to businesses of all sizes, particularly in crowded industries where brand recognition and reputation are key.

Thirsty Jack v Jack Daniel’s – Jack of all trade marks?

Another recent UKIPO Tribunal decision concerned an applicant’s attempt to register a trade mark for ‘THIRSTY JACK’ in relation to various alcoholic beverages in Class 33, including Alcoholic beverages, except beer and Alcoholic beverages with fruit carbonated.

This application was, perhaps predictably, opposed by Jack Daniel’s Properties Inc, who owns various trade marks incorporating “Jack Daniels” and even just the word “Jack” (including for “Gentleman Jack” and “Winter Jack”).

The opposition was again brought under section 5(2)(b) of the Trade Marks Act 1994.

The opposition succeeded based on each earlier trade mark raised after the hearing officer considered the following in relation to the trade marks relied upon by Jack Daniel’s:

Comparing “THIRSTY JACK” vs “JACK DANIEL’S
  • The goods covered by the two trade marks are either identical or share between a medium and high level of similarity;

  • The average consumer is again an adult member of the general public who pays a medium level of attention during the purchasing process;

  • Both marks form a unit with no one word dominating;

  • Low level of visual and aural similarity and a very low level of conceptual similarity;

  • The Jack Daniel’s mark has a reasonable level of inherent distinctive character but that this is enhanced to a high level because of the use made of the mark.

Comparing “THIRSTY JACK” vs “WINTER JACK” / “GENTLEMAN JACK
  • The same as above in relation to similarity of goods, average consumer, and domination (or lack of) of words within the marks;

  • The marks have a medium level of visual similarity and a low to medium level of aural and conceptual similarity;

  • The Jack Daniel’s marks have a reasonable level of inherent distinctive character but enjoy a moderate level of enhanced distinctive character.

This decision shows how larger brands that have established themselves in a marketplace will look to enforce their trade marks against similar new entries into the market, and how they can succeed where there is an overlap between the brand names (e.g. even in just the word ‘Jack’ in this example) and the goods covered, which persuades the tribunal that there exists a likelihood of confusion on the part of the public.

The decision also shows how the distinctiveness of an earlier mark can be enhanced as a result of the use made of the mark over time by the trade mark owner. This is particularly something to consider when a new brand is considering applying for a trade mark similar to one of its more well-known competitors.

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Danny is a solicitor in our Intellectual Property team, with a specific focus on contentious intellectual property matters.
He advises clients on the full spectrum of intellectual property rights, including patents, trade marks, designs, and copyright. Danny has particular experience advising clients in the retail, brewing, education, technology, online and social media, and IT sectors.

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Guides & Advice

No one likes a copycat: how can brands protect their products?

From the Lidl ‘Hampstead’ gin to Aldi’s Cuthbert the Caterpillar cake, ‘copycat’ products have recently taken the spotlight, with brands looking to remove them from supermarket shelves. However, copycat stores having successfully used this business model for many years, and the attack of the clones is likely to continue. So, how can brands protect themselves from these lookalikes?

What is a ‘copycat’ product?

Essentially, these products are imitations made to look like the original, but with a few key differences. By copying aspects such font or colour rather than brand name, these products tiptoe carefully around the realm of trade mark infringement, making it harder for brands to take action.

Proving consumer confusion

Usually, a trade mark infringement case will centre on a name or a logo and the potential to cause confusion for consumers. The problem comes when proving this confusion, as it can be difficult to establish, especially if the name or logo isn’t identical to the registered mark.

As such, copycat cases often revolve around ‘passing off’, meaning that another brand is using the positive associations of the original to sell their own lookalike product (such as colour, shape, designs – known as “get up”). However, this can be just as hard to prove as trade mark infringement.

For example, when entering Aldi or Lidl, customers are fully aware that they won’t be buying the real thing. As a result, it could be said that some copycat products are merely legitimate competition.

Brand dilution

As well as a reduction in sales being a cause of concern for brands, copycats can also dilute well-established names. If a number of products are using the same colour scheme or font, a ‘family’ of similar products is created, increasing the chance that shoppers will buy an imitation.

Should the copycat be of poor quality, this can then damage the reputation of the original brand through association.

Protecting your product

The more comprehensive a brand’s IP portfolio, the more likely a copycat court battle will fall in favour of the original product. Although registering trade marks for fonts and colours is more challenging, this should still be considered. – along with design right protection and copyright.

Another way to protect a product’s market position is to boost its visibility through effective marketing, showing consumers why it is better than its competitors.

Unless there is a substantial legislation change to include a concept such as “unfair competition”, brands will have to continue to battle against the onslaught of copycat products. However, by creating a strong IP portfolio, businesses can give themselves a fighting chance in court.

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Traditionally trade marks have been registered with specifications with broad descriptions of goods and services.  There had been concern that these were not suitably precise to remain on the register.  The Advocate General, in their opinion published in October 2019, agreed with these concerns.  However the CJEU disagreed.

How did the Sky v SkyKick case start?

The case concerned broadcaster Sky bringing trade mark infringement proceedings against SkyKick, a cloud software company, regarding two figurative marks. SkyKick denied the infringement and counterclaimed to invalidate Sky’s trade mark on two grounds:

  1. Sky’s trade mark specifications were not sufficiently clear or precise. Specifically, the term “computer software” was too broad and could apply to a large variety of goods.
  2. Sky had registered its trade marks in bad faith; namely that Sky had no reasonable cause for seeking to register this trade mark for the full spectrum of goods, which also included whips, furs and fire extinguishers.

What does the law say?

During the proceedings, the CJEU determined that an EU or national trade mark cannot be declared wholly or partially invalid on the grounds that some, or all, of the terms in the specification of goods and services are lacking in sufficient clarity and precision.  This is because the CJEU could not find a provision of EU law that stated a lack of clarity and precision was an adequate basis for invalidating a mark.

The CJEU was also asked whether a term such as ‘computer software’ was too general to be considered ‘sufficiently clear and precise’.  However, because the CJEU had already declared that a trade mark could not be invalidated on the grounds of an unclear or imprecise specification, they did not address this particular question.

Furthermore, a trade mark application made without any intention to use the mark in relation to goods and services covered by that registration constitutes bad faith, provided the applicant intends to either undermine the interests of a third party, or obtain an exclusive right for a purpose other than that falling with the functions of the mark.

Finally the CJEU concluded that s.32 of the UK Trade Marks Act 1994 (requiring that the trade mark is being used by an applicant in relation to those goods or services or that he has a bona fide to use the mark across the full specification) is compatible with EU Trade Mark Directive 2015/2436 and its predecessors. This is providing the “intention to use” requirement does not constitute, in itself, a ground for invalidity of a mark already registered.

Going forward

This decision will no doubt be welcomed by large brands that file trade mark applications for a wide variety of products and services, as Sky had in this case.  However, it’s likely to be disappointing news for smaller players trying to break into markets already dominated by big brands, or even just markets where larger brands have registered trade marks but don’t actually operate in.  Nevertheless, it will reassure brands that the lack of intention to use a trade mark from day one will not render it invalid necessarily, providing greater commercial certainty.  Trade mark owners will also be reassured that they will not have to amend or narrow their trade mark specification.

For more information, please contact Mauro Paiano on 0121 631 5344 or another member of the commercial team. For advice or guidance on any other legal issue, a member of our team can help – please click here to discuss.

To combat this, the EU has legislated with a number of Regulations and Directives, however, these are piecemeal and don’t tackle the issue as a whole. Instead, a total overhaul of copyright law may be needed.

What classes as coding copyright infringement?

Copyright infringement can take a number of forms, including:

Copying a protected work without permission

Communicating and issuing copied work to the public

Adapting software code without permission

Lending copied work

Copying

To succeed in a claim for copyright infringement, a right-holder must be able to evidence copying of the relevant work. There are two types of copying relevant to software infringement claims: literal and non-literal.

Literal copying – This is the direct and complete copying of some or all source code without permission.

Non-literal copying – This is when a person copies the architecture of the software or the user interface, instead of copying the source code directly. Due to this creation of ‘new’, but typically very similar code, UK case law tells us that it may be difficult to succeed in an infringement claim.

Communicating and issuing copied work

Social media has thrown a further spanner in the works for copyright protected material, as it allows infringing works to be shared to a large audience with very little control of overall reach. Therefore, finding the origin of some infringement cases could be almost impossible.

Enforcing rights

Consequences depend on the severity of the infringement. Some infringement cases lead to injunctions, others, to damages.

Injunction – Stops a person from continuing to copy, sell or share infringing code. An infringer may also have to destroy any copies they have stored.

Damages – These can vary, however, should a person have received an income from the infringing code, then damages could include the repayment of all profits. Additional damages are payable where a right-holder can show that the infringement was “flagrant”.

How can coding-related copyright infringement be stopped?

Now that many people, especially children, are becoming increasingly skilled at using technology (including developing and manipulating underlying source code), clearer warnings need to be issued alongside copyrighted works. For example, prominent warnings may be displayed at the start of video games that state it is illegal to copy any part of it without permission.

Code creators should also check that the technical security measures they use are as effective as possible, so it is more of a challenge for people to access the underlying source code. This could include patching known vulnerabilities as soon they are made aware of them. Should hacking still take place, sophisticated monitoring software may be used, which picks up the IP address of the hacker, making them easier to trace.

Unfortunately, the copying of code is incredibly difficult to defeat completely, and enforcing rights can be complex and expensive. Copyright law needs to evolve at the same rate as technology if right-holders are to keep ahead of the game and protect their valuable intellectual creations.

To discuss any aspect of this blog or to discuss your own copyright or trademark issues, contact Kerry Russell on 0121 237 3017 or any member of our intellectual property team, or click here to get in touch.

The store would stock Banksy merchandise and memorabilia, although the goods were merely displayed and were not offered for sale, with all sales being made online.  The shop was also only open for a total of two weeks, before closing completely, and the goods were each limited in quantity or “one offs”.

Section 46 Trade Marks Act 1994 (“TMA”) states that a registered trade mark may be revoked “if it has not been put to genuine use” within five years following the date of registration.

The question is therefore whether Banksy’s use of the trade mark in relation to the sales made via the Croydon and online stores can be said to be “genuine” for the purposes of the TMA?

The dispute

The dispute began in March 2019 when Full Colour Black, the card company, initiated proceedings aimed at invalidating an EU trade mark (based on Banksy’s Flower Thrower street art) that had been registered in August 2014 by Pest Control Office Limited, the company that authenticates Banksy’s art.  Banksy claimed Full Colour Black were selling copies of his artwork without his permission and “attempting to take custody of [his] name so they can sell their fake Banksy merchandise legally”.

Full Colour Black, however, claim that Banksy should have protected his work through copyright, rather than registering trade marks, as trade marks should only be used to protect logos that inform consumers about the origin of the goods they are purchasing.

Banksy may be reluctant to pursue an arguably strong case in copyright because Pest Control Office Limited, as the public face of Banksy, would need to prove it acquired the copyright from Banksy, which may then require Banksy to reveal his true identity.  The absence of mystique and anonymity would then be likely have a negative impact on the value of Banksy’s artwork and personal brand going forward.

Full Colour Black also maintain that the Flower Thrower artwork is incapable of being perceived as a trade mark by consumers as the artwork has been reproduced by others to such an extent that it has become commonplace, and does not allow consumers to use it as the basis for identifying the origin of goods.  The company cite the fact that Banksy previously offered free, high-resolution copies of his works via his website for download, often encouraging reproductions and declaring “copyright is for losers.”  Indeed, even the web store itself encourages “the copying, borrowing and uncredited use of his imagery for amusement, activism and education purposes”, and the creation of merchandise for “personal entertainment and non-profit activism for good causes”.

Has Banksy put his mark to genuine use?

When the store opened, Banksy stressed that “I’ve been making stuff for the sole purpose of fulfilling trademark categories under EU law”.  In the case of Ansul B.V. v Ajax Brandbeveiliging B.V [2003], the ECJ held that “genuine use” means actual use of the mark, and not merely token use serving solely to preserve the right conferred by the mark (which Banksy’s statement above seems to suggest).  Such use must instead be consistent with the essential function of a trade mark – to guarantee the origin of a product.

Combine that with the fact that the Croydon pop-up shop was prohibited from selling any of the goods on display, and was only open a total of two weeks, it could be argued to show that this was  merely token use by Banksy in an attempt to preserve his trade mark.

However, there is no “de minimis” rule in terms of a minimum number of sales to be made under a trade mark in order for such use to be found to be genuine.  The fact that the store was only open for two weeks and that each product was limited in number is therefore only one factor to consider.

We await the decision of the EU Intellectual Property Office on the validity of the trade mark, but this dispute highlights that questions surrounding the validity of registered trade marks continue long after registration, and demonstrates the need for businesses and individuals to consider a range of legal and commercial factors when deciding how best to protect and maintain their intellectual property rights.

An option previously open to Banksy might have been to simply re-file the trade marks, which would then restart the five year period in which the mark cannot be challenged for non-use (known as “evergreening”).  However, a recent EU decision suggests that it is likely that such a practice would now be seen as being in bad faith, and so resulting in the new application also being challengeable.

Ultimately however, the dispute has provided significant publicity for both the artist and the challenger, and in the light of previous publicity stunts arranged by Banksy which have allowed his profile to build globally, this may even have been his aim all along.

To discuss any aspect of this blog or to discuss your own copyright or trade mark issues, contact Daniel Kelly on 0121 214 0353 or any member of our IP team, or click here to get in touch.

The boy, referenced as “CBV”, used his coding knowledge to dig into Fortnite’s game code to create a series of cheats – or ‘hacks’ which were advertised via his YouTube channel and sold on his website. Epic claimed that the cheats, which were coded, changed its copyrighted work by creating a new form of the game.

Although the content was for entertainment purposes, the fact that CBV benefitted financially from the cheats increased the severity of the copyright infringement considerably.

Kerry Russell, one of our intellectual property specialists, explains the complexities of copyright law and computer programming:

“An already complicated area of law, copyright becomes increasingly complex when coding is involved. Technology has developed at a rapid pace and the law has yet to settle on what exactly classes as infringing copyright. However, where there is direct reproduction of underlying source code, there is almost certainly a clear-cut case of infringement.

“The reproduction in this case was most likely, what is known as, non-literal copying. This may involve someone taking the original code and then modifying it with their own “new” code. CBV may have copied and then altered the Fortnite code, but only to an extent that the output, i.e the game, remained the same (apart from the cheats). Therefore, this suggests that a substantial part of the skill and labour of the Fortnite creators had been exploited, which is a basic element of copyright infringement.

“CBV’s YouTube videos effectively encouraged others to copy his actions, with the sale of the cheats taking the infringement a step further. Although a child, CBV would have been aware that his use of the copyrighted work was wrong, (even if his intentions were not malicious) – and this, in the UK at least, usually attracts an uplift in damages, as the Court may decide that this was a “flagrant” infringement.

“Many people (especially children) see video games as a world without rules, meaning cases such as this will only become more common unless action is taken. It may be time to add warnings at the start of games which clearly state that the game is protected by copyright, and unauthorised use of the code will result in legal action.”

Find out more about our intellectual property team.

However, this now affordable technology could lead to intellectual property (IP) rights being unknowingly breached, and rights holders having to seek out infringers to take action against them.

Daniel Kelly, a solicitor in our intellectual property team, tells you everything you need to know about 3D printing and IP:

What is 3D printing?

The initial stage of 3D printing is creating a computer-aided design (CAD) file. This is exported to the 3D printer using specialist software, which transforms the digital version into a physical object. The ease in which these CAD files can be shared over the internet means reproduction is simple and can be done on a large scale.

What legal issues can arise?

Sharing CAD files far and wide makes it almost impossible to manage who is using them. Printing for private and non-commercial use is not considered infringement of some IP rights, including patents, designs and trade marks, but it does mean one less sale for the rightful owner. However, as the product created is often for use by the manufacturer, finding and proving infringement cases is difficult.

What IP rights concern 3D printing?

Design – These rights protect the appearance of the product and can be registered or unregistered.
Copyright – This can protect multiple aspects of the 3D printing process. For example, the code of the CAD file, the design contained within the file, and the physical object that’s printed.
Trade mark – This may cover any unique features of the product, such as a word, phrase or symbol on the item, or even the shape.
Patents – These provide protection for new inventions.

How to defend intellectual property rights

The most straightforward way to defend against IP infringements is by monitoring where the files are distributed. CAD files can be shared almost too easily, so staying in control of who receives them is vital. Using passwords and unique identifiers on files can also prevent misuse and help with identification of copies.

Keeping aware of the market is another important strategy. Large companies may have brand protection teams, but smaller businesses are largely responsible for their own brand protection. Selling CAD files with the partnering legal documents and commercial terms of use increases the control a person has over their information, as well as providing additional revenue and ensuring buyers receive the best quality product.

Unfortunately, even if these preventative measures are taken, infringers could still find a way and action must be taken.

What to do if infringement occurs

The first port of call is often a “cease and desist” letter. This is sent to the infringer requesting them to halt production and sale of the product.

What to do if infringement continues even after action is taken

Sometimes sellers refuse to stop the distribution of products even if action has been taken. If this occurs, there are two main options:

Seeking damages – If an IP rights holder can prove that another party’s sale of a product, without the IP owner’s permission, has caused them to suffer financial loss, the courts could award damages. Registering products and/or IP is wise in order to make this enforcement easier.
Interim injunction – IP rights holders can apply for this from the court. It prohibits the infringing party from continuing distribution before the court trial. To obtain the injunction, it must be proven that there is a serious issue to be tried and that it could not be remedied purely through damages. A blocking injunction can also be obtained against an internet service provider, requiring them to block access to the website providing the infringing content.

For those who wish to use 3D printing to create products, it is vital that they ensure what they are doing is both legal and safe. Used (and monitored) correctly, the technology is an opportunity for IP owners, not a threat. By protecting IP rights and keeping an eye on the market, rights holders can embrace the positive opportunities 3D printing provides.