Lego was accused of copyright infringement over a jacket design

As it is well-known copyright is one of the main intellectual property rights that every creator can rely on in order to benefit from his or her created works. The problem with copyright is that it can invoke really complex disputes out of nowhere.

One example of this possibility is a recent lawsuit against LEGO, a toymaker company whose practice is to use characters and stories from famous movies or series for kids constructors.

In the case at hand, the company uses a design of a jacket, known as the “Concannon Jacket”, worn by Antoni Porowski part of Netflix’s Queer Eye reality show.

James Concannon is the artist who created this design, giving Netflix permission to use it for the show.

According to him, however, LEGO has no authorization to use the jacket design for their toys “Queer Eye – The Fab 5 Loft”, which are based on the reality show’s characters.

LEGO dismissed this accusation claiming that they use legally the jacket at least because they had a license from Netflix which in turn had permission from the artist for the same jacket.

Obviously one of the center moments here is what was the scope of the initial license and whether it includes such merchandising use.

According to the US Copyright law, apparel is not copyrightable as a whole. Only separable creative elements of it can be protected.

So the issue here is to what extent the original jacket’s elements are subject to copyright protection alone and to what extent those used by LEGO are similar enough in order for infringement to be found.

Source: SS Rana & Co – Ananyaa Banerjee and Nitika Sinha for Lexology.

Ferrari lost a trademark dispute regarding its famous 250 GTO model in the EU

Ferrari lost an interesting dispute regarding its registered European 3D trademark:

This mark was registered in classes 12, 25 and 28. It represents the famous Ferrari’s car model 250 GTO which was been in production in 1962.

Such car was been sold for more than 48 million dollars 2 years ago, which means that this is the most expensive car ever.

In the case at hand, another Italian company Ares Design filed an application for cancellation of the mark before the EUIPO based on lack of genuine use for the last 5 years.

The trademark was registered in 2008, more than 40 years after the car was been producing.

According to the law if trademark owner doesn’t use its trademark for a period of 5 consecutive years, the trademark can be canceled. The idea here is an unnecessary monopolization of terms and images to be prevented.

Ferrari submitted evidence for use of the trademark but only for toys in class 28.

For the rest of the classes, Ferrari claimed that although the car is not in production any more, there are still available cars from that model in the market which are sold on auctions from time to time.

The EUIPO agreed that there is genuine use of the mark for toys. For classes 12 and 25, however, the Office concluded that this was not the case. The main requirement is that trademark owner has to use the mark for production and labeling of goods which after that are offered in the market.

Due to the fact that this is not done by Ferrari now the trademark is not been used genuinely.

All of this means that this famous car design will be left without protection unless Ferrari proves that it is subject matter to copyright one because of its originality and uniqueness. There are such attempt in other similar cases like this with the Brompton Bicycle.

Can a bicycle’s design to be protected by copyright? – the Brompton Bicycle case in the EU

The European Court has ruled in case C‑833/18 Brompton Bicycle Ltd срещу Chedech/Get2Get, which concerns the possibility a bicycle’s design decision to be protected by copyright. The background is as follow:

Brompton, a company incorporated under English law whose founder is SI, markets a folding bicycle, sold in its current form since 1987 (‘the Brompton bicycle’).

The Brompton bicycle, the particular feature of which is that it can have three different positions (a folded position, an unfolded position and a stand-by position enabling the bicycle to stay balanced on the ground), was protected by a patent which has now expired.

For its part, Get2Get markets a bicycle (‘the Chedech bicycle’) which is visually very similar to the Brompton bicycle and which may fold into the three positions mentioned in the preceding paragraph.

On 21 November 2017, SI and Brompton brought an action before the Companies Court, Liège, Belgium seeking a ruling that Chedech bicycles infringe Brompton’s copyright and SI’s non-pecuniary rights and, consequently, an order that Get2Get cease its activities which infringe their rights and withdraw the product from all sales outlets.

In its defence, Get2Get contends that the appearance of the Chedech bicycle is dictated by the technical solution sought, which is to ensure that the bicycle can fold into three different positions. In those circumstances, such appearance could be protected only under patent law, not under copyright law.

The applicants in the main proceedings claim that the three positions of the Brompton bicycle can be obtained by shapes other than those given to that bicycle by its creator, which means that its shape may be protected by copyright.

The Companies Court, Liège observes that, under Belgian law, any creation is protected by copyright when it is expressed in a particular shape and is original, which means that a utilitarian object, such as a bicycle, may be protected by copyright. In that regard, although shapes necessary to obtain a technical result are excluded from copyright protection, the fact remains that doubt arises when such a result can be obtained by means of other shapes.

The referring court states that, in the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), which was delivered in the field of design law, the Court interpreted Article 8(1) of Regulation No 6/2002 as meaning that, in order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.

It asks, therefore, whether a similar solution should be adopted in the field of copyright when the appearance of the product in respect of which copyright protection is sought under Directive 2001/29 is necessary in order to achieve a particular technical effect.

In those circumstances, the Companies Court, Liège decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Must EU law, in particular Directive [2001/29], which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result?

(2) In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria:

–   The existence of other possible shapes which allow the same technical result to be achieved?

–   The effectiveness of the shape in achieving that result?

–    The intention of the alleged infringer to achieve that result?

–    The existence of an earlier, now expired, patent on the process for achieving the technical result sought?’

The Court’s decision:

Articles 2 to 5 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality, which it is for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings.

Mexico joins the Hague Agreement

WIPO reports about the accession of Mexico to the Hague Agreement Concerning the International Registration of Industrial Designs.

As it is known, this Agreement allows one industrial design to be registered in different Member States based on one application and one fee.

The Agreement will come into force for Mexico on 06.06.2020.

Piaggio lost a dispute in the EU over scooter design

The General Court of the European Union has ruled in the case T‑219/18 Piaggio v EUIPO. The dispute concerns the following registered European design for scooters by a Chinese company in 2010:

The Italian company Piaggio an invalidity procedure in 2014 claiming that this design is very similar to that implemented in its own scooters which are famous amongst the consumers for many years. In addition, some registered designs and trademarks were been invoked too.

The EUIPO dismissed the application for invalidity concluding that the overall impression created by the later design and that of the earlier one is different.

The decision was appealed.

The General Court upheld the EUIPO’s position on the matter.  According to the court:

First of all, it should be noted, that the applicant has no reason to claim that the fact that process designs have several common elements and, in general, a very similar form, leads to the conclusion that the contested design creates the general impression for “Déjà vu” when compared to earlier industrial designs.

In fact, as the Board of Appeal correctly observed, that while in the contested industrial design, the angular lines were predominant, in the earlier industrial design the lines were rather rounded. The process designs give the opposite impression to the informed consumer, who is given particular vigilance and sensitivity, in particular to the design and aesthetic qualities of the products concerned.

It follows from all of the foregoing that the Board of Appeal did not err in its assessment that the contested and earlier designs gave different general impressions to the informed consumer, concluding that the contested designs were original in the meaning of Article 6 of Regulation No 6/2002 as compared to the earlier one.

As regards the opposing marks, the court considers that:

It follows from all the foregoing that, because, on the one hand, the earlier mark’s overall visual impression is different from that of the contested industrial design and, on the other, the importance that aesthetic qualities have for the choice, the average consumer, who is highly attentive, will not assume that the disputed industrial design uses the earlier mark despite the identity of the products concerned.

(unofficial translation)

Ecuador joins the DesignView database

The EUIPO reports about the accession of Ecuador to the global database for protected industrial designs DesignView. In that way, the participating Patent Offices become 70 and the database gives access to more than 14 million designs around the world.

For more information here.

Brief IP news

1. Protecting your shop interior: what are the options? For more information here.

2. Protecting your intellectual property. For more information here.

3. Patentability of pharmaceutical inventions, 15.01.2020 – 16.01.2020, Brussels. For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here