Copyrights may be for losers but trademarks are not – Banksy won a trademark dispute

The well-known graffiti artist Banksy has received some positive news recently regarding his attempt to take advantage of the IP system while not liking it or at least the copyright in particular.

The case concerns the following registered EU trademark, representing graffiti art painted by Banksy, in classes 9, 16, 25, 28 и 41:

The mark was registered by Pest Control Office Limited, a company managing artists’ legal rights, taking into account that he is anonymous and is famous with that status apart from his exciting artworks.

Against this mark, a request for invalidation was filed by Full Colour Black Limited on the ground of lack of distinctive character and bad faith.

The EUIPO Cancelation division invalidated the mark finding that it was made in bad faith. The reason for this was the fact that because of his anonymity the artist was unable to rely on copyright protection. What’s more, he is famous for his statement that copyright is for losers.

In another article, Banksy says “Sometimes you go to work and it’s hard to know what to paint, but for the past few months I’ve been making stuff for the sole purpose of fulfilling trademark categories under EU law”.

The Office considered all of this as the only reason why the artist wanted to register a trademark for his art, which will give him a tool to control its commercial use.

According to the Office:

From an examination of the evidence filed by both parties, it would appear that, at the time of filing of the application for invalidity, the EUTM proprietor (or Banksy) had never actually marketed or sold any goods or services under the contested EUTM. Moreover, some of the EUTM proprietor’s webpage extracts dated in 2010-2011 state that ‘All images are made available to download for personal amusement only, thanks. Banksy does not endorse or profit from the sale of greeting cards, mugs, t-shirts, photo canvases etc. …’, ‘Banksy does not produce greeting cards or print photo-canvases….Please take anything from this site and make your own (non-commercial use only thanks)’ and ‘Banksy has never produced greeting cards, mugs or photo canvases of his work’. Therefore, there is no evidence that Banksy was actually producing, selling or providing any goods or services under the contested sign prior to the date of filing of the contested EUTM.

The first evidence of sales appears to have happened just before the date of filing of the present application for a declaration of invalidity.

Taking all of that the Office considered that the mark was filed in bad faith.

The Board of Appealed, however, disagreed. According to the Board, the conclusion of the Consolation division was subjective. Bad faith cannot be assumed only based on single statements that do not show the entire position of the artist.

The Board cannot follow this view. Although the protection under copyright law is definite and ends 70 years after the death of the author whereas trade mark protection can in principle be indefinite, this circumstance does not mean that the
filing of a trademark consisting of a creation protected under copyright law is automatically unlawful and circumvents the copyright law. As stated above under paragraph 27, the same artwork can be protected by copyright as well as by trademark law.

The assumption that the need of staying anonymous was the reason to opt out from copyright protection and go for trademark protection, as submitted by the Cancellation applicant, even if it would be correct, cannot justify a finding that the
EUTM proprietor had no intention to use the contested mark.

Finally, the statement ‘Copyright is for losers’ has no bearing at all on the case at hand. The contested decision does not reason sufficiently about its finding of bad faith. It mainly bases its final findings on the supposition that the EUTM proprietor could
only with difficulties preventing its artwork under copyright and on the fact that it started only on October 2019 to use its mark and with the purpose to maintain the contested mark but not to use it according to the essential functions of a trademark.

The contested decision bases its finding on wrong facts because it has not been shown that on October 2019 the EUTM proprietor stated to use the contested mark. In any event, the reasons furnished in the contested decision cannot explain nor indicate that at the relevant filing date the EUTM proprietor had not intended to use its mark

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Proving ownership of intellectual property rights in case of infringements in the EU

The Advocate General of the European Union A. RANTOS has issued an opinion in the case C-628/21 TB, Castorama Polska Sp. z o.o., „Knor“ Sp. z o.o.

This dispute concerns when and to what extent IP ownership has to be proved in the process of collecting information for IP infringements on the territory of the EU. The case has the following background:

TB is a natural person who, through her online shops, markets decorative articles. In the context of her economic activity, she sells reproductions, produced mechanically by the applicant herself, with simple graphics, consisting of a limited number of colours and geometric figures and short sentences. In that regard, images A, B and C (‘the reproductions at issue’) contain, respectively, the following sentences: ‘Mój dom moje zasady’ (‘In my house, I make the rules’); ‘Nie ma ludzi idealnych a jednak jestem’ (‘Perfect persons do not exist, and yet I am one’) and ‘W naszym domu rano słychać tupot małych stopek. Zawsze pachnie pysznym ciastem. Mamy dużo obowiązków, mnóstwo zabawy i miłości’ (‘In our house, the sound of tiny feet can be heard. There is always the aroma of delicious cake. We have many obligations, much pleasure and much love’). TB claims to be the creator of the images which she reproduces, which in her contention are works for the purposes of the legislation on copyright.

Exact copies of images A and B, supplied by ‘Knor’ Sp. z o.o. (‘Knor’), are sold without TB’s consent in the ‘bricks and mortar’ shops and online shop of Castorama Polska Sp. z o.o. (‘Castorama’). Neither TB’s reproductions of those images nor the reproductions offered by Castorama indicate the author or the origin of those images. Castorama also sells reproductions, supplied by Knor, with identical wording to that of image C, but with certain differences in terms of their graphics and fonts. On 13 October 2020, TB gave notice to Castorama to cease and desist its infringements of the economic and moral copyright in the works created by her which that company was selling without her consent.

On 15 December 2020, TB brought an action before the Regional Court, Warsaw, the referring court, under Article 479113 of the Code of Civil Procedure. In the course of those proceedings, she requested Castorama and Knor to provide her with information, concerning the reproductions at issue, on the distribution networks and the quantity of goods received and ordered, a complete list of suppliers, the date on which the goods were placed on sale in Castorama’s ‘bricks and mortar’ shops and online shop, the quantity involved and the price derived from the sale of the goods, broken down into physical sales and online sales. TB relied on her economic and moral copyright in the reproductions at issue and stated that the information requested was necessary for the purpose of bringing an action for infringement of her copyright and, in the alternative, an action for damages for unfair competition.

Castorama contended that that request for information should be refused and, in the alternative, that the scope of the judicial decision should be as narrow as possible, strictly limited to works classified as such for the purposes of the legislation on copyright, and disputed the very possibility that the reproductions at issue might be classified as ‘works’. It also relied on the protection of business secrets and claimed that TB had not proved that she held the economic copyright in those reproductions. In Castorama’s contention, the intellectual works to which TB’s request refers are not original and TB has not proved that the ‘novelty’ condition was satisfied. Granting her request would amount to affording copyright protection to ideas and concepts, because the reproductions at issue belong to the current fashion for ‘simplified motivational artworks’ with trite sentences. Castorama maintained, moreover, that all the graphic elements of the reproductions at issue are trite and repetitive and are not distinguished in any original manner, as far as concerns composition, colours or the fonts used, from the other images available on the market.

In answer to those arguments, TB did not adduce any evidence to prove the existence of an intellectual property right in the reproductions at issue and calling for special knowledge (with a view to an expert report) in the field of graphics and design. The evidence which she produced in her application of 15 December 2020 consisted of printouts of pages of articles on sale in her online shops and of sales invoices from 2014, and also of printouts of pages from Castorama’s websites and sales invoices of images in the latter’s online shops.

When examining TB’s request, the referring court was uncertain about the interpretation to be given to Article 8(1) of Directive 2004/48, in particular as regards the question whether it is necessary to adduce proof of the legal nature of the asset to which the request for information relates, or merely to lend credence to it, in view of the fact that Articles 6 and 7 of that directive use different formulations and that Article 4 of that directive refers to the ‘holders of intellectual property rights’. The referring court’s doubts also related to the possibility that a different standard of proof might be applied as regards the status of the reproductions at issue, namely whether or not they are works, and consequently on TB’s standing to bring proceedings.

The referring court observes that Article 479113 of the Code of Civil Procedure constitutes the transposition of Article 8 of Directive 2004/48 and that Article 47989 of that code, which defines the scope of intellectual property cases, refers, in paragraph 2(1), to cases relating to ‘the prevention and combating of unfair competition’. Referring to recital 13 of that directive, (5) the referring court emphasises that, for the purposes of the present case, although the Polish case-law has not yet given an unequivocal answer to that question, that court accepts the interpretation according to which national law extended, for domestic purposes, the application of that directive to acts involving unfair competition which consist in producing exact copies of goods, even if those goods are not the subject of exclusive rights such a those of the copyright holder. In the light of those factors, as regards the part of the request relating to images A and B, no problem of interpretation of EU law arises, since TB has proved that Castorama has sold reproductions consisting of exact copies of those images.

On the other hand, in order to adjudicate on the request relating to image C, it is necessary to interpret EU law, since the reproduction sold by Castorama is not an exact copy of that image, in that the text has been reproduced and its position on the page has been retained, but with the use of other graphic elements and other fonts. According to the Polish case-law, which coincides with the Court’s, (6) it is for the court dealing with the matter to examine the creative characteristics of a work. In that regard, according to the referring court, where the facts of the case are complex and the judge’s experience is insufficient, it is necessary to have recourse to an expert’s opinion, while the burden of proof and responsibility for requesting an expert report are generally borne by the applicant.

Polish legal commentators have expressed two contradictory viewpoints on the interpretation of Article 479113 of the Code of Civil Procedure and have considered either that the applicant must adduce proof that she is the holder of the intellectual property right in question or that she is not required to prove the infringement of the protected right, but is required merely to lend credence to such an infringement, since the request for information may also be addressed to a third party.

The referring court states that in its view Article 8(1) of Directive 2004/48, read in conjunction with Article 4 of that directive, must be interpreted as meaning that it refers to a measure to protect intellectual property rights only when the ownership of the intellectual property right is proved and that credence being lent to the fact that that measure relates to an existing intellectual property right is not sufficient, since it is necessary to adduce proof of that circumstance, in particular where the request for information on the origin and the distribution networks of goods or services precedes the assertion of claims for compensation on account of an infringement of intellectual property rights.

In those circumstances, the Sąd Okręgowy w Warszawie (Regional Court, Warsaw) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Should Article 8(1) read in conjunction with Article 4(1) of [Directive 2004/48] be understood to refer to a measure to protect intellectual property rights only when the rightholder’s intellectual property right has been confirmed in these or other proceedings?

–   if Question (1) is answered in the negative:

(2) Should Article 8(1) …, read in conjunction with Article 4(1) of Directive [2004/48] be interpreted as meaning that it is sufficient to lend credence to the fact that that measure refers to an existing intellectual property right, and not to prove that circumstance, especially in a case where a request for information about the origin and distribution networks of goods or services precedes the assertion of claims for compensation on account of an infringement of intellectual property rights?’

The Advocate’s opinion:

In the light of the foregoing considerations, I propose that the Court of Justice should answer the questions for a preliminary ruling referred by the Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland) as follows:

Article 8(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights

must be interpreted as meaning that in the context of an action relating to an infringement of an intellectual property right, the applicant must lend credence, by submitting sufficient evidence, to the fact that he or she is the holder of the intellectual property right in question, in particular where the request for information precedes the assertion of claims for compensation on account of the infringement of the intellectual property right. The national court must also assess the merits of that request and take due account of all the objective circumstances of the case, including the conduct of the parties, in order to ascertain, in particular, that the applicant has not abused that request.

Juventus won a trademark dispute regarding NFTs

The Italian football club Juventus won one of the first lawsuits regarding NFTs and their clash with early registered trademarks.

The dispute at hand concerns NFTs and other digital products created by Blockeras which included an image of the former Juventus  Bobo Vieri and the club’s marks JUVE and JUVENTUS.

A non-fungible token (NFT) is a unique digital identifier that cannot be copied, substituted, or subdivided, that is recorded in a blockchain, and that is used to certify authenticity and ownership. NFTs typically contain references to digital files such as photos, videos, and audio.

While Blockeras secured consent from Bobo Vieri for his image, however, they missed doing that for Juventus’ trademarks.

As a result, a lawsuit was initiated in Rome, where the football club claimed a preliminary injunction and an end to the allegedly infringing actions.

The Court concluded that the club’s trademarks were used by Blockeras which in turn could create consumer confusion about whether the club authorized this.

The Court agreed that Juventus’ trademarks are well-known, including used for different merchandising products such as clothes, accessories, and even the club’s own NFTs.

Blockeras’s argument that the football club’s marks protection in class 9 from the Nice Classification, does not cover NFTs, was dismissed. The Court considered that it is not necessary for NFTs to be mentioned precisely in the list of goods because some other included goods can cover such new digital products too.

The Court reminded that the fact Bobo Vieri agreed about the use of his image does not mean that Juventus as a club gave the same permission.

General Motors lost a trademark dispute over its trademark HUMMER

 

Masaki MIKAMI reports another interesting trademark case from Japan focusing our attention on the famous Hummer SUV. The dispute concerns the following trademark application filed in Japan in 2021 for class12 – bicycles and class 22 – tents:

Against this application, an opposition was initiated by the US car manufacturer General Motors LLC on the ground of its earlier mark HUMMER in classes 6,9,12,13,22.

The company considered both signs similar enough to cause consumer confusion, especially taking into consideration the popularity and reputation of the earlier mark.

The Japan Patent Office, however, dismissed the claim for the existing reputation of the US company’s mark amongst the consumers in Japan. The reason was the fact that these SUVs had been selling in the country but in 2010 their production was suspended. There was no solid evidence for continuous sales, market shares, advertisements, etc., that could suggest clearly that the mark had an established reputation in the country.

When it comes to the signs themselves, the Office found them dissimilar from visual and phonetic points of view. Conceptually both marks have no specific meaning for Japanese consumers at all. According to the Office, the first part of the mark applied for HEAVYDUTY, which has no meaning for the consumers, was distinctive enough in order to make the difference between the signs. This in conjunction with the graphic elements was enough to overcome the similarity between the marks.

HBO’s trademark strategy for HOUSE OF THE DRAGON

Is it necessary for a television series title to be registered as a trademark?

The question is rhetorical and the answer is clearly yes. The reason for this is related to the potential additional profit that can be generated if the series becomes popular. Trademark protection is crucial in such cases because it can prevent someone else to start using the title for commercial purposes not only for TV series but for many other merchandising products and services such as cosmetics, jewelry, clothes, toys, foods, drinks, entertainment, etc.

A good example of this strategy is the one used by HBO related to their last top series HOUSE OF THE DRAGON a prequel to Game of Thrones. The new series is liked by the fans with an IMDB rating of 8.6.

Although the series has launched recently, HBO started to file trademarks around the world for this title 2 years ago.

The TMView database shows 41 trademarks HOUSE OF THE DRAGON filed or registered in many countries around the world for classes such as 3, 14, 16, 18, 21, 25, 28, 32, 33, and 43 that covers amongst other cosmetics, jewelry, clothes, toys, drinks, etc.

Apart from this, in order to solidify its position, HBO filed different national trademarks in specific languages different from English. One example of this is a Bulgarian trademark for ДОМЪТ НА ДРАКОНА (House of the Dragon) for classes 9, 25, 41.

Such trademark portfolio allows HBO full control of the title exploitation for commercial purposes everywhere which by itself is a good base for lucrative licensing deals.

Les Mills won a dispute over a bad faith registered domain name for lesmills.vip

The WIPO Arbitration Center has ruled in the case D2022-3246 regarding a dispute for the domain name lesmills.vip, registered by an individual from the USA.

The New Zealand Company Les Mills International Limited initiated a proceeding against the registration of this domain before the Arbitration Center with a request for the domain name to transferred to the company.

Les Mills International offers fitness programs and classes around the world, having both registered trademarks, including for the US, and registered domain names, including lesmills.com. The company stated that its brand was founded by four-time Olympian Les Mills in 1968 and since then the brand has gained a significant reputation reaching around 6 million people every week.

According to the company, the disputed domain name was registered and used in bad faith. The company considered the Respondent aware of the LES MILLS trademark since his website was offering unlicensed copies of the company’s materials. It contended that the disputed domain name was in itself misleading in suggesting to consumers that it directed to one of the company’s official websites.

According to the Uniform Domain Name Dispute Resolution Policy, in order to succeed in the Complaint, the Complainant is required to show that all three of the elements:

  • the disputed domain name is identical or confusingly similar to a trademark or service mark in which
    the Complainant has rights;
  • the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
  • the disputed domain name has been registered and is being used in bad faith.

Considering all of the three elements, WIPO concluded that the domain was similar to the earlier trademarks, from one side, that the Respondent had no legitimate interest to use the domain, and that there was bad faith use of the domain considering the potential risk for consumer misleading.

Based on this the domain was transferred to Les Mills International.