is a selection of intellectual property stories attracting
interest on the internet in the past week that were not covered
on www.managingip.com (see
the bottom of this blog post for the top stories published by
Managing IP this week).
Monkey selfie business
social media exploded this week with the news that British
photographer David Slater was annoyed with Wikipedia for
refusing to take down a picture of a monkey in
Slater was setting up his equipment a crested black macaque
seized a camera and started taking hundreds of pictures of
itself. Wikimedia Commons added one of the images to its
collection of royalty-free images online, saying Slater has no
claim on the image because the monkey pressed the
the monkey took it, it owns copyright, not me,
that’s their basic argument. What they
don’t realise is that it needs a court to decide
Slater told UK newspaper The
characterisation of the situation is not quite true. Wikimedia
actually claims that because a non-human took the photo no one
owns the copyright on the photo.
Smith IP partner Brad Newberg doesn’t think the
photographer owns the copyright either. "Just because he owns
the camera, he can’t own the photograph, because
he didn’t take the picture," he said. Newberg
further thinks that the photographer would have to have played
at least some part in the creative process in order to claim
ownership of the photo.
her blog, Emily
Goodhand, who goes under the moniker CopyrightGirl, said the
argument could be a bit more nuanced than that.
"Could it be argued that the photographer did not actually
create the work because he did not take the photo? It's not
quite as simple as that. Although the CDPA does not go into
further detail about the author of an artistic work, leading
legal experts have submitted that the author "is the person who
made the original contribution and...need not be he who pressed
the trigger" (Laddie, Prescott & Vitoria, The Modern Law of
Copyright and Designs, 4th ed, 4.61 p.254)."
She added that "original contribution" can take several
forms, for instance in use of angle, filters, light and
exposure. Originality may occur in the creation of a scene, as
was the case of the Oscar selfie debate when Ellen DeGeneres
brought together a number of celebrities for a selfie but
Bradley Cooper took the photo. Lastly, there could be a "right
place, right time" argument.
CETA finalised after
The Government of Canada has
announced that the text of the Comprehensive
Economic and Trade Agreement (CETA) between Canada and Europe
has been finalised after many months of silence on the historic
Agreement in principle on CETA
was reached on October 18 2013, with an expectation that a
final agreement would be reached shortly thereafter. It took
until August 5 this year for it to emerge.
According to Smart &
Biggar/Fetherstonhaugh, the final text of CETA has not yet been
released and may not be available for several months. Further,
ratification and implementation may take another two years.
The law firm expects the
agreement to include significant changes to IP protection for
geographical indications, pharmaceuticals and biologics. This
includes: an expansion of protection for geographical
indications to cover a broad range of foods and beer; an end to
"dual litigation" in pharmaceutical patent cases resulting from
the interplay between litigation under the Patent Act
and the Patented Medicines (Notice of Compliance)
Regulations; and patent term restoration for
pharmaceutical products protected by eligible patents for up to
The Canadian government has said
that there will be no change to the data protection term for
pharmaceuticals or biologics.
Jay-Z hit by
A lawsuit against Jay-Z has been affected by the
Supreme Court’s decision in MGM v
Petrella – the case about the 1980 boxing biopic
Raging Bull. In
a ruling that was entered this
week, Judge Christina Snyder said the Petrella
decision "represents a substantial change in the law governing
laches", and vacated her previous holding that laches bars the
The Jay-Z lawsuit has been going on for seven years over the
sampling of 1960 Egyptian film song "Khosara, Khosara" in his
2000 hit "Big Pimpin’". The plaintiff is the
nephew of the composer Baligh Hamdi.
Snyder has previously said that Osama Ahmed Fahmy could not
claim copyright damages between March 30 2001 and March 30 2006
because that is a time period covered by a settlement between
the producers of Big Pimpin’ and EMI, which once
asserted the rights to Khosara, Khosara. This was based on an
agreement between EMI and Egyptian firm Sout El Phan that
expired in 2006.
Snyder ruled that laches barred Fahmy from challenging
rights during this period. The Petrella decision
allowed the daughter of a man who allegedly wrote the script
for Raging Bull to pursue damages back to 2006 because laches
cannot be evoked.
Tesla parks China mark
Electric car maker Tesla
has resolved a trade mark
dispute in China. Zhan Baosheng
had registered the rights to
the Tesla name in China before the car maker entered
the market, and requested pay him $3.9 million in
This week it emerged the two parties had agreed to settle
the dispute "completely and amicably".
In an emailed statement to Bloomberg, Tesla said: "Mr Zhan
has agreed to have the Chinese authorities complete the process
of canceling the Tesla trademarks that he had registered or
applied for, at no cost to Tesla. Collectively, these actions
remove any doubt with respect to Tesla’s
undisputed rights to its trademarks in China."
Doyle estate slammed for "extortion"
Judge Richard Posner (left) of the Seventh Circuit
has ordered the estate of
Arthur Conan Doyle to pay $30,679.93 in legal fees
to Leslie Klinger and branded its demands as "a form of
In June, the Seventh Circuit ruled that the copyright on 46
stories and four novels featuring Sherlock Holmes
were in the public
domain. The copyright on a further 10 stories are
due to expire between 2018 and 2022.
Doyle’s estate had sued Leslie Klinger in 2011
as he was about to publish an anthology of modern fiction about
Holmes. Doyle’s estate demanded a $5,000 licensing
fee for using the Holmes character, which the publisher Random
House paid. However, for a follow-up anthology, Klinger instead
sued the estate saying he was not infringing on the 10
remaining stories under copyright protection.
Posner agreed. And this week he also agreed that the estate
should pay Klinger’s legal fees.
"The Doyle estate’ business strategy is plain:
charge a modest licence fee for which there is no legal basis,
in the hope that the 'rational’ writer or
publisher asked for the fee will pay it rather than incur a
greater cost, in legal expenses, in challenging the validity of
the demand. The strategy had worked with Random House; Pegasus
was ready to knuckle under; only Klinger (so far as we know)
resisted," wrote Posner. "In effect he was a private attorney
general, combating a disreputable business practice –
a form of extortion – and he is seeking by the present
motion not to obtain a reward but merely to avoid a loss."
Posner said Klinger had performed a public service and
awarded fees. "The willingness of someone in
Klinger’s positon to sue rather than pay
Doyle’s estate a modest licence fee is important
because it injects risk into the estate’s business
model," he said.
Posner added that the estate "was playing with fire" in
asking Amazon and other booksellers to cooperate with it in
enforcing its "non-existent" copyright claims against Klinger.
"For it was enlisting those sellers in a boycott of a
competitor of the estate, and boycotts of competitors violate
the anti-trust laws," he said.
blog posts published this week:
Guest post by
Baroness Neville-Rolfe: The lure of intellectual
GlaxoSmithKline's China bribery case
may have serious consequences for IP
Also on Managing IP this week (subscription or trial needed for full
How to take on
China's trade mark squatters
revise trade secrets law
The effect of
Apple and Samsung's Asia-Pacific battles
Women in Business Law Awards 2014: Winners
The case for
trade secrets reform in the US
Victoria’s Secret loses
battle over Pink trade mark
Samsung drop non-US patent litigation
How one Chinese hospital encourages innovation
steps it has taken post-Alice
makes San Diego hire from Duane Morris
lawyers set up new firm in Barcelona
seize 36 million fake goods