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Monkey selfie, CETA, Jay-Z, Tesla, Arthur Conan Doyle estate – the week in IP



Michael Loney


A photo taken by a monkey of itself, the completion of the Comprehensive Economic and Trade Agreement between Canada and Europe, the Supreme Court’s Petrella ruling affecting a Jay-Z lawsuit, a settlement over the Tesla name in China, and Judge Posner slamming the Arthur Conan Doyle estate for “extortion” – some of the IP-related news you may have missed this week

Below 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

IP-related 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 Indonesia.

While 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 shutter.

"If 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 that," Slater told UK newspaper The Telegraph.

Slater’s 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.

Reed 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.

On 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 long wait

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 trade deal.

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 2 years.

The Canadian government has said that there will be no change to the data protection term for pharmaceuticals or biologics.


Jay-Z hit by Raging Bull

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 plaintiff’s claims.

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 dispute

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 compensation.

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 extortion".

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.



Other blog posts published this week:

Guest post by Baroness Neville-Rolfe: The lure of intellectual property

GlaxoSmithKline's China bribery case may have serious consequences for IP enforcement

Also on Managing IP this week (subscription or trial needed for full access):

How to take on China's trade mark squatters

China to revise trade secrets law

The effect of Apple and Samsung's Asia-Pacific battles

Australasia Women in Business Law Awards 2014: Winners announced

The case for trade secrets reform in the US

Victoria’s Secret loses battle over Pink trade mark

Apple and Samsung drop non-US patent litigation

Case study: How one Chinese hospital encourages innovation

USPTO outlines steps it has taken post-Alice

Ballard Spahr makes San Diego hire from Duane Morris

Ex-Freshfields lawyers set up new firm in Barcelona

EU Customs seize 36 million fake goods

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ICYMI: Our report on this week's #SCOTUS ruling in Star Athletica v Varsity Brands https://t.co/Rf3TWplNUrhttps://t.co/TrZ5YcvKQr

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@Oblon_IP @PatentPostGrant Congratulations Scott! #mipawards

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@KellyIPllp Well done to all at the firm!

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