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Monkey selfie, Batmobile, Mark Cuban, Inventist, Lindt, Haribo, All About That Bass – the week in IP



Michael Loney


The return of monkey selfie, the Ninth Circuit ruling the Batmobile is covered by copyright, Mark Cuban looking to assert patent rights in the hoverboard market, and Lindt defeating Haribo in a German trade mark case were in the IP headlines this week

Also on the blog this week:

The pros and cons of the Madrid Protocol

Annual Patent & IP Trends Report Released (Sponsored Statement)



Monkey business

It’s the IP story that won’t quit. This week it emerged that People for the Ethical Treatment of Animals (Peta) had filed a lawsuit on behalf of a monkey.

The lawsuit has been filed against photographer David Slater and relates to the infamous monkey selfie that was taken in Indonesian island Sulawesi in 2011.

In the complaint filed by Irell & Manella on behalf of "Naruto, a crested Macaque", Peta seeks a court order allowing Peta to administer proceeds from the photos for the benefit of the six-year-old monkey.

"Naruto has the right to own and benefit from the copyright in the Monkey Selfies in the same manner and to the same extent as any other author," says the complaint. "Had the Monkey Selfies been made by a human using Slater’s unattended camera, that human would be declared the photographs’ author and copyright owner. While the claim of authorship by species other than homo sapiens may be novel, 'authorship’ under the Copyright Act, 17 USC § 101 et seq., is sufficiently broad so as to permit the protections of the law to extend to any original work, including those created by Naruto."

The lawsuit is confusing because, although Slater believes he holds copyright to the photos, the US Copyright Office last year specified that a photo taken by a monkey would not qualify for copyright.

"The lawsuit seeks to have Naruto declared the 'author’ and owner of his photograph," said Peta in a press release. "Our argument is simple: US copyright law doesn’t prohibit an animal from owning a copyright, and since Naruto took the photo, he owns the copyright, as any human would."

The Guardian reported that Slater was "very saddened" by Peta’s lawsuit because he considers himself an advocate of animal rights.

Observers have reacted with distain and mockery.

For example, Sullivan and Worcester attorney Nicholas O’Donnell described it as "our most bizarre art law story of 2015". He continued: "The claim of authorship by species other than humans is not "novel." It is completely unsupportable. First and foremost, as if it needed saying, the Copyright Act repeatedly refers to authors and owners in the context of 'natural persons’."

"Holy copyright law, Batman!"

In an opinion that began with the sentence "Holy copyright law, Batman!", the Ninth Circuit has ruled that the Batmobile – superhero Batman’s car – is covered by copyright, reports The Wall Street Journal.

DC Comics had sued Mark Towle for copyright and trademark infringement for making replicas of the Batmobile as it was depicted in the 1966 television show and the 1989 Tim Burton movie and selling them for about $90,000 a piece. He claimed the Batmobile is not entitled to copyright protection because it is a car, not a character.

The court determined that the vehicle has "physical as well as conceptual qualities", is "sufficiently delineated" that it is recognised as the same character across time, and is "especially distinctive".

"As a copyrightable character, the Batmobile need not have a consistent appearance in every context, so long as the character has distinctive character traits and attributes," Judge Sandra Ikuta said.

The opinion ended with another Batman reference: "As Batman so sagely told Robin, 'In our well-ordered society, protection of private property is essential.’ Here, we conclude that the Batmobile character is the property of DC, and Towle infringed upon DC’s property rights when he produced unauthorized derivative works of the Batmobile as it appeared in the 1966 television show and the 1989 motion picture."


Mark Cuban – patent asserter?

In an intriguing turn of events, entrepreneur Mark Cuban appears to be looking to assert his patent rights in the so-called hoverboard market, reports Buzzfeed.

The man who established the "Mark Cuban Chair to Eliminate Stupid Patents" and expressed the will to "blow up the patent system" recently bought the hoverboard patent licence from Shane Chen, inventor of the Hovertrax product. The patent relates to "a two-wheel, self-balancing personal vehicle".

Cuban is incensed that Wal-Mart plans to sell Chinese-manufactured hoverboards made by IO Hawk. Chen’s company Inventist has been in litigation with IO Hawk’s maker Soibatian.

"They are in for a nightmare," Cuban wrote to BuzzFeed News after being informed of Wal-Mart’s plans.

Chen also told Buzzfeed that Inventist has been in talks with Wal-Mart about stocking the Hovertrax boards. "Are they going to sell the illegal ones? I hope they know they are illegal," Chen told Buzzfeed.

This industry appears to be heating up in terms of patent litigation. Last week, this blog reported that Segway has sued Inventist itself claiming its Hovertrax and Solowheel products infringe its patents.


The bear facts

Lindt has defeated Haribo in a German case over bear-shaped confectionary, reports the BBC.

German’s Federal Court of Justice ruled that Lindt’s gold chocolate bears was not a violation of Haribo’s trade mark of its "Gold Bear" logo or an imitation of its fruit gum sweets.

Haribo sued Lindt in 2012, and German court ruled in favour of Haribo only for an appeal court to throw out the verdict.

The ruling declares it is theoretically possible to infringe a word mark with the design of a product, said Reed Smith in a client note.

"The judgment by the German Federal Supreme Court may have an impact on the practice of trademark filings. In its decision, the Federal Supreme Court confirmed that a three-dimensional product shape can violate the scope of protection of a wordmark and thus lead to claims based on infringement. Because of the high bar set regarding the similarity of signs, however, such a claim is unlikely to be successful in practice very often," said Reed Smith. "The respective trademarks will likely often lack the necessary distinctiveness because the meaning of the terms will frequently be entirely descriptive. Clients wanting to protect their product names in the best possible way are therefore well advised to consider alternatives such as registered design protection."


Unprofitable stream

The writer of hit song All That Bass claimed this week that he made only $5,679 from 178 million streams of the song, reports the BBC.

Kevin Kadish co-wrote the song with Meghan Trainor. In a meeting hosted by the US House Judiciary Committee at a Tennessee university, Kadish said: "That's as big a song as a songwriter can have in their career and number one in 78 countries. But you're making $5,600." He added: "How do you feed your family?"


In our news and analysis this week:

The Kit Kat judgment: views from Twitter

Slovenia to ratify UPC Agreement this year

The PCT surge: do you need to worry?

Providing active pharmaceutical ingredient to ANDA defendant not induced infringement

Gilstrap strikes blow against eDekka with rare 101 motion grant

Judge rules Warner/Chappell doesn’t hold rights to "Happy Birthday"

PITAVA trade mark infringement denied

Euromoney Legal Media Group Asia Women in Business Law Awards 2015: Shortlist announced

The top law firms for PTAB institution success

Federal Circuit’s Rule 36 affirmances of PTAB appeals causing frustration

Is ADR the way forward for FRAND?

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Our editor James Nurton will be attending the @MarquesIP conference in Prague #marques17 from tomorrow. Say hi if y… https://t.co/FRjH4VdKuk

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New online: How do US, UK and EPO tribunals compare in patent infringement disputes? By Ilya Kazi of @Mathys_Squire… https://t.co/IxmyhKpGHI

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#ipwomen member Lara Kayode has written a paper on 5 common questions about IP protection in Africa (KE, NG & ZA) https://t.co/GqpObS9lk6

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