Also on the blog this week:
How to enter Europe's new design
Tattoo copyright suit no slam dunk
The maker of the NBA 2K video game is being sued for $1.1
million to licence eight tattoo designs sported by LeBron
James, Kobe Bryant, Kenyon Martin, DeAndre Jordan and Eric
Bledsoe in the game,
according to The Hollywood Reporter.
The action was filed in a New York federal court by Solid
Oak Sketches, which claims to own copyright to the tattoo
designs, against Take-Two Software.
The Hollywood Reporter said the question over whether tattoo
designs are copyrightable has never been fully decided by a
court. Victor Whitmill sued Warner Brothers in 2011 for one of
the characters of Hangover 2 getting the distinctive tattoo
that Mike Tyson has on his face. The suit was settled before a
ruling, however. The judge in that case had said: "Of course
tattoos can be copyrighted. I don't think there is any
reasonable dispute about that."
In another case, Christopher Escobedo received a $22,500
award for his lion tattoo on a UFC fighter in a dispute against
videogame maker THQ.
In a demand letter to Take-Two, an attorney for Solid Oak
Sketches used that ruling to calculate that the value of the
eight tattoos should be $572,000. However, two of
James’ tattoos were featured on the front cover
the game, which Solid Oak claimed meant they are worth four
times as much as the other tattoos. The company offered a
perpetual licence for $1.1 million.
"As you probably know, tattoos are original works of art
entitled to full protection of the copyright laws," said the
letter. "Your company has been exercising my clients' exclusive
rights in their copyrights without their permission, and thus
your company has been engaging in ongoing acts of copyright
The UK’s Wigs and Gowns fashion law blog also
analysed the case
In other IP in sports news, Fortune this week ran an
interesting analysis of why the NFL cannot control the only
broadcast of the first ever Super Bowl.
Bacardi is Havana go at the US government
Rum maker Bacardi is seeking records under the Freedom of
Information Act to explain the US government’s
decision to strip it of the right to the Havana Club brand name
and give it back to a Cuban state company partnered with a
The USPTO in January allowed
Cubaexport to register the Havana Club name in the US. It and
its partner, French company Pernod Ricard, hope to one day sell
Havana Club in the US as a result of its improving relations
with Cuba. They have the rights to the name in the rest of the
Bacardi left Cuba after the 1959 revolution and then bought
the rights to the Havana Club mark from its pre-revolutionary
owner. It has been selling Havana Club in the US since the
mid-1990s. The USPTO previously recognised
Bacardi’s claim to the name under a statute aiming
to protect owners of Cuban companies nationalised after the
Bacardi is requesting to see all records related to the
Havana Club mark held by the executive office of President
Obama, he USPTO and other offices.
"We are filing this Freedom of Information Act request
because the American people have the right to know the truth of
how and why this unprecedented, sudden and silent action was
taken by the United States government to reverse long-standing
US and international public policy and law that protects
against the recognition or acceptance of confiscations of
foreign governments," says Eduardo Sánchez, senior vice
president and general counsel at Bacardi, in a
statement. "When the highest and most powerful government
agencies are not transparent about critical changes in policy,
the public has the right and the responsibility to use FOIA
requests and other tools at their disposal to hold the
government accountable for its actions."
He added: "Bacardi believes that vital government agencies
should not be able to ignore Lanham Act obligations or
disregard the general legal requirements of government agencies
and courts under Section 211 and related legislations to
protect expropriated properties and uphold critical provisions
of the embargo."
IKEA sent packing in Indonesia
IKEA has lost the right to use it brand name in Indonesia,
reports The Sydney Morning Herald.
A Jakarta court in 2014 granted the
rights to the Ikea name to PT Ratania Khatulistiwa, which plans
to sell its own furniture.
Inter IKEA System, the Swedish company’s
franchise division, had registered the IKEA mark with the
Indonesian director-general of IP in 2006 and 2010. Ratania
argued that it had not used the mark for commercial purposes
for three consecutive years.
Inter IKEA unsuccessfully filed an appeal to the Indonesian
Peru joins Marrakesh
WIPO director Francis Gurry this
week received Peru’s instrument of
ratification to the Marrakesh Treaty to Facilitate Access
to Published Works for Persons Who Are Blind, Visually Impaired
or Otherwise Print Disabled.
It becomes the 14th country to ratify the treaty.
Twenty countries need to ratify the treaty for it to come into
"Wild overreaction" to Nokia news
Nigel Swycher, CEO of IP analytics company Aistemos, this
week said Nokia’s share price falling more than
10% within hours of the company announcing a patent licence
arbitration with Samsung shows that investors often have a
"wild overreaction" to IP news.
He said this is not the first time stock prices have reacted
in an unpredictable fashion to IP news.
"The poster child for this mispricing was when GoPro stock
fell by 12% on the grant of a single Apple patent,"
said Swycher. "While universally accepted, in retrospect,
to be a gross over-reaction, it provided yet more evidence
pointing to a simple fact: investors don’t have
access to the kind of IP data they need if they are to digest
news relating to intellectual property in a more measured
Koh for the Ninth Circuit?
Judge Lucy Koh is expected to be
nominated by President Obama for the Ninth Circuit, the
US’s largest federal appeals court,
reports The San Jose Mercury News.
Koh has taken a prominent role presiding over
Apple’s patent war with Samsung.
The Mercury News reported that her confirmation may face
long odds in the Republican-controlled Senate in a presidential
No fees for NewEgg
The Federal Circuit this week denied NewEgg fees again its
dispute with Site Update. It was denied fees once before the
Supreme Court’s Octane Fitness ruling. The Federal
Circuit remanded and asked for reconsideration under the new
The Northern District of California again denied the fee
award, deeming that it wasn’t exceptional. The
Federal Circuit agreed.
The Patently-O blog had
a good overview of the case. "In the appeal, the Federal
Circuit noted that – this time, NewEgg was the one
with an unreasonable position – demanding a 'de novo
review of the district court’s
findings’ despite recent Supreme Court precedent
to the contrary. However, the Federal Circuit
followed its usual practice of requiring each party to bear its
own costs of the appeal."
Department of animal selfie news
The IP world cannot go long without a story involving an
animal and a selfie. This week’s one came from the
UK, where the owner of a horse is demanding the share of a
prize worth £2,000 won by a father and a son who took a
selfie that the horse photobombed,
reports The Guardian.
Nicola Mitchell claims David Bellis should have asked for
permission for the photo taken in north Wales. Mitchell told
The Guardian: "I didn’t even know that this
competition was on. If I had known about it we would have
entered and could have won as Betty is always sticking out her
IP lawyers noted that the son, Jacob, owns the copyright in
the image because he took it and did not require permission to
Wayne Beynon, a partner and intellectual property lawyer at
Cardiff and London-based Capital Law, told The Guardian: "The
horse owner’s complaint doesn’t
really hold up in law. The father and child were on a public
footpath, so there is no issue of trespass."
There was further news in the monkey selfie story that will
never end this week as well, when a federal judge ruled that
the monkey did not and could not own a copyright, and threw the
case out of court. You can read a pun-laden overview by Public
here. This blog hopes this is the last of the matter, but
suspects it will not be.
In our news and analysis: