Star legal writers: intellectual property

IP rows involving rock band Radiohead, Lego and the Happy Birthday tune, and charity domain name developments are just some of the subjects discussed by our expert briefings writers.

Collyer Bristow: The Radiohead download IP row

Radiohead are suing its former record label, ­Parlophone, over a deduction of £744,000 from digital download royalties paid to the band which they contend were unauthorised. Radiohead’s contract with Parlophone ended in 2003 with the album Hail to the Thief.

Most recording contracts contain a provision that royalties for recordings on ‘future formats’ will be paid at a rate to be agreed. The band contends that no such rate was agreed with Parlophone (formerly an EMI subsidiary) for digital downloads and that the deductions made in 2008 and 2009 for costs apparently incurred in 1992 and 1998, long before the advent of digital downloads, were in breach of the contract.

Parlophone had asked the court to dismiss the case on the grounds that it was time-barred due to the band’s failure to challenge the deductions within the contractual time limit.

The court disagreed with Parlophone, accepting the band’s argument that there could be no time limit on a challenge, as no agreement had ever been made over the rate of royalty payments for digital downloads.

Howard Ricklow, partner in the media and intellectual property team at Collyer Bristow, says: “It’s virtually impossible for anyone to predict how we’ll be listening to music in 10 or 15 years’ time, but it’s certainly possible to honour contractual agreements over royalties for recordings, no matter what format they are in.

“This case is particularly ironic, given that Parlophone went through very similar legal issues with the Beatles in the 1980s when CDs were a new media format.

“The fact that Radiohead are no longer contracted to Parlophone may well have played a role in how Parlophone has approached this issue – record labels have no reason not to squeeze every penny out of recordings by artists that are not on their roster anymore, especially as the value of recordings continues to fall.

“This case may well encourage other artists to mount legal challenges against record labels over their royalty payment practices, but only the biggest acts are likely to have the funds to be able to do it.”

NCTM Studio Legale: When is a Lego man not a Lego man?

The General Court (EU First Instance Court) has dismissed both actions filed by Best-Lock seeking a declaration of invalidity of Community Trademarks for two three-dimensional trademarks for Minifigures registered by Lego.

Best-Lock claimed the General Court should annul the previous decisions of the Office for Harmonisation in the Internal Market (OHIM) that rejected the application for a declaration of invalidity of the above trademarks.

In support of the two actions, Best-Lock alleged the infringement of Article 52(1)(a) of Regulation No. 207/2009 read in conjunction with article 7(1)(e)(i) and (ii) of the same regulation, according to which a community trademark is to be declared invalid where it consists exclusively (i) of a shape determined by the nature of the goods themselves or (ii) of the shape of goods necessary to obtain a technical results.

The General Court, in the first place, found that Best-Lock has not put forward any argument to support that the shape of the Minifigures is determined by the nature of the goods themselves, namely, the possibility of joining them to other interlocking building blocks for play purpose.

In the second place, the General Court dismissed that the Minifigures consists ‘exclusively’ of the shape of goods which is necessary to obtain a technical result. In this regard, the General Court considered that the ground for invalidity of a trademark is fulfilled when all the essential characteristics of a shape perform a technical function. In the present case, it was found that the head, body, arms and legs, which are necessary in order for the Minifigure to have such appearance and constitute the essential characteristics of the contested trademarks, do not serve any technical function, namely to allow the figure to be joined to interlocking building blocks.

On these grounds the General Court stated on the validity of the Minifigures three-dimensional trademarks registered by Lego and dismissed the action filed by Best-Lock.

It is to be noted that, with the above decisions, the General Court took a different point of view from its previous decision regarding the Lego bricks, where it held that a shape of that kind could not be registered. In the Minifigures cases, in fact, the General Court concluded that the relevant trademarks had nothing in common with the Lego bricks except for the fact that they were toys produced by the same company.

Best-Lock appealed the above General Court’s decisions related to the Minifigures and the matter will be now judged before the Court of Justice.

Ones to watch

One Essex Court

‘Iconic’ London taxi claims dismissed

The claims of the London Taxi Company to ownership of a trademark monopoly in the shape and appearance of London black cabs have been dismissed.

LTC had sued the company responsible for the development of the new eco-friendly Metrocab for passing off and trademark infringement.

Gateley

Copyright for chimps

Last year we brought you the news that Goldie and Diamond were unable to continue court proceedings as dogs were not persons. Now, the US courts have held that a monkey cannot own copyright.

Loyens & Loeff

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In the EU, geographical indications of wines and spirits are protected. A recent case referred three questions on the concept of ‘evocation’ of Calvados.

Karanovic & Nikolic

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Christodoulos G. Vassiliades & Co

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Maravela & Asociatii

IP protection in Romania

This briefing gives an overview of some of the main IP rights in Romania as well as IP protection framework.