The week in IP News

Intellectual property is one of the most fascinating areas of law because lines are very rarely ever drawn and the issues are almost always a grey area. With the explosion of technology in the digital age, intellectual property disputes and debates are happening full force all over the world every single day.

Also on the blog this week:

The pros and cons
of the Madrid Protocol

Annual Patent &
IP Trends Report Released (Sponsored

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
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

Mark Cuban – patent

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

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

The bear facts

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

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

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

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

Gilstrap strikes
blow against eDekka with rare 101 motion

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

PITAVA trade mark
infringement denied

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

The top law firms
for PTAB institution success

Circuit’s Rule 36 affirmances of PTAB appeals
causing frustration

Is ADR the way
forward for FRAND?