Included in this issue: Importance of ownership provisions in contracts for the commissioning of copyright works | Streaming live events on the Internet: more clarity on the issue of copyright infringement | Guidance on genuine use of a trade mark from EU General Court | "The letter of the law" | Calling time on SKYPE | Making Private Copies of Copyright Works: Illegal once more | Domain names: getting into pole position | ECJ gives guidance on registration of Kit Kat shape mark

Importance of ownership provisions in contracts for the commissioning of copyright works

  • Court considers ownership of copyright in commissioned logo
  • Contract held to include implied term of assignment - commissioning company therefore held to be equitable owner of copyright
  • Case emphasises importance of clear ownership provisions in contracts for commissioned works

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Streaming live events on the Internet: more clarity on the issue of copyright infringement

  • Swedish case concerning an individual who posted links to watch live ice hockey games on the internet, allowing users to avoid paying the broadcaster to view the games through the broadcasters links
  • Question referred to the ECJ on the streaming of lice events in the context of the Copyright Directive
  • ECJ holds that broadcasters' exclusive right of communication to the public can extend to linking to live internet broadcasts

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Guidance on genuine use of a trade mark from EU General Court

  • The evidential value of affidavits from the owner of a Community trade mark registration which is the subject of a revocation action was lower than evidence from other independent third parties
  • When assessing whether there had been genuine use of a trade mark, the Court should take into account the nature of the goods themselves and the market share of the product
  • Proper reasons for non-use of a trade mark referred to circumstances that were outside the control of the trade mark owner. Commercial difficulties that were only specific to the trade mark owner, were not proper reasons for non-use of a trade mark

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"The letter of the law"

  • IPEC considered a patent infringement claim and invalidity counterclaim in relation to envelope mailers
  • Despite infringement being found, the claim failed due to the patent being held to be invalid
  • Due to the simple technology, this case is a good example of how IPEC currently approaches the resolution of such patent cases

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Calling time on SKYPE

  • Latest in the long-running battle between SKY and SKYPE
  • Argument that SKYPE is distinct from SKY rejected, yet again
  • Importance of retaining evidence of use crucial in protecting trade mark registrations

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Making Private Copies of Copyright Works: Illegal once more

  • High Court quashes legislation which permitted making copies of copyright works for personal use
  • Organisations that represent copyright owners convince the High Court that the Government had insufficient evidence to decide that no mechanism for compensating rights owners was required
  • What next for permitting individuals to make copies for their own use, also known as "format shifting"?

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Domain names: getting into pole position

  • Employee of one company registers - in his own name - domain names incorporating the names of a competitor's products
  • Employee found liable for passing off
  • Should the company that employs him also be liable for passing off?

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ECJ gives guidance on registration of Kit Kat shape mark

  • The European Court of Justice (ECJ) has provided guidance in relation to a number of questions referred from the High Court of England and Wales in relation to the registrability of the three dimensional shape of the four finger KIT KAT chocolate bar as a trade mark
  • For a three dimensional shape mark to be refused registration, one of the grounds of objection to the registration of a shape mark must apply to all of the essential features of that shape. It is not enough that one ground of objection applies for some of the features, and another ground applies to the others
  • When assessing whether a sign which consists exclusively of the shape of the product is prevented from registration as it consists exclusively of a shape which is necessary to obtain a technical results, the assessment should only be made in relation to the way in which the product functions, and not how the product is manufactured
  • When assessing whether a shape mark has acquired sufficient distinctive character through use, the Applicant must be able to prove that the shape in question functions as an indicator of origin in its own right, irrespective of any other signs or marks that may also be present

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