MORE ON STORMTROOPERS DAMAGES; KAUL AT AG STAGE; INTA COMP

More on Stormtroopers damages

Yesterday the IPKat posted this comment on the Anglo-US litigation in Lucas v Ainsworth, the Stormtroopers case. Merpel expressed her surprise at the quantum of the damages award of US$2o million. On this issue Colm MacKernan (Origin) writes:

"The basis for damages was probably statutory damages, which is available under the US copyright statute as a head of damages without the need to prove actual damages. Statutory damages are a minimum of $750 per infringement (i.e., per infringer, per work) rising to a potential $30,000, while willfulness of the infringement raises the ceiling to a potential $150,000. As you can see, sell the infringing article a few times and the damages can stack up.

The decision would be at possibly be at odds with US case-law, at least in the 2nd Circuit on ownership of copyright which would require that UK law apply, and under UK law there would have had to be an explicit assignment or equitable assignment:

Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 90 (2d Cir. 1998) which holds that the applicable law regarding ownership should be determined by the place where a work was created, the citizenship of its creators, and where the works were first used or published. see, also, Silberman v. Innovation Luggage, Inc., No. 01-7109 (GEL), 2003 U.S. Dist. Lexis 5420, at *35-36 (S.D.N.Y. Apr. 3, 2003) (applying Swiss law because plaintiff was a Swiss company and works were published in Switzerland); Bridgeman Art Library v. Corel Corp., 25 F. Supp. 2d 421, 426 (S.D.N.Y. 1998) (applying the law of the United Kingdom because plaintiff was a United Kingdom company and the works were located in and first published in the United Kingdom)

So we have creator in the UK, a UK citizen, of a film made at Pinewood Studios in the UK

The case raises a lot of questions — Did he defend it? How did they get jurisdiction over him? Was he properly served? How if he did not assign rights to Lucas was the Lucas company able to merchandise Star Wars stuff all these years?"

Many thanks, Colm, for your thoughts on this fascinating topic.


Kaul at AG stage

The Advocate General's Opinion in Case C-29/05 P OHIM v Kaul has now been posted on the Curia website. This is a complex Community trade mark appeal arising from Kaul's opposition to Atlantic Richfield's application to register ARCOL as a trade mark, based on a likelihood of confusion with its earlier CAPOL Community trade mark, both being for chemical substances for preserving foodstuffs. At the heart of the dispute is the role of the OHIM Board of Appeal: to simplify the issue drastically, how should the Board deal with evidence that may not have been available to the Opposition Division and which may have been submitted after the deadline date? Of interest is Advocate General Sharpston's statement that

"108. ... I am of the view that the Court of First Instance was wrong to conclude in the present case that the Board of Appeal was obliged, without first determining whether the contested decision was itself vitiated by any aspect of the manner or circumstances in which it was reached, to take account of evidence and argument concerning a ground of opposition, when that evidence and argument had not been submitted in due time in the opposition procedure but only within the period for lodging a statement of grounds of appeal.

109. I do not think, however, that my view conflicts entirely with the case-law on which the Court of First Instance based that conclusion.

Right: Atlantic Richfield's sawn-off "ARCO" logo

110. I do not, for example, take issue with the view that the role of the Board of Appeal is to determine whether a new decision with the same operative part may lawfully be adopted in the light of all the relevant matters of fact and of law which the parties have introduced either in the first proceedings or in the appeal. I consider simply that that role comes into play only at the second stage, that is, once grounds have been established for considering that the original decision was vitiated by some aspect of the manner or circumstances in which it was reached. Where such matters of fact and of law are relevant to the original decision but were not submitted in due time in the procedure leading up to it, the Board of Appeal then enjoys a discretion to take account of them pursuant to Article 74(2) of the Trade Mark Regulation. That discretion must be exercised within the contours of the appeal procedure as set up by the Trade Mark Regulation and its exercise may be challenged, where appropriate, before the Court.

111. Nor do I contest the notion of functional continuity within the Office as between the first-instance departments and the Boards of Appeal. However, that continuity cannot in my view require a Board of Appeal to take account of material which could validly have been disregarded by the first-instance department as not submitted in due time before that department. On the contrary, if ‘continuity’ means anything, it must surely imply a consistency in the application of the same rules. It might indeed be noted that there is a degree of functional continuity between the Court of First Instance and the Court of Justice in appeal matters, which has many points of similarity with the functional continuity within the Office, but which has certainly never been interpreted to the effect that the Court of Justice must have regard to elements not submitted in due time to the Court of First Instance, in order to set aside the judgment of the latter.

112. The existence of functional continuity between the first-instance department and the Board of Appeal, taken together with the discretion conferred by Article 74(2) of the Trade Mark Regulation, must in my view allow a Board of Appeal to take account of material in circumstances such as those of the present case but cannot require it to do so. The exercise of the discretion must be based on valid reasons. In particular, the Board of Appeal should not take account of material at a stage of the appeal assessment to which it is not relevant.

113. Finally, I do not consider that my view of the appeal procedure entails a restriction of any party’s opportunity to present evidence or argument which may not initially have appeared relevant or necessary".

Will the European Court of Justice endorse this view? The IPKat hopes so but suspects not: he fears that the Board of Appeal may be effectively forced to consider all and any evidence, whether relevant to the initial decision and whether delivered in time or otherwise, simply to stop Community trade mark appeals being made to Luxembourg and clogging up the Court of First Instance hearing lists.


INTA comp

Here's the 2007 Alternative Dispute Resolution Online Competition. INTA invites law students from the European Union to participate in the Alternative Dispute Resolution Online Competition. This online competition is designed to increase the student’s use and understanding of ADR. Law students representing schools throughout the EU will exercise their negotiation, mediation and advocacy skills to resolve hypothetical trade mark law disputes.

Prizes will be awarded to the most effective advocate teams and the most effective mediator, based on evaluations by distinguished professionals from INTA’s ADR Committee. The deadline to apply has been extended to 15 November 2006. If you have any further questions, please email adrcompetition@inta.org. The IPKat says, "go for it!".