We have a lot to catch up on, don't we? As the new year begins (and we return to the real world sans holiday spirit), take this opportunity to catch up on everything that The IPKat covered over the holiday period!

The Bruce Lee Enterprises, in the person of Shannon Lee, Bruce Lee’s daughter and CEO of the Bruce Lee Family Companies, has sued the Real Kungfu fast-food chain for using Bruce Lee’s image without permission. The member of the Lee family requested the Zhen Gongfu company, as known in Mandarin, to promptly remove the image and sought millions of US dollars (30) in damages (see full story here).

This episode raises interesting questions as the defendant has counter-argued that it has registered Bruce Lee’s image as a trade mark, and it has been using it for many years. Therefore, which rights can the Lee family rely on to protect the Bruce Lee universe from unjustified exploitation? 

The IPKat wishes you a nice new year ahead! At the same time, if you missed the IPKat posts during the festive season, it is now the time to catch up.

Eleonora Rosati wrote on the decision of the CJEU in the Tom Kabinet case (C-263/18). The CJEU ruled that there is NO such thing as 'digital exhaustion' of the right of distribution under Article 4 of the InfoSoc Directive. More specifically, the provision of e-books falls within the scope of the right of communication to the public, in respect of which there is no possibility of exhaustion.

Image rights

Eleonora also reported and commented on the decision of the Milan Court of First Instance in a dispute between Maradona, the famous former football player, and Dolce & Gabbana, the fashion house. The case concerned the unauthorised use of the name of Maradona on a jersey by D&G. The court found in favour of Maradona, awarding damages amounting to EUR 70,000.

Annsley Merelle Ward reported on the decision of the England and Wales Court of Appeal in Teva v Gilead. In the decision, the court dismissed Gilead's appeal and agreed with Mr Justice Arnold's decision in September 2018, which found that Gilead's SPC protecting its combination HIV anti-retroviral drug, Truvada, was invalid.

Léon Dijkman reported on the decision of the Court of Appeal of the Hague in HE Licences v VG Colours. The court stayed the enforcement of a patent decision under appeal where an injunction was granted. This decision is of interest in that it is exceptionally rare for Dutch courts to stay enforcement of decisions.

The EPO generally likes applicants to abide by the Articles and Rules of the EPC. Therefore, it is not surprising that the Receiving Section of the EPO refused the recent European patent applications designating an AI inventor for contravening the relevant EPO provisions. Rose Hughes examined this refusal, which followed a mere 16 minutes of deliberation at an EPO hearing in Munich.

Antonella Gentile reported on the judgment of the CJEU in C-143/19 P. The court ruled that there is 'genuine use' of a collective mark where the mark is used in accordance with its essential function, which is to distinguish the goods or services of members of the association from others which have another origin, in order to create or preserve an outlet for goods or services.

Nedim Malovic reported on a decision of the General Court earlier this month, which confirmed that a sign comprising and depicting cannabis and weed leaves is contrary to public policy. This decision confirms the general principle that signs are not registrable if they might be perceived as encouraging the purchase of illegal goods or trivialising their consumption.

Hayleigh Bosher reviewed the latest edition of 'International Copyright: Principles, Laws and Practice' by Paul Goldstein and P. Bernt Hugenholtz. This is a comprehensive guide to the internal rules, practices and principles of copyright around the world.

She also reviewed Sabine Jacques' book, 'The Parody Exception in Copyright Law'. This is the first book in English to provide an in-depth study of the parody exception, comparing five jurisdictions to understand the meaning and scope of the defence and finding a fair balance for rights and parodists by also considering moral rights and contract law.

Our IP instinct is to condemn "fakes", "deceptions", "knockoffs"and more as going over to the Dark Side - however, is this always true? Neil Wilkof discussed the recent scientific research which tries to imitate the rhinoceros horns. It is hoped that these forgeries will be able to cause the market for rhinoceros horns to be flooded with the fake product, thereby lowering their market priced reducing the incentive for poachers to hunt the rhinoceros.

Never Too Late 245 [Week ending 15 Dec] Proving the existence of confidentiality agreements and the celestial teapot - T 2037/18 | [Guest Post] Federal Court in Australia Grants Injunction Restraining Unlawful Use of Scotch Whisky | Supreme People's Court of China releases white paper on Chinese courts and the Internet judiciary | Never Too Late: if you missed The IPKat last week | General Election 2019 - possible copyright infringement, actually | The UK Government sheds light on the status of crypto assets and enforceability of smart contracts (Part I) | IPKat Book of the Year Awards 2019: Nominate your favourite IP Book of the year! | WIPO Public Consultation on AI and IP | CJEU rules on genuine use of collective trade marks

Never Too Late 244 [Week ending 8 Dec] Paris Court Grants Anti-Anti-Suit Injunction in IPCom v. Lenovo | Monday Miscellany | AG Bobek suggests broadening possibility to submit new arguments and evidence before General Court in trade mark opposition proceedings | Never Too Late: if you missed The IPKat last week | The implementation in France of the EU Directive relating to trade marks | Are too different whales conceptually identical? Fourth Board of Appeal finds likelihood of confusion despite some visual dissimilarities between marks | AG Campos advises CJEU to rule that Amazon might be potentially liable for trade mark infringement | Mandatory mediation in Greece: Odysseus reaches Ithaca | CJEU rules that "Aceto" and "Balsamico" are not individually protectable components of PGI "Aceto Balsamico di Modena" | In memoriam: D. C. Fontana, the creator of Mr. Spock from Star Trek | IP and the controversial "Hate Speech Bill" in Nigeria | TCL v Ericcson overturned on appeal in US; will go to jury trial | [Guest post] Conference report - More Than Just a Game came to Milan | [Guest Post] When you own an artwork, you don't own the copyright: Danish artist wins injunction against watchmakers planning to cut up painting

Readers might remember that, a couple of years ago, this blog reported on a lawsuit filed in Italy by former Argentinean footballer Diego Armando Maradona against Italian fashion house Dolce&Gabbana. 

The reason? 

The use, by the defendants, of his name on a jersey (below) worn by a model during a fashion show held in Naples in 2009 [Maradona played for Napoli for a few years, and in that city he reached the peak of his career]. The jersey, which was sold neither before nor after the show, carried the number ‘10’, ie the same number used by Maradona while at Napoli, and had the same colour combination as Napoli jerseys. Images of the jersey appeared on general interest media and also on the Dolce&Gabbana website. 

News has reached The IPKat that now the Milan Court of First Instance has issued its decision on the matter, finding in favour of Maradona. The court noted that [the translation from Italian is mine]: 

To this end, the court referred to Article 8 of the Italian Industrial Property Code, which expressly concerns trade mark registration of third parties’ own image, names and well-known signs, to draw the broader teaching that such provision is aimed at reserving the exploitation of the relevant ‘allure’ of a name or sign to its owner, who can then repress any third-party free-riding of their own repute. According to the court, this provision ‘fully legitimizes merchandising, which allows the rightholder to capitalize on the competitive advantages that are inherent to their sign’. 

In conclusion, according to the court the use made by Dolce&Gabbana of Maradona’s name was aimed at misappropriating the prestigious sport history of the latter. 

As regards the damages, the fact that Dolce&Gabbana had not put the jerseys on sale was considered relevant. The determination of the damage was done based on endorsement deals concluded by Maradona. The court awarded damages for a little less than what the claimant had requested, ie EUR 70,000.

It is well-known that image rights protection in Italy is quite extensive, and courts have issued decisions that have progressively broadened the scope of protection afforded to one's own image, name, likeness, voice, etc.

Not long time ago, for instance, the Turin Court of First Instance ruled that unauthorized use of Audrey Hepburn's likeness on garments infringed her post-mortem image rights. Previously, the Milan Court of First Instance had held that even mere evocation of someone's own image (again, Audrey Hepburn) could be held a violation of image rights.

Yet, decisions like the Maradona one increasingly show how the line between misappropriation/free riding and cultural tribute is quite a thin one. 

In the case of Maradona, the expansive reading of Article 8 of the Code served the purpose of establishing a violation of Maradona's image (or rather: name) rights. 

Yet, contrary to the court's reasoning, the context in which the use took place does not necessarily appear to be one in which the end-goal of Dolce&Gabbana was that of free riding on the footballer's own sport history or suggest a partnership between them. 

Rather, the fact that his name was used on a fashionable version of Maradona's own Napoli jersey is indicative of the fact that the intention was to celebrate some of the symbols of Naples as a city, including its historically relevant sports people.

All this said, the take-home point seems to be once again that image rights can go quite far in Italy and that unauthorized use of third-party image, likeness, etc should be done - and handled - with care.