Global Forum on IP: Report 2

Celebrity Leveraging

Robert Raskopf, partner at Quinn Emanuel Urquhart & Sullivan LLP was up after the coffee break discussing the exploitation of celebrity rights in the US. The right of publicity is a state based right without federal law intervention, despite a movement to see a federal statute. The right of publicity allows individuals to control the commercial use of their name, image and the like. The first mention of a right of publicity came from an article written by Justice Brandeis in the Harvard Law Review written over 120 years ago about the right of privacy including, amongst others, intrusion, false light, and public disclosure of private facts. Even back in 1890 the reasons for the establishment of the right of privacy had to do with the encroachment of technology, such as cameras and telephones, on private life. This is the same continuum that we see today.

There are 28 states that have a common law right to publicity and another 19 that have statutory based rights of publicity. The one that has the greatest protection is that of Indiana whose statue protects a person’s right of publicity for 100 years post mortem and extends to a signature, appearance, gesture or mannerism which may indicate that person’s personality. Indiana is also home of Curtis Management (CMG) which includes in its portfolio that of Amelia Earhart, Mark Twain, James Dean and Babe Ruth, which is why we see Indiana with such strong protection. In California, the Astaire Celebrity Image Protection Act passes rights of publicity to heirs with protection at 70 years post mortem. New York, however, is at the other end of the spectrum which has a much narrower protection under Article 5, Section 51 of their Civil Law Statute and by virtue of Pirone v MacMillan where the Second Circuit held that the right derived from privacy and not from publicity, and therefore there were no transferable rights of publicity following death of the individual.

Typically, where the potential plaintiff is domiciled when they die can create a lot of difficulties dependent on the state’s law. The Marilyn Monroe case exemplified this as her domicile was held to be that of New York and not of the claimed California so she lost the right of publicity which had earned her at least $30 million before she died. The lesson being if you are going to die, die in Indiana.

Raskopf cited the case of CMG Worldwide v The Upper Deck Co., Inc case where he acted for the defendant. CMG owns the rights of publicity and is the licensing agent for several deceased Major League Baseball players including Lou Gherig. It had licensed Topps the exclusive rights to use some of these players images. The case was filed in Indiana against Upper Deck who put out a baseball card for every one of the Yankee games including a set which was interspersed amongst the nine other series that they intended to release. The cards had been made and ready for distribution, but CMG obtained an injunction in Indiana Federal Court which meant that they could not ship the cards. The Defendants were able to ascertain that none of the players at issue were resident in Indiana at the time of death and the case was transferred to New York and went on to settle. The Indiana court then denied the temporary restraining order which would have crippled the client’s distribution and business reputation - the cards of which were worth about $100 million. In another case Upper Deck had a licence to use an image of Derek Jeter but didn’t have rights from the MLB to show aspects of his employment including the uniform of the NY Yankees which is owned by the MLB. An injunction was applied for but again was rejected.

At the Supreme Court level there has only been one case of Zacchini v Scripps- Howard Broadcasting Company, otherwise known as the Human Cannonball case where the defendants broadcast the entirety of a 15 second clip of a guy shooting himself out of a canon. Although it was essentially a news report, the entire act had been shown so people would therefore no longer have a reason to go see him in person as they had already seen it.

He stated that there is some resistance from the Media Bar in the move for greater protection of rights of publicity. There was a case of a SuperBowl commercial run by Hyundai in which half of a second of the 30 second ad called "Luxury" showed an image of a Louis Vuitton repeat pattern a basketball. The purpose of this was to show new ideas of luxury. LVMH sued because of the use of this 'semi-logo'. He stated that this action was kind of a way of LVMH controlling their image. He questioned how far one can go in attempting to control an image in such circumstances. Raskopf’s personal point of view is that the First Amendment is more paramount than that of the celebrity’s right to control their image.

Views from the Bench: The Next Ten Years in Intellectual Property

The judges were up next looking into their fuzzy crystal balls for the next ten years in intellectual property. The chair, David Llewelyn, opened up by asking what a collective of judges is called and suggested it is a “gaggle”

Justice Andrew Phang, Judge of Appeal from the Supreme Court of Singapore stated that the body of IP law in Singapore is rapidly growing in comparison to how relatively small the jurisdiction is. The courts are also drawing increasingly on the case law of other jurisdictions and try to read their decisions as wide as possible to develop good principles of IP law for Singapore. There are cases where Singapore do vary including the application of the law of passing off as applied in the House of Lords case of Scandecor. Although they thought it was commercially sensible, there were many concerns about the tort and made suggestions on possible alternatives. Justice Phang referenced the case of City Chase Stores v LVMH – the question was whether the concept of infringing acts had to be “trade mark use” in their code. There are conflicting decisions in other jurisdiction, but the Singapore court said that infringing use had to be trade mark use. ("What is trade mark use in Singapore?", this IPKat wonders.)

Justice Phang stated that the Singapore courts are concerned to make sure that there is consistency of law between different branches of IP law and statutes – the intra and inter-IP harmony. This harmony can be seen in Valentine Corp case where there were at least 2 points of consistency established by the courts including the alignment the concept of confusion both for purposes of registration and for infringement. The court also held that there was no difference for the burden of proof for bad faith for revocation or invalidation.

Judge Joachim Bornkamm, Presiding Judge of the Federal Supreme Court of Germany was next up who stated that in the next ten years, as in the past ten, legislation will play a very small role in IP. This can be shown most clearly in the field of international IP legislation. WIPO has not called for a need for a new international IP law or treaty revision as “one has not dared to change the old treaties.” There is also great difficulty in creating new international legislation as we cannot legislate down IP protection and harmonization has proved very difficult to achieve, which we can see from European legislation where there has been great change, but little harmonization in this area. Judge Bornkamm also spoke on the attitude of judges towards new technology and the continuing need of judges to assess how current law can fit in with new technological advances. The question is no longer just how one can fill in the gaps in legislation with advances in technology but how can one protect the internet from the creation of strict IP laws. Judges, he said, can take for granted the business models developed through the Internet, but the law has to fit to make these business models work. The case about the Google’s image search in Germany was cited. In this case a German painter sued Google for making her images available as thumbnails in the Google Image Searches. The Google Image Search found her images on her website. It was difficult to say why there was not a copyright infringement, but from the start of the proceedings it was clear that the court would not allow this one decision to stop Google’s Image Search, especially when there are technologies to stop search engines from picking up these images. tytoc collie says that in the US we see the courts provide similiar decisions which are protective of such business/technological models on the internet. Judge Bornkamm stated that there is a balance that judges are now increasingly faced with striking between protecting rightsholders and the owners of new technologies.

Judge Rader, Chief Judge of the US Court of Appeals for the Federal Circuit said that IP law has fallen dangerously behind technology and the marketplace. He said that we have to recognize that IP is the most important regulatory agent of the new marketplace and control of the future, but IP law has not recognized this importance. This will not be solved by international treaties who are struggling to even be preserved in their old form. In practical terms this means that in the next decade judges need to observe each other’s work in each other’s national courts to determine if one country is going down the path of isolating themselves in the international market place by virtue of their decisions; a self-regulatory check, in a sense. He can’t say that he will be changing his decision to keep them in harmony with the other judges as that would conflict with his oath, but he does think his responsibility includes ensuring that there are not conflicts between IP and its impact on the international market place. Judges will have to take the initiative of facilitating this process. The challenge of the next decade is to use the technology of communication to learn from each other and with that knowledge to approach each other in a way which harmonizes. Judge Radar cautioned that "harmonizes" was not the appropriate word, because our laws are individually different, but that decisions should "reach the goals of harmony without legislation” because the market demands it and we have already fallen too far behind. Judge Rader thinks that it is inevitable that US judges will actually begin to look to international judges and their decisions.

Mr Justice Richard Arnold, UK High Court Judge in the Chancery Division was up next who said that he wants to see WIPO deal with audio-visual performances, a left over issue from the 1990s. He suggested that it is manifest that they should be granted the same level of protection as audio performances. He wants to also see an establishment of a European patent and European patents court, with the latter being the higher priority. The present situation for litigating patents is “deeply unsatisfactory”. European TM Directive and CTM Regulation is also on Arnold J’s list for a complete re-haul and cited the Max Planck’s review and recommendations of these two issues which will be published at the end of January. He stated that the ECJ jurisprudence tells us that the Directive and Regulation are not the best drafted of instrument and thus are ripe for review.

Mr Justice Arnold said that a new copyright act is needed in the UK as the Copyright Designs and Patent Act (CDPA) 1988 is a patchwork quilt of amendments and is a creature of the 1980s. He also wants to see a return to the “traditional British approach to IP with the election of an expert committee to look at the whole of IP with a report, with a White Paper with proposals" and then legislation." This was done for the 1988 act and Mr Justice Arnold says this is a good process, unlike the piecemeal IP reviews we have seen recently. It is better to take the time and it is worth doing. Mr Justice Arnold then gave a brief introduction to the development of the new Patent County Courts (PCC) regime and judge who he says are already making a significant difference to the way IP litigation works . He said the PCC and Colin Birss QC is finally fulfilling the role it was set up to play in providing access to low cost IP litigation.

Hon Robert van Peursem, Vice President of the District Court, The Hague (who was the only one whose picture tytoc collie could not find) said that there are three prospects in patent law in the next ten years which include the possibility of a unitary EU patent, enhanced cooperation, and the gradual end of absolute product protection in Europe. The official Commission proposal has been published to move forward with enhanced cooperation now supported by 12 member states including the UK. At present, it is vehemently being blocked by Italy and Spain. Judge van Perusem said that we must establish an EU patent board which would be a giant step forward and which many are working hard to see established. Last year an opinion was requested from the Court of Justice on legality of the Draft Agreement. The Advocates-General Joint Position was leaked which noted 4 problems with this Draft Agreement on the legality of the Patent Court. There is also a suggestion that EPLA could be revived, despite it not being very politically feasible at the moment. He stated that Floyd J’s address at the 15th European Patent Judges’ Symposium in Lisbon in September 2010 stated that in Article 54(5) of the EPC there is a no purpose-limited product claims for non-medical second use which was suggested should be expounded to all second-use claims in general. If we allow purpose-limited product claims which is currently not possible in EU law, the solution could be a product claim with instructions for use for a new and inventive purpose. He also cited the Monsanto decision was where the CJEU gave guidance on Art 9 of the Biotech Directive. (IPKat note: the above was recorded at high speed as Judge van Peursem was speaking, so error may have been made and if so, please let tytoc collie know.)

Dr Jiang Zhipei, now-retired Chief Justice of IPR Tribunal of Supreme People’s Court. From January to November 2010, Dr. Zhipei said that there were 39,913 first instance IP case, most of which were copyright cases at 23,304. There were 1,057 cases that concerned foreigners or foreign companies. The number of IP cases has steadily increased in China which will only increase in the next ten years. The new patent act and regime implemented in 2010 will be the development to watch in China in the next ten years to see how the act will affect patent practice in China. The State Council also issued an action plan to address IPR infringement and counterfeit products as a national campaign to protect all IP rights in China.

Something which made tytoc collie purr with pride was Judge Bornkamm's ending comment about his use of the “sophisticated reporting of IPKat”. He stated that the enormous amount of information which is free and up to date is making it easier for judges like himself to use the internet to understand what is happening in IP litigation throughout the world. What is beneficial, he said, was that the various jurisdictions which are reported by tytoc collie allows him to identify recurrent themes and questions making it to the courts in various countries. Purrrrrr.