Analyzing Intellectual Property Infringement

1. Introduction

The issue in the current case will involve determining infringement claims regarding online generated image, passing off claims regarding unregistered trademark, and infringement claims of registered sound mark. This article will discuss the merits of each case by identifying and referring to relevant intellectual property laws.

2. Issues and relevant laws

A. Copyright infringements claim re a ‘thank you’ card depicting a butterfly detail taken from a computer-generated image online.

In this case, the issue is to assess copyright ownership and claims of infringement regarding online generated image. Image is protected by copyright as artistic works. Images include digital photos or any digital images.

1. Relevant rules. The first owner of copyright is the creator of the image. If he has created the image out of employment or on commission, the employer will be the owner of the copyright. A person cannot use images without the permission of the owner if such person desires to copy the image or share it online. A person or an organisation can use the images if they are licensed by the creator or owner of the images to allow use of the images in return for payment and/or with conditions for a specific time period.

The relevant law is the Copyright, Designs and Patents Act 1988 (CDPA 1988). According to Section 16(2), a copyright in a work is infringed if a person, without the licence of the copyright owner, commits or authorises another to commit an act restricted by the copyright. One of such prohibited acts is provided in Section 17(1), which provides that a copyright in a ‘literary, dramatic, musical or artistic work’ is infringed if it is copied by reproducing it in a material form. Section 96(1) entitles the copyright owner to take action against infringement of copyright. According to Section 96(2), the copyright owner can seek ‘damages, injunctions, accounts or otherwise’.

Section 9(3) of CPDA 1988 provides that for any computer-generated literary, dramatic, musical or artistic work, the author is the person who has made the arrangements necessary for the creation of the work. This legislation has made provision for ownership of machine creation that does not have intervention of a human creativity. Thus, the right holder will be the entity financially investing in the computer and the programmes that produce the work.

1. Intellectual Property Office, ‘Guidance: Copyright notice: digital images, photographs and the internet’ (2021) accessed on 02 April 2021 .
2. Ibid.
3. Ibid.
4. Ibid.
5. Ibid.
6. M de Cock Buning, ‘Artificial intelligence and the Creative industry: new challenges for the EU paradigm for art and technology by autonomous creation’ in W Barfield and U Pagallo (eds.), Research Handbook on the Law of Artificial Intelligence (Edward Elgar Publishing 2018).
7. Ibid

The CPDA 1988 protects computer generated works, including original computer programmes that are an author's intellectual creation. Thus, any idea, programming and logic that are not abstract ideas, but have specific, detailed ideas attract copyright protection. In that regard, computer generated works may not require originality, as is provided under the CDPA 1988, S1(1)(a). There is a sui generis database right.

2. Application. As per the rules, the concerned computer-generated online image is an artistic work covered by the copyright protection. This image is owned by the creator or the employer of the creator. TechBlitz cannot use this image without the permission of the owner. For using the image, it must seek a permission, or a license form the owner by paying a license fee or complying with agreed condition with the owner. If TechBlitz uses the image without the license of permission, it would infringe the copyright as per Section 16(2) of CDPA 1988. The card depicting the butterfly detail constitute copying the artistic work that went in creating the online image and as such it will be copyright infringement.

Even if the image is online created, the CDPA extends protection to such computer-generated online images. Such protection is provided under Section 9(3) of CPDA 1988. TechBlitz must understand that the protection is justified given that the owner has made necessary arrangements, including financial investing in the computer and programmes in order to create the online image.

The owner of the concerned image may, according to Section 96(1) and (2), make infringement claims and seek ‘damages, injunctions, accounts or otherwise’ that will prevent TechBlitz from further using the image and make TechBlitz pay the owner an award of damages or account of profits arising from the use of the online image

3. Conclusion

To conclude in regard to the current case of copyright infringement, the use of the computer-generated online image by TechBlitz would constitute copyright infringement as CDPA 1988 has afforded copyright protection to such images by terming them as artistic works. Even if the image is generated online, it attracts protection of the owner as that image is not some abstract ideas but specific, detailed ideas and the owner has invested financially and made necessary arrangements to create that work. The owner has a sui generis right over the database that enabled the creation of the online image. Thus, in order to avoid infringement claims under Section 96(1) and (2), TechBlitz must seek permission or licence from the owner or creator of the image

B. A passing off claim re a ‘congratulations’ card featuring a pop-up hologram of a bottle of champagne produced by the world renowned Bullinger Champagne House. The bottle’s label is clearly visible.

1. Eleonora Rosati, Originality in EU Copyright: Full Harmonization through Case Law (Northampton: Edward Elgar Publishing 2013).
2. Case C-406/10 SAS v World Programming Ltd.
3. Andres Guadamuz, ‘Do androids dream of electric copyright? Comparative analysis of originality in artificial intelligence generated works’ (2017) 2 Intellectual property quarterly 169, 180.; Temple Island v New English Teas and Another [2011] EWPCC 21.; Case C-604/10 Football Dataco v Yahoo! [2012] paras 47-52.
4. Eleonora Rosati, Originality in EU Copyright: Full Harmonization through Case Law (Edward Elgar Publishing 2013).

This current case is related to unregistered trademark concerning the bottle of champagne that is an unregistered trademark. The current issues will involve assessing the requirements to a successful passing off claims, including whether or not the concerned bottle of champagne carries a goodwill or reputation, and whether TechBlitz has misrepresented its product or services and whether such misrepresented has caused the claimant damages.

1. Relevant rules. The tort of passing off is a common law that protects unregistered trademark. In Reckitt & Colman Products Ltd v Borden Inc., Lord Oliver sets out the ‘Classic Trinity’ where a claimant can bring the passing off claim. Firstly, the goods and services of a claimant have acquired a goodwill or reputation in the market and they are known by certain distinguishing features. Secondly, the defendant has made a misrepresentation, whether intentionally or not, leading or likely to lead the public to believe that the goods and services offered by such defendant are that of the claimant. Thirdly, the claimant has suffered or is likely to suffer damage due to the erroneous belief arising out of the misrepresentation.

The case of Erven Warnink BV v J Townend & Sons concerns a trademark name of a spirit-based product called ADVOCAAT, which has gained a reputation and goodwill for the name in the English market. The House of Lord held that there was an infringement by the defendants who misrepresented that their wine-based product was of the same type as the ADVOCAAT and sought advantage of the name. Lord Diplock ruled that for a passing off claim, there must be a misrepresentation made by the defendants in the course of trade to consumers of goods or services supplied by the defendants calculated to injure the business or goodwill of the claimant causing actual damage to the claimant’s busines or good will of the trader. It is not enough if the misrepresentation confuses the consumers. Misrepresentation must deceive the consumers as to the identity of the goods, not simply confuses them. In the Reckitt., Lord Oliver ruled that a ‘mere confusion which does not lead to sale is not sufficient’ to proof misrepresentation.

A form of misrepresentation that could cause infringement is misrepresentation by false endorsement. The provision of passing off can prevent false use of a person's image or name in order to endorse a product. For this claim to succeed the claimant must prove that the concerned product has significant reputation or goodwill in its name or image and that the defendant has misrepresented the product that they are endorsed, recommended or approved of by claimant. This is supported by the case of Eddie Irvine v Talksport that concerns defendants using an image of the racing driver, Eddie Irvine, in order to promote their radio station. Eddie Irvine had a property right in his goodwill enabling him protect his right from unlicensed appropriation, including false claim or suggestion that he endorsed a third party’s goods or business. Eddie Irvine had to established that he had a significant reputation and goodwill and that the misrepresentation had delivered a false message to sufficient people that would have had indicated his desire to associate himself with the defendant. His claim succeeded. Similarly, in the case of Fenty v Arcadia, which concerns the defendant Topshop selling a t-shirt that featured a photograph of the pop star Rihanna, the court ruled that the use of the photograph in the specific circumstances of the case was misleading the public and that such use constituted infringement of Rihanna's rights in passing off.

1. Andrew Murray, Information Technology Law: The Law and Society (Oxford University Press 2019) 362.
2. Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341.
3. Ibid, at 406.
4. Erven Warnink BV v J Townend & Sons [1979] AC 731.
5. Ibid.
6. Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC)
7. Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341.
8. Eddie Irvine v Talksport [2003] EWCA Civ 423; [2003] 2 All ER 881; [​2003] EMLR 538.

It must also be noted that not all uses of a person's name or image constitutes endorsement. Endorsement is not the same as merchandising where a product may bear the image of a certain person, but does not have any connection with the person. Thus, simply using the image is unlikely to be passing off. In Fenty, the court ruled that just selling a garment with a recognisable image of a famous person cannot be an act of passing off. Passing off requires misrepresentation about the trade origin creating a false belief in the potential purchaser's mind and influencing their decision to purchase the product. It is fact specific and based on the evidence. The determination is that of the three requirements of goodwill, a misrepresentation and damage.

Just as a registered trademark, unregistered trademark must also have the characteristic of domesticity and specificity. According to the provision of domesticity, a trademark will be protected within the jurisdictions in which the trademark is registered or used. This provision is provided under Section 9(1) of the Trademarks Act 1994 (TMA 1994), which provides that the proprietor has the exclusive rights in the trademark infringed in the United Kingdom without his consent. The characteristic of domesticity also applied to unregistered trademark. In Anheuser-Busch Inc v Budejovicky Budvar, the Court of Appeal adopting a hardline school of the principle of passing off determined that goodwill is a necessary pre-requisite of passing off and must have a territorial component.

According to the provision of specificity, trademark protection is extended if there is a likelihood of confusion amongst the consumers. Such protection is extended to the products that share characteristics with the product of a trademark owner. A consumer will unlikely be confused by similar trademarks on products that are entirely different. In regard to unregistered trademark, specificity finds basis in equity. The principle of passing off as a common law tort has its basis in equity. One cannot claim goodwill in a trade name or a mark outside the class of services or goods in which they trade. This prevents monopoly over a name or a mark that could unfairly restricts others from gaining access to a different market.

2. Application. Applying the Reckitt test, it can be said that the bottle of champagne carries goodwill or reputation and has distinguishing features, as is made by world renowned Bullinger Champagne House. In regard to whether the card misrepresents that it is that of Bullinger Champagne House, it cannot be said so. The card shows a clear visibility of the bottle’s label. The card may confuse the consumers as to whether Bullinger Champagne House endorses the card or TechBlitz’s products. However, applying Fenty, selling the card with the recognisable image of the famous bottle of champagne cannot be an act of passing off. There is no likelihood of confusion as the card does not have any connection with the Bullinger Champagne House or the bottle of champagne.

1. Ibid.
2. Fenty v Arcadia ​2013] EWHC 2310 (Ch).
3. Fenty v Arcadia ​2013] EWHC 2310 (Ch).
4. Ibid.
5. Ibid, at 75.
6. Andrew Murray, Information Technology Law: The Law and Society (Oxford University Press 2019) 363.
7. Anheuser-Busch Inc v Budejovicky Budvar [1984] FSR 413.
8. Andrew Murray, Information Technology Law: The Law and Society (Oxford University Press 2019) 364.
9. Ibid.

It is understandable that unregistered trademark associated with the bottle of champagne has domesticity and specificity, which gives Bullinger Champagne House the exclusive rights, as provided under Section 9(1) of the TMA 1994. However, simply using the image is unlikely to be passing off. It does not have any likelihood of deceiving the consumers as to the identity of the goods. Protection cannot be extended against the card that do not share characteristics with the bottle of champagne. Consequently, it cannot be said that claimant is likely to suffer damage.

3. Conclusion. The lack of common or similar characteristics between the card and the bottle of champagne negates the passing off claim. The use of the image is mere merchandising and not an endorsement. There cannot be any likely confusion amongst the consumers. Techblitz cannot be held as misrepresenting its card, which is in question, to be endorsed by or a product of Bullinger Champagne House.

C. A registered trademark infringement claim re a ‘singing’ birthday card which plays a recording of a registered trademark owned by Fiesta Ltd. This UK registered sound mark was created combining the sound of three men: one Welsh baritone, one Italian tenor, and one hog caller from Arkansas. The trademark is currently registered in class 35 for the following products.

The issue is this case if whether or not TechBlitz has infringed the registered sound mark by using it in its singing birthday card.

1. Relevant rules. In 2019, the UK trademark law implemented the EU Directive 2015/2436, Article 3 which provides for sound as a trademark capable of distinguishing the goods or services of an entity from those of others and enabling the public and the competent authorities determine the clear and precise subject matter of the protection to the proprietor. This provision is implemented in the TMA 1994, s1(1).

The UK has assured protection of products that share characteristics a trademark product by categorising all trademark application into one of the 45 classes of services/goods. Such classification assures protection of the owner of a trademark by preventing others from using the mark for similar services/goods. It also allows others to use popular trade names or marks in other sectors where the public will be unlikely confused.

The TMA 1994 provides for three situations where infringement could occur. Firstly, Section 10(1) provides that a trademark is infringed if the defendant uses in the course of their trade a sign identical with the trademark in respect to identical services or goods. This infringement does not call for a proof of a likelihood of confusion amongst the public. In Decon Laboratories Ltd., v. Fred Baker Scientific Ltd., the claimant successfully sued the defendant who sold identical products using a range of marks including the registered mark ‘Decon’ of the claimant.

1. Andrew Murray, Information Technology Law: The Law and Society (Oxford University Press 2019) 354.
2. Decon Laboratories Ltd., v. Fred Baker Scientific Ltd.,1 [2001] RPC 293.

Secondly, Section 10(2)(b) provides that infringement occurs if the sign used is identical with the trademark used in goods or services similar or identical to those of the claimant for which the trademark is registered and it causes a likelihood of confusing the public. This section requires that proof of likelihood that the public may get confused relating the sign to the goods or products for which the trademark was registered.

Thirdly, Section 10(3) provides that there is infringement if the defendant uses a sign identical with or similar to the trademark, which has a reputation in the UK and such use may lead to unfair advantage of, or to detriments to, the distinctive character or the reputation of the trademark. Section 10(3A) further provides that Section 10(3) applies no matter the goods and services are ‘identical with, similar to or not similar to those for which the trademark is registered.’

Section 10(3) provides for the doctrine of dilution that protects a trademark and prevent it from infringement. The enforcement of the doctrine of dilution is found in the case of Daimlerchrysler AG v Javid Alavi (T/A Merc), where Justice Pumfrey ruled that the concerned trademark must have a reputation in the UK; the alleged sign must be identical or similar with such trade mark; the use of the sign must cause disadvantage or detriments to the reputation of the trademark or the claimant; and such use must be without due cause.

According to doctrine of dilution, such protection is extended to even non-competitive markets. The extent of popularity of a product prevents the use of its trademark in non- competitive market to avoid confusion in the minds of people and diluting the uniqueness. However, Justice Pumfrey in Daimlerchrysler AG, held that if the activity of the defendant is quite outside activities that might be undertaken by owner of a trade mark, and if there is no real likelihood of confusion, the owner cannot claim that the value of the trademark would be diminished or the reputation of the trademark would be damaged by the additional use.

2. Application. The concerned trademark is protected by TMA 1994, s1(1). The Class 35 classification protects the trademark from the use of others for similar services/goods. The Class 35 to which the concerned trademark owned by Fiesta Ltd does not provide for birthday card. The question is whether or not the card could be considered similar goods as falling under Class 35. As such, Section 10(1) infringement relating to identical goods does not apply. Also, Section 10(2)(b) infringement also does not apply even though the sound is identical with the sound mark, as the card is not similar or identical to those listed under Class 35.

Reading Section 10(3), the doctrine of dilution will apply to this particular case. Applying Section 10(3), TechBlitz used the sound mark, which is a registered trademark. The sound mark has a reputation in the UK. The use of this sound mark in the card will cause unfair advantage of, or detriments to reputation and distinctiveness of the sound mark. According to Section 10(3A), the question of similarity, non-similarity or being identical does not matter.

1. The University of California, Adelaide law review: Volume 22 (The University of California 2000) 229.
2. Daimlerchrysler AG v Javid Alavi (T/A Merc) [2001] RPC 42.
3. Narendra Goyal and Mukesh Kumar Singh, ‘Doctrine of Dilution Under Law of Trademarks-A Comparative Analysis of Law in United Kingdom and United States of America’ (2011) Available at SSRN 1756741.
4. Daimlerchrysler AG v Javid Alavi (T/A Merc) [2001] RPC 42.

Applying Daimlerchrysler, the sound mark is well-known and popular, and its protection extends to a non- competitive market, which may include the business of TechBlitz of selling the concerned card in order to avoid public confusion and to protect the uniqueness of the sound mark. Since Class 35 components reflect the use of the sound mark in party-related activities and the ‘singing’ birthday card does not appear to be ‘quite outside activities that might be undertaken’ by owner of the sound mark. Thus, there is a real likelihood of confusion and the owner of the sound mark can claim that the value and reputation of the sound mark would be diminished or damaged by the additional use in the birthday card.

3. Conclusion

Since the sound mark is well-known and popular, applying the doctrine of dilution, TechBlitz will be infringing the sound mark by using it in the card in question.

3. Conclusion

The current case involves copyright infringement claims related to a computer-generated online image, passing off claim related to an unregistered trademark and trademark infringement claim of a sound mark.

In regard to the first matter, the CDPA 1988 protects the online image as an artistic work. In regard to the second matter, the TMA 1994 does not extend protection as passing off cannot apply to the card, which does not share common or similar characteristics with the bottle of champagne. In regard to the third matter, the TMA 1994 and the doctrine of dilution apply, and the sound mark is protected from being used in the birthday car.

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Cases

Anheuser-Busch Inc v Budejovicky Budvar [1984] FSR 413

Case C-406/10 SAS v World Programming Ltd

Case C-604/10 Football Dataco v Yahoo! [2012]

Daimlerchrysler AG v Javid Alavi (T/A Merc) [2001] RPC 42

Decon Laboratories Ltd., v Fred Baker Scientific Ltd.,1 [2001] RPC 293

Eddie Irvine v Talksport [2003] EWCA Civ 423; [2003] 2 All ER 881; [​2003] EMLR 538

Erven Warnink BV v J Townend & Sons [1979] AC 731

Fenty v Arcadia ​2013] EWHC 2310 (Ch).

Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC)

Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341.

Temple Island v New English Teas and Another [2011] EWPCC 21

Legislation

The Copyright, Designs and Patents Act 1988

The Trademarks Act 1994

Books

M de Cock Buning, ‘Artificial intelligence and the Creative industry: new challenges for the EU paradigm for art and technology by autonomous creation’ in W Barfield and U Pagallo (eds.), Research Handbook on the Law of Artificial Intelligence (Edward Elgar Publishing 2018)

Murray A, Information Technology Law: The Law and Society (Oxford University Press 2019)

Rosati E, Originality in EU Copyright: Full Harmonization through Case Law (Edward Elgar Publishing 2013)

The University of California, Adelaide law review: Volume 22 (The University of California 2000)

Journals

Guadamuz A, ‘Do androids dream of electric copyright? Comparative analysis of originality in artificial intelligence generated works’ (2017) 2 Intellectual property quarterly 169

Narendra Goyal and Mukesh Kumar Singh, ‘Doctrine of Dilution Under Law of Trademarks-A Comparative Analysis of Law in United Kingdom and United States of America’ (2011) Available at SSRN 1756741.

Others

Intellectual Property Office, ‘Guidance: Copyright notice: digital images, photographs and the internet’ (2021) accessed on 02 April 2021

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