Will Tyson's Tattoo KO Hangover II?

You wouldn't want to provoke a fight with Mike Tyson.  But his tattoo artist also seems to be pretty punchy.  Victor Whitmill (trading as Paradox Studio of Dermagraphics) is suing Warner Bros, the makers of Hangover II, to try to get the release this weekend delayed, presumably in order to extract the necessary number of greenbacks along the way. 
The basis of the claim is copyright in the tattoo which adorns Tyson's battered-yet-formidable viz.  He took the trouble to register this thing at the US Copyright Office and, since they conduct some minimal examination, there is perhaps some form of presumption that copyright subsists.  The infringement is apparently parodic, which might save it in the US (but not every country has a parody defence) - we are not familiar with the Hangover series, but the gentleman in the film (pictured courtesy of The Age) appears to be physically pretty much the opposite of Iron Mike.
We thought this might be the first tattoo copyright case, but apparently not - there are reports that back in 2005, tattooist Matthew John Arthur Reed of TigerLilly Tattoo and DesignWork sued in the District of Oregon in respect of adverts featuring NBA star Rasheed Wallace, the man who he had actually tattooed.  He too had registered tattoos as copyright works, though in his case the registrations do not make it clear that this is what the drawings are.  Case settled, apparently. 
"Crazy Americans", I hear you mutter - but not so fast, for this is a truly global IP issue.  One Louis Malloy, a UK celeb tattooiste, threatened (and may have carried through with) a copyright action in respect of tattoos he created on the person of clothes-horse and occasional footie star David Beckham, according to the Daily Mirror.
Why does this strike me as wrong?  The subsistence of copyright isn't the problem - you have a design of some kind, applied to a material substrate, and there might be a preliminary drawing too.  But is the reproduction in the human body of the tattooee any kind of infringement?  That doesn't feel quite right.
Commercially, too, when you tattoo a celeb, you must surely grant some kind of implied licence that they can walk around doing the stuff celebs are so very well paid to do - which includes advertising (unless you also took the trouble to tattoo in some small print with it).  Finally, if anyone has rights in that Tyson tattoo, isn't it the Māori?  They might be more of a match for Tyson than poor Hungover Ed Helms.

Pretty pylons

Set against a bleak background and a sky
laden with volcanic ash, these Icelandic pylons
have a certain degree of charm ...

An article on the BBC website today asks: can electricity pylons ever be pretty?  It explains that electricity pylons, little changed since the 1920s, may get a makeover with a new international design competition which is being run by Royal Institute of British Architects (RIBA) for Department of Energy and Climate Change and the National Grid.

Whoever wins will be pleased to know that the market is a big one.  There are more than 88,000 pylons in the UK alone.  This is not apparently the first such competition, as the piece explains.

If you fancy taking a look at the rules, you can find them here. Rule 4.6 deals with the intellectual property rights:

"The copyright of the design will be in accordance with the Copyright and Patents Act 1988, that is copyright rests with the author.

The promoters and the RIBA reserve the right to exhibit or publish any design submitted to this competition and the result in any way or medium they consider fit. Illustrations of any design, either separately, or together with other designs, with or without explanatory text, may be used without cost".

No reference to Community design law, whether registered or unregistered, is made.  Presumably a pylon, and parts of a pylon, qualify as a product for legislative purposes.  Perhaps the omission of design protection was a deliberate attempt to avoid contemplating the exciting question: who is the informed user of an electricity pylon?

Human rights trump design rights - the Darfurnica case

Thanks to Mark Schweitzer at the IPKat for covering an important Dutch design infringement case.  The judgment is here and an unofficial English translation by Kennedy van der Laan (who, much to their credit, acted for the successful defendant) here.  Some further background is here and here.
"Darfurnica", left (inspired, of course, by Picasso's impassioned agonising antiwar masterpiece Guernica), is a picture by Nadia Plesner.  You may like it or not, but it is a serious enough work with a clear point to make about a worthy cause, explained somewhat on her website. 
The problem is - if you look quite hard, you can see that the child in the centre is carrying a handbag which sports Louis Vuitton's pattern the subject of their Registered Community Design RCD 000084223-0001. 

In addition to the painting itself, it seems that there have also been sales of T-shirts featuring the picture (see left, sported by the artist herself), some or all of the proceeds from which went to Darfur charities.  The image of child and bag was also incorporated into some further panitings of which it formed the dominant element. 
LV obtained a preliminary injunction against her (a very unofficial translation of which is here) largely, it seems, because of these commercial (though not-for-profit) uses of their design - although they made it clear eventually that this injunction was not intended to cover the painting itself.  Plesner, however, garnered a good deal of support for her right to artistic freedom and, of course, in support of the relief campaign for Darfur.  The injunction was appealed, and judgment was given on 4th May.
No doubt many of us instinctively favour an artist championing the poorest over a brandowner supplying the richest.  However, infringement under the Community Design Regulation is fairly clearcut.  Whilst the design formed a small part of Plesner's painting, her painting used the design in its entirety, and "use" of a design (other than for private and non-commercial purposes) is an infringement, in particular by applying the design to products and selling them.
Nonetheless, the Dutch Court (showing that judicial creativity that occasionally makes the rest of Europe gasp in admiration, alarm or just plain bafflement) held that the artist's right to freedom of expression under the European Convention on Human Rights had to be balanced against LV's property rights in their design.  In this case, the balance came down in favour of the artist, and LV's injunction was discharged.
The Dutch Court have clearly, in my opinion, got this particular case right.  Community intellectual property law is secondary legislation which is subject to the Treaties themselves, and incorporated within the treaties are the provisions of the European Convention on Human Rights, which provide both for freedom of expression and for the right to property (including intellectual property).  In this case, the Court found that the use of LV's design did not seek to implicate LV in the Darfur disaster, but was a point legitimately expressed through the medium of art, without originally having an intention to free-ride, or indeed any commercial intention.  Thus, Convention rights carve out something in the nature of a defence to the broadly-defined acts of infringement of a design (or perhaps, in the UK, freedom from the grant of remedies under s12 of the Human Rights Act.)
However, the question for commercial designers will be - how much further can the artist go?  Featuring a protected design as a small part of an original picture (without, it seems, derogatory intent) is a small matter, but abstracting a small part of the picture (including the design) and putting it onto the T-shirt was quite a jump.  If, for her next T-shirt, the artist removes the child to leave only her painting of the LV bag (which is no doubt at least as artistic as Warhol's soup cans), is that excused too?  And does the Court's reasoning apply equally if the same T-shirts are sold for profit rather than for charity?  More generally, should an initial artistic intention expressed in producing an original artwork excuse subsequent purely commercial downstream mass-production of reproductions of the image?  That seems a step too far, even in a good cause.

Hargreaves Reports - a call to action or a punt into the long grass?

Professor Ian Hargreaves' Report is now publicly available.  For background, see our earlier postings here and here.  At 123 pages, it will take us a while to digest, so here are just a couple of initial comments.
The initial impression is that there is confusion over whether the goal is to promote innovation alone, or the protection and exploitation of innovation (i.e. IP).  Whilst innovation is "Mom-and-apple-pie" aspirational stuff, turning innovation into growth by the innovator (not just free-rider growth somewhere else) requires strong IP, in my humble opinion.
Although this was trailed in advance as a generally pro-IP exercise by a government looking for ways out of an economic mess, Hargreaves actually appears to accept the (increasingly fashionable) message that IP is a burden on industry - "IP transaction costs have risen as rights users navigate an ever more densely populated landscape of increasingly subdivided rights" is one of the underlying general themes. 
What of designs?  The mood music of Chapter 7 on designs is that the system involves "unnecessary complexity" (for which the cure will, we expect, be to scrap some of the laws which protect designs at present), and that "some argue that copying in the fashion industry may actually promote innovation". 
How does that square with his rallying call in the executive summary: "Action is also called for with regard to the UK’s important and growing design sector"?  The answer lies in the nature of this "action".  What would you have expected to see down in the detail?  If you said "an evidence-based assessment", go to the head of the class - you are fully in tune with the governance of coalition Britain.  
No one would disagree that "Government should ensure that development of the IP System is driven as far as possible by objective evidence" - again,  "Mom-and-apple-pie" stuff; shouldn't all policy be based on objective evidence (rather than, say, by short-term credit crises, ideology, or the search for eye-catching initiatives with which a politician can be personally associated) if possible?  The practical problem is that "as far as possible" is often not very far at all in a complicated little corner like design rights.  It may be that the requested research will show that (a) good, and/or innovative, design matters, and that (b) protecting it also matters.  However, it is hard to believe that economic research alone will yield a result sufficiently quantitative to form the basis of an informed decision to, say, keep or scrap UK unregistered design right, or increase its term from 10 to 12 years. 
Is the "Digital Copyright Exchange" just compulsory licensing under a new name?  Is there really any scope for "Judge Judy Justice" for small IP claims?  Is the report distorted by the emphasis on digital age copyright?  Has it seriously engaged with design issues?  Or is the call for further research just kicking the ball back into the long grass?
Read it, and let us have your comments.

UNION Congress in June

UNION, the Union of European Practitioners in Intellectual Property (UEPIP to Francophones), is holding its 50th Anniversary celebration at its triennial Congress meeting over 22-26th June in Brussels.

Four reasons for going:

1. Great speakers, including Francis Gurry (WIPO DG), Margot Fröhlinger (Director Commission DG Markt), Wim Van der Eijk (Principal Director of Patent Law, EPO) and Antonio Campinos (President of OHIM) as well as a range of judges and other luminaries;
2. Very friendly meeting;
3. Nice town, featuring both a beer museum and a chocolate museum as well as the fine dining you'd expect from Europe's schmoozing capital; and last and certainly least,
4. Yours truly!

Details on the attached flyer - book now to avoid disappointment.

Bridgestone v Bull - prior design defence in China

Many of our readers have questions about the enforceability of designs in China.  We are delighted to bring you this report of a recent case on tyres, courtesy of the eminent Mr Chixue Wei of Linda Liu Group in Beijing, which was recently published in their IP Newsletter No 9. 

Bridgestone Corporation v Zhejiang Hang Ting Dun Bull Rubber Co., Ltd. and Beijing Bang Li Xin Tire Co., Ltd.

Basic Information

The patentee
(plaintiff in the first instance, appellant in the second instance, applicant in the retrial procedure): Bridgestone Corporation (hereafter referred to as Bridgestone Company)

The accused infringers

(defendant in the first instance, appellee in the second instance, respondent in the retrial procedure): Hang Ting Dun Bull Rubber Co., Ltd. of Zhejiang Province (hereafter referred to as Bull Company); Beijing Bang Li Xin Tire Co., Ltd.

Competent Courts and Case No.

The first instance: Beijing No. 2 Intermediate People’s Court of P.R.C. (2007) No.2 Intermediate Court Civil First Instance No.391

The second instance: Beijing Higher People’s Court of P.R.C. (2007) Higher Court Civil Final No.1552

The retrial: The Supreme People’s Court (2010) Civil Arraignment No.189

Type of the Case:
Infringement on the Patent for Design

Final Decision:
Bridgestone Company won the litigation

Date of Judgment:

March 1, 2011

Course of Events
Bridgestone Company enjoyed a patent right for design over their tire (hereinafter referred to as the Design). In 2006, Bridgestone Company found that a tire manufactured by Bull Company was exactly the same as the Design, and therefore started infringement litigation over the patent for design with the Beijing No. 2 Intermediate People’s Court of P.R.C.

During the litigation, Bull Company presented a prior design defense. After the hearing, the court of first instance held that the prior design defense was tenable and did not constitute an infringement on the patent for design. Therefore, the court overruled the claims put forward by Bridgestone Company.

Bridgestone Company was dissatisfied with the judgment of first instance and appealed to the Beijing Higher People’s Court of P.R.C. The Higher Court affirmed the original judgment after a hearing.

Bridgestone Company was dissatisfied with the judgment of second instance and filed an application for retrial with the Supreme People’s Court. Through the hearing, the Supreme People’s Court held that the original judgment was wrong in application of the law and retried the case.
After the hearing, the Supreme People’s Court issued a final judgment that reversed the judgments of the first and second instance and decided that the defendant in the first instance shall cease the production and sale of the infringing tire. The court also required Bull Company to destroy the model and stock of the tire and reclaim the stocks from the distributors and destroy them, and pay for damages to Bridgestone Company.

Disputed Issues
1. The method of examination and judgment of the prior design defense in the determination of an infringement of the patent for design.

2. Whether the accused infringing product falls into the protection scope of the Design.

3. Burden of the civil liability of infringement.

Judgment of the Courts
Court of first instance
(1) The defendant presented its prior design defense and provided evidence of prior design. When applying a prior design defense, only the accused infringing product needs to be compared with the prior design to decide whether they are identical or similar.

(2) Although the accused infringing product constituted a similar design to the Design, it also constituted a similar design with the prior design when comparing them as a whole.

Therefore, the prior design defense claimed by the defendant is tenable, and accordingly, it does not constitute an infringement on the patent for design.

Court of second instance
When judging whether the design is identical or similar, the decision should be based on the knowledge and cognitive ability of average consumers. Comparing the accused infringing product with the prior design, it can be found that they are similar as a whole. The difference insisted by Bridgestone Company was not a significant impact on the overall visual effects. Consequently, the accused infringing product and the prior design constituted only a similar design.

Therefore, Bridgestone Company’s grounds of appeal are untenable.

Court of retrial
(1) When judging whether the prior design defense of the accused infringer is tenable, the accused infringing product should be compared with the prior design first to confirm whether they are identical or have no substantial differences. If the accused infringing product is identical with the prior design, the prior design defense would be tenable. If not, it should be further decided whether they have substantial differences or constitute similarity. When judging the similarity, if there is only a simple comparison between the accused infringing product and the prior design, the difference between them and the effects on both of the overall visual effects from the difference may be ignored. This may lead to a wrong judgment and lead to a situation where the design of the accused infringing product, prior design and the Design all constitute similarity. Therefore, when the accused infringing product is different from the prior design, in order to draw a correct judgment conclusion on the infringement of patent for design the prior design should be used as the base, and then a separate comparison conducted among the accused infringing product, the prior design and the patent for design and to make a comprehensive judgment. During this process, attention should not only be paid to the difference and the similarity between the design of the accused infringing product, the prior design and the impact on the overall visual effects, but also the difference between the Design, the prior design and the impact on the overall visual effects. Whether the design of the accused infringing product makes use of the difference between the design patent and the prior design should also be taken into consideration when judging whether there is a substantial difference between the design of the accused infringing product and the prior design.

(2) In this case, the accused infringing product is not identical with the prior design. In terms of the difference among the accused infringing product, the Design and the prior design, the difference between the Design and the prior design brings conspicuous impact on the overall visual effects. As the accused infringing product makes use of the above difference, the above difference also constituted the difference between the accused infringing product and the prior design. Compared with the similarity between the accused infringing product and the prior design, this similarity brings a more conspicuous impact on both of their overall visual effects. From the perspective of average consumers, the accused infringing product is not identical with the prior design, and they bear no substantial similarity on the overall visual effects.

Therefore, the prior design defense was not tenable, and accordingly the accused infringing product constitutes an infringement on the patent for design.

Our Comment
Although the prior design defense was stipulated expressly for the first time after the third amendment of the Patent Law of the P.R.C, there have been precedents recognized earlier in the judicial practice. However, as there are no explicit provisions on its principle of application and method of judgment, the way of handling the cases by each court vary accordingly.
As for infringement litigation over patents for design, when the defendant presents a prior design defense, the viewpoints of the courts of first instance and second instance are that it only needs to compare the accused infringing product with the prior design, and it compares the accused infringing product and the Design only when the accused infringing product and the prior design are not identical and similar.

With respect to the above viewpoint of the court, we are of the opinion that it lacks legal basis and is not in accordance with the purpose of the legislation. Thus, as the agent of Bridgestone Company, we filed an application for retrial and the Supreme People’s Court retried this case.

 From the written judgment of the Supreme People's Court, we can see that the Supreme People's Court expressly denied the method that only compares the accused infringing product with the prior design and then decides whether the prior design defense is tenable or not when the accused infringing product is not identical with the prior design. The Supreme People's Court held that infringement should be judged according to the following steps when the accused infringer presents a prior design defense in the infringement litigation of the patent for design:

Step 1:  Compare the prior design with the accused infringing product. If they are identical, the prior design defense is tenable and accordingly the infringement is not tenable.
Step2: If they are not identical, the prior design should be used as the coordinate, and then a separate comparison conducted among the prior design, the accused infringing product and the Design. The comparison should also be based on whether the accused infringing product makes use of the difference between the Design and the prior design as well as its impact on the overall visual effects so as to decide whether the accused infringing product is similar to the prior design and the Design.
It can be seen that the reasoning of the Supreme People’s Court took into full consideration the comparison of the Design and the prior design so as to seek a balance between the benefit to the patent holder of the patent for design and that of the public. This method is in accordance with the purpose of the legislation for the design and the prior design defense. Therefore, the Supreme People's Court has made a fair judgment in this case. However, as this method requests a separate comparison among the three designs and needs a comprehensive consideration of the impacts on the visual effects brought by the differences and similarities, it has a high requirement for a judge’s ability. We expect that the local courts can apply the prior design defense correctly in future judicial practice.

Author: Wei Chixue Law Firm

Pog appeal - the A-G's Opinion

As trailed here a day or two back, Advocate-General Mengozzi has given an Opinion on the Pepsico/Grupo Promer Mon "pogs" appeal (Case C-281/10 P PepsiCo v Grupo Promer Mon Graphic).  These Opinions are usually followed by the ECJ, and often provide more detail than the eventual judgment.

This one contains both procedural and substantive points. 

Procedure

1. As we guessed some time back, the Advocate-General has taken the view that many of the grounds of appeal are really points of fact (which are not appealable to the Court of Justice) - "undeniable that the arguments adduced by PepsiCo are designed solely to call into question the findings of fact made by the General Court." (para 35).
   
   
2. The A-G considers (rightly I think) that there isn't any basis for treating appeals on design cases any differently from those on trade mark cases (paras 71-75).  Thus, the General Court has a wide freedom to examine the appeal and substitute its own views for those of OHIM.
   
   
3. On the use of samples as a substitute for the registration in comparison (a topic of disagreement between Courts and commentators), the A-G takes a pragmatic view that it was allowable in the circumstances of this case (though his logic applies to pretty much any other case too - para 83). That is not inconsistent with what the UK Courts have done in the past.

Substance

1. On the nature of the "informed user", "generally speaking, the informed user is not a ‘technician’ with special knowledge, but just a user who is a little more attentive and interested than the average consumer: in other words, a user of whose perceptions the General Court is able to form an adequate picture." (para 74).   That will be music to the ears of those judges who don't want design cases to be overburdened with expert or survey evidence.  As to his/her attitude, "...the General Court envisaged an informed user who was anything but superficial and inattentive, even if lacking the analytical acumen which, if anything, is the hallmark of an observer of patents." (para 67).
   
   
2. On the use of "imperfect recollection" in design comparison, the A-G comments that the General Court did not in fact use that analysis (despite language which was "a little infelicitous"), but that in any event the law does not exclude either direct or indirect comparisons and there are occasions where an indirect comparison may be useful or necessary as a practical matter (paras  49-50, 55).

We will keep you posted when the Court of Justice gets round to a final ruling.

Potato chips ..or crisps: a reader asks

I've been asked by a reader if I can refer him to a decision which he vaguely recalls, which concerns either a national design right or a registered Community right (he thinks) in respect of the shape of what we Brits call "potato crisps" but which are sometimes referred to as "potato chips" (generally by people who call what Brits call potato chips "French fries"). It might be an infringement case, or possibly a cancellation -- but the two absolutely certain ingredients are "design" and "potato crisp".

Offhand I can't think of one, but I wonder if any reader can help jog a couple of jaded, faded memories. Please!

Pog appeal: advance notice

This Thursday, 12 May, Advocate General Mengozzi will be giving his Opinion in Case C-281/10 P PepsiCo v Grupo Promer Mon Graphic (click here for the Board of Appeal's decision to reinstate PespiCo's design registration, here for details of the General Court's decision to re-revoke it and here for the grounds of appeal).

For the record, the Advocate General's Opinions are upheld in around 75 to 80% of cases by the final ruling of the Court of Justice of the European Union.  That Court is not, however, bound by its own decisions and may reverse them when invited subsequently to rule again on the same issue.

Auto news from Belgium

We are grateful, as always, to play Boswell to Intellectual Property's own Dr Johnson, Peter Groves, for steering us to NautaDutilh's report of their success in enforcing copyright in Belgium in respect of car spare parts.  If anyone has more details of the case, please post a comment - sounds interesting.
Another reminder of the curious state of affairs by which the EU Design Directive requires European States to provide copyright protection for designs, without harmonising such copyright protection either with that of other States or with design law.  The result is that parts which could not be protected by copyright in the UK, or by Community design right in Belgium, can nonetheless obtain copyright, for perhaps as long as 70 years after the death of the "artist" (whoever that might be in this case).
On the general theme of copyright, it surely cannot be long now before the UK Supreme Court hands down its decision in the Lucasfilm v Ainsworth Star Wars case.  Watch this space - we will keep you posted.
Finally, since we are plugging NautaDutilh, our congratulations to Professor Charles Gielen for his elevation to Officer of the Orange Order.  We don't know whether orange trousers are part of the regalia - if so, perhaps best to avoid the footie!  Amongst Charles' many services to the industry is his editorship (together with Verena von Bomhard) of the long-awaited, and now hot-off-the-press, text Concise European Trademark and Design Law - recommended for your design law bookshelf.

Sudden seminar to tell legislators what's wrong with design law

"Design protection to be
strengthened, simplified and
made affordable ..."

Being left-handed and slightly dyslexic, this blogger persists in reading the acronymn as ADPIG, but it's actually APDIG -- the Associate Parliamentary Design & Innovation Group, "a forum for open debate between Parliament and the UK’s design and innovation communities".

APDIG is holding a short-and-sweet one-hour seminar this coming Wednesday 11 May, in Committee Room 17 of the House of Commons, and Class 99 team member Jeremy is participating. The event is free and open to members of the public. Programme details and registration can be sorted out here.

Jeremy has been allocated precisely 5 (five) minutes in which to explain to the nation's legislators how design protection is supposed to work and what's wrong with it. Any guidance from Class 99 readers is of course welcome, if you email Jeremy here. with the subject line APDIG ... or is it ADPIG ...?

Online piracy - takedown MOU published

We have written here before about the tide of pirated products which is lapping at the feet of IP owners.  Much ripoff merchandise is retailed through eBay and other online suppliers, bypassing Customs controls.  We are therefore grateful to Mark Owen of Harbottles for pointing out the EU's announcement of a voluntary MOU, entered into by eBay and Amazon on the one hand and a host of branded goods and other suppliers and organisations on the other, setting up "best practices" in notice and takedown procedures which can be used by owners of trade mark and design rights.
Takedown notices can be powerful tools, but rights-owners will need to act with caution - they are required to indemnify the site provider if a takedown notice is sought, and requesting a takedown notice may constitute a "threat", as in the case of Quads 4 Kids v Colin Campbell [2006] EWHC 2482 (CD), actionable by anyone aggreived (which would include everyone in the supply chain of the alleged pirated item).  Nonetheless, bringing together brand owners and retail sites in a voluntary code is a small win in the war against piracy.

Barbie/Bratz - doll spatz - clear winners? fat catz!

OK, it may be soooo last week, but we realise that if we don't cover the Barbie/Bratz spatz sometime soon, those glammed-up dolls are liable to pout and sulk. (Although since that's how they look anyway, who'd know the difference).
It isn't the end of the case, but enough has happened that it makes an interesting tale, so we'll add our two-pennyworth now. I should add a caveat that although my sympathies are with Mattel, the Barbie people, I don't have any inside knowledge of this case.

Here's the story. The original Bratz dollz, above were designed by a Mr Carter Bryant. Mr Bryant was seemingly not the most loyal of employees. According to the Appeal Court, Bryant worked in Mattel's “Barbie Collectibles” department, where he designed fashion and hair styles for high-end Barbie dolls intended "more for accumulation than for play."

Evidently, this strange engagement sapped either sense or sensibility, because he devised, named and designed a new line of dolls ... and took his work to MGA, a competitor -despite an "All your base are belong to us" clause in his contract of employment with Mattel as follows:

"I agree to communicate to the Company as promptly and fully as practicable all inventions (as defined below) conceived or reduced to practice by me (alone or jointly by others) at any time during my employment by the Company. I hereby assign to the Company . . . all my right, title and interest in such inventions, and all my right, title and interest in any patents, copyrights, patent applications or copyright applications based thereon." 

The contract also indicated that

"the term 'inventions' includes, but is not limited to, all discoveries, improvements, processes, developments, designs, know-how, data computer programs and formulae, whether patentable or unpatentable."

That looks pretty comprehensive, doesn't it? Bryant had sewn up a deal with MGA, and started working with them on Bratz, before even leaving Mattel. Bad boy. You might be forgiven for thinking that a breach of his employment contract had occurred, and that Mattel were the wronged party.

That was back in 2000. In 2004, Mattel sued Bratz and Bryant. In 2008, they got a nice jury verdict in their favour, ordering $100M damages and, more seriously, an injunction against supplying dolls, and even the handover of the Bratz trademarks to Mattel - a grand slam.

I'd like to be able to end this tale there, with a clear close and, for Mattel, a happy ending. Alas, however, they succeeded so overwhelmingly that two years later they were overturned on appeal. The appeal court made several rulings that were bad for Barbie.

Firstly, as to the contract, they held that the language “at any time during my employment by the Company” was ambiguous - for example, it might not have covered things done after work or even in lunch-break. For in-house lawyers, this is a familiar, but really very unhelpful, analysis, for it suggests that an inventor or designer can hold back what he should have done during office hours, to cheat the company out of what he is paid to invent by moonlighting it - an idea ought not to be allowed much airtime (Readers of this blog will recall an Australian court wrestling with somewhat similar language back in the day).

Secondly, they held that "inventions" as defined above didn't unambiguously include trade marks (which, now you look at it, might be right), or "ideas" generally. It might have done, but the jury hadn't been directed to consider whether or not that was the case. Again, really not too helpful for an employer.

That led them onto the idea/expression dichotomy - no copyright in the idea of a bigheaded pouty doll, just in the expression of that idea, which had not clearly been assigned.

Mattel's case was slimmed down again (appropriately for Barbie, that sveltest of dolls) using the "thin copyright" theory - in other words, that "if there’s only a narrow range of expression, then copyright protection is “thin” and a work must be “virtually identical” to infringe. That looks very much like the view of the Swedish Court in the Maglite case we reported some time ago, and, through half-closed eyes, also resembles the EU "design freedom" filter on scope of designs.

Accordingly, the jury should have compared each generation of Bratz dolls separately with Mattel's alleged copyright work (Bryant's original designs) rather than lumping them all together. The case was referred back for re-trial, which has just taken place.

Both players changed lawyers more times than Barbie changes outfits (MGA, amazingly, got through nine firms, collecting at least one satellite lawsuit for unpaid fees along the way). MGA brought in Orricks at the appeal, and then apparently unsuccessully tried to replace them on the retrial, for unsuccessfully alleging a conspiracy under RICO, the anti-racketeering act, involving Mattel and Quinn Emanuel, their lawyers (after all, if you can't conspire with your lawyers, who can you conspire with?). Mattel successfully moved to disqualify MGA's former lead counsel Patricia Glaser, on the basis that her firm was conflicted three weeks before trial, and again, they may have been victims of their own success - for as a result, MGA brought in Jennifer Keller, a criminal defense attorney from a four-man firm, and she won the case for MGA, persuading the jury to sock Mattel for $88M in damages for alleged theft of MGA's trade secrets.

In their fascinating April article 'Bratz Attorney Portrayed Mattel as "Corporate Mega-Monster' the National Law Journal interviewed Ms Keller, and her answers (based, it seems, not only on her case presentation but also on conversations afterwards with jurors) reveal just how little to do with IP the verdict turned out to be. Here are a couple of quotes:

• "The same skills I bring to bear on a criminal case transfer 100% in the case of a civil trial. ... A criminal law background is invaluable."
  
• "We really presented both [MGA founder] Isaac Larian versus [Mattel CEO] Bob Eckert, and MGA versus Mattel, as being a contrast between the gifted entrepreneur with a dream and idea who comes to this country with nothing and built a $1 billion company, versus a typical corporate suit who could be selling Kraft cheese [he previously was CEO of Kraft Foods Inc.], dolls or hamburgers without it making a difference."
• "We showed, for example, that Mattel, once Bob Eckert arrived there in 2000, profitability was largely tied to [the fact that] he cut jobs and sent those overseas. He referred to that as a headcount reduction or consolidation. Bob Eckert closed Mattel's last remaining plant in the United States, 850 people lost their jobs, and Eckert could not remember what state it was in because it was just a headcount reduction."
• "Mattel's a giant, corporate mega-monster, and MGA's a little flexible startup, and there's a huge contrast between the two."
• "I don't know whether the recession has an effect. I suppose it might. I think it's less about the recession and more about the fact that people realize that mega-corporations can be quite heartless."

I can't fault (indeed, I applaud) Ms Keller for picking up a billion dollar case three weeks before trial and doing her job the way she knows best - but, systemically, should a judge allow an IP infringement case to be decided by putting an innovative corporation in the dock as if it were a criminal on trial for being "heartless"?

Writing in "The American Lawyer" last year, Susan Beck commented that

"The case has preoccupied three federal district court judges, involved the efforts of more than 100 lawyers (just counting those listed on the court docket), [and] generated a mind-boggling 9,000 docket entries and close to 10 million documents in discovery". 

It is suggested elsewhere on the interweb that MGA has spent over £150M and Mattel over $400M, to get a series of judgments that have all the predictability and logic of a random-number generator, have taken seven years so far, and are still an appeal or two short the full distance. On dolls. Hardly rocket science. Next time your clients mention the cost of European design litigation, point them at this case.

OHIM and EPO cooperation agreement

We are pleased to learn that the EPO and OHIM are to cooperate. The three identified areas are training and HR, IP awareness and IT systems. If anyone was at the May OHIM meeting where the MOU was concluded, please let us know what else was covered.