Singer Ed Sheeran has prevailed in a major copyright dispute over his 2017 chart-topper “Shape of You” at the High Court of England and Wales.
In a decision handed down on Wednesday, April 6, Justice Antony Zacaroli ruled that Sheeran had “neither deliberately nor subconsciously copied” a song by grime artist Sami Chokri.
Chokri had claimed that the “Oh I” hook in Sheeran’s track was “strikingly similar” to a refrain in his own 2015 record, “Oh why?”
Following the ruling, Sheeran posted a video on YouTube, describing the “baseless” claims as “way too common”, and described such cases as damaging to the songwriting industry, as “there’s only so many notes and very few chords used in pop music”.
According to music streaming platform Spotify, “Shape of You” is one of the most-streamed songs in its history.
During the legal proceedings, Sheeran said he did not remember hearing “Oh Why” before the legal case. Sheeran composed the track alongside Snow Patrol’s John McDaid and producer Steven McCutcheon, who both also denied ever hearing “Oh Why”.
In a joint statement issued by the trio, they criticised the effect of such litigation and the “cost on creativity”, stating: “Everyone should be able to freely express themselves in music, in art and do so fearlessly. At the same time, we believe that there should be due process for legitimate and warranted copyright protection.
“However, that is not the same as having a culture where unwarranted claims are easily brought. This is not constructive or conducive to a culture of creativity.
“We are grateful that Justice Zacaroli has delivered a clear and considered judgment which supports the position we have argued from the outset. ‘Shape of You’ is original. We did not copy the defendant’s song.”
Commenting on the ruling, Simon Goodbody, partner at Bray and Krais, who represented Ed Sheeran, said: “The judgment is an emphatic vindication of the creative genius of Ed, Johnny and Steve—as they have always maintained, they created ‘Shape Of You’ together, without copying from anyone else.”
A risky strategy
Mark Kramer, copyright specialist at Potter Clarkson, had previously described such cases as an occupational hazard for a star of Ed Sheeran’s magnitude.
“Sheeran has gone on the offensive in this case and come out fighting for his integrity and reputation,” he said, adding that the singer had prevailed in his determination to pursue the case through to the High Court rather than settling the dispute earlier.
“Clearly, Chokri believed he had a strong case, unfortunately it wasn’t strong enough and he now faces a considerable legal bill.”
Isaac Murdy, Shakespeare Martineau
Taking this all the way to the High Court may appear to be a somewhat risky strategy, particularly if the court had found that Sheeran had access to Sami Switch’s song and that the hook lines are strikingly similar, he added.
Also commenting, Isaac Murdy, IP specialist at Shakespeare Martineau described such hits as tempting targets for copyright infringement cases.
“If you have a legitimate case for copyright infringement, for the right song, pursuing a claim can be a very shrewd investment of time and legal fees. However, as we’ve seen here, that investment is not without risk,” he explained.
“It’s rare for a copyright infringement case to get this far in court. Often, they are settled outside of court, as it’s usually a less expensive result for both parties. Clearly, Chokri believed he had a strong case, unfortunately it wasn’t strong enough and he now faces a considerable legal bill.”
Effect on smaller artists
This judgment, he added, further indicates that the UK IP courts aren’t going to support US-style speculative litigation.
“It will take more than a short section of ‘basic minor pentatonic pattern’ which is ‘entirely commonplace’, to establish a successful claim of copyright infringement. All music is derivative to a certain extent, and in the words of Elvis Costello ‘It’s how rock & roll works’. This ruling shows that clear similarities throughout two songs are needed to form a substantial case,” said Murdy.
However, he did caution that this ruling may embolden artists to be more brazen in ‘taking inspiration’ from each other, without fearing the consequences of copyright infringement.
“While this makes the process of creating (and publishing) music easier, in some cases, it might deprive smaller artists of income that should have gone to them,” warned Murdy.
Image: Shutterstock.com / Miguel Angel Lopez Rojas
A Russian court has allowed the free use of Hasbro’s “Peppa Pig” trademarks without legal retaliation in Russia, claiming an “entrepreneur’s” use of the marks was justified in light of the mounting economic sanctions affecting Russia.
Judge Andrei Slavinsky of the Arbitration Court of the Kirov Region noted that infringement was justified due to the “restrictive” sanctions imposed on Russia as a result of its invasion of Ukraine.
A Russian “entrepreneur’s” drawings of the “Peppa Pig” and “Daddy Pig” characters were noticed by Entertainment One UK, the creator of Peppa Pig that was later acquired by Hasbro, who sued the individual in September 2021 for trademark infringement.
According to UK newspaper The Independent, Hasbro had asked for 40,000 roubles in compensation in a complaint lodged in September. Following the plummeting value of the rouble in recent weeks, this award would be worth approximately $355.
The court claimed that sanctions from the UK had impacted the ruling, classing Entertainment One’s actions as an “abuse of right”, and concluded that the claim could be dismissed.
“The court claimed that sanctions from the UK had impacted the ruling, classing Entertainment One’s actions as an “abuse of right”, and concluded that the claim could be dismissed.”
Russian sanctions
This news emerges following a slew of economic and legislative sanctions from businesses and countries around the world in response to the Russian Government’s violent invasion of Ukraine.
Several IP Offices have already severed ties with their Russian counterparts, as well as the Eurasian Patent Organisation.
In response to these actions, the Ministry of Economic Development of Russia announced that it is considering suspending IP rights that protect certain goods and services to alleviate the economic impact of foreign sanctions
It noted that patents and trademarks could be suspended in order to facilitate the free use of technologies that were “deprived” from Russian citizens following the wave of sanctions from international businesses.
Image: Shutterstock.com / alice-photo
Mattel has prevailed in its lawsuit with Chinese vendors selling counterfeit “Thomas the Tank Engine” toys on e-commerce sites Alibaba and AliExpress, scoring a $1.45 million default judgment.
The order, issued on Tuesday, February 22, took Magistrate Judge Sarah Cave’s recommendation to grant a motion for default judgment in the case, securing the monetary award plus post-judgment interest and a permanent injunction for Mattel.
The US toymaker sued several online vendors on the Alibaba and AliExpress platforms in March 2021, accusing them of trademark infringement through their sale of counterfeit toys based on the British TV show “Thomas & Friends”.
Mattel referred to the brand as one of its “most popular and successful brands”, claiming that it has generated approximately $1 billion in retail sales for the company.
“Thomas & Friends products have become targets for unscrupulous individuals and entities who wish to capitalise on the goodwill, reputation and fame that plaintiff has amassed in its Thomas & Friends products,” Mattel said.
New York law firm Epstein Drangel identified several storefronts on the Alibaba and AliExpress platforms that sold both similar “anthropomorphic train” toys, or direct counterfeits adopting the “Thomas & Friends” branding.
“New York law firm Epstein Drangel identified several storefronts on the Alibaba and AliExpress platforms that sold both similar ’anthropomorphic train’ toys, or direct counterfeits adopting the ’Thomas & Friends’ branding.”
It sought a ruling of trademark counterfeiting, trademark infringement, copyright infringement and unfair competition.
Cave’s motion for default judgment was filed on January 31, 2021, recommending that the court grant Mattel a judgment in favour of the trademark and copyright claims, the $1.45 million reward, and injunctive relief.
’Notorious market’
This judgment follows the recent move by the US Trade Representative (USTR) to include the Alibaba storefront in its annual “notorious markets list”.
In the report, the USTR claimed that Alibaba and Chinese tech giant Tencent “facilitate substantial trademark counterfeiting”.
According to the report, brand owners had noticed a significant increase in the number of counterfeit products being sold on the storefront despite “having some of the best anti-counterfeiting processes and systems in the e-commerce industry”.
Other Chinese online marketplaces including Baidu Wangpan, DHGate, Pinduoduo, and Taobao were also featured on the list.
Image: Shutterstock.com / George Sheldon
Cameroon’s ‘Poivre de Penja’ has been registered in the EU market as the first protected geographical indication (GI) from the African Intellectual Property Organisation (OAPI) region.
In March this year, the directorate-general for Agriculture and Rural Development of the European Commission announced the official registration of the GI for the exotic peppercorn known for its unique seasoning and flavours.
A novel development
It has become the first-ever sub-Saharan GI approved in the EU, the third product from a non-EU country registered since the beginning of the year, and the first African one not originating in South Africa.
In May 2021, the EU designated a GI to South Africa’s Rooibos plant.
The announcement, contained in the Official Journal of the EU, comes at the end of a 17-month application process, during which the EU-funded African Intellectual Property Rights and Innovation Project (AfrIPI), in cooperation with OAPI, supported the Poivre de Penja Producers Association to fulfil the conditions required to gain European recognition.
Commenting on the development, Philippe Van Damme, the EU ambassador to Cameroon, said: “In our global economy that increasingly places high value on the role of IP in international trade, the Penja story is another bold illustration of the potential of African products to compete in the global market using protected GIs to certify their unique origin and production methods.”
The AfrIPI project is the EU’s first IP-related action in Africa and it facilitates intra-African trade and African and European investment, with an aim to create, protect, use, administer, and enforce IP rights across Africa in line with international best practices and in support of the African Continental Free Trade Area (AfCFTA) and the African Union’s Agenda 2063.
At the beginning of its five-year mandate in 2020, the AfrIPI provided legal and financial support in the filing of the application for this registration.
“Through the announcement of this registration by the European Commission, the EU recognises that Poivre de Penja has a specific geographical origin and as a result possesses particular qualities.”
Unique origin
Poivre de Penja has been cultivated on the volcanic slopes of the Mount Cameroon range in the Penja municipality of the Littoral Region of Cameroon since the 1950s.
Its cultivation is a principal activity of local farmers, who apply traditional methods.
Through the announcement of this registration by the European Commission, the EU recognises that Poivre de Penja has a specific geographical origin and as a result possesses particular qualities.
The registration guarantees the protection of the rights of the members of the local farming association to be exclusively entitled to use the name ‘Poivre de Penja’. This will prevent abuse of the quality image of their unique product and unhealthy competition from other producers that do not conform to the applicable EU standards.
The recognition is expected to foster the production and marketing of Poivre de Penja and boost its market value. It opens wider avenues for increased commercialisation of Poivre de Penja on the EU market with accrued benefits for local farmers and for Cameroon’s economy as a whole.
Image: Shutterstock.com / Homo Cosmicos
Coca-Cola US has formally renounced the controversial diversity and inclusion proposals unveiled by its former general counsel Bradley Gayton last year, it has been revealed.
The beverage company’s general counsel Monica Douglas confirmed the development in a letter issued to its external counsel, and later published by the American Civil Rights Project (ACR) on March 25.
In the letter Douglas confirmed that Gayton’s policies “are not now and never have been company policy”.
In January 2021 Gayton published the policies in a highly-publicised open letter addressed to “US Firms Supporting The Coca-Cola Company”.
According to the proposal, the beverage company’s external counsel was required to staff matters relating to Coca-Cola so that diverse attorneys performed at least 30% of all hours billed, with Black attorneys performing “at least half of that amount”.
Gayton announced that Coca-Cola would withhold a nonrefundable 30% of fees from law firms that failed to meet its new requirements, as he criticised the legal sector for not viewing D&I as a business imperative.
A heavy heart
Gayton told US law firms he was mandating the unprecedented move for the legal sector with “a heavy heart”.
To show compliance, these law firms were asked to submit quarterly reports of the race, ethnicity, sex, gender, and disability status of all individuals they assigned to legal matters relating to the company.
The letter stated that non-compliance for two successive quarters would impact the company’s future consideration for both new legal work and inclusion in the company’s preferred-vendor list.
Critics of Gayton’s proposals had suggested that such policies contravened Title VII of the Civil Rights Act of 1964, which holds that employers can’t treat people differently based on their race.
“Gayton told US law firms he was mandating the unprecedented move for the legal sector with ’a heavy heart’ “.
In April 2021, Gayton left as Coke’s GC and was replaced by Monica Douglas, prompting the beverage company to stall its D&I plan.
According to his agreement, Gayton received a $4 million sign-on bonus to serve as a consultant to Coca-Cola CEO James Quincey and will earn additional monthly payments totalling $8 million in 2022.
During a meeting with Coca-Cola’s global legal team that same month, Douglas said the company was “taking a pause for now” but would retain some aspects of the diversity plan.
But in the letter sent earlier this year, Douglas appeared to repudiate the earlier policy initiative, while affirming the company’s continued commitment to D&I.
According to the ACR this policy, if implemented, would have violated a plethora of anti-discrimination laws.
ACR’s executive director Dan Morenoff said in a statement posted on its site that: “It’s amazing that neither the general counsel of a large corporation like Coke, nor the large, prominent law firms the policy involved, seem to have considered its direct conflict with American civil rights laws. It’s even more amazing that so many other sophisticated, American corporations have similarly disregarded obvious legal problems…”
The Project on Fair Representation also sent a letter to Douglas last year, urging the company to rescind the policy.
Edward Blum, president of the project, said: "It is obvious to all observers that Coca-Cola's recently enacted law firm contracting policies are illegal. The company should publicly withdraw these racial quota requirements immediately.”
Image: Shutterstock.com / Tetiana Shumbasova
In an announcement made on February 18, the European Commission—which filed on behalf of the EU’s 27 members—said that EU companies were being deterred from protecting their standard-essential patents (SEP) in foreign courts.
In August 2020, Chinese courts began issuing anti-suit injunctions in SEP cases, prohibiting patent owners from going to a non-Chinese court to enforce their patents. The first anti-suit injunction was handed down by the Chinese Supreme People’s Court in a SEP royalty dispute between Huawei and Conversant.
According to the European Commission, the Chinese courts are also using the “threat of heavy fines to deter European companies from going to foreign courts”. It added that the Supreme People’s Court had decided that violation of an anti-suit injunction order can be sanctioned with an RBM1 million ($158,000) daily fine.
“This has left European high-tech companies at a significant disadvantage when fighting for their rights. Chinese manufacturers request these anti-suit injunctions to benefit from cheaper or even free access to European technology,” said the European Commission.
Chinese courts have now issued four anti-suit injunctions in total, according to the European Commission.
Valdis Dombrovskis, executive vice-president and commissioner for trade, said: ”We must protect the EU’s vibrant high-tech industry, an engine for innovation that ensures our leading role in developing future innovative technologies. EU companies have a right to seek justice on fair terms when their technology is used illegally. That is why we are launching WTO consultations today.”
“According to the European Commission, the Chinese courts are also using the ‘threat of heavy fines to deter European companies from going to foreign courts’.”
The European Commission warned that the Chinese policy is “extremely damaging to innovation and growth in Europe”.
In addition to its anti-suit injunction challenge, the European Commission has also alleged that China is keeping key information private by failing to publish final decisions which relate to the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement and by failing to share information on final judicial decisions relating to patents.
The EU has reportedly raised its SEP complaint with China on a number of occasions in an attempt to find a solution but has not had success.
As the actions are allegedly inconsistent with the TRIPS Agreement, the EU has requested consultations at the WTO.
Dispute settlement consultations are the first step in WTO dispute settlement proceedings. If they do not lead to a satisfactory solution within 60 days, the EU can request the WTO to set up a panel to rule on the matter.
Image: Shutterstock.com / crystal51
Regular CNBC contributor Nadine Terman and the hedge fund she founded have been sued by Hedgeye Risk Management for allegedly stealing its trade secrets.
Hedgeye filed the complaint against Terman and Solstein Capital in the US District Court for the Southern District of New York on February 9.
The complaint says that for more than five years, Terman and Solstein Capital subscribed to Hedgeye and paid “hundreds of thousands of dollars” to access its proprietary research, and relied on that information to steal trade secrets, “sabotage its business”, and secure a partnership with former Hedgeye director Darius Dale to “destroy” its IP and conceal its actions.
Terman allegedly “demonstrated a pattern” of exploiting her relationship with Hedgeye and its IP by using Hedgeye’s “unique jargon” on CNBC appearances, and parroted its market predictions without credit.
‘Conspiring to steal’
Hedgeye claims that Terman conspired with Dale to steal Hedgeye’s confidential information and trade secrets in order to end its dependency on Hedgeye and launch 42 Macro—a company that Hedgeye claims exists to sell research derived from the stolen secrets.
In his last week at Hedgeye, Dale allegedly “copied” trade secrets to his personal Dropbox account in a folder called 42 Macro that both Terman and Solstein Capital had access to.
“Stealing is not acceptable when conducting business in our country, especially in our regulated industry. And destroying evidence to conceal wrongdoing should not be tolerated in the US legal system.”
Michael Blum, president of Hedgeye
Hedgeye also accuses Terman of offering resources to help Dale conceal his alleged theft, sending him a message offering to “help you [Dale] ensure Hedgeye cannot access anything from the [company] laptop you are returning”.
Dale also allegedly attempted to destroy evidence of his “misconduct”, leaving only trace evidence in his personal dropbox.
Michael Blum, president of Hedgeye, said: "It's shocking how depraved, egregious and immoral the actions of these particular individuals were.
“Stealing is not acceptable when conducting business in our country, especially in our regulated industry. And destroying evidence to conceal wrongdoing should not be tolerated in the US legal system.” Hedgeye asks the court to issue an order prohibiting Terman, Solstein Capital from purchasing more Hedgeye material or assisting Dale, 42 Macro, and its alleged financier Steven Lamar from misappropriating trade secrets.
It seeks punitive damages from the defendants’ “willful, wanton, reckless and malicious conduct” and a demand for a jury trial.
Image: Shutterstock.com / Ken Wolter
DC Comics has failed to convince a UK court that Unilever’s ‘Wonder Mum’ cosmetics trademark would confuse consumers into believing it was related to the superhero Wonder Woman.
In a judgment handed down by the England and Wales High Court of Justice on March 3, Justice Michael Green upheld a prior UK Intellectual property office (IPO) ruling rejecting DC’s opposition to the marks.
The IPO’s earlier decision, handed down in June 2021, rejected DC’s argument on the grounds that it had not established sufficient reputation in the UK of the ‘Wonder Woman’ mark to back up its passing off claim.
DC’s counsel appealed this decision to the High Court, requesting that the court reconsider this ruling.
But Justice Green, presiding, said: “While I understand the commercial imperatives of seeking to overturn those findings, it does not remove the underlying basis for the decision that there is no likelihood of confusion.
“Despite pointing out certain respects in which DC's evidence was lacking, DC never sought to put in any more evidence.”
DC’s arguments
To start, DC claimed that there was a conceptual similarity between the two marks, claiming that the IPO had wrongly held that the marks were both “similar and dissimilar at the same time” in its analysis.
As evidence, DC counsel cited an excerpt from the IPO judgment which claimed that “there is more that is different about the respective concepts of the marks than is the same”.
However, Justice Green said that DC’s counsel had “overinterpreted” the wording in order to “eke out a point of law when non really exists”. Green also claimed that this wording did not affect the IPO’s later finding on likelihood of confusion.
DC also claimed that the release of the high-profile “Wonder Woman” film in 2017, which grossed approximately £19.5 million ($26 million) in the UK, was grounds enough to prove the reputation of the trademark in the UK.
“While I understand the commercial imperatives of seeking to overturn those findings, it does not remove the underlying basis for the decision that there is no likelihood of confusion.”
Justice Michael Green
Addressing this argument, Justice Green claimed that IPO judge Judi Pike had rightfully found no reputation in relation to class 9 goods and class 41 services.
Green said: “Ms Pike was not deciding that the ‘Wonder Woman’ film was not a success or that Wonder Woman the fictional character is not well-known. She was deciding whether the trademark ‘Wonder Woman’ had a relevant and qualifying reputation in the UK/EU at the relevant date amongst a significant part of the relevant public in respect of the registered classes of goods and services ie, 9, 16 and 41.
“She found that the evidence was insufficient to establish this and that was, in my view, a conclusion open to her.”
Justice Green rejected all of DC’s grounds and dismissed the appeal.
Case background
Unilever applied to register the trademark ‘Wonder Mum’ under class 3 of the Nice Agreement (which covers soaps and cosmetics) in December 2019.
In July 2020, DC filed a notice of opposition on the grounds that DC relied on its EU trademark for ‘Wonder Woman’ which had been registered under classes 3, 9, 16 and 41. To support its argument, it submitted witness statements and other evidence to prove the marks’ reputation and goodwill in the UK.
Despite the IPO highlighting that “certain respects” of DC’s evidence was lacking, DC did not attempt to bring forth any further evidence to prove its goodwill and reputation.
Image: Shutterstock.com / Aisyaqilumaranas
Artist Mason Rothschild is attempting to secure the dismissal of a trademark infringement suit brought against him by Hermès over his sale of non-fungible tokens (NFTs) of the fashion brand’s iconic Birkin bag.
In January (2022), the French luxury brand filed suit at the US District Court for the Eastern District of New York, contending that Rothschild’s ‘MetaBirkins’ NFTs rip off Hermès’ Birkin bag trademark by adding the generic prefix “meta”.
According to Hermès’ suit, Rothschild is “seeking to get rich quick” by appropriating the brand ‘MetaBirkins’, while attempting to make his fortune by swapping out Hermès’ “real life” rights for “virtual rights”.
Last week, on Wednesday, February 9, Rothschild filed a motion to dismiss the complaint, claiming that the First Amendment “guarantees his right to respond in the marketplace of ideas to the inescapable corporate brand messages by which we are bombarded every day, virtually everywhere we look”.
California-based Rothschild said that each of the 100 works in the ‘MetaBirkins’ series is a “unique, fanciful interpretation of a Birkin bag” and each bag is depicted as fur-covered.
“This aspect of Rothschild’s ‘MetaBirkins’ art comments on the animal cruelty inherent in Hermès’ manufacture of its ultra-expensive leather handbags,” said the memorandum in support of the motion to dismiss.
It added: “These images, and the NFTs that authenticate them, are not handbags; they carry nothing but meaning. Hermès asks this court to suppress Rothschild’s art and to restrain his protected speech in the service of protecting Hermès’ commercial interest in its trademarks.”
Rothschild partly relies on the landmark case of Rogers v Grimaldi, which spawned the Rogers test. In the Rogers case, the US Court of Appeals for the Second Circuit had rejected a claim by actress and dancer Ginger Rogers that the use of her name in the title of the motion picture “Ginger and Fred” infringed her rights in her name.
“According to Hermès’ suit, Rothschild is ’seeking to get rich quick’ by appropriating the brand ‘MetaBirkins’, while attempting to make his fortune by swapping out Hermès’ ’real life’ rights for ’virtual rights’.”
The test establishes that the Lanham Act should not be applied unless the use of the trademark has no artistic relevance to the underlying work or, where there is artistic relevance, it explicitly misleads as to the source or content of the work.
The memorandum claimed that, in satisfying the first prong of the Rogers test (artistic relevance), there “can be no doubt that Rothschild’s depictions of Birkin bags in his artwork, and the use of the ‘MetaBirkins’ name to explain what he has depicted, easily exceed this low threshold of artistic relevance”.
Rothschild goes on to argue that the use is not explicitly misleading.
“Any inference a consumer might draw about the relationship between the ‘MetaBirkins’ artworks and Hermès is not due to anything that is “explicitly misleading” in Rothschild’s uses of the term ‘MetaBirkins’, and, as a consequence, Rothschild’s First Amendment speech rights must take precedence over Hermès’ trademark complaints,” said the memorandum.
Rothschild further argued that, even if Rogers doesn’t apply, the US Supreme Court’s decision in Dastar Corp v Twentieth Century Fox Film Corp would be “fatal” to Hermès’ claims.
The memorandum argued that Hermès “fundamental complaint”—that consumers will believe the ‘MetaBirkins’ artworks are sponsored by or affiliated with Hermès—is blocked by the Dastar ruling, which “unambiguously holds that only misrepresentations of the origin of physical goods are actionable under the Lanham Act”.
On Hermès other claims, including trademark dilution and cybersquatting, Rothschild alleged that they all focus on the “same speech that is protected under Rogers, which rejects the underlying premise of each claim that artistically relevant depictions of trademarks can be wrongful in the absence of explicit falsity”.
Image: Shutterstock.com / DreamerAchieverNoraTarvus
