Tattoo copyright, Bacardi, Havana Club, IKEA, Marrakesh Treaty, Nokia, Judge Lucy Koh, NewEgg, more animal selfies – the week in IP

Also on the blog this week:

How to enter Europe's new design awards

The maker of the NBA 2K video game is being sued for $1.1 million to licence eight tattoo designs sported by LeBron James, Kobe Bryant, Kenyon Martin, DeAndre Jordan and Eric Bledsoe in the game, according to The Hollywood Reporter.

The action was filed in a New York federal court by Solid Oak Sketches, which claims to own copyright to the tattoo designs, against Take-Two Software.

The Hollywood Reporter said the question over whether tattoo designs are copyrightable has never been fully decided by a court. Victor Whitmill sued Warner Brothers in 2011 for one of the characters of Hangover 2 getting the distinctive tattoo that Mike Tyson has on his face. The suit was settled before a ruling, however. The judge in that case had said: "Of course tattoos can be copyrighted. I don't think there is any reasonable dispute about that."

In another case, Christopher Escobedo received a $22,500 award for his lion tattoo on a UFC fighter in a dispute against videogame maker THQ.

In a demand letter to Take-Two, an attorney for Solid Oak Sketches used that ruling to calculate that the value of the eight tattoos should be $572,000. However, two of James’ tattoos were featured on the front cover the game, which Solid Oak claimed meant they are worth four times as much as the other tattoos. The company offered a perpetual licence for $1.1 million.

"As you probably know, tattoos are original works of art entitled to full protection of the copyright laws," said the letter. "Your company has been exercising my clients' exclusive rights in their copyrights without their permission, and thus your company has been engaging in ongoing acts of copyright infringement."

The UK’s Wigs and Gowns fashion law blog also analysed the case here.

In other IP in sports news, Fortune this week ran an interesting analysis of why the NFL cannot control the only broadcast of the first ever Super Bowl.

Rum maker Bacardi is seeking records under the Freedom of Information Act to explain the US government’s decision to strip it of the right to the Havana Club brand name and give it back to a Cuban state company partnered with a rival, reports Reuters.

The USPTO in January allowed Cubaexport to register the Havana Club name in the US. It and its partner, French company Pernod Ricard, hope to one day sell Havana Club in the US as a result of its improving relations with Cuba. They have the rights to the name in the rest of the world.

Bacardi left Cuba after the 1959 revolution and then bought the rights to the Havana Club mark from its pre-revolutionary owner. It has been selling Havana Club in the US since the mid-1990s. The USPTO previously recognised Bacardi’s claim to the name under a statute aiming to protect owners of Cuban companies nationalised after the revolution.

Bacardi is requesting to see all records related to the Havana Club mark held by the executive office of President Obama, he USPTO and other offices.

“We are filing this Freedom of Information Act request because the American people have the right to know the truth of how and why this unprecedented, sudden and silent action was taken by the United States government to reverse long-standing US and international public policy and law that protects against the recognition or acceptance of confiscations of foreign governments,” says Eduardo Sánchez, senior vice president and general counsel at Bacardi, in a statement. “When the highest and most powerful government agencies are not transparent about critical changes in policy, the public has the right and the responsibility to use FOIA requests and other tools at their disposal to hold the government accountable for its actions.”

He added: “Bacardi believes that vital government agencies should not be able to ignore Lanham Act obligations or disregard the general legal requirements of government agencies and courts under Section 211 and related legislations to protect expropriated properties and uphold critical provisions of the embargo.”

IKEA has lost the right to use it brand name in Indonesia, reports The Sydney Morning Herald.

A Jakarta court in 2014 granted the rights to the Ikea name to PT Ratania Khatulistiwa, which plans to sell its own furniture.

Inter IKEA System, the Swedish company’s franchise division, had registered the IKEA mark with the Indonesian director-general of IP in 2006 and 2010. Ratania argued that it had not used the mark for commercial purposes for three consecutive years.

Inter IKEA unsuccessfully filed an appeal to the Indonesian Supreme Court.

WIPO director Francis Gurry this week received Peru’s instrument of ratification to the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.

It becomes the 14^th country to ratify the treaty. Twenty countries need to ratify the treaty for it to come into effect.

Nigel Swycher, CEO of IP analytics company Aistemos, this week said Nokia’s share price falling more than 10% within hours of the company announcing a patent licence arbitration with Samsung shows that investors often have a “wild overreaction” to IP news.

He said this is not the first time stock prices have reacted in an unpredictable fashion to IP news.

“The poster child for this mispricing was when GoPro stock fell by 12% on the grant of a single Apple patent,” said Swycher. “While universally accepted, in retrospect, to be a gross over-reaction, it provided yet more evidence pointing to a simple fact: investors don’t have access to the kind of IP data they need if they are to digest news relating to intellectual property in a more measured fashion.”

Judge Lucy Koh is expected to be nominated by President Obama for the Ninth Circuit, the US’s largest federal appeals court, reports The San Jose Mercury News.

Koh has taken a prominent role presiding over Apple’s patent war with Samsung.

The Mercury News reported that her confirmation may face long odds in the Republican-controlled Senate in a presidential election year.

The Federal Circuit this week denied NewEgg fees again its dispute with Site Update. It was denied fees once before the Supreme Court’s Octane Fitness ruling. The Federal Circuit remanded and asked for reconsideration under the new precedent.

The Northern District of California again denied the fee award, deeming that it wasn’t exceptional. The Federal Circuit agreed.

The Patently-O blog had a good overview of the case. “In the appeal, the Federal Circuit noted that – this time, NewEgg was the one with an unreasonable position – demanding a ‘de novo review of the district court’s findings’ despite recent Supreme Court precedent to the contrary.   However, the Federal Circuit followed its usual practice of requiring each party to bear its own costs of the appeal.”

The IP world cannot go long without a story involving an animal and a selfie. This week’s one came from the UK, where the owner of a horse is demanding the share of a prize worth £2,000 won by a father and a son who took a selfie that the horse photobombed, reports The Guardian.

Nicola Mitchell claims David Bellis should have asked for permission for the photo taken in north Wales. Mitchell told The Guardian: “I didn’t even know that this competition was on. If I had known about it we would have entered and could have won as Betty is always sticking out her tongue.”

IP lawyers noted that the son, Jacob, owns the copyright in the image because he took it and did not require permission to take it.

Wayne Beynon, a partner and intellectual property lawyer at Cardiff and London-based Capital Law, told The Guardian: “The horse owner’s complaint doesn’t really hold up in law. The father and child were on a public footpath, so there is no issue of trespass.”

There was further news in the monkey selfie story that will never end this week as well, when a federal judge ruled that the monkey did not and could not own a copyright, and threw the case out of court. You can read a pun-laden overview by Public Knowledge here. This blog hopes this is the last of the matter, but suspects it will not be.

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