28 Aug 28 August 2020
In this issue of zoom-in brief, clothing maker seeks declaration over David Bowie shoes; hotel chain Marriott face class action lawsuit after data breach; and claim that Star Trek infringed videogame concept is dismissed.
As If Magazine (AIM) has brought legal proceedings in New York seeking a declaration that a line of shoes featuring images of David Bowie does not infringe intellectual property rights relating to Bowie.
AIM has a platform called The Collaboratory linking artists from different disciplines to launch products featuring art, design and fashion. One of those is a collaboration with rock photographer Mick Rocks, on a limited edition line of shoes featuring images of David Bowie, said to be owned by the photographer himself, who took the photographs. These images were then modified by Mr Rock using a “ripart” style, altering colour and adding other graphic effects.
Mick Rock has photographed numerous musical artists including Debbie Harry and Snoop Dogg, and took the photograph used in Queen’s Queen II album cover, which inspired the Bohemian Rhapsody video.
A company called Jones/Tintoretto Entertainment Company(JTEC) which is said to own trademarks in ‘David Bowie’, ‘The David Bowie Archive’ and ‘Ziggy Stardust’ complained and sent a cease and desist letter.
Prior to the cease and desist letter, AIM were using Bowie’s name, Ziggy Stardust and parts of his songs in advertising the shoes, but in response to the letter they state that they have stopped doing so. AIM say they have also offered to post a disclaimer on the website making clear that the shoes have no affiliation with the estate of David Bowie or JTEC. However, JTEC were not satisfied with this and continue to demand that AIM stop marketing and selling the shoes.
AIM make clear that now neither the shoes themselves nor the website on which they are sold use the name David Bowie. They are sold as ‘Mick Rock Kicks’. So they say they are not trading off the Bowie name or infringing any trademark, nor would consumers be confused into believing shoes were endorsed by JTEC. They say in the circumstances no claim for ‘false endorsement’ can succeed, and have sought an order for a declaration to the effect that their continuing sale and marketing of the shoes does not infringe JTEC’s trademark or other intellectual property rights.
JTEC has yet to respond to the action, and it remains to be seen what the New York court will decide.
In the context of television production, these types of disputes can arise when real names (for example a celebrity’s name), or registered trade marks, are used in programme titles, the complaint being that use of the name or mark falsely suggests a licence or endorsement by the holder of the name, or trade mark owner.
Such complainants ordinarily threaten both a ‘passing off’ action (the UK’s equivalent to a false endorsement claim) and a trade mark infringement claim. Thankfully for programme-makers, such complaints can normally be fairly easily rebutted principally because the name or mark is being used descriptively and not in a ‘trade mark sense’ i.e. as an indicator of trade origin. Nevertheless, careful thought needs to be given to the use of real names and trade marks in titles, as complaints, when they do come, can be time-consuming and costly to defend.
Hotel chain Marriott is facing a class action lawsuit after a data breach in which the personal details of 300 million customers worldwide were stolen. It is believed around seven million of those were based in the UK. The personal details included names, addresses, credit card details, passport numbers and dates of birth. When Marriott investigated the breach they found that hackers had had unauthorised access to its systems since 2014.
The legal action is being brought on behalf of people living in England & Wales who made a reservation at a Marriott Starwood hotel before 10 September 2018. The lawsuit is opt-out so anyone included in that description will be included unless they choose not to be. Class actions are relatively unusual in England & Wales, but more common in the US. They are a way of bringing a single legal action where a large number of individuals have been affected by the same incident.
The UK’s data protection regulator, The Information Commissioner’s Office (ICO) has investigated the data breach and has proposed to fine Marriott £99.2 million. However, Marriott has appealed and the regulator has yet to make its final decision. This regulatory process is entirely separate to the class action lawsuit. As the ICO cannot award compensation to individuals, bringing a civil legal action is the only way for those affected personally to obtain compensation, unless a company agrees to provide it voluntarily. Given the large number of customers involved, even if a court awarded modest damages to each person, the total figure Marriott faces could be enormous. This is a warning to all data controllers (the vast majority of companies and sole traders working in broadcasting and television production) of the potential consequences of not keeping personal data secure. Time to check your privacy notices, and data protection and security protocols!
Abbas Media Law are experts in all aspects of data protection law and regulation as they apply to the production and exploitation of media content. For advice, contact firstname.lastname@example.org
The dismissal of a claim by a videogame developer that Star Trek: Discovery unlawfully infringed upon a videogame developer’s concept has been upheld by a US appeal court.
In the latest round of copyright and trademark claims involving the television series, Anas Abdin sued CBS and Netflix claiming that Star Trek: Discovery had copied the concept of his videogame which involved a tardigrade, a real life microscopic organism with the unique ability to survive in space.
Abdin submitted a version of his science fiction videogame to several online forums and websites in 2014, eventually calling it Tardigrades.
In 2017, CBS and Netflix premiered their latest installment in the Star Trek series, featuring, in three episodes, a tardigrade named “Ripper” and following the space adventures of its newest Starfleet crew.
Abdin alleged that the creators saw and copied aspects of his game, including the use of a space-travelling tardigrade and other elements, arguing that the defendants committed copyright infringement because the “Tardigrade character” in Discovery was “substantially similar” to the tardigrade in his game.
His claim was dismissed by the lower court which held that his claim failed as a matter of law because his game was not substantially similar to the show.
The appeal court affirmed the lower court’s dismissal of the claim on the grounds that Abdin failed to plausibly allege substantial similarity between protectable elements of his game and elements of the TV show.
“Abdin’s space-travelling tardigrade is an un-protectable idea because it is a generalized expression of a scientific fact—namely, the known ability of a tardigrade to survive in space,” the Court held.
“By permitting Abdin to exclusively own the idea of a space-traveling tardigrade, this Court would improperly withdraw that idea from the public domain and stifle creativity naturally flowing from the scientific fact that tardigrades can survive the vacuum of space.”
The Court further emphasised that elements of Abdin’s work were un-copyrightable stock themes from science fiction, including space travel and alien encounters.
The Court focused in part in reaching its decision on the distinction between facts and ideas, which are not copyrightable, and their expression, which may attract protection.
This distinction is one which also applies in English law, and a claim of this kind would likely have a similar outcome here to the one which it had in the US.
Abbas Media Law is a niche law firm, specialising in advice to independent production companies and broadcasters. We are true experts in our field: all lawyers and advisors have in the past worked either in-house for broadcasters and/or production companies. Accordingly, we fully understand production and the needs of our clients. We offer expert advice and representation on all programme content related matters (legal and regulatory), all aspects of business affairs, as well as complaints-handling and litigation. Visit www.abbasmedialaw.com or contact us directly at email@example.com.