Mariela Gutierrez Olivares is a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s IP Intensive Program.

Controversy ensued when a Mexican food restaurant in the UK, �ղ���ܱ��í��, issued a ��to a similar restaurant, Sonora �ղ���ܱ��í��, for infringement of their registered mark "Taqueria." Yet is Spanish for a place where tacos are sold. Trademarking is akin to trademarking "pizzeria" or "café."

Across social media platforms, what they perceived as an act of�������� (owned by �ղ���ܱ��í�� Worldwide "TW"). A group called MexiBrit even launched which has collected over 100,000 signatures to date, hailing, "The Mexican UK community is outraged and we won't stop until we see justice. Stop the cultural appropriation!"��However, Sonora �ղ���ܱ��í�� is not the first business TW's trademark is enforced against. In 2020, TW of their mark and successfully opposed a competitor’s mark, "Taco Ria" claiming it was "visually similar and phonetically and conceptually identical" and would confuse consumers.

Conflicts surrounding��marks that many consider generic, descriptive or worse culturally appropriating (or misappropriating) are . The recent �ٲ���ܱ��í�� highlights the following issues in the global trademarks (and IP) regime:

1. The role of trademark examiners interpreting the statutes that grant trademark rights is increasingly challenging in a global economy.��In cases like the one here, trademark examiners and officers consider the average consumer's knowledge in the jurisdiction they are acting. Here, a trademark examiner would examine the understanding of the UK public when reviewing the "Taqueria" mark. Presumably, when it was granted in 2004, the mark was not considered generic or descriptive.
2. The use of generic and descriptive marks will inevitably cause harm.��Owners who invest resources to build a reputation suffer when they have to discontinue use of a mark. Inversely, non-owner users who become excluded from using a term where no other exists also suffer. Here, TW could choose to surrender its mark, but not without facing a considerable financial setback – forfeiting the investment made to build its name and re-distinguishing its business under a new name. Sonora �ղ���ܱ��í�� and others who wish to defend their use of the mark must also spend their resources and potentially face more significant losses if those actions fail.
3. Protecting traditional and cultural heritage requires adequate legal tools.��Whether "Taqueria" ought to remain a generic term available for anyone to use in their business name is a legal question. Though various have called for the , legal tools to determine how such protection is to be accomplished are lacking. Despite the moral reprehension associated with , legally-binding solutions are few and far between, left to each jurisdiction.

Trademarks indicate the source of a product or service. Where intellectual property rights (including trademarks) exist, accusations of cultural appropriation are insufficient to cancel or invalidate those rights. All things considered, more �ٲ���ܱ��í��s means more tacos and that is a great problem for the UK and the world to solve.

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Sally Yoon is an IPilogue Writer, IP Innovation Clinic Fellow, and a 3L JD Candidate at Osgoode Hall Law School.

What did your look like this year? As music streaming services grow in popularity, more people have included them as part of their daily lives. On November 29th, The Competition and Markets Authority (CMA) released its of its market study into music and music streaming. According to the report, streaming services are the primary method of music distribution for labels and artists, with 39 million active users and over 138 billion streams in the UK in 2021. Moreover, competition between music streaming services and the digitization of the market improved consumer outcomes greatly, though creators still had concerns about their earnings from streaming.

Falling subscription fees, benefits for emerging artists

Music streaming services have evolved to significantly benefit consumers in today's market. These services offer consumers access to an enormous catalogue of music, better audio quality, and new features, without the price tag. In fact, the report reveals that the price of music streaming plans dropped more than 20% between 2009 and 2021 because they did not keep up with inflation.

The music streaming market is also showing some positive results for creators, especially new artists. First, virtually anyone can share their music. Although the market is highly competitive, it has never been easier to create and record music and share it on streaming services. Secondly, deal options for creators are improving. Although creators do not necessarily need a label to share their music on streaming services, many of them are finding that they have more options in what type of deal they would prefer (for example, DIY distribution, A&L services, traditional record deals). Moreover, artists find that having an existing prominent following online helps them while negotiating a record deal. Major contracts with new artists for multi-track deals revealed more favourable terms for creators — an increase in average gross royalty rates, shorter minimum commitment periods and a reduction in the proportion of recordings owned by labels.

Average UK artist yearly streaming earnings from majors and average UK royalty rates. Source: CMA analysis of data from the majors.

Challenges call for broader policy debate, not competition intervention

Digitization has also presented some challenges. Market digitization has primarily limited competition to already popular artists — although streaming services offer a wide selection of music, consumer tastes tend to favour a small number of successful artists. Moreover, streaming allows both new and old music to reach new audiences, increasing competition as new music competes with older music for a share of streaming revenue.

Ultimately, the report concludes that these outcomes are not primarily caused by market competition and therefore, a competition intervention probably would not increase revenues for artists. Rather, the report calls for a broader policy debate, encouraging the government to consider further legislative and policy reforms for creator compensation in collaboration with DCMS Select Committee recommendations.

Labels are urged to provide more transparency to their artists about how streaming service earnings are calculated and how existing deals with streaming services will impact their current and future earnings. In addition, government and policymakers should examine options available to incentivize songwriting, such as determining a fair split between publishing and recording shares and exploring the licensing rates for music streaming. Future conversations revolving around these issues are critical, as the sustainability of the music streaming market depends on consumers and creators alike.

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Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

A dated August 5, 2022 from the United Kingdom’s High Court of Justice has the potential to expand the definition of “artistic works of craftmanship” under UK copyright law. Deputy High Court Judge Stone rejected a motion by the defendants, Liking Ltd. (“Liking”), to strike out Water Rower (UK) Ltd.’s (“WaterRower”) claim for copyright infringement in its WaterRower water resistance rowing machine on the basis that the machine is not a “work of artistic craftmanship” within the UK’s .

The Facts at Issue

As a member of the 1975 US National Rowing Team and having studied naval architecture, including wooden boat design, John Duke sought to design a wooden rowing machine in which the user has a “welcome emotional connection, as they would with a piece of furniture”. The first versions of this machine were developed between 1985 and 1987 and, since this time, there have been eight iterations of the WaterRower and it has grown to be an “iconic design” in the UK and US. Liking admitted to copying the eighth iteration of the WaterRower in creating its rival rowing machine, the TOPIOM Model 1. However, Liking argued that since the WaterRower could not be considered a “work of artistic craftmanship,” no copyright subsists in the WaterRower.

Court’s Decision

While the Court did not ultimately conclude whether the WaterRower is a “work of artistic craftmanship” under copyright law, Judge Stone ruled that the question of whether the WaterRower could be considered as such is one that requires a full trial and cannot be determined in summary judgment. This ruling was based on the leading House of Lords authority on works of artistic craftmanship, George Hensher Ltd v Restawile Upholstery (Lancs) Ltd.[1] Though Hensher provides a less than clear definition of what constitutes works of artistic craftmanship, Judge Stone considered that:

1. The artist’s intention is relevant to whether a work is artistic, and there is evidence about Mr. Duke’s intention as a craftsman; and
2. It is unclear that the WaterRower is less artistic than the examples of artistic works given by Lord Simon in Hensher, including hand-painted tiles and stained-glass windows.

As such, Judge Stone rejected Liking’s argument under Hensher that, on any view, WaterRower has no real prospect of proving their machine is artistic.

What could this mean for UK and Canadian copyright law?

If the WaterRower is found to be an artistic work of craftmanship at trial, this would indicate that the UK courts are adopting a more flexible definition of “artistic”, especially in relation to functional works that are generally considered more congruent with the patent framework.

In Canadian copyright law, works of artistic craftmanship are generally limited to those “intended to have an appeal to the aesthetic senses” (). Given the evidence of John Duke’s intention to create a wooden rowing machine that evokes emotion, the argument could be made that the aesthetic features of the WaterRower are protected under the Canadian copyright regime. However, since the WaterRower has been mass produced for the fitness industry in Canada, the Canadian would intervene and only permit the aesthetic features of the useful machine to be protected, so long as these features are distinctive. To date, neither WaterRower or Liking have applied for design protection in Canada, though other rowing machine designs�� have previously been registered in Canada.

[1] George Hensher Ltd v Restawile Upholstery (Lancs) Ltd��[1976] AC 64 (“Hensher”).

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Serena Nath is an IPilogue Writer and a 2L JD candidate at Osgoode Hall Law School.

In a recent installment in the series of intellectual property disputes in the music industry, electronic artist Four Tet, also known as Kieran Hebden, has against his independent British record label, Domino Record Label, over how much he is paid every time one of his songs is downloaded or streamed. Four Tet had ; a time where CDs were still popular and long before the invention and popularization of music streaming. In this contract, it was stipulated that for licences, he would be paid a royalty rate of but for a sale, such as the sale of a CD, he would be paid a royalty

Sales vs Licences

When Four Tet’s contract was signed in 2001, these standard licensing terms were for the music industry. For music sales, such as selling music via CDs, vinyl, and cassettes, overhead costs for record labels were much higher due to manufacturing and distribution expenses. Thus, in order to cover the overhead costs, record labels would pay their artists a lower royalty rate compared to the royalty rate for licences. For licences, it was understood that the third party licensing the music, such as for a movie, television show, or advertisement, would take on the extra costs, allowing for an artist to receive a higher royalty rate from the record label.

However, with advancements in technology for music consumption, the landscape of the music industry changed. Record labels no longer had high overhead expenses due to no longer having to manufacture and distribute CDs, vinyl or cassettes. Yet record labels continue to ��argue that music downloads and streams should be considered as sales as this is a new technology format. Artists have typically disagreed with this and insist that this type of royalty model is unfair. For example, in 2011, against Eminem’s record company, Universal Music Group for unpaid royalties, due to the producers arguing that streamed and downloaded music should be considered akin to licencing of music and not sales.

The Case at Hand

In 2020, Four Tet against Domino for unpaid royalties. Similar to the Eminem case, Four Tet argued that he should be paid a royalty rate of 50% for streams and downloads of his music, not the 18% that the record label had been paying him. Four Tet reasoned that streams and downloads of music are like licences; not sales. In response to the lawsuit, Domino removed three of Four Tet’s four albums produced with the record label, without Four Tet’s consent, from all streaming services and online stores in November, 2021, which ” Four Tet. Four Tet responded by adding a claim for breach of contract, resulting in Domino threatening to take the case to the High Court.

The case, which took place in the Intellectual Property and Enterprise Court, ultimately and Domino agreed to pay the requested royalty rate of 50% on streams and downloads as they are now considered to be licences. Domino also paid Four Tet £56,921.08 to account for the difference in income owed as a result of the difference between the royalty rates of 18% and 50% and simple interest calculated at a rate of 5% per year during the accounting period commencing July 1, 2017.

Future Impacts

The settlement may significantly impact the way the music industry values streaming and downloading and thus may impact royalty rates. This is particularly important as the music industry seems to be undergoing a reform regarding royalty payments. , a committee of UK MPs published a report advocating for a 50/50 royalty split between the record label and the artist. Similarly, the US Copyright Royalty Board has to increase streaming royalty rates to 15.1% for songwriters/publishers. ��These decisions, including Four Tet’s successful settlement, indicate that the music industry is changing and artists will start gaining fairer deals when it comes to royalties from streaming and downloading.

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Anita Gogia is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On June 8^th 2022, Deputy High Court Judge John Kimbell released his separating copyright in literary and dramatic characters. For the , a fictional character (Derek ‘Del Boy’ Trotter and others from Only Fools and Horses (“OFAH”) was recognized as an independent copyrighted work.

Judge Kimbell ruled in favour of Shazam in the case between Shazam Productions Ltd. and Only Fools The Dining Experience Ltd (among other defendants). John Sullivan is the creator and writer of OFAH, a successful and well-loved TV show. The claimant, Shazam, is a company . Sullivan’s family has that it took Sullivan decades of “personal experience, skill and hard graft to create and develop an imaginary world rich in memorable characters” warranting copyright.

Shazam brought action against the defendants to prevent their continued performance of an unlicensed interactive dining show. The where the performers used the “” of various characters from OFAH. The defendants that they were passing off OFAH characters on the basis that their show is seen as an unofficial tribute..

copyright for the scripts for each episode, the body of scripts taken as a whole which collectively create the OFAH world, the characters, the lyrics and opening theme song of OFAH, and particularly the character of Del Boy and all his specific characteristics.

Notably, in his decision, Judge Kimbell that he did not accept that “the nature of OFDE was so removed from OFAH as to make it obvious that it was not associated with OFAH”.

Copyright of scripts

Judge Kimbell concluded that each script was protected as a dramatic work and not a literary work (as copyrighted works cannot be both per UK law). Dramatic work is as a “work of action, with or without words or music, which is capable of being performed before an audience.”. He also where courts held that a screenplay is a dramatic work, making it a “” to conclude that a script is also dramatic work.

Copyright of scripts as a whole

Judge Kimbell also that the scripts taken as a whole are not literary or dramatic work. Unlike literary works, where each of the individual chapters and the final completed body are separate copyrightable works, there is no proof that Sullivan conceived the ending of the OFAH saga or intended the scripts to be regarded as a “unitary whole.” . Moreover, each script was intended to be performed, filmed, and broadcasted individually rather than ever “intended to be performed continuously one after the other”.

Character of Del Boy

Judge Kimbell concluded that the character of Del Boy the originality and identifiability conditions of the test for copyright protection under EU law as the character is original and precisely identifiable to third parties. With this conclusion, Judge Kimbell found that Del Boy is “” under literary work per the UK list of protected works.

Infringement of protected works

Judge Kimbell considered four basic legal principles listed in . He also considered the . He concluded that the The defendants claimed that their script of OFDE was fair dealing for parody or pastiche but Judge Kimbell was not satisfied to accept this defence when considering the Judge Kimbell also considered the meaning of parody per case law. , Interestingly, that it is “unusual for parodies to take comic works as a subject”. Judge Kimbell concluded that the defendants’ use of the claimant’s work does not qualify fair dealing because it .

For the passing off claims, Judge Kimbell considered the claimant’s arguments in proving . Judge Kimbell that significant goodwill was built and attached to OFAH. He further accepted that the name of the interactive show was liable to “”. Particularly, that misrepresentation could have been avoided if the disclaimer in the terms and conditions page was more prominent, and that the disclaimer in fact proved the defendants were “”. Finally, Judge Kimbell accepted that some members of the public would be

This decision provides added judicial guidance in the UK for defences to copyright infringement for purposes of parody and pastiche. Further, the decision clarifies separation of copyright protection for literary and dramatic works. This decision ��may open the flood gates for more copyright infringement claims for characters used without permission on different forms of media, hence creatives should take precautions when using characters from other works in their media productions.

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On October 12, 2021, the County Court at Oxford (the Court) released its decision in��Fairhurst v, Woodward��(), holding that the Defendant, Jon Woodard, breached the United Kingdom’s Data Protection Act 2018 (the DPA) and the European Union’s General Data Protection Regulation (the Regulations) in his use of surveillance equipment around his property. The surveillance equipment was purchased from the Amazon-owned company, Ring, and included security cameras and a doorbell with audio and video recording capabilities.

To prevent crime around his property and the shared neighbourhood private parking lot, the Defendant installed surveillance equipment that captured audio and video recordings of these areas. The equipment could be remotely accessed by the Defendant via a mobile app with footage sent directly to his mobile phone or smartwatch. The presence of the surveillance equipment and its ability to capture information beyond the Defendant’s property alarmed the Defendant’s neighbor, Mary Fairhurst (the Claimant). The equipment captured aspects of the Claimant’s property, including her side gate, garden and car parking spaces. After the parties failed to informally resolve the matter, the Claimant brought a case before the Court claiming numerous causes of action, including the Defendant’s breach of applicable privacy laws.

Under Section 2 of the DPA, the privacy of individuals is protected by the Regulations. The Court found that the matter fit within Article 4 of the Regulations, with the images and audio captured from the surveillance equipment constituting personal data; the transmission of recordings to the Defendant’s mobile devices and onwards considered the processing of personal data; and the Defendant’s involvement in the surveillance making him a data controller. Given that the Defendant was collecting data outside his property, he had to demonstrate that his data processing was necessary for achieving the purpose of crime prevention and sufficient to override the Claimant’s right to privacy under the Regulations.

Although the Court found that the limited video data collected from the doorbell struck the correct balance between the Defendant’s interest and the Claimant’s right to privacy, the Court objected to the use of a security camera that was positioned to collect data outside the Defendant’s property, including images of the Claimant’s residence. The Court also found that the audio data collected from the Ring surveillance equipment was offside the Regulation’s data minimization principle because the range at which the devices capture audio is far greater than is necessary for the purpose of crime prevention. Instead, the Court noted that the Defendant could still achieve his objective by restricting the collection of audio data or not capturing it at all.

For these reasons, the Court found that the Defendant’s use of his Ring surveillance equipment breached the DPA and the Regulations.

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Photo Credit: (

Claire Wortsman is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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In May 2021, of the Centre for Business Research at the Cambridge Judge Business School published a proposing the abolition of the UK’s £1.1 billion per year Patent Box scheme. The UK Patent Box’s so-called “costly failure” may serve as a valuable lesson for Canada.

�������첹�ٳ����ɲ���’s offers eligible corporations a lower corporate tax rate of 6%. Quebec has an that reduces the corporate tax rate from 11.5% to 2% on patent royalties and up to 75% of profits from other specified forms of IP-related income, provided that the taxpayer has carried out research and development (R&D) in Quebec and that the IP being commercialized results, in whole or in part, from R&D carried out in Quebec. Over the years, there has been that other provinces may follow suit. There have even been for the federal government to adopt a comparable policy.

A Patent Box aims to encourage the commercialization of intellectual property within a nation’s borders. In the UK, eligible profits derived from intellectual property are taxed a . Large companies, especially those in the finance and insurance sectors, are the primary beneficiaries of this policy. According to Connell, there is no evidence that the Patent Box benefited the UK economy since it became fully operational in 2017.

By reducing corporate tax on profits derived from UK innovations, as well as spending an estimated £7.3 billion annually on R&D tax credits, the UK government hoped to fuel R&D within its borders. Instead, UK business spending on R&D conducted outside of the UK has roughly doubled since the introduction of its Patent Box. Connell proposes a policy mix to address the UK’s declining trade balance in business R&D funding. Among other policies, Connell suggests abolishing the Patent Box, restricting R&D tax credits to UK expenditure, restricting R&D claims to business enterprise expenditure on R&D (BERD), and taking steps to reduce fraud and error in R&D tax credit claims.

Two UK based companies, Solexa and Cambridge Silicon Radio (CSR), were acquired by San Diego based multinational corporations, and respectively. Connell used these acquired companies to demonstrate that the scale of the Patent Box and R&D tax credit subsidies is not always reflected in companies’ R&D footprint in the UK. Despite Illumina receiving $39.6m in Patent Box receipts in 2019 and Qualcomm Technologies International Ltd (QTI, CSR’s new name) receiving over $24m in combined Patent Box subsidies and R&D tax credits that same year, neither was required to commit significant additional commercialization activities as per the Patent Box policy objectives. Although Illumina Inc’s global R&D spending increased by 126% to $623m in five years, their R&D tax credit receipts reflecting their R&D operations based in the UK remained a modest $1.5m. Qualcomm’s R&D operations based in the UK were similarly modest, as QTI reduced their employee head count from 783 to 692 between 2015 and 2019, with 67 of those laid off involved in R&D.

In Connell’s ranking of total direct and indirect tax support for R&D as a percentage of GDP by country, Canada ranks 8^th at just over 0.2% after France, Russia, the UK, South Korea, Austria, Belgium, and Italy, but ahead of the U.S., OECD, Netherlands, EU, Ireland, Japan, Czech Republic, and China. Canada and Japan appear to be the only countries with subnational tax support for BERD. Connell’s report demonstrates that the magnitude of tax support for R&D does not necessarily determine a country’s R&D footprint, yet it can be tailored properly to encourage growth.

Quebec’s IP box is the first of its kind in North America. Although Quebec has had a Patent Box since 2016, its 2020-2021 announced a shift from the Deduction for Innovative Manufacturing Corporations (DIMC) to the Incentive Deduction for the Commercialization of Innovations (IDCI). Perhaps Quebec’s newly evolved Patent Box will foster R&D within Quebec and stand in contrast to the UK’s failure. Or perhaps it will similarly fail to generate results. Either way, it will likely have important consequences for future Canadian IP taxation policies, at both the provincial and federal levels. ��

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Meena Alnajar is an��IPilogue��Writer, IP Innovation Clinic Fellow,��and a 2L JD Candidate at��Osgoode��Hall Law School.��

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Authors create works that can last generations, being passed from one person to another. While second-hand book sales allow books to reach larger audiences, they are not traditionally sustainable for authors. In the U.K., the used book market has a predicted value of around , but authors gain little from the process. They do not receive royalties on second-hand sales of their books like they would from library borrowing or direct book sales. Royalties are a payment per sale of a book, ranging from . The royalty rate is depending on production costs, retailer agreements, and discounting. To resolve the issue of diminishing royalties and support authors’ lasting works, U.K.-based corporation created a system to remunerate authors for the sale of second-hand books.

is a U.K.-based author and founder of the used bookseller Bookbarn International. He thought of , but needed a partnership to bring the idea to life. World of Books, the U.K.’s largest retailer of used books, partnered with Pryor to help fund AuthorSHARE. As of May 31, 2021, second-hand royalties for authors in the U.K. are a reality.

World of Books established a royalty fund of , with the hopes of expanding funds for the future. Through AuthorSHARE, authors are paid each time a second-hand book is bought from either World of Books or Bookbarn International websites, with . said Pryor.

Bookbarn and World of Books created a payment plan in collaboration with the Authors’ Licensing and Collecting Society (ALCS). Retailers will report royalty prices to the ALCS, who will then match the prices and pay out royalties as . As such, AuthorSHARE who register their works.

AuthorSHARE helps propagate authors’ income with new avenues for profit, which can mitigate any loss of author earnings. In 2018, the Authors Guild reported in America compared to earnings in 2009. AuthorSHARE can provide future creators supplementary income to mitigate these kinds of losses.

ALCS has not fully outlined how they will match prices or if this price matching is fair. The royalty system depends on several factors beyond the author’s control. For example, . Accordingly, royalties do not always reflect the author’s efforts and writing quality. With the biases in royalty rates themselves, AuthorSHARE’s renumeration model may not reflect the author’s work, but rather how the author’s subject matter was perceived at the time of publishing. Although limited to two retailers and this price-matching system, AuthorSHARE still sets an intriguing precedent that books can still be worth something—even after they have left the shelves.

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It Takes Two

As my discussed, the American test for copyright infringement is not markedly different from our Canadian one. A plaintiff must prove: (1) they own the copyright they seek to enforce; and, (2) infringement—that the defendant copied protected elements of the plaintiff's work. Usually in such musical infringement cases which lack direct evidence of verbatim copying (see at 481), proof of infringement involves evidence that:

• the defendant had access to the plaintiff’s work; and
• the impugned work copied a “substantial part” of the plaintiff’s work.

Together, these two lawsuits are a case study in differentiating the appearance of strong and weak music infringement claims.

Amazing v Photograph

Forget the ad hominem , trying their success with another Gaye hit against another popular artist. The thorough infringement complaint against Sheeran’s appears to establish a prima facie case, detailing considerable evidence of substantial similarity (see ). Also, its claim of access does not rest on sheer public availability, but emphasizes the wide dissemination of in the United Kingdom. Accordingly, it may be harder to establish an independent creation defense for UK residents Sheeran and co-writer Johnny McDaid.

However, the complaint is already facing criticism for being overcomplicated, in the form of from two of the eleven named-defendants, along with :

"Defying the most fundamental pleading requirement of providing short, concise and plain statements, the First Amended Complaint consists of 44 sprawling pages of prolix, repetitive, argumentative and scandalous allegations, made mostly on 'information and belief […] [i]t makes sweeping, generalized allegations — in 156 paragraphs, some of which go on for pages and contain upwards of 25 or 30 different sentences — against eleven distinct Defendants."

Trying to dismiss the claim on grounds that the pleadings fail to meet of the Federal Rules of Civil Procedure may be prudent. The songs’ choruses may be as “strikingly similar” as the claim advocates, sharing a nearly identical (albeit common) I-V-VI-IV chord progression and 64 percent of the melody’s rhythm and pitch (see [96] & [104]). Then again, the longwinded claim includes comparisons of the similar order of their verse-bridge-chorus pop structures (see [91]) and the percentage of time the respective choruses comprise ([see 93]). These comparisons are as trite as comparing two paintings on the basis that both used a canvas. “Overcomplicated” is not a far-fetched description.

Let’s Get it On v Thinking Out Loud

In contrast, the complaint that Sheeran’s substantially infringes —claiming that it copies harmonic progressions and melodic and rhythmic elements (see ()—looks unsupported.

Nearly all music contains harmony, melody, and rhythm; As important a question in infringement as whether copying occurred—which the plaintiffs claim—is, if so, what was copied and how much. On a cursory listen, it indeed sounds like Sheeran’s song has utilized a similar set of chord changes, but that is all. Without more evidence, the substantial similarity claim seems too scant for a prima facie case. As emphasized in my prior infringement pieces, chord progressions alone are as non-protectable in music as colour palettes in painting. There should either be either an overwhelming quantity of unique chordal progression copying or there must be combination of further elements like melody and rhythm to comprise substantial similarity (see at 848). Otherwise, we risk creating an absurd environment where entire genres of music cease on inception, countering a to .

Meanwhile, the evidence supporting access ([38]) is problematic for the pop music realm, since access to forty-year-old classics is as pervasive as the practice of borrowing from them. An inference drawn by combining a classic song’s prevalence with low-threshold substantial similarity would create a standard under which most pop music would be infringing. This is not to say that modern hits are free to infringe old classics. But if infringement claimants cannot prove direct copying, the similarity between the two songs should be substantial enough to leave inspiration-driven homages safe.

Is That Enough?

Though jury trials can make music infringement results unpredictable, popular speculation on the “Blurred Lines” decision suggests the jurors were swayed by visual evidence of sheet music (proving similarity) and the defendants Thicke and Pharrell’s own admission they used “Got to Give it Up” as inspiration (proving access). So despite criticism that, even with proof of copying, the finding of similarity in that case was faulty and could lead to a , a jury may respond favourably to the strong visual evidence in the “A���������Բ�” claim. Lacking in such , the “Let’s Get it On” claim appears less persuasive. Time will tell whether Sheeran walks or settles away from either.

(Merely semi-related but interesting: a third against Sheeran and Bruno Mars by “democratic presidential nominee” Christin Griskie was in 2015.)

Jordan Fine is Senior Editor of the IPilogue and Intellectual Property Journal and a JD candidate at Osgoode Hall Law School. Jordan��is enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a blog on a topic of their choice.

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In its appeal, ������ٱ�é sought to use the recognisability of its product to show that it had acquired a distinctive character. On appeal the case was referred by the UK Court to the Court of Justice of the European Union to decide three separate issues:

1. whether the trademark had acquired distinctive character following the use that had been made out of it;
2. whether the three essential features of the KitKat—one which derives from the nature of the goods themselves and two which are necessary to obtain a technical result—are precluded from registration by UK and EU law; and,
3. whether the should be interpreted as precluding the registration of shapes that are necessary to obtain a technical result.

The distinctive character of the KitKat bar could not be confirmed��merely because of its recognisability. The definition of a trademark in the EU is “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”. Additionally, the registration of a trademark cannot be rejected if “before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character”. The Trade Marks Act in the UK contains an almost identical provision. To satisfy these requirements ������ٱ�é relied on a survey in which over 90% of those surveyed identified the four-finger shape as a KitKat. The premise was that KitKat had acquired a distinctive character through its use over time. This strategy failed.

The shape of a KitKat can be reduced to three features: the rectangular slab shape, the grooves between the four fingers, and the number of grooves. The first feature was given little consideration by the Court because most chocolate bars are rectangular slabs. Both the second and third features were assessed as existing in order to obtain a technical result - separating the four rectangular slabs - and so were considered as a means to an end and not the end itself.

������ٱ�é’s strategy was peripheral rather than direct. The strategy of using the recognisability of the bar using survey evidence failed to address the problems that the court identified. ������ٱ�é failed to show that members of the public could separate the shape of the bar from the logo embossed onto it or the packaging associated with it.

Following the decision in��������ٱ�é, businesses should consider whether their products have features that result from the nature of their goods or are necessary to obtaining a technical result. Failing to successfully register a trademark can be costly. Competitors and other interested parties often bring challenges to these sorts of applications. From a policy perspective, the ruling is intended to prevent the monopolization of the features related to a shape.

The decision is not entirely dissatisfying for ������ٱ�é, who was concerned that the CJEU might confirm an written by the Advocate General of the UK High Court. In that opinion Advocate General Wathelet denied the trademark to ������ٱ�é and—further than the CJEU—required the shape of the proposed trademark to be distinguished from goods with different commercial origins.

The CJEU did agree, however, that the trademark for which the application was brought was “capable of fulfilling the function of identifying the origin of the goods by itself”. In other words, the CJEU took the 10% of respondents who saw the four-fingered shape as something other than a KitKat as a very significant group. For a 3-D product, however, the recognisability of the proposed trademark is not enough for the product to acquire a distinctive character.��In January of 2016, the case was heard in the UK High Court of Justice, Chancery Division. After an exhaustive review of the CJEU decision��as well as British case law,��������ٱ�é's application��was .

In 2014, Canadian Parliament passed which made significant amendments to our Trade-marks Act [the Act]. In particular was an amendment to Section 32 of the Act. The amendment, expected to come into force sometime in 2016,��allows a 3-D trademark to be registered where that trademark is distinctive at the filing date of the application.��The ������ٱ�é��decision will likely be persuasive in Canadian jurisprudence given the similarity between the UK and Canadian provisions.

Quin Gilbert-Walters is an IPilogue Editor and a JD Candiate at Osgoode Hall Law School. He also works as a Research Assistant at the Canadian Forum on Civil Justice.

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