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Imitation is not always flattering.
The famous quote from Oscar Wilde, "Imitation is the sincerest form of flattery" has long been bandied about, mainly as an excuse for blatant copying. However, in the world of commerce and intellectual property, such 'flattery' can get you in serious trouble.
For instance, Arthur Conan Doyle's estate was not overly flattered when Netflix released the film Enola Holmes. In fact, they issued legal proceedings (in the U.S.) against, amongst others, Netflix and the producers of the film in 2020. Essentially they sued for copyright infringement in relation to the film's depiction of Sherlock Holmes as well as trade mark infringement relating to the use of the HOLMES name in the film's title. One interesting line of defence put forward by Netflix's legal team was that while copyright law does protect characters, it does not protect generic concepts such as warmth, empathy and kindness towards women exhibited by Sherlock in the film as "nobody can own such generic characteristics". Unfortunately, as the case was settled for an undisclosed sum, the courts were not given the opportunity to consider whether copyright can protect the development of feelings in fictional characters.
In a surprising twist of events, a Spanish cycling company, owners of the EU Trade Mark MASSI, were less than flattered when the iconic Argentine footballer, Lionel Messi, sought to register a MESSI logo for similar goods (clothing, headwear, footgear) before the EUIPO. Succeeding in the initial opposition, the matter was fought out for nine years all the way up to the Court of Justice of the European Union (CJEU) which finally held in 2020 that there was no likelihood of confusion between the word mark MASSI and the MESSI logo. The case turned significantly on the reputation of Messi (the reputation of a famous applicant can influence the public's perception of a Trade Mark). This decision has given comfort to famous personalities looking to protect their names in good faith.
The UK designer Karen Millen was distinctly unflattered when she discovered that Dunnes Stores, the largest supermarket chain in Ireland, were copying her fashion designs for certain garments including a shirt and a jumper, which they offered for sale under their SAVIDA brand. In this case, the fashion house unfortunately did not own registered rights in the designs however were able to enforce their unregistered Community Design rights against the Irish retailer. After seven years of litigation, the Supreme Court of Ireland allowed Karen Millen Fashions Limited to prevail in a decision which has turned out to be particularly favourable to the fashion industry and their ability to protect their design rights.
One of the most famous disputes is the on-going series of "smartphone wars" between Apple Inc. and Samsung Electronics over patents relating to the graphical user interface of their android phones and tablet computers. Apple, the creator of the iPhone (with design patents dating back to 2007) were certainly not flattered when they discovered that Samsung's androids were using icons similar to their own and in 2011, sued for patent infringement, amongst other IP infringement claims. By 2012, there were 50 lawsuits around the globe between the two tech giants. Some of these disputes are still on-going today with both parties suing and counter-suing each other in litigation which has run into the billions.
These stories should serve as a cautionary tale to flatterers (copycats). I might also add, Wilde's actual quote is, in fact, "Imitation is the sincerest form of flattery that mediocrity can pay to greatness".
If you have any questions on the above, or any other intellectual property queries, please feel free to contact us.
This article first appeared in the CorporateLiveWire Handbook in August 2021.
/ By Sumi Nadarajah
/ 15th September 2021
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