News abounds concerning the “cease and desist “letter sent by Katy Perry’s New York solicitors to the owner of a 3D printing company which has made and sold 3D versions of the ‘left shark’ which fumbled its dance moves and earned the love of YouTube and social media users all over the world. There are so many tangled legal IP issues in this situation that it is difficult to know where to start and we will certainly watch with interest the progression of the case.
The letter appears to allege infringement of Katy Perry’s “intellectual property” but this term is not then defined – are they talking about design right? Registered Design? Copyright infringement – in the suit? The dance moves? The video?? Passing off – in Katy’s reputation??? In the shark suit?????
Not only is the issue of ‘particularising their claim’ at issue, but so too it would appear, is the issue of ‘ownership’. IP (of what ever sort) is owned by the person who creates it unless they are an employee acting in the course of their employment or it is assigned in writing for valuable consideration. If we were acting for the printer, we would certainly ask for proof of ownership of the ‘IP’ before the claim can proceed. We wonder whether Ms Perry has obtained assignments from the different people involved in the creation of the shark (assuming that is often the case in the entertainment industry, most if the creators were freelancers) or whether her lawyers might seek to rely on the ‘implied licence’ argument, given that she has presumably paid the for shark’s creation.
This doesn’t get around the problem that only an exclusive licensee can assume the role of Claimant in an infringement action – and in an implied licence situation, rarely does the court imply exclusivity.
On top of all this is the issue of damage – what damage has Katy Perry suffered as a result of the sharks’ manufacture and sale? Was she intending to launch a merchandising range? She certainly hasn’t done so to date and so the loss of sales to a third party cannot be pertinent. Has she suffered damage to her reputation? It would appear that this shark has captured the hearts of fans and non-fans alike and has in fact promoted record sales. The only identifiable damage we can see is that a third party is trading off her reputation in order to boost his own sales.
There is clearly also an argument in respect of ‘deliberate copying’ but without the particularisation of which IP rights have been copied, owned by whom and with what damage, the claim is shaky (or sharky) to say the least.
Apparently though, notwithstanding the lack of clarity, the printer involved has stopped producing the models and so the letter has clearly had the desired effect. The UK courts look very unfavourably on claims which do not give the defendant adequate detail as the infringement being complained of and we would be very wary of sending similar letters in the UK where the actual infringement is not set out in detail. In the UK we run the risk of counter-actions in respect of ‘unjustified threats’ but this only applies to registered IP rights (Trade marks, patents and registered designs) and given that this letter does not specify which IP right is being relied on, there is perhaps a loophole which has just been cleverly exploited. Maybe the US attorneys knew what they were doing in the first place….