Neighbouring rights for actors and performers materializing in Spain, infringement of the reputation of a cosmetic trade mark by an unauthorized reseller

Good morning everyone! July is almost here, the temperatures are rising and we are all looking for a few rest days by the beach, mountain, river or whatever environment that pleases you the most. Grab your cup of iced tea and get ready for the news.

AISGE reaches agreement in favour of actors, performers and dubbing actors

AISGE is the Spanish Collecting Society protecting performers and actors. AISGE and Netflix have reached an important agreement, according to which (and in accordance to the neighbouring rights recognized by law) actors, performers and dubbing actors will receive fair remuneration for Netflix’s exploitation in Spain. So far, artists have received payment for Netflix’s exploitation running from 2015 to the end of 2018.

This agreement covers all movies, TV shows, documentaries and other audiovisual works offered by Netflix Spain. Remuneration will be calculated based on the income earned by Netflix in Spain, regardless of the success (or not) that the same content has had in other countries. Regarding third countries, it will be up to the foreign collecting societies to collect these rights and then pay the corresponding actors.  

AISGE is now tackling negotiations with all other digital platforms such as HBO, Disney+, Amazon…

Josie Maran protecting the goodwill of its trade mark

Trade marks are all about building reputation and trust around the name of your brand. It also allows the brand owner to “control” who can offer the products (sometimes, a reseller might be obliged to abide by certain standards of quality and of storage of the goods) always within the boundaries of competition law.

Josie Maran is an all-natural cosmetic brand that only allows sales of its products to retail consumers, expressly prohibiting sales to customers that intend to resell the products in order to avoid “brand dilution, tarnishment, and confusion as to the origin of the products.”

According to the above, Josie Maran has filed for trade mark infringement against an Amazon reseller (Morning Beauty) for the unauthorized sale of authentic Josie Maran products. Apparently, since November 2018, Morning Beauty has been offering up products bearing the trade mark but without authorization and without a few key elements associated with the authorized sale of Josie Maran products: quality controls related to packaging, storing and shipping of the products and a certain level of customer service. Josie and Morning Beauty have been trying to settle the situation outside of court but, apparently, negotiations ceased a few months back and this is why Josie Maran has decided to bring action before the courts.

Do you think that Morning Beauty will be covered by the first sale doctrine? Are the products offered materially different as claimed by Josie (Josie based this statement on the fact that because the products, although not counterfeit, do not comply with the company’s key element, they are not original and therefore not covered by warranty)?

Amazon and Valentino team up against infringement

According to a recently filed trade mark + counterfeiting + design infringement complaint, Amazon and Valentino claim that Kaitlyn Pan Group, LLC and Hao Pan introduced a line of shoes that blatantly copies the iconic look and design of the Valentino Rockstud shoes, advertising them as “RockStud Slingback Leather Pump” making use of Rockstud Valentino trade mark without authorization and infringing both Valentino’s trade mark and design (both companies have copied 4 of the RockStud designs from Valentino). Amazon backed up Valentino’s complaint based on infringement on the platform’s third party seller conditions that “strictly prohibits” the sale of counterfeits.

On top of the trade mark and design infringement, apparently the infringers also tried to apply for the “Rock’n studs by Kaitlyn Pan” before the USPTO for use on footwear, shoes, boots and bags (the trade mark is still pending).

This is all for today! We wish you a good end of this month and we will see you next week.