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CJEU rules on sale of multimedia players with add-ons to illegal streaming websites

MandoBEThere is no end in sight regarding CJEU decisions on the meaning of “communication to the public“. On 26 April 2017, the European Court of Justice (CJEU) ruled (C-527/15Filmspeler) that the sale of a multimedia player with pre-installed add-ons that contained links to illegal streaming websites constitutes a copyright infringement. At the same time, the court clarified that the exemption for acts of temporary reproduction under Article 5(1) of the InfoSoc Directive 2001/29 did not apply.

The Case

The case was referred to the CJEU by a Netherlands district court. It focuses on the question of whether the sale of the multimedia player named “filmspeler” infringes copyright or not. The player, sold by the defendant creates a connection between a TV screen and audio-visual data such as online videos using a user-friendly interface. Additionally, the defendant installed several add-ons that – after a simple click – retrieve content from streaming websites and play the content on the multimedia player. Some of the content provided by the websites had been uploaded without the right holders consent. The defendant used this feature to advertise the product and promised easy and free access to illegally uploaded works. Continue Reading

Fordham IP Conference: Patent, Pharma, IP Remedies, Trade Secrets & Brexit reports

ConferenceBEEarlier this month, Laura Whiting attended  the 25th Anniversary celebrations of the Fordham IP Conference at the Fordham Law School and reported on five key discussions for The IPKat.

Please click on the links below to read the full posts on The IPKat.

 

China: Whose voice is it? – The arbitral award is out… but the case is not concluded…

TVeditingThe Hong Kong International Arbitration Center (“HKIAC”) has recently issued its final award in the trademark litigation saga surrounding “The Voice of China” – which we first discussed here. This case is high-profile and interesting, because it involves parallel arbitral and judicial procedures (including a rare preliminary injunction) about the ownership of the rights in the “The Voice of China” TV format.

In summary, the case involves Talpa (the Dutch global licensor of the format), Canxing (the former Chinese licensee of the format, who refused a license renewal because of a price hike), Zhejiang Satellite TV (Canxing’s broadcasting partner) and Tangde (the new Chinese licensee of the format). After Canxing’s negotiations with Talpa failed, Canxing and Zhejiang Satellite TV decided to broadcast their own, arguably similar, format, which was rebranded to “中国新歌声” (“New Singing of China”), after an injunction by the Beijing IP Court (for more details see here).

The latest development in this dispute is that the HKIAC has now ruled that the Dutch media company Talpa owns the IP rights in the format, including:

  • The name rights, including “The Voice of China“, the equivalent Chinese characters “中国好声音” and its Chinese Pinyin version “Zhong Guo Hao Sheng Yin”;
  • A number of Chinese trademarks registered/used by the broadcasting platform and its affiliate companies;
  • The sound and video materials;
  • The format’s social media accounts and app; and
  • The domain name http://www.chvoice.com/.

In its award, the HKIAC rules that the format and the mark “The Voice of China” are exclusively licensed to Tangde, and that Canxing and Zhejiang Satellite TV do not have any rights in the format or trademark.

Has the dust settled? Continue Reading

Vietnam: New rules for resolving .VN disputes

Vietnam has seen a rapid surge in internet use, having one of the highest rates of increase of annual Internet users in the world. According to the Vietnam Telecommunications Authority, 52% of the population (over 47.3 million people) are Internet users.

.VN is the country-code Top Level Domain (ccTLD) for Vietnam. In terms of .VN domain name dispute mechanisms, there is no equivalent of the Uniform Domain Name Dispute Resolution Policy (UDRP).  Vietnam has a Law on Information and Communication, which has been in force since 1 January 2007 and provides for the protection of intellectual property rights (IPRs) in the field of information technology, including domain names.  However, the Law and subordinate legal documents do not lay down rules and procedures for implementing administrative decisions, for example whether and how the domain name should be transferred. As a result, in practice, such decisions by IPR enforcement authorities were very often impossible to implement.  This causes difficulties for resolving domain name disputes involving IPRs through such administrative proceedings in Vietnam.

A recent welcome development is a joint circular issued by the Ministry of Information and Communication (MIC) and the Ministry of Science and Technology (MOST).  This important document has provided for a set of clear rules and procedures for coordination between the relevant authorities in implementing administrative decisions involving changing, returning and revoking .VN domain names which are deemed to be infringing on IPRs.  The circular provides for a number of important matters: Continue Reading

3D Printing: Are you 3DP Ready?

3D items3D printing has already been around for decades and has disrupted certain industries, such as hearing aids. One likely impact is an increase in IP infringement, with Gartner predicting that this could reach $100 billion a year by 2018.

Now that a number of key patents have expired, 3D printers are becoming cheaper and offer many advantages over traditional manufacturing techniques, for example in making pills. An effective IP strategy to guard against a counterfeit object being 3D printed should start with considering multiple IP rights to protect a product.

However, when it comes to enforcement and policing there are additional challenges, including what actually constitutes infringing use. Now is the time to review your strategy and learn lessons from others’ experiences. In this article, first published in Managing Intellectual Property, Stella Wong considers how to develop a 3DP IP strategy, with a particular focus on the medical industry

Click here to read the full article

U.S. – Sovereign immunity shields university from inventorship dispute

LabWorkersBEThe U.S. Court of Appeals for the Federal Circuit has ruled that sovereign immunity prevents a researcher from pursuing his claim of co-inventorship against a state research institution that owns the patents. The case, Ali v. Carnegie Institution of Washington, No. 2016-2320, per curiam, (Fed. Cir. April 12, 2017), holds some noteworthy lessons for state-affiliated research institutions.

Dr. Andrew Z. Fire of the Carnegie Institution of Washington and Dr. Craig C. Mello of the University of Massachusetts were awarded the 2006 Nobel Prize in Medicine for their work in discovering a fundamental mechanism for controlling the flow of genetic information. Mussa Ali worked in Mello’s University of Massachusetts lab and claimed to have made a critical contribution to the inventions in 1997. He brought suit against the patent owners in federal district court, seeking to be added to the patents as a named co-inventor, as well as a share in royalties.

As a state institution, UMass benefits from sovereign immunity against suits in federal court under the Eleventh Amendment to the Constitution. The Oregon district court ruled that sovereign immunity required the dismissal of UMass from the proceeding. After the case was transferred to Washington, the D.C. district court ruled that the case could not proceed against the Carnegie Institution either, because UMass is an indispensable party under Federal Rule of Civil Procedure 19(b). In a per curiam opinion, the Federal Circuit affirmed the rulings of the two lower courts. In so doing, the appellate court rejected an argument that the Bayh-Dole Act requires state institutions to waive sovereign immunity as a condition of federal research funding.

The decision will be welcomed by state-affiliated institutions because it means that inventorship disputes among their researchers do not generally risk becoming court cases. However, a concurring opinion leaves the door open to a different result if a plaintiff seeks only an injunction, without monetary relief, in federal court.

Read more here

WIPO: Cybersquatting reaches all-time high with the introduction of new gTLDs

CybersquattingThe World Intellectual Property Organization (WIPO), the United Nations agency based in Geneva that administers the Uniform Domain Name Dispute Resolution Policy (UDRP), issued a press release last month revealing that cybersquatting cases reached an all-time high in 2016, with 3,036 cases filed (as compared with 2,754 cases filed in 2015), representing a 10% increase over the previous year.  The increase in cybersquatting activity can apparently be put down to the recent expansion of the domain name system from 22 generic Top Level Domains (gTLDs) (such as .COM, .NET and .ORG) to over 1,200 new gTLDs (such as .GURU, .EMAIL and .PARIS).

brand owners across the globe would be well advised to define a suitable strategy to protect their brands online. Continue Reading

Protecting IP in the era of 3D printing

3DPrinter3D printing has emerged as a growing force in industries as diverse as retail, automotive, and food science. As the technology takes hold in the medical device market, it brings profound changes to product manufacturing — and to the pace of innovation. Arlene Chow says the rise in availability of 3D printed devices is already making an impact in the market.

“3D technology is incredibly disruptive, and I think we’ve only scratched the surface of how it will transform the medical services industry,” Chow says. “Traditionally, the cost of manufacturing has been a major barrier to competing in the medical device market. With 3D printing, that barrier no longer exists.”

But the technology’s biggest strength — the ability to easily create and distribute CAD files that serve as blueprints for 3D-printed devices — also poses a major challenge for device makers. 3D printing opens the door for “copycat producers” by making it far cheaper and easier to replicate devices, which means manufacturers must redouble their efforts to defend patents and guard their intellectual property.

Click here to see the video interview and full summary as published on Statnews.com

Beijing IP Court celebrates 2nd anniversary amidst praise for its professionalism, expertise regarding foreign litigation and higher damages for IP infringement

Founded as one of three specialised Chinese IP courts in 2014 (see here and here), the Beijing IP Court has just completed its second and most challenging year to date. According to a recent report, throughout 2016, the Court witnessed increasing amounts of high-tech cases, cases involving foreign entities, and cases in which enormous damage claims were at stake. Continue Reading

V-log: Secondary liability & file-sharing the blame

IP Enforcement Focus2In this IP Enforcement Focus v-log, we report on a recent decision of the German Supreme Court dealing with illegal file sharing which has received a lot of attention.

The case centres on how the court views secondary liability of Internet account holders where family members or groups are involved?

Click here to view the V-log


IP Enforcement Focus is a series of written, video and audio posts which plug into your current enforcement issues. Click here to subscribe to IP Enforcement