The Intellectual Property High Court (IPHC) rendered a judgement on 29 March 2018, granting a permanent injunction on the sale of shelving units marketed by the defendant. The IPHC found that the shelving units had similar characteristics to shelving units marketed by the plaintiff, and thus violated the Japanese unfair competition regulation. Both parties are well-known stores that sell furniture, stationary, and other home amenities.
In the first instance, the Tokyo District Court (TDC) had also granted a permanent injunction to the plaintiff on 31 August 2017. In this litigation, the principal issues in dispute were:
- whether the design of the plaintiff’s shelving units would be sufficiently distinctive to be protected by the Unfair Competition Prevention Act (Act No. 47 of 1993, as amended); and
- whether the defendant’s products are sufficiently similar to those sold by the plaintiff, so that consumers would confuse them with the plaintiff’s products.
We were delighted and honoured to speak at last week’s lunch event of U.S. Copyright Society (CS USA). The Los Angeles Chapter of the CS USA kindly invited Salomé Cisnal de Ugarte (Brussels), Alberto Bellan (Milan) and myself to sit on a panel together with Susan Cleary, Vice President and General Counsel of the Independent Film & Television Alliance (IFTA). The panel discussed the new copyright law in Europe brought about by the Digital Single Market strategy that is currently implemented with the EU, and assessed the antitrust and competition issues arising in this context. Corey Field, former President of the U.S. Copyright Society eloquently moderated the panel with more than seventy participants being welcomed at Fox Rothschild’s fine Century City premises in Los Angeles or attending via remote web access. A lively debate emerged circulating around the underlying question “Are the new EU copyright regulations a weird kind of trade war?”
The discussion touched upon various aspects of the Digital Single Market and how it affects U.S. based corporations particularly in the media & entertainment sector. The panel also considered the new Portability Regulation (EU) 2017/1128, the current debate on the draft DSM Copyright Directive COM (2016) 593 and the draft Regulation on Transmissions & Retransmissions of TV and Radio Programs COM (2016) 594. The overall take-away was that the distribution, licensing and use of copyrighted works in Europe will undergo significant changes.
We thank all who joined us for the engaged participation and challenging queries. Special thanks go to Corey Field for his warm words and fine moderation, Jeremy S. Goldman of the L.A. Chapter of the Copyright Society of the USA for his invitation to speak at this lunch event and Fox Rothschild for a brilliantly organized venue.
From wristbands that count your steps, to skin patches that measure your sun exposure, a wide range of products are entering the wearable-technology market and raising new questions about intellectual property (IP) claims and protection. In this hoganlovells.com interview, Katie McConnell, counsel in the Hogan Lovells London office, provides an overview of the unique challenges market players face in the highly competitive field of wearable-technology. Among many other topics, she discusses the benefits of licensing other peoples’ patents; why it can be worthwhile applying for a patent, even if you don’t get it; and the importance of fashion trends.
Read the interview on HoganLovells.com here
We are delighted to have been awarded TMT Team of the Year at the Legal Business Awards 2018. The award recognises the team’s victory in the landmark Actavis v Eli Lilly Supreme Court case, which found that Actavis’ products infringed Lilly’s patents in the UK, France, Italy and Spain.
The award follows feedback gathered from an expert judging panel, comprising senior in-house counsel from a range of industries and supplements our MIP UK Impact Case of the Year award which also recognises the team’s success in this case.
Lilly’s patent concerns the safe and effective use of a cancer drug, pemetrexed, in co-therapy with vitamin B12. Actavis’ proposed products differed only in relation to the salt form of the pemetrexed. Actavis sought declarations of non-infringement in relation to the UK, French, German, Italian and Spanish patents in the UK courts.
Actavis removed the German patent from the UK litigation in 2014 after the Düsseldorf Court found that it would be infringed by Actavis. In the UK High Court, Mr Justice Arnold held that the remaining patents were not infringed and granted declarations of non-infringement to Actavis.
On appeal, the Court of Appeal refused to grant the declarations sought by Actavis on the grounds that Actavis’ proposed products would indirectly infringe Lilly’s patent. However, the Court of Appeal found that the patent would not be directly infringed.
As well as overturning the Court of Appeal’s decision on direct infringement, the Supreme Court has upheld the Court of Appeal’s decision on indirect infringement – that is Actavis’ appeal was unsuccessful.
Germany’s highest civil court signs off on the business model behind AdBlock Plus
The popular adblocking software AdBlock Plus, and the underlying business model of Eyeo GmbH, do not fall foul of German unfair competition rules. On 19 April, the German Federal Supreme Court (BGH) handed down its landmark ruling on the legality of adblocking (BGH, file number I ZR 154/16). Given that AdBlock Plus is highly popular throughout the world, the decision will have repercussions for online advertising and for publishers of online content far beyond the borders of Germany.
If you missed our previous blog posts on the adblocking battles raging in Germany since 2015, you can catch up here.
Online advertising vs adblocking
Both digital advertising and its counterpart, adblocking, have been on the rise for years. Revenue from digital advertising has been forecast to grow by some 12 percent annually, to nearly 240 billion USD in 2019, according to PWC. And the flip side of the equation: According to the 2017 PageFair Report, 11% of the global internet population is blocking ads, and those numbers are increasing. Researchers expect that even if content publishers took all available countermeasures, adblocking would still cost them 16 billion USD globally by 2020. Should they take no action, these losses could increase to as much as 78 billion USD, says Ovum, the research arm of Informa Group.
In our digitally driven economy, the business stakes are clearly high. Just as publishers and advertisers vye for the attention of internet users, adblockers meet conflicting demands to be spared from overly intrusive and annoying ad content. Today, adblocking features are available for all major browsers – either inbuilt or available as add-ons, such as Adblock Plus. By and large, users are increasingly unhappy about the ways that advertising can affect their online experience; and by activating adblocking, they take action to change that.
The German position: Free and fair competition Continue Reading
The Digital Single Market, as pushed forward with increasing speed by the European institutions, does not end with the click of a “purchase” icon. Goods ordered and bought online need to find their way to the purchaser, be it a consumer or a corporation. This is why the Commission, as part of its overall DSM strategy published a draft regulation on cross-border parcel delivery on 25 May 2016 (COM (2016) 285). The Commission’s main objectives were to
- Improve the market’s efficiency through effective regulatory oversight and increased competition, and
- Improve the price transparency to reduce unjustified tariff differences as well as the prices overall.
On 15 March 2018, we reported that the European Parliament had adopted a final version of the new regulation.
Meanwhile, the Council has also concluded its considerations. It approved the Parliament’s amendments and thereby the final text of the regulation on 18 April 2018. The respective press release, includes the following statement from Ivaylo Moskovski, Bulgarian Minister for Transport, Information Technology and Communications:
“These rules will make information about different parcel delivery options more readily available – including track and trace services, which are important for e-commerce. The adoption of these rules means that another key element of the EU’s digital single market is in place.“
The Regulation will be published in the Official Journal by the end of this month and will come into force twenty days thereafter. According to Article 13 of the new regulation, the Member States will have to adopt “effective, proportionate and dissuasive” penalties, which they should notify to the Commission within eighteen months.
For further information on the Digital Single Market and its practical impact, please visit our website www.dsmwatch.com.
China’s SPC reaffirms that OEM does not infringe on Chinese trademarks
In a recent landmark decision, the Supreme People’s Court (“SPC”) reversed the remarkable appeal decision in the Dongfeng trademark case about Original Equipment Manufacture (“OEM”). The SPC reiterates its view expressed in its November 2015 landmark ruling in the Pretul case, holding that branded products produced through OEM generally cannot infringe upon Chinese trademarks, as long as the goods are not put into commercial circulation within China, and are exported to the trademark owner abroad.
This SPC judgment furthermore cleared up confusion about the “reasonable duty of care” for OEM producers, imposed by the reversed judgement issued in December 2015 by the Jiangsu Higher People’s Court. The reversed judgment came only one month after the SPC’s ruling in Pretul, and held that the respondent committed trademark infringement because it failed to meet its reasonable duty of care in reviewing the status of the marks affixed on the OEM products ordered by the brand owner abroad.
The SPC disagrees that the OEM producer in the Dongfeng case failed to meet its reasonable duty of care, and arrives at a non-infringement ruling, reaffirming that pure OEM use of trademarks is not deemed trademark use.
Please click here to read the full article.
Ted Mlynar and Ira Schaefer from our Blockchain-Smart Contract IPMT Working Group return to the Fordham Intellectual Property, Media & Entertainment Law Journal podcast series following their first episode in November 2017.
Ted and Ira open this podcast with a brief account of Bitcoin’s background and give an overview of the current cryptocurrency landscape. They go on to discuss the following issues related to tax:
- The 2014-21 IRS notification and how the IRS views cryptocurrency
- Related implications such as tax on trading, mining and capital gains tax
- Tax strategy for reporting and blockchain’s limitations for record keeping
- IRS investigations and related customer data protection / access issues within cryptocurrency wallet companies such as Coinbase
- Government acceptance of cryptocurrecy for payment obligations such as tax payment
- Development of cryptocurrecy and the question of “forks” such as Bitcoin Cash and Etherium
- US tax reform and interpretation of IRS regulation of “like-kind” transfers for cryptocurrencies
Catch the podcast here
For more international information, please visit our Blockchain: Linked Ledgers topic center.
Since November 2014, when the first IP courts were set up in Beijing, Shanghai and Guangzhou, China has been rapidly setting up new specialised IP tribunals throughout its vast hinterland. The IP Courts and tribunals are meant to deal with China’s booming IP caseload, which reached a total of 213,480 IP cases in 2017, an increase of 46% year-on-year. The latest additions to the growing list of IP tribunals are the IP tribunals located in Changsha (in Hunan Province, southwest China) and in Xi’an (in Shaanxi Province, northwest China). China now has a total of 15 IP tribunals (see map below) and 3 IP courts. It is hoped that the establishment of these new specialised IP Tribunals will also improve the quality and professionalism of IP litigation outside of China’s main metropolises.
Note: this map only includes the IP tribunals and excludes the IP Courts.
Unlike the three IP Courts, which are fully independent, the IP Tribunals are established within the existing structure of the provincial Intermediary Courts. The judges constituting the bench of the IP Tribunals are generally picked from the ranks of Intermediary Court judges with at least 10 years of experience in IP litigation.
The IP tribunals generally have cross-regional jurisdiction in first instance IP cases, and their subject-matter jurisdiction essentially comprises:
- All first-instance civil patent, trade secret and software cases;
- All first-instance civil trademark copyright, unfair competition, technical contract cases, with claims above a certain monetary threshold;
- All first-instance administrative IP cases;
- All first-instance criminal IP cases;
- Appeals against first-instance IP judgments rendered by district courts within the territory of each Tribunal.
- All other first instance cases will be brought before the territorially competent district courts.
It is hoped that the establishment of these new specialised IP tribunals will further improve the quality of IP litigation throughout China, where IP owners (in particular foreign IP owners) are sometimes reluctant to bring claims. As the popularity of the specialised IP Courts has proven, IP owners may now feel more confident in bringing lawsuits before the specialised tribunals, which offer better knowledge of IP laws, and increased professionalism.
The European Parliament’s Rapporteur on the draft Copyright Directive (COM (2016) 593), Axel Voss, released proposed amendments to Article 11 and its corresponding recitals at the end of March. Mr Voss’s draft, for the shadow Rapporteurs on the Parliament’s Committee on Legal Affairs (JURI), introduces a number of remarkable suggested changes, which diverge significantly from the Bulgarian Presidency’s compromise proposal debated by the Council’s Working Party on Intellectual Property the same day.
The idea itself of an ancillary right for press publishers is being widely questioned following the setbacks experienced by press publishers in Spain and Germany after those countries introduced similar legislation. Those laws are generally regarded as having failed, and the economic basis for the new right has been called into question by the Commission’s own research centre (read our earlier blog on this here). However, and despite the divergent views about the path to follow (we previously wrote about a recent discussion paper of the Council Presidency considering possible solutions), Mr Voss seems committed to proceed with the creation of such a right, despite the fact that he has been quoted (by Julia Reda, also an MEP on the JURI committee) as saying in a February 2018 interview that the extra copyright for news sites was “maybe not the best idea – but I think it’s the only one before us that makes at least some progress.”
A new beneficiary on the horizon
The Rapporteur’s latest proposal would see news agencies added as beneficiaries of the ancillary right, along with press publishers (amended Article 1). Recital 31 seeks to justify this addition by stating that news agencies are a stakeholder worth supporting in the light of the threat represented by misinformation (fake news) – not at all the start point for the original proposal of the Commission, in 2016 (see Comment below). His draft also suggests that the ancillary right would reinforce the news agencies’ negotiating position vis-à-vis “the powerful platforms” active in the digital environment.
In addition to the reproduction right and the right of making available to the public (Article 2 and 3(2) of the 2001 InfoSoc (Copyright) Directive), Mr Voss’s draft would amend the Commission’s proposal to include the exclusive rental and lending right (Articles 3 and 9 of Directive 2006/115), as well as the distribution right, within the press publishers’ and news agencies’ new rights.
An inalienable right Continue Reading