Header graphic for print

LimeGreenIP News

September seminar: Improving social mobility in the IP profession

We are excited to partner with IP Inclusive to host a seminar focused on social mobility in the IP profession. On 24 September 2019, join us for a discussion with not-for-profit organisations and other businesses around how they are working to improve social mobility within IP and legal professions, and explore strategies for how we can create a more inclusive and diverse working environment.

What’s lined up?

  • Keynote from Nicholas Cheffings, Chair of PRIME
  • Series of short talks from organisations and charities tackling these issues
  • Group discussions to consider how businesses can learn from outreach campaigns and implement similar initiatives in a corporate setting
  • Drinks, bites and networking

When: Tuesday 24 September, 2019

15:30    Registration
16:00    Presentations
18:00    Networking
19:00    Finish

Where: Hogan Lovells, London

Registration: For registration and further information please contact Joshua Prietzel


IP Inclusive are focused on providing training, raising awareness and providing support to IP professionals and making IP professions more inclusive.

TMT Horizons 2019: Dynamism of TMT sector set to continue

Challengers can reach scale seemingly overnight, forcing market change at a similar speed. Established business models are upended, driving consolidation and restructuring. Regulators rush to respond, radically reshaping the environment.

These trends show no sign of slowing down.

This year’s TMT Horizons includes 22 short articles contributed by our lawyers around the globe, focusing on trends and issues our clients are facing and the fact that the intersection between the inherent dynamism of the sector and the increasing challenges to unchecked globalization will dominate the next chapter for TMT.

Click here to read TMT Horizons 2019.

When Can A Patent Challenger Appeal The PTO’s Decision To Uphold A Patent?

In 2011, Congress passed the America Invents Act (“AIA”), which established new ways to challenge the validity of an issued patent before the U.S. Patent and Trademark Office (“PTO”).  These procedures were seen by many as a cheaper alternative to litigation in court and have become popular.  Over 1,600 inter partes review (“IPR”) petitions were filed with the PTO in 2018 alone.  While these AIA procedures take place outside the U.S. court system, the PTO’s decision can be appealed to the U.S. Court of Appeals for the Federal Circuit – in certain circumstances.  In AVX Corporation v. Presidio Components, Inc., the Federal Circuit examined when a party challenging a patent at the PTO can appeal the PTO’s decision to uphold the patent.  The court found that a nonspeculative interest in using the claimed features would permit such an appeal.

As explained below, the Federal Circuit’s decision contains mixed messages for a party considering challenging a patent at the PTO.  On the one hand, a party may be unable to appeal a decision upholding the patent.  On the other hand, the court suggested that the same party may not be restrained by the AIA estoppel provisions from challenging the same patent in a later litigation.  These competing considerations should be balanced before initiating a patent challenge before the PTO.

Please read a full analysis of this decision here.

Amsterdam: Seminar ‘Protect Your Data!’ – 2 July 2019

Data forms the cornerstone of the current economy. Being in control of you data is key. Last year, the GDPR and the EU Trade Secrets Directive created the legal framework for the protection of the most important data in a company: personal data and trade secrets.

Following the recent successful edition in Dutch, our Amsterdam office will host the seminar ‘Protect Your Data!’ in English on Tuesday 2 July 2019.

Joke Bodewits and Ruud van der Velden will talk about the legislation and the opportunities it provides to companies. The focus will be on the “lessons learned” with respect to privacy, cybersecurity and trade secrets. Among the topics to be discussed is the overlap between the protection regimes and the importance to consider these in combination in order to fully utilize the possibilities for protecting and controlling your data.

This seminar is of interest to in-house (privacy) counsels, in-house patent attorneys, data protection officers, CISO’s, CIO’s, CDIO’s and IT managers.

We look forward to seeing you there!


Date and time: 2 July 2019, 03.30 pm – 07.00 pm

Venue: Hogan Lovells, Amsterdam

Registration: There is no registration fee but please RSVP by 27 June to Petra Honingh or  Sandra Buitendam

CJEU draws the (dotted) line on subject matter in figurative/position marks

Judgment of 6 June 2019 in Case C-223/18 P Deichmann v EUIPO – Munich

The Court of Justice (CJEU) upholds the General Court (GC) finding that for a figurative mark featuring elements represented using dotted lines (in essence, a position mark), these elements can be excluded from the subject-matter of the sign. The CJEU finds, in essence, that although the subject matter of a mark is defined by the representation, the best approach is to apply common sense.

General Court assessment

The GC held that classification of the mark at issue as “figurative” did not bar it from being treated as a “position mark” (see our previous post). In this sense the graphic representation of the mark (shown below) clearly identified, in solid lines, the elements intended for protection and, in dotted lines, the outline of the goods at issue, featuring that element.

So, the actual subject-matter of the mark is the cross device and protection of the shoe silhouette is not sought. Contrary to the Appellant´s claim, therefore, the mark (i.e. the cross device) had been put to genuine use for sports footwear, as shown in the samples below.

Court of Justice decision Continue Reading

German withholding taxes in “total buy-out” IP agreements

In a recently published decision, the German Federal Tax Court (Bundesfinanzhof, BFH) clarified for the first time that a remuneration for the complete transfer of rights in the context of a “total buy out” against a one-off flat-rate remuneration by a foreign rights holder can trigger a deduction obligation for taxes on the part of the domestic contracting party.

In the underlying case, a domestic media company concluded a total buy-out agreement with a freelance producer living in Australia, which was subject to German law according to the will of both parties. The producer undertook to forgo all copyright and other rights in return for a lump-sum payment. The German tax office claimed that the royalties paid were subject to German withholding taxes.

Decision

The BFH fully confirms the dismissal of the action by the local tax office, on grounds that the foreign contracting party is neither domiciled nor ordinarily resident in Germany and the flat-rate remuneration is subject to German tax law. The court accepted that no withholding taxes need to be deducted in cases of a sale (legal purchase) or economic consumption of legal rights. However, since copyrights within the meaning of § 2 UrhG are inalienable under § 29 I UrhG, a transfer of rights within the meaning of “total buy out” is not possible pursuant to German IP law. Pursuant to Section 32a UrhG, the right holder is entitled to a continuous legal claim to further remuneration, ensuring that the economic value of the rights remains with the right holder.

Comment

The decision of the BFH clarifies the question in dispute as to whether a permanent transfer of copyrights in the meaning of a total buy-out is a legal purchase. However, in this case no tax liability exists according to §50 I No. 3 EStG so the obligation to deduct German withholding taxes is triggered. The BFH agrees with the opinion of the tax authorities to this extent and denies the possibility of contractually creating a situation similar to a sale in this case. The legal situation has been unclear so far, meaning that domestic payment debtors can now examine potential deduction obligations and draw consequences. In future agreements, respective wording should be inserted and a protection pursuant to tax treaty or EC directives might be sought by the right holder.

The judgment in German, together with a detailed note, is reproduced in GRUR -Prax 2019, 258.

Qualcomm Ordered to License the SEP Keys to its Modem Chip Kingdom

In a decision following a 10-day bench trial, Judge Lucy H. Koh ruled on May 21, 2019 in favor of plaintiff U.S. Federal Trade Commission (“FTC”) that defendant Qualcomm, Inc.’s (“Qualcomm’s”) licensing practices relating to its Standard Essential Patents (“SEPs”) violated both U.S. antitrust laws and Qualcomm’s contractual obligations to license its SEPs on fair, reasonable, and non-discriminatory terms (“FRAND”). The Court’s ruling was based on findings that: Qualcomm had market power in the relevant cellular modem chip markets; Qualcomm had acted anti-competitively with respect to both its customers and its competitors in such markets; and Qualcomm’s licensing rates for its modem chip SEPs were unreasonably high.

Consequently, Judge Koh ordered Qualcomm to:

  • Renegotiate license terms with affected customers;
  • Make SEP licenses available to competitor modem-chip suppliers on FRAND terms;
  • No longer make express or de facto exclusive dealing agreements;
  • Not interfere with customer communications with governmental agencies; and
  • Submit to compliance and monitoring for a period of seven years.

Please read a full analysis of this decision from our anti-trust and IP team here.

France – Trade secrets protection optimized with new procedural measures before Courts

The FRAND patent litigation case between Conversant Wireless Licensing SARL and LG Electronics Inc. and LG Electronics France offers a first and exemplary illustration of an extensive use of the procedural arrangements provided by the French Law of July 30, 2018 regarding the protection of trade secrets.

The Paris Court of Appeal recently handed down the first decision on the merits implementing the new provisions transposing the European Union Directive.

Besides defining the trade secret and infringement sanctions, the French Law July 30, 2018 aims at efficiently protecting secrecy in the course of trial. In that respect, Article L. 153-1 of the Code of commerce now offers multiple tools to judges including, notably, the possibility to limit the disclosure of exhibits to some parts thereof or to order disclosure of a summary of the same only, and to organize “confidentiality clubs“.

In Conversant vs. LG, further to the claimant’s request to set up a worldwide royalty rate and an exhaustion argument raised by the defendant, the Paris Court was invited to review sensitive documents such as third parties’ license agreements, and therefore was given a remarkable opportunity to take various steps to preserve confidentiality.

In October 2018, the pre-trial judge had already ordered that the communication of the non-redacted documents be limited to the parties’ lawyers and himself, as a first step. The parties’ counsels then sent their written observations to discuss the documents’ parts that could potentially jeopardize trade secrets, following which the judge handed down a new Order, acknowledging the parties’ agreement on the following measures: Continue Reading

U.S. – District Court reversed: No fair use defense for Adams Morgan neighborhood photo

The many historic landmarks and neighborhoods in Washington DC are one of the draws for locating events there. In a cautionary tale for event organizers, however, the Court of Appeals of the Fourth District recently ruled that unauthorized use of a third party photograph of the Adams Morgan neighborhood did not qualify as fair use, reversing and remanding the District Court’s summary judgment order.

In connection with organizing the Northern Virginia International Film and Music Festival, Violent Hues Productions, LLC posted a cropped version of a picture of the famous neighborhood in Washington DC. The photograph had been taken by Russell Brammer, a commercial photographer who both licenses his photos as stock imagery and sells physical prints. As Brammer had not authorized this use of his work, he brought a copyright infringement action against Violent Hues.

After the District Court had granted summary judgment on the grounds that Violent Hues’s use was fair use, Brammer appealed.

The Court of Appeals analyzed each of the factors for the “ultimate test” of fair use (as outlined in Cariou v. Prince, 714 F.3d 694, 705 (2d Cir. 2013)), and concluded that there was no fair use defense applicable in this case. The court analyzed the factors as follows:

Continue Reading

Webinar, 20 June: China’s new Foreign Investment Law – IP protection & technology transfers and more…

On 15 March 2019, China passed a new Foreign Investment Law (“FIL”) that takes effect on 1 January 2020, which, when combined with a slimmed-down Negative List, and pre-market access national treatment outside of it, attempts to increase market access, prohibit forced transfers of technology, and consolidate existing rules relating to foreign direct investment (which are currently vehicle-specific), to offer a more level playing field overall for foreign investors in China.

Please join us on 20 June 2019  (Session 1 – 10:00 a.m. BST & Session 2 – 4:00 p.m. BST) for an insightful discussion on where the opportunities (and challenges) for international investors lie, and when to time your investment in light of China’s rapidly evolving regulatory environment. Our panel will discuss IP protection and technology transfers under the new FIL, as well as the following corporate and regulatory issues:

  • The current state of relations between China and the U.S., and the opportunities presented as a result of the trade conflict.
  • “Made in China 2025” – China’s strategic plan to become a dominant force in global high-tech manufacturing by 2025.
  • Shortening of the “Negative List” – a list of sectors in China that are restricted to foreign investors – and the further opening up of the financial and technology sectors, as well as tax and financial incentives aimed at attracting foreign investors.
  • A practical assessment of China’s new FIL – how it will change the nature of doing business in China, and what will happen to existing joint ventures, which operate under different governance rules.
  • Employment issues in connection with your investments in China.

For the full overview and registration, please access the invitation on HoganLovells.com here