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LimeGreenIP News

U.S. Music Modernization Act: Copyright law changes its tune

Over the years, tastes have shifted from bands like the Beatles and Led Zeppelin to more electronically-produced sounds. But no matter your opinion of Justin Bieber’s or Lady Gaga’s artistic chops, there’s no doubt music – and the industry that supports it – has evolved. And, as music changes, so must the laws and regulations that govern it.

In October 2018, the Music Modernization Act (“MMA”) was signed into law in the U.S., implementing a historic victory for the music business and bringing about substantial reform to existing copyright laws. Although typically on opposite sides of the fence, songwriters, and publishers came together with digital service providers in support of the MMA. It’s pretty clear to see why – the MMA brings great benefits to both those who create the music and those who share it with the world.

The MMA revamps the U.S. Copyright Act, bringing it into the 21st Century by making it account for the modern era of music production and distribution. The MMA’s bigger accomplishments include the establishment of a Mechanical Licensing Collective, which must begin operation by January 1, 2021 and will establish a singular database of songs and song ownership information, and an overhaul of the treatment of pre-1972 sound recordings. Let’s take a look at these two major accomplishments. Continue Reading

Steady growth for domain names in 2018

At the end of 2018, Verisign, the authoritative Registry for all .COM, .NET, .NAME, .CC, .TV, .EDU, .GOV and .JOBS domain names, published its third quarter report for 2018.

According to the report, at the end of September there were approximately 342.4 million domain name registrations across all Top Level Domains (TLDs), which represented an increase of approximately 11.7 million, or 3.5%, year over year. For the same period, the number of country code Top Level Domains (ccTLDs) registered was approximately 149.3 million, an increase of approximately 4.6 million, or 3.2%, year over year. Finally, for the same period, the total number of new generic Top Level Domain (gTLD) registrations was approximately 23.4 million, an increase of approximately 2.3 million, or 10.9%, year over year.

New .COM and .NET domain name registrations totaled approximately 9.5 million at the end of the third quarter of 2018, compared to 8.9 million domain name registrations at the end of the third quarter of 2017.

The Top 10 largest TLDs remained generally unchanged year over year, with the exception of .NL (Netherlands) and .INFO, which swapped ninth and tenth places.

As of 30 September 2018, the largest TLDs were:

.COM   137.6 million

.CN (China) 22.7 million

.TK (Tokelau)   21.5 million

.DE (Germany) 16.2 million

.NET 14.1 million

.UK (United Kingdom) 11.9 million

.ORG 10.3 million

.RU (Russia)   5.9 million

.NL (Netherlands)   5.8 million

.INFO 5.0 million

The top 10 largest ccTLDs also remained generally the same year over year with the only change being .FR (France) and .AU (Australia) swapping ninth and tenth places.

The top 10 ccTLDs, as of 30 September 2018, were: Continue Reading

Webinar recording: Implementing the EU Trade Marks Directive

On 25 January, our European team held two webinar sessions focusing on the implementation of the EU Trade Marks Directive and its impact across various Member States. If you were unable to join, the recordings are now available via registration here and here (same content but different speakers)

Background
On 14 January 2019, EU Member States were required to implement the Directive into national law. The Directive aims to harmonise the conditions for obtaining and continuing to hold a registered trade mark so that they are, in the main, identical across Member States.

Our focus
In our webinar we explore how some of the EU Member States are handling the implementation of the Directive: what the most substantive changes are in each Member State, where brand owners might face challenges and what new opportunities exist for businesses protecting and enforcing their brands across the EU. We also address how to best deal with the new procedural rules for cancellation proceedings before Trade Mark Offices that will be set in various member states.

Updates are heard from the following jurisdictions:

  • Benelux
  • France
  • Germany
  • Italy
  • Poland
  • Spain

With the UK expected to leave the EU on 29 March 2019, our London IP team will present on the UK developments in a separate webinar. More information to follow in the coming months

Blockchain technology in life sciences will enable more efficient and accurate health care delivery

Blockchain—the tamper-proof electronic ledger network technology—first made headlines with the rise of cryptocurrencies like Bitcoin. Independent of that boom-and-bust cycle, the life sciences industry is now exploring ways to tap into the potential of blockchain’s underlying technology.

Blockchain adoption has the potential to create a more broadly integrated ecosystem, which would allow players across disparate areas of the health care industry to synchronize vast quantities of data, and in the process improve the bottom line for pharmaceutical development, create more reliable record keeping, and optimize health care delivery. But widespread adoption of the technology will depend on the willingness of both regulators and market players to navigate issues around standardized data practices, and to accept radical new levels of transparency.

In this video interview, IP Partner Ted Mlynar discusses some of the opportunities and unique challenges of blockchain — and how it may fundamentally change the way the entire industry does business.

The video and interview text are available here

EURid issues no-deal Brexit plan for .EU domain names

On 24 January 2019, EURid, the .EU Registry, issued an update to its Brexit notice, setting out a no-deal plan for .EU domain names whose WHOIS information displays GB (United Kingdom) or GI (Gibraltar, overseas territory of the United Kingdom) as their country code.

Unlike the eligibility requirements for ownership of a European Union (EU) trade mark, as set out in Article 5 of Regulation (EC) No. 2017-1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark (“any natural or legal person, including authorities established under public law, may be the proprietor of an EU trade mark“), the eligibility requirements for .EU domain names are far more stringent.

Article 4(2)(b) of Regulation (EC) No. 733/2002 of the European Parliament and of the Council of 22 April 2002 on the implementation of the .EU Top Level Domain (Text with EEA relevance) reserves the .EU domain name space to any:

(i) undertaking having its registered office, central administration or principal place of business within the Community, or

(ii) organisation established within the Community without prejudice to the application of national law, or

(iii) natural person resident within the Community.

With the prospect of a no-deal situation becoming more and more likely, EURid has issued instructions on what is to take place in the period around 30 March 2019 in the event that the United Kingdom leaves the EU without a mutually-agreed transitional arrangement, as those registrants, natural or legal, based in the UK will no longer fulfil the .EU eligibility requirements.

In the most basic terms, if UK registrants are unable to bring themselves into compliance with the .EU eligibility requirements within 12 months, they risk losing their domain names, which will eventually be revoked and released back onto the open market for registration.

On 23 March 2019, UK registrants will receive a notice from EURid about the upcoming non­compliance of the data associated with their domain names.  On 30 March 2019, a second notice will be issued, in which case registrants will be given an opportunity to demonstrate their compliance with the .EU eligibility requirements by updating their WHOIS data.  In the two months following 30 March 2019, websites and email services operated under affected domain names will remain active.  From 30 May 2019, all affected domain names that have not been brought into compliance will be deemed ineligible and will be “withdrawn”.  Withdrawn domain names will no longer support websites or email services, but will remain in the .EU Registry database and may be reactivated if compliance can be demonstrated.  If registrants of affected domain names are still unable to demonstrate compliance by 30 March 2020, their domain names will be revoked, and released in batches for registration on the open market.

Special provisions apply for domain names that are on hold due to pending court proceedings, or are otherwise suspended.  EURid has also flagged the upcoming regulatory changes set to occur later in 2019, which are designed to enable all EU/European Economic Area (EEA) citizens to register a .EU domain name, regardless of their country of residenc

Notwithstanding the possibility of the implementation of a transitional agreement, UK-based domain name registrants, including EU citizens, would be well advised to familiarise themselves with EURid’s Brexit notice, and to carefully check for any domain names that may be affected. The Brexit notice and other EURid news can be found here.


This post is selected from our Anchovy News publication: Anchovy® is our comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house. For more information please contact us at  anchovynews@hoganlovells.com 

Doing business in the United States: IP in the mix

The United States is one of the easiest jurisdictions in the world in which to do business, however there are certain barriers to entry and challenges to doing business that should be taken into account before investing or establishing operations in the United States.

Our Doing business in the United States 2019 publication provides an overview of trade control issues that could limit a non-U.S. person’s ability to enter the U.S. market or conduct its business operations, as well as the principal forms of doing business in the United States. A summary of Intellectual property (IP) laws and practices important to foreign investors is included (p.40) in addition to overviews for labor and employment, immigration, export control, anticorruption and bankruptcy.

The U.S. is considered one of the jurisdictions that is most protective of intellectual property*. Copyrights and patents are governed by federal laws, while trademarks are governed by federal, state, and common law. Trade secrets are governed by state law.

Please read the full publication Doing business in the United States 2019 for a detailed summary. This publication is not intended to be a comprehensive guide, but to provide an overview of some of the important issues that investors should consider and discuss with counsel. IP Partner, Tim Lyden is the contact listed in this publication.


*According to the International Property Rights Index, the U.S. scored the highest for protection of intellectual properties and was ranked the first among countries in 2017 and 2016.

UK: IP tax diversion compliance – time to review your IP transfer pricing structure

The UK tax authority (HMRC) has announced a new Profits Diversion Compliance Facility (PDCF), as part of its efforts to ensure that multinationals do not use artificial arrangements to divert profit to lower tax jurisdictions. This gives multinationals a window to take the initiative and explain their legal and operational structures before HMRC launch their next wave of full-scale “transfer pricing” investigations into corporates at the end of 2019.

Who will the PDCF affect?

IP is the core value-generating asset for a large number of multinationals. Managing IP in a more efficient and effective way has been on the agenda of most large global groups and has often led to the creation of IP “hubs” (ie jurisdictions which concentrate the profits from the exploitation of the IP portfolio).

As IP has potential to produce a substantial amount of profits, it has also been one of the key focus areas for tax authorities to ensure that IP assets are not used to divert profit to jurisdictions with lower taxation.

The PDCF will be particularly relevant to groups with long established transfer pricing (TP) models (that’s the way tax people divide up the pie between different countries), which Her Majesty’s Revenue and Customs (HMRC) now believe need updating. Continue Reading

Hogan Lovells’ U.S. + German Patent Update – January 2019 (English, 日本語, and 한국어)

Hogan Lovells’ U.S. + German Patent Update reports on recent patent news and cases from Germany and the United States. The January 2019 Update is available in the following languages:

  • English language available here
  • 日本語(Japanese language) available here
  • 한국어 (Korean language) available here

The January 2019 spotlight article covers a recent Federal Constitutional Court (FCC) decision in Germany concerning ex parte preliminary injunctions. In this case, the first instance / appeal courts had issued preliminary injunctions against the respondents, but the FCC reversed this. The FCC found that issuance of the preliminary injunctions violated respondents’ rights to be treated equally, and that a defendant must be given an opportunity to be heard in some form prior to issuance of a preliminary injunction.

The January 2019 update also covers these developments in the U.S. and Germany:

United States

  • IPR Not Instituted Because Petitioner Used Another’s Earlier-Decided IPR as “Road Map” – United Fire Protection Corp. v. Engineered Corrosion Solutions, LLC (15 November 2018)
  • Federal Circuit Says Demand Letter from Patent Owner Provides Personal Jurisdiction for Declaratory Judgment – Jack Henry & Assocs. v. Plano Encryption Techs. LLC (7 December 2018)
  • USPTO Announces Revised Guidance on Determining Subject Matter Eligibility (4 January 2019)
  • Federal Circuit Further Defines Contours of Standing to Appeal PTAB Decisions

Germany

  • No Inventive Step When Patented Teaching Accepts Disadvantages in Prior Art – “Belt Tensioner” (“Gurtstraffer”), Federal Supreme Court X ZR 50/16
  • Regional Court of Munich on International Jurisdiction and Statute of Limitations Regarding Vindication Claims For a European Patent Application – Regional Court of Munich, 21 O 11279/17
  • Only Two Months Left for German Federal Constitutional Court to Decide on German UPCA Complaint before Brexit

For more information, please click on a link with the detailed update (in English ,日本語, and 한국어), or contact partners Joe Raffetto or Steffen Steininger.

Germany: Introduction of Certification Marks

On January 14, 2019 Germany’s Trademark Law Modernization Act (MaMoG) went into effect, amending the German Trademark Law (MarkenG) to implement European Union Trade Marks Directive 2015/2436 (MRL). This Act introduces specific regulations for the registration of certification marks, which are an entirely new type of trademark under the German Trademark Law. Certification marks have long been accepted by the United States Patent and Trademark Office, but only were introduced to the law of the European Union on October 1, 2017. Certification marks were previously regulated in Germany under the registration process for “collective marks.”

Unlike a traditional trademark – which signifies the source or origin of goods or services – a certification mark is a type of trademark that informs consumers that particular goods or services, or their providers, have met certain standards. These standards usually refer to the material, quality, method of production, or other characteristic of the goods or services. Certifying organizations own the certification mark and also control who can use the mark by permitting its use only if goods, services, or their providers meet the organization’s standards.

In the United States, certification marks must comply with number of strict rules to preserve their integrity. These rules include:

  • that a certification mark’s owner exercise control over the use of its certification marks, such as by executing written license agreements with certified parties;
  • that the owner not provide any goods or services bearing the mark;
  • that the owner not permit use of the mark for any purpose other than to certify; and
  • that the owner not refuse to certify the goods or services of any person who meets the owner’s standards.

Failure to comply with these rules may result in the loss of the certifying organization’s rights to the mark.

The requirements for registering under the German Trademark Law are analogous, and, as in the United States, the German Trademark Law requires the certification mark’s owner to also provide information on the standards the certifications represent, such as any conditions of use, under what testing or monitoring measures any certifications are made, and what a third-party must certify for permission to use the mark.

Compliance with the certification marks provisions of the German Trademark Law will enable neutral certification companies to obtain quality seals or testing marks in Germany. This will allow German marks to expand more easily internationally, as well as allow internationally protected brands to expand more easily into Germany.


For more information see our earlier post “Europe: Everything you always wanted to know about certification marks