ILN IP Insider

EXHAUSTION OF PATENT RIGHTS & DIRECT INFRINGEMENT RE-EVALUATED:THE MPEG LA / DPH CASE

The German Federal Court of Justice (Bundesgerichtshof) with its decision X 2r 33/10, announced on August 21, 2012, rejects claims for infringement of MPEG-2 video coding patents by a Greek DVD manufacturer: The DVD, as such, is NOT a means of infringement of the patent claim in dispute.

On August 21, 2012 the German Federal Court of Justice heard the appeal by the defendant, a Greek DVD manufacturer, in a patent infringement proceeding, and decided that the case in hand was part of a series of actions encompassing several proceedings (indeed nine actions with the same contents were filed against the defendant by nine members of the MPEG Patent pool).

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Amendments to the pre-trial procedure for IP disputes

On June 1, 2016, the mandatory pre-trial procedure came into force. On May 26, 2017 the State Duma approved in the second reading amendments to the current pre-trial procedure.

Under the amendments, the pre-trial procedure extends only to the monetary disputes. The amendments (art. 1252 of the Russian Civil Code) also directly prescribe that the pre-trial procedure doesn`t apply to nonpecuniary claims for infringement of IP rights (for example, suppression of acts that infringe or endanger the IP rights; seizure and destruction of counterfeit goods; official publication of the court decision rendered against an infringer).

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Can Trademarks Violate Free Speech?

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  What if the trademark may be scandalous or disparage a particular group of people?  Should you register your trademark with the U.S. Patent and Trademark Office?  Can you obtain a registration from the U.S. Patent and Trademark Office?  The answer is YES!

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Matal v. Tam – Disparaging Trademarks are Registrable

It is well known that the trademark laws of the United States differ substantially from the trademark laws of countries around the world.  The United States Supreme Court recently clarified that ‘offensive’ trademarks are registrable, further differentiating the United States from the majority the world.

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U.S. Supreme Court Invalidates Statutory Provision against Offensive Trademarks

alice-moore-192521Although U.S. common law trademark rights are gained through use of the mark in commerce (without registration), registration of a trademark with the U.S. Patent and Trademark Office (“USPTO”) provides the owner with additional rights and benefits.  These include nationwide enforcement of the mark against infringers; constructive notice of the registrant’s claim of ownership of the mark; evidentiary presumptions of the validity of the mark, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in commerce on or in connection with the goods or services in the registration; the status of “incontestability” once the mark has used in commerce for five years after registration; and the ability to stop importation of infringing goods into the U.S.

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The GS Media case: “He’s making it up as he goes along!”

rawpixel-com-252127The GS Media case: “He’s making it up as he goes along!”[1]

This is not a Brexit whinge, but when I reread the ECJ’s decision in the GS Media case[2], I do understand where 52% of my countrymen were coming from.  Generally, the EU has (IMHO) been a force for good in IP law, by trying to keep the law up to date in a period of insane technological development and promoting consistency across the member states to reduce the number of local wrinkles that businesses have to deal with.

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Picking: A Few IP Collectibles Since My Last Post

ross-sokolovski-123930There is a popular television show in the United States called American Pickers, which follow the adventures of antique and collectible “pickers” Mike Wolfe and Frank Fritz.  Wolfe and Fritz travel around in a van with the logo Antique Archeology to buy, or “pick,” various items for resale, for clients, or for their own personal collections—sometimes with a plan based on background research where destinations and items are predetermined and others by chance when they are “free-styling.”  One of the beauties and challenges of an intellectual property practice is how many interesting issues, cases and developments are out there for one to explore.  And so, in a legal sense, we “pick” as well, sometimes for clients and sometimes for one’s own personal collections, sometimes while looking for specific items and sometimes while free-styling. 

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CarGurus Enters Canada – Suit Ensues For Statutory Damages under the Canadian Copyright Act

11892290_10153570213132792_5698485790065904705_oThe plaintiff in a copyright infringement action has the option to choose to receive statutory damages rather than to establish its actual quantum of damages it has suffered. Statutory damages range from a minimum of $500 to a maximum of $20,000 for the infringements related to a given work. A plaintiff might choose statutory damages when the amount of its loss is difficult to quantify, particularly when works are downloaded in large quantities from the internet. The Canadian Copyright Act provides for various remedies for copyright infringement, including statutory damages as an alternative to compensatory damages and/or profits.

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Can You Register a Copyright on an Artistic Element in an Industrial Design?

sebastian-davenport-handley-146343Suppose that you have expressed your idea into a tangible form such as two-dimensional artistic elements incorporated into an industrial design.  Although your copyright exists upon the moment of creation, do you have a valid copyright?  Should you register your copyright on the two-dimensional artistic elements with the U.S. Copyright Office?  Can you stop a competitor from using your two-dimensional artistic elements in their industrial design?  The answer is YES!

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Oh, Where Cases Like That Will Go: HOW A CEASE AND DESIST LETTER STOPPED THE PLAY BUT STARTED THE SUIT

tamarcus-brown-131431Lombardo et al v. Dr. Seuss Enterprises, L.P., case number 1:16-cv-09974, in the U.S. District Court for the Southern District of New York, is an interesting case for intellectual property practitioners, especially those involved in copyright matters and curious as to how the parody/fair use discussion started in my last post for ILN IP Insider continues to play out.

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