September 15, 2021
Just over five years after the California-based retail giant Deckers Outdoor Corp. (Deckers) filed a lawsuit against Sydney-based footwear company, Australian Leather Pty Ltd (Australian Leather) for trademark infringement, the U.S. Court of Appeals for the Federal Circuit has ruled in favour of Deckers.
The Court of Appeals affirmed the previous decision of the district court which found that Australian Leather had wilfully infringed Deckers’ “UGG” trademarks by selling less than 15 pairs of UGG branded boots in the U.S., awarding Deckers $USD450,000 in damages and ordering a permanent injunction preventing Australian Leather from (among other things) “using … the UGG mark or designation, or any reproduction, counterfeit, copy, or colorable imitation thereof, in any manner and in any format, case or spelling, on or in connection with the sale, offering for sale, distribution, or advertising of any product in the United States or its territories.”
September 9, 2021
Software Patents: When is enough enough?
Developing a Disclosure for Software Patents:
- Discuss with the inventor the technological underpinnings of the novel functional aspects of the software and how those technological considerations support that function.
- Discuss with the inventor details that link the novel functional aspects of the software description to those technological underpinnings.
- Ask the inventor to explicitly describe why the invention is more than the expected sum of its parts. Why couldn’t a software engineer, faced with the same problem, come up with the same solution?
- When drafting, include these details explicitly in the specification.
August 11, 2021
A recent Supreme Court decision has finally put an end to the longstanding fight between Oracle and Google concerning Google’s use of Oracle’s copyrighted Java Application Programming Interfaces (APIs). The Supreme Court’s decision held that, contrary to the decision by the Federal Circuit Court of Appeals which was discussed in our previous alert, Google’s use of Oracle’s APIs was protected by the copyright defense of Fair Use. This decision is likely to create greater opportunities for developers to use copyrighted API code.
August 4, 2021
Under the Copyright Law, certain copyright and related rights are subject to mandatory collective management, meaning that they can be exercised only through a collective management organisation (CMO). These rights include:
- the right to fair remuneration for reproduction for private use (known as “blank tape levy”), which is calculated at a percentage of the value of specific devices or materials that are used for private reproduction of protected works (as provided for in article 18 of Law 2121/1993). The levy can be collected only by CMOs;
- the right to grant or refuse authorisation to a cable operator for cable retransmission (provided for in article 3(5) of Law 2121/1993), which may be exercised only through a CMO; and
- the right to an equitable remuneration of performers of sound, visual or audiovisual recordings and producers of sound recordings, for acts of communication to the public as well as for radio or television broadcasting of legally released recordings (provided for in article 49 of Law 2121/1993). Such remuneration is payable only to CMOs.
July 28, 2021
The rise of online intermediaries, such as Google, Amazon, and Facebook, has radically changed the way in which many businesses and individuals operate and has introduced novel legal and business questions and challenges. It is easier and cheaper than ever for bad actors to use online tools, whether it be websites, platforms, or online profiles, to commit a variety of unlawful activities such as impersonating a business, associating themselves with a business without any such connection, or otherwise attempting to trade on the goodwill of a business. As each new platform or service is created, more opportunities exist for unlawful activity, including intellectual property (“IP”) infringement and violations. These developments have caused significant challenges for businesses seeking to enforce their IP rights and protect their brands and reputations.
July 21, 2021
The title of this piece tracks a common “phrase of exasperation used to emphasize a question or statement.” If that be the case, and I think it is, then the subtitle implies the question this piece will address. That question is “how have various countries’ intellectual property laws addressed efforts to copyright, trademark, or patent holy names, sacred words, or outputs of creation?” The title, of course, also is a bit of play on words, as it asks the question more directly “what intellectual property rights are out there that people can acquire ‘in the name of God’?” That can mean rights to the name (or one of the names) itself. It can also mean as the proxy or substitute holder of rights here on earth because no spiritual being will receive a copyright certificate, trademark registrations, or letters patent. So a lot is implied in, or possible from, the title (as is often my intent on this blog).
June 23, 2021
Suppose that you want to obtain a patent for an invention and, in your claims of the patent application, you recite terms as a structure with functional language or means-plus-function language. What if this language requires an algorithm to carry out the function and you fail to disclose the algorithm in your patent application? Can the patent claims be held indefinite for failing to disclose the algorithm? The answer may be YES!
June 10, 2021
When we say “meme”, we usually mean an internet meme. An Internet meme is an idea (and some content embodying this idea) spread via the Internet.
Memes are usually created in the internet community for humorous purposes. However, memes in practice may raise issues associated with copyright, registration of trademarks, or even with personal data protection.
This article is an overview of curious cases discussed in the Russian legal community and related to internet memes.
May 12, 2021
When a corporation expands its business into Canada, consideration should be given to whether it can register its brand as a trademark in this new market. While a corporation may operate in this market without registered trademarks, many statutory frameworks, like the Canadian regime, offer additional benefits to companies that have registered marks.
If a corporation plans to expand its operations into Canada, it should be aware that there are certain nuances to this trademark registration regime. Below is a discussion of some basic points applicable to filing a trademark application directly in Canada.
May 5, 2021
Foreign entities looking to register Australian domain names need to be aware that the eligibility requirements have changed and the threshold is now much higher. If a foreign entity is relying on a registered Australia trademark to meet the Australia presence requirement, they must ensure that their domain is an exact match to that trademark.
On 12 April 2021, a new set of rules relating to the licensing of the .au country code Top Level Domain (ccTLD) came into effect in Australia.