ILN IP Insider

Trans Pacific Partnership Terms Revealed But Trade Secret Protections Still Uncertain

Recently the Obama administration publicly released the previously-undisclosed text of the Trans Pacific Partnership, or TPP, revealing, among other things, the provisions related to trade secrets.  Earlier, the administration had said that the TPP would “provide strong enforcement systems, including, for example, civil procedures, provisional measures, border measures, and criminal procedures and penalties for commercial-scale trademark counterfeiting and copyright or related rights piracy. In particular, TPP Parties will provide the legal means to prevent the misappropriation of trade secrets, and establish criminal procedures and penalties for trade secret theft, including by means of cyber-theft…,” according to the statement from Office of the United States Trade Representative (“USTR”).  The just released terms do specify that member parties must provide criminal procedures to combat trade secret theft, but it is not clear that any enhanced civil remedies will be required.

Chapter 18, at Article 18.78, addresses trade secret protections, and requires each member country to assure that “persons have the legal means to prevent trade secrets lawfully in their control from being disclosed to, acquired by, or used by others (including state-owned enterprises) without their consent in a manner contrary to honest commercial practices.” Article 18.78.1. The TPP then defines “a manner contrary to honest commercial practices” to mean “at least practices such as breach of contract, breach of confidence and inducement to breach, and includes the acquisition of undisclosed information by third parties that knew, or were grossly negligent in failing to know, that those practices were involved in the acquisition.”  That article then goes on to state in Article 18.78.2 that “each Party shall provide for criminal procedures and penalties (emphasis added) for one or more of the following:

  1. the unauthorised and wilful access to a trade secret held in a computer system;
  2. the unauthorised and wilful misappropriation of a trade secret, including by means of a computer system; or
  3. the fraudulent disclosure, or alternatively, the unauthorised and wilful disclosure, of a trade secret, including by means of a computer system.

While some would have wanted member nations to provide for both criminal and civil remedies so that trade secret owners might have a more direct role in enforcing their rights, the lack of direct mention in this article of civil remedies is not likely the area of greatest concern for such trade owners.

Of greater concern should be the somewhat strange language of Article 18.78.3:

With respect to the relevant acts referred to in paragraph 2, a Party may, as appropriate, limit the availability of its criminal procedures, or limit the level of penalties available, to one or more of the following cases in which:

(a) the acts are for the purposes of commercial advantage or financial gain;

(b) the acts are related to a product or service in national or international commerce;

(c) the acts are intended to injure the owner of such trade secret;

(d) the acts are directed by or for the benefit of or in association with a foreign economic entity; or

(e) the acts are detrimental to a Party’s economic interests, international relations, or national defence or national security. (emphasis added)

Let’s hope something got lost in the translation or in the printing because, reading section 2 and 3 together, it looks like member countries only have to provide procedures addressing unauthorised and wilful access, misappropriation and disclosure in one of those five categories.  That means that the “protections” might leave four out of those five unaddressed.  Thus, there may still be no redress for acts undertaken for financial gain in commerce to the intended detriment of the trade secret owner, perhaps in connection with a foreign entity.  If that article really means what it says, and a Party to the TPP can limit its trade secrets protections only to address those cases “the acts are detrimental to a Party’s economic interests, international relations, or national defence or national security,” then the TPP has really promised almost nothing regarding trade secrets.

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Be Careful How You Get Over the Paywall: Recent Canadian Decision Holds That Non-Subscribing Reader of Paywall Article Infringed Copyright

iStock_000033506622SmallA recent decision from the lowest court of the Province of Ontario has raised questions over how recent amendments to Canada’s Copyright Act regarding “technological protection measures” (“TPMs”), such as subscription “paywalls”, will be interpreted and balanced with traditional copyright analysis.

In 1395804 Ontario Limited (Blacklock’s Reporter) v. Canadian Vinters Association, the central question considered was whether asking someone to provide you an article from a service that is behind a paywall constitutes copyright infringement?

In this case, court answered that, yes, it does. 

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MAKING HEAVY WEATHER OF THE UK’S UNJUSTIFIED INFRINGEMENT THREATS RULES

The UK has for a long time had laws in place that make it illegal for IP owners to make “unjustified threats” to bring proceedings for infringement of registered IP rights.  In recent years, this prohibition has been narrowed to exclude threats made in respect of primary infringement (i.e. manufacturing, importing or supplying services), but it still applies to threats made against those alleged to be committing secondary infringement, especially retailers.

The aim of the legislation is to prevent IP owners making bogus threats against competitors or their customers which might have the effect of disrupting entirely lawful trade, without the matter ever going to court: the so-called “chilling effect”.  For retailers who received a threat of an IP claim it made sense to simply de-list the product, rather than take any risk.  The unjustified threats provisions reduced this problem.

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IP licensing and structuring considerations for Australian registered trade mark owners

iStock_000050094102_FullThe recent Federal Court of Australia decision in Skyy Spririts LLC v Lodestar Anstalt [2015] FCA 509 serves as a reminder that Australian registered trade marks are vulnerable to removal on the basis of non-use if licensing and structuring arrangements are not adequate.

Under the Australian Trade Marks Act 1995 (Cth) a trade mark may, upon application, be removed from the register if the registered owner has not used the trade mark in Australia for a continuous period of 3 years.

As part of a long running dispute between Wild Turkey Bourbon and Wild Geese Rare Irish Whisky about  their rights in Australia with respect to the trade marks “WILD TURKEY” and “WILD GEESE”, a non-use application was filed with IP Australia seeking removal of Wild Turkey Bourbon’s “WILD GEESE” trade mark registration.

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“The Donald” Trump – Avoids Trade-mark Licensor Liability in Canada

Image Credit: © Imdan | Dreamstime.com - Donald Trump, Youre Fired! Photo

I spent years at my office watching the gradual construction of the 70-story mixed-use TRUMP TOWER complex in downtown Toronto, Canada.  It is now a Toronto landmark and a place for the lawyers and bankers in the financial district to wine and dine clients.  Trump, two of his affiliated companies (Affiliates) plus the licensed developer have been sued (Singh v. Trump).  The plaintiffs were attempting to hold Donald Trump (the presidential candidate!) liable for alleged misrepresentations by the developer of the attributes of certain hotel condominium units in the Trump Tower complex.  The developer was licensed by one of Mr. Trump’s Affiliates to use Mr. Trump’s name and trade-marks for the Trump Tower complex.

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Canadian Court Orders Google to Scrub Its Search Results

desktopThe internet’s sheer breadth often gives the impression that it transcends local legal jurisdictions. As commerce and trade become increasingly electronic ventures, courts now grapple with how to enforce orders against parties not operating within traditional physical jurisdictions.

In June, the British Columbia Court of Appeal (the “Court”) in Equustek Solutions Inc. v. Google Inc., 2015 BCCA 265, upheld a decision granting an injunction ordering Google to de-index from its search results certain websites selling goods subject to an intellectual property infringement claim.

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How TPA May Fast Track TPP Impact On IP

iStock_000019004949MediumLate June 2015 saw much of Washington DC focused on whether Congress would give President Obama “TPA,” the so-called fast track trade promotion authority, that would allow concluding negotiations on the “TPP,” the Trans-Pacific Partnership, a trade deal that could have widespread international implications for IP, or intellectual property.  The measure passed, ultimately, by one vote.  Therefore, it appears that the seven-year-old TPP negotiations may move toward closure.  Understanding the TPP and its IP implications thus becomes important for many in the international marketplace, especially since the next round of negotiations is set to begin shortly.

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The NOW TV case: Mere reputation of international brand is not enough to protect unregistered trade mark in the UK

iStock_000002924527SmallIntroduction

The world has “internationalised” at an astonishing rate in the last 20 to 30 years.  People are better travelled and are familiar with overseas hotels, restaurants and media.  And it is the same with consumer brands: in the UK we are as familiar with Hershey’s chocolate from the US and Vegemite spread from Australia as we are with homegrown brands.

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LIVE VIDEO-STREAMING APPS POSE CHALLENGES FOR SPORTS AND ENTERTAINMENT INDUSTRIES

iStock_000015783236XSmallThe transmission of live events through video-streaming apps Periscope and Meerkat is raising concerns among rights holders. Advances in both legal and technological tools will be needed to effectively combat unauthorized transmissions.

Challenge

Although people have been using smartphones to shoot videos they share on social media platforms for some time, live video-streaming apps such as Periscope and Meerkat are bringing live videos to mass audiences like never before.  Since Meerkat emerged on the scene as the darling of the 2015 South by Southwest Interactive conference, the media and marketing communities have been buzzing over the potential and pitfalls of live video-streaming apps.  That buzz reached a fever pitch in May when the highly anticipated boxing match between Floyd Mayweather Jr. and Manny Pacquiao became the first high profile live sporting event to suffer a blow from rampant piracy on Meerkat and its competitor, Periscope.

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U.S. Federal Circuit Appeals Court sets standards for determining bona fide intent to use mark in commerce

iStock_000011353685_LargeA recent decision of the United States Court of Appeals for the Federal Circuit (M.Z. Berger & Co, Inc., v. Swatch AG [2015] Fed. Cir.) has clarified the standards applicable to determining whether an applicant relying on an “intent-to-use” basis had the required “bona fide intention” to use the mark in commerce when the application was filed. Lanham Act § 1(b).

Legislation

Prior to amendment of the Lanham Act in 1988 to permit intent-to-use filings, U.S. law required proof of use in commerce at the time of filing the application.  For such use-based applications, the applicant must show a “bona fide use of a mark in the ordinary course of trade.”  Lanham Act §§ 1(a), 45.  However, an intent-to-use applicant must only have “a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce” at a later date.

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