ILN IP Insider

Maybe Axanar Could Klingon To Its Fair Use Defense In A Parallel Copyright Universe

rtzw4f02zy8-nasaOn January 3, 2017, in Paramount Pictures Corp. v. Axanar Productions, Inc. et al., a United States District Court held that Axanar could not rely on a fair use defense during the upcoming trial over whether Axanar infringed Paramount’s copyright in the popular Star Trek television and motion picture franchise.  Axanar has an existing twenty-one minute film Star Trek: Prelude to Axanar (“Prelude”) and at least two trailers for a planned full-length feature film (the “Axanar Motion Picture,” and, collectively with Prelude, the “Axanar Works”).  Central to the Court’s rejection of that defense was Axanar’s inability to convince the Court that the Axanar Works had the characteristics of the sort of works, such as parodies, that are recognized as deserving of a fair use defense under 17 U.S.C. § 107, as further explained by the United States Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).  While seemingly a solid analysis under the applicable U.S. copyrights laws and cases, one perhaps should ask whether a different result could be supported in a parallel copyright universe.  (This does, after all, involve Star Trek, where, since the Original Series episodeMirror, Mirror” episode, examples of parallel universes have existed.)  But to get to that parallel universe here, one need not experience a transporter malfunction, nor travel multiple parsecs—one perhaps need only look the United Kingdom (not to be confused with the United Federation) and Section 30A of its Copyright, Designs and Patents Act 1988.  Understanding more fully the Axanar case and the Axanar Works will help the parallels emerge.

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Industrial Design Protection in Canada: Changes Before the Office January, 2017

a4gptwtaajw-stephen-di-donatoIndustrial design registrations under the Industrial Design Act (the “Act”) are similar to design patents in the US.  They protect the features of a product that are visually appealing and not purely utilitarian. They can consist of a shape, configuration or composition of pattern or color, or combination of pattern and color in three-dimensional form, such as the design of a table or the shape of a computer monitor.

The Canadian Intellectual Property Office (CIPO) published six new practice notices on  January 13, 2017 regarding the industrial design registration process under the Act. Each notice came into effect immediately and affects both pending and future design applications. According to CIPO, the changes will improve client service, reduce administration and modernize Canadian practices in order to align those practices with international standards. These changes may also impact registrable subject matter (see below).

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PLEADING PATENT INFRINGEMENT IN THE UNITED STATES?

Serious SecretaryHow do you plead patent infringement in the United States?  Can you survive a motion to dismiss if the defendant challenges the sufficiency of your complaint?  What should you do?

Let’s say your client has a United States patent that is believed to be infringed by another party.  You do not rely on the client solely for facts, but conduct your own investigation to meet a pre-filing due diligence.  You review the patent, prior art, and file history for claim construction.  You also review the accused infringing device both independently and with your client.  You prepare claim charts for all claims of the patent and apply elements of the claims to the accused infringing device in the claim chart.  You may even obtain an opinion of counsel that is reasonable, comprehensive, and competent such that a reasonable litigant could believe that an infringement claim could succeed based on the opinion.  This pre-filing due diligence will usually meet your obligation under Rule 11 of the Federal Rules of Civil Procedure.

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IS YOUR TRADEMARK MERELY DESCRIPTIVE?

photo-1466921583968-f07aa80c526eIn the United States, a trademark can be refused registration on the Principal Register because the trademark is deemed merely descriptive.  If the trademark is not allowed for registration on the Principal Register, it may be eligible for registration on the Supplemental Register.  So, how do you determine if your mark is descriptive and which register should you seek registration?

The main register for most trademarks in the United States is what is called the “Principal Register”.  A trademark that is registered on the Principal Register has certain advantages including using the registration symbol ®, protection against registration of a confusingly similar mark (likelihood of confusion), presumed notice to the public of a claim of ownership of the mark, a legal presumption of ownership of the mark and the exclusive right to use the mark in commerce on or in connection with the goods/services listed in the registration, establishing a date of constructive use of the mark as of the filing date of the application, filing suit in federal court to bring an action concerning infringement, preventing importation of infringing foreign goods by filing the registration with the U.S. Customs and Border Protection, incontestability of the registration, and using the registration as a basis to obtain registration in foreign countries.

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SMOKE SIGNALS FROM SPECIMEN OF USE SUPPORT REGISTRATION REFUSAL FOR “HERB” SALES DESCRIBED IN APPLICATION

photo-1439902708487-91bcf15ceb27In a precedential opinion, the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office) affirmed the trademark examiner’s refusal to register HERBAL ACCESS for retail store services featuring “herbs.”  Although the application did not mention marijuana as one of the “herbs” being sold, applicant Morgan Brown’s specimen of use and web site home page contained enough evidence for the examiner to determine that he was indeed selling the federally banned substance.  In re Morgan Brown, Ser. No. 86/362,968 (TTAB July 14, 2016).

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Trader Joe’s trying to make Pirate Joe’s “walk the plank” in U.S. trade-mark case

pirates-1440445_1920In the ongoing dispute between Michael Hallatt, a Vancouver businessman, and U.S. based retailer Trader Joe’s, the United States Court of Appeals for the Ninth Circuit (the “Ninth Circuit”) has overruled the 2013 decision of the U.S. District Court for the Western District of Washington (the “District Court”) not to hear Trader Joe’s claim against Hallatt for, among other things, trade-mark infringement, dilution, unfair competition and false advertising.

The dispute arose out of Hallatt’s purchase of products from Trader Joe’s stores in the U.S., particularly in the state of Washington, for resale in Canada (there are no Trader Joe’s stores in Canada).  Hallatt has and continues to mark up and re-sell Trader Joe’s products at his store in Vancouver, named Pirate Joe’s.

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Second Circuit Narrows ‘Red Flag Knowledge’ Exception to DMCA’s Safe Harbor Protections for ISPs

A photo by Jeff Sheldon. unsplash.com/photos/eOLpJytrbsQIn a long-standing case brought against the video platform Vimeo by several music publishers, the U.S. Court of Appeals for the Second Circuit recently set the bar high for copyright owners to succeed in their infringement claims against service providers based on allegations of “red flag knowledge.”

The Second Circuit, shedding some light on what is needed to establish red flag knowledge, rejected the publishers’ argument that Vimeo was not entitled to the Digital Millennium Copyright Act’s (DMCA) “safe harbor” protections for numerous videos on Vimeo’s platform that included their copyrighted music because the facts and circumstances made the infringements apparent.

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A PRIVATE PARTY TOO BIG TO BE PRIVATE

A photo by Daniel Robert. unsplash.com/photos/MRxD-J9-4psThe Danish court has recently decided that a party may be too large to be considered private, at least when it comes to the understanding of the wording “Public performance” in Danish copyright law. The court therefore ruled that the staff party held by Novo Nordisk should be considered as public in connection to the Danish Copyright Act, and therefore Novo should pay Koda for the use of musical work and text.  

Danish copyright law implements a range of EU directives, including directive 93/98/EEC concerning harmonizing the term of protection of copyright and certain related rights, and directive 92/100/EEC on rental rights and lending rights and on certain rights related to copyright in the field of intellectual property. 

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What’s Your Evidence? The Danger of Hearsay Evidence in IP Litigation

iStock_000011931148XSmallIn Pfizer Canada Inc. v. Teva Canada Limited, 2016 FCA 161, the Federal Court of Appeal (“FCA”) recently overturned a substantial damages award in a pharmaceutical patented medicines action on the basis that the trial judge admitted improper hearsay evidence. This is an important reminder that the hearsay rule of evidence is alive and well.

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Why Register Your Copyright?

iStock_000003908491_LargeSuppose that you have expressed your idea into a tangible form such as producing a video.  Although your copyright exists upon the moment of creation, should you register your copyright on the video with the U.S. Copyright Office?  Suppose you don’t and later you find out that a competitor has posted a copy of your video on their website.  Should you register your copyright?  The answer is YES!

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