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Canada IP criticism, Megaupload lawsuits, Tennessee troll reform, Scotch trade mark, Jay-Z ruling – the week in IP



Michael Loney


32 US lawmakers lambasting Canada’s IP standards, record labels and movie studios suing Megaupload, Tennessee passing patent troll legislation, Australia granting trade mark protection to Scotch, and a judge ruling in favour of Jay-Z were among the stories hitting the headlines in the past week

Below is a selection of intellectual property stories attracting attention on the internet in the past week that were not covered on www.managingip.com (see the bottom of this blog post for the top stories published by Managing IP this week).

Blame Canada!

This week it emerged that 32 members of US Congress had written to the United States Trade Representative (USTR) to express their "strong concern about lack of adequate and effective intellectual property rights in Canada". Their concern was sparked by Canada stripping pharmaceutical company Eli Lilly of its rights to two of its patents.

Eli Lilly and the 32 members of Congress are demanding Canada be elevated to the USTR’s Intellectual Property Priority Watch List. The USTR expressed concern about Canada in last year’s Special 301 report but did not put it on the list. Seven of the members of Congress are from Indiana, where Eli Lilly is based.

The members of Congress said in the letter: "Unfortunately, we believe that Canadian courts have significantly weakened patent standards through a unique misinterpretation of the internationally accepted utility standard, directly harming the competitiveness and economic growth of US innovators." They said this patent utility standard is inconsistent with Canada’s international trade obligations, including the TRIPS agreement.

The letter noted Canada’s interpretation had resulted in 18 revoked patents for medicines on the basis they are not "useful" after they had been approved by the Canadian health regulatory health agency as safe and effective and were in wide use by patients in Canada.

"No other country has denied or revoked patents on any of these 18 medicines on these grounds and , perhaps most egregiously, we understand that the companies in Canada that have sought to have these patents revoked on the basis that they are not 'useful’ are now marketing the very same supposedly not useful medicines to patients themselves," said the letter.

The two Eli Lilly patents are for the Strattera attention-deficit disorder pill and the Zyprexa antipsychotic treatment, which Canadian courts invalidated in 2010 and 2011, respectively. Eli Lilly responded in September last year by filing a complaint under the North American Free Trade Agreement seeking $500 million in compensation.

Mega lawsuit load

Record labels Warner Music, UMG, Sony and Capital Records have joined Hollywood studios in suing Megaupload for copyright infringement.

The suit also names Megaupload’s founder Kim Dotcom, Mathias Ortmann and Bram van der Kolk, who were all indicted by the Department of Justice in January 2012. Kim Dotcom has defended his website from New Zealand since then, with attempts to extradite him proving unsuccessful.

The lawsuit was filed through the Recording Association of America. The record labels are seeking unspecified damages, but the suit claimed Megaupload had generated more than $175 million in illicit profits from copyright infringement while "causing more than half a billion dollars in harm to copyright owners".

This came days after Twentieth Century Fox Film, Disney Enterprises, Paramount Pictures, Universal City Studios, Columbia Pictures Industries and Warner Bros Entertainment filed a complaint through the Motion Picture Association of America.

The Boston Herald quoted Megaupload’s attorney Ira Rothken as saying "the RAA, the MPAA and the DOJ are like three blind mice, following each other on pursuit of meritless copyright claims".

Tennessee tackles trolls

Tennessee law makers passed legislation this week to take on patent trolls. The state’s House of Representatives passed the bill 95-0 after the Senate had passed it 31-0 the week before. The bill now awaits the signature of Tennessee Governor Bill Haslam (right).

The bill clamps down on bad faith assertions of patent infringement, such as through demand letters. It is similar to legislation passed by other US states including Vermont last year and Oregon, Virginia and Idaho this year. Kentucky, Maine, New Hampshire and Wisconsin are among states considering similar measures.

Tennessee’s action closely followed Idaho Governor Butch Otter signing his state’s patent troll legislation into law last week. Wisconsin’s legislature has approved it patent troll bill and it is awaiting Governor Scott Walker signature.

Cheers to Australia

Scotch whisky has been registered as a certification trade mark in Australia after a long fight.

The Scotch Whisky Association had previously branded the country as one of the worst at dealing with counterfeit spirits, and had estimated more than two million bottle of counterfeit whisky had been sold there since 2005.

The SWA had identified 40 fake whisky brands in Australia and had fought to protect its industry. Specific protection for Scotch whisky was removed from Australia’s Food Standards Code in 2000.

The UK government and European Commission supported the SWA in its fight.

Alan Park, legal adviser at the SWA, said: "I have been involved in actions against many fake 'Scotch Whisky' products in Australia in recent years. Registration of Scotch Whisky as a certification trade mark is a major breakthrough and will make it easier to crack down on fakes and therefore protect consumers, although the onus to prevent the sale of fakes still rests on the industry.

Moment of trade mark clarity

A judge this week ruled rapper Jay-Z was not responsible for ignoring legal papers served by a man claiming $600 million in damages over the Brooklyn Nets name.

Francois de Cassagnol claimed Jay-Z had ripped off the name from him. He said he had a trade mark on the name and asked the court to find Jay-Z in default. De Cassagnol tried to serve Jay-Z with legal papers at the rapper’s 40/40 club in New York last month.

The judge this week said the court would not recognise Jay-Z was in default because de Cassagnol had provided "no support for his claim that [the employee] is authorized to accept service on [Jay-Z’s] behalf", meaning the defendant was improperly served.

The New Jersey Nets moved to Brooklyn and was renamed the Brooklyn Nets in 2012. A previous appeal by de Cassagnol to the USPTO found in favour of the NBA.


Managing IP published the following stories this week, available to subscribers and trialists:

Intellectual Ventures loses Capital One patent infringement suit

Valipat appoints chief product officer

Plain packaging: the lessons so far

How Europe’s courts have tackled permissible repair

Perkins Coie hires former Bingham IP co-chair

K&L Gates adds Palo Alto IP litigation partner from MoFo

OHIM and EU offices clarify practice on B&W trade marks

Designers face uncertainty in Europe

Quebec Superior Court sides with brands in long-awaited trade mark decision

UK IPO sets out three-year plan

Changes to UK threats provisions recommended

The MPA hires former assistant US trade representative for IP

China’s SAIC releases new draft regulations for well-known marks

Jenner & Block’s patent litigation co-chair Truax named managing partner

Norton Rose partner appointed as an Ottawa Federal Court judge

Third parties weigh in on Japan’s first FRAND case

From the blog:

What 52% tells us about the Unitary Patent discussions

The people from the IPO want to help you

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Federal Circuit’s Brunetti ruling: barring immoral or scandalous marks is unconstitutional restriction of free spee… https://t.co/MivCKFINHg

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Federal Circuit rules in Amgen v Sandoz on remand from SCOTUS https://t.co/uYIkfVhCHG https://t.co/2OZAscsz32

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RT @mdloney: Canada moves closer to joining the Hague Agreement with the release of proposed new Industrial Design Regulations https://t.co

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