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
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
Mega lawsuit load
Record labels Warner Music, UMG, Sony and Capital Records
have joined Hollywood studios in suing Megaupload for copyright
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
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
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
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
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
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:
Ventures loses Capital One patent infringement
chief product officer
the lessons so far
Europe’s courts have tackled permissible
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
uncertainty in Europe
Court sides with brands in long-awaited trade mark
UK IPO sets out
Changes to UK
threats provisions recommended
The MPA hires
former assistant US trade representative for
China’s SAIC releases new
draft regulations for well-known marks
Block’s patent litigation co-chair Truax named
Norton Rose partner
appointed as an Ottawa Federal Court
Third parties weigh
in on Japan’s first FRAND
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