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Alice, Converse, patent reform, Donuts, Rod Stewart – the week in IP




The effect Alice v CLS Bank is having on USPTO patent rejections, Converse suing 31 companies for trade mark infringement, the prospects for reform if the Republicans win the Senate, Donuts registering its millionth internet address, and the back of Rod Stewart’s head were among the intellectual property stories hitting the headlines this week

The biggest news this week was the White House confirming the nomination of Michelle Lee as director of the USPTO and oral arguments in Teva v Sandoz at the Supreme Court. Below is a selection of other IP stories making the news.

Alice puts business method patents in chains

The impact that the Supreme Court’s Alice v CLS decision is having on patent applications was revealed this week by Vox, which said the USPTO is now rejecting a lot more business method patents.

Vox cited a study of the number of decisions that rejected applications based on Section 101. It said that the rejection rate for business method art unit (AU) patents had risen to 78% in July, up from only 24% in January. In contrast AUs that focused on other kinds of technologies saw little change in rejection rates.

Business method patents are more than 12 times more likely to lead to lawsuits than other types of patents, said Vox.

It is not only patent prosecution that is feeling big effects from Alice. Lex Machina recently reported that patent case filings were down 40% in September compared with the same period last year. Mark Lemley, law professor at Stanford, believes this is because Alice is deterring lawsuit filing.



From the basketball court to district court

Converse this week sued 31 companies for trade mark infringement of elements of its distinctive shoe with a rubber-toe front and star.

It filed litigation against Wal-Mart, Ralph Lauren, Ed Hardy and others in the Eastern District of New York. It has also filed an International Trade Commission complaint to try to ban imports and sales of the shoes.

The footwear maker introduced the All Star in 1917. The shoes are known as Chucks because they were promoted by basketball player Chuck Taylor in the 1920s. Converse says it has sold a billion pairs of the shoes worldwide.

Nike bought Converse in 2003, after it had had filed for bankruptcy. Converse accounted for $1.7 billion of Nike’s roughly $28 billion in sales in the 2014 fiscal year.

Professor Polk Wagner, from the University of Pennsylvania Law School, told the BBC that "it is notoriously difficult to win a trademark case in the fashion context". He added: "It's certainly not a slam-dunk on the part of the plaintiffs."



Patent reform back on the agenda?

The Washington Post ran a piece this week assessing how technology policy would be affected if Republicans won the Senate in the midterm elections next month. For IP, the short answer is: it is extremely likely that patent reform will come back on the agenda, but copyright reform has no chance.

"A Republican majority, say many observers, could mean near-instant movement on legislation aimed at so-called patent trolls who hold patents solely so they can sue potential infringers," said the Post.

Despite many Congressional hearing on copyright, the Post did not rate the chance of any legislation. "Those who track the issue says that nothing much is likely to happen on copyright law in the next Congress – no matter who controls the Senate," said the Post, pointing to the pushback against the 2011 Stop Online Piracy Act in the House and the Protect Intellectual Property Act in the Senate.

The article noted, however, that a Republican-led Senate could make it easier to pass free-trade agreements.



Mmm, one million donuts

Domain registry Donuts this week revealed it had registered its one millionth internet address, making it the first new gTLD provider to reach that landmark.

Heavenly.COFFEE became the one millionth address registered across all Donuts’ gTLDs. The registration comes less than 10 months after Donuts opened its first new gTLDs for general registration in January.

The new gTLD programme now tallies almost 2.7 million registrations globally. A recent forecast by the investment banking firm B Riley & Co projected that new gTLD registrations could top 20 million by 2016, accounting for 15% of the worldwide market.



Not glad to see the back of him

The New Yorker this week reported on a dispute over an image of singer Rod Stewart in a lengthy piece on copyright.

Bonnie Schiffman took a picture of the back of Stewart’s head in 1981, which was later used on the cover the Storyteller album in 1989. A different picture of the back of Stewart’s head is now being used to promote his Las Vegas dates and world tour. Schiffman is suing, claiming that the resemblance between the new photo and hers is substantially similar. She is asking for $2.5 million in damages.

The article also included a novel, but unconvincing, argument about copyright issues related to websites. Author Louis Menand said that if someone had reprinted his article in a book without permission almost all people would agree that it is copyright infringement. But he points out that if someone linked to his story from another website no one has a problem with that. In addition, Menand says a common practice for some websites is to import content from another website without changing the URL. This, he says, is just like reprinting an article in a book without permission.

"Some courts have questioned the use of links that import content from another Web site without changing the URL, a practice known as 'framing’. But it’s hard to see much difference. Either way, when you’re reading a linked page, you may still be 'at’ awesomestuff.com, as clicking the back button on your browser can instantly confirm. Effectively, awesomestuff.com has stolen content from newyorker.com, just as the compiler of 'Most Thoughtful Essays’ stole content from me. The folks at awesomestuff.com and their VC backers are attracting traffic to their Web site, with its many banner ads for awesome stuff, using material created by other people."

Also on the blog this week:

The value of an open source dividend

Managing IP Survey 2015 FAQ

Two pharma patent questions that warrant further discussion

Is Weatherley's world too black and white?


And in our news and analysis:
Last-minute submissions push PTAB comment total to 37

How to encourage privacy compliance

Lee nomination as USPTO director confirmed

Patent Quality Initiative formed to file amicus briefs, petition for IPRs, educate

Brad Newberg joins McGuireWoods from Reed Smith

Federal Circuit arguments in Myriad may worry biotech industry

Manatt hires three-partner team in California

Kramer Levin hires pharma patent litigator

Carpmaels adds further patent litigators

Rouse returns to IP with Brandstrike

The seven reasons why the UK needs a new Copyright Act

Prime Minister's adviser sets out recommendations for IP education

They tried to make me go to PTAB…

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