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Fast-track patents, Lucasfilm, Manuel Noriega, Activision, Marvin Gaye, Zorro – the week in IP



Michael Loney


Google being granted the most fast-track patents, a trade mark dispute over Empire’s Strike Bock beer, Manuel Noriega losing a copyright case, the latest in the Blurred Lines dispute, and a failed attempt to free Zorro from copyright were among the intellectual property stories hitting the headlines this week

On the fast track

Google has been the biggest beneficiary of a programme for expediting patents for an extra fee.

According to the Washington Post, Google has obtained 875 fast-track patents, about 14% of the 6,187 expedited patents issued by the USPTO since the Track One programme began in 2011. The Post said that under the programme’s fee structure Google would have paid $3.5 million to get the 875 patents.

Ninety-seven percent of companies, universities, inventors and others who have received expedited patents have 10 or fewer of them. Google is well ahead of the second-placed Huawei Technologies, which has 147 expedited patents.

Track One was created by the America Invents Act. Companies can pay an additional fee on top of the $1,600 base fee to have the patent approved faster. The additional fee is $4,000 for large companies, $2,000 for smaller companies and $1,000 for individual inventors.


Beer wars

A beer company has incurred the wrath of Lucasfilm with its name for one of its German-style bock beers. Lucasfilm argues that Empire’s Strike Bock beer infringes on its trade marks for the Star Wars films. Empire has filed for a trade mark for is beer name, which Lucasfilm has opposed.

The beer has been made under that name for about seven years. "The thing is the beer is called 'Strikes Bock’, not 'Empire Strikes Bock’," David Katleski, CEO owner of Empire, told Syracuse.com. "It's 'Strikes Bock,’ by Empire."

Lucasfilm believes the beer could cause confusion. It operates a vineyard in California that makes Star Wars-themed wines.

"Applicant's EMPIRE STRIKES BOCK mark . . . so resembles Lucasfilm's previously used THE EMPIRE STRIKES BACK mark as to be likely, when used in connection with Applicant's Goods, to cause confusion, or to cause mistake, or to deceive," said Lucasfilm’s filing with the USPTO.



Dictator’s lawsuit toppled

Panamanian dictator Manuel Noriega has had his lawsuit against the creators of video game Call of Duty: Black Ops II dismissed.

Noriega, who is serving a sentence in a prison in Panama for drug trafficking, money laundering and murdering political opponents, claimed that Activision Blizzard’s 2012 game damaged his reputation by portraying him "as a kidnapper, murderer and enemy of the state". The lawsuit argued Noriega was entitled to a share of the profits from the game.

"This court concludes that Noriega's right of publicity is outweighed by defendants' First Amendment right to free expression," said Judge William Fahey of the Los Angeles Superior Court in an order this week.

Rudy Giuliani, Activision Blizzard’s attorney and former mayor of New York, commented: "This ruling is an important victory and we thank the court for protecting free speech."

He added: "This was an absurd lawsuit from the very beginning and we're gratified that in the end, a notorious criminal didn't win. This is not just a win for the makers of 'Call of Duty’, but is a victory for works of art across the entertainment and publishing industries throughout the world."

Noriega heard about the game from his grandchildren. "Noriega fails to provide any evidence of harm to his reputation," said Judge Fahey. "Indeed, given the world-wide reporting of his actions in the 1980s and early 1990s, it is hard to imagine that any such evidence exists."



Don’t Have to Give It Up

A judge has said Marvin Gaye’s estate "made a sufficient showing that elements of Blurred Lines may be substantially similar to protected, original elements of Got to Give It Up".

Robin Thicke and Pharrell Williams initiated court proceedings in August 2013 after Gaye’s estate alleged their hit song Blurred Lines infringed Got to Give It Up.

Judge John Kronstadt of the Central District of California denied the musicians’ motion for summary judgment. He noted the "substantial similarity" of the "signature phrases, hooks, basslines, keyboard chords, harmonic structures and vocal melodies".

In September it emerged that Robin Thicke claimed in sworn testimony that he was high on Vicodin and alcohol when he made the song with Williams, and that Williams "wrote almost every single part of the song".



Zorro’s rights remain masked

An attempt to free Zorro from copyright has failed, reports The Hollywood Reporter.

Robert Cabell had written "Z – The Musical of Zorro" after agreeing a deal to put on a production in Germany. This attracted the interest of Zorro Productions, which owns the rights deriving from Johnston McCulley’s first Zorro story published in 1919.

Cabell brought a lawsuit in the Western District of Washington in May 2013 seeking a declaration of non-infringement. In it he claimed Zorro Productions "have built a licensing empire out of smoke and mirrors," and "fraudulently obtained federal trade mark registrations for various Zorro marks and falsely assert those registrations to impermissibly extend intellectual property protection over material for which all copyrights have expired."

As The Hollywood Reporter article notes, the case is similar to that of Leslie Klinger, who sought to free most of Arthur Conan Doyle’s Sherlock Holmes stories from copyright. Klinger won that case, even receiving attorneys fees after Judge Richard Posner slammed the estate for "a form of extortion".

However, in that case Doyle’s estate was slow to respond to the lawsuit and argued that works published after 1920 were protected by those published before then.

In the Zorro case, Zorro Productions simply argued that the issue should not be decided in Washington. Judge Ricardo Martinez agreed, concluding that Zorro Productions’ licensing agreements weren't expressly aimed at Washington.

"Accordingly, the Court finds that Plaintiff has not shown a sufficient nexus between his claims and ZPI’s forum related activities to permit this Court to extend the long arm of its jurisdictional authority to ZPI," wrote Judge Martinez.




Also on the blog this week:

Highlights from the AIPLA annual meeting

Shout if you want a grace period

Copyright reform: it’s not about what or how, but who



And in our news and analysis:

Canadian bill introduced to amend Patent Act and Industrial Designs Act

Delaware court finds ZTE infringed three InterDigital patents

Patent Quality Initiative files nine IPR petitions

Manatt adds trade mark partner in LA

Pillsbury adds IP litigator in Northern Virginia

Most EU member states yet to transpose Orphan Works Directive

Unitary Patent and UPC resources – a guide

EU Orphan Works Database unveiled

UK launches orphan works licensing scheme

Paul Hastings expands in London

OHIM to crack down on non-payers

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ICYMI: Our report on this week's #SCOTUS ruling in Star Athletica v Varsity Brands https://t.co/Rf3TWplNUrhttps://t.co/TrZ5YcvKQr

Mar 24 2017 01:35 ·  reply ·  retweet ·  favourite
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@Oblon_IP @PatentPostGrant Congratulations Scott! #mipawards

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@KellyIPllp Well done to all at the firm!

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