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In our news and analysis:
Ninth Circuit rejigs Dancing Baby
The Ninth Circuit last week amended its opinion in the
closely-watched "Dancing Baby" case, as well as denying both
parties’ requests for a rehearing.
amended order kept the affirmance of the district
court’s denial of cross motions for summary
judgment relating to the propriety of Universal
Music’s takedown notice under the DMCA, but the
opinion and dissent differed from the original in a number of
The Ninth Circuit held that copyright holders are required
to consider fair use before sending a takedown notice. But the
amended opinion removed a statement that failure to consider
fair use "raises a triable issue as to whether the copyright
holder formed a subjective good faith belief that the use was
not authorised by law".
A WilmerHale analysis noted: "In a footnote, the panel
majority explained that 'under the circumstances of this
case’ the relevant question – of whether
Universal’s inquiry was sufficient to form a
subjective good faith belief that Lenz's video infringed
Prince's copyright – was appropriate for the jury,
rather than the court."
The court also eliminated a passage discussing the nature of
the fair-use inquiry that a copyright holder must conduct to
satisfy the good faith belief requirement. WilmerHale noted the
deleted language included the following statements:
- "a copyright holder's consideration of fair use need not
be searching or intensive;"
- "formation of a subjective good faith belief does not
require investigation of the allegedly infringing
- "the implementation of computer algorithms appears to be
a valid and good faith middle ground for processing a
plethora of content while still meeting the DMCA's
requirements to somehow consider fair use;" and
- "additional discussion of potentially sufficient
algorithms and screening procedures."
Dorsey & Whitney’s Michael Keyes noted the
amended opinion raises a number of questions.
"What does this removal mean for the Dancing Baby Doctrine?"
he said in an analysis. "As for the 'searching or
intensive’ language, it’s probably
fair to say that the Court believed this proviso made its 'fair
use’ holding too narrow. Its removal also
provides less clarity as to how much consideration must be
given to the fair use defence by the copyright holder before
issuing a take down notice. As for the removal of the language
regarding 'implementation of algorithms,’ this,
too, is significant. Under the prior decision, the Court
appeared to be conceptually on board with content owners
harnessing technological measures to locate infringing content
and to issue take down notices through the DMCA process. The
removal of this language certainly raises additional questions
about the propriety of that automated practice."
RPX shareholder asks for CEO to be replaced
Mangrove Partners, the fifth-largest shareholder in RPX
Corporation, has delivered a letter to the board, nominating
three individuals for election at the upcoming 2016 annual
"We wish to express our great
displeasure with numerous important aspects of the performance
of RPX Corporation," said
the letter signed by Nathanial August, president of
Mangrove. "Unfortunately, based on our disappointing recent
meeting with the Company's CEO, it appears that current
management is not just unaware of its poor track record, but
actually defends it."
It continued: "With the Company's stock having declined 44%
since its IPO and with the Board having made no visible changes
to what we see as an obviously flawed strategy, we had no
choice but to nominate a slate of highly qualified candidates
to replace the current class of directors, including the
Uniloc makes offer for Acacia
ARC Acquisition Company and its affiliate Uniloc
made an offer to acquire all the outstanding shares of Acacia
They are offering a price of $3.72 per share, which is a
5% premium to the closing price on March 11 of $3.53 per
share and represents a market capitalization of approximately
"Uniloc spent several years developing a proprietary
technology platform and business model which allows us to
operate at comparatively higher margins and lower costs, in
almost every respect. We look forward to bringing this
technology to scale with Acacia's patent assets and
business," said Uniloc CEO and co-founder Craig
Uniloc in August last year announced a merger with
Marathon Group, but the deal was called off in February.
Triple trouble for Skechers
Trademark and Copyright Law Blog this week
reported on a recent granting of a motion brought by
Adidas in the District of Oregon for a preliminary
injunction against footwear company Skechers. The injunction
blocks sales of a three-stripe sneaker that Adidas says
infringes its three-stripe registered trade mark and one of
its sneaker designs.
This follows the European Union recently giving an even
wider range of protection for the Adidas design, holding that
a two-stripe sneaker by Shoe Branding Europe was confusingly
similar to the three-stripe design.
"While stripes and other shapes may seem commonplace for
fashion products, the US District Court for the District of
Oregon has held multiple times that Adidas’
3-stripe design is a famous trademark," commented Foley Hoag.
"Therefore, Adidas likely enjoys a wider range of legal
protection, particularly against sneaker designs bearing
parallel stripes on the side of the product. Thus, a small
difference between the number of stripes, whether it be 2
stripes, or even 4 stripes, may have little bearing on the
infringement analysis, especially if the overall sneaker
design looks similar to an Adidas product."
US stays top of WIPO filing rankings
has extended its long-standing position as the top source
of international patent applications via WIPO.
"Innovators based in the US have filed the largest annual
number of international patent applications for 38 years
running," commented WIPO. "Still, large increases in
patent-filing activity by China-based innovators accounted
for much of the overall growth."
The US also topped the list of biggest filers of
international trademark applications via WIPO’s
Madrid System and continued its rise in the rapidly expanding
global industrial design Hague System also administered by
WIPO, following its recent accession along with Japan and the
Republic of Korea.
The US, with 57,385 international patent applications,
remains the largest user of the PCT, despite an annual drop
of 6.7% in 2015 – "likely due to an unusually large
number of filings in 2014 that was linked to changes in the
US patent system", said WIPO.
It is followed by Japan (44,235 PCT filings) and China
(29,846). Overall, growth in filings was driven by China,
Japan and the Republic of Korea. As a result, Asia has more
than doubled its share of all PCT applications filed since
2005 and now accounts for 43% of the total.
Among the top 15 origins, growth was registered in China
(+16.8%), the Republic of Korea (+11.5%), Israel (+7.4%),
Switzerland (+4.4%), Japan (+4.4%) and the Netherlands
(+3.6%). Like the US, Finland (-12.1%) and Canada
(-7.2%) saw fewer filings than in the previous year.
Yosemite trade mark dispute heats up
The National Park Service has asked the Trademark Trial
and Appeal Board to cancel trade marks held by a company that
previously ran the hotels, restaurants and outdoor activities
at Yosemite National Park, reports The Washington Post.
Delaware North says the effort to cancel the trade marks
was "a tactic" in the litigation between the two parties.
Delaware North filed a lawsuit disputing the bidding process
for running the hotels, restaurants and activities at the
The trade marks include "Yosemite National Park, the name
"The Ahwahnee" and "Curry Village".
"Delaware North offered to let the park keep the names
while the dispute played out in court," reports The
Washington Post. "But rather than risk an injunction that
might interrupt service at Yosemite, the park demurred,
opting instead to temporarily change every sign and logo at a
cost of $1.7 million."