Also on the blog in the past week were:
The Olympics and IP
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We’ve also posted the following articles in the
past week (log in via subscription or free
Courts get tough on intermediaries in fight against
How genuine use is treated across the EU
Sterne Kessler first law firm to 500 PTAB proceedings
US patent litigation update: July filing down 11%
The PTAB, pharmaceutical patents and reverse payments
July CBM petition filing slumps to lowest level since February
Brexit and IP: The UK IPO’s views
PTAB’s third PGR decision invalidates container
Limelight and Akamai convert $51m damages award into
Judge vacates VirnetX’s $626m damages award in
Blackberry: patent troll?
Blackberry has "entered into the patent litigation game"
with its first suit filed versus Avaya in the Northern District
reports Seeking Alpha.
complaint reveals Blackberry sent a letter to Ayaya in
December 2015 asking it to take a licence to
"The parties likely entered into a six-month standstill
agreement to negotiate an agreement (or Avaya ignored the
letter)," said IP Hawk on Seeking Alpha. "Obviously, nothing
was agreed too and BlackBerry was forced to file a suit."
BlackBerry in the suit alleges that Avaya infringed eight
patents, which have filing dates ranging from 1998 to 2011.
Ars Technica notes, Blackberry CEO John Chen said on a
conference call in May that it was in "patent licensing mode"
and eager to monetize its 38,000 patents. Last June, Cisco
agreed to pay Blackberry a licence fee for some of its
The case of their lives
A dispute between TD Ameritrade and the makers of the 1987
hit movie Dirty Dancing has been reignited,
according to The Hollywood Reporter.
Lionsgate objected to TD Ameritrade
using the tagline "Nobody puts your old 401(k) in the corner"
in an advert because it claims to own trade mark rights to
"Nobody Puts Baby in the Corner", a much-quoted line from Dirty
"In March, California federal judge Dean Pregerson threw out
trademark infringement claims as being dressed-up ones
preempted by copyright law," explained The Hollywood
Reporter’s Eriq Gardner. "On a subsequent motion
for reconsideration, Lionsgate focused on the way that the
court had dismissed a claim for trade mark dilution, meaning
that TD Ameritrade had allegedly used a famous and distinctive
mark in commerce and blurred or tarnished it."
But last week Judge Pregerson of the Central District of
California decided that such a rule was based on a statute that
was rendered obsolete by the Trademark Dilution Revisions Act
of 2006. The court said the subsequent Ninth Circuit case law
had eliminated the "identical or nearly identical" required
laid out in Jada Toys.
Pregerson wrote: "Given that the parties do not dispute a
slogan can be used as a trade mark and given Lions
Gate’s allegations that Defendants intended to use
this phrase as part of branding campaign, the cause of action
survives the Motion to Dismiss."
OpenTV, closed case
Swiss company Kudelski, the owner of OpenTV, has settled a
patent dispute with Apple that had threatened
Apple’s video streaming features in devices sold
The two companies have agreed a
patent licence agreement and dropped all pending patent
litigation between them.
Open TV sued Apple in 2014 in the Northern District of
California. Apple took the fight to the Patent Trial and Appeal
Board, which was due to issue rulings in September and
Dell pays $6m settlement
announced a settlement last week, with Dell paying $6
million to licence a remote power patent. The patent relates to
delivering power over Ethernet cables to remotely power network
connected devices, and expires in March 2020.
Network-1 had sued in the Eastern District of Texas in 2011,
with Dell one of 16 original defendants. Ten of these have
settled, with the remaining five companies being Avaya, Axis
Communications, Hewlett-Packard, Juniper Networks and
DOJ ends two-year ASCAP/BMI investigation
The Department of Justice has announced it will not change
the antitrust consent decrees that govern music performing
rights organisations ASCAP and BMI. The DOJ also concluded the
existing language of the decrees requires full-work licensing
and prohibits "fractional licensing".
"This means that for songs with
multiple songwriters (which are increasingly prevalent in
popular recorded music) any individual songwriter or
rightsholder can license the song, as long as they distribute
royalties to the other rightsholders,"
explained DISCO’s Ali Sternburg. "In a
'fractional licensing’ system, PROs would purport
to issue blanket licences only to fractions of songs, thus
requiring licensees to licence the remaining fractions from
other rightsholders. DOJ’s conclusion will
maintain important protections in the ASCAP and BMI consent
The DOJ’s investigation lasted two years. A
federal appellate court had earlier found "troubling
coordination" in music publishing.
DISCO’s Sternburg concluded the DOJ
announcement was "good news for a competitive music
marketplace", because the consent decrees are an important
mechanism for protecting competition in the music industry.
"Preserving the consent decrees and explicitly prohibiting
fractional licensing will also help alleviate the 'weaponized
uncertainty’ problem, because it will prevent
rightsholders from saying 'no’ as frequently, and
will facilitate more transactions that make more music
available on more lawful services," she said.
ASCAP and BMI process about $2 billion in royalty payments
according to The New York Times. BMI said it will challenge
the decision in federal court, while ASCAP said it would
explore legislative solutions.
USPTO has denied Whole Foods Market’s application
for "World’s Healthiest Grocery Store" because it
makes a laudatory claim or is based on exaggerated praise,
reports The Washington Post.
has signed a 3G/4G China patent licence agreement with
– Led Zeppelin has
been denied $800,000 in legal fees in the Stairway to Heaven
reports The LA Times.