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Duran Duran, Iceland, USPTO, GIPC IP Champions, Canada copyright – the week in IP



Michael Loney


Duran Duran losing a copyright case in the UK, a trade mark dispute between a supermarket and the Icelandic government, regime change at the USPTO, the Global Intellectual Property Center revealing its IP Champions, Music Canada appearing to change its tune, and the slowdown of 2015’s top US district court patent case filer were in the recent intellectual property headlines

Also on the blog in the past week were:

Sponsored post: Copyright notices as prima facie evidence of public accessibility

The latest IP developments in Brazil and Mexico

We’ve posted the following articles in the past week (log in via subscription or free trial): 

Unitary Patent and UPC: A progress report (November 2016)

Interview: Randi Karpinia, Meg Boulware and the AIPLA Women in IP Law Committee

2016 Canada IP Report reveals fall in patent applications

Live from Palo Alto: the 2016 International Women's Leadership Forum

Canada roundup: Blacklock’s copyright loss, promise doctrine at the Supreme Court, Quebec signage, CETA, CanCon

UK to ratify UPC Agreement despite Brexit - reaction (UPDATED)

Analysing the Federal Circuit’s Unwired Planet ruling on CBMs at the PTAB

Wild Boys lose it

Duran Duran (credit Luz A Villa)
Duran Duran (photo: Luz A Vila)
British band Duran Duran were “outraged and saddened” after losing a UK High Court battle to reclaim the US rights to some of their biggest hits, reports the BBC.

"We are shocked that English contract law is being used to overturn artists' rights in another territory," said founder member Nick Rhodes.

The band argued that US copyright laws gave the right to call for a reversion of copyright after 35 years. Gloucester Place Music, part of Sony-owned EMI, argued that English laws of contract stopped the band from doing so.

"This has not been about seeking to challenge the US laws on copyright terminations, but simply a contractual issue in the jurisdiction of the UK courts to clarify the parties' rights on various songs," said an EMI statement.

US copyright law gives songwriters “an inalienable right” to call for a reversion of copyright after 35 years. In 2014, band members served notices with respect of 37 songs. Gloucester Place Music argued in court that Duran Duran had breached music publishing agreements by serving notices to terminate the grant to the company of US copyrights in the first three albums.

Mr Justice Arnold said the arguments were “finely balanced”. He said: “I conclude that the defendants have acted in breach of the agreements by serving the notices, or, where they have not yet taken effect, will do so if they are not withdrawn.” 

The judge wrote: “The language of clause 3(a) is wide and general. Particularly when read together with clause 4, I consider that what the language would have conveyed to a reasonable person having the relevant background knowledge was that the parties' intention was that the ‘entire copyrights’ in the Compositions should vest, and remain vested, in the Claimant for the ‘full term’ of the copyrights. That implicitly precludes the Group Members from exercising rights under US law which have the result that the Claimant's ownership of the copyrights is brought to an end prior to their expiry.”

The IPKat blog had a good analysis of Arnold's decision.

Frosty relations over Iceland

Iceland-logoUK supermarket Iceland has hit back at the Icelandic government, saying it is “not willing to hold any serious discussion” in a trade mark dispute, reports the BBC.

Iceland Foods holds an EU trade mark for Iceland, which the country believes prevents its firms from describing their products as Icelandic.

"Iceland Foods had Icelandic majority shareholders and Icelandic representatives on its board for seven years to 2012,” the BBC quoted Iceland Foods CEO Malcolm Walker saying. “At no point in all those years did any representative of Iceland (the country) raise the slightest concern about our company's branding.”

The supermarket blocked an attempt to register “Inspired by Iceland” but claimed it did not know it came from the Icelandic government.

The Icelandic foreign ministry said it was pursuing legal action to invalidate the Iceland trade mark. "The registration of a country name that enjoys highly positive national branding to a private company defies logic and is untenable," it said.

A USPTO regime change history lesson

USPTO logoThe IPWatchdog blog ran an interesting guest post from John White, director at Soryn IP, detailing how previous new US administrations have handled appointing USPTO directors.

The Reagan administration was typical of what came before it by appointing a commissioner near the end of his career from industry stalwarts, with the USPTO well run by careerists and not interfered by and large by the political appointees.

“That changed with the Clinton era when Bruce Lehman was appointed. He was not in a career capstone phase, but was younger (more ambitious/energetic perhaps) and sourced not from industry, but from Capitol Hill,” said White. “He was also determined to change the PTO from what it was; a staid backwater of engineers, to a more representative and progressive government agency. This was all very new fangled for the PTO, and in some ways it struggled, but in other ways it succeeded.”

Q Todd Dickinson, James Rogan and Jon Dudas were to follow before the appointment of David Kappos. He was instrumental in the creation of the rules backing for the AIA.

After Kappos’ departure, White says the USPTO “then drifted towards being a very user unfriendly operation that has become a centre of suspicion and cynicism”. With Michelle Lee soon to depart, a new director will be nominated.

“My advice is to revert to the Kappos ethos of a user friendly and responsive set of careerists, with the political operators standing to one side, and to legislate (if necessary) a Reissue Off-ramp for patents caught up in PTAB proceedings,” suggested White. “If the PTAB will not indulge amendments, and they likely won’t inasmuch as they are not “examiners”, then let the patent owner solve the issue another way, i.e., through reissue. I would also remake the PTAB to include far more careerist examiners.”

A $710m showdown at the USPTO?

Lee_Michelle_AIPLA15
Michelle Lee
Speaking of Michelle Lee, Hal Wegner brings gossip that her October proposal to increase USPTO fees by $710 million runs square into the position taken by Republican Congressional leadership.

“According to an informed source, there could be a showdown on this issue if Ms Lee refuses to back down from her proposed fee increase,” says Wegner.

The House Republican leadership led by Majority Leader Kevin McCarthy last month sent a letter to all agency heads warning them against “finalising pending rules or regulations in the [Obama] Administration’s last days”.

We are the IP Champions

The US Chamber of Commerce’s Global Intellectual Property Center (GIPC) announced its 4th annual 2016 IP Champions last week. These are intended to showcase the economic and cultural impact of intellectual property.

gipc_logoThe IP Champion Award for Public Service was Senator Orrin Hatch, who is chair of the Senate Finance Committee and senior member and former chairman of the Senate Judiciary Committee. “Senator Hatch has long been an advocate for strong IP protections for American creators, and most recently championed the bipartisan Defend Trade Secrets Act of 2016, which was signed into law by President Obama in May 2016,” noted GIPC.

The IP Champion Awards for Excellence in Innovation went to Microsoft’s “Make What’s Next” Campaign and Pfizer’s Ibrance Team.

Microsoft’s advertising campaign was launched this year to encourage girls to enter tech fields and become the next great inventors. The campaign was timed to coincide with International Women’s Day. To address the reality that women hold only 7% of patents in the US, Microsoft also launched a patent programme to give select female inventors support in patenting their ideas.

In 2016, Pfizer released a new treatment for breast cancer. The drug’s accelerated approval by the FDA indicated its need among many patients across the globe and the Ibrance team’s innovative work. Ibrance is the first CDK 4/6 inhibitor in the US market.

The IP Champion Award for Excellence in Enforcement went to the National Intellectual Property Rights Coordination Center for its “Operation Apples and Oranges” investigation, which exposed a counterfeit cell phone parts distribution network supplying counterfeit parts to 30 individuals and 40 businesses nationwide.

The IP Administration Champion was Danny Marti of the Office of the US Intellectual Property Enforcement Coordinator. The IP Champion Awards for Excellence in Advocacy went to Barbara Kolm of the Austrian Economics Center and The Creative Coalition.

Music Canada changes its tune

Canadian blogger Michael Geist brings news of a reversal in copyright lobbying position from Music Canada.

After years of backing Canada implementing and ratifying WIPO’s internet treaties ahead of Canada’s copyright reform in 2012, Music Canada is now saying the drafters of the WIPO treaties were just guessing – and had guessed wrong.

Graham Henderson, head of Music Canada (formerly the Canadian Recording Industry Association), said in a speech to the Economic Club of Canada last month: “The people setting the rules for our world were well-intentioned and clever; but the reality is that they were guessing … We have now had 20 years of experience with those early WIPO guesses. How are we doing?

Geist says Henderson outlined the case for why WIPO had guessed wrong, with benefits to intermediaries and losses to creators, and the emergence of a “value gap”. Henderson defined this as “the gross mismatch between the volume of music being enjoyed by consumers and the revenues being returned to the music community.”

Geist commented: “Music Canada may wish to paint the Canadian and US digital experiences as the same, but the reality is that they are different. Canada did not enact the DMCA in 1998 nor create the quid pro quo that is suggested in Henderson’s speech. Rather, it gave Music Canada what it asked for, implementing and ratifying the WIPO Internet treaties in an overly restrictive manner that created a fair dealing gap that persists to this day.”

He added that if the industry wishes to re-examine the decision to ratify those treaties on the basis that it was all just a wrong guess, “the starting point would be to fix the imbalance on fair dealing in the analog and digital worlds that has undermined Canadian innovation and the commitment to balance found in copyright law.”

The slowdown of 2015’s biggest patent case filer

The EDTexweblog ran an interesting analysis of the slowdown in filing by Dallas lawyer Austin Hansley.

Beginning in 2012, Hansley started appearing as counsel for plaintiffs in patent cases, rising to a peak of 650 cases filed in 2015. His law firm filed the most district court patent cases in 2015, more than 150 cases ahead of the next law firm.

More than 400 of the cases in 2015 were in the Eastern District of Texas alone. This year, however, Hansley has filed only 11 cases in the district, according to Michael Smith on the EDTexweblog.

Hansley's cases have had a number of recent setbacks. A big client, eDekka, had its patent invalidated in the Eastern District of Texas, bringing more than 100 cases to an end. In March this year, a judge in the District of New Jersey found the claims of one of Hansley’s clients also were not patent eligible and assessed Section 285 sanctions. This Autumn, Hansley’s last two Eastern District of Texas cases ended when Judge Payne gave Marshall Feature 30 days to find new counsel (the cases were dismissed with prejudice when the plaintiff failed to do so). In the Northern District of Texas, following a temporary suspension, Hansley did not file a report to demonstrate “his competence to resume the privilege of representing clients” in the region. Judge Lynn responded with an order permanently prohibiting Hansley from practicing in the court.

In brief

-          The Slants have a date for their Supreme Court case. Oral arguments in Lee v Tam will take place on January 18.

-          Fortune ran an analysis asking: “Are blockchain patents a bad idea?”

-          The Federal Circuit docketed more appeals arising from the USPTO than from the district courts for the fiscal year ending October 31, reports Patently-O. The Federal Circuit received 471 appeals arising from the district courts and 560 appeals arising from the USPTO.

-          Jay Z and Timbaland have accused the nephew of Egyptian composer Baligh Hamdy of racial insensitivity in the appeal of the Big Pimpin’ copyright decision, according to The Hollywood Reporter. Lawyers for the hip hop artists objected to an analogy of the music from Jaws being used in a recruitment video for the Ku Klux Klan.

-          Walmart was quietly hit with a $32 million trade mark infringment judgement in November over its Backyard brand, according to Law360’s Bill Donahue

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Our editor James Nurton will be attending the @MarquesIP conference in Prague #marques17 from tomorrow. Say hi if y… https://t.co/FRjH4VdKuk

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#ipwomen member Lara Kayode has written a paper on 5 common questions about IP protection in Africa (KE, NG & ZA) https://t.co/GqpObS9lk6

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