Aereo, USPTO, Thomas Pink, Victoria’s Secret, Tesla, TPP – the week in IP
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Aereo, USPTO, Thomas Pink, Victoria’s Secret, Tesla, TPP – the week in IP

Aereo claiming it is a “cable system”, the Obama Administration reportedly backtracking on appointing a USPTO director, a landmark for women barristers in UK courts, Tesla being sued for trade mark infringement in China, and two letters criticising the TPP were among the intellectual property stories hitting the headlines in the past week

Below is a selection of intellectual property stories attracting interest on the internet in the past week that were not covered on (see the bottom of this blog post for the top stories published by Managing IP this week).

aereo20logo.jpg Actually, we are a “cable system”

Aereo has responded to losing its Supreme Court copyright case by attempting to embrace the ruling and reinvent itself as a cable company.

The firm suspected service after the Supreme Court ruled it infringed broadcasters’ copyright by selling subscribers a service to allow them to watch television over the internet. The Court noted “Aereo’s overwhelming likeness to the cable companies targeted by the 1976 amendments” to the Copyright Act and said it therefore needed permission to air broadcasters’ content.

But this week Aereo argued that it should be able to qualify for a “compulsory licence” that would allow it to pay royalties for the rights to broadcast content.

In a letter to US District Court Judge Alison Nathan, Aereo’s lawyers argue: "Under the Second Circuit’s precedents, Aereo was a provider of technology and equipment with respect to the near-live transmissions at issue in the preliminary injunction appeal. After the Supreme Court’s decision, Aereo is a cable system with respect to those transmissions."

It continued: “If Aereo is a ‘cable system’ as that term is defined in the Copyright Act, it is eligible for a statutory license, and its transmissions may not be enjoined (preliminarily or otherwise).”

Broadcasters are not happy with Aereo’s latest move.

Forbes quoted broadcasters as saying: “Whatever Aereo may say about its rationale for raising it now, it is astonishing for Aereo to contend the Supreme Court’s decision automatically transformed Aereo into a ‘cable system’ under Section III given its prior statements to this Court and the Supreme Court. It represented to this Court, for example, that it could not qualify as ‘a cable system’ and, therefore, that cases interpreting the application of Section III were ‘irrelevant to the issues here’.”

barack20obama.jpg Change of plan?

Recent excitement and hand wringing over the potential appointment of Phil Johnson as USPTO director may have had an effect. Gigaom this week reported that the Obama Administration has backed away from naming the Johnson & Johnson senior vice-president for intellectual property and strategy to the role that has been vacant since David Kappos left in January 2013.

Gigaom said its news of the decision to backtrack “came via a person close to the Administration, and was confirmed by several industry sources”.

The possibility of Johnson being appointed as USPTO director had been received warmly by patent practitioners but had outraged supporters of patent reform. Johnson had represented Coalition for 21st Century Patent Reform, which opposed several of the proposed changes being discussed in Congress. The Main Street Patent Coalition and the Consumer Electronics Association were among those opposed to a Johnson appointment.

For his part, Johnson last week told Managing IP that the reports were “speculation”, adding: “As far as I know, the President has not yet decided on a nominee to be PTO Director."

Women turn the courts pink


A minor landmark has occurred in the UK’s courts in the past few weeks, with the first IP trial in which both lead barristers were women (at least, so far as anyone knows). The pioneers were Charlotte May QC of 8 New Square (who took silk earlier this year) and Emma Himsworth QC of One Essex Court.


The case was a trade mark dispute between shirt retailer Thomas Pink and Victoria’s Secret, which sells clothing and accessories branded as Pink. You can see why a problem might arise, and indeed there has already been litigation between the parties in the US and Canada. Judgment is expected after the summer.

Anyone interested in promoting opportunities for women in IP may be interested in joining our recently launched Women in IP Global Network. Email to find out more.

Car trouble in China

Electric car maker Tesla has been sued in China for trade mark infringement. Zhan Baosheng registered the rights to the Tesla name before the US firm entered China. He is requesting Tesla shuts its showrooms, service centres and supercharging facilities, stop all sales activities and pay him $3.9 million in compensation, according to Bloomberg.


China’s Trademark Review and Adjudication Board last year ruled in favour of Tesla’s claim that Zhan’s trade mark was invalid. Zhan applied for the trade mark in 2006 and was granted it in 2009 for a 10-year period.

“Tesla is violating my rights every day by selling their vehicles in China,” Bloomberg quoted Zhan saying in an interview on the day he filed the lawsuit. “I want them to say sorry.”

Tesla – which made big news recently when it announced it would not sue anyone who used its patents “in good faith” – attempted to buy the trade mark from Zhan in 2012 and again in 2013, according to the story.

TPP slowdown urged

The Electronic Frontier Foundation, the global Our Fair Deal coalition, and a network of creators, innovators, start-ups, educators, libraries, archives and users have released two new open letters to negotiators of the Trans-Pacific Partnership (TPP).


“The TPP, although characterised as a free trade agreement, is actually far broader in its intended scope,” explained EFF. “Amongst many changes to which it could require the 12 negotiating countries to agree are a slate of increased rights and privileges for copyright rights holders.”

The letter writers said that with no official means of participating in the negotiations, the global community of users and innovators who will be affected by these proposed changes have been limited to expressing their concerns through open letters to their political representatives and to the officials negotiating the agreement.

Each of the two open letters focuses on a separate element of the heightened copyright regime that the TPP threatens to introduce.

Sixty-five signatories endorsed an open letter protesting intermediary copyright enforcement. EFF said countries around the Pacific Rim are being pressured to agree to proposed text for the TPP that would require them to adopt a facsimile of the DMCA to regulate the take-down of material hosted online, upon the allegation of copyright infringement by a claimed rights-holder. Industry lobbyists are pushing for an even stricter regime, dubbed "notice and stay down".

Thirty-five organizations have endorsed a letter on copyright term extension. EFF said the 20-year extension of the term of copyright protection in the US in 1998 confounded economists, and frustrated librarians, archivists and consumers, who were consequently starved of new public domain works until 2019. “Now the US intends to compound its error by extending it to all of the other TPP negotiating countries – or at least, those that haven't already yielded to bilateral pressure to extend their copyright terms. As the letter…explains, this would be a senseless assault on the public domain and on those libraries, authors, educators, users and others who depend upon it,” said EFF.

Managing IP published the following stories this week, available to subscribers and triallists:

Myanmar’s trade mark law quivers on the horizon

Effective strategies for fee motions after Octane

Asana, Canon, Dropbox, Google, Newegg and SAP reveal patent-licensing agreement

TROL Act in House seen as positive step

CJEU rules store design can constitute a trade mark

Novak Druce adds patent litigation partner in DC

Mira wins over £200,000 in damages for design infringement

Understanding open-source software – is it the end of proprietary software?

A guide to damages calculations for trade mark infringement

IP Australia rejects BP’s green colour mark application

Andersen replaces Gutierrez as IP head at Microsoft

South Sudan - Trade Mark Rights and Practices

Latest trends in Bolar exemption rules in Europe

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