This week in IP: IP owners debate ADR, Clarivate signs Explore IP deal, SCOTUS accepts H&M copyright case

In-house counsel at luxury brands and other companies told Managing IP this week that there was a market for using alternative dispute resolution to resolve online disputes, but that they were not convinced it could provide an answer to all their woes.

With the courts having so far provided inconclusive answers and platforms remaining coy, they said, intellectual property owners were no closer to having clarity on one of their biggest challenges – e-commerce platforms being held liable for infringements and efficiently removing fakes.

One source said alternative dispute resolution should be considered because platforms often claimed they lacked the legal skills to determine whether there had been IP rights infringements and – if there had – whether they should be deemed liable.

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The IP technology company Clarivate announced on Thursday, June 3, that it had entered into an exclusive commercial partnership with Explore IP to integrate Derwent patent data into its platform.

Explore IP is an IP platform built by Innovation, Science and Economic Development Canada that highlights public-sector patents owned by the Canadian government, academia and other public research bodies.

Integrating patent data from Clarivate and the Derwent Word Patents Index (DWPI) into Explore IP will allow companies and inventors to find relevant patents for their inventions and identify licensing opportunities.

“We are pleased to support the Canadian government in their innovation success, which includes supporting the Explore IP initiative with our enhanced Derwent patent data,” said Jeff Roy, president of the IP group at Clarivate.

“More than ever before, information and insights are the key to driving innovation and growth and support smarter decision-making.”

Explore IP’s users will be able to access DWPI patent abstracts and investigate collaboration opportunities with Canadian research bodies. At present, Explore IP features research from almost 60 Canadian public research institutions, including the Université de Montréal and the National Research Council.

“Through this partnership with Clarivate, we will improve the searchability of the IP database, produce more potential matches for businesses and entrepreneurs looking for technologies to commercialise, and help public-sector organisations increase the marketability of their technologies,” said François-Philippe Champagne, minister of innovation, science and industry for Canada.

“We will always support Canadian entrepreneurs and businesses, while creating an environment where innovation can thrive.”

The US Supreme Court will hear a copyright case between Unicolors and H&M, it emerged on Tuesday, June 1.

In its appeal, fabric designer Unicolors is seeking to challenge the Court of Appeals for the Ninth Circuit’s ruling last May that reversed a jury verdict finding Swedish multinational clothing firm H&M liable for copyright infringement.

Now that SCOTUS has accepted the case, it will decide whether the Ninth Circuit properly construed the language of Section 411 under Title 17 of the US Code in determining that the district court was required to refer Unicolors’ copyright registration to the US Copyright Office.

The court made this determination on the basis that the registration contained inaccurate information, but Unicolors argued there was no evidence that the inaccurate information contained any indication of fraud or material error regarding the work covered by the copyright registration.

In 2011, fabric design corporation Unicolors applied for and received a copyright registration for a group of designs in a 'single-unit filing' from the US Copyright Office. Nine of the designs were 'confined' designs, meaning that they were created for specific customers and released to the public after the customers were allowed to use them.

The case was originally filed by Unicolors after it discovered that H&M had started selling a jacket and skirt using the design name ‘Xue Xu’, on the basis that H&M’s design was similar to its own.

A jury found H&M liable for wilful infringement, but the clothing company appealed on the basis that Unicolors’ copyright application included false information. The registration set out that all of the designs were first published on January 15 2011, when nine had been confined designs.

The Supreme Court has yet to announce when it will hear the case.

A deal for a COVID-19 IP waiver faced another setback on Monday, May 31, when delegates at the World Trade Organization voiced scepticism over a new draft submitted by India, South Africa and other developing countries.

A group of around 10 nations, including the UK, expressed concern about the scope and duration of the new draft and asked for additional time to study the proposal. This is the 11th time since the waiver was proposed in October that members have convened to discuss this issue.

A source close to the talks told Reuters that opposition to the waiver was hardened because it included wording that expanded the mandate of the waiver beyond vaccines to include diagnostics and therapies, and that the duration of the waiver was set for three years.

“There is an ocean between this waiver proposal and what was suggested by the US,” a source told Reuters. “There's definitely no quick resolution for this.”

Last month, President Joe Biden shocked the world when he announced his support for a COVID vaccine IP waiver.

Opponents including the UK, the EU and Switzerland have voiced concern about whether waiving IP rights would increase access, while other WTO members have argued that sharing IP rights is one of the many necessary steps needed to bolster vaccine distribution.

The EU is set to present an alternative plan to bolster vaccine distribution to the WTO in early June.

Twitch has received 1,000 individual copyright notices, in the music industry’s latest clampdown on infringement on the video game live-streaming service, it emerged last Friday, May 28.

E-sports consultant Rod Breslau shared a message on Twitter that purported to be from Twitch. It said music publishers had filed takedown claims under the Digital Millennium Copyright Act (DMCA), all of which targeted videos on demand (VoD).

In the vast majority of cases, the message added, the notices targeted streamers listening to background music while playing video games or conducting so-called in-real-life streaming.

Twitch said further notices were likely, although it was actively speaking with labels to find solutions.

The move represents the latest efforts to tackle copyright infringement on the popular streaming service. Twitch posted a blog in November 2020 saying that, six months earlier, record labels began sending thousands of DMCA notices each week.

Before then, Twitch received less than 50 a year.

“This means two things. One, if you play recorded music on your stream, you need to stop doing that. And two, if you haven’t already, you should review your historical VoDs and clips that may have music in them and delete any archives that might,” the blog author added.

At the time, Twitch created educational resources for its users and urged them to keep learning about copyright. It also admitted it had been surprised by the “avalanche” of notices sent to streamers.

According to Statista, Amazon-owned Twitch is thought to have nearly 10 million active streamers a month. 

The EPO’s Enlarged Board of Appeal has postponed its keenly awaited hearing into the legality of mandatory video conferences for oral proceedings.

In a decision taken on Friday, May 28 – the same day that it was supposed to consider the substantive issues in the referral – the EBoA decided to delay the hearing.

The EBoA accepted a request for delay from the opponent, who claimed it had not been given enough time to consider submissions by EPO president António Campinos. The opponent said it had only been notified a few days before the hearing was due to begin.

A new start date of July 2 has been scheduled.

The hugely controversial case (G1/21) concerns whether oral proceedings at the EBoA can be conducted by VICO without the consent of all parties.

The EBoA first confirmed it would hear the matter in February this year. Since then, 48 amicus curiae have been filed from companies including BASF, Philips, Bayer and Siemens.

In fact, prior to the original scheduled start date of May 28, the EBoA also responded to impartiality concerns by changing the composition of the panel hearing the dispute.

This included a grievance from one patent attorney association that BoA president Carl Josefsson, who was involved in the drafting of the article (Article 15a) that allowed for VICO hearings, was due to sit on the EBoA panel hearing the dispute.

In response, the EBoA issued an interlocutory decision last month in which it found there was a justified fear of partiality in the case of Josefsson. He was replaced by EBoA member Fritz Blumer.

Neither the European Patent Institute (which made the complaint) nor the EBoA had reason to suspect bad faith on the part of Josefsson.

A review of the patents system in Australia – which included assessing the barriers that small and medium-sized enterprises face when trying to protect their IP – has concluded that a new small claims court should be set up.

A report, published last Thursday, May 27, by Australia’s Department of Industry, Science, Energy and Resources, said a specialist IP court with capped times and charges should help counteract a “David and Goliath” issue where SMEs feel they cannot compete in litigation against large opponents.

The report says the court should be modelled on the Intellectual Property Enterprise Court (IPEC) – a division of the England and Wales High Court that predominantly hears small claims. 

According to a note published by Australian firm Pearce IP, the report states that the UK’s IPEC is generally regarded as a success in the sense that it provides expedited and low-cost litigation and is seen as integral to the enterprise culture of the UK. 

The report recommends “that the IP practice of the Federal Court of Australia be enabled to provide a stream for smaller disputes along the general lines of the Intellectual Property Enterprise Court of the UK, in order to provide at least one avenue for expedited and inexpensive trial processes”.

Among the other changes outlined in the report are an arbitration system to be set up by Australia’s IP office, IP Australia, and an expert opinion service at an affordable price for those who wish to seek expert advice on their IP position (including potential infringement of another patent).