This week in IP: UK filings unveiled, Amazon goes to Singapore, EA pledges video game patents
Managing IP rounds up the latest patent, trademark and copyright news, including some stories you might have missed
Four UK filing trends revealed
A declining interest in UK patent filing has been laid bare by four graphs picked by Managing IP.
The data, taken from a UKIPO report called The changing profile of users of the UK patent system, encapsulates four trends of interest and is supported by lawyer analysis.
Published on August 9, the report itself looks at long-term filing both in the UK and at the EPO and discusses some of the reasons behind the changes.
Other Managing IP stories published this week include:
Amazon IP accelerator now available in Singapore
Amazon launched its IP accelerator programme in Singapore on Thursday, August 26, to help small and medium-sized businesses in the region secure registrations for their brands and take action against infringement on the Amazon website and other platforms.
The participating businesses will get early access to Amazon’s brand protection tools, which will enable them to protect their brands even before they get their trademark registrations.
The programme will also connect businesses with local law firms offering competitive and pre-negotiated rates on brand protection services. Singapore law firms Ella Cheong, Viering, Jentschura & Partner, Francine Tan Law Corporate and Tan Peng Chin have signed up to offer services.
Bernard Tay, head of global selling for southeast Asia at Amazon, said that securing IP rights was essential for every business owner, especially those interested in global trade.
"Many small and medium-sized companies in Singapore have grown their businesses with Amazon, reaching millions of customers on Amazon.sg and Amazon's stores around the world.
“We are pleased to introduce the IP Accelerator programme, which will build on that success by protecting their intellectual property and set them up for long-term growth."
Prior to this announcement, the IP accelerator programme had been made available in the US, Europe, Japan, Canada, Mexico, and India.
EA pledges to share patents for accessibility
Electronic Arts, a California-based video game company, pledged not to enforce five patents on Tuesday, August 24, that related to technologies designed to improve accessibility of games to people with disabilities or medical issues.
The patents cover technologies that improve the visibility of colours to optimise for vision deficiencies and generate personalised music to comport with a user’s hearing issues, among other things.
The company said that the industry needed to work together to break down barriers. “The accessibility patent pledge we launched today is intended to help inspire and encourage others to introduce pioneering and creative technologies. We hope others will join us in sharing their patents.”
The company said, however, that it reserved the right to terminate this pledge for a specific party if that party sued it or its affiliates for patent infringement.
EA’s decision to share its patents is part of a larger trend of businesses pledging not to enforce their patents when it comes to certain public interest issues.
On August 4, Hewlett Packard Enterprise, Microsoft, and Facebook launched the Low Carbon Patent Pledge, in which signatories agreed to make patented technologies that had applications in low carbon innovations freely available.
And last year, organisations and businesses signed the Open COVID pledge, in which they agreed to make their IP free of charge for use in ending the COVID-19 pandemic and minimising the impact of the disease.
Second Circuit says Andy Warhol painting still not fair use
The US Court of Appeals for the Second Circuit ruled on Tuesday, August 24, that the precedent set in Google v Oracle did not alter one of its copyright decisions.
The Second Circuit had previously ruled that Andy Warhol’s paintings based on a photograph taken by Lynn Goldsmith of the late artist Prince was not covered by fair use, overturning the District Court for the Southern District of New York’s 2019 ruling.
After the US Supreme Court ruled that Google’s use of Oracle’s code was fair, the Andy Warhol Foundation for the Visual Arts filed a petition for en banc rehearing and argued that the SCOTUS case invalidated the Second Circuit’s earlier reasoning.
The Second Circuit said it granted this petition partly because Google v Oracle was SCOTUS’s first major decision on fair use in some time.
But it added that the Andy Warhol Foundation misinterpreted both courts’ opinions as adopting hard and fast categorical rules of fair use, when in reality, both venues recognised that these decisions were highly fact specific.
It also pointed out that SCOTUS emphasised that the unusual context of Google v Oracle could make it less applicable to other situations.
Before SCOTUS ruled on Google v Oracle, the Motion Picture Association filed an amicus brief in that case, where it urged the court to avoid resolving the fair use issue in a way that could negatively impact cases involving traditional expressive works.
Rotten luck: Sex Pistols singer loses UK IP battle
Sex Pistols frontman Johnny Rotten, whose real name is John Lydon, lost a legal battle at the England and Wales High Court on Monday, August 23, in which he was trying to stop his former bandmates from exploiting their punk group’s IP in an upcoming TV series.
The dispute was brought by former Sex Pistols band members Paul Cook and Steve Jones on March 22 in an effort to establish and enforce Lydon’s obligations under their Band Members Agreement (BMA).
Lydon, Cook, Jones, and Glen Matlock, another former band member, entered into the agreement in February 1998, which provided a mechanism enabling band members to agree through majority decision how the Sex Pistols’ IP rights should be exploited.
The producers of the television series wanted to use the Sex Pistols musical material in the series – a proposition that Cook and Jones backed but Lydon resisted, arguing that his former band members were estopped from using the BMA because they’d never relied on it before.
In his judgment, Sir Anthony Mann determined that the plaintiffs were not estopped from enforcing Lydon’s obligations under the BMA because the former frontman has not sufficiently demonstrated that he believed the BMA had no effect or that unanimity was required in band decisions.
Jones and Cook were thus permitted to provide the consent necessary for the exploitation of the band’s IP in the TV series.
Tenth Circuit says Lanham Act applies to foreign activity
On Tuesday, August 24, US Court of Appeals for the Tenth Circuit affirmed in part, reversed in part and remanded a judgment from the District Court for the Western District of Oklahoma that the Lanham Act applied to foreign sales activity.
In doing so, the Tenth Circuit upheld the damages award from the lower court for $113 million to plaintiff Hetronic, a manufacturer of radio control systems for construction equipment.
The defendants Hetronic Germany, Hydronic, ABI Holding, Albert Fuchs, Abitron Germany and Abitron Austria, none of which were US citizens, distributed Hetronic’s equipment in Europe.
Hetronic entered into a distribution and licensing agreement with Hydronic, an Austrian company managed by Fuchs, in 2006, and later established a second distribution and licensing agreement with a German company that was eventually purchased by Fuchs.
After re-evaluating one of these old research-and-development agreements between the parties, the defendants concluded that they owned the rights to Hetronic’s trademarks and other intellectual property, rather than Hetronic.
The defendants then began manufacturing their own products—identical to Hetronic’s—and selling them under the Hetronic brand in Europe.
Hetronic sued Hetronic Germany and Hydronic in the US in June 2014. On appeal, the defendants argued that the Oklahoma court inappropriately exercised personal jurisdiction over four of the six defendants and that it erred in concluding the US’s Lanham Act applied extraterritorially to their foreign activities.
The Tenth Circuit disagreed, concluding that the district court was correct to have found that it had personal jurisdiction over Fuchs and ABI pursuant to the Federal Rules of Civil Procedure.
Ex-LaTele chief thwarted in Venezuela copyright drama
A US court has ruled that the former president of LaTele, a Venezuelan TV network that was previously embroiled in copyright litigation with Spanish-language station Telemundo, was properly removed from his position.
In its decision last Friday, August 20, the US Court of Appeals for the Eleventh Circuit affirmed an earlier court ruling that Fernando Fraiz no longer represented LaTele.
The litigation itself, in which LaTele said one of Telemundo’s telenovelas (soap operas) infringed its copyright, was settled in 2019.
Although Fraiz was president when LaTele sued Telemundo in 2012, a Venezuelan criminal court removed him two years later and picked a government board called La Junta to run the company.
In 2015, Fraiz filed a motion at the US District Court for the Southern District of Florida claiming that La Junta’s control over LaTele was illegitimate and that the Venezuelan judge overseeing the criminal case was corrupt.
The Florida court ruled against Fraiz in 2018, finding that the Junta had complete authority over the company, and discharged Fraiz.
On appeal from Fraiz, three judges ruled last week that the former president lacked standing.
In the ruling, a three-judge panel wrote: “A protracted legal battle, spanning many years, ultimately devolved into a battle over control of this otherwise ordinary copyright case.”
The latest ruling appears to close a case in which LaTele had claimed that Telemundo’s telenovela ‘El Rostro de Analia’ unlawfully copied LaTele’s programme ‘Maria Maria’, first released in 1990.