This week in IP: Influencers to pay Amazon over fakes, Gilstrap tops conflicts of interest list, and more
Apple must commit to FRAND; Germany ratifies PAP protocol; EUTM and design deadline passes; Samsung and Intel denied; Jaguar and Volkswagen settle; Disney sues over Avengers rights
The curious case of the ‘Smart Voting’ trademark
An unusual chain of events surrounding a trademark application in Russia has prompted counsel to question Rospatent’s examination procedure and a related interim injunction issued by the Moscow Arbitration Court against Google and Yandex, Managing IP reported this week.
It all started when a tiny wool-selling company called Wulintertrade filed a trademark application for the logo of ‘Smart Voting’, a campaign run by jailed opposition politician Alexei Navalny, on June 29.
Rospatent swiftly granted registration for the trademark in all 45 classes available without issuing any office action on August 10, despite the mark’s association with a well-known political figure’s campaign.
What’s more, the registered trademark was immediately enforced before the Moscow Arbitration Court to stop search engines Google and Yandex from showing results for the term ‘Smart Voting’.
The timing of the entire chain of events is also intriguing, as the parliamentary elections in Russia were scheduled from September 17 to 19.
Sources suggest that although there are provisions that technically allow Rospatent to expeditiously deal with a trademark application or the relevant court to grant an injunction against search engines, the proceedings in the matter have been bizarre as neither Rospatent nor the court delved much into the merits of the trademark or the injunction application.
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Other Managing IP stories published this week include:
Australia’s design reform welcome but inadequate, say sources
FDA fixes for generic delays may not work, say patent counsel
US Patent Forum 2021: PTAB chief speaks out on review processes
Influencers apologise, agree to pay Amazon over counterfeit scheme
Amazon has settled a lawsuit against two social media influencers it accused of running a counterfeiting scheme online.
Kelly Fitzpatrick and Sabrina Kelly-Krejci will pay an undisclosed sum to Amazon, which the e-commerce platform will donate to INTA’s Unreal Campaign, an awareness programme aimed at educating young people about the importance of IP rights.
As part of the deal, the influencers apologised for promoting counterfeit products listed on Amazon through social media platforms including Instagram, TikTok, and Facebook.
“I appreciate the opportunity to resolve this dispute and to assist Amazon,” said Kelly-Krejci, with Fitzpatrick adding: “I would warn others engaged in similar conduct on social media that there will be serious consequences for their actions.”
Fitzpatrick and Kelly-Krejci will also be prohibited from marketing, advertising, linking to, promoting, or selling any products on Amazon without the platform’s permission.
They have also agreed to cooperate in Amazon’s investigation and legal action against the suppliers of the counterfeit products.
Kebharu Smith, director of Amazon’s Counterfeit Crimes Unit, said: “We are pleased that this settlement has resulted in the individuals recognising the harm they caused, assistance for our investigation moving forward, and that charities will benefit from the recovered funds.
“This settlement sends a strong message to would-be bad actors that Amazon will find you and hold you fully accountable,” Smith added.
Apple must commit to FRAND licence, High Court rules
Apple must commit to taking a global licence to Optis's patents to avoid being faced with an injunction, the England and Wales High Court ruled on Monday, September 27.
In his judgment, Mr Justice Richard Meade said that if a standard essential patent is found to be valid and infringed, as it was in this case, then the implementer (Apple) is required to take a licence on fair, reasonable and non-discriminatory terms (FRAND) to avoid an injunction.
It was the latest judgment in a dispute between intellectual property management company Optis and Apple.
The terms of the FRAND licence won't be decided until a subsequent trial next year, but Meade ruled that Apple can avoid an injunction by committing to take the licence in advance.
But Apple cannot wait to find out what the terms of the licence are before making the commitment, Meade added.
"I therefore hold that although unusual, committing to FRAND terms in advance is not especially onerous for implementers and that means are available to manage it."
Meade said any injunction, if imposed, would be a standard FRAND injunction first developed in the UK Supreme Court case Unwired Planet v Huawei. This would prevent an implementer from infringing the patent unless and until it entered into a FRAND licence.
The FRAND trial is set to begin in June 2022.
Sarah Ford QC, Isabel Jamal and Jennifer Dixon, instructed by EIP, and Osborne Clarke acted for Optis, while Marie Demetriou QC, Meredith Pickford QC, Sarah Love and Ligia Osepciu, instructed by WilmerHale, acted for Apple.
Germany ratifies PAP protocol as UPC edges closer
Germany has completed ratification of the Protocol on Provisional Application of the Unified Patent Court Agreement.
The Federal Ministry of Justice confirmed on Monday, September 27, that the country had deposited its instrument of ratification, leaving just two more nations to complete ratification before the provisional application period (PAP) can begin.
Slovenia and Austria have already confirmed they will deposit before the end of the year.
Germany’s participation had been in doubt until June this year, when the country’s Federal Court of Justice dismissed a constitutional challenge to the agreement.
Without Germany, the project could not have gone ahead. Now, however, the UPC Preparatory Committee predicts the court will become operational by mid-2022.
There is a significant amount of work to be done before that deadline. Once two more countries have ratified the protocol, the final stage of preparations, or the PAP, will begin.
This period will be used to recruit judges and finalise the bespoke IT system for the court. There is also the question of which city will host the central division seat vacated by London.
Milan has been considered the front-runner, although Amsterdam is in contention as well. Managing IP has reported on differing views among the Italian IP sector on whether there is enough political will in Italy to secure Milan’s candidacy.
Separately, today, September 30, the Irish Business and Employers Confederation urged the Irish government to advance Dublin as a candidate for the seat.
It remains to be seen whether these issues can be resolved by next summer, but Germany’s ratification of the PAP protocol at least brings the project one step closer to completion.
EU trademark and design re-filing deadline passes
The deadline for owners of pending registered Community designs and EU trademarks to re-file their applications at the UKIPO passed yesterday, September 30.
Owners of RCDs and EUTMs that were pending at the end of the Brexit transition period on December 31 2020 were given an extra nine months to file their applications in the UK.
If owners met this deadline, the original filing date, plus any priority claims, would be retained on the new UK national application.
The measures applied to RCD and EUTM applications filed at the EUIPO, but also to applications filed under WIPO’s Hague System (designs) and Madrid System (trademarks) that designated the EU.
John Addiss, partner at IP firm Mewburn Ellis, said: “We have been flagging the urgency of the situation for a while, and a number of clients have come to us in recent weeks and months to address the situation. Anyone who has not re-filed their designs in the UK will lose protection in the UK under the post-Brexit regime.”
Despite the deadline having passed, owners can still apply for EU rights in the UK, but they will now have their ‘true’ filing date, rather than being backdated.
Gilstrap tops Wall Street Journal’s conflicts of interest list
Rodney Gilstrap, chief judge at the US District Court for the Eastern District of Texas, had the highest number of conflicts of interests out of any federal judge with 138 cases assigned to him where he or his wife had an interest, according to a report from The Wall Street Journal published on Tuesday, September 29.
WSJ later revealed that 85% of these were patent cases.
WSJ also published an interactive tool where users could see graphics that reflected how many judges had conflicts, where those judges were located and whether there was a ruling that favoured the parties the judges had interests in.
According to the tool, 134 of Gilstrap’s 138 cases did not have rulings in favour of the parties that he had interests in.
He was one of 131 judges across 685 assigned cases where they or their family owned shares, according to the report.
Gilstrap first told WSJ that he believed he was not required to remove himself from certain cases where his family’s other investment accounts held shares in the companies, because a magistrate judge handled these issues or they only required “ministerial” actions from him.
The paper reported that after it got in touch with him, he sought counsel from the federal judiciary’s ethics committee, which said he was mistaken.
Gilstrap told WSJ that he would adhere to the committee’s guidance: “In hindsight and considering the attached opinion from the committee, I now understand that, despite my lack of any involvement or action, such cases result in a need for me to recuse.”
He had also told the paper that he believed he wasn’t required to recuse himself from certain disputes because the shares were in a trust for his wife.
According to WSJ, he did not comment on whether he requested the federal judiciary’s ethics committee’s counsel on whether he had to remove himself from cases where his wife’s trust had shares in the parties.
Gilstrap’s cases were not the only IP disputes where judges had conflicts of interest.
The paper reported that Judge Julia Smith Gibbons at the Court of Appeals for the Sixth Circuit wrote an opinion in Ford’s favour in a trademark dispute, even though her husband held stock in the car company.
Gibbons told WSJ that she believed that holdings in her spouse’s retirement account didn’t require her recusal. On August 27, she told a clerk to inform the parties in the case of the issue. She also told the paper that her husband had since told his financial advisers to abstain from purchasing individual stocks.
No judges at the District Court for the District of Delaware – another major patent litigation hub – were on this list, nor was Judge Alan Albright with the District Court for the Western District of Texas, according to WSJ’s infographic.
Federal Circuit denies Samsung and Intel’s bid to leave Albright’s court
The US Court of Appeals for the Federal Circuit denied writ of mandamus petitions from Samsung and Intel to transfer their related cases in the District Court for the Western District of Texas to the District Court for the Northern District of California on Monday, September 27.
The Federal Circuit emphasised that the standard for mandamus relief is demanding and that it only reviews these issues for “clear abuses of discretion that produce patently erroneous results”, adding that it could not say that standard was met here.
Although the appellate court upheld Judge Alan Albright’s decision to deny both companies’ motions to transfer, it did question some of his reasoning. In particular, the Federal Circuit found that Albright erred when he weighed the fact that the Northern District of California could stay proceedings pending Patent Trial and Appeal Board review against the motion to transfer.
The Federal Circuit pointed to the benefits of the inter partes review (IPR) process and the fact that it was designed to reduce the burden of litigation on the parties and the court.
“For that reason, the willingness of a court in the transferee forum to consider granting stays pending inter partes review (and the disposition of the transferor court not to grant such stays) is not a justification for denying transfer,” the court said.
IP development company Demaray sued both Samsung and Intel in the Western District of Texas for infringement of two patents. These cases are related because semiconductors company Applied Materials supplied both companies with the semiconductor fabrication reactors that form the basis of these allegations.
Applied Materials filed a petition seeking an IPR in October 2020 and named Intel and Samsung as real parties in interest. The USPTO granted these petitions in May 2021. Albright denied Intel and Samsung’s motions to transfer in July 2021.
Jaguar and Volkswagen settle patent dispute over luxury SUVs
Jaguar Land Rover Automotive has settled its patent dispute with Volkswagen, resolving litigation in the US and Germany over technology used in luxury sport utility vehicles that simplifies off-road driving for inexperienced drivers, it emerged this week.
The dispute started in November 2020, when the British automotive company asked the US International Trade Commission (ITC) to block the import of Volkswagen’s Porsche, Lamborghini, Audi and Volkswagen SUVs as they were allegedly using Jaguar’s patented terrain response technology.
Jaguar had also filed patent infringement suits in federal courts in New Jersey, Delaware and Virginia.
The settlement came a week before the dispute for blocking import of Volkswagen’s vehicles was listed for trial. However, the terms of the settlement were not disclosed in the filings made before the federal courts and the ITC in Washington.
Jaguar’s patented terrain response technology uses a single button to adjust a vehicle’s systems for off-road driving in different terrains. It is a key feature in Jaguar’s F-Pace and Land Rover Discovery vehicles.
Disney sues to retain rights to Avengers characters
The Walt Disney Company filed a series of lawsuits in federal courts in New York and California to retain full control of characters from its Marvel franchise, including Iron-Man, Spider-Man, Black Widow, Thor and others, on Friday, September 24.
Filed against the heirs and the estates of five renowned comic book writers and producers including Stan Lee, Steve Ditko and Gene Colan, the suits seek to invalidate copyright termination notices served upon Disney.
The dispute started earlier this year when the administrators of the estates of the authors issued copyright termination notices to Marvel to reclaim rights related to the Marvel characters they had helped to create.
Disney countered the notices with a flurry of lawsuits seeking declaratory relief that the copyright in the characters cannot be terminated as they were works made for hire.
The lawsuits will revolve around the controversial 'Marvel method', a working atmosphere under which Marvel creators float the initial ideas, leaving the artists to take care of the details.
Even if Disney loses the copyright suits, the studio expects to hold on to some rights as co-owner of the characters, but it may have to share its profits.
As the relevant copyright termination provision just applies to the US, Disney will retain its rights in other jurisdictions irrespective of the outcome of the lawsuits.