This week in IP: Hong Kong SAR begins copyright consultation, JRR Tolkien estate claims domain victory, and more
UPC inches closer; EU bodies at odds over COVID; Singapore Copyright Act comes into force; Unilever sells tea brands for €4.5 billion
‘At least Google it!’ Counsel give pre-launch Christmas advert tips
With Christmas fast approaching, brands and retailers have begun launching their festive-themed adverts to much fanfare.
However, as UK department store John Lewis found out recently, these adverts can cause controversy and even attract lawsuits – specifically surrounding claims of copyright infringement.
Speaking to Managing IP, in-house and private practice sources say this kind of seasonal disaster can be averted, and it may even be as simple as performing a quick Google check.
After all, no big brand wants to get into the classic ‘David v Goliath’ IP battle, even if they end up winning in court.
Other Managing IP stories published this week include:
Hong Kong SAR launches copyright amendment consultation
The Hong Kong SAR government initiated a three-month-long public consultation on Wednesday, November 24, to update the country's copyright legislation.
Edward Yau Tang-wah, secretary for commerce and economic development, said that the country is resurrecting the Copyright (Amendment) Bill 2014, which will be used as a starting point for the consultations. Opposition lawmakers have previously blocked the bill on two occasions.
The legislative proposals cover five areas, including giving copyright owners an exclusive communication right, introducing criminal sanctions against infringement, and introducing statutory factors to assist courts in determining additional damages in civil infringement cases.
Other proposals include providing exceptions for parody, satire, caricature and pastiche, and introducing "safe harbour" provisions.
On top of that, there are four additional areas on which the government has sought public opinion – existing exhaustive approach towards exceptions, allowing contracts to override statutory exceptions, dealing with illicit streaming devices, and judicial site blocking.
The government expects to submit the updated copyright bill to a newly elected Legislative Council in 2022.
UPC inches closer with Austrian parliament vote
The Unified Patent Court has moved one step closer to becoming operational after clearing the first stage of an Austrian parliament vote on Friday, November 19.
When Austria formally ratifies the so-called ‘PAP Protocol’, it will trigger the beginning of the Provisional Application Period (PAP).
The PAP will be the beginning of the final stage of preparations before the court becomes operational. During this period, a bespoke IT system will be implemented judges will be hired.
Last Friday, November 19, Austria’s National Council approved the legislation allowing Austria to ratify the protocol.
The bill is now in the hands of the Federal Council, the parliament’s upper house. Once approved by, it requires the signatures of the President and Chancellor before being published in the Federal Gazette.
Austria will then be able to deposit its instrument of ratification, triggering the beginning of the PAP.
The UPC Preparatory Committee has said it will need at least eight months from the start of the PAP to complete the necessary work before the UPC can become operational.
Its initial target of mid-2022 now seems out of reach, with formal Austrian ratification not expected until next month.
Managing IP exclusively reported in September that Slovenia had ratified the protocol, leaving just one more country to ratify.
JRR Tolkien’s estate wins LOTR domain name transfer
The estate of Lord of the Rings creator JRR Tolkien has secured a website selling a cryptocurrency called JRR Token following a domain name dispute, it emerged in reports this week.
Lawyers representing the estate said the domain name on which the products were sold, jrrtoken.com, infringed the author's trademark.
The estate filed a complaint at WIPO’s Arbitration and Mediation Center. Sole panellist John Swinson ordered that the domain name be transferred to the estate in a decision published in September.
The website featured rings, hobbit holes and a wizard-like Gandalf.
The respondent, US-based Domain Investments, claimed that JRR stood for 'Journey through Risk to Reward', a reference to digital currencies, and was a parody.
However, the panellist rejected this assertion: “Respondent does not specify why the disputed domain name is humorous, funny or nail-biting, and not just a domain name chosen due to its similarities with the complainant’s trademarks to take commercial advantage of its evocation.”
The chosen domain, registered in February this year, was “specifically designed to mislead” people into believing it had a legitimate commercial connection with the author, the panellist added.
European Parliament urges commission to change course on TRIPS waiver
The European Parliament yesterday, November 25, passed a resolution calling on the European Commission to back a waiver on IP rights for COVID-19 technologies.
A proposal to waive relevant provisions of the TRIPS Agreement will be discussed at the World Trade Organization’s ministerial conference next week.
Despite the US government nominally coming out in support of some form of a waiver, the commission has held firm in backing strong IP protections for COVID-19 vaccines and therapeutics.
The parliament wants the bloc to change course, calling on EU officials to back the proposal advanced by countries including India and South Africa for a waiver of relevant IP rights lasting at least three years.
The India/South Africa waiver would cover vaccines and therapeutics, as well as other technologies such as diagnostics and personal protective equipment.
In a speech to the parliament this week, EU trade commissioner Valdis Dombrovskis said he supported a “targeted waiver on compulsory licences”.
Sources told Managing IP that this was essentially a re-statement of the commission’s earlier proposal to work within the arrangements of TRIPS, rather than a weakening of its defence of strong IP protections.
While the US has expressed support for a waiver, it is not clear how active the Biden administration has been in trying to reach a deal since its announcement in May.
The EU has remained the strongest bulwark against a waiver of IP rights at the WTO, with the backing of pharmaceutical rights owners who say it would not help scale-up vaccine production.
Campaigners meanwhile argue both a waiver on export restrictions, as enshrined in TRIPS, and the sharing of know-how and technology is needed to deliver vaccines to lower-income countries.
Singapore's new Copyright Act comes into force
Singapore's new Copyright Act, which was five years in the making, came into force on Sunday, November 21.
The legislative changes, pushed through and presented by Singapore's Second Minister for Law Edwin Tong, were given parliamentary approval in September.
Under the new law, creators and performers have a new right to be identified whenever their works or performances are used in public.
Apart from that, the new law allows the use of copyrighted works for data analysis, and imposes civil and criminal liability on sellers of illegal streaming boxes.
Other changes include wide-ranging exceptions for teachers, students, galleries, libraries, archives, and museums, and a new regulatory regime for collecting societies.
Unilever sells tea brands for €4.5bn
Consumer goods company Unilever has sold its tea business to a private equity firm, a deal worth €4.5 billion ($5.04 billion).
The tea business, which includes trademarks 'PG Tips', 'Lipton' and 'Brooke Bond', has been bought by European private equity firm CVC Capital Partners.
The spun-off tea business, called Ekaterra, also includes the Pukka brand of herbal teas, which Unilever bought four years ago.
The sale was announced on Thursday, November 18.
Alan Jope, CEO of Unilever, said: "The evolution of our portfolio into higher growth spaces is an important part of our growth strategy for Unilever. Our decision to sell Ekaterra demonstrates further progress in delivering against our plans."