This week in IP: Pooh becomes public, USPTO outlines TM sanctions, and more
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This week in IP: Pooh becomes public, USPTO outlines TM sanctions, and more

Winnie the Pooh went into the public domain this year, although not this one pictured

Nikola drops Tesla suit; US Copyright Office hires new general counsel; Markle and Mail agree copyright damages

Counsel set out concerns about EPO after latest BoA move announcement

In light of the proposal to move the offices of the EPO Boards of Appeal back to central Munich, just five years after they were relocated to the suburb of Haar, counsel told Managing IP they’d be more than pleased the see the BoA return.

They noted that the move had given them pause to reflect on the whole episode and what it said about the EPO, however.

“From commercial point of view, it’s a catastrophe,” said Beat Weibel, chief IP counsel at Siemens in Munich.

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Other Managing IP stories published this week include:

USPTO sets out new TM sanctions process

The USPTO outlined a new administrative process for investigating suspicious trademark applications in a federal notice published on Wednesday, January 5.

The process has been designed to target matters that appear to violate the Trademark Rules of Practice, including the rules concerning signatures, certificates, and representation of others in trademark matters before the USPTO, the office wrote.

Under the new procedure, once the USPTO initiates an investigation, relevant applications could be removed from examination status to ensure they don’t move forward to approval for publication or registration while the investigation takes place.

If an investigation ends without the issuance of an administrative order, the suspension will be lifted, and the application will then be assigned to an examining attorney.

But if the USPTO identifies a violation of its rules or the terms of use of its website, particularly when said violation indicates an intent to circumvent the rules, the office will inform the relevant parties and specify the proposed action or sanction it deems appropriate, if any.

Actions might include terminating all involved applications, striking a submission, precluding a party from appearing before the USPTO in trademark matters, or deactivating all relevant accounts.

The USPTO will also issue a final decision that includes an order for sanctions, if appropriate.

In its notice, the office said the new procedure was set up to protect the integrity of the US trademark register.

As Managing IP reported in July, trademark applications exploded at the USPTO last year, causing disruption for brand owners, particularly those in the pharmaceuticals industry and those that typically rely on WIPO’s international trademark system.

Sources suggested the surge was caused by a wave on filings from China and other foreign countries, many of which circumvented the USPTO’s rules.

US Copyright Office hires Suzanne Wilson as general counsel

The US Copyright Office announced on Wednesday, January 5, that Suzanne Wilson would be its new general counsel and associate register of copyrights.

Wilson will take her position on January 31. She will be responsible for regulatory, litigation and policy matters at the office.

Wilson worked as deputy general counsel at the Walt Disney Company from 2011 to 2020, where she oversaw the business’s intellectual property and interactive and media legal functions.

She also served as a clerk at the Court of Appeals for the Ninth Circuit for the late senior judge Warren Ferguson and as a partner at Arnold & Porter.

She graduated from Harvard Law School in 1990.

Regan Smith previously held the general counsel position at the Copyright Office but left in July 2021 and joined Spotify as head of public policy in August. The office appointed Kimberly Isbell to serve as acting general counsel in December 2021.

Register of copyrights Shira Perlmutter said she was delighted to welcome Wilson to this role. “She brings to the Copyright Office deep knowledge and expertise in copyright law, litigation, and technology and will be a valuable addition to our senior management team.”

Nikola drops $2 billion patent suit against Tesla

Electric-vehicle maker Nikola has dropped a $2 billion patent infringement suit against rival Tesla at the District Court for the Northern District of California, it was revealed on Tuesday, January 4.

In their joint filing, Nikola and Tesla did not reveal the reason they decided to drop the suit. The dismissal, however, was without prejudice, which meant that the parties could take the dispute to court again.

Nikola had sued Tesla in Arizona in 2018 for infringing its rights over the design, utility patents and trade dress of its alternative fuel heavy-duty truck Nikola One, launched in 2016.

The case was moved to the San Francisco-based federal court later that year.

The plaintiff had alleged in its complaint that Tesla had copied the designs of the truck’s fuselage, wrap windshield and side door.

Tesla, in response, had refuted Nikola’s allegations and had claimed that Nikola’s design patents were invalid because they were similar to an existing truck design.

A federal judge had dismissed the suit in October last year because of the inaction of the parties involved. The court reinstated the suit shortly after that, following a submission filed by Nikola. 

Winnie the Pooh and Bambi enter public domain – but not Disney versions

The two novels ‘Winnie the Pooh’ and ‘Bambi, A Life in the Woods’ entered into the public domain in the US this year, it was reported this week, along with several other books, films, sound recordings, and compositions from 1926.

Any adaptations, remixes, or extensions of the characters in the novels must be based on the original 1926 works, however.

Characters including Pooh’s mischievous friend Tigger remain under copyright protection because they were introduced into the novels at a later stage. Disney’s adaption of Winnie the Pooh – in which the honey-loving bear sports a red t-shirt – also remains protected.

Additions to the public domain, which happen on the first day of each year, are closely followed by content creators, because these inclusions add to the pools of characters, stories, and ideas they can build on in their own work.

Disney itself has based several of its films on public-domain works, including ‘Alice in Wonderland’, ‘Cinderella’, ‘The Jungle Book’ and ‘The Little Mermaid.’

Copyright in the US lasts for 70 years after the death of the author. For works of corporate authorship, copyright lasts for 120 years after creation or 95 years after publication, whichever comes sooner.

Markle and Mail on Sunday publisher agree copyright damages

The publisher of The Mail on Sunday will pay Meghan Markle an undisclosed sum in damages for infringing her copyright in a private letter to her father, court documents revealed on Wednesday, January 5.

Markle successfully sued Associated Newspapers for copyright and privacy law violations after contents of the letter were published in The Mail on Sunday and the Mail Online.

The England and Wales High Court found in Markle’s favour last February. The duchess saw off an appeal from Associated Newspapers at the England and Wales Court of Appeal in November.

The settlement will see the news publisher pay Markle £1 in nominal damages for breaching privacy law, plus an additional, undisclosed sum for copyright infringement.

Markle’s legal team said the former actor would donate the “substantial” sum to charity.

The deal marks the end of the case. Prior to the settlement, Associated Newspapers considered an appeal to the UK Supreme Court.

The Mail on Sunday published a statement on December 26 acknowledging that it had infringed Markle’s copyright and said that financial remedies had been agreed.

In a statement released after her win at the Court of Appeal in November, Markle described the judgment as a “victory not just for me, but for anyone who has ever felt scared to stand up for what’s right”.

“While this win is precedent-setting, what matters most is that we are now collectively brave enough to reshape a tabloid industry that conditions people to be cruel, and profits from the lies and pain that they create,” Markle added.

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