This week in IP: SCOTUS rules in H&M copyright dispute, IP index released, and more

If you’re a manager and haven’t been hiding under a rock for the past year, you’ll be familiar with the great resignation – the mass exodus of employees in the US and elsewhere since December 2020.

Last year, an average of more than 3.95 million workers quit their jobs each month, giving 2021 the record for most resignations in a single year.

The mass move has forced business leaders to address why so many staff members are relocating and to reassess their retention strategies.

In IP, the trick to avoid this is to fine-tune recruitment and lateral hire strategies, according to five partners in managerial roles.

Click here to read the full article.

Other Managing IP stories published this week include:

• UPC hires could lead to national court brain drain: judges

• In-house: EUTMs soaring, but no need for more resources

• Opinion: Indian domestic policy must match WTO stand on IP waivers

• What universities want from patent attorneys

• Rise in scams leaves India IP counsel scrambling for solutions

• How counterfeiters ‘play’ e-commerce algorithms

• Counsel concerned that planned Eurasian TM system could flop

The US Supreme Court ruled yesterday, February 24, that a lack of knowledge of either fact or law could excuse an inaccuracy in a copyright registration, potentially spurring serial copyright filers to more actively enforce their rights.

In the six-to-three judgment, SCOTUS vacated the previous ruling from the Court of Appeals for the Ninth Circuit in Unicolors v H&M and remanded the case for further proceedings consistent with its new opinion.

The high court accepted this case for appeal in June 2021 to determine whether the Ninth Circuit properly construed the language of Section 411 under Title 17 of the US Code. That section sets out that copyright can be invalidated if inaccurate information is knowingly included in an application.

The Ninth Circuit ruled in May 2020 that the District Court for the Central District of California was required to refer Unicolors’ copyright registration to the Copyright Office to advise whether inaccuracies in the registration would have precluded registration.

It did so despite Unicolors’ argument that it had not intended to deceive the Copyright Office and had merely tried to save money.

In 2011, Unicolors – a company that creates designs for use on textiles and garments – applied for a two-dimensional artwork at the Copyright Office (which granted the registration) comprising 31 separate designs in a single registration.

The company said that all the included designs were sold to the public at the same time, claiming one date of first publication.

At trial, however, it was revealed that some of the designs were sold to different customers at different times.

After discovering in 2015 that H&M was selling garments bearing an allegedly identical artwork, Unicolors sued for copyright infringement.

H&M claimed that the registration should be invalidated because Unicolors had knowingly included inaccuracies in its application.

SCOTUS decided that the Ninth Circuit was wrong to accept this argument, noting that there was no intention to deceive the Copyright Office with its inaccurate application.

The decision will have helped to clear up a circuit split on the question of whether Section 411 requires a copyright owner to have an intent to deceive in order to invalidate a copyright registration that includes inaccurate information.

In other disputes regarding interpretation of this section, the courts for the 11th and third circuits have required some level of intent, whereas the Ninth Circuit and Court of Federal Claims did not. The Court of Appeals for the Seventh Circuit had suggested that showing intent of fraud could be required.

The Unified Patent Court’s Administrative Committee held its inaugural meeting on Tuesday, February 22, in Luxembourg, marking another step in setting up the system.

The UPC Administrative Committee has taken over all responsibilities from the Preparatory Committee, which had overseen preparations until now.

The development came after Austria’s announcement on January 18 that it had completed its ratification of the protocol to the UPC Agreement, which marked the court’s birth as an international organisation and kickstarted its provisional application period.

The inaugural meeting was attended by all contracting member states and several observer member states, according to a statement on the UPC’s website.

Several member states, including Belgium, Germany, Denmark, Austria, Finland, Serbia and France officially confirmed their intention to set up local or regional divisions of the UPC.

Contracting member states also appointed Alexander Ramsay as the committee’s chair and Germany’s Johannes Karcher as deputy-chairman.

They will be assisted by the members of the advisory committee, who will be primarily responsible for interviewing candidate judges. The interviewing process for that is expected to start at the end of March and conclude later this year.

The US Chamber of Commerce released its tenth international intellectual property index, which evaluated the IP framework in 55 global economies across 50 indicators, on Thursday, February 24.

The US ranked first, the UK second and Germany third.

UKIPO chief executive Tim Moss said it was fantastic to see the UK recognised for its strong and sophisticated IP environment.

“A strong IP system is vital to ensuring that the next generation of innovative and creative industries can compete for a better tomorrow, and embrace global challenges head-on,” Moss said.

He added: “The UK’s innovation strategy has IP at its heart, and this terrific result cements the UK’s place as one of the best locations in the world for innovation to grow and thrive.”

The report also found that of the 53 economies included in both the ninth and tenth editions, 45 had a net improvement in their scores. The United Arab Emirates, Nigeria and Peru saw the biggest improvements at 4.04%, 3.91%, and 2.76%, respectively.

The EU General Court on Wednesday, February 23, rejected the government of Andorra’s application to register the name of the principality as an EU trademark.

The decision confirms a 2019 ruling from the EUIPO's Boards of Appeal (BoA) that the ‘Andorra’ mark was descriptive for the applied-for goods and services in classes 16, 34, 36, 39, 41, and 44. The application had been rejected at first instance in 2018.

In Wednesday’s decision, a three-judge panel found that the public was likely to perceive ‘Andorra’ as indicating the geographical origin of the goods and services, rather than the commercial origin.

Andorra had argued that it isn’t known as a country which produces any of the applied-for goods or services, including tobacco, financial services, and publishing.

This did not convince the BoA, which cited examples such as Andorra’s reputation for publishing books in Catalan. On that point, the government had suggested this literature dated back to the period of the Spanish dictatorship and would not be recalled by modern consumers.

The General Court this week backed the BoA's view.

Ireland’s top court referred a dispute over supplementary protection certificates involving Merck Sharp & Dohme to the Court of Justice of the EU on Monday, February 21.

MSD had sought the referral as part of its dispute against Irish generics manufacturer Clonmel Healthcare, which sells its own copy of MSD’s cholesterol drug Inegy (ezetimibe/simvastatin).

Clonmel claims MSD’s SPC for Inegy only covers the compound ezetimibe, and not its combination with simvastatin.

The Irish High Court sided with Clonmel in 2019, a decision that was then upheld by the Court of Appeal last year.

But the Supreme Court has now referred four questions to the CJEU, as it looks to finally resolve the dispute.

The first question asks the CJEU whether it’s sufficient for a product under an SPC to be “expressly identified in the patent claims”, or whether the patent owner also needs to demonstrate novelty or inventiveness in order to obtain an SPC.

The other three questions deal with whether MSD’s SPC covers the combination of patented drug ezetimibe with public domain compound simvastatin.

US toymaker Mattel won a $1.45 million default judgment at the US District Court for the Southern District of New York on Tuesday, February 22, after it targeted sellers of counterfeit Thomas & Friends toys on Alibaba & AliExpress.

Thomas & Friends is a television series based on the Thomas the Tank Engine series of books.

In its lawsuit, filed in February 2021, Mattel argued that the defendants’ counterfeit products were “nearly indistinguishable” from its own Thomas & Friends products, and had only minor variations that ordinary consumers would not recognise.

Judge Alison Nathan had recognised Mattel’s copyright and trademark rights and granted a preliminary injunction in its favour in March.

In November, Mattel pushed for a motion for default judgment as the defendants failed to appear before the court or defend their case.

While considering the motion, the court noted that Mattel had met all possible criteria for the grant of a default judgment, and that a heightened award was called for in view of the defendant’s non-cooperation and to deter other possible infringers.