This week in IP: Only Fools hearing ends, UC Berkeley loses CRISPR patent, and more
Albright transfers case to Massachusetts; Dua Lipa sued for copyright infringement; Continental loses Avanci appeal; Canopy admits patent not infringed by GW; Embrace injunctions, says US Chamber of Commerce; Federal Circuit overturns ‘Trump too Small’ rejection
Singapore SEP review leaves more questions than answers
Sources have lauded the Singapore competition authority’s recent guidelines on standard essential patents, but they don’t expect an increase in disputes anytime soon.
The provisions are part of a broader policy document issued by the Competition and Consumer Commission of Singapore called Guidelines on the Treatment of Intellectual Property Rights, effective since February 1.
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Other Managing IP stories published this week include:
European IP offices cut ties with Russia over Ukraine invasion
Exclusive: UK to encourage bigger role for patent juniors in court
Exclusive: India appoints former pharma IP head as patents controller
Life after Madrid: lawyers reflect on protocol’s workflow impact
Credits close on Only Fools copyright trial
A UK court finished hearing evidence yesterday, March 3, in a copyright dispute over the famous TV comedy Only Fools and Horses.
Shazam Productions, a company set up by the show’s late founder John Sullivan, has claimed copyright infringement and passing off by an unauthorised offering called Only Fools the (Cushty) Dining Experience.
The Intellectual Property Enterprise Court will now decide whether the interactive dining experience has infringed copyright protecting the show’s scripts and central characters, most notably the Trotter brothers Del Boy and Rodney.
Shazam, which filed the claim in 2020, is also pursuing a finding of passing off based on the rival production’s marketing efforts.
A huge hit in the 1980s and 90s, Only Fools follows south London brothers and market traders Del Boy and Rodney as they seek riches via numerous ill-thought-out schemes. Del is known for mangling French words such as ‘mange tout’ and delivering one-liners like ‘lovely jubbly’.
The defendants say they have not used any material that can be protected by copyright and that, if they had, they would be protected by the defence of fair dealing for the purposes of parody or pastiche.
They also deny the charge of passing off because, they argue, the production would be seen as an unofficial tribute show.
Shazam, however, argued that the court should reject all of these defences.
“Extensive use of copyright material is made and it would be bizarre if a show so closely based on the sitcom did not,” the company said in its skeleton argument. “The show is simply not a parody or pastiche, as it neither mocks nor says anything about the claimant’s works.”
Shazam added that the outcome of the case could have serious ramifications for both the company and other rights owners.
“If the characters and material used cannot be protected by copyright, or the fair dealing defence applies, there will be nothing to stop others doing exactly what the defendants have done for the lengthy remaining periods of the copyrights.”
The case is likely to be watched by lawyers and fans alike.
Ashfords is acting for Shazam, while the defendants are being represented by Brandsmiths and JMW.
Albright transfers case to Massachusetts
In a rare move, Judge Alan Albright agreed to transfer a patent case from his court to the District Court for the District of Massachusetts on Wednesday, March 2.
Albright, the de-facto patent judge for the District Court for the Western District of Texas, ordered the transfer of Decapolis v eClinicalWorks after determining that of the private and public interest factors, three were neutral, three favoured transfer, and two disfavoured transfer.
Defendant eClinicalWorks successfully argued that the District of Massachusetts – its home forum – was more convenient, principally because of the presence of all relevant documents and witnesses in the transferee forum.
“A decision to uproot litigation and transfer is not the consequence of a simple math problem,” Albright wrote in his order. “Instead, a moving party must show that the transferee forum is a clearly more convenient forum.
“In light of the weight accorded to each of the factors in favour of transfer, eClinical has met its burden to show that the DM [District of Massachusetts] is a clearly more convenient forum than the WDTX [Western District of Texas] despite relevant judicial efficiency concerns.”
This decision is notable given how rare it is for Albright to grant transfers in patent cases.
Less than one third of the nearly 90 motions to transfer that were filed in 2021 were granted.
Dua Lipa sued for copyright infringement over ‘Levitating’
Florida-based reggae band Artikal Sound System sued British singer Dua Lipa at a Los Angeles federal court on Tuesday, March 1, accusing her of ripping off the song ‘Live Your Life’ to create the chartbuster track ‘Levitating’.
The copyright infringement complaint, which also named Warner Records as a defendant, alleged that the record company and Lipa listened to and copied the reggae band’s track in 2020.
In their complaint, Artikal Sound System’s band members claimed Lipa had access to their 2017-released song and pleaded for a jury trial. Aside from damages, they claimed they were owed profits from ‘Levitating’.
"Given the degree of similarity, it is highly unlikely that ‘Levitating' was created independently from 'Live Your Life’,” the complaint read.
To establish their case before the federal court, Artikal Sound System must prove their claim on access and show that ‘Levitating’ was substantially similar to their copyright protected track.
‘Levitating’ is one of the most successful songs composed by Lipa, a 26-year-old Grammy winner. It earned the number one spot on Billboard’s 2021 year-end Hot 100 Song Chart and reached number five on the UK Top Singles Chart.
Fifth Circuit says Continental lacks standing against Avanci
The US Court of Appeals for the Fifth Circuit ruled on Monday, February 28, that Continental didn’t have standing to bring antitrust claims against Avanci.
The circuit court said automotive supplier Continental’s theories of injury, which plaintiffs must allege to establish Article III standing, were not sufficient.
The automotive supplier argued that if Avanci procured non-FRAND licences, there was a risk that royalties could be passed through to Continental via indemnity agreements. But the Fifth Circuit said this argument was too speculative.
Continental’s second theory of injury was that Avanci had declined to provide Continental with a licence on FRAND terms. But the Fifth Circuit said it couldn’t conclude that the licensing marketplace had denied the automotive supplier property to which it was entitled.
Kathryn Blackwell, vice president of communications and marketing at Continental, said the company strongly disagreed with the court’s decision.
“The court’s conclusion is not supported by any legal precedent or evidence, and is contrary to the allegations in Continental’s complaint, a wealth of extrinsic evidence, other court decisions from around the world, and the views of countless scholars and industry participants alike.
“It is presumably for this reason that defendants in the case did not even make this argument. Continental is reviewing all of its options for further appeal and will continue to seek to vindicate its right to obtain appropriate licences on FRAND terms.”
Avanci was happier with the ruling.
Company representative Mark Durrant said: “Avanci welcomes the decision of the Fifth Circuit, which affirms our view that Avanci’s independent, one-stop solution brings efficiency, convenience, and predictability to the licensing process.”
Continental originally sued Avanci in the District Court for the Northern District of California in May 2019, claiming that the marketplace’s practice of only licensing patents to automotive companies and not to suppliers was anticompetitive.
This suit was transferred to the District Court for the Northern District of Texas in December 2019, and the Texas court dismissed the case in September 2020.
Continental then appealed to the Fifth Circuit.
Broad first to invent key CRISPR tech, PTAB rules
The Broad Institute won a major victory in its long-running patent dispute against the University of California Berkeley over CRISPR-Cas9 technology on Monday, February 28.
The US Patent Trial and Appeal Board (PTAB) ruled that scientists from the Broad were the first to discover how to use CRISPR-Cas9 gene-editing technology in animal cells.
Broad licensee Editas Medicine welcomed Monday’s edict, with CEO James Mullen commenting: “The decision reaffirms the strength of our foundational intellectual property as we continue our work to develop life-changing medicines for people living with serious diseases.”
Editas holds an exclusive licence to Broad’s CRISPR-Cas9 patents for the development of medicines for people living with serious diseases.
It is a setback for the so-called CVC ownership group associated with UC Berkeley’s Jennifer Doudna and Emmanuelle Charpentier, formerly of the University of Vienna.
Both UC Berkeley and the University of Vienna have had some of their CRISPR-Cas9 patents invalidated as a result of the PTAB’s decision. The institutions are considering an appeal, they said in a statement on Monday.
The decision will have ramifications for any companies that have taken licences to any of those invalidated patents.
ERS Genomics, a Dublin-based licensing company established by Charpentier, said it remained confident in the strength of CVC’s CRISPR-Cas9 portfolio, which it noted included more than 40 patents not involved in the PTAB proceedings.
“We remain convinced that the compositions, methods and techniques in the CVC portfolio of patents are the essential IP for the practice of CRISPR-Cas9 gene editing,” said CEO Eric Rhodes.
Canopy admits cannabis extraction patent not infringed by GW
The US District Court for the Western District of Texas dismissed a high-stakes litigation initiated by cannabis company Canopy against British pharmaceuticals firm GW on Friday, February 25, after considering a joint stipulation by both parties that the latter did not infringe the former’s rights.
The parties submitted the stipulation on February 22, under a claim construction order issued by Judge Alan Albright in November. They also filed a request to issue a final judgment in the case in GW’s favour.
The stipulation, however, explicitly reserved Canopy’s right to appeal Albright’s construction of the term “CO2 in liquefied form under subcritical pressure and temperature conditions”.
Canopy accused GW of infringing its patent for CO2 extraction methods in 2020.
The dispute focused on claim one of Canopy’s US Patent 10,870,632, which said: “Subjecting the cannabis plant material or primary extract thereof to CO2 in liquefied form under subcritical pressure and temperature conditions to extract cannabinoid components”.
In his November claim construction order, Albright agreed with GW that subjecting cannabis material to CO2 under certain conditions was outside the scope of the claim language and would not infringe Canopy’s patent.
Canopy can now appeal the claim construction before the Court of Appeals for the Federal Circuit until March 28.
If Canopy files an appeal, the appellate court must hear its arguments on the merits without giving any deference to the district court’s ruling except for factual findings. If it wins the appeal, the case will be remanded back to the district court.
Should Canopy choose not to appeal, the recent dismissal will serve as an abrupt end to what could have been a groundbreaking cannabis patent case.
Embrace injunctions to tackle piracy, says US Chamber of Commerce
New enforcement tools are helping countries drive down online piracy and improve their reputations on IP, a new US Chamber of Commerce report outlined on Thursday, February 24.
The Global Innovation Policy Center's (GIPC) 10th annual International IP Index report found a decrease in piracy as the result of countries using injunctive-style relief to block access to copyright-infringing content.
While most economies surveyed struggled with high piracy rates, those employing tools including so-called dynamic injunctions saw an improvement to their scores, the GIPC found.
Countries including Sweden, Singapore, India, the UK, and the Netherlands all saw significant increases to their scores on copyright protection in the latest report compared to their first entries in the index.
In Sweden, the number of respondents accessing copyright-infringing content fell from 21% to 14% between 2017 and 2019. The GIPC attributed this decline to Swedish courts deploying injunctive relief.
The US once again topped the overall rankings (95.48%), with the UK (94.14%), Germany (92.46%), Sweden (92.14%), and France (92.1%) comprising the rest of the top five.
The United Arab Emirates (UAE) experienced the largest growth in its score from the previous report (+4%) while Nigeria and Peru improved their scores by 3.9% and 2.76%, respectively.
Last year saw the UAE implement a number of IP reforms, including a new trademark law that eliminated the registration requirement for trademark licensing agreements and clarified the power of customs officials to seize infringing goods, the GIPC noted.
The latest index report also highlighted continuing uncertainty over the potential TRIPS waiver of IP rights for COVID vaccines, a move which the GIPC said would endanger innovation.
“Any move to roll back IP rules or their enforcement would inject uncertainty at an already challenging time, as well as impede ongoing and highly successful efforts to license and scale global production and distribution of safe and effective vaccines,” the report stated.
Federal Circuit overturns ‘Trump too Small’ registration rejection
The US Court of Appeals for the Federal Circuit overturned the Trademark Trial and Appeal Board’s refusal to register the phrase ‘Trump Too Small’ for use on t-shirts on Thursday, February 24.
The TTAB wouldn’t register this mark on the grounds that Section 2c of the Lanham Act prohibits the registration of a trademark that consists of or comprises a name, portrait or signature identifying a particular living individual.
The Federal Circuit held that Section 2c was unconstitutionally applied in this case, however, on the basis that it involved content-based discrimination that was not justified by either a compelling or substantial government interest.
“The statute leaves the PTO no discretion to exempt trademarks that advance parody, criticism, commentary on matters of public importance, artistic transformation or any other first amendment interests,” the court noted.
Jonathan Moskin, partner at Foley & Lardner in New York, said he believed statements such as ‘Trump Too Small’ were not really trademarks but ornamental uses. These uses may be permissible but perhaps shouldn’t be registerable because they don’t function as indications of origin, he added.
He noted that the case could have been resolved on factual, rather than constitutional, grounds.
“A statement on a t-shirt saying ‘Trump too small’ might be protected speech, but is that a recognisable brand of clothing?”
This isn’t the first time Section 2 of the Lanham Act and free speech have collided in recent years.
The US Supreme Court found in Matal v Tam in 2017 that the act’s prohibition of disparaging marks was unconstitutional and came to the same conclusion in Iancu v Brunetti in 2019 about its ban on immoral and scandalous marks.