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This week in IP: Vidal sworn in again, Amazon sued over Michael Jordan photo, and more

Kathi Vidal being ceremonially sworn in by commerce secretary Gina Raimondo

SCOTUS seeks gov input in Amgen v Sanofi; Federal Circuit reverses personal jurisdiction dismissal; Ukraine fundraising at INTA; football league launches despite TM suit

UPC plan to limit doc access will ‘kill system from start’

The UPC’s preparatory committee proposed in an update to its rules in February that court documents, including decisions and orders, be made available “upon reasoned request” and that the judge rapporteur should decide if access should be granted “after consulting the parties”.

Stakeholders weren't pleased. Speaking to Managing IP, five European counsel in Germany, France, Switzerland and Italy argued it was vital that they had easy access to most of the court’s documents to build trust and familiarity with the new system, noting that few will choose to litigate in a court that they don’t have any insight on.

Marianne Schaffner, partner at Reed Smith in Paris, said: “The change would kill the system from the start – transparency is a core pillar of the UPC project.”

Click here to read the full article.

Other Managing IP stories published this week include:

Kathi Vidal begins life as USPTO director

Kathi Vidal has officially begun her tenure as director of the USPTO after being sworn in on April 13 and then ceremonially sworn in by commerce secretary Gina Raimondo on Wednesday, April 20.

In a USPTO-published statement, last week, Vidal said she was excited to join a nationwide workforce of more than 13,000 employees, which she described as “one of the most talented and respected the world over”.

“I couldn’t be more thrilled to work with them to help bring more ideas to impact, including in key technologies and through inclusive innovation and entrepreneurship,” she added.

In the statement, the office said Vidal will provide leadership and oversight to one of the largest IP offices in the world and serve as principal adviser to President Joe Biden through secretary of commerce Raimondo.

Raimondo said Vidal’s leadership and expertise will be instrumental in executing the USPTO’s mission to protect and empower US entrepreneurs.

“Now more than ever, we need to expand opportunities for more innovators, and re-establish American leadership in technological, scientific, and commercial innovation,” she said.

Drew Hirshfeld, who was appointed commissioner for patents in 2015 and again in 2020, has been performing the functions and duties of USPTO director since January 20, 2021. He will serve as acting deputy director until a political deputy director is named, after which point he will leave the USPTO.

Prior to joining the USPTO, Vidal helped harness and protect innovation at all levels. She was most recently a managing partner and executive committee member at Winston & Strawn.

Amazon sued over Michael Jordan dunk photo

Amazon was accused of copyright infringement on Tuesday, April 19, over its use of a photograph of basketball star Michael Jordan dunking a ball.

The complaint, filed at the US District Court for the Central District of California, said Amazon failed to comply with a takedown notice sent under the Digital Millennium Copyright Act.

Goatpix, an online image and painting library, which owns the photo, sent the DMCA take down notice to Amazon in February.

According to the complaint, Amazon told Goatpix it would not take down the products featuring the image, despite the fact that the platform had previously complied with past notices.

The photograph is of the former NBA star in mid-air during a contest in 1998.

In the complaint, Goatpix accused Amazon of selling physical memorabilia that bears the photograph both online and through its network of resellers.

The complaint noted that Goatpix owns all rights and interest in a significant number of photographs of NBA players, teams and events.

“Goatpix has been deprived of revenue and market share for the image and that the market for future sales of this image has been irreparably diluted,” it added.

SCOTUS seeks US government input in Amgen v Sanofi

The US Supreme Court invited the solicitor general to file a brief in Amgen v Sanofi that would express the views of the government on Monday, April 18.

The high court is currently deciding whether to accept Amgen’s petition for a writ of certiorari filed in November 2021, appealing an edict from the Court of Appeals for the Federal Circuit that two of its antibody patents were invalid because their functional claims were too broad.

Counsel previously told Managing IP that the ruling raised the bar for enablement set out in Section 112 under Title 35 of the US Code, and that they needed to take extra care when writing or enforcing antibody patents.

Amgen also petitioned the Federal Circuit for a rehearing en banc, but this was denied last June.  

The Federal Circuit’s ruling affirmed the first instance ruling from the District Court for the District of Delaware.

Federal Circuit reverses personal jurisdiction dismissal in Apple case

The US Court of Appeals for the Federal Circuit reversed a dismissal of a complaint based on lack of personal jurisdiction on Monday, April 18.

Apple had filed an action for declaratory judgment of non-infringement against Zipit Wireless in the District Court for the Northern District of California, but the California forum dismissed it.

The appellate court said the Northern District of California erred when it read precedential decisions as applying a bright line rule that patent infringement notice letters and related communications could never form the basis for personal jurisdiction.

Zipit argued that the 2019 case Autogenomics v Oxford Gene Tech created a bright line rule that cease and desist letters and related in-person discussions couldn’t support minimum contacts for personal jurisdiction.

The appellate court said, however, that there were material factual distinctions between these cases.

The Federal Circuit also said the burden was placed on Zipit to present a compelling case that the presence of some other considerations would render jurisdiction unreasonable. But it found that Zipit had not done so.

“Ultimately, this is not one of the ‘rare’ situations in which sufficient minimum contacts exists but where the exercise of jurisdiction would be unreasonable. Zipit has not met its burden to present a compelling case that these factors in the aggregate would render the exercise of jurisdiction unreasonable,” the court said.

Lawyers asked to raise money for Ukraine during INTA meeting

Trademark lawyers will raise funds for charities working with people fleeing the war in Ukraine, in a special event on May 3 during the INTA Annual Meeting in Washington DC.

A new campaign called Brand Action for Ukraine will host a cocktail reception at the Baby Wale venue next to the Walter E Washington Convention Center to raise money for the World Central Kitchen (WCK) and Support Hospitals in Ukraine organisations.

The initiative is run by volunteers including Phil Cox, a business development consultant for IP attorneys, and Taras Kulbaba, a Ukrainian trademark attorney at Bukovnik & Kulbaba IP Guardians in Brussels.

During a visit to the Ukrainian-Polish border, where he was delivering medical supplies to Ukrainian troops, Kulbaba saw WCK giving free hot meals to refugees.

The campaign said it chose the two charities because of their ability to “directly support the health and wellbeing of Ukrainian refugees, soldiers, and war victims”.

The group has asked people to offer financial support to the charities, or volunteer to help raise funds.

Attendees at the May 3 event are asked to make a donation of at least $95 directly to WCK, while money raised from the campaign’s sponsors will go to Support Hospitals in Ukraine.

Russia’s invasion of Ukraine in February prompted international IP offices to cut ties with their Russian counterparts.

Ukrainian patent attorneys called last month for international associations, including INTA, to suspend Russian members.

INTA has not issued any statement on the status of its Russian members since the war began in February.

Learn more about Brand Action for Ukraine's campaign by clicking here.

Fox-backed football league goes ahead despite TM suit

Fox Sports launched its new United States Football League on Saturday, April 16, after a California federal judge refused to grant an injunction over the competition name and branding.

But the Fox-owned American football venture still faces an uphill struggle after the court said the former owners of an older league, which used the name in the 1980s, were likely to prevail on trademark infringement claims.

The new competition is the latest effort to revive the name of the original USFL, which operated from 1982 to 1985.

But former executives from the original league objected in a lawsuit filed against Fox at the US District Court for the Central District of California in February.

The plaintiffs claimed Fox hadn’t got permission to use the name of the league or those of any of its eight teams, which also featured in the 1980s competition.

They wanted the California district court to issue a preliminary injunction blocking the new USFL from using the allegedly infringing branding while the case was ongoing.

In an April 14 decision, District Judge John Walter said the plaintiffs were unlikely to experience irreparable harm without an injunction, and that the balance of hardships favoured Fox.

Walter noted that if he issued an injunction, Fox may have to spend millions of dollars reproducing equipment, uniforms, and marketing featuring the branding.

If the plaintiffs had filed their suit before February, they would have had a better chance of convincing the court that public interest favoured an injunction, Walter wrote.

But the judge also found that the plaintiffs had established a protectable ownership interest in the USFL mark, and that Fox’s use of the name was likely to cause confusion.

Those findings could be significant when the court eventually rules on the merits of the case.

In the latest judgment, Walter wrote that it was “incredibly disingenuous” for Fox Sports to claim it wasn’t taking advantage of the original USFL’s reputation.

“The evidence shows that [the] defendants deliberately decided to launch their new league using the same names and teams as the old league in an apparent attempt to capitalise on the nostalgia,” the judge said.

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