This week in IP: Bitcoin IP claim filed, metaverse TM applications on the up
UK Court of Appeal overturns Amazon judgment; GM takes Avanci patent licence; vaccine waiver draft released; IBM sues games maker
INTA 2022: Counsel say ‘metaverse is not going away’
Speakers at the INTA Annual Meeting in Washington DC this week delved into the intellectual property challenges brands would face when entering the metaverse or issuing non-fungible tokens.
In a session called ‘From Second Life to the Metaverse: What Have You Learned?’, panellists from The Gap and Reed Smith said the metaverse was going to continue to pose challenges and opportunities for businesses.
The INTA Annual Meeting was held at the Walter E Washington Convention Center in Washington DC between April 30 and May 4.
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Other Managing IP stories published this week include:
UK Court of Appeal overturns Amazon judgment
The England and Wales Court of Appeal overturned on Wednesday, May 4, a judgment that previously found in favour of Amazon, in a case concerning territorial IP rights.
In Lifestyle Equities v Amazon the court swatted aside a January 2021 ruling from the England and Wales High Court.
The case surrounded the Beverly Hills Polo Club (BHPC) brand owned by Lifestyle.
According to Lifestyle, BHPC goods that had been lawfully manufactured, marketed and sold in the US were also being offered by Amazon to UK and EU consumers, and that this amounted to trademark infringement.
In the High Court, Mr Justice Green dismissed those claims and sided with Amazon, which had claimed that the products did not target UK or EU consumers as they were on amazon.com – a website primarily targeted at a US audience.
But in Wednesday’s judgment, a three-judge panel concluded that Amazon’s sales of US branded goods to UK and EU consumers constituted use of the signs in the relevant territory, and thus infringing use.
Lord Justice Arnold, writing the lead judgment, noted that the first-instance judge accepted Amazon’s argument that, because amazon.com was directed at US consumers, the relevant web pages were not targeted at UK or EU consumers.
This does not follow, Arnold found, adding that even if amazon.com is primarily directed at US consumers “it is plainly not restricted to them”.
He added: “In any event, the question is not whether amazon.com as a whole is targeted at the UK/EU, but whether the relevant uses of the sign are. The fact that the generality of a website is not targeted at the UK/EU does not exclude the possibility that specific uses of the sign on that website are.”
Bitcoin IP claim filed at High Court
The self-styled inventor of the bitcoin electronic cash system has filed an intellectual property claim against two currency exchanges at the England and Wales High Court, it emerged on Tuesday, May 3.
Craig Wright, together with two companies associated with him, Wright International Investments Limited (WII) and Wright International Investments UK Limited (WIIUK), filed claims against Kraken and Coinbase.
According to a statement from law firm Ontier, which is representing Wright, the two companies have misrepresented that the digital asset “Bitcoin Core” (BTC) is bitcoin.
The claim alleged that these exchanges have been trading and encouraging investors and consumers to trade and invest in BTC, by passing off that asset as bitcoin.
This is despite BTC only having been created in 2017 and being different from and separate to the bitcoin protocol, which Wright said he first created more than 13 years ago.
The claimants contend that the misrepresentation by Coinbase and Kraken has led to confusion among digital currency asset holders as to the authenticity of the assets many have purchased and traded in.
Wright and his associated companies have sought an injunction restraining the defendants from promoting BTC as bitcoin.
According to Ontier, the claims are likely to be worth “several hundred billions of pounds” when an inquiry into the full account of profits of each of these exchanges is undertaken by expert witnesses at the court.
The proceedings were filed on Friday, April 29, in the Intellectual Property List of the Business and Property Courts of England and Wales.
Simon Cohen, managing associate at Ontier, said: “Simply put, the claimants’ assertion is if your digital asset doesn’t strictly adhere to the bitcoin protocol and is linked to the bitcoin blockchain, it is not bitcoin, and should not be marketed or referenced as such.”
Alastair Wilson QC, Michael Hicks and Jamie Muir Wood of Hogarth Chambers are instructed as counsel, with additional assistance from Damon Parker, a partner at Harcus Parker.
GM takes Avanci patent licence
General Motors became the latest car maker to license cellular patents for its connected vehicles from the Avanci patent pool on Tuesday, May 3.
Following the agreement, more than 55 million connected cars are now licensed through Avanci, the US-based company said.
The deal means GM brands including Buick, Cadillac, Chevrolet, and GMC can now receive licences to the 2G, 3G, and 4G standard-essential patents of the 48 patent owners that participate in the marketplace.
The news comes just over a month after Volkswagen announced it had taken a 4G licence from Avanci, having previously only been licensed up to 3G.
Avanci licensors also ended a long-standing dispute with German car maker Daimler when it agreed to take a licence to the pool in December 2021.
“We are very pleased to welcome GM, the largest US-based automotive manufacturer and one of the largest worldwide, as an Avanci licensee,” said Kasim Alfalahi, Avanci CEO.
“This agreement demonstrates our focus on streamlining the patent licensing process for the automotive market with efficient, predictable licensing solutions through our one-stop Avanci marketplace,” he added.
Clarivate report reveals technology driving global TM filing
A report published by analytics company Clarivate on Tuesday, May 3, showed that interest in emerging technologies like blockchain, metaverse and non-fungible tokens has driven trademark filing activity in class 9.
The report analysed trends over the last 10 years (2011 to 2021) as well as activity in 2021 alone.
Class 35 (retail, advertising, marketing and business services) remained the most popular among trademark applicants in terms of filing volumes over the last 10 years, but applications for class 9 (technology, computer hardware and software) rose from third spot in 2011 to second place in 2021.
In a rush to enter the metaverse, many parties filed applications for virtual goods in class 9 corresponding to their trademark filings for physical goods in other classes.
The report said: “Authorities might even have to re-think the Nice Classification system if the virtual counterpart of every physical item is going to be filed in class 9.”
Class 25 (clothing and fashion), followed by class 30 (food products of plant origin) and class 41 (entertainment, education and recreation services) were the third, fourth and fifth most popular classes, respectively, in terms of filing volumes between 2011 and 2021.
China’s trademark office, CNIPA, was the most active trademark registry globally in 2021 with over nine million filings, followed by the USPTO.
However, Clarivate’s report noted that 2021 marked the first year in over a decade when the annual filing volume at CNIPA did not see double-digit growth, and that filing activity has been declining since the second quarter of 2021.
The report said that the 10 most active registries accounted for 87% of all trademark applications filed globally.
WTO releases COVID vaccine waiver draft agreed by key parties
The World Trade Organization released the latest version of the patent waiver proposal for COVID-19 vaccines agreed between the EU, India, South Africa, and the US on Tuesday, May 3.
According to the draft proposal, “all developing country members” of the WTO would be eligible to use the waiver to frame national laws for licensing patents covering COVID-19 vaccines.
The document also revealed that the key negotiating parties had yet to agree on certain aspects of the deal, including whether the waiver should last for three or five years.
Ngozi Okonjo-Iweala, who assumed office as the director-general of WTO in March 2021, has made vaccine equity her top focus and has been trying to broker a deal between the four negotiating parties for months.
A closed-door meeting will be held in Geneva today, May 6, and all 164 members of the WTO must agree to the deal for it to pass.
Some countries, such as the UK and Switzerland, as well as members of the pharmaceutical industry, have lobbied against the patent waiver proposal in the past.
IBM sues Farmville developer over data patents
IBM filed a patent infringement suit against the video game developer behind games such as Farmville and Words with Friends in a Delaware federal court on Monday, May 2.
The US technology company claimed that Zynga has used technology originally developed by IBM for its online service Prodigy, which was described in the suit as a “forerunner to today’s internet”.
Zynga’s business model relies largely on monetising its games through the processing of user data, including targeted advertising.
IBM claimed Zynga has used patented data analytics techniques without permission, helping it achieve revenues of almost $2 billion.
“Like other modern technology companies, Zynga recognised IBM’s expertise in the field and decided to incorporate IBM’s prior innovations in big data, analytics, and online advertising instead of spending the time and money to develop its own techniques,” the complaint said.
“As Zynga’s business has developed, it has continued to incorporate additional innovations pioneered by IBM," it added. "But unlike dozens of Zynga’s peers in the industry, Zynga does not have a licence to use IBM’s patents.”
According to the suit, Zynga and its subsidiary Chartboost infringed four IBM-owned patents covering technology developed for Prodigy.
Prodigy was a joint venture with broadcaster CBS and retailer Sears, offering subscribers a range of networked and telecoms services.
The patents-in-suit cover technologies including methods for improving network processing times and allowing more users to access the network.
IBM claimed it notified Zynga of its infringement as far back as 2014, and has been trying to negotiate a licence since then.
Zynga could soon be part of video game company Take-Two Interactive, which announced in January its plans to buy the video game developer for $12.7 billion.