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This week in IP: Vidal uses review to vacate denial, Philippines IP office signs metaverse deal, and more

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Church apologises for staging unauthorised 'Hamilton' play; Ninth Circuit upholds Disney’s Toy Story 4 win; NFT buyers ‘misled’ over bogus IP claims; Ex-Tesla engineer must enter arbitration

Litigation funders eye European growth

Europe may be a patent enforcement hotspot, but for litigation funders, it’s traditionally been something of an afterthought.

That mindset appears to be changing, however, and not just because of the Unified Patent Court (UPC).

Click hereto read the full article.

Other Managing IP stories published this week include:

Can law escape a sci-fi dystopia?

First edicts elevate CNIPA as promising patent trial venue

Top NFT cases and takeaways: counsel sort issues from hype

Singapore law minister puts IP valuation on top of agenda

Small copyright board issues first two post opt-out dismissals

Philippines IP office signs deal with metaverse platform

The Intellectual Property Office of the Philippines has signed a deal with the Singapore-based metaverse platform Stardust to help local creators monetise their content and connect to a global audience through virtual worlds, it emerged this week.

Stardust and the IPOPHL’s Bureau of Copyright and Related Rights (BCRR) aimed to promote the creation, protection, and monetisation of Philippines-registered original IP assets and creative content through the metaverse.

“The metaverse allows our artists and creatives to have more control over the promotion, utilisation, commercialization, and monetisation of their IP creations in a manner that has not been observed before,” said BCRR director Emerson Cuyo.

He added: “So whether we look at the metaverse as an extension of the real world or a totally new digital universe, it stands to benefit the Philippine creative industry as the Philippines has always been recognised for the innate creativity and talent of its people.”

The Stardust platform, launched in July, is expected to run in full swing by the end of the year and will host content on games, films, music, and arts.

Church apologises for staging unauthorised 'Hamilton' play

The Door Christian Fellowship McAllen Church in Texas issued an apology for producing and livestreaming a rendition of the award-winning musical 'Hamilton' on Tuesday, August 23.

The church’s rendition of the play, staged earlier this month, contained several religious references and a scene that compared homosexuality to alcohol and drug addiction.

Pastor Roman Gutierrez apologised to the play's creator Lin-Manuel Miranda through a social media post on the church’s Instagram account, adding that the outfit will pay damages for its actions.

“On behalf of The Door Christian Fellowship McAllen Church, I would like to personally apologise to the creator of Hamilton, Lin-Manuel Miranda, the producers of 'Hamilton', and the numerous others who contributed their IP to 'Hamilton', for staging an unauthorised production of 'Hamilton' that infringed on the rights and copyrights of many,” he said.

Two weeks ago, Miranda expressed his gratitude to those who reached out to him about the illegal and unauthorised production and said he would let the lawyers do their work.

The church also agreed to never stage a performance of 'Hamilton' again and to destroy all recordings and images of the unauthorised performances and rehearsals in its statement.

"Our ministry will use this moment as a learning opportunity about protected artistic works and IP," Gutierrez wrote in the post.

Ninth Circuit defends Disney’s 'Toy Story 4' in Duke Caboom fight

The Court of Appeals for the Ninth Circuit ruled that the Disney character Duke Caboom from 'Toy Story 4' didn’t infringe intellectual property and publicity rights associated with the stunt performer Evel Knievel on Monday August, 22.

The appellate court followed the test set forth by Rogers v Grimaldi to accommodate first amendment concerns and determine whether it could apply the Lanham Act to the case.

The test set out that the court could only apply the Lanham Act if the defendant’s use of the mark wasn’t artistically relevant to the work or if it explicitly misled consumers as to the source or content of the work.

But the Ninth Circuit found that Duke Caboom clearly had artistic relevance and that the plaintiff didn’t allege sufficient facts to show the character was explicitly misleading about its source.

The court also found that the transformative use factors favoured Disney, barring the plaintiff’s claims that the media company had violated its right to publicity under Nevada law.

“Even if the character may be generically reminiscent of Knievel to some extent, the district court properly concluded that it is ‘not a literal depiction,’ and instead shares general features basic to stuntmen,” the court stated.

The ruling affirmed a decision from the District Court for the District of Nevada to dismiss the case in September 2021 on the basis of first amendment rights.

Vidal uses director review to vacate IPR denial

USPTO director Kathi Vidal used her director review authority to vacate decisions to deny institution of inter partes reviews on Tuesday, August 23.

A group of petitioners that collectively used the name Oxylabs filed two IPRs against patent owner Bright Data after its previous petition was denied on discretionary grounds, but the PTAB also discretionarily denied these petitions.

Vidal granted director review of her own accord because she disagreed with the board’s analysis of the factors set forth by the 2017 PTAB case General Plastic v Canon Kabushiki Kaisha and how they applied to follow-on petitions.

The board had found that the petitioner’s failure to stipulate that it wouldn’t raise grounds asserted in its petition in related federal court litigation outweighed the fact that the PTAB had not evaluated the earlier petition on the merits.

But Vidal disagreed with this analysis. She argued that if a first-filed petition was discretionarily denied, the other factors of General Plastic should only weigh in favour of denial if there were “road-mapping” concerns, or multiple, staggered petitions challenging the same patent and same claims.

“Here, the board found no evidence of road-mapping,” Vidal noted.

“Indeed, ‘road-mapping’ concerns are minimised when, as in this case, a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those in the previously-filed petition and the later petition is not refined based on lessons learned from later developments.”

Vidal remanded the case to the panel to consider the patent owner’s remaining arguments, including those for discretionary denial under Fintiv.

NFT buyers ‘misled’ over bogus IP claims

Buyers of non-fungible tokens have been misled into thinking they own the intellectual property associated with the digital assets, a report found last Friday, August 19.

The NFT Licences: Facts & Fictions survey from blockchain investment firm Galaxy Digital found that the vast majority of NFT purchases confer no IP ownership rights for the underlying content or artwork.

Such transactions typically only offer the buyer a usage licence to the content, sometimes with highly restrictive conditions.

Of the top 25 NFT collections by market capitalisation, only one – World of Women (WoW) – attempts to confer IP ownership to buyers, the survey found.

WoW transactions include a digital ownership assignment, but it isn’t clear if buyers of WoW NFTs are required to include those rights as part of any resale.

Many NFT issuers have made misleading statements in marketing materials or in online forums and digital chatrooms, sometimes contradicting their own licence agreements, the report states.

“In other cases, issuers appear to have intentionally misled purchasers, or misled purchasers by not explicitly correcting the market’s misconception as to the ownership rights purchasers hold over their NFTs and underlying artwork, essentially allowing the misconception to go unchecked,” the author concluded.

Monthly NFT trading volume peaked at more than £35 billion ($41 billion) this year but slumped to less than £5 billion ($5.92 billion) last month.

Ex-Tesla engineer must enter arbitration over IP theft claims

A former Tesla engineer accused of stealing the driverless car maker’s trade secrets must enter into arbitration with his former employer, a San Francisco judge ruled last Thursday, August 18.

The order is a win for Tesla, which argued that Alexander Yatskov was bound to arbitration by his contract with the firm.

Tesla accused Yatskov of taking confidential files relating to the company’s Dojo supercomputer.

He also gave Tesla a dummy computer when it asked to investigate the claims, the suit added.

But Yatskov says the suit was filed on his last day of work at Tesla and that all proprietary files were subsequently returned.

He said he wanted to rebut Tesla’s claims in open court as the allegations were humiliating and had irreparably damaged his reputation.

But district judge James Donato of the District Court for the Northern District of California agreed that Yatskov was obliged to enter arbitration under his contract with Tesla.

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Ana Gouvêa Monetti is a legal counsel at Siemens in Brazil
Dev Narasimhan is a patent portfolio manager at CoMotion at University of Washington in the US
Kinga Palińska is an IP team member at CD Projekt in Poland
Charles Roger is a senior contract and licensing manager at STMicroelectronics in France
Hyeran You is a senior legal counsel at Samsung Electronics in South Korea
Thibault Saurat is a group patent manager at Ontex in Belgium
Armin Schwitulla is a senior litigation counsel at Nokia in Germany
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