And in our news and analysis:Unitary Patent and UPC: A progress report (April 2016)ANDA patent litigation rises 68% in past two yearsUS House passes trade secrets billEuromoney LMG Europe Women in Business Law Awards 2016 – shortlist announcedUPC scenario 4: Challenging a non-opted out European patentHong Kong accepts first movement mark registrationUS Supreme Court hears Cuozzo oral argumentsApple to pay $25m to settle patent litigation with Marathon subsidiary
USTR releases Special 301 report
The Office of the United States Trade Representative (USTR) has released its annual “Special 301” report, giving the US’s view on the adequacy and effectiveness of its trading partners’ protection and enforcement of intellectual property rights.
Of the 73 trading partners reviewed, 34 of them were placed on the priority watch or watch list in this year's report. Eleven countries are on the priority watch list: Algeria, Argentina, Chile, China, India, Indonesia, Kuwait, Russia, Thailand, Ukraine, and Venezuela.
China remains on the priority watch list. It has undertaken wide-ranging intellectual property law reform efforts and some positive enforcement initiatives, but USTR said both longstanding and new IP rights concerns merit increased attention including with respect to trade secret theft, rampant online piracy and counterfeiting, continued high levels of physical pirated and counterfeit goods, and localisation requirements that condition market access on use of IP rights developed in or transferred to China.
India also remains on the priority watch list this year for lack of sufficient measurable improvements to its IP rights framework despite more robust engagement and positive steps forward on protection and enforcement undertaken by the government. USTR said it retains the option of conducting an out-of-cycle review of India should developments – either positive or negative – weigh in favour of a review in advance of the annual cycle.
USTR adds Switzerland to the watch list this year. “While Switzerland is generally a strong partner on IP issues, copyright holders have essentially been prevented from enforcing their rights against online infringers and Switzerland has become an increasingly popular host country for infringing websites,” said USTR.
It also announced that it will conduct out-of-cycle reviews for Colombia, Pakistan, Tajikistan, and Spain to promote engagement and progress on specific IP rights opportunities and challenges identified in this year’s review.
Pakistan was upgraded from the priority watch list to the watch list. It has taken steps to improve IP rights protection and enforcement including establishing specialized IP courts, establishing a timeline to draft and implement amendments to IP laws, improving border enforcement procedures, undertaking public awareness programs on IP protection, and committing to regular action-oriented engagement with the US government and stakeholders.
Ecuador reinstated criminal procedures and penalties for commercial scale counterfeiting and piracy which was the basis for downgrading Ecuador to the priority watch list in 2015.Tajikistan, Belarus and Trinidad & Tobago were removed from the watch list this year for improvements to enforcement of IP rights including in the areas of customs enforcement, criminal prosecutions, and broadcast piracy, respectively.
A surprise play
Following this blog last week reporting the USPTO had filed a petition for Supreme Court review of In re Tam – the case involving The Slants – the past week saw development in another case involving the issue disparaging marks.
As the TTABlog reports, Pro-Football has filed a petition for writ of certiorari in the Washington Redskins case. This was surprising because the case is still pending before the US Court of Appeals for the Fourth Circuit.
The petition asks the Supreme Court to consider immediately the constitutionality of the Section 2(a) disparagement clause of the Lanham Act. Pro-Football argues the case is “an essential and invaluable complement” to the Slants case.
“Assuming the Court grants review in Tam, this case is the paradigmatic candidate for certiorari before judgment because it is a necessary and ideal companion to Tam,” says the petition. “The Court often has granted certiorari before judgment to consider complementary companion cases together, especially when the two cases raised important questions of constitutional law.”
It said granting cert would allow the Court to consider the question presented in a wider range of circumstances, resolve intertwined, equally important questions, and avoid piecemeal review.
Peter Sullivan on Foley Hoag’s Trademark & Copyright Law blog noted that cert is not sought before appellate judgment very often. He noted the odds of a grant are already slight and there must be extraordinary circumstances to warrant a litigant short circuiting the appellate review process and going straight to the Supreme Court.
“The Pro-Football v. Blackhorse case does raise a number of issues that were not raised in Tam nor decided by the en banc Federal Circuit,” said Sullivan. “Pro-Football argues that Section 2(a) is impermissibly vague and is arbitrarily enforced, violating due process. This argument was not developed in the Tam case. Pro-Football also argues that the retroactive cancellation of an important property right without notice violates due process. Notice was not an issue in Tam. The administrative posture is also different between the two cases, with Tam being a refused registration and Pro-Football having its previously allowed trademark registration cancelled after many years.”
The Supreme Court could take up the petitions in June.In further related news, the Cleveland Indians this week filed a motion seeking suspension of the cancellation of it "laughing Indian" mark pending The Slants ruling.
Boldly going where no brief has gone before
An amicus brief has been filed that begins by quoting a Klingon proverb in Klingon script, reports Public Knowledge. The proverb translates as “we succeed together in a greater whole”. The brief comes in a lawsuit over copyright in the constructed language of Klingon featured in Star Trek.
Paramount and CBS sued over a crowdfunded Star Trek fan film called Axanar. One of the elements the plaintiffs claimed was covered by copyright was the Klingon language.
“Saying that the owners of Star Trek’s copyrights (here, Paramount and CBS) have the power to prevent speaking of any Klingon words – that’s a bold step, because it’s not only this one movie where Klingon is spoken,” said Charles Duan, director of the patent reform project at Public Knowledge. “That’s where the amicus brief, filed by the Language Creation Society, comes in. The point of amicus briefs is to educate judges about the broader implications of a case, beyond the parties actually suing each other, and that’s exactly what this brief does.”
The brief describes the “living community of Klingon speakers”, and argues the community built up and augmented the language’s vocabulary. “Klingon has spread throughout the world, and its students have surpassed its creator in linguistic fluency,” says the brief.Duan wrote: “Perhaps most enjoyable in the brief was the sharp takedown of Paramount’s bizarre argument that Klingon copyright is not concerning because ‘a language is only useful if it can be used to communicate with people, and there are no Klingons with whom to communicate’. Unsurprisingly, the brief retorts that (1) there are plenty of Klingon speakers with whom Klingon may be fluently communicated, and (2) there are plenty of dead languages, like ancient Greek, that are undoubtedly still useful. The fact that Paramount is even making this argument goes to show how narrow-minded its view of the Klingon language is – all but totally ignoring the fact that a vibrant community has constructed itself around this constructed language.”
Not fit under 101
An International Trade Commission judge has terminated two Jawbone patents from its investigation for being directed to ineligible subject matter under Section 101, reports the Wall Street Journal. The patents covered sleep monitoring and data output.The Journal reported these were the last of the patents that Jawbone had claimed Fitbit had infringed in an ITC complaint seeking a halt to US imports of Fitbit’s wearable devices.
“The claims of the ‘413 and ‘707 patents seek a monopoly on the abstract ideas of collecting and monitoring sleep and other health-related data, and are therefore ineligible under section 101,” wrote Judge Dee Lord in granting the order. “No innovative concept is claimed in either patent.” This followed the ITC on April 4 terminating two other patents from the investigation.
The two companies have sued each other in district courts for patent infringement. Jawbone also accuses Fitbit of a plan to hire its key employees and steal trade secrets.
“The two patents that are the subject of the ITC ruling represent only a portion of Jawbone’s case against Fitbit and a small subset of Jawbone’s overall patent portfolio,” the Wall Street Journal quoted Jawbone as saying in a statement.
Movement on copyright reform?An important trade secrets bill was passed by Congress in the past week, but some are pushing for further IP reform. As part of World IP Day, US House Judiciary Committee chair Bob Goodlatte revealed some movement on copyright reform.
“In the weeks ahead, we will identify areas where there is a likelihood of potential consensus and circulate outlines of potential reforms in those areas,” Goodlatte said in remarks. “Then we will convene stakeholders for further work on these potential reforms”
He added: “And you have my personal commitment that as the review shifts to more focused work on potential reforms, the process will be transparent and the Committee will continue to ensure that all interested parties have the opportunity to weigh in on issues of concern to them. Our copyright system deserves no less.”
The Committee three years ago began a process to review US copyright law, gathering input from a range of copyright creators, owners, distributors, platforms, and end users. It heard from 100 witnesses at 20 formal hearings, and held three public roundtables with more than 60 participants.
In contrast, some are pushing back on further efforts on patent reform. Morning Consult reports that the Innovation Alliance will spend a total of $95,000 in April and $160,000 in May to push its “Save the Inventor” campaign on NBC’s Washington network. Some $100,000 of that will be spent on commercial during “Meet the Press”.“Intellectual property theft hurts nearly half of all U.S. businesses,” the advertisement says. “How many more will be victimized if Congress weakens patent laws?”
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