This week in IP: US and UK launch SEP reviews, YouTube publishes first transparency report, and more

Counsel share strategies for PTAB director review

Lawyers at three life sciences companies, Unified Patents and one law firm say they would request director review in the right circumstances – although they are divided over how often they would make such requests.                                          

Some sources say they would always ask for review after losing cases at the board because there wouldn’t be any downsides to doing so.

Ashita Doshi, IP counsel leader at biotech company Thermo Fisher in California, says she doesn’t see why anyone would avoid the process. She notes, however, that she hasn’t had the opportunity to request director review yet.

Click here to read the full article.

Other Managing IP stories published this week include:

• Drug-access backers may push know-how sharing in WHO deal
• China-set FRAND rate will imbalance market, fear patent owners
• India’s advertising watchdog chief talks influencers, IP and more
• China TM data shows low preference for settlement and appeal
• Getting around clearance conflicts: six in-house share top tips
• Exclusive: EUIPO BoA to expand mediation services

YouTube report reveals millions of incorrect copyright claims

YouTube published its first-ever Copyright Transparency Report on Monday, December 6, revealing that the platform decided around 2.2 million copyright claims in favour of uploaders in the first half of 2021.

The report, intended to shed light on YouTube’s copyright enforcement efforts, said the platform received a total of 729 million copyright claims from January to June.

Almost all of those (99%) originated from its Content ID system, a tool supporting rights owners such as movie studios and music labels that typically face heavy reposting of copyright-protected material.

Apart from Content ID, YouTube uses two other enforcement systems – a public webform tool that is mostly accessed by limited copyright owners and the Copyright Match tool, which helps over 2 million channels to detect content copies.

The company measured how often creators pushed back against removals and Content ID claims and noted that fewer than 1% of all Content ID claims were disputed. In cases where disputes arose, the report showed, more than 60% of the resolutions went in favour of uploaders.

In a public post, the company said: “We are committed to making sure that YouTube remains a vibrant community with strong systems in place to enable rightsholders to manage their content on YouTube, and we look forward to the next update of the Copyright Transparency Report.”

In the future, YouTube will publish a copyright transparency report twice a year.

China cracks down on Olympics IP infringement

With the Winter Olympic Games and Paralympic Games scheduled to take place in Beijing in early 2022, CNIPA launched a “high-pressure” campaign to crack down on any unauthorised use of the Olympics logo or athletes’ names, state news agency Xinhua reported on Wednesday, December 8.

The campaign, launched in October, will last until the end of June 2022, announced Zhang Zhicheng, director-general of CNIPA’s intellectual property protection department, in a press conference.

During the campaign, those who infringe IP rights involving Olympic elements will be severely punished, he said, adding that the authorities are closely monitoring factories, distribution centres and e-commerce platforms for violations.

The campaign also aims to raise public awareness on the need to respect IP rights, and build a quick-response system for sharing IP-related information and evidence of infringement.

Earlier this month, Beijing customs officials announced that they had seized 100 fabric patches with the Olympic logo, in line with the campaign’s objectives.

The owner of the shipment had failed to show that the International Olympic Committee had authorised its products.

UKIPO seeks industry views on competition in SEP market

The UKIPO opened a highly anticipated call for views on the future of the UK’s rules on standard-essential patent licensing this week.

Stakeholders will have until March 1 to submit evidence on 27 questions, which largely focus on potential market power issues in the SEP licensing market.

In its announcement of the review on Tuesday, December 7, the UKIPO acknowledged concerns over the level of transparency in SEP licensing, which it said had made it difficult to establish a common understanding of what was fair, reasonable, and non-discriminatory (FRAND).

Several of the questions examined specific abuses of market power in SEP licensing, as had been alleged by some patent implementers.

For example, the UKIPO is seeking evidence of circumstances where implementers are required to buy licences to a broader range of patents not essential to the relevant standard.

The call for views also includes other contentious topics in the field, such as the benefits and drawbacks of national courts setting global FRAND rates, and the role of patent pools in FRAND licensing.

UKIPO CEO Tim Moss said: “We want to ensure the UK’s framework remains robust and continues to be regarded as one of the best in the world, while keeping pace with global developments and challenges around SEPs and FRAND licensing.”

“It will help us better understand how our IP framework supports the SEP ecosystem, while ensuring a fair balance is achieved between all entities involved, and the maximum benefit to UK innovation,” Moss added.

It comes the same week as the US Department of Justice announced its own review of SEP policy, also focusing on the intersection of IP and competition law.

Abba sues over ‘parasitic’ cover band

A company representing Abba sued a UK-based cover band for trademark infringement last week, describing the tribute group’s “parasitic” efforts to mislead fans.

In the suit, filed December 3, Swedish record label Polar Music accused Abba Mania of giving a false impression that it was an officially endorsed cover band.

Abba offered the cover band the opportunity to change its name, but it declined, the suit added.

Abba Mania’s website describes the band as the “original tribute from London’s West End” and includes adverts for the “official Abba Mania tribute show”.

A notice at the bottom of the site clarifies that the cover band is “in no way associated, affiliated, or endorsed by Polar Music and Abba”.

But according to Abba’s complaint, the use of the terms “official” and “original” gave consumers a false impression that the two were connected.

Polar Music was founded in 1963 by Abba manager and lyricist Stig Andersen. It later turned into a management company for Abba, its most successful artist, and is now owned by Universal Music Group.

The Swedish popstars returned to the public eye lately with the release of Voyage, their first studio album since 1981.

They are also scheduled to begin a concert residency in May next year at the Queen Elizabeth Olympic Park in London, where they will be represented by so-called virtual ‘ABBAtars’.

Supposed Bitcoin inventor ordered to pay $100 million    

The man who claims to have invented Bitcoin was ordered to pay $100 million on Monday, December 6, to W&K Info Defense Research for a breach of IP rights by a jury at the District Court for the Southern District of Florida.

W&K Info Defense Research was a joint venture between the defendant Craig Wright and the late David Kleiman.

Though $100 million was no small sum, the case could have gone a lot worse for Wright. The plaintiffs said the Kleiman estate was entitled to about $50 billion.

Bloomberg reported that Wright was relieved by the decision, and that he thought the ruling proved he was the creator of Bitcoin.

Wright had previously filed copyright suits in other courts on the basis that he was the true owner of Bitcoin.

The England and Wales High Court handed down a default judgment in favour of Wright in June, ordering the publisher of the Bitcoin.org website to stop hosting a copy of the Bitcoin white paper, which Wright claimed to have authored.

The ruling was issued because Cobra, the pseudonymous creator of the site, chose not to offer a defence to maintain anonymity.

The Crypto Open Patent Alliance, a Bitcoin industry working group, filed a separate challenge in April, asking the high court to rule that Wright was not the true owner of the paper.

US starts SEP consultation                                      

The US Department of Justice worked with the USPTO and the National Institute of Standards and Technology to publish a draft policy statement on standard essential patents on Monday, December 6.

The draft policy addressed the circumstances in which SEP owners would be entitled to injunctive relief.

It noted that injunctions could be justified if implementers were unwilling or unable to take fair, reasonable and non-discriminatory (FRAND) licences.

But it said injunctive relief was inconsistent with the goals of FRAND agreements when implementers were willing to take licences and could compensate SEP holders for past infringement and future use of the patents.

This draft statement was thought by some counsel to be a middle ground between the department’s 2019 statement, which was considered a lot friendlier to SEP owners, and its 2013 policy, which was better for implementers.

But the change will likely be more positively received by licensees than patent holders.

The draft policy is subject to change, of course. The DoJ said it was seeking public comment and that stakeholders had 30 days to respond to 11 questions about the policy and SEPs.

It asked the public whether the draft statement appropriately balanced the interests of patent owners and licensees, what effect the statement would have on standards-setting organisations and whether the possibility of injunctive relief had been a significant factor in SEP negotiations.             

The DoJ developed this statement in response to President Joe Biden’s executive order from July that encouraged it to review its 2019 policy statement to ensure it adequately promoted competition.

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