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This week in IP: Pooh becomes public, USPTO outlines TM sanctions, and more
Nikola drops Tesla suit; US Copyright Office hires new general counsel; Markle and Mail agree copyright damages

Counsel set out concerns about EPO after latest BoA move announcement
In light of the proposal to move the offices of the EPO Boards of Appeal back to central Munich, just five years after they were relocated to the suburb of Haar, counsel told Managing IP they’d be more than pleased the see the BoA return.
They noted that the move had given them pause to reflect on the whole episode and what it said about the EPO, however.
“From commercial point of view, it’s a catastrophe,” said Beat Weibel, chief IP counsel at Siemens in Munich.
Click here to read the full article.
Other Managing IP stories published this week include:
- Asia patent trends in 2022: SEP rates, court changes and more
- Europe: key patent issues counsel should monitor this year
- From GIs to AI: Four European IP trends to watch in 2022
USPTO sets out new TM sanctions
process
The USPTO outlined a new administrative
process for investigating suspicious trademark applications in a federal notice
published on Wednesday, January 5.
The process has been designed to
target matters that appear to violate the Trademark Rules of Practice,
including the rules concerning signatures, certificates, and representation of
others in trademark matters before the USPTO, the office wrote.
Under the new procedure, once the
USPTO initiates an investigation, relevant applications could be removed from
examination status to ensure they don’t move forward to approval for
publication or registration while the investigation takes place.
If an investigation ends without the
issuance of an administrative order, the suspension will be lifted, and the
application will then be assigned to an examining attorney.
But if the USPTO
identifies a violation of its rules or the terms of use of its website,
particularly when said violation indicates an intent to circumvent the rules,
the office will inform the relevant parties and specify the proposed action or
sanction it deems appropriate, if any.
Actions might
include terminating all involved applications, striking a submission,
precluding a party from appearing before the USPTO in trademark matters, or
deactivating all relevant uspto.gov accounts.
The USPTO will also
issue a final decision that includes an order for sanctions, if appropriate.
In its notice, the office said the new
procedure was set up to protect the integrity of the US trademark register.
As Managing IP reported in July, trademark
applications exploded at the USPTO last year, causing disruption for brand
owners, particularly those in the pharmaceuticals industry and those that
typically rely on WIPO’s international trademark system.
Sources suggested the surge was caused
by a wave on filings from China and other foreign countries, many of which circumvented
the USPTO’s rules.
US Copyright Office hires Suzanne
Wilson as general counsel
The US Copyright Office announced on Wednesday,
January 5, that Suzanne Wilson would be its new general counsel and associate
register of copyrights.
Wilson will take her position on
January 31. She will be responsible for regulatory, litigation and policy
matters at the office.
Wilson worked as deputy general
counsel at the Walt Disney Company from 2011 to 2020, where she oversaw the
business’s intellectual property and interactive and media legal functions.
She also served as a clerk at the Court
of Appeals for the Ninth Circuit for the late senior judge Warren Ferguson and as
a partner at Arnold & Porter.
She graduated from Harvard Law School
in 1990.
Regan Smith previously held the
general counsel position at the Copyright Office but left in July 2021 and
joined Spotify as head of public policy in August. The office appointed Kimberly
Isbell to serve as acting general counsel in December 2021.
Register of copyrights Shira Perlmutter said she was delighted to welcome Wilson to this role. “She brings
to the Copyright Office deep knowledge and expertise in copyright law,
litigation, and technology and will be a valuable addition to our senior
management team.”
Nikola drops $2
billion patent suit against Tesla
Electric-vehicle
maker Nikola has dropped a $2 billion patent infringement suit against rival
Tesla at the District Court for the Northern District of California, it was revealed
on Tuesday, January 4.
In their joint
filing, Nikola and Tesla did not reveal the reason they decided to drop the
suit. The dismissal, however, was without prejudice, which meant that the
parties could take the dispute to court again.
Nikola had sued
Tesla in Arizona in 2018 for infringing its rights over the design, utility
patents and trade dress of its alternative fuel heavy-duty truck Nikola One,
launched in 2016.
The case was
moved to the San Francisco-based federal court later that year.
The plaintiff had
alleged in its complaint that Tesla had copied the designs of the truck’s
fuselage, wrap windshield and side door.
Tesla, in
response, had refuted Nikola’s allegations and had claimed that Nikola’s design
patents were invalid because they were similar to an existing truck design.
A federal judge had dismissed the suit
in October last year because of the inaction of the parties involved. The court
reinstated the suit shortly after that, following a submission filed by
Nikola.
Winnie the Pooh
and Bambi enter public domain – but not Disney versions
The two novels ‘Winnie
the Pooh’ and ‘Bambi, A Life in the Woods’ entered into the public domain in
the US this year, it was reported this week, along with several other books,
films, sound recordings, and compositions from 1926.
Any adaptations,
remixes, or extensions of the characters in the novels must be based on the
original 1926 works, however.
Characters
including Pooh’s mischievous friend Tigger remain under copyright protection because
they were introduced into the novels at a later stage. Disney’s adaption of Winnie
the Pooh – in which the honey-loving bear sports a red t-shirt – also remains protected.
Additions to the
public domain, which happen on the first day of each year, are closely followed
by content creators, because these inclusions add to the pools of characters,
stories, and ideas they can build on in their own work.
Disney itself has
based several of its films on public-domain works, including ‘Alice in
Wonderland’, ‘Cinderella’, ‘The Jungle Book’ and ‘The Little Mermaid.’
Copyright in the US lasts for 70 years
after the death of the author.For works of corporate authorship,
copyright lasts for 120 years after creation or 95 years after publication,
whichever comes sooner.
Markle and Mail
on Sunday publisher agree copyright damages
The publisher of The
Mail on Sunday will pay Meghan Markle an undisclosed sum in damages for
infringing her copyright in a private letter to her father, court documents
revealed on Wednesday, January 5.
Markle
successfully sued Associated Newspapers for copyright and privacy law
violations after contents of the letter were published in The Mail on Sunday
and the Mail Online.
The England and
Wales High Court found in Markle’s favour last February. The duchess saw off an
appeal from Associated Newspapers at the England and Wales Court of Appeal in
November.
The settlement
will see the news publisher pay Markle £1 in nominal damages for breaching
privacy law, plus an additional, undisclosed sum for copyright infringement.
Markle’s legal
team said the former actor would donate the “substantial” sum to charity.
The deal marks the
end of the case. Prior to the settlement, Associated Newspapers considered an
appeal to the UK Supreme Court.
The Mail on
Sunday
published a statement on December 26 acknowledging that it had infringed
Markle’s copyright and said that financial remedies had been agreed.
In a statement
released after her win at the Court of Appeal in November, Markle described the
judgment as a “victory not just for me, but for anyone who has ever felt scared
to stand up for what’s right”.
“While this win
is precedent-setting, what matters most is that we are now collectively brave
enough to reshape a tabloid industry that conditions people to be cruel, and
profits from the lies and pain that they create,” Markle added.
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