This week in IP: Poland copyright claim dismissed, Senator Hatch dies, and more

An overhaul of France’s patent system in 2020 stripped the country’s national registrations of the advantages they offered filers compared to alternatives such as the European patent, spurring them to stop filing for local patents, France-based patent counsel told Managing IP this week.

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The Court of Justice of the EU ruled on Tuesday, April 26, that Article 17 of the EU’s Copyright Directive was compatible with the bloc’s fundamental human rights.

The CJEU dismissed the challenge from Poland and largely followed the opinion of the advocate general handed down last year.

In the complaint filed in 2019, Poland argued that Article 17 of the directive could lead to censorship and limit freedom of expression guaranteed in Article 11 of the EU Charter of Fundamental Rights.

Article 17 requires content-sharing platforms to make “best efforts” to remove copyright-protected material from their websites or obtain licences from rights owners.

The CJEU said the contested article was in line with Article 11, provided that sufficient safeguards to stop legal content from being blocked were implemented.

So far, most EU countries have yet to implement the directive into their national laws, despite the deadline passing in June last year.

In August, the EU began infringement proceedings – a process in which the bloc seeks further clarity and potentially begins legal action – against those nations yet to act.

The EPO’s Boards of Appeal held a record number of oral proceedings in 2021, most of which were carried out online, the boards’ annual report revealed on Monday, April 25.

A record 1,720 oral proceedings were held last year, 76% of which were conducted using videoconferencing technology, the BoA reported.

The study said conducting oral proceedings by videoconference and teleworking were pivotal for ensuring the seamless continuation of the BoA’s work without exposing parties, representatives, and board members to avoidable health risks during the pandemic.

In the report’s foreword, BoA president Carl Josefsson referenced the Enlarged BoA’s clarification in G1/21 that oral proceedings could be held by videoconference even without the consent of the parties during periods of general emergency.

“After two years of practice, parties and representatives have become more accustomed to this format and now frequently request oral proceedings by videoconference,” Josefsson said.

According to the annual report, the BoA also settled almost 3,000 cases last year, an 11% rise from 2020. The number of pending cases was reduced by 13.9% to 7,131 cases.

The BoA added that it has also started holding in-person oral proceedings again, albeit on a limited basis.

The US Court of Appeals for the Ninth Circuit overextended the definition of “expressive works” to include dog toys and must change course, INTA told the court in an amicus brief filed Monday, April 25.

INTA urged the court to review en banc a three-judge panel’s decision to side with the maker of a dog toy. The toy in question resembled a Jack Daniel’s bottle, and it was said whisky maker that brought the suit.

The Ninth Circuit panel reasoned in March 2020 that the dog toy was an expressive work carrying a humorous message, and that that designation qualified it for protection under the first amendment of the US Constitution.

The appellate court cited Rogers v Grimaldi, a 1989 decision from the Court of Appeals for the Second Circuit, which threw out Oscar-winner Ginger Rogers’ claims that the title of Fedrico Fellini’s 1986 film ‘Ginger and Fred’ infringed her trademark rights.

In its latest amicus brief, INTA said the Ninth Circuit was the first court to expand the definition of expressive works to include consumer products, leaving trademark owners with no remedy against the misuse of their brands.

“Only in the Ninth Circuit does a commercial or consumer product with minimal ‘expression’ receive a Rogers analysis, a test that was specifically designed to address, and only makes sense in the context of truly artistic and creative works,” the brief said.

The Ninth Circuit also cited the Court of Appeals for the Fourth Circuit, which in 2007 set out that dog toys shaped like handbags were an acceptable parody of Louis Vuitton’s brand.

In Rogers, the Second Circuit said the use of a trademark could be protected as free expression when the mark had limited artistic relevance to the work in question.

In its amicus brief, INTA argued that it was illogical to apply this analysis to consumer goods such as dog toys because the creative expression was not essential to the product.

“The question of artistic relevance is comprehensible and logical in traditional works of authorship because the work and the expression are intertwined and inseparable,” the brief said.

The Supreme Court refused Jack Daniel’s petition to review the Ninth Circuit’s decision last year.

US district judge Alan Albright suspended the latest patent trial between Intel and non-practising entity VLSI on Tuesday, April 26, because of several of the parties contracting COVID.

Monday marked the start of the third trial in the case at the District Court for the Western District of Texas. The first trial famously ended in a $2.18 billion damages award being handed over to VLSI in 2021.

But Alright excused jurors in the latest trial after learning that participants had tested positive for COVID on Tuesday morning. Attorneys for both parties had made opening arguments the previous day.

VLSI had accused Intel of infringing patents related to microprocessor chips, which Intel denied.

The NPE prevailed in the first trial, but the court rejected a further set of infringement claims in the second trial last April.

The Office of the US Trade Representative removed Ukraine and Saudi Arabia from its priority IP watchlist yesterday, April 27, while keeping its attention fixed on global anti-piracy measures.

The USTR’s annual Special 301 Report assesses the effectiveness of trading partners’ intellectual property laws and enforcement regimes.

It includes a priority watchlist of countries whose IP regimes present the biggest concern to the US government.

The priority list featured Ukraine and Saudi Arabia last year, largely due to their failure to deal with online copyright infringement.

The USTR yesterday confirmed it had suspended its review of Ukraine due to Russia’s invasion of the country in February.

Ukraine had “engaged meaningfully” with the US government over the past year on issues of concern, including the use of unlicensed software by Ukrainian state agencies and anti-piracy measures, the report added.

Saudi Arabia was taken off the priority list as well after it took steps to formalise its IP enforcement procedures, including the creation of specialist IP courts, the USTR said.

The countries listed on the 2022 priority watchlist were Argentina, Chile, China, India, Indonesia, Russia, and Venezuela, which were all included last year as well.

The USTR said it would also run an out-of-cycle review of Bulgaria to decide whether the country had addressed US concerns over anti-piracy enforcement.

The International Intellectual Property Alliance, a global coalition of major copyright owners and trade associations, welcomed the USTR’s continued emphasis on anti-piracy enforcement.

In a statement, US trade representative Katherine Tai said: “IP-intensive industries support more than 60 million jobs – from the independent inventor just starting out to the documentary filmmaker studying critical social issues.

“We need robust protection and enforcement in foreign countries to protect these individuals, their livelihoods, and ensure they can fairly compete in the global marketplaces,” Tai said.

Orrin Hatch, the longest-serving Republican senator in US history and co-sponsor of the Hatch-Waxman Act, died at age 88 on Saturday, April 23.

The senator is best known in the intellectual property world for his work on his namesake act, which set out the process for pharma companies to file Abbreviated New Drug Applications for approval of generic products.

This bill, which was passed in 1984, was intended to promote the development of generic drugs. But the law also granted innovator companies producing new chemical entities with five-year periods of exclusivity in situations where the Food and Drug Administration couldn’t approve generic versions.  

According to BioCentury, the senator organised confidential negotiations among representatives from innovator and generic companies

Hatch was a senator from 1977 to 2019. He acted as president pro tempore, the second highest ranking role of the US senate, from 2015 to 2019.

President Joe Biden praised Hatch in post on the White House website on April 24.

The USPTO announced plans to ease its transition to DOCX for patent applications on Wednesday, April 27.

The office said that until December 31, applicants could upload backup PDF versions of their applications with their DOCX submissions.

The office added that there was no obligation to provide such backups and that there were no fees associated with them.

DOCX refers to a word processing format supported by Microsoft Word 2007 and higher, Google Docs, Office Online, Pages for Mac, and LibreOffice.

The USPTO said it would allow for this backup option because of feedback that the new format could result in conversion discrepancies. 

“The backup PDF option will allow applicants concerned about the new format to gain confidence in the reliability and accuracy of filing applications in DOCX.

“Applicants can be assured that, should there be any conversion discrepancies, they can rely on the backup PDF to verify the substance of their original filing,” the office said.

Patent applicants will be charged a surcharge fee for applications that aren’t filed in DOCX after January 1 2023.

Spanish apparel retailer Zara has threatened to challenge the UK-based fashion boutique House of Zana for being “conceptually identical”, it emerged this week.

Shortly after the House of Zana’s trademark applications to register its name before the UKIPO were published last year, Zara’s lawyers opposed the Darlington-based brand and sent a legal notice to Amber Kotrri, the owner of the boutique.

The Trade Marks Tribunal is set to hear the opposition arguments in May.

Zara alleged that the name of Kotrri’s 2019-established fashion house diluted “the distinctiveness and reputation of the Zara brand” and that there was a risk “consumers [would] misread, mishear, mispronounce or otherwise perceive House of Zana as Zara”.

The firm asked Kotrri to rename her business and remove all existing branding.

But she defended her brand name, arguing there was no chance of confusion and that the changes would “cause irreparable damage to her business”.

Zana means ‘fairy’ in Albania, the country where Kotrri founded the company.

Zara’s move spurred a social media outcry, leading hundreds of people to condemn the company for trying to oust a small business.

Zara’s owner Inditex said it had opposed the ‘House of Zana’ trademark because of its similarity to Zara’s brand name.

“We wish the business every success and we continue to make efforts to reach the business directly so we can resolve the situation amicably,” a spokesperson said.

Kotrri, however, refuted Zara’s claims. She said: “The only correspondence I’ve ever had is from their lawyers and it was that first letter, which I wouldn’t say was very friendly as it was telling me to sign and close the business.

“It’s always been through their lawyers about the fight for the trademark.”

The US District Court for the Central District of California dismissed a trademark dispute between outdoor apparel company The North Face and street artist Leonard McGurr over his signature ‘atom’ symbol on Friday, April 22.

The North Face allegedly used the symbol as a logo in its clothing line without any permission from McGurr.

District judge Stanley Blumenfeld preliminarily dismissed the case after the parties submitted a joint notice of settlement on Thursday, April 21, indicating that they’d reached a global agreement.

The parties also requested that the court suspend all pending case deadlines on the grounds that they were working to document the settlement and expected to submit the stipulation of dismissal within 60 days.

McGurr – professionally known as Futura – sued The North Face last year for copying the atom symbol for its ‘FutureLight’ outerwear line.

He claimed that he often used the atom symbol as a traditional logo to identify himself as the source of consumer products he offered and that he collaborated on with several companies, including The North Face's Japanese division and its fellow VF Corp-owned brand Supreme.

Blumenfeld rejected McGurr’s trademark claims last year, finding that the atom symbol was not eligible for trademark protection, but upheld the artist’s claims of unfair competition by The North Face.

The parties have not yet disclosed the details of the settlement.