This week in IP: EUTM data unpacked, FTC drops Qualcomm case, Warhol infringed Prince photo

Consumer goods company Unilever – which until November 2020 had its headquarters in both the Netherlands and the UK – topped the list of most active EUTM filers in the Netherlands in 2020 by filing 68 applications.

Unilever was also the second biggest Netherlands-based filer from 2015 to 2020 with 392 applications.

Michel Rorai, Unilever’s lead IP counsel, says the company’s trademark activity in 2020 mainly centred on updated brand logos, extra classes to protect extensions of existing brands, and some sub-brand launches.

One source notes that fast-moving consumer goods (FMCG) companies – including those with multiple brands to protect – are the most likely to remain active in terms of filing.

FMCG companies, such as Unilever, typically pay close attention to obtaining protection for several different brands rather than just their main brand, the source adds.

Rorai explains: “The reason why we now file more EUTMs is that our product innovations often launch faster and on a larger scale than a few years ago, which makes an EUTM more attractive than consecutive national filings.”

To find out more about the top EUTM filers in the Netherlands, click here.

Other stories published by Managing IP this week include:

Industry opinion: Originator pharma disputes proving tricky

Managing IP EMEA Awards 2021: all the winners revealed

Sow what? Peppa Pig splits opinion on China well-known marks

Data: counsel shifting design patent strategies to cull fakes

Essential or unviable? Software in-house debate FTO value

Chilean counsel: Madrid treaty could be ‘path of no return’

Counsel cautious despite UK’s ‘great step’ towards AI inventorship

Lawyers bemoan FRAND uncertainty amid China appeal

On Monday, March 29, the US Federal Trade Commission formally abandoned its antitrust lawsuit against telecoms company Qualcomm, bringing the four-year battle to a close.

With the deadline for filing a petition for writ of certiorari at SCOTUS having passed, FTC acting chair Rebecca Kelly Slaughter said the commission had decided not to file an appeal because of the “significant headwinds” facing the organisation.

“The FTC’s staff did an exceptional job presenting the case, and I continue to believe that the district court’s conclusion that Qualcomm violated the antitrust laws was entirely correct and that the court of appeals erred in concluding otherwise,” she said.

“I am particularly concerned about the potential for anti-competitive or unfair behaviour in the context of standard setting, and the FTC will closely monitor conduct in this arena.”

The Court of Appeals for the Ninth Circuit ruled on August 11 2020 that Qualcomm’s standard essential patent licensing model, including its insistence on licensing only to end-product manufacturers, was not anti-competitive.

In its decision in FTC v Qualcomm, the appellate court reversed a previous judgment from Judge Lucy Koh at the District Court for the Northern District of California in 2019 and held that Qualcomm’s OEM-level licensing policy, however novel, did not constitute a violation of the Sherman Act.

In October 2020, the Ninth Circuit declined the FTC’s petition for an en banc rehearing of the case.

The abandonment of the case will come as a disappointment to those who disagreed with the Ninth Circuit’s stand on end-product versus component level licensing, or who wanted the relevant law to be clarified at the federal level.

On Friday, March 26, the Court of Appeals for the Second Circuit ruled that Andy Warhol’s paintings based on a photograph taken by Lynn Goldsmith of the late artist Prince weren’t protected from copyright infringement claims under the fair use doctrine.

In its ruling, the court unanimously sided with the photographer and said Warhol’s depiction of Prince was not a transformative use of Goldsmith’s photo.

Goldsmith photographed Prince for Newsweek in 1981. Vanity Fair magazine licensed the photos from Goldsmith's photo agency and commissioned Warhol for a painting to accompany a 1984 article about Prince.

The artist went on to produce 15 additional works based on Goldsmith’s photo, which he called the “Prince Series”.

Goldsmith said she’d only learned about Warhol’s series after Prince died in 2016, after which she contacted the Andy Warhol Foundation to notify it of the alleged copyright infringement.

After the foundation filed for a declaratory judgment, Judge John Koeltl at the US District Court for the Southern District of New York ruled in 2019 that the painting series was not an infringement of Goldsmith’s photograph because it portrayed Prince as an “iconic, larger-than-life figure”.

However, the appeal court said judges shouldn’t “assume the role of art critic” to analyse an artist’s intent or the meaning of a work because they are "typically unsuited to make aesthetic judgments”.

Attorneys for the Warhol Foundation said they will challenge the decision and promised to “continue to promote the ideals of artistic creativity and freedom of expression that are embodied in Warhol's work”.

A new judge with experience managing standard essential patent cases has moved to Germany's Federal Court of Justice.

Tim Crummenerl, a judge for the Düsseldorf Regional Court, moved to the 10th Civil Senate (Germany’s highest instance for patent infringement proceedings) today, April 1, having been appointed to the position by the Judges Election Committee in Germany in July 2020.

Crummenerl is well-known among SEP stakeholders for handing down decisions in MPEG LA’s case against Huawei and ZTE, and in IPCom’s dispute with HTC. Perhaps most famously, he issued the first-instance decision in Sisvel v Haier.

The Düsseldorf Regional Court has yet to appoint a replacement for Crummenerl.

Judge Alan Albright announced on Sunday, March 28, that he would transfer VLSI Technology’s second jury trial against Intel to the court in Waco, which sits in the Western District of Texas. The trial will take place on April 12.

The parties were supposed to have the trial at the Austin courthouse, but the building was closed because of COVID. The lawsuit involves US patent numbers 6,366,522 and 6,633,187.

It comes four weeks after Intel’s $2.2 billion loss to VLSI in Waco.

The jury at the District Court for the Western District of Texas ruled that Intel infringed patents belonging to VLSI, awarding the Fortress Investment Group subsidiary $1.5 billion for US patent number 7,523,373 and $675 million for number 7,725,759.

VLSI Technology v Intel was the second patent jury trial to take place in Albright’s court since his appointment in 2018. It was also the first plaintiff victory.

Albright's first jury trial, MV3 v Roku, ended in December 2020 with a win for the defendant.

Intel is not the only big tech company to see a major loss in a Texas district court recently. On March 19, a jury in the District Court for the Eastern District of Texas ruled that Apple owed Personalized Media Communications $308.5 million for infringing a digital rights management patent.

Last week, China's intellectual property office CNIPA announced a new campaign to target the improper disruption of the trademark procedure.

In the ‘Special Action Plan to Combat Malicious Squatting of Trademarks’, CNIPA identified 10 malicious acts related to trademark infringement and cybersquatting that it will target.

The acts include malicious pre-registration of names or logos, malicious rushing to register vocabulary and signs related to public emergencies such as natural disasters, and malicious pre-registration of the names of public figures, well-known works or character names.

The campaign will be released in three phases. The first phase, in March, will focus on mobilisation and deployment, with the second, which will run from April to October, to concentrate on organisation and deployment. The third, from November to December, will focus on summary and inspection.

The campaign to combat trademark squatting is part of a wider undertaking in China over the past few years to reform IP rights.

China amended its copyright law in November 2020 to allow courts to determine new forms of protected works in individual cases. New works that can be protected include sports programmes and music videos.

The US Court of Appeals for the Fourth Circuit ruled last week that the French government was not liable for trademark infringement claims brought by the previous owner of the France.com domain name.

The court remanded the case with instructions to dismiss with prejudice for lack of subject matter jurisdiction under the Foreign Sovereign Immunities Act (FSIA).

Jean-Noël Frydman purchased the domain name France.com in 1994. But in July 2016, the Paris High Court ruled that the domain name should be transferred to the French government. In September 2017, the Paris Court of Appeals upheld the decision.

Then in March 2018, Web.com (from which Frydman purchased the domain name) transferred ownership of the domain name to the government of France.

Frydman filed a lawsuit against the government in April 2018 in the District Court for the Eastern District of Virginia, alleging cybersquatting and reverse domain name hijacking in violation of the Anticybersquatting Consumer Protection Act.

The defendants (the French Republic, Atout France, the Ministry for Europe and Foreign Affairs, Jean-Yves Le Drian and the domain name France.com) moved to dismiss.

The district court granted the motion but invited the plaintiff to submit an amended complaint. The plaintiff did so, and the defendants again moved to dismiss.

Judge Liam O'Grady at the Eastern District of Virginia dismissed the claims against Jean-Yves Le Drian, but argued that the issue of FSIA immunity did not call for dismissal at that time and should be raised after discovery. The defendants then appealed the case to the Fourth Circuit.

As a result, the appellate court reversed the decision.

The UK Supreme Court will consider whether a software company can use US courts to enforce a $79 million judgment against a UK business as part of a copyright infringement battle surrounding computer software.

In allowing an appeal in World Programming v SAS Institute, the Supreme Court will consider a previous Court of Appeal finding that prevented US-based SAS Institute from using the US courts to seek damages from UK-based parties.

The announcement was made last Friday, March 26.

World Progamming (WP) had taken a software licence from SAS. However, against the terms of the licence, WP subsequently developed a new software, which it then licensed to its customers in the UK, US and elsewhere.

Some of the licence agreements between WP and its non-US customers have been subject to arbitration in London.

SAS sued WP at the US District Court for the Eastern District of North Carolina. The court confirmed that WP had infringed SAS’s copyright, and awarded $79 million in damages.

SAS sought to enforce the judgment in the US, but WP filed an anti-suit injunction at the England and Wales High Court.

The High Court granted the injunction in 2018, but in a judgment handed down in May last year the Court of Appeal discharged it. Instead, the Court of Appeal imposed a more limited injunction that restrained SAS from seeking enforcement orders in relation to UK-based costs.

The Court of Appeal found that enforcement orders extending to debts from WP’s customers, where WP and those customers had agreed to have their disputes discussed through UK-based arbitration, would be an unwarranted interference with the jurisdiction of the English court.

There is no date yet for the Supreme Court appeal.

An association that produces Halloumi cheese has failed to cancel a Greek dairy maker's figurative EU trademark for ‘Halloumi Vermion grill cheese’.

In a judgment handed down last week, the EU General Court upheld earlier rulings by the EUIPO’s Cancellation Division and Fourth Board of Appeal that rejected a cancellation request filed by the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi.

In its first cancellation request, filed in 2015, the foundation cited an EU collective trademark it owns for the term ‘Halloumi’.

Collective marks can only be used by members of a group or association. Members that use the ‘Halloumi’ trademark must stick to strict production requirements outlined in the specifications covering the Halloumi-protected designation of origin, the foundation said.

In 2017, the EUIPO’s Cancellation Division found that the ‘Halloumi Vermion grill cheese’ mark, owned by Greek company Filotas Bellas & Yios, was unlikely to confuse customers given “significant differences” with the foundation’s ‘Halloumi’ EUTM.

The EUIPO added that the foundation’s trademark was of "weak distinctive character" and considered to be largely descriptive of the goods and services it covered.

This view was backed by the Fourth Board of Appeal in a 2019 decision.

The General Court has now sided with those findings.

According to the court, the ‘Halloumi’ EUTM has a low degree of inherent distinctiveness and the applicant could not demonstrate enhanced distinctiveness acquired through use.

“Given these shortcomings, the level of protection … must itself be low,” the court found.