Tag: Court Decisions

1
EasyGroup finds proving the distinctiveness of its trade marks not so easy in the UK High Court
2
Sixth Circuit rules knurling pattern on rifle scopes could be nonfunctional trade dress
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When recording also means communication to the public – interaction between copyright and cloud-based video recording services
4
Criminal trade mark offences to also apply to grey market goods in UK
5
Louis Vuitton Seeks Supreme Court Review to Resolve Purported Circuit Split on Trademark Dilution
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Federal Circuit Instructs the PTAB on Written Description in University Interference Proceeding
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Britax overruled – Federal Court sets record straight for infringement of innovation patents
8
Sandoz v. Amgen—Biosimilars at the Supreme Court—Oral Argument
9
Threats Not Groundless Because Proceedings are Ultimately Not Issued
10
U.S. Supreme Court Rules that Cheerleader Uniform Elements May Be Eligible for Copyright Protection

EasyGroup finds proving the distinctiveness of its trade marks not so easy in the UK High Court

EasyGroup Ltd has suffered a blow in a High Court case against W3 Ltd, with the judge finding that its word mark, EASY, was invalid.

EasyGroup found itself facing a claim from W3 Ltd for groundless threats, in relation to letters of complaint it sent regarding the branding of one of W3’s businesses, EasyRoommate. As a counterclaim, EasyGroup alleged that W3’s use of the registered word mark and logo EASYROOMMATE, infringed its community registered trade mark, EASY, with W3 in turn stating that such a mark should be invalidated for being too descriptive under Article 7(1)(c) of the EU Trade Mark Regulation.

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Sixth Circuit rules knurling pattern on rifle scopes could be nonfunctional trade dress

The Sixth Circuit Court of Appeals recently held that a reasonable jury could find a design pattern on rifle scopes is “nonfunctional” and thus potentially amenable to trade dress protection. Since 2002, Leapers, Inc. has been selling adjustable rifle scopes with knurling on the surface. Knurling is a common manufacturing technique that allows users to grip and fine-tune products more easily.

Leapers asserted “that it uses a unique knurling pattern that is distinctly ‘ornamental’ and by which customers recognize [Leapers] as the source of the product.” Leapers had executed an exclusive manufacturing contract with a Chinese company, but chose to end that relationship in 2011. The manufacturer agreed to cease using all technical specifications and designs, but later a factory manager from the manufacturer formed his own company and began manufacturing scopes allegedly using Leapers’ knurling design.

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When recording also means communication to the public – interaction between copyright and cloud-based video recording services

On 29 November 2017, the Court of Justice of the EU (CJEU) released its judgment in response to a reference from an Italian court relating to cloud recording and computing services provided by VCAST Limited (VCAST). The services enabled VCAST’s customers to select live broadcasts of television programmes that VCAST then remotely, through its own systems, recorded and made available in a cloud data storage space. The Italian court asked whether VCAST could provide this service without the permission from the owner of the copyright over the programme, with a specific query as to the application of the private copying exception provided in Article 5(2)(b) of the Information Society Directive (2001/29/EC) (InfoSoc Directive).

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Criminal trade mark offences to also apply to grey market goods in UK

In a positive decision for brand owners, the UK Supreme Court has confirmed that criminal trade mark offences can apply to the sale and distribution of grey market goods in addition to counterfeit goods.

In R v M & Ors [2017] UKSC 58, the appellants had been importing clothes and shoes into the EU that bore trade marks of famous fashion brands. These were a combination of counterfeit goods and grey market goods (i.e. goods that had been produced with the trade mark owner’s consent but that had been subsequently sold without their consent).

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Louis Vuitton Seeks Supreme Court Review to Resolve Purported Circuit Split on Trademark Dilution

Louis Vuitton recently petitioned the U.S. Supreme Court to review a Second Circuit ruling that certain handbags are fair-use parodies of Louis Vuitton products, and therefore do not give rise to liability for trademark dilution by blurring. In its petition, Louis Vuitton contends there is a split of authority between the Second and Fourth Circuits regarding parody as a fair-use defense to dilution.

Louis Vuitton is the owner of famous trademarks “that immediately bring… to mind Louis Vuitton as the sole source of handbags and other stylish, high-quality goods bearing its marks.” My Other Bag, Inc. offers handbags with images of Louis Vuitton’s famous marks reproduced on one side, and the phrase “My other bag” inscribed on the back.

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Federal Circuit Instructs the PTAB on Written Description in University Interference Proceeding

On June 27, 2017, the U.S. Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s (Board) decisions in three interference proceedings between the Board of Trustees of Leland Stanford Junior University (Stanford) and the Chinese University of Hong Kong (CUHK) (Case No. 2015-2011).

Competing inventors at Stanford and CUHK developed methods for diagnosing aneuploidies—conditions characterized by an abnormal number of chromosomes (e.g., Down’s Syndrome and Turner’s Syndrome)—using maternal blood samples.  Maternal blood contains very small amounts of fetal DNA, and maternal blood sampling is far less invasive than previous methods of sampling fetal DNA.  Competing inventors developed techniques for detecting the fetal DNA in maternal blood.

A Stanford application was filed in 2007 with claims to analyzing certain “target sequences” of fetal DNA. A CUHK application, published in 2009, described a “random sequencing” method. This method uses a massively parallel sequencing (MPS) technique that does not require use of “target sequences.” After the CUHK application published, Stanford cancelled its original claims and replaced them with claims to sampling “randomly selected” DNA fragments using MPS. The 2007 Stanford application had disclosed that “the Illumina [DNA] sequencing platform” could be used to perform MPS.

Both Stanford and CUHK requested interferences before the Board to determine who invented the random sequencing method. CUHK claimed that, in 2011, Stanford saw CUHK’s claims to random MPS, and changed its application to claim that technique. CUHK moved to have Stanford’s claims held unpatentable for lack of written description support for random MPS.  The Board found that Stanford’s specification disclosed “targeted” rather than “random” MPS, and would not have indicated to one of ordinary skill in the art that the inventor was in possession of the claimed random MPS method.  It held Stanford’s claims unpatentable for lack of written description.

The Federal Circuit, inter alia, vacated the Board’s decision, stating that the Board erred in analyzing written description, and remanded the case.  The Circuit first found the Board erred by relying on CUHK’s expert testimony and several publications discussing a DNA sequencing platform that differed from the Illumina platform.  The Circuit further stated that the Board erred because “the Board’s task was to determine whether the [Stanford specification’s] written description discloses random MPS,” “not whether the description does not preclude targeted MPS.”  Finally, the Circuit stated that the Board failed to compare specific sentences and phrases referencing the sequencing process of the Stanford specification to the Stanford claims, e.g., the specification phrase “using the attachment of randomly fragmented genomic DNA.”

On remand, the Circuit instructed the Board to examine whether a person of ordinary skill in the art would have understood that the Stanford specification disclosed random MPS sequencing, as opposed to whether the specification did not preclude targeted MPS sequencing. Specifically, it instructed the Board to determine whether a person of ordinary skill would have known, as of the Stanford priority date, that the reference to Illumina products meant random MPS sequencing as recited in the claims, by examining pre-filing date factual record evidence.

By: Peter Giunta and Jenna Bruce

Britax overruled – Federal Court sets record straight for infringement of innovation patents

The Full Court of the Federal Court’s decision in Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54 has clarified the date from which the owner of an innovation patent is entitled to compensation for infringement of the innovation patent.  In the case of an innovation patent which has been filed as a divisional application, the Court’s decision significantly alters the time from which relief can be claimed, and has the potential to dramatically reduce the amount of compensation to which the patentee is entitled.

A previous decision of the Federal Court of Australia (Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3) [2012] FCA 1019) held that the owner of a divisional innovation patent was entitled to relief from the date that the “parent” application became open for public inspection (OPI).  This allowed a patentee to strategically file a divisional innovation patent with claims tailored to read on to a competitor’s conduct, and then claim relief from the parent’s OPI date (which may have been some years earlier).  As Justice Burley noted in Coretell, this produced the unattractive result of a person being liable to pay compensation for acts of infringement pre-dating the existence of the innovation patent said to have been infringed.

Justice Burley (with whom Justice Nicholas and Jagot agreed) corrected this anomaly and made clear that the relevant date for relief for infringement of an innovation patent is its date of grant.  This diminishes the strategic benefit of patentees filing divisional innovation patents – although divisional innovation patents can still be tailored to target the conduct of a potential infringer, the patentee will only be entitled to relief from the date the divisional innovation patent was granted, and therefore publicly accessible, and not before.

By: Alex Dunlop and Nakita Wilkinson

Sandoz v. Amgen—Biosimilars at the Supreme Court—Oral Argument

All nine U.S. Supreme Court justices heard argument on Wednesday April 26th, in Sandoz Inc., v. Amgen Inc.  The Supreme Court is reviewing interpretations of the Biologics Price Competition and Innovation Act (BPCIA) made by the U.S. Court of Appeals for the Federal Circuit. Wednesday’s arguments focused on four main issues:

  1. whether the FDA could preliminarily grant licensure prior to the expiration of the 12 year statutory period;
  2. whether the notice of commercial marketing requires official licensure to be made;
  3. whether the “patent dance” was required by the BPCIA; and
  4. whether state law could be used to enforce compliance with the “patent dance” elements of the BPCIA.

Industry watchers hope that the Supreme Court will streamline the process for getting biosimilars to market by providing increased certainty.

To read the full alert, click here.

By: Theodore J. Angelis, Peter Giunta, Kenneth C. Liao, Margaux L. Nair and Jenna Bruce

Threats Not Groundless Because Proceedings are Ultimately Not Issued

In the UK, in a decision that will provide additional comfort to trade mark owners seeking to protect their intellectual property rights in the UK, the High Court held that a threat issued by a trade mark owner was not groundless simply because it was never followed up by proceedings being issued.

In Vanderbilt v Wallace & Ors [2017] EWCH 45 (IPEC), the High Court held that “the emphasis is on whether the acts actually infringe or, if done, would infringe, not on whether a proprietor actually sues for infringement. The phrase does not impose an obligation to commence legal proceedings for every act complained of.”

The case involved a long running trade mark dispute between the claimant and defendant, including several concurrent actions. In this instance the defendant had argued that section 21 of the Trade Marks Act 1994 established that where threats are made the trade mark proprietor has to bring a claim in relation to everything that is the subject of a threat, and that if they fail to do so then the threats can never be justified, even if there is infringement.

The Court disagreed. It stated that there are often valid commercial reasons why a trade mark owner may elect not to issue proceedings even if there is an obvious infringement. The Court will consider the validity of the claim on its own and whether the acts complained of constitute an infringement, regardless of whether proceedings have been issued following any threats to sue.

In addition to providing clarity, this outcome will please trade mark owners. Provided that they have established infringement they can send cease and desist letters without worrying about issuing legal proceedings that may not be commercially desirable.

By: Nóirín McFadden and Jamie Kershaw

U.S. Supreme Court Rules that Cheerleader Uniform Elements May Be Eligible for Copyright Protection

Yesterday, in a decision that will be welcomed by the fashion industry, the United States Supreme Court ruled that certain design elements of cheerleader uniforms may be eligible for copyright protection.  Star Athletica, L.L.C. v. Varsity Brands, Inc.  The Court held that, “a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”  Justice Clarence Thomas authored the 6-2 majority opinion, addressing disagreement among lower courts as to the proper test for determining if certain design elements could ever qualify for copyright protection.

This case involved lines, chevrons, and colorful shapes on cheerleader uniforms. In finding that these elements could be covered by copyright, the appeals court below had identified nine different approaches that various courts and the Copyright Office had employed over the years to address “separability.” The appeals court fashioned its own test and found that the design features of Varsity Brands’ cheerleader uniform played no role in the overall function of the article as a cheerleading uniform, and the elements were separable from the utilitarian aspects of the uniform and thus eligible for copyright protection.

The Supreme Court affirmed.  Applying § 101 of the Copyright Act, the Court found that the decorations on the uniforms at issue could be identified as having pictorial, graphic, or sculptural qualities, and the arrangement of the decorations could be placed in another medium (e.g. placed on a painter’s canvas) without replicating the uniforms themselves.  Thus, the two-dimensional work of art fixed in the uniform fabric met both the separate-identification and independent-existence requirements of the statute. Importantly, the Court held only that the uniform elements are eligible for protection in concept; now the trial court must determine whether Varsity Brands’ specific lines, chevrons, and shapes are original enough to merit copyright protection.

Justice Ruth Bader Ginsburg concurred in the result, pointing out that the Court did not have to discuss the separability test at all because the designs at issue were not themselves useful articles, but rather standalone, two-dimensional pictorial and graphic works reproduced on a useful article.  Justice Stephen Breyer, joined by Justice Anthony Kennedy, dissented, arguing that even under the majority’s test, the designs cannot be perceived as separate from the cheerleading uniform.

Thus, although the majority offers some clarity about the proper approach to separability, the dissent demonstrates that analysis may yield divergent results.  The decision is likely to be embraced by fashion industry leaders and other garment design stakeholders for its recognition that certain garment design elements may be protectable under the Copyright Act.  K&L Gates will continue to monitor litigation in this area and provide updates.

A link to the opinion can be found here: https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf

By: David Byer, John Cotter, Shamus Hyland and Eric Lee

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