Weekly Data Privacy Alert – 12 June 2017

Please click here to read the latest data privacy alert from the Squire Patton Boggs Data Privacy & Cybersecurity team. This week’s alert covers news from the EU, France and the UK.

EU

  • Latest Report on Effect of GDPR Predicts Heavy Consequences for Financial Services Sector

France

  • The CNIL Issues Fine to Dental Practice in Relation to Access Right and Lack of Cooperation With the DPA

UK

  • ICO Fines Council £100,000 for Failing to Adequately Prevent a Cyberattack

For more information on any of these items, or data privacy issues generally, please feel free to call any of the of the following individuals:

Caroline Egan (Birmingham)

Francesca Fellowes (Leeds)

Stephanie Faber (France)

A New Slant: Supreme Court Invalidates Bar to Registering “Disparaging” Trademarks

138290667Yesterday, the U.S. Supreme Court ruled in Matal v. Tam, 15-1293 (June 19, 2017), that the First Amendment of the U.S. Constitution prevents the U.S. Patent and Trademark Office (“PTO”) from declining to register trademarks deemed offensive or disparaging.  While the decision concerned the PTO’s rejection of an application to register the name of the Portland-based band The Slants, the decision signals that the Washington Redskins’ controversial quest to maintain its name as a registered mark will succeed.

By way of background, Section 2(a) of the Lanham Act – known as the “disparagement clause” – bars registration of trademarks “which may disparage … persons living or dead, institutions, beliefs, or national symbols, or [may] bring them into contempt, or disrepute.”  15 U.S.C. §1052(a).  The PTO rejected the band’s application to register THE SLANTS word mark under Section 2(a) as disparaging to Asians.  The band members – all of whom are Asian-Americans – had argued that they intended the mark to “reclaim” the phrase and “drain” it of any derogatory meaning.

The band appealed the rejection to the Trademark Trial and Appeal Board – the administrative tribunal that reviews PTO decisions – and later to the U.S. Court of Appeals for the Federal Circuit.  Slip Op. at 7.  The Federal Circuit reversed on the ground that the disparagement clause unconstitutionally restricts private speech.  In re Tam, 808 F.3d 1321 (Fed. Cir. 2015).  The Supreme Court granted certiorari.  The Court’s holding regarding the Disparagement Clause is plain and unmistakable:

“this provision violates the Free Speech Clause of the First Amendment.  It offends a bedrock First Amendment principle:  Speech may not be banned on the ground that it expresses ideas that offend.”  Slip Op. at 1-2.

Appellant PTO argued on appeal that trademarks are “government speech,” and therefore not regulated by the First Amendment.  The Court rejected the argument:  “[t]he Federal Government does not dream up these marks, and it does not edit marks submitted for registration.”  Slip Op. at 14.  To hold otherwise, the Court reasoned, would mean that the federal government is “unashamedly endorsing a vast array of commercial products and services.”  Id. at 14-15.  Put simply, “[t]rademarks are private, not government, speech.”  Id. at 18.

The Court likewise rejected the PTO’s argument that it subsidizes the federal registration of trademarks and thus may regulate trademarks expressing certain viewpoints.  Id. at 18-19.  “The PTO does not pay money to parties seeking registration of a mark.  Quite the contrary is true:  An applicant for registration must pay the PTO a filing fee of $225-600.”  Id. at 19.  Indeed, since 1990, the PTO has been a self-funded agency, supported by patent and trademark filing fees.  See id.

This long-anticipated decision is a solid “win” for the First Amendment.  The Slants welcomed the news on their website.  And it will be welcomed by some other trademark owners – notably the Washington Redskins, owner of six trademark registrations that the PTO cancelled in 2014 under Section 2(a) as disparaging to Native Americans (see our prior blog discussion of that case).  The Redskins case is on appeal to the Fourth Circuit Court of Appeals but stayed pending the Supreme Court’s decision in the Tam case.  Given Matal’s clear guidance, expect the Redskins to prevail in short order.

Will the U.S. trademark registry turn into a lurid X-rated cesspool?  Unlikely.  Among other things, the Matal decision does not invalidate other restrictions on speech that have withstood First Amendment scrutiny, such as obscenity, defamation, or anti-discrimination laws.  Nor does it address the “scandalous matter” prong of Section 2(a) barring registration of “immoral, deceptive, or scandalous matter” – though at least “scandalous” marks should be capable of registration under the decision’s sweep.  Moreover, Section 2(a) has never affected common law trademarks.  Nevertheless, expect that Matal will pave the way for increasing numbers of applications to register expressive and possibly scandalous or offensive trademarks.

Are Inter Partes Reviews “Quintessential” Agency Adjudications?

A superlative or excessive statement is often a dead give-away that the statement may not be true.  In deciding whether the America Invents Act’s inter partes review provisions violate Article III of the Constitution of the United States, the Federal Circuit in MCM Portfolio LLC v. Hewlett-Packard Company, 815 F.3d 1284, 1291 (Fed. Cir. 2015) opined that the Patent Trial and Appeal Board (PTAB)’s involvement was “…the quintessential situation in which the agency is adjudicating issues under federal law.”  The Federal Circuit also concluded that because patent rights derive from an extensive regulatory scheme, they are public rights that may be adjudicated by an agency such as the United States Patent and Trademark Office (“USPTO”) rather than private rights that may be adjudicated only by a court.

The Supreme Court’s recent grant of certiorari in Oil States Energy Services, LLC, v. Greene’s Energy Group, LLC is presumably intended to resolve this issue.    Although three questions were presented in the cert petition, two of which related to revisiting issues decided by the Court in Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131 (2016), the Court granted cert only on the question regarding the nature of patent rights, i.e.,

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

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Webinar: Deciphering and Maximizing Key Benefits of the European Trademark System and the Fallout from Brexit

457214067-296x300.jpgOur Intellectual Property & Technology Practice partners Deborah Lodge (Washington) and Florian Traub (London) will be speaking in a Clear Law Institute webinar on the European Trademark system and Brexit’s impact on trademark rights – Deciphering and Maximizing Key Benefits of the European Trademark System and the Fallout from Brexit scheduled for June 21, 2017 at 1:00 to 2:15 pm EDT.

This interactive program will focus on practical strategies for US companies looking to protect their trademark rights in Europe. Among other topics, the webinar will discuss:

  • The key differences between the US and the European trademark registration systems.
  • The major changes that were recently made to EU trademark law, including those that will be implemented on October 1, 2017.
  • The various options open to US trademark owners for protecting their trademark rights in Europe.
  • Considerations for deciding whether to file trademark applications directly in a European country or in the EU, or through the Madrid Protocol Treaty.
  • Whether trademarks should be registered with Customs in the EU and/or member countries.
  • Brexit: the timeline for the UK’s withdrawal from the EU, and how that is likely to affect the options for US trademark owners. The Brexit discussion follows up on a recently updated white paper concerning the impact of Brexit on IP rights.

Our readers can use the code: SPKR35 to receive a 35% discount on the US$199 registration fee. Register here.

 

Weekly Data Privacy Alert – 5 June 2017

Please click here to read the latest data privacy alert from the Squire Patton Boggs Data Privacy & Cybersecurity team. This week’s alert covers news from France, Germany and the UK.

France

  • CNIL Has Released Further Cookie Guidance

Germany

  • Andrea Voßhoff Presents Activity Report for 2014/2015

UK

  • ICO Wins Case Against Former Claims Company Manager for Making Blagging Calls

For more information on any of these items, or data privacy issues generally, please feel free to call any of the of the following individuals:

Annette Demmel (Germany)

Caroline Egan (Birmingham)

Francesca Fellowes (Leeds)

Stephanie Faber (France)

German Federal Constitutional Court delays UPC

The launch of the Unified Patent Court and Unitary Patent has been dealt a blow from an unexpected corner. Following delays caused by Brexit and the political uncertainty in the UK, the attention suddenly shifts to the ratification process in Germany. It is being reported that the German Federal Constitutional Court (Bundesverfassungsgericht) has asked the German President to hold off bringing into force implementing legislation concerning the Unified Patent Court and Unitary Patent.  This follows a constitutional complaint brought by an unknown individual; the complaint is currently pending before the court (case reference 2 BvR 739/17).

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Germany Acts to Curb Tax Effects of Patent/IP Box Regimes

Both houses of the German parliament have recently passed a bill limiting the tax effects of royalty and licence fees paid to patent boxes. The essence of the new rule is that royalties will not be tax deductible for German businesses if the effective tax rate of such royalties in the hands of the recipient falls below 25%. The lower the tax rate, the higher the non-deductible percentage will be on a sliding scale: 0% rate − royalties completely non-deductible; 5% rate − 80% non-deductible; 10% rate − 60% non-deductible; 15% rate − 40% non-deductible; and so on. Further conditions include the following:

  • Royalties include all fees paid for the use of a wide range of intellectual property
  • Only intra-group royalties are affected, whereby, branches are deemed to be intra-group
  • Intra-group back-to-back or flow-through arrangements are also captured
  • Effective date will be January 1, 2018

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Weekly Data Privacy Alert – 29 May 2017

Please click here to read the latest data privacy alert from the Squire Patton Boggs Data Privacy & Cybersecurity team. This week’s alert covers news from Germany and the UK.

Germany

  • Hessen and Bavaria Publish Information and Complaint Forms for Data Subjects Concerning “Privacy Shield”
  • Bavarian Data Protection Authority Sends Inspection Questionnaire to 150 Companies

UK

  • Council Fined by ICO Over Publication of Sensitive Personal Data in Online Planning
  • High Court Orders BBC to Reveal Source of Information Regarding Planned Raid on Home of Sir Cliff Richard

For more information on any of these items, or data privacy issues generally, please feel free to call any of the of the following individuals:

Annette Demmel (Germany)

Caroline Egan (Birmingham)

Francesca Fellowes (Leeds)

 

Uncharted Waters: ITC Administrative Law Judge Recommends $37 Million Penalty For Prohibited Fish-Finder Sales

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In an enforcement proceeding stemming from the ITC’s December 2015 decision in Certain Marine Sonar Imaging Devices, Inv. No. 337-TA-921, ALJ David Shaw has found that the ITC’s cease and desist order was violated by continued infringing sales of imported products and has recommended that respondent Garmin be assessed a civil penalty of $37 million.  The May 25th decision (made public on June 5th) is subject to review by the Commission, but if adopted would be the largest penalty ever imposed by the ITC for violation of a cease and desist order.  Yet, according to the ALJ, the penalty was less than the ITC Staff had recommended and less than half of the potential penalty that could have been imposed under law.

By way of background, in June 2014, Navico Inc. (Oklahoma) and Navico Holding AS (Norway) filed a complaint under Section 337 (19 USC 1337) alleging patent infringement by Garmin International, Inc. and other related entities of certain Navico patents relating to marine sonar imaging (“fish-finder”) devices.  On December 1, 2015, the ITC issued its final determination finding that the Garmin respondents had violated Section 337 based on the importation and sale of products that infringed claims of two of those patents.  On the same date, the Commission issued a limited exclusion order barring the Garmin products from entry into the U.S. and cease and desist orders prohibiting the further sale of infringing products within the U.S.  The Commission may issue such orders in lieu of or in addition to an exclusion order where it has been shown that there exists commercially significant inventory in the U.S.  The statute permits the Commission to impose penalties of “not more than the greater of $100,000 or twice the domestic value of the articles entered or sold” in the event an order is violated. Continue Reading

Weekly Data Privacy Alert – 22 May 2017

Please click here to read the latest data privacy alert from the Squire Patton Boggs Data Privacy & Cybersecurity team. This week’s alert covers news from the EU, France and the UK.

European Union

  • European Commission to Form Another Expert Group to Support the Application of the GDPR

France

  • French Data Protection Expert Appointed to the French Government

UK

  • Survey Reveals That 84% of SMEs Are Unaware of the Forthcoming GDPR
  • ICO Publishes Its Information Rights Strategic Plan for the Next Four Years

For more information on any of these items, or data privacy issues generally, please feel free to call any of the of the following individuals:

Caroline Egan (Birmingham)

Francesca Fellowes (Leeds)

Stephanie Faber (France)

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