Intellectual Property Threats Reforms – Will IP Owners Benefit?

The Intellectual Property (Unjustified Threats) Act 2017 (the “Act”) comes into force on 1 October. It will reform UK law on unjustified threats in intellectual property infringement disputes. What will change and will this benefit IP owners?

Currently, UK legislation provides that a person (typically the rightsholder) must not threaten another person with proceedings in a UK court for infringing a patent, registered trade mark, registered design or unregistered design. If a threat is made, then anyone whose commercial interests are, or are likely to be, adversely affected by the threat (any ‘person aggrieved’) can issue proceedings against the maker of the threat (a ‘threats action’) seeking damages, an injunction to prevent the threat being repeated and a declaration that the threat was unjustified. This can come as something of a shock to a rightsholder who anticipated leading the infringement action in their chosen venue as claimant, but who suddenly finds themselves on the wrong end of proceedings as defendant, with the consequent loss of control of the action and the risk of being subject to financial penalties. A professional advisor, such as a solicitor or patent attorney, can be jointly and severally liable with their client for any threats made.

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Weekly Data Privacy Alert – 3 July 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, Japan and the UK.

Germany

  • Baden-Württemberg Releases Guidebook on Employee Data Protection
  • Voßhoff Welcomes Decision Not to Enforce Data Retention

Japan

  • Japan on the Way to Adequacy Decision by Early 2018?

UK

  • SMEs Warned as Firm Hit by Cyberattack is Fined £60,000 by the ICO

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)

Providing Scientific Information in Patents after Nautilus

Scientific information—features of an invention that are known through physical analysis—often provides the foundation for patent claims.  But providing such information can also risk the validity of a patent if it is not clearly explained in the patent.  Since the Supreme Court’s 2014 decision in Nautilus, Inc. v. Biosig Instruments, Inc. heightened the patent law indefiniteness standard, courts have been more rigorously looking to the claims, the specification, and the prosecution history (in that order) to determine if a patent “inform[s], with reasonable certainty,” persons skilled in the art about the scope of the invention.

Some recent decisions, however, appear to signal a trend toward lowering the Nautilus bar.  For example, in One-e-way v. International Trade Commission, decided June 12, 2017, the Federal Circuit reversed the International Trade Commission’s finding that the phrase virtually free of interference was indefinite, relying heavily on a single sentence in the prosecution history as well as a favorable (for the patentee) interpretation of the specification. Other Federal Circuit cases, such as Akzo Nobel Coatings, Inc. v. Dow Chemical (2016) and Eli Lilly and Company v. Teva Parenteral Medicines (2017), appear to rely on context, alone, to salvage allegedly indefinite claims. While One-e-way arguably provides more reasons to find the claims definite than those decisions, the dissent may be onto something in its protest that the majority opinion runs “against the tide of the Supreme Court’s recent decision in Nautilus . . .”  Taken together, these decisions have some specific implications for the use of scientific information in patents and, more generally, for the requirement that patents must contain claims “particularly pointing out and distinctly claiming” the invention.  Continue Reading

Weekly Data Privacy Alert – 26 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

  • Access to Data of a Deceased Person by Its Heirs

Germany

  • Ethics Committee Releases Guidelines on Automated and Connected Driving
  • Higher Administrative Court Rules That Data Retention Obligation Breaches EU Law

UK

  • Firm Fined £50,000 by ICO for Nuisance Calls
  • AMI Issues Guidelines in Light of Recent Global Cyberattacks

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)

Christian Louboutin’s Red Sole – Is it Solely a Shape Mark?

On June 22, an advocate general at the Court of Justice of the European Union (“CJEU”) issued an opinion indicating that Christian Louboutin S.A.’s signature red sole might be a protectable trademark — or it might not be — depending on whether the protection of the shape in combination with color would afford the mark owner a “monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors.”  CJEU Case C-163/16, Opinion Delivered 22 June 2017 at ¶¶ 46, 53.

The opinion was issued in an ongoing case brought by Louboutin against Dutch footwear brand Van Haren, alleging Van Haren’s use of a red sole on blue shoes infringes the Louboutin trademark.  Id.  Louboutin has owned a registered Benelux trademark for the red sole since 2010, and in 2013, the registration was amended to limit the goods covered to “high-heeled shoes (other than orthopedic shoe”).  Id. at ¶ 10.  Following judgment against Van Haren, the Haag Court of Appeals referred the case to the CJEU for a preliminary ruling to clarify the scope of the grounds for refusal within the meaning of the EU Directive 2008/95, which bars registration of functional marks comprised exclusively of “the shape which gives substantial value to the goods.”  Id. at ¶ 18; Article 3(1)(e)(iii) of the Directive 2008/95/EC.  The specific question is whether a “shape” for purposes of this Directive, includes only three-dimensional properties, such as contours and volume, or whether it includes non three-dimensional features such as color.  Id.  

The opinion notes that the Directive barring functional marks could be applied to marks comprised of both shape and color elements, but not one comprised of color only, and, therefore, a mark “consisting of a colour per se” could “acquire distinctive character through . . . use . . . .”  Id. at ¶ 46.  In the same paragraph, however, the Opinion puts a limitation on this point by noting that “in relation to signs which are indissociable from the appearance of the goods, registration must be considered in the light of the same factors as underpin that provision.”  Id.  In other words, where the color sought to be protected is “indissociable” from the appearance of the goods, the same functionality analysis applicable to shape-protected designs must apply to the color at issue.  This aspect, however, is not of primary relevance for the assessment of the case, because the advocate general comes to the conclusion that the contested mark should be equated with one consisting of the shape the goods and seeking protection for a color in relation to that shape, rather than one consisting of color per se.  Id. at ¶ 41.

The opinion also advises that the Directive should only bar the red sole mark if the “intrinsic value” of the shape “affect[s] the attractiveness of the goods to such an extent that the reservation thereof to a single undertaking would distort competition on the market” and “must take no account of attractiveness of the goods flowing from the reputation of the mark or its proprietor.”  Id. at¶¶ 69-70.  As such, the District Court should only find that the red sole mark is functional if the red color on a shoe sole is objectively and inherently attractive, versus attractive by virtue of its connection to Christian Louboutin’s reputation.  Id.  Thus, in order to succeed, Louboutin will need to show that its use of the color red on the sole of high-heeled shoes does not provide it technical solutions or functional characteristics of products “which a user is likely to seek in the products of competitors.”

This is not the first time that Louboutin has defended its trademark against functionality allegations.  In 2011 Christian Louboutin sued Yves Saint Laurent for trademark infringement after YSL released a line of high heels featuring soles that matched the shoe upper—including a red shoe with a red sole. Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445, 447-48 (S.D.N.Y. 2011).  YSL counter claimed that Louboutin’s red sole trademark registration with the USPTO should be cancelled because in the context of the fashion industry and wearable goods, single colors marks are inevitably “aesthetically functional,” and therefore cannot function as trademarks.  Id.  The trial court agreed, holding that single-color marks are necessarily functional in the fashion industry, and denying Louboutin’s request for a preliminary injunction.  Id. at 457.

On appeal, the Second Circuit reversed the trial court’s holding on this point, clarifying that aesthetic functionality under the Lanham Act applies “where protection of the mark significantly undermines competitors’ ability to compete in the relevant market” and stating that “no special legal rule prevents color alone from serving as a trademark” even in the fashion industry.  Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206, 222-23 (2d Cir. 2012).  Although this standard appears very similar to the standard set forth by the AG CJEU in its recent opinion, the Second Circuit never determined whether the red sole mark is functional because it resolved the case on a separate issue, finding that the mark was valid, but that YSL’s use did not warrant a preliminary injunction and the case was ultimately dismissed.

Given the perceived similarity of the functionality bar under the EU Directive and the Lanham Act, the District Court of The Hague’s ruling could have implications for Louboutin’s defense of its mark in the US.

One Win, One Loss for the ITC on Invalidity Holdings at the Federal Circuit

The Federal Circuit has recently ruled on two appeals of Section 337 investigations involving findings of patent invalidity.

As we reported in a prior blog, in Certain Beverage Brewing Capsules, Components Thereof, and Products Containing Same, Inv. No. 337-TA-929, the products under investigation were reusable beverage brewing capsules designed to replace the prior art cup-shaped cartridge (such as the Keurig “K-Cup”) with a reusable capsule version.  Reversing the initial determination of the ALJ, the Commission held that the claim phrase “a container . . . adapted to hold brewing material” failed for lack of written description under 35 U.S.C. § 112, first paragraph.  According to the Commission opinion, the written description for this term was inadequate because the specification only described the invention narrowly as “a pod adaptor assembly” or “brewing chamber” and did not disclose a container that was itself a pod or that contained an integrated filter, which was the salient feature of the allegedly infringing product.  In Rivera v. ITC, No. 2016-1841, a Federal Circuit panel of judges (Reyna, Linn, and Chen) agreed: “[T]he question is whether a pod adaptor assembly intended to allow compatibility between distinct brewing systems, also supports an undisclosed configuration that eliminates a fundamental component of one of those systems (i.e., the ‘pod’) through integration. It does not.”  The Federal Circuit found the case substantially similar to prior written description cases, such as ICU Medical, Inc. v. Alaris Medical Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009) (holding that a group of later filed claims that eliminated a spike limitation for medical valves were not supported by a specification that only described medical valves with spikes).

In Certain Wireless Headsets, 337-TA-943, we previously reported that Administrative Law Judge (ALJ) Pender granted respondents’ motion for summary determination that all of the asserted claims of the two patents-in-suit are invalid as indefinite under 35 U.S.C. § 112, ¶ 2 in light of the common requirement that audio output be “virtually free from interference” and that the Commission had affirmed the ruling, which resulted in termination of the investigation with a finding of no violation.  In One-E-Way, Inc. v. ITC, No. 2016-2105, however, a Federal Circuit panel (Stoll, Wallach, and Prost, dissenting) reversed.  According to the panel majority, the specification and prosecution history demonstrated that the applicant “used the term ‘interference’ in a non-technical manner to simply mean that the wireless headphone user is able to listen without eavesdropping.”  The dissent opined that there was “simply not enough for a person of ordinary skill to determine the boundaries of the limitation, much less the import of the word ‘virtually’” and that “the disputed limitation falls far short of the level of clarity required by the Supreme Court under [its 2014 decision in] Nautilus.

The Federal Circuit’s views on Commission determinations involving substantive patent law are always interesting barometers of the ITC’s constantly-developing expertise in navigating those choppy waters.

Weekly Data Privacy Alert – 19 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 and the UK.

France

  • State Council Orders the Deletion of Personal Data in a File Relating to the State Security
  • Experimental Use of Voice Recognition by Banks

UK

  • Queen’s Speech Addresses New Data Protection Law

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)

ICO Recommends Refresh Existing Consents Now If They Don’t Meet The GDPR Standard

The ICO has updated its guidance “Preparing for the General Data Protection Regulation (GDPR), 12 steps to take now” and recommends that businesses “Refresh existing consents now if they don’t meet the GDPR standard”.

Why is this necessary? In March 2017 the ICO issued draft “GDPR consent guidance”.  This was a consultation version to gather the views of stakeholders and the public. The draft guidance states “if existing DPA consents don’t meet the GDPR’s high standards or are poorly documented, you will need to seek fresh GDPR-compliant consent, identify a different lawful basis for your processing (and ensure continued processing is fair), or stop the processing”. This means that, in practice, many businesses will have to refresh their consents.

Should I re-contact my entire database now? Before you do, here are a few things you may wish to consider.

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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.

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