A pro bono case in the Ninth Circuit just made it harder for plaintiffs to prove copyright infringement is willful. Continue Reading
The America Invents Act’s creation of patent challenge proceedings to be conducted by the USPTO’s Patent Trial and Appeals Board (PTAB) provided a powerful tool for challenging patent validity outside of costly litigation proceedings. But recent events are changing the strategic advantage that such proceedings may hold for patent challengers.
On April 9, 2019, my IP colleagues Kerry Lee and Matt Jones published an informative post about using the ® and ™ trademark symbols – which are internationally used and recognized to signal trademark registration. As their post had a UK perspective, we thought it would be useful to provide a US perspective as well.
US trademark law is governed by the federal Lanham Act, 15 U.S.C. §§ 1051 et seq. The Lanham Act does not require notice of US trademark registration as a condition of trademark protection or continued registration. However, as Kerry’s and Matt’s article recognized, failure to use the trademark registration symbol or other notice after registration might limit a trademark owner’s rights – specifically, the right to obtain monetary damages from an infringer of a US-registered mark. A registrant would still be able to obtain injunctive relief and attorney’s fees in appropriate cases – but not monetary damages or a profits award for infringement that occurred before the infringer had actual notice of the registration.
Despite the consistent and continuous opposition to the controversial Article 13, the European Parliament has adopted the ‘Directive on copyright in the Digital Single Market’ (the Directive). MEPs debated and subsequently voted in favour of the Directive, 348 votes to 274 (36 MEPs abstained).
The Final Wording of the Directive
The latest version of the Directive can be seen here. Articles 11 and 13 have always been the most controversial elements of the Directive and both articles are included in the final text. In the final version Article 11 has become Article 15 and Article 13 has become Article 17, although for consistency we will continue to refer to them by their original numbers. The final wording of both articles is slightly different to the wording that was agreed on 20 February 2019, although Article 11 and its effect remains largely unchanged.
Although it is very common to see the ® symbol on advertising and marketing materials in everyday life, how many consumers know what it means? And how common is it for brands to misuse the ® symbol?
The ® symbol
In the UK, you can only insert the small ® symbol after a mark if you have a fully registered trade mark with a certificate of registration and registration number. The UK Intellectual Property Office (UKIPO) will have a record of your trade mark, and declaring that it is registered is often regarded as the best form of deterrent for infringement: by using the ® symbol once the mark is registered, you can freely demonstrate to the market, and both your customers and competitors, that you have protected your brand and third parties cannot use (or abuse) it. Continue Reading
The wake of the SEC’s guidance on classification of digital assets (here) and no-action letter to digital token issuer TurnKey Jet, Inc. (here), many may have forgotten or ignored that the final arbiter of the definition of “security” under federal law is not the SEC; it is the federal judiciary. On March 31, 2019, Judge Vernon Broderick of the United States District Court for the Southern District of New York weighed in, denying a motion by digital token issuers to dismiss a class action securities lawsuit and holding that, at least as alleged, the token at issue constituted a security.
- Defendants allegedly conducted a public sale of an unregistered token that was promised to work with a future blockchain and provide purchasers with a return on the investment. Defendants never completed the blockchain, the token plummeted in value, and Plaintiff sued in the Southern District of New York on behalf of a putative class of investors, alleging Defendants had conducted an unregistered sale of securities.
- Defendants moved to dismiss, arguing among other things that the token did not constitute a security. The court rejected this argument and denied the motion, reasoning that Defendants had marketed the tokens as an investment that depended nearly wholly on the creation of the new blockchain.
- One question that arises is how to square this decision with the SEC’s position that pure cryptocurrencies (such as Bitcoin) do not constitute securities, as many pure cryptocurrencies were also sold or distributed to investors, in some cases as an investment, and depended on a new blockchain. The likely reconciliation is that the pure cryptocurrency blockchains existed at the time of distribution, were not to be created with the sale proceeds, and were subsequently run by a distributed network, not the issuer.
Over the last year, the Committees of Advertising Practice (the CAP), have taken an increasingly robust view on gambling ads. Last year, it announced tougher standards to be imposed on gambling advertising after its review of gambling advertising revealed that – whilst advertising did not itself play a causal role in problem gambling – claims, imagery and approaches were deployed that may unduly influence people to behave irresponsibly.
Those standards included restrictions on ads that invoked a sense of urgency (known as Bet Now ads) during live sport; and a requirement that adverts should curb the trivialisation of gambling, avoiding anything which could, for example, encourage repetitive play.
On April 3, 2019, the SEC’s Strategic Hub for Innovation and Financial Technology (“FinHub”) issued a long-awaited framework for analyzing whether a given digital asset constitutes a “security” under federal law and is thus subject to the vast complex of federal securities laws and regulations. Simultaneously, the SEC’s Division of Corporate Finance issued its first “no-action” letter for a digital token offering, stating that it will not recommend enforcement action to the Commission based on tokens issued by TurnKey Jet, Inc., on the grounds that the tokens do not constitute securities. These two pronouncements will provide useful guidance to blockchain companies that issue digital assets. Continue Reading
Last month, Chris Stevens-Smith wrote about football cards’ new lease of life through the use of blockchain for our sister blog Sports Shorts. The article looks at the use of crypto trading cards, and how football clubs are using technology to engage with their fans. You can read the blog here, and subscribe to Sports Shorts if you would like to receive regular updates and insights on Sports Law.
The Copyright Act often seems to lag behind technology, with infringements rampant on the Wild Internet. Not so, as was evidenced by the robust discussions at the third public meeting on Developing the Digital Marketplace for Copyrighted Works, hosted by the US Department of Commerce’s Internet Policy Task Force on March 28, 2019.
The Internet Policy Task Force was established in 2010 to identify and review key public policy and operational issues for economic growth and job creation through the Internet. The March meeting demonstrated its leadership in this regard, featuring panels and dialogs between various stakeholders, including authors and other creators, rights-holders, licensing societies and technological innovators, and governmental representatives. The government contingent included representatives from the Office of Policy and International Affairs (OPIA) of the USPTO, the US Copyright Office, and the US National Telecommunications and Information Administration (NTIA). Continue Reading