Comparative Advertising: A Quick Guide

What is a comparative advertisement? The EU Misleading and Comparative Advertising Directive 2006 (the “Directive”) defines a comparative advertisement as an ad that explicitly or by implication identifies a competitor or goods or services offered by a competitor. It seems like an intuitive concept, but there are a whole host of legal requirements, which advertisers should bear in mind when considering a comparative advertising campaign. Continue Reading

In re Tomahawk and the Securities Law Implications for Airdropped Tokens

The legal status of cryptocurrency token airdrops under U.S. securities regulations remains a topic of great interest.  Many issuers wonder if they might use airdrops to avoid scrutiny of their token under U.S. securities regulations.  While the definitive answer remains unsettled, a recent order from the SEC suggests it may (rightly or wrongly) treat airdrops as securities. Continue Reading

‘Unhealthy’ Food Ads Banned Under New ASA Rules

Retailers should continue to monitor the Committee of Advertising Practice Code (CAP Code) governing the advertising of High in Fat, Salt and Sugar (HFSS) products to children. Last year, CAP introduced rules banning the advertising of HFSS products in children’s media and media where children comprise at least 25% of the audience. This includes placing ads within 100m of a primary school, for example. CAP intends to restrict the advertising of products that “most contribute to the problem of childhood obesity”. Continue Reading

The Service Date of a Patent Infringement Complaint Begins the One Year Clock for Filing an Inter Partes Review Petition

In Click-to-Call Technologies, LP v. Oracle Corporation, No.2015-1242 (en banc), the Federal Circuit has overturned the Patent Trial and Appeal Board’s longstanding interpretation of 35 U.S.C. §315(b)’s time bar for inter partes review (“IPR”) petitions, finding that the service of any civil complaint for patent infringement— even if later dismissed—starts the clock on the statute’s one-year window for filing an IPR. Continue Reading

ITC Temporarily Rescinds Remedial Orders Based On District Court Invalidity Judgment

In yet another twist in the saga of Certain Beverage Brewing Capsules, Components, Thereof, and Products Containing Same, Inv. No. 337-TA-929, the U.S. International Trade Commission (ITC) has issued an order temporarily rescinding the extant remedial orders in that investigation pending appeal of a district court judgment finding the claims of the patent-in-suit invalid.  The ITC cites its 2011 decision in Certain Composite Wear Components and Products Containing the Same, Inv. No. 337-TA-644 as involving analogous facts. Continue Reading

ITC Doubles Down On Its Interpretation Of Section 337’s Domestic Industry Requirement

Just one month after the U.S. International Trade Commission (ITC) issued an important decision in Certain Solid State Storage Drives, Stacked Electronics Components, and Products Containing Same, Inv. No. 337-TA-1097 holding that labor, capital, and employment investments in non-manufacturing activities, such as engineering and research and development, can satisfy Section 337’s domestic industry requirement (see our prior post), it has gone out of its way to issue another opinion reinforcing its earlier reasoning. Continue Reading

GDPR’s Impact on Use of Employee Images in Marketing Campaigns – How to Protect Yourself!

The practise of employers using their employees’ images and names within marketing materials (from graduate recruitment materials and internal-only promotions, to nationally distributed campaigns) has become a riskier strategy in light of the consent requirements under the General Data Protection Regulation (GDPR), which recently came fully into force across the EU.  Even where employers have obtained an employee’s consent to process personal data for the purposes of these types of campaign, the inclusion – in Article 7(3) of the GDPR – of an express and absolute right for a data subject to withdraw his or her consent “at any time” presents a commercial risk.  Continue Reading

EU Court Ruling Keeps Shoe Designers On Their Toes

Last month, on the heels of the ruling from the District Court of The Hague, the Court of Justice of the European Union (CJEU) ruled that Christian Louboutin’s red high-heeled soles are protectable as a trademark.

As previously discussed, Louboutin decided to sue to protect its hue.  Louboutin has owned a registered Benelux trademark for the red sole since 2010, and in 2013, Louboutin sued Van Haren Schoenen BV (Van Haren), alleging that Van Haren’s blue high heels with red soles infringed Louboutin’s trademark.  In rebuttal, Van Haren argued that Louboutin’s trademark is invalid because the red color is part of the “shape” of the shoe, and shapes are not protectable as trademarks under the EU equivalent of the US “functionality doctrine.”  The functionality doctrine does not protect aspects of trade dress that serve a utilitarian purpose.  If a product feature is essential to the use or purpose of the article, or affects the cost or quality of the article, then the product feature is deemed functional and cannot be trademarked. Continue Reading

ALJ Cheney Grants Motion To Terminate Based On Arbitration Agreement

Just a few days after denying a motion to terminate in Certain Color Intraoral Scanners and Related Hardware and Software, Inv. No. 337-TA-1091, Order No. 23 (May 18, 2018) that was based on a forum selection clause in a prior agreement between private parties (see our prior post), Administrative Law Judge Cheney granted a motion to terminate in another investigation based on an arbitration clause contained in a license agreement.  Certain Wafer-Level Packaging, Semiconductor Devices And Products Containing Same (Including Cellular Phones, Tablets, Laptops, And Notebooks) And Components Thereof, Inv. No. 337-TA-1080, Order 26, (May 21, 2018).

As highlighted in our prior post, Judge Cheney had explained some distinctions between forum selection and arbitration clauses in Intraoral Scanners, including that arbitration is a policy expressly favored by law.  Now, Judge Cheney has made the distinction between the two types of clauses even more explicit by expressly distinguishing his decision in Intraoral Scanners as involving “different facts.”  According to Judge Cheney, “a prior agreement between private parties selecting a court in another country [Denmark] to resolve contractual disputes presents different considerations than a prior agreement to arbitrate.”

Takeaway:  Section 337(c)’s authority to terminate an investigation “on the basis of an agreement between the private parties” is discretionary.  Judge Cheney’s recent decisions on motions to terminate illustrate that the issue is fact-specific and may require a detailed look at both the agreement in question and the policy behind the discretionary authority to terminate.


The Federal Circuit Shuts the Door on Use of Tribal Immunity in IPRs

The Federal Circuit has rejected Allergan’s ploy to shield its Restasis patents from the scrutiny of inter partes review by assigning them to the St. Regis Mohawk Tribe, finding that tribal immunity does not apply in such proceedings.  The case is Saint Regis Mohawk Tribe, Allergan, Inc., v. Mylan Pharmaceuticals Inc., et al., Case No. 18-1638, July 20, 2018.

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