Gambling on Top Flight Footballers: ASA Ruling

Soccer bet concept with football and money

The Advertising Standards Authority (“ASA”) has issued its first ruling under the new rules that prohibit gambling ads with “strong appeal” to under-18s, providing a useful example as to how the new rules will be applied.

Updated Gambling Ad Rules

As covered in more detail in a previous article for this blog, on 1 October 2022 new rules in the UK advertising codes came into effect that restrict the content of gambling ads. The rules of both the UK Code of Non-Broadcast Advertising and Direct & Promotional Marketing (“CAP Code”) and the UK Code of Broadcast Advertising (“BCAP Code”) were updated to prohibit all gambling ads that are “likely to be of strong appeal to children or young persons, especially by reflecting or being associated with youth culture”.

More specifically, the advertising codes state that gambling ads must not include “a person or character” who has strong appeal to under-18s. Similarly, ads for gambling products associated with “activities” that are of strong appeal to under-18s should be avoided, unless appropriate steps are taken to limit their appeal.

These new rules were accompanied by substantial guidance on their implementation (“ASA Guidance”), which provided examples of these types of persons, characters and activities. Amongst other sectors, there was a particular focus on sports, especially football.

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EU Design Reform Package: More efficient, Affordable, and Future-proof Design Protection Ahead

On 28 November 2022, the European Commission adopted proposals for a revised Regulation and Directive on industrial designs. The proposals, that are now sent to the European Parliament and Council for adoption, are aimed at modernizing the EU design system and the harmonized national design protection laws.

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IP Protection of NFTs: A Comparative Look at the US and China

The author would like to thank John Hodges and Elisa Li for their contributions to this post.

The emergence of blockchain-supported Non-Fungible Tokens (NFTs) has captured the interest of the entertainment and business worlds in the past couple of years. Large digital transactions like that of Beeple NFT that sold for $69 million and the ever-mounting numbers of more or less successful NFT cooperations like that between Tiffany and CryptoPunks or millions-heavy NBA Top Shot NFT have made the headlines. NFTs are also playing a key role in a generation’s development, with GenZ’ers dreaming of quick money through buy-and-sell of NFTs on crypto platforms.

NFTs are both a new creative form of intellectual and artistic expression and a lucrative business opportunity. Through the secure blockchain technology, NFTs allow the creation and sale of exclusive and limited content in the form of collectible digital assets that can be transported on multiple media such as images, videos, or music. In turn, this attracts interest from businesses ranging from fashion and sports brands, sport teams, designers, game developers, and other content owners.

Securing the right IP protection for an NFT will be key to its successful commercialization and exploitation by the creator and its owner. The exclusivity of exploitation is key to the success of a limited-edition collectible. The challenge becomes even bigger if NFTs are to be commercialized, exploited, and protected in different jurisdictions and at the same time — particularly when those markets include China, where protection for a foreign NFT creator or exploiter may face unique challenges.

In this blog post we examine how copyright is leveraged to protect NFTs, both in the US and China, with a comparative approach that elucidates both the challenges and potential solutions.

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Putting the Appeals of Both Sides to Bed: PTAB Rulings on the Patentability of Systems and Methods for Adjusting Air Pressure in a Mattress Affirmed

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The Federal Circuit recently handed down an informative decision in American National v. Sleep Number Corporation affirming the Patent Trial and Appeal Board’s final decisions in two inter partes reviews finding some claims patentable and some claims not patentable. The claims at issue related to the systems and methods for adjusting pressure in an air mattress in less time and with greater accuracy than the prior art.

The decision addresses and gives guidance on a range of issues presented by both parties — including findings of obviousness and the allocation of the burden of persuasion, the ability to amend claims in the context of an IPR, and whether a claim satisfies the enablement requirement of 35 U.S.C. § 112 when there is an error in the specification.

This article unpacks these rulings and offers takeaways on the decision.

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Ninth Circuit: Commercial Brand Names Can Be Expressive Speech

In Punchbowl, Inc. v. AJ Press, LLC, the Ninth Circuit affirmed a trademark win for upstart news outfit Punchbowl News. In doing so, the court held that First Amendment protection extends to the names of commercial enterprises. This ground-breaking decision heralds the expansion of traditional fair use defenses to any trademark infringement claims where a defendant’s conduct relates, in any way, to the broad category of activity considered “expressive” under the First Amendment.

Just when this blog was about to be posted on November 21, 2022, however, the Supreme Court granted certiorari in Jack Daniel’s Properties, Inc. v. VIP Products LLC. That news splashed a bit of cold water on Punchbowl’s apparent expansion of fair use defenses heralded above. That is because the Court’s review in Jack Daniel’s will almost certainly entail an examination (and perhaps even modification) of the Rogers test discussed below. Thus, Punchbowl’s true impact on trademark law will likely be delayed until resolution of Jack Daniel’s. Nevertheless, in the meantime, Punchbowl remains the law in the Ninth Circuit, which has one of the highest number of trademark infringement filings, as documented by the US Judiciary. Moreover, the Supreme Court’s examination of the Rogers test should not change the core holding of Punchbowl that the name of a commercial enterprise can itself be expressive speech.

Background

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UK Regulators Step up the Pressure on Influencer Marketing: Principles for Platforms, Brands and Content Creators

Over the past few years the UK’s Competition and Markets Authority (CMA) has been actively taking steps to address consumer protection concerns with sponsorships and endorsements within social media posts that have not been clearly disclosed.

Indeed, the scale of the issue was highlighted in the Influencer Monitoring Report, published in March 2021 by another regulator, the Advertising Standards Authority (ASA), which found that a staggering 65% of the advertisements it monitored in September 2020 were not properly disclosed as ‘paid for’ content.

The CMA, ASA, and a third regulator, Ofcom, recently published a joint note outlining the regulatory framework to combat “hidden advertising” on social media platforms.

Against this background, in November 2022 the CMA issued new guidance on hidden ads with the aim of enhancing the transparency of online advertising. The regulator makes clear that hidden advertising is both harmful and illegal, and that it will not tolerate non-compliance with the rules.

The guidance sets out the regulator’s expectations for social media platforms, brands and content creators – as to how to ensure ads are compliant with the law. The guidance emphasises the need for each party to be proactive in ensuring the rules are followed, whilst recognising that there are also individual responsibilities to tackle these issues.

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Ninth Circuit Holds Foreign Trademark Defendants Can Be Served through USPTO

Suing an overseas defendant often forces plaintiffs to go through the expensive and time-consuming process of serving the defendant through the Hague Convention. This requires translating the complaint and related documents, delivering them to the foreign country’s designated “Central Authority,” and then waiting for that Central Authority to actually deliver the documents and confirm delivery to the plaintiff. These costs and delays often dissuade plaintiffs from ever bringing well-based claims.

In San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., a case of first impression in the circuit courts of appeals, the Ninth Circuit held that if a lawsuit will affect a trademark, then a foreign-based defendant may be served either through its designated agent or the Director of the United States Patent and Trademark Office. The decision will thus allow companies to short-circuit the Hague Convention requirements and better assert their right against overseas trademark trolls.

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ITC Denies Competing Motions for Sanctions For Failure to Comply with the Rules

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The U.S. International Trade Commission (“ITC”) continues to be a popular venue for patent litigation under Section 337 of the Tariff Act of 1930. The speed at which Section 337 investigations proceed and the significance of an adverse decision can create circumstances that may lead to allegations of improper conduct. Similar to patent litigation in U.S. District Court, the presiding judge in a Section 337 investigation has the power to sanction the parties for improper behavior. However, a party must act quickly and follow the ITC’s rules to have any chance to have sanctions imposed on another party.

The framework for seeking sanctions in an ITC Section 337 investigation is provided by 19 CFR § 210.25. Subsection (a)(1) states that a motion for sanctions must be filed “promptly after the allegedly sanctionable conduct is discovered.” Subsection (a)(1) also requires that before filing a motion for sanctions, the party seeking to file the motion must serve a copy of the motion on the allegedly offending party in accordance with 19 CFR § 210.4 (d)(1) and provide that party at least seven days to correct the offending conduct before filing the motion. This so-called “safe harbor” provision is similar to the safe harbor provision found in Rule 11 of the Federal Rules of Civil Procedure.

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The Alice Test for Patent Ineligibility in Practice, Part Two: The Federal Circuit Affirms a Dismissal

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In a recent post, I discussed a September Federal Circuit decision (Cooperative Entertainment v. Kollective Technology) that reversed a lower court dismissal of a patent infringement case on Section 101 eligibility grounds under the Supreme Court’s 2014 Alice Corp. v. CLS Bank test. Just weeks after that ruling, the Federal Circuit in IBM v. Zillow ruled on another appeal from a dismissal on eligibility grounds in a case also involving IT patents. This time, however, the Court affirmed the dismissal. Can these decisions be reconciled? In this blog, I will dissect the majority opinion and address the dissent which, relying on Cooperative Entertainment,would have allowed some of the disputed claims to survive dismissal.

In the end, I conclude that the Federal Circuit had valid grounds for affirming dismissal in this latest decision given the breadth of the claim language as compared to the prior art. And despite affirming the dismissal in this case, some of the lessons from Cooperative Entertainment have been reinforced and should continue to guide litigants.

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What Gives You the Right to Be in This IPR? A Question OpenSky Should Have Answered

On October 4, 2022, in a 52-page Director review decision in an inter partes review (IPR) proceeding involving recently-formed entity OpenSky Industries LLC, USPTO Director Katherine Vidal sanctioned OpenSky “to the fullest extent of [her] power” because of OpenSky’s abuse of the IPR process, including flaunting of the Director’s discovery orders. The Director applied negative inferences to find facts against OpenSky; demoted OpenSky to a subordinate role in the IPR; and ordered OpenSky to show cause why OpenSky should not be required to pay compensatory damages.

These actions, plus subsequent pronouncements in the past couple of weeks, signal the Director’s commitment to addressing allegations about systemic IPR abuse. Patent owners and patent challengers can expect more as the Director considers overhauling the Director review procedure, as well as the Patent Trial and Appeal Board’s (PTAB) processes for determining whether an IPR proceeding should go forward.

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