An all too typical fact pattern involves a small-time ne’er-do-well infringing on the rights of a much bigger corporation. When the corporation is forced to bring a lawsuit, the “little guy” infringer cries poverty and seeks a settlement. An oft-used tactic of corporations is to settle the matter quickly (and before too much in attorneys’ fees has been incurred) for a relatively modest sum (or even no money at all) while also including a mechanism by which any breach of the settlement agreement triggers the filing of an agreed judgment for a large sum of money.
A recent Ninth Circuit decision, In Re Richard L. Priddis, 2023 WL 2203562 (9th Cir. 2023) (Unpub.), highlights an under-examined issue with those judgments – specifically, the ability of the judgment holders to enforce them via involuntary bankruptcy when there are multiple plaintiffs/claimants.
Competition in the world of online sales is intense, but companies that used inflated original prices to lure customers face consequences.
JC Penny, for example, has been hit with a class action lawsuit in the Southern District of California over its alleged advertising practice of using “false reference pricing.” The three-count complaint claims the nationwide retailer violated California’s Unfair Competition Laws, False Advertising Laws, and Consumer Legal Remedies Act because of its supposed sale pricing practices. Do the claims have merit?
The plaintiff, Maria Carranza, contends that JC Penny is engaging in a scheme to fabricate false “original” (or “reference”) prices before offering products for sale at a supposed “discount.” Carranza claims that JC Penny falsely advertises its products on its e-commerce website by listing a high reference price and the corresponding sale price. The issue? The products, Carranza claims, were never sold at the listed reference price as advertised. Rather, as stated in the Complaint, the “original” prices are “false or severely outdated reference prices, utilized only to perpetuate Defendant’s false discount scheme.” JC Penny faced a similar “price anchoring” class action suit in 2015. Part of that proposed settlement provided for “improvements” to the retailer’s price comparison advertising policies and practices, including “periodic monitoring and training programs” designed to ensure compliance with California’s advertising laws.
Is this the time we can really see a change in the fight against Chinese trademark squatters, or are we just adding burdens to legitimate right holders?
The China National Intellectual Property Association (CNIPA) has recently published a draft amendment to the Chinese Trademark Law. The document is still under examination and has been disclosed to the public for comments. If adopted in its current version and without further modifications, this amendment would have a considerable impact on many aspects of trademark law and practice in China. One of those aspects is the never-ending fight against trademark squatters.
Trademark squatters are Chinese individuals or companies that hoard the trademarks of others without their consent. Relying on the online database of the Chinese IPO (online since 2005) and the first-to-file principle where prior use does not grant trademark rights in China and the first-to-file wins the right, they have built a huge industry based on theft and blackmail. Various attempts have been made in the past versions of the Chinese Trademark law to reduce the impact of this phenomenon. Among them are: the recognition of trademark hoarding as a ground for invalidation, the non-use of the stolen mark as a defense against possible trolling, the increase of recognition of bad faith in opposition proceedings, just to name the most relevant. However, none of them was able to reduce the level of squatted filings.
Now, with this amendment, the CNIPA seems to take a closer aim at trademark squatting by introducing revolutionary legal concepts in the trademark filing and maintenance process, such as actual or imminent use at the time of filing an application and proof of use to maintain a registration.
In a unanimous February 1, 2023 Order, a Federal Circuit panel granted Google LLC’s petition for a writ of mandamus directing the U.S. District Court for the Western District of Texas to vacate its order denying transfer of patent infringement claims to the Northern District of California. As discussed here, this precedential decision signals the Federal Circuit’s intent to support the transfer of cases that have little to no connection with the forum where filed and has implications for litigants and their strategies, particularly in light of recent standing orders issued by the Western District of Texas on the assignment of patent cases.
The Federal Circuit Decision
The Federal Circuit found that the District Court clearly abused its discretion in denying Google’s motion to transfer. Looking at the private and public interest factors that the Fifth Circuit has considered in the transfer context, all of them either weighed in favor of transfer or were, at best, neutral.
China is at the forefront of the AI development race. While many see China’s AI policies as a cover to curb freedoms and control society, the reality is that China is an active AI developer in a thriving market for AI applications in both the trade and industrial sectors.
There are, however, several challenges related to obtaining IP protection for algorithms in China. Lack of IP protection may expose the development to theft, infringement and misuse by Chinese competitors and it may result in huge economic losses for the developers. Navigating these challenges in the proper way will be key to the selection of the appropriate business model for the exploitation and commercialization of the algorithms (e.g. licensing, assignment, JVs, cooperation and co-development etc.) in China.
Before entering into cooperation agreements with businesses, developers and government institutions, including R&D centers or universities in China, foreign rights holders should conduct proper due diligence of their future partners and the related projects should be secured by registration of any relevant IP (patents and trademarks in primis) and written agreements to ensure that joint ownership, licensees, pledges or transfer of IP rights derived from the cooperation are properly regulated. This will help avoid surprises from the application of unfamiliar Chinese laws and regulations.
The authors wish to thank Eben Kurtz for his contributions to this post.
In the first few months of 2023, the UK Regulator – the Competition and Markets Authority (“CMA”) – continues to be active in cracking down on misleading green claims, this time targeting the fast-moving consumer goods industry (“FMCG”).
At the end of January, the CMA announced that it is investigating FMCG for the use of green claims in labelling, advertising and marketing material. In particular, the CMA is concerned with “broad eco-statements“, misleading claims about the recyclability of a product and brands labelling themselves as “sustainable.” A wide range of products potentially fall within the remit of the investigation, with the CMA describing FMCG as “essential items used by people on a daily basis and repurchased regularly, such as food and drink, cleaning products, toiletries, and personal care items.”
The cost-of-living crisis is a concern for all consumers, with many carrying out research to understand ways that spending can be reduced. One major issue during the cold winter days is the cost of heating bills.
The Advertising Standards Authority (ASA) has banned four separate adverts which relate to electric plug-in mini heaters. All the ads suggested that mini heaters are a viable replacement to conventional heating via gas. The ads implied that the products would save consumers money while quickly and efficiently heating a room.
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 (“ASAGuidance”), which provided examples of these types of persons, characters and activities. Amongst other sectors, there was a particular focus on sports, especially football.
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.
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.
