_8s9nemczk0-oliur-rahmanIn Denmark, certain rules must be observed, if a company wants to turn to customers by electronic means to promote or to sell products and services.

Basically, the company must have the customers consent before the company can send out marketing. If there is no consent marketing through electronic means as text messages or e-mail would be categorized as spam.

The spam rules do not apply if the messages sent has only a service content. However, the message must not contain any other information that may increase sales or awareness of the company. In practice newsletters, and invitations to competitions or events have been categorized as spam.

A company who has received a customer’s e-mail address from the sale of goods or services to the customer has also the opportunity to market “own similar products or services” via e-mail without consent. After practice, the product must be the same type of goods or services. Continue Reading

USPTO Adopts New Regulations for Trademark Specimens of Use

ziwuqmznrvs-bench-accountingUnlike the practice in many countries, in most cases the U.S. requires a trademark owner to place the mark into actual use in commerce and provide specific types of proof of use before the registration certificate will issue.  Similar requirements apply to the mandatory declaration of use to maintain or renew a U.S. registration.  Effective February 17, 2017, the United States Patent and Trademark Office (“PTO”) has amended its rules relating to the amount of proof necessary to substantiate current use of the mark for post-registration declarations of use.  37 CFR Part§§ 2.161 and 7.37.

Post-registration requirements to prove use in U.S. commerce

Under § 8 of the Lanham Act, a trademark registrant must file a declaration that the mark is in current use in commerce and provide a specimen of that use between the 5th and 6th years after registration and every 10th year, when the registration is renewed.  Similar requirements under § 71 of the Act apply to owners of International Registrations with extensions of protection to the U.S. under the Madrid Protocol.   Specimens of use submitted to the PTO must illustrate how the owner is using the mark in commerce in connection with the particular goods or services identified in the application or registration.  Specimens of use for trademarks are usually photos of packaging or labeling for the goods bearing the mark or of the mark placed directly on the goods. Specimens of use for service marks are usually advertising or promotional material for the services bearing the mark.  For registrations originally based on the Madrid Protocol or on registrations obtained in other countries, the §8 or § 71 declaration of use is the first time proof of use of the mark in U.S. commerce is required. Continue Reading

Maybe Axanar Could Klingon To Its Fair Use Defense In A Parallel Copyright Universe

rtzw4f02zy8-nasaOn January 3, 2017, in Paramount Pictures Corp. v. Axanar Productions, Inc. et al., a United States District Court held that Axanar could not rely on a fair use defense during the upcoming trial over whether Axanar infringed Paramount’s copyright in the popular Star Trek television and motion picture franchise.  Axanar has an existing twenty-one minute film Star Trek: Prelude to Axanar (“Prelude”) and at least two trailers for a planned full-length feature film (the “Axanar Motion Picture,” and, collectively with Prelude, the “Axanar Works”).  Central to the Court’s rejection of that defense was Axanar’s inability to convince the Court that the Axanar Works had the characteristics of the sort of works, such as parodies, that are recognized as deserving of a fair use defense under 17 U.S.C. § 107, as further explained by the United States Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).  While seemingly a solid analysis under the applicable U.S. copyrights laws and cases, one perhaps should ask whether a different result could be supported in a parallel copyright universe.  (This does, after all, involve Star Trek, where, since the Original Series episodeMirror, Mirror” episode, examples of parallel universes have existed.)  But to get to that parallel universe here, one need not experience a transporter malfunction, nor travel multiple parsecs—one perhaps need only look the United Kingdom (not to be confused with the United Federation) and Section 30A of its Copyright, Designs and Patents Act 1988.  Understanding more fully the Axanar case and the Axanar Works will help the parallels emerge. Continue Reading

Industrial Design Protection in Canada: Changes Before the Office January, 2017

a4gptwtaajw-stephen-di-donatoIndustrial design registrations under the Industrial Design Act (the “Act”) are similar to design patents in the US.  They protect the features of a product that are visually appealing and not purely utilitarian. They can consist of a shape, configuration or composition of pattern or color, or combination of pattern and color in three-dimensional form, such as the design of a table or the shape of a computer monitor.

The Canadian Intellectual Property Office (CIPO) published six new practice notices on  January 13, 2017 regarding the industrial design registration process under the Act. Each notice came into effect immediately and affects both pending and future design applications. According to CIPO, the changes will improve client service, reduce administration and modernize Canadian practices in order to align those practices with international standards. These changes may also impact registrable subject matter (see below). Continue Reading


Serious SecretaryHow do you plead patent infringement in the United States?  Can you survive a motion to dismiss if the defendant challenges the sufficiency of your complaint?  What should you do?

Let’s say your client has a United States patent that is believed to be infringed by another party.  You do not rely on the client solely for facts, but conduct your own investigation to meet a pre-filing due diligence.  You review the patent, prior art, and file history for claim construction.  You also review the accused infringing device both independently and with your client.  You prepare claim charts for all claims of the patent and apply elements of the claims to the accused infringing device in the claim chart.  You may even obtain an opinion of counsel that is reasonable, comprehensive, and competent such that a reasonable litigant could believe that an infringement claim could succeed based on the opinion.  This pre-filing due diligence will usually meet your obligation under Rule 11 of the Federal Rules of Civil Procedure.

After conducting your pre-filing due diligence, you draft a complaint for patent infringement. In the complaint, you plead the patent number, that the plaintiff owns the patent, that the defendant infringes the patent by selling products, and that notice was given to the defendant of the infringement, and request an injunction and damages.  You file the complaint for a civil action in federal court and the defendant files a motion to dismiss under Rule 12 of the Federal Rules of Civil Procedure.  What happened?  Could you have done something to prevent this?  The answer is YES! Continue Reading

The Constitutional Court has permitted to reduce IP compensations below the minimum amount

vq__yk6faoi-claire-andersonOn December 13, 2016, the Russian Constitutional Court has published its Ruling on constitutionality of certain articles of Civil Code regulating the legal nature of compensation as an IP remedy.

The constitutional review was requested by the Altai Arbitrazh Court. While considering numerous IP cases (Kvadro-Publishins v. Lubivaya, Aeroplan v. Vashkevich), the court found that all respondents (local entrepreneurs) had violated several IP assets by selling a few counterfeited items. Since every such violation entails at least a minimum IP compensation (10 000 RUB), the sums of compensation could amount to significant sums in case various IP assets are claimed.

In its request the Altai Arbitrazh Court criticized this mechanism, because it did not provide the courts with the discretion to reduce compensations, even when minor entrepreneurs were made respondents. Continue Reading


js09rllu-km-nico-beardAs often as we warn our clients about unscrupulous companies that prey on trademark owners using notices and invoices that appear to come from government agencies, these worldwide scams continue to reap large quantities of fraudulent proceeds.  The U.S. Patent and Trademark Office (“USPTO”) works in a variety of ways to alert the public to these non-official solicitations.  Every Office Action from a trademark examiner contains a warning and a link to the “Non-USPTO Solicitations” page, and every issued trademark registration certificate arrives with a similar warning on bright orange paper.

The Non-USPTO Solicitations page contains the names of companies of which the USPTO is aware that make their solicitations mimic the look of official government documents rather than the look of a typical commercial or legal solicitation.  They emphasize official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records. Many refer to other government agencies and sections of the U.S. Code. Most require “fees” to be paid. Clicking on the company name provides an image of that entity’s solicitation.  Applicants and registrants have paid these private companies, believing that they were paying required fees to the USPTO.  Continue Reading

New Copyright Office Regulations Require Websites to Re-Register for DMCA Safe Harbor Protection

wvutnxz1hsc-green-chameleonBOTTOM LINE

Website operators and other online service providers must re-register their DMCA designated agents using the Copyright Office’s new online filing system by December 31, 2017 to avoid losing DMCA safe harbor protection.

The Copyright Office recently implemented new regulations governing how websites and other online service providers must register a designated agent for receiving copyright infringement notices under Section 512(c) of the Digital Millennium Copyright Act (DMCA) to qualify for the DMCA safe harbor from copyright infringement. Beginning on December 1, 2016, online service providers must register their DMCA agents using the Copyright Office’s new online system. More significantly, online service providers who had already registered DMCA agents must re-register using the new online system by December 31, 2017, or they will lose their DMCA protections against copyright infringement. Continue Reading

Supreme Court Reverses Apple v. Samsung Design Patent Damages Award

Smartphone on leather backgroundOn December 6, the Supreme Court reversed Apple’s $399 million patent infringement verdict against Samsung.  The decision – the first from the Supreme Court to interpret design patent damages since 1886 – arguably raises more questions than it answers.

In a series of widely-publicized cases around the globe, Apple and Samsung have been battling over the alleged infringement of smartphone designs since 2011.  Through multiple trials and appeals, Apple eventually obtained a $399 million verdict for Samsung’s infringement of three Apple design patents covering various aspects of the iPhone, including the front screen and ‘rounded corners.’

At issue was the proper measure damages when an infringing design is applied to a component of a larger item that also comprises non-infringing designs.  The Supreme Court’s prior cases addressing the issue – Dobson v. Hartford Carpet Co., 114 U.S. 439 (1885) and Dobson v. Dornan, 118 U.S. 10 (1886) – required the plaintiff demonstrate that the defendant’s profits were “due to” the infringement of the patented design rather than other aspects of the product embodying the patented design.  Congress responded by creating an alternative, special measure of damages for design patent infringement, enacting what is now known as 35 U.S.C. § 289.  Unlike the normal measure of patent infringement damages (still available in design patent cases), where “…the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer…” (35 U.S.C. § 284)(emphasis supplied), whomever “…applies the patented design…to any article of manufacture for the purpose of sale…shall be liable to the owner to the extent of his total profit…” (35 U.S.C. § 289)(emphasis supplied). Continue Reading

List of Holiday-Related Trade Secret/Non-Compete Cases

trgvhbsuf40-srikanta-h-uWhether you are a young child missing teeth, or a grown-up taking account of her life, or Santa Claus himself checking up on everyone else’s life, many of us make lists at holiday time.  They can be lists of gifts we want, or those we need to get, or people we wish to see or write to, or things we need or want to do before the end of the year.  Sometimes they are just lists of things that happened this year or that we want to happen next year.  Certainly there are lots of “Top Ten” holiday lists.  This one may be neither an exception nor exceptional, but here is a “Top Ten List of Holiday-Related Trade Secret/Non-Compete Cases”:

  1. “It may be better to be naughty than nice”—In Ivy Mar Co., Inc. v. CR Seasons Ltd., 907 F. Supp. 547 (EDNY 1995), the Court denied plaintiff a preliminary injunction in a non-compete/trade secret case in large part because of plaintiff’s months-long delay in bringing the action. This occurred notwithstanding plaintiff’s claim that it only delayed filing the action so as not to ruin Christmas—“they delayed bringing this motion because they feared defendant Jetmax would not ship goods to its customers during the Christmas season,” or so they claimed.
  2. “Or maybe not.”—In Agero Inc. v. Rubin et al., an appellate court in Massachusetts affirmed dismissal of plaintiff’s claims, holding that Agero failed to establish that two of the defendants, Timothy Schneider and Matthew Capozzi, owed Agero a duty of loyalty. Though the Court when on at some length as to the reasons it had for affirming the result against Agero, what was perhaps most telling was the Court’s taking the time to express a reason that it was not relying on:

We need not comment on the defendants’ suggestion that Agero brought this complaint against them, despite Agero’s size and apparent lack of interest in pursuing ViewPoint, to send a message to other Agero employees who might entertain thoughts of leaving and lawfully competing. That Agero reportedly sued Schneider on Christmas Eve, when Schneider’s oldest child was five years old, might lend credence to the charge. However, we do reiterate that noncompetition agreements would be the better practice to achieve that goal. Based on the record before us, Agero’s claims were properly dismissed. Continue Reading