Is BURNS NIGHT OFF KILT-ER?: Scotch, Trademarks & Distilling American Meanings

Within a year after the 1787 Edinburgh edition of his poems, American editions…were published in both Philadelphia and New York. Ever since we [Americans] have adopted the beauty, the humor and the wisdom of Robert Burns as part of our own culture and our own idiom—-often, even usually, without knowing the source in Scotland’s ploughman poet.

[Montgomery, James M. (1998) “How Robert Burns Captured America,” Studies in Scottish Literature: Vol. 30: Iss. 1, at 237 (emphasis added)].

Continue Reading

Hong Kong’s Patents (Amendment) Ordinance 2016 ( “the Ordinance” or “PAO” ) came into force on 19th December 2019 to further improve the Hong Kong’s system of protecting intellectual property rights on inventions

To ensure that Hong Kong’s system continues to meet present-day circumstances and be in alignment with Government’s vision of developing Hong Kong into a regional innovation and technology hub, Hong Kong Government appointed an Advisory Committee on Review of the Patent System in Hong Kong in 2011(the “Advisory Committee”) to review and advise it on (a) how the Administration should position Hong Kong’s patent system and (b) how best to implement suggested changes to the system.  Apart from the macro issues, the review also involved different professional and technical considerations underpinning the patent system as well as specific issues on (a) whether and, if so, how Hong Kong should have its own “original grant” patent system (as opposed to the pre-existing “re-registration” system), (b) refinements to the short-term patent system and (c) regulation of patent agency services.  C. K. Kwong, the writer of this article, was a member of this Advisory Committee. Continue Reading

The Concept of Reverse Confusion is Not Applicable under the Current Trademark Practice in Taiwan

As a principle, Taiwan adopts a “first to file” trademark registration system.  Under the system, fame and extensive use are not the requirements for registering a trademark.  In addition, under Article 2 of the Trademark Act in Taiwan, the holder of a trademark cannot claim its right under the Act unless the trademark has been registered in Taiwan.

Sometimes, however, the junior user of a trademark is more famous than the senior user/the registrant of the trademark.   In this type of situation, it is controversial whether Taiwan Intellectual Property Office (IPO) should grant trademark registration to the junior user since the relevant consumers might actually associate the trademark with the junior user, rather than the senior user/registrant.  With regards to this issue, the Supreme Administrative Court had long held the protection of trademark rights should be determined based on the “first to file” principle and the concept of “Reverse Confusion” is not applicable under the current practice in Taiwan.  In a recent administrative litigation, the Intellectual Property Court had reiterated this position. Continue Reading

Selling Your Products on US Online Marketplaces

Before you begin selling your products on a U.S. online marketplace like Amazon, Etsy or Rakuten, there are three intellectual property considerations to make: clearance, acquisition and enforcement. This article provides a summary of all three considerations and includes steps to take to help mitigate risk, decrease instances of infringers and position your product for success from a U.S. perspective.

CLEARANCE

First, you want to ensure the product (including product design) and the brand name under which you wish to sell your product do not infringe the IP rights of others. To do this, you will need to do a patent search to confirm there are no infringement issues with your product and a trademark search to confirm there are no potential issues with the brand name you selected. Continue Reading

Can Appointment of Administrative Patent Judges be Unconstitutional?

For the Patent and Trial Appeal Board (“PTAB”), the Administrative Patent Judges (“APJs”) are appointed by the Secretary of Commerce in consultation with the Director of the United States Patent and Trademark Office.  For an inter parties review of a patent, three APJs conduct the instituted review and determine if claims of a patent are unpatentable.  Is the appointment of the APJs unconstitutional because it violates the Appointments Clause of the U.S. Constitution.?  The answer was YES! until the court remedied the APJs to be inferior officers. Continue Reading

Recent judgment from the CJEU may have consequences for preliminary injunctions in Denmark

In a recent judgment from The Court of Justice of the European Union (the “CJEU”) in case C-688/17, the CJEU had the chance to provide an interpretation of adequate compensation contained in article 9(7) of Directive 2004/48 (the “enforcement directive”) and whether article 9(7) precludes a national legislation that provides that a party should not be compensated for the losses suffered by him if the rights which were the basis for provisional measures are subsequently invalidated.

The main dispute

The main dispute concerned the alleged infringement of a Bayer Pharma pharmaceutical patent by the Hungarian companies Exeltis and Richter.

Bayer Pharma initially failed in obtaining provisional measures prohibiting Exeltis and Richter from offering the alleged infringing products on the market. Exeltis and Richter subsequently filed for invalidation of the Bayer Pharma patent. Continue Reading

“Pirate Ships in Dangerous Waters!”

A recent decision of the Three-Member Court of Appeals of Komotini (Felonies Department), dated 19/11/2019, has been intensely debated by the national media as resulting to the first “real” prison sentence that has ever been imposed in our country to a website owner for illegally distributing copyright-protected content.  Although the judgement has not been published yet, according to the media, the owner of the “pirate” websites “greekstars.net” and “greekstars.co”, has been sentenced to five years in prison for illegal distribution of audiovisual works, music, books, computer programs, and video games and has been led to prison immediately after hearing the verdict. Although the law also provides for a monetary penalty, this was withdrawn by the Judges due to mitigating circumstances. Continue Reading

California Clears the Way for College Athletes to Get Their “Fair” Share of Licensing Pie

Sending shockwaves across the collegiate landscape, California Governor Gavin Newsom signed SB 206, the Fair Pay to Play Act (the Act) on September 30, 2019.

The Act takes aim squarely at the National Collegiate Athletic Association’s (NCAA) amateurism rules which prohibit student athletes from profiting from their athletic skill while in college and threatens to upend the fraught and controversial relationship between colleges and the athletes who represent them on the playing field. Continue Reading

Joint authorship of copyright: UK Court of Appeal tears up the script

A dispute concerning the screenplay for the 2016 Hollywood biographical comedy “Florence Foster Jenkins” (FFJ) – a film about a tone-deaf New York socialite who labours under the delusion that she is a talented opera singer – has this month produced a Court of Appeal decision centering on the parties’ own adjustment to reality. Apart from highlighting a perhaps lesser-considered pitfall of working with your other half, the judgment emphasises the practical difficulties of applying the test of joint authorship in English copyright law.

The matter first arrived at the UK’s Intellectual Property Enterprise Court (IPEC) in 2017, when screenwriter Nicholas Martin brought a claim against opera singer/children’s author Julia Kogan. Mr Martin and Ms Kogan had begun a romantic relationship in 2011, and lived together until the breakdown of their relationship in 2014. During that period, early drafts of the FFJ screenplay came into being. Whilst it was accepted that Ms Kogan had introduced Mr Martin to the real-life story of FFJ, little else about the creation of the script was agreed. Continue Reading

Supreme Court Settles Circuit Split on When a Plaintiff May Sue

The Supreme Court handed down a unanimous copyright decision in March 2019 with implications for anyone involved in a copyright dispute, as well as for marketers and brands that create and use copyrighted materials. In Fourth Estate Public Benefit Corporationv. Wall Street.com, LLC (Fourth Estate), the Court resolved a long-standing split among the circuits over the requirement to obtain a copyright registration before filing a lawsuit.

The creator of an original work of authorship, such as a photograph, musical composition or screenplay, automatically obtains copyright protection in his or her work, which includes the right to prevent others from reproducing or displaying the work. But under Section 411 of the Copyright Act, a copyright owner may not file an infringement lawsuit until registration of the copyright “has been made” with the Copyright Office. The question in Fourth Estate was: what does “has been made” mean? Continue Reading

LexBlog