The importance of identifying the correct applicant in Australian trade mark applications

When preparing a trademark application, a significant amount of attention is often given to the drafting of the specification of goods and services. Whilst the goods and service classification is important, care should also be taken to ensure all other details contained within the trademark application are correct, including confirming the true identity of the applicant and that it is the actual owner of the mark.

Whilst it might seem innocuous, incorrectly identifying the applicant in a trademark application could have some damaging consequences, including that a registered trademark owner may be unable to enforce its rights in the mark on the basis that it is not the true owner. Continue Reading

FTC To Focus on Subscription Services — Hints at Taking Action Against “Dark Patterns”

The FTC has issued a new Enforcement Policy Statement Regarding Negative Option Marketing (Policy Statement), generally warning companies about their compliance obligations relating to negative option programs and against using website design features to deceive consumers into signing up for subscription services (i.e. by using “dark patterns”).

The Policy Statement was released in light of an uptick in the number of consumer complaints citing harm caused by deceptive recurring subscription practices, such as billing consumers for unauthorized charges or making it difficult for consumers to cancel a subscription. Continue Reading

Reverse Class Actions in Canada: A New Form of IP Litigation

On September 8, 2021, the Federal Court of Appeal (FCA) in Canada released its decision in Salna v. Voltage Pictures, LLC, 2021 FCA 176 which considered whether a reverse class action, a term used colloquially to describe where a plaintiff seeks certification of a respondent/defendant class proceeding, could be pursued in connection with a copyright infringement claim. Rather than in a typical class action where the plaintiff is the class, in these proceedings, the respondents/defendants make up the class. A reverse class proceeding is a proceeding where a plaintiff or specific plaintiffs bring a proceeding against a class of respondents/defendants for common or similar facts. Continue Reading

THE PARASKAVEDEKATRIAPHOBIA PRECEDENT: Why Friday The 13th Decision Raises Fear Of Slashing Long-Held Copyrights

Admittedly, the second word in that title is a mouthful—but Paraskavedekatriaphobia is a real word, with an etymology and definition.  It even has a synonym, friggatriskaidekaphobia.  Each means “fear of Friday the 13th.”    Though I am tempted to write this October piece about Halloween (whether it is the day or the movies by that name, including one out again this season), I cut over instead to a different set of haunts and howls caught on film.  (But I will pause along the way to note that the Seuss/Star Trek mash-up case about which I have written before has recently settled, which I had to mention, of course.) Continue Reading

Establishment and operation of CMOs in Greece

Legal forms of CMOs

According to article 8(1) of Law 4481/2017 on the collective management of copyright and related rights, “collective management organisations operate under any legal form under the terms of article 3(a)”.

Therefore, upon the establishment of a collective management organisation (CMO) in Greece, the members (ie, the rights holders) themselves are free to choose the legal form that best serves their interests. Continue Reading

Can You Register a Copyright on a Website or Web Page?

Suppose that you have expressed your idea into a tangible form such as a website or web page.  Although your copyright exists upon the moment of creation, do you have a valid copyright on the website or web page?  Should you register your copyright on the website or web page with the U.S. Copyright Office?  The answer is YES! Continue Reading

A DAVID AND GOLIATH STYLE UGG BOOT DISPUTE

Just over five years after the California-based retail giant Deckers Outdoor Corp. (Deckers) filed a lawsuit against Sydney-based footwear company, Australian Leather Pty Ltd (Australian Leather) for trademark infringement, the U.S. Court of Appeals for the Federal Circuit has ruled in favour of Deckers.

The Court of Appeals affirmed the previous decision of the district court which found that Australian Leather had wilfully infringed Deckers’ “UGG” trademarks by selling less than 15 pairs of UGG branded boots in the U.S., awarding Deckers $USD450,000 in damages and ordering a permanent injunction preventing Australian Leather from (among other things) “using … the UGG mark or designation, or any reproduction, counterfeit, copy, or colorable imitation thereof, in any manner and in any format, case or spelling, on or in connection with the sale, offering for sale, distribution, or advertising of any product in the United States or its territories.” Continue Reading

Software Patents: When is enough enough?

Software Patents: When is enough enough?[1]

Developing a Disclosure for Software Patents:

  • Discuss with the inventor the technological underpinnings of the novel functional aspects of the software and how those technological considerations support that function.
  • Discuss with the inventor details that link the novel functional aspects of the software description to those technological underpinnings.
  • Ask the inventor to explicitly describe why the invention is more than the expected sum of its parts. Why couldn’t a software engineer, faced with the same problem, come up with the same solution?
  • When drafting, include these details explicitly in the specification.

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Supreme Court Finds Google’s Copying of Oracle’s APIs a Fair Use

A recent Supreme Court decision has finally put an end to the longstanding fight between Oracle and Google concerning Google’s use of Oracle’s copyrighted Java Application Programming Interfaces (APIs). The Supreme Court’s decision held that, contrary to the decision by the Federal Circuit Court of Appeals which was discussed in our previous alert, Google’s use of Oracle’s APIs was protected by the copyright defense of Fair Use. This decision is likely to create greater opportunities for developers to use copyrighted API code. Continue Reading

Collective management of copyright and neighbouring rights in Greece

Introduction

Under the Copyright Law, certain copyright and related rights are subject to mandatory collective management, meaning that they can be exercised only through a collective management organisation (CMO). These rights include:

  • the right to fair remuneration for reproduction for private use (known as “blank tape levy”), which is calculated at a percentage of the value of specific devices or materials that are used for private reproduction of protected works (as provided for in article 18 of Law 2121/1993). The levy can be collected only by CMOs;
  • the right to grant or refuse authorisation to a cable operator for cable retransmission (provided for in article 3(5) of Law 2121/1993), which may be exercised only through a CMO; and
  • the right to an equitable remuneration of performers of sound, visual or audiovisual recordings and producers of sound recordings, for acts of communication to the public as well as for radio or television broadcasting of legally released recordings (provided for in article 49 of Law 2121/1993). Such remuneration is payable only to CMOs.

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