A Düsseldorf court will rule in mid-November on a patent dispute between Daimler and Nokia, in a case which has raised major antitrust questions over patent licensing.
At a hearing in September, Judge Sabine Klepsch of the Düsseldorf Regional Court said the court was considering referring the dispute to the Court of Justice of the European Union (CJEU).
The court said it would issue its decision on November 12. The antitrust issues at play concern whether standard-essential patent (SEP) owners must agree to license their IP to auto suppliers.
SEP owners, such as Nokia, favour a system whereby they license to end-level manufacturers such as Daimler as it produces a greater return on investment.
Daimler has argued that Nokia’s refusal to make its SEPs available to the carmaker’s suppliers violates the Finnish telecoms company’s licensing obligations.
SEP owners must agree to license their patents on fair, reasonable, and non-discriminatory terms.
“We have made fair and reasonable offers to Daimler and their tier-one suppliers but both repeatedly refused to agree a licence.”
Germany’s competition regulator has argued that the issue should be referred to the EU’s top court. Klepsch indicated at the hearing that the court was considering whether to make such a referral.
The judge also suggested that the court was inclined to favour Daimler’s position on component-level licensing, but no final decision has yet been made.
A Daimler spokesperson told WIPR that the carmaker would appeal should the court side with Nokia.
“We do not anticipate any stoppage of production or sales,” the spokesperson added.
A Nokia spokesperson said: “We have made fair and reasonable offers to Daimler and their tier-one suppliers but both repeatedly refused to agree a licence and continue to use our inventions without authorisation and compensation.”
“We encourage them to act responsibly and agree a licence. There is more to gain if we work together to bring innovation to consumers rather than fight in the courts,” the Nokia spokesperson added.
Image: Shutterstock.com / KieferPix
A Shanghai court has handed down prison sentences for up to six years for nine individuals found guilty of distributing imitation Lego toys.
According to state-run media outlet Xinhua, the “chief culprit” received a sentence of six years and a fine of RMB 90 million yuan ($13.2 million) for copyright infringement.
Eight other defendants were jailed for terms ranging from three to four-and-a-half years, following sentencing at the Third Intermediate People’s Court of Shanghai.
The toys in question were sold under the controversial Lepin brand, which has been the target of litigation by Lego in Chinese courts.
According to local media, the nine defendants formed a “criminal gang” which sold the replica Lego bricks online and offline.
The group reportedly earned up to RMB 330 million in illegal revenue until it was broken up by Chinese police in April 2019.
In January, a Guangzhou IP court ordered Lepin to pay Lego RMB 4.7 million, after finding that the Chinese company infringed the Danish toymaker’s IP.
“We had limited success with copyright actions in the past, but the law and understanding in China has really started to grow.”
Lego won an initial victory against the local company in November 2018, with all infringement findings being upheld on appeal by the Guangzhou court.
At the time, Lego said the decision marked a “significant legal victory to combat against imitators”.
Lego’s general counsel for Asia-Pacific Robin Smith spoke in August at the Intellectual Property Office of Singapore’s virtual IP Week event about the company’s efforts to fight copycat and imitator products during the COVID-19 pandemic.
Smith said the main challenges for Lego in Asia had to do with copyright infringement, rather than trademark-infringing counterfeits.
“In the case of copycats, infringers will take elements of our sets,” Smith said, continuing: “They may copy the box almost exactly but their logo will be on it, which is a case of copyright infringement. Customs officials and government officials haven’t had as much experience with that.
“We had limited success with copyright actions in the past, but the law and understanding in China has really started to grow,” she added.
Image: Shutterstock.com / 3d_kot
Litigants should not be liable for submitting copyright-protected material in evidence to a court, an adviser to the EU’s top court has said.
The opinion was issued in September by Gerard Hogan, an advocate general (AG) of the Court of Justice of the European Union (CJEU).
AGs’ opinions are not binding on the court, although are considered influential in shaping the CJEU’s final decisions.
The opinion came as part of a copyright dispute between two individuals, listed in court as ‘BY’ and ‘CX’.
In a prior dispute before civil courts in Sweden, CX submitted a page of text and a photograph from BY’s website as evidence.
BY then claimed that he owned the copyright for the photograph, and asked that CX be ordered to pay damages for infringing his IP.
Sweden’s Patent and Commercial Court asked the CJEU to rule on whether CX’s submitting the photo to the court constituted a “communication to the public” under EU copyright law.
This is a key provision which gives copyright owners the exclusive right to determine whether, and how, their work is communicated to the public.
“The communication would instead be aimed at a clearly defined and limited or closed group of people who exercise their functions in the public interest.”
In his opinion, Hogan said he did not think CX’s use of the photograph constituted a communication to the public, because court officials are constrained by how they can use the material.
“In particular, they would not be entitled to treat the copyrighted material as being free from copyright protection,” Hogan wrote.
According to Hogan, to qualify as a communication to the public, the act must be aimed at an “indeterminate number of potential recipients”.
Even if a litigant such as CX communicated the work to a large number of people, such as the court’s judicial staff, this would not qualify.
“The communication would instead be aimed at a clearly defined and limited or closed group of people who exercise their functions in the public interest,” the AG wrote.
“In my view, the communication of material protected by copyright to a court as evidence in the context of judicial proceedings does not, in principle, undermine the exclusive rights of the copyright holder of that material by, for example, depriving the copyright holder of the opportunity to claim an appropriate reward for the use of his or her work,” he explained.
Image: Shutterstock.com / Fer Gregory
Switzerland, Sweden, the US, the UK and Netherlands have topped the World Intellectual Property Organisation (WIPO)’s latest global innovation rankings, but the index revealed that COVID-19 is expected to exert acute pressure on innovation funding worldwide.
The report, “Global Innovation Index 2020: Who will finance innovation?”, which ranks the global innovation trends and performances of 131 economies, revealed that the funding of innovative ventures is drying up, as venture capital deals sharply decline across North America, Asia, and Europe.
WIPO director general Francis Gurry said: “The rapid, worldwide spread of the coronavirus requires fresh thinking to ensure a shared victory over this quintessential global challenge.”
He added: “Even as we all grapple with the immediate human and economic effects of the COVID-19 pandemic, governments need to ensure that rescue packages are future-oriented and support the individuals, research institutes, companies and others with innovative and collaborative new ideas for the post-COVID era. Innovations equal solutions.”
According to the index, Switzerland remains the world’s leader in innovation for the 10th consecutive year, while Sweden and the US have retained their second and third places from 2019, respectively. Sixteen of the leaders in the top 25 of the index’s rankings are European countries, with seven of them in the top 10.
The UK reached number four on the rankings, up from its fifth position last year.
The UK Intellectual Property Office’s CEO Tim Moss said: “It is wonderful to see the UK receive recognition for its strengths as an innovative place to be. The timing is particularly relevant, as innovation is a fundamental part of driving the economic recovery of the UK and countries across the globe.
“Intellectual property, as a foundation of innovation, has a major part to play and is more important than ever.”
“Intellectual property, as a foundation of innovation, has a major part to play and is more important than ever.”
While high income countries continue to dominate the rankings, Asian economies have advanced considerably in innovation over the years, with the Republic of Korea joining the top 10 for the first time (at number 10), alongside one other Asian economy, Singapore (ranked number 8).
Over the years, Asian economies have advanced considerably in innovation, with China (number 14), Malaysia (number 33), Vietnam (number 42), and the Philippines (number 50) all now in the top 50.
The report revealed that the COVID-19 crisis hit the innovation landscape at a time when innovation was flourishing. In 2018, research and development (R&D) spending grew by 5.2%, after rebounding strongly from the financial crisis of 2008–2009.
Insead Business School’s executive director for global indices Bruno Lanvin called for international openness and collaboration on innovation.
He said: “Faced with unprecedented challenges, whether sanitary, environmental, economic or social, the world needs to combine efforts and resources to ensure the continuous financing of innovation.”
The impact of the pandemic on science and innovation systems will take time to unfold, but there are positive signs of increased international collaboration in science, the report said, although WIPO said the disruption of major research projects remains a key concern.
The index is co-authored by Insead, Cornell University and WIPO.
Image: Shutterstock.com / Poring Studio
In a victory for the Reserve Bank of Australia, an Australian federal court blocked a US blockchain company Ripple from using a trademark for advertising its payments platform in the country.
The New Payments Platform Australia (NPPA), a joint venture between the Reserve Bank of Australia and 13 domestic banks, sued Ripple on August 20 at the Federal Court of Australia for infringing the trademark ‘PayID’.
The NPPA processes more than one million payments a week in Australia under the brand name ‘Pay ID’, which it registered in March 2017. Ripple, which provides the XRP cryptocurrency, launched its payments service, also called ‘Pay ID’, in Australia in June.
According to the filing, the NPPA alleged that the US company copied its trademark to offer closely related services in Australia.
“Ripple’s service is clearly offered under a mark that is substantially identical with or deceptively similar to the NPPA PayID registered trademark and in relation to the same or similar services,” said NPPA in its lawsuit.
The banks, which include ANZ, Westpac and NAB, said that the disputed actions “constitute misleading and deceptive behaviour”, under Australian Consumer Law and the Australian Securities and Investment Commissions Act.
“Ripple’s service is clearly offered under a mark that is substantially identical with or deceptively similar to the NPPA PayID.”
The NPPA said the service could “irrevocably damage” its brand, and alleged that Ripple Lab’s mark may also be used to facilitate illegal activities “such as money laundering, terrorism financing and human rights abuse”.
Ripple provisionally agreed to halt its online payments service from Australia from August 28, in an initial hearing in August.
The Federal Court, however, later agreed with the NPPA that it should additionally impose an order preventing the blockchain company using the trademark.
It stated that: “The use by Ripple of the PayID word as a trademark in Australia has the potential to cause substantial confusion among Australian consumers in the sense that those consumers would assume the underlying service was that provided by NPPA through the NPPA infrastructure.”
It concluded that: “Ripple’s service is not as safe as that provided by the NPPA” and that consumers could be “adversely affected”.
The court then ruled that Ripple should not advertise, promote, or offer to provide electronic payment services in Australia under the trademark ‘PayID’.
Ripple’s XRP digital currency is the world’s third largest, with a market capitalisation of $12.25 billion.
Image: Shutterstock.com / NicoElNino
The US Court of Appeals for the Federal Circuit has concluded that a Massachusetts court was wrong to find that automation company Egenera couldn’t re-add an inventor to its patent after Cisco had the patent invalidated.
In a precedential decision issued in August, the Federal Circuit vacated Cisco’s victory and remanded the suit for further proceedings.
Egenera had accused Cisco of infringing US patent number 7,231,430—which claims a platform for automatically deploying a scalable and reconfigurable virtual network—through its enterprise server systems in a suit filed at the US District Court for the District of Massachusetts in August 2016.
Before claim construction, and alongside an inter partes review proceeding, Egenera petitioned the US Patent and Trademark Office to remove Peter Schulter, one of the 11 listed inventors on the patent, as Egenera had realised that all claim limitations had been conceived before Schulter had started working there. The office removed Schulter in January 2018.
Then, following the Massachusetts court’s claim construction and a trial on inventorship, Egenera asked the district court to add Schulter back to the patent.
Judge Richard Stearns concluded that judicial estoppel prevented Egenera from relisting the inventor and held the ‘430 patent invalid for failing to name all inventors.
Egenera appealed against the decision, challenging the district court’s claim construction and the application of judicial estoppel.
While the Federal Circuit affirmed the lower court’s claim construction, it vacated the invalidity judgment based on judicial estoppel.
“The district court legally erred as to each New Hampshire factor. We therefore hold that the district court abused its discretion by applying judicial estoppel.”
Chief Judge Sharon Prost, on behalf of the court, first turned to whether Egenera could correct inventorship, absent judicial estoppel. Federal Circuit precedent recognises that a patent cannot be invalidated if inventorship can be corrected instead.
Under 35 USC section 256(b), the “error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section”.
In a footnote, the district court had declared that Schulter’s removal by petition was therefore “a considered act that is unlikely to qualify as an omission ‘through error’”.
But the Federal Circuit concluded that section 256 doesn’t exclude “considered acts” or even “deceptive intention” from the meaning of “error”, and that the exclusion of Schulter fell under the section.
Next, the court turned to judicial estoppel, finding that the case had not met the New Hampshire v Maine criteria for the equitable doctrine to apply.
Under New Hampshire, the court must examine whether a party’s earlier and later positions are “clearly inconsistent”; whether the party “succeeded in persuading a court to accept” the earlier position; and whether the party would “derive an unfair advantage or impose an unfair detriment” on the other side if not estopped.
“The district court legally erred as to each New Hampshire factor. We therefore hold that the district court abused its discretion by applying judicial estoppel,” said Prost, before remanding the case.
Image: Shutterstock.com / PlusONE
The Sparks Group, allegedly one of the biggest online piracy networks in the world, has been taken down in a coordinated action between US authorities and their counterparts in 18 countries around the world, with Europol and Eurojust support.
The operation—which is mainly responsible for pirating films and hosting illegal digital content—was dismantled in August. Dozens of servers were taken down in North America, Europe and Asia and several of the main suspects were arrested.
The following day, US prosecutors unsealed indictments against three people reportedly involved in the Sparks Group, charging each with copyright infringement.
Acting US attorney Audrey Strauss said: “The group allegedly circumvented copyright protections on nearly every movie released by major production studios, as well as television shows, and distributed them by way of a worldwide network of servers.”
One of the members of the alleged criminal network was arrested in Cyprus and another suspect in the US. The US is seeking extradition from Cyprus for the suspect to stand trial in the US.
“The Sparks Group has caused tens of millions of US dollars in losses to film production studios, mainly to the US movie, television, and supporting industries, from the copyright infringement.”
According to Europol, the piracy group (which has been under investigation since September 2016) has successfully reproduced and disseminated hundreds of movies and TV programmes prior to their retail release date. This includes nearly every movie released by major production studios in the US.
“The Sparks Group has caused tens of millions of US dollars in losses to film production studios, mainly to the US movie, television, and supporting industries, from the copyright infringement,” it added.
Allegedly, the network fraudulently obtained copyright-protected DVDs and Blu-Ray discs from wholesale distributors in advance of their retail release date. The group then compromised the copyright protections on the discs to reproduce and upload the content publicly to online servers.
Peter Fitzhugh, special agent-in-charge of the New York field office of Homeland Security Investigations, added: “This investigation shows—in high definition—that despite the online platform and international nature of this scheme, we are committed to stop those who use the cyber world for illicit gain.”
Image: Shutterstock.com / donfiore
The UK Supreme Court has ruled that English courts have the jurisdiction to determine fair, reasonable, and non-discriminatory (FRAND) rates for global patent licences.
The highly-anticipated ruling came as the country’s top court dismissed appeals from Chinese technology companies Huawei and ZTE, in a win for standard-essential patent (SEP) owners Conversant Wireless and Unwired Planet.
The judgment dealt with one appeal from Huawei against a victory for Unwired Planet, and another from Huawei and ZTE against Conversant.
According to the Supreme Court, a lower appeals court’s ruling that English courts can set FRAND licences was in line with commercial norms in patent licensing.
The Supreme Court also affirmed English courts’ abilities to issue a ‘FRAND injunction’, if parties do not comply with the licensing rates set down by the court.
In his 2017 decision, Justice Colin Birss, then of the English High Court, issued an injunction against Huawei, which would be lifted if it entered into a global licence with Unwired Planet on the FRAND rates he had calculated.
Huawei challenged an English court’s right to set the global FRAND licence, setting up a dispute which is expected to have a major impact on the UK as a destination for FRAND litigation.
Birss’ approach received the backing of the English Court of Appeal, and now, the Supreme Court.
“If the judgments of the English courts had purported to rule on the validity or infringement of a foreign patent, that would indeed be beyond their jurisdiction. But that is not what Birss J and the Court of Appeal have done,” the Supreme Court decision read.
“We are obviously extremely pleased at the decision of the UK Supreme Court on a topic fundamental to how IP is licensed in the telecoms sector.”
ZTE argued that a Chinese court would be the appropriate venue to set the terms of any global FRAND licence.
But according to the Supreme Court, a Chinese court taking on the job of setting a global FRAND was no more than a “speculative possibility”.
EIP Legal, which represented Unwired Planet and Conversant, hailed the judgment as a “landmark victory” for SEP owners.
The firm added that the UK would now become one of the “leading global jurisdictions for the resolution of such disputes”.
“The most immediate effect will be that Huawei, the world’s largest telecoms equipment manufacturer, will need to enter into the licence with Unwired Planet which the UK Patents Court previously decided was fair and reasonable; should it fail to do so then it will risk being subject to an injunction restraining its further activities in the UK,” the firm’s statement said.
A spokesperson for Unwired Planet welcomed the decision, which it said affirmed the company’s belief that “global licensing is the most efficient and effective solution for licensors and licensees”.
Conversant CEO Boris Teksler said: “We are obviously extremely pleased at the decision of the UK Supreme Court on a topic fundamental to how IP is licensed in the telecoms sector.
“The decision reflects the court’s deep understanding of the issues that affect our sector and encourages us to drive this industry forward.”
Legal representatives for Huawei declined to comment when contacted.
Image: Shutterstock.com / Victor Moussa
The US Federal Trade Commission (FTC) has been urged to seek an en banc rehearing of its unsuccessful antitrust case against Qualcomm in a letter signed by a group of companies and trade organisations, including Ford Motor and Honda Motor.
The letter argued that the US Court of Appeals for the Ninth Circuit’s decision on August 11 endangers “domestic competitiveness” and threatens to “weaken the ability of the FTC to protect consumers through future enforcement actions”.
In 2017, the FTC sued Qualcomm, accusing the company of using anti-competitive tactics to maintain its monopoly for chips used in phones and other consumer products. A federal district court agreed in May, but the Ninth Circuit overturned the landmark ruling.
The decision provided legal backing to Qualcomm’s controversial “no licence, no chips” policy, which the FTC argued was tantamount to blocking competitors out of the market.
Qualcomm licenses its standard-essential portfolios (SEPs) exclusively to end-product manufacturers of smartphones and smart cars, which license telecommunications standards such as 4G.
“Again, for the benefit of standards, innovation, and consumers, we urge the FTC to see this matter through.”
In the case of rival chipmakers, Qualcomm refuses to license its SEPs unless the licensees agree not to sell to unlicensed end-product manufacturers.
The letter argued that, “the panel opinion misapplies competition law to the facts of the case, was particularly misguided in asserting that Qualcomm’s breach of its FRAND commitments did not impair rivals, controverts existing Ninth Circuit precedent, and undermines the critical role standards play in facilitating competition and innovation”.
It further stated that if the decision is allowed to stand, it will encourage “the abuse of market power” and could “embolden foreign entities to refuse to license their SEPs to competitors” in the US.
The letter concluded: “Again, for the benefit of standards, innovation, and consumers, we urge the FTC to see this matter through, including by seeking en banc rehearing of the Ninth Circuit panel’s reversal of the district court’s decision and vacating of the district court’s remedies.”
The FTC has until September 25 to request a rehearing by the full Ninth Circuit.
Image: Shutterstock.com / Mikbiz
The US National Academy of Television Arts and Sciences (NATAS) has taken an online platform to court, after discovering that its Emmy award was being used to promote an award show honouring countries that refused to lock down during the pandemic.
In September, NATAS and the Academy of Television Arts & Sciences—the Academies which confer the Emmy award in recognition of excellence and achievement in TV programming—accused Multimedia System Design (doing business as Crowdsource the Truth) of infringing its trademark and copyright rights.
In the suit, filed at the US District Court for the Southern District of New York, the Academies described Crowdsource the Truth as a platform for conspiracy theories.
Crowdsource the Truth had allegedly reworked the Emmy award, a gold statuette moulded in the shape of a winged figure holding an atom, to feature an image of a SARS-CoV-2 virus instead of the atom.
Then, the platform published the image to promote its Crony Awards which, according to the complaint, honoured countries that refused to lock down and/or minimised the COVID-19 pandemic.
“Defendant’s use of the infringing image for its ‘Crony Awards’ impermissibly associated the famous Emmy statuette and the Emmy awards with dangerous misinformation about the COVID-19 pandemic,” added the complaint.
“The Academies added that Goodman claimed it had ‘no legitimate claim of copyright infringement’ because the infringing image was ‘parody’.”
In response, the Academies served a Digital Millennium Copyright Act (DMCA) copyright takedown notice, asking YouTube to remove the platform’s infringement.
After YouTube removed the video, the principal of Crowdsource the Truth Jason Goodman emailed Adam Sharp, president and CEO of NATAS, objecting to the takedown, according to the suit. The Academies added that Goodman claimed it had “no legitimate claim of copyright infringement” because the infringing image was “parody”.
The dispute then moved to Twitter, with the defendant using @csthetruth to accuse Sharp of being a “political operative” and abusing the DMCA takedown process to stifle “competition from real news”.
Crowdsource the Truth has reportedly posted videos that spread falsehoods about Sharp and his father (journalist Roger Sharp), alleging that their professional careers were the products of “nepotism, corruption, and CIA-led propaganda campaigns”.
The claim added: “The Television Academies tried to resolve this matter without litigation, but once defendant filed the DMCA counter notification and refused to withdraw it, the Television Academies had no choice but to file this lawsuit to enforce their rights under the DMCA and otherwise seek relief through this action.”
NATAS noted that, despite the harm caused by the defendant, it is seeking only injunctive relief.
Image: Shutterstock.com / tomertu
Myanmar’s IP office will open for business in October as part of sweeping trademark reforms, the country’s government has announced.
The country’s government confirmed that the Myanmar Department of Intellectual Property’s (MDIP) “soft opening period” will commence on October 1.
The MDIP was established under reforms to the south-east Asian country’s patent and trademark laws.
Owners of existing trademark rights in Myanmar will need to re-file with the MDIP from October 1.
Applicants will also be able to file an unregistered mark, currently in use in Myanmar, during the soft opening period.
During this initial phase, the MDIP is not taking applications for entirely new trademarks. According to law firm Tilleke & Gibbins, which has offices in Myanmar, new filings will be available after the MDIP’s still-unscheduled “grand opening”.
“We are expecting (and already seeing) a high volume of filing and refiling instructions from brand owners who are eager to protect their trademark rights under the new law.”
“Now that the Myanmar government has announced the soft opening period, owners of existing trademarks registered under the old system—as well as unregistered marks already used in Myanmar—can ensure that their trademark protection remains uninterrupted throughout the changeover to the new law,” said Yuwadee Thean-ngarm, director of Tilleke & Gibbins’ Myanmar office.
“During the transition, we are expecting (and already seeing) a high volume of filing and refiling instructions from brand owners who are eager to protect their trademark rights under the new law,” she added.
Sher Hann Chua, a consultant at Tilleke & Gibbins, said brand owners would benefit from a “modern law that is in line with today’s global standards and practices”.
“It is also important to note that the Trademark Law is only one of a suite of IP legislation that was passed last year, so this announcement of the soft opening period represents an early but important step in ushering in a comprehensive new legal regime for IP in Myanmar,” she said.
Image: Shutterstock.com / Tran Qui Thinh
A copyright dispute over rival knitting tutorials has ended up in Japanese court, in a “rare” dispute between YouTube content creators, according to local media reports.
The plaintiff, a woman from Toyama Prefecture, claims the defendants abused YouTube’s provisions against copyright infringement and wants ¥1.1 million ($10,360) in compensation, according to Japanese newspaper The Mainichi.
YouTube automatically removed two of the plaintiff’s videos on crocheting after receiving a complaint from the defendants in February, the paper adds.
The plaintiff emailed defendants saying she was “completely unaware of having imitated another person’s work” and asked for more information about the alleged infringement, after her videos were taken down.
But, according to her complaint, the defendants told her to contact YouTube instead. Yukihide Kato, a Japanese copyright lawyer representing the plaintiff, said there had not to date been any court judgments that recognised copyright over knitted works or knitting methods.
“The system of removing videos automatically is also problematic,” The Mainichi quotes Kato as saying.
“YouTube has previously faced scrutiny for its policies protecting against copyright infringement.”
YouTube has previously faced scrutiny for its policies protecting against copyright infringement. The platform updated its systems last July, having been under pressure to both better protect creators’ rights and ward off frivolous complaints.
YouTube said it would evaluate the accuracy of timestamps cited in copyright complaints, and that copyright owners who repeatedly fail to provide accurate data will have their access to the claiming system revoked.
But the new rules appear mostly designed to deal with music-based complaints, with YouTube promising better editing tools to mute infringing songs.
An adviser to the EU’s top court said in July that YouTube was also not liable for infringing videos uploaded to the platform.
Image: Shutterstock.com / Rittis