The Düsseldorf Regional Court has referred a standard-essential patent (SEP) licensing dispute between Nokia and Daimler to the Court of Justice of the European Union (CJEU).
The referral could clarify which companies in the production chain should take a fair, reasonable, and non-discriminatory (FRAND) licence for SEPs.
Major telecoms SEP owner Nokia has sued Daimler for infringing its IP and refusing to take a FRAND licence to technology used in cars fitted with communications technology.
Daimler has argued that SEPs should be licensed to suppliers, rather than the manufacturers of end-products.
Germany’s competition regulator, the Federal Cartel Office, has previously asked German courts to pass the contentious issue to the CJEU.
A Mannheim court declined to do so on a previous occasion, also in a dispute between Nokia and Daimler. On that occasion, the Mannheim court ruled in favour of Nokia and said Daimler had not been a willing licensee in negotiations.
But, as expected, Judge Sabine Klepsch of the Düsseldorf Regional Court confirmed on November 26 that it had made a referral to the EU’s top court.
The CJEU has been asked to clarify whether there is an “obligation for priority licensing of suppliers”, as well as the obligations of patent owners and implementers in patent licensing negotiations.
The court has stayed proceedings between Nokia and Daimler, including Nokia’s request for an injunction against the automaker. A Nokia spokesperson said the company would “consider our options” in light of the decision.
“The CJEU has been asked to clarify whether there is an ‘obligation for priority licensing of suppliers’.”
“Two German courts have already concluded that Daimler is using our inventions without authorisation, that Nokia has acted correctly, and that Daimler and its suppliers have been unwilling to agree licences,” a Nokia spokesperson said.
“These judgments remain unimpacted by today’s decision. The questions raised by the court in the Düsseldorf—in particular, whether Daimler or its suppliers should take the licence—are purely academic given that fair and reasonable licensing offers were made to both before legal action was initiated,” they added.
A Daimler spokesperson said the company welcomed the referral. “This allows the questions on the licensing obligation of SEPs to be answered fundamentally and throughout Europe,” they said.
The spokesperson added: “We believe that a company cannot be prohibited from using such patents if its suppliers are willing to pay a corresponding licence. We will have this question clarified in the course of the appeal proceeding.”
In October, the European Commission published its IP Action Plan, in which it stressed the need to “reduce friction” and bring down the amount of litigation over SEPs in the auto sector.
The EU executive indicated it would take a sector-by-sector approach to dealing with the issue and try to incentivise out-of-court settlement.
Image: Shutterstock.com / Konektus Photo
Amazon has expanded its IP Accelerator programme to Europe which, the company said, will make it easier for brands to access legal support and combat counterfeit goods.
IP Accelerator, which is available to any brand selling on Amazon, connects companies to participating law firms for advice on registering their trademarks and protecting their brands.
The US-based e-commerce company launched the service in October 2019 allowing businesses to take advantage of pre-negotiated rates with legal professionals.
Amazon announced on November 25 that the programme is now available in France, Germany, Italy, Spain, Netherlands and the UK. The company claims it will help small and medium-sized enterprises (SMEs) help plug the gap on IP protection, as larger firms are much more active in registering and protecting their rights.
The programme is just one of several IP and anti-counterfeiting initiatives that Amazon has pursued in recent years, amid criticism over the prevalence of fake goods on its platform.
Amazon acknowledged, for the first time, the risk of counterfeits in its annual report in February 2019. “To the extent any of this occurs, it could harm our business or damage our reputation and we could face civil or criminal liability for unlawful activities by our sellers,” the report to investors stated.
The company has come into conflict with the administration of US President Donald Trump, which named Amazon on its “Notorious Markets” list in April. Amazon responded with claims that the Trump administration had a “personal vendetta” against the e-commerce company. In October, Trump announced he had directed the Department of Homeland Security to target law enforcement efforts at e-commerce platforms involved in counterfeit trafficking.
“Saugier said he hoped the programme would make ‘the IP registration process as easy and as affordable as possible’.”
Amazon’s efforts to improve its reputation on IP have included the Project Zero initiative, which it launched in 2019 and has since expanded to 17 countries.
The company also announced that it would partner with the Department of Homeland Security to monitor and inspect counterfeit goods entering the US supply chain.
Commenting on the IP Accelerator announcement, Amazon’s vice president for EU seller services, Francois Saugier, said: “We know from our conversations with small business owners that there is often confusion about why IP rights are important and how sellers can secure them.”
Saugier said he hoped the programme would make “the IP registration process as easy and as affordable as possible for entrepreneurs in the early days of their businesses”.
UK-based Stobbs IP is one of the law firms participating in the IP Accelerator project. Founder Julius Stobbs said the programme “elevates the importance of IP and pushes smaller companies to do the right thing: obtaining and respecting IP rights”.
Image: Shutterstock.com / Frederic Legrand - COMEO
The German Bundestag has approved a ratification bill on the Unified Patent Court (UPC) Agreement.
The approval, on November 26, comes after a tumultuous year for Germany’s involvement in the UPC. The German government submitted new draft legislation to ratify the UPC Agreement in the summer, after the country’s Federal Constitutional Court annulled the ratification earlier in March.
Germany’s Federal Constitutional Court had upheld a constitutional complaint filed against the country’s UPC legislation, concluding that the act of approval for the agreement was null and void.
The court’s March decision looked as though it would derail the UPC project, particularly as it came one month after the UK said it would not be seeking involvement.
Then, the German government submitted a draft bill on the agreement, which it said it would look to obtain the required two-thirds majority the court required.
Germany’s minister of justice and consumer protection Christine Lambrecht said in June: “I will continue to work to ensure that we can provide the European innovative industry with a single European patent with a European patent court.”
The bill was approved by 570 Bundestag members, achieving approval of more than two-thirds of all the parliament’s members. It was this requirement that was not met for the previous bill, leading to the successful constitutional complaint.
Welcoming the ratification, António Campinos, president of the European Patent Office, said: “Today's approval by the Bundestag brings us an important step closer to the much-anticipated implementation of the unitary patent package.
“Once that happens, European inventors will finally be able benefit from the unitary patent, giving them uniform patent protection and, what's more, a unified system for litigation in all participating EU member states.
“Unitary patents will make it possible for patent owners to get uniform patent protection in up to 25 EU member states.”
“This will make Europe even more attractive for innovation and investors, and help with economic recovery in light of the COVID-19 crisis.”
The agreement allows for the UPC, an international court with jurisdiction for patents granted by the EPO.
Unitary patents will make it possible for patent owners to get uniform patent protection in up to 25 EU member states by submitting a single request to the EPO.
According to a statement by the EPO, the UPC will supplement and strengthen the existing centralised European patent granting system, offering users a cost-effective option for patent protection and dispute settlement across Europe.
“This specialised court will make the Europe-wide enforcement of patents a reality, offer greater legal certainty and reduce litigation costs,” said the EPO.
For unitary patents to become available, the UPC Agreement has to enter into force, which requires the ratification by 13 of the 25 participating EU member states, including France and Italy.
In Germany, the UPC bill will now be submitted to the parliamentary upper house (Bundesrat) for approval in late 2020. Once the German ratification procedure is complete, the final preparatory steps could be taken to set up the UPC next year, which could then start its work in 2022, according to the EPO.
However, there remains the risk of another constitutional complaint preventing or delaying the legislation coming into force. According to law firm Bristows, the Foundation for a Free Information Infrastructure, a European alliance that campaigns for free and competitive software creation, has already prepared a constitutional complaint.
Image: Shutterstock.com / Hadrian
A Chinese company, Shuangshan Food (Xiamen), has been accused of selling counterfeit Starbucks coffee, in a suit which has made the highest ever compensation demand in a consumer civil public interest litigation in China.
On November 22, the Jiangsu Provincial Consumer Protection Committee announced it had filed a public interest lawsuit against the company. The suit has become the first consumer civil punitive damages public interest litigation in the east Chinese province and has demanded a record RMB 21 million ($3.2 million) in compensation.
In February 2018, the Wuxi City Market Supervision Department received a tipoff suggesting that counterfeit ‘Starbucks’ brand coffee was being sold.
Following an investigation by the department, it found that the coffee trademarked as a ‘Starbucks’ brand sold by Shuangshan was counterfeit.
Consequently, the department notified the Wuxi public security department, which later verified that Starbucks had not authorised the coffee sold by Shuangshan.
The Xinwu District Procuratorate prosecuted Shuangshan for the sale of the counterfeit coffee and in December 2019, five people were convicted in the case’s criminal trial and sentenced to up to five years in prison by a Wuxi court.
At the same time, the procuratorate recommended that the Jiangsu Provincial Consumer Protection Committee file a consumer civil public interest lawsuit. The public interest litigation announced in November is an additional penalty, according to the suit.
“Five people were convicted in the case’s criminal trial and sentenced to up to five years in prison.”
Shuangshan infringed IP “under the premise of knowing that the purchased products were counterfeit” and proceeded to forge “customs declaration documents and false authorisation documents, and sold the products through salesperson sales and logistics delivery methods,” the suit claimed.
The company went on to distribute the coffee to more than 50 merchants in 18 provinces across the country, generating sales of more than RMB 7 million, it added. “The fake act constituted a ‘fraud’ and claimed a ‘punitive’ compensation of three times the amount involved,” said the suit.
The question of how to distribute any funds gained from the lawsuit has yet to be decided. “After the indemnity public interest litigation is initiated, how to implement and handle the compensation fund supported by the judgment, and the establishment of supporting public welfare fund accounts are issues that need to be resolved,” the suit added.
In 2019, China amended two of its IP laws in a bid to enhance trademark and trade secret protection in the country. At the time, China’s state-run press agency Xinhua said the country revised the trademark law so that “improper behaviour” involving trademark registration would be tackled and stronger penalties would be issued.
“Trademark registration that is not for the purpose of use for business operations will be rejected,” the amendment read.
Image: Shutterstock.com / Tooykrub
Coca-Cola has lost its bid to avoid paying a substantial portion of a $3.4 billion tax bill levied by the US Inland Revenue Service (IRS), at the US Tax Court on November 18.
The case centred on a dispute around transfer pricing—how the company valued its IP with its affiliate companies operating in Brazil, Chile, Costa Rica, Egypt, Ireland, Mexico, and Swaziland.
According to the ruling, Coca-Cola enabled these companies to manufacture and sell “concentrate”, the ingredient used in its world-famous beverages, and licensed them to use its IP, “including trademarks, brand names, logos, patents, secret formulas, and proprietary manufacturing processes”.
During 2007–2009, the companies paid Coca-Cola dividends of about $1.8 billion to meet their royalty obligations, according to the stipulations outlined by a 1996 agreement.
After examining Coca-Cola’s returns for this period, the IRS determined that the companies paid insufficient compensation for the rights to use Coca-Cola’s IP because this agreement did not apply a “transfer pricing” methodology.
The IRS found that Coca-Cola’s affiliates, which “functioned essentially as contract manufacturers”, retained most of the profits generated by sales of “concentrate” to “foreign bottlers”.
Consequently, the agency concluded that a reallocation of income was necessary to reflect more clearly the income of Coca-Cola and its affiliates.
Subsequently, the agency used a new method to reallocate profits, particularly from the Irish and Brazilian affiliates, increasing Coca-Cola’s taxable income for 2007–2009 by more than $9 billion. The Irish and Brazilian companies accounted for roughly 85% of the disputed income adjustments.
Coca-Cola opposed this decision, holding that the reallocations were “arbitrary and capricious”, and contended that the IRS acted arbitrarily by abandoning a method that had been used in five prior audit cycles spanning a decade.
“The agency used a new method to reallocate profits, particularly from the Irish and Brazilian affiliates.”
The company further argued that the IRS erred in viewing the status of independent Coca-Cola bottlers as comparable to its affiliate companies in foreign countries because the latter own “immensely valuable” intangible assets “that do not appear on their balance sheets or in any written contract”.
The bottlers are “marketing-light” businesses that operate at a different level of the market, said Coca-Cola.
It argued that its affiliate companies owned local rights to its valuable brands and should enjoy “supranormal returns” as “master franchisees” or “long-term licensees”.
The court reasoned that in order to show that the commissioner has reached an unreasonable result in cases “involving unique and extremely valuable intangible property”, the taxpayer typically needs to show that the commissioner applied an “unreasonable methodology”.
However, the court found that Coca-Cola had failed to do this and concluded that the commissioner did not abuse his discretion by using his chosen method to reallocate income between Coca-Cola and its affiliates.
It ruled that the “analysis was appropriate given the nature of the assets owned and the activities performed by the controlled taxpayers”.
The court also found that Coca-Cola made a valid, timely choice to use an “offset treatment” regarding dividends paid by foreign manufacturers, and ruled that the IRS’s reallocations must be reduced by $1.8 billion.
The court confirmed it will determine the amount of the final tax bill at a later date.
Image: Shutterstock.com / Billion Photos
Technology company Zapier has settled its suit with videoconferencing platform Zoom, which it accused of infringing its ‘Zap’ trademark after Zoom launched a new app function in October.
On November 12, Zapier voluntarily dismissed “with prejudice” its suit against Zoom Video Communications at the US District Court for the Northern District of California.
According to the filing, Zoom did not serve an answer or a motion for summary judgment in the proceeding and Zapier has “not filed a motion for class certification”.
Zapier specialises in online automation tools that connect and integrate third-party internet apps, and its automated workflows are known as ‘Zap’ or ‘Zaps’.
The technology company sued Zoom Video Communications after it launched ‘Zapps’, a function for integrating third-party apps.
In the complaint, Zapier claimed that it had worked with Zoom in 2015 to provide it with third-party apps and alleged that Zoom had created consumer confusion with the launch of its ‘Zapps’ function.
It said that hundreds of tweets and comments have been posted, questioning how Zoom could use Zapier’s product name and expressing confusion at Zoom’s use of ‘Zapps’.
Zapier claimed: “Instead of calling its new integration of third-party apps ‘Apps in Zoom’ or the ‘Zoom App Marketplace’ (which would be industry standard), Zoom is blatantly ripping off the decade of goodwill and premier reputation built by Zapier for its Zaps by using the phonetically identical and alternately spelled term ‘Zapps’.”
“Zapier claimed that Zoom has no goodwill, history, nor viable reason for using the term ‘Zapps’.”
Zapier claimed: “Instead of calling its new integration of third-party apps ‘Apps in Zoom’ or the ‘Zoom App Marketplace’ (which would be industry standard), Zoom is blatantly ripping off the decade of goodwill and premier reputation built by Zapier for its Zaps by using the phonetically identical and alternately spelled term ‘Zapps’.”
Zapier claimed that Zoom has no goodwill, history, nor viable reason for using the term ‘Zapps’, “other than to illegally extract value from Zapier’s trademarks, reputation, and goodwill”.
It added: “While Zoom starting a new business is, of course, permissible, it is illegal for Zoom to misappropriate Zapier’s trademarks and unfairly compete by infringing on Zapier’s well-established usage of ‘Zap’ and ‘Zaps’ through naming its new business the aurally identical ‘Zapp’,” said the suit.
During the height of the COVID-19 pandemic, the Financial Times reported that the number of medium and larger companies using Zoom was up more than threefold from a year before, while revenue soared by 169%.
Zoom went on to have one of the most successful initial public offerings of the year, with its share price rising 72% on its first day of trading alone, according to Forbes.
Image: Shutterstock.com / Kate Kultsevych
The company holding IP rights relating to racing driver Lewis Hamilton has failed in its attempt to obtain a declaration of invalidity of a trademark filed by watchmaker Hamilton.
The European Union Intellectual Property Office (EUIPO) rejected the application by 44IP, representing Hamilton, for a declaration of invalidity against all the goods covered by the trademark ‘Hamilton’.
Watchmaker Hamilton, which is part of the Swatch Group, had applied for the trademark in 2014, covering goods in classes 9 and 14, including watches, jewellery and DVDs. The trademark was registered in 2015. In 2017, 44IP opposed the mark, citing absolute grounds for invalidity, bad faith and public policy concerns.
“It basically argued that the EU trademark proprietor is also the proprietor of the EU trademark number 103,200 registered on June 5, 1998, for the word mark ‘Hamilton’ registered for goods in class 14, which, according to the cancellation applicant, covers a larger scope in comparison to the goods in class 14 of the contested mark,” said the EUIPO.
44IP claimed that the registration of the contested mark constituted an attempt “to extend the grace period for non-use of the earlier registration for the goods covered by the contested mark and therefore, it had been filed in bad faith and it impedes fair competition”.
In late 2019, the EUIPO’s Cancellation Division rejected Lewis Hamilton’s application for a declaration of invalidity in its entirety. Earlier this year, his company filed an appeal against the contested decision.
However, the EUIPO’s Board of Appeal concluded that the appeal was not well-founded.
On 44IP’s argument of bad faith, the board noted that: “Basically, the cancellation applicant explicitly and repeatedly admitted that the earlier registration as well as the contested mark were used by the EU trademark proprietor.”
The board added that Hamilton had provided ample evidence that its trademark was genuinely used for watches.
“The board added that Hamilton had provided ample evidence that its trademark was genuinely used for watches.”
In concluding, the board said that both the contested mark and the earlier registration were genuinely used, and 44IP’s argument that the contested mark is a repetitive filing had “no factual basis from the outset”.
Throughout its opposition, 44IP had also argued that the case should be suspended in light of the pending SkyKick ruling (read more about this decision here). The SkyKick ruling was handed down in January 2020.
“It follows that all grounds for appeal regarding the possible suspension of the present case in view of that preliminary ruling are moot. It is not comprehensible why the statement of grounds filed on June 18, 2020, after the judgment was issued, does not address this point.
“In fact, all the theories on which the cancellation request, and the present appeal, were based have been dismissed by the court,” said the board.
44IP’s other arguments were dismissed and it was ordered to pay €1,000 ($1,182) to Hamilton.
Hamilton had previously brought a trademark opposition against 44IP, over the trademark ‘Lewis Hamilton’. Hamilton opposed this application insofar as it covers wrist watches and jewellery, on the basis of a registration for the trademark ‘Hamilton’.
“We are defending against this opposition and hope and expect that that the decision will go in our client's favour,” said Ian Bartlett, partner at Beck Greener and representative of 44IP.
He added: “After the opposition by Hamilton was received, and even though we thought that its opposition would not succeed, we decided to commence two actions against Hamilton and its trademark registrations for ‘Hamilton’, namely a non-use revocation claim and an invalidation claim. It is the latter of these two which is the subject matter of the recent decision.”
Image: Shutterstock.com / sbonsi
The percentage of black partners has increased by less than 1% since 1991 at elite law firms which pledged at the time to improve racial diversity, according to a new report released by legal analytics company Bodhala.
The report, “Dismantling the Barriers to Racial Diversity in Law Firms”, released on November 11, has revealed that US law firms failed to promote black partners despite publicly pledging to do so nearly 30 years ago by signing The New York City Bar Association’s “Statement of Diversity Principles”.
Bodhala tracked the performance of the 15 law firms which signed the statement that still exist, including Paul, Weiss, Rifkind Wharton & Garrison; Cleary, Gottlieb, Steen & Hamilton; Cahill, Gordon & Reindel; Weil, Gotshal & Manges; Sullivan & Cromwell and Willkie, Farr & Gallagher.
In 1991, out of more than 1,000 equity partners employed by firms in 1991, approximately 20 were black. The survey showed that the percentage of black partners in those firms had increased by less than 1% over the past 30 years.
The report suggests solutions for companies looking to advance black partners and other diversity and inclusion goals, including the re-evaluation of compensation models.
Raj Goyle, CEO and co-founder of Bodhala, said: “Companies around the world have implemented new supplier diversity programmes to promote black businesses. Why can’t we do the same for law firms?”
He added that buyers have considerable leverage to make a meaningful impact on diversity at partnership level and across the ranks within the legal sector.
The report states that “origination credit tracking” is a key way corporate counsel can influence their firms’ diversity. A financial incentive to lawyers who bring in new work, origination credit is determined by firm partners and, according to Bodhala, the process has “historically snubbed minorities”.
“Buyers have considerable leverage to make a meaningful impact on diversity at partnership level.”
Michele Coleman Mayes, vice president, general counsel and secretary at the New York Public Library said: “To make sustainable progress on diversity, equity, and inclusion in the legal profession, it’s critical to address how law firm compensation models have created systemic barriers for underrepresented lawyers.”
She added: “By making their compensation models more transparent and equitable, law firms will foster an environment in which all people of colour, women, and members of the LGBTQ+ community can thrive. It’s past time for companies to use their purchasing power to bring about this much-needed change.”
Earlier this month, some of the UK’s largest law firms joined recruiters by signing a charter, the Recruitment Agency Race Fairness Commitment, which has been developed by diversity recruitment specialist Rare to promote equal access to job opportunities within the legal sector.
By signing, the firms commit to upholding a range of measures. These include ensuring that: candidate pools “at least match the UK ethnic diversity and aspire to the local population if greater”, and that shortlists and speculative introductions “at least match the ethnic diversity of the relevant market”.
According to a report published by Rare in March 2020, “Closing the ethnicity stay gap”, British law firms struggle to retain ethnic minority talent.
The study showed that while 30% to 50% of British trainees in many law firms come from minority ethnic backgrounds, these recruits spend on average 20% less time in post than their white counterparts.
Meanwhile, 84% of lawyers from minority ethnic backgrounds told Rare that they had experienced “implicit racism” at firms where they had worked.
Image: Shutterstock.com / Flamingo Images
Norwegian robotics company AutoStore Technology has filed another lawsuit against Ocado, seeking ownership of some of the British online supermarket’s patents.
In an action before the UK Intellectual Property Office (IPO) announced on November 9, AutoStore claimed that it is the inventor and rightful owner of patents related to the Ocado Smart Platform, the technology underpinning its automated and robotically-operated warehouses.
In October, WIPR reported that AutoStore had filed complaints against Ocado at the US International Trade Commission (ITC), the US District Court for the Eastern District of Virginia and the English High Court.
Earlier in November, the ITC announced that it had begun an investigation into whether Ocado infringed five patents covering automated storage and warehouse robots.
In the latest claim, AutoStore alleged that Ocado’s patent filings included substantial technical information, know-how and materials relating to robotic technology, which AutoStore had provided to Ocado in good faith in a series of interactions.
These interactions allegedly included AutoStore allowing Ocado executives and engineers to inspect an AutoStore system, and making certain software and hardware available to Ocado to enable the supermarket to simulate the operation of an AutoStore system and perform factory testing.
AutoStore also said it had provided training days in the operation of AutoStore’s system.
According to the Norwegian company, Ocado purchased one of its systems in 2012, before copying key features to develop the Ocado Smart Platform.
“AutoStore is seeking an order affirming that it is the true owner of the patents.”
The patents at issue have been filed by Ocado since 2014 and relate to optimising the placement of product within an automated storage/retrieval system, and to certain safety features in such systems for bringing the robots to a halt.
The relevant patents have been granted in the UK in 2018 and 2019, but are still pending patent applications in Europe.
AutoStore is seeking an order affirming that it is the true owner of the patents and for assignment of the patents. It also wants the IPO to declare that none of the Ocado personnel named as inventors within the patents was in fact the inventor or has the right to be named as such.
Karl Johan Lier, CEO of AutoStore, said: “Ocado took advantage of being our customer and having access to AutoStore’s market-leading technology and then attempted to assert ownership over what it had learned from AutoStore by filing its own patents.
“In addition to the action we’ve already taken to protect and assert our existing patents, this action will establish that AutoStore invented these technologies and should therefore be recognised as the rightful owner of Ocado’s corresponding patents.”
Image: Shutterstock.com / Willy Barton
The fate of Kim Dotcom is uncertain after New Zealand’s Supreme Court ruled that the Federal Bureau of Investigation (FBI) can extradite him to the US to face long-standing copyright charges, but that he also has the right to appeal the decision.
The controversial German internet entrepreneur founded file-sharing service Megaupload in 2005, which he once claimed was responsible for 4% of all internet traffic.
According to US authorities, the now-defunct website committed online piracy on a large scale, generating more than $175 million in revenue.
Dotcom has been battling extradition attempts ever since a US grand jury indicted him, alongside computer programmers Mathias Ortmann and Bram van der Kolk, on charges of criminal copyright infringement, conspiracy to commit racketeering, money laundering, and wire fraud in February 2012.
Dotcom’s lawyers argue that the website was never meant to encourage copyright breaches.
New Zealand’s Supreme Court ruled on November 3 that Dotcom and his alleged co-conspirators were liable for extradition on 12 of the 13 counts the FBI is seeking to charge them with.
The charges upon which the group can be extradited for include: racketeering conspiracy, conspiring to commit copyright infringement, five charges of wilful copyright infringement including by distributing a pre-release copy of the movie “Taken”, and five wire fraud counts. If Dotcom is extradited, he could face a lengthy jail term.
The court also reversed a ruling by the Court of Appeal of New Zealand that denied Dotcom’s judicial review requests and held that he could pursue them.
In response to the ruling, Dotcom tweeted a statement from his lawyers which said: “For the Dotcom team, and especially for Kim and his family, it is a mixed bag.
“The tribunal awarded Dotcom damages of NZ$60,000 ($39,524) for loss of dignity and NZ$30,000 compensation.”
“There is no final determination that he is to go to the US. However, the court has not accepted our important copyright argument and in our view has made significant determinations that will have an immediate and chilling impact on the internet.”
In 2018, New Zealand’s Court of Appeal held that Dotcom and three co-defendants were eligible for extradition, rejecting Dotcom’s appeal against a lower court’s ruling that the extradition could take place.
In response to the decision, Dotcom tweeted: “A judgment in complete denial of the legislative history and intention of the Copyright Act. Therefore, it has the value of toilet paper.”
In 2012, Dotcom was arrested when armed police raided his Auckland home, after which Dotcom sued for damages.
In March 2018, the Human Rights Review Tribunal in New Zealand’s capital Wellington found that Dotcom’s privacy had been interfered with and that multiple government departments had failed to provide the information they held on Dotcom at his request.
The tribunal awarded Dotcom damages of NZ$60,000 ($39,524) for loss of dignity and NZ$30,000 compensation. New Zealand’s attorney general filed an appeal against the ruling.
In October, however, the High Court upheld the appeal and overturned the finding of the tribunal.
Image: Shutterstock.com / Skorzewiak
The English High Court has struck out part of a damages claim in a telecommunications patent suit, in a reprieve for Taiwanese phone maker HTC.
Judge Colin Birss had previously issued the order during a case management hearing, but set out his reasoning on November 4. German IP licensing company IPCom sued HTC for infringing a patent covering 3G mobile technology.
The English Court of Appeal found IPCom’s patent to be valid and infringed, and ordered a new inquiry to determine the amount of damages to be paid by HTC.
IPCom was seeking a confidential amount but one which Birss said was a “very substantial sum” worth “hundreds of millions of US dollars”.
The German company’s hopes of receiving such a sum will have dimmed after Birss ruled that IPCom was not entitled to royalties on most of the phone sales.
The request was based on a 0.5% royalty of more than a million phones sold in the UK, as well as hundreds of millions of phones including “workaround” devices that did not infringe the patent, and other phones sold internationally.
“Proceedings to determine the amount of damages HTC owes to IPCom will continue.”
“The reason IPCom cannot make the claim for losses caused by the failure to pay the flat rate royalty on foreign sales is simple. Those sales were not caused by an act of infringement of a UK patent. That is the reason why this claim is wrong,” Birss wrote.
“It is also the answer to the part of IPCom’s argument which is used to sweep up non-infringing workaround phones in the damages claim, at least outside the UK,” he added.
Proceedings to determine the amount of damages HTC owes to IPCom will continue, but only on the basis of infringing sales in the UK.
Birss is known as one of the leading experts on standard-essential patents and fair, reasonable, and non-discriminatory (FRAND) licensing obligations in the UK.
In September, WIPR interviewed Birss on LSPN Connect on the prevailing trends in FRAND licensing, including his landmark decision in Unwired Planet, which was settled by the UK Supreme Court this year.
Image: Shutterstock.com / Ivan Garcia
Batman, Dracula, and Spiderman are the top three most commonly used franchise characters in movies and video games, a new report has revealed.
The report, “Holy Smokes, Batman: Caped Crusader is the Go-To Franchise Character for Movies and Gaming Over the Decades” was published by new World Intellectual Property Organization (WIPO) director Daren Tang as part of a new Creative Economy Notes series, which tracks the value of IP to creative industries.
The WIPO report looked at the usage of comic and other fictional characters in US-based cinema and gaming, the world’s biggest media market, between 1980 and 2019.
Other characters to feature in the top ten included Darth Vader, Mickey Mouse, and Medusa.
“Comic and other franchise characters such as Batman have entertained generations of children and adults alike and are a great example of how IP systems help ensure these characters can adapt and remain popular even as technologies and platforms evolve,” Tang said.
The former Intellectual Property Office of Singapore head assumed the post of WIPO director general at the start of October, succeeding Francis Gurry.
“Other characters to feature in the top ten included Darth Vader, Mickey Mouse, and Medusa.”
Tang presented the data at a virtual event alongside Juergen Boos, president of the Frankfurt Book Fair, the world’s largest book trade fair.
“The convergence of the media industries, and the impact of digitisation, means that the film and gaming sectors are evolving at an extraordinary rate. As a result, the potential revenue from associated licensing and sales is also enormous,” Boos said.
The event marked the release of preliminary results of WIPO’s annual survey of the global publishing industry.
Of the 17 countries that returned data, global publishing revenue amounted to $64.1 billion in 2019. The US generated the largest share of this sum ($23.5 billion), followed by Japan ($16.1 billion) and South Korea ($6.2 billion).
The internet now constitutes a major trade channel for the publishing industry, accounting for 55.2% and 50.1% of sales in the UK and Sweden, respectively. In the US, 43.5% of the industry’s revenue was driven by online sales.
Image: Shutterstock.com / Willrow Hood
Fashion designer Marc Jacobs has claimed that the company representing grunge band Nirvana should lose its ‘Happy Face’ trademark and face sanctions for discovery infractions.
In a bid for summary judgment at the US District Court for the Central District of California, filed on November 2, Marc Jacobs argued, alongside retailers Neiman Marcus Group and Saks, that the band’s logo is not a legitimate trademark and that its copyright registration is invalid.
In December 2018, Nirvana sued the fashion brands accusing them of infringing the copyright of a T-shirt design named ‘Happy Face’. The company alleged that the iconic T-shirt was created in 1991 by the band’s late lead singer, Kurt Cobain, and the logo, which features the letter “x” in place of each eye and a tongue sticking out of the mouth, was registered for copyright in 1993.
It claimed Marc Jacobs uses a “virtually identical” logo on items of its Bootleg Redux Grunge clothing collection, and further alleged that the advertising for this collection makes clear references to Nirvana songs “Smells Like Teen Spirit” and “Come As You Are,” the band claimed.
In March 2018, Marc Jacobs asked the court to dismiss the suit, holding that Nirvana “egregious” complaint made claims that were “factually unsupported”.
On November 2, the fashion brands argued that the design was instead produced by artist Robert Fisher, who created the Happy Face T-shirt at the request of Nirvana because it wanted “more consumer-friendly merchandise products that it could sell on tour and in retail locations”.
However, it argued that Fisher was “never an employee of Nirvana” and also never signed an agreement with Nirvana so the designs were “made for hire for Nirvana”.
They said Nirvana failed to state how or whether it obtained rights to the artwork from Cobain, and who was the creator of the other elements of the registration.
“They claimed that Nirvana had withheld documents received from Fisher for months.”
The brands argued that Nirvana “certainly did not have the authorisation to apply for a trademark registration for the Happy Face illustration without Mr Fisher’s consent”.
Nirvana further argued that “there are innumerable ways in which the idea of a smiley face can be executed” and that the Happy Face T-shirt “consists of several elements that were created independently, at different times, by at least two different people”.
They added that the disputed smiley design is “a mere variation of a generic symbol used ornamentally”, and is conceptually weak due to widespread use of similar designs on clothing by third parties.
“For years, the smiley face symbol, and refinements or variations of this commonly adopted and well-known form of ornamentation for goods, have been in overwhelmingly common and pervasive use in the US in connection with goods and services,” the filing stated.
In the November 2 action, the brands also requested that Nirvana be sanctioned for allegedly violating deposition and disclosure rules, arguing that Nirvana had “abused the discovery process, neglected their discovery obligations and ignored the norms of discovery conduct since the moment discovery began”.
They claimed that Nirvana had withheld documents received from Fisher for months when the brands had been trying to obtain discovery to “establish the creator and owner of the T-shirt design for eight months”.
WIPR has approached the company representing Nirvana and Marc Jacobs for comment.
Image: Shutterstock.com / mamex4
Nokia has enforced an injunction against technology company Lenovo in Germany from October 20, following the judgment of a Munich court in September.
In September, the Munich Regional Court found that Lenovo was infringing one of Nokia’s standard-essential patents (SEPs) relating to video compression technology.
The Munich court rejected Lenovo’s assertion that Nokia had not complied with its fair, reasonable, and non-discriminatory (FRAND) obligations and ordered an injunction, a recall of products from retailers and other distributors, past damages, accountings and costs.
Lenovo’s PCs, laptops and tablets were allegedly using the SEP, European patent number 1,433,316, which covers standardised H.264 (video compression technology) decoding functionalities.
“‘Legal action is never our preferred option, but Lenovo has been unwilling to enter into discussions, despite a clear judgment confirming their unauthorised use of Nokia’s patented technology,” said a spokesperson for Nokia.
They added: “Lenovo can easily resolve this matter by accepting their responsibilities and agreeing a licence on fair terms. Our door is open for Lenovo to resolve the matter through good faith negotiation.”
Lenovo has appealed against the Munich court’s ruling, claiming that Nokia had violated its own legal obligations by refusing to license its technology on FRAND terms to either Lenovo or its third-party suppliers whose parts include H.264 technology.
“Lenovo products which have already been purchased by consumers will not be affected.”
“As a major patent holder around the world, Lenovo has the utmost respect for the work and investment that goes into innovating,” said the spokesperson.
They added: “We believe the availability of standardised technologies on FRAND terms is critical for the future of the global tech industry and the proliferation of affordable innovation to customers around the world. Nokia’s licensing practices threaten this access.”
Lenovo products which have already been purchased by consumers will not be affected and the judgment applies only in Germany.
There has been a series of SEP decisions issued in the country in 2020. Earlier in October, Japan-based Sharp signed an SEP licensing agreement with Daimler, one month after securing a patent victory against the automotive company before the Munich Regional Court.
In May, the German Federal Court of Justice handed down a landmark decision in Sisvel v Haier. Patent pool operator Sisvel claimed victory over Haier, alleging that the decision is a win for SEP owners against “efficient infringement” strategies.
Image: Shutterstock.com / Tada Images
