Oct 16

Beware of “Trademark” Hijackers: International Firms Welcome Changes to Chinese Law

By Sherry Shen, Penn Law ’16

The idea that China has not had the strongest track record in intellectual property law may be an understatement. In July of this past year, Apple paid a hefty settlement fee of $60 million dollars to Proview Technology so that it could use its own trademark for its latest version of the iPad in China – an example of a prevalent phenomenon in China known as trademark hijacking. Fortunately, in late August of this year, China made significant revisions in its trademark laws, which will be implemented on May 1, 2014. While many of the effects remain to be seen, experts are in agreement that these amendments are a significant step in the right direction.

Under current Chinese trademark law, international companies looking to protect their trademarks in China are beholden to China’s dubious “first to file system.” The “first to file system” works just the way it sounds: the first to file the trademark application gets the registration. This system, while not unique to China, has facilitated “trademark hijacking.” Trademark hijacking occurs when opportunists research foreign enterprises that intend to do business in China, then use this research to file applications for trademarks that are similar or identical to the established trademark held by the foreign enterprises. Under the rigid “first to file system,” these applications are normally granted. When this occurs, international companies (who are the true owners of the brand) will then have no choice but to buy back their own trademark, often at an exorbitant price, in order to legally sell their goods in China. The “trademark hijackers” are able to do this because the Chinese Trademark Office does not require applicants to submit supporting materials on first use or intent to use. Many well-known western retailers have fallen victim to this tricky practice including Schroeder KG, Sainsbury’s, John Lewis, Top Shop, and most notably technology goliath, Apple Inc.

These exceptionally visible examples highlight the importance of the new changes in Chinese Trademark Law that are going to be implemented in May of next year. Some of the more notable changes are:

(1)   Addressing Bad Faith Applications:  As Chinese law currently stands, registrations made in bad faith or for well-known mark are cancelled. However, the cancellation process is expensive and difficult to navigate.  One of the most important changes is a general good faith requirement for trademark filings, so that every trademark application must be filed in good faith.

(2)   Increase in Damages: Giving teeth to the good faith provisions, the new laws will impose penalties on trademark lawyers who act in bad faith. Penalties up to five-hundred percent of the profits earned from infringement can also be award to cases where the defendant is found to have made these applications in bad faith.

(3)   Direct Dispute Process: The institution of a dispute process may also undercut trademark hijacking by allowing an aggrieved party or true owner of the trademark to directly oppose a trademark application if it can show that the party filing the application knew or should have known of the trademark due to a relationship with the aggrieved party.

(4)   Co-Infringers/ Repeat Infringers: To further discourage bad behavior, the law has also increased penalties for those who assist infringement or serially offend. Under the new law, any person who deliberately assists an infringer now risks liability for the infringement. Further, anyone found to infringe repeatedly in a 5 year span will be subject to more severe punishments.

These are but a few of the more notable changes in Chinese Trademark Law. Additional changes to the law are aimed at making the application process more amenable towards non-Chinese parties, and also aim to approval time. Overall, many businesses welcome these changes to Chinese intellectual property law, which hopefully signal a recognition by the Chinese government of the dire need to address this deceitful practice.

To learn more about the coming changes in Chinese trademark law, the article below provides a more expansive discussion: http://www.lexology.com/library/detail.aspx?g=11b52022-f014-4ece-9534-106b31eba0fd

Oct 15

Update: Studios File Supreme Court Petition in Aereo Case

Major broadcasters filed a Supreme Court petition on Friday (ahead of today’s filing deadline) alleging that the online streaming service infringes on the broadcaster’s copyright to publicly perform their works. Aereo’s technology allows consumers to access broadcasts of the content outside of the licensed cable and satellite platforms.

More info from the Wall Street Journal: http://online.wsj.com/news/article_email/SB10001424052702303382004579129752289337822-lMyQjAxMTAzMDEwMDExNDAyWj

Oct 11

Shutdown Jeopardizes Negotiations: Major American I.P. Interests in Asia on the Line. by Weining Bai L’16

As the temporary shutdown of government drags on in Washington, media outlets have gone to great lengths outlining its damaging impacts: our fish are no longer inspected as thoroughly, and the Panda Cam blackout is raising plenty of social media outrage. However, little attention has been paid to President Obama’s cancelled trip to Bali, where 21 heads of state currently gather for the Asia-Pacific Economic Cooperation (APEC) summit. Far more than a simple loss of formality, the President’s absence seriously jeopardizes negotiations that have far-reaching consequences in geo-politic, trade barriers, and, you guessed it, international intellectual property rights disputes.

Occurring concurrently at the APEC summit is the Trans-Pacific Partnership (TPP) negotiations involving 12 APEC nations, including the United States, Japan, Canada, Australia, and developing economies on the Pacific Rim like Malaysia, Brunei and Vietnam to establish the first broad trans-pacific free trade agreements of such scale.
The TPP agreement will include an intellectual property rights chapter including provisions for intellectual property protection for pharmaceutical developers. The American Provision for the I.P. Chapter of the TPP demands longer monopolies for pharmaceutical patent holders and heightened enforcement of existing UN regulations governing patent infringement. The new standards sought by the American provision are notably stricter than current UN regulations protecting patents internationally. Many developing economies, including those attending the TPP, depend on generic off-brand drugs for affordable access to medicine. There is significant political pressure within these countries to block or mitigate the American Provision. Indeed, critics of this American Provision have charged President Obama with attempting to impose American patent laws on the rest of the world.

There is hope that the Bali negotiations will finalize a trans-Pacific free trade agreement. Should the United States push through its proposed measures, the TPP will not only protect American patent rights in current TPP nations, but also set a working precedent from which the United States can negotiate with other major Asian economies, including China and India. China especially has expressed interest in joining the TPP in a few years. Should the United States be able to expand on current intellectual property right protection in East Asia through the TPP negotiations, the ramifications of convincing China and/or India to conform to these new standards would be huge. Expanding patent and copyright protection for American enterprises in Chinese and Indian markets has the potential to increase American exports to and lower our trade deficit with Asia by billions of dollars.

In Bali right now, the American negotiating position has been significantly weakened by Obama’s unplanned absence. After months of technocrats talking out logistics, the TPP negotiations have moved into the phase where heads of state make the political calls on the controversial points. This soap opera in Washington has forced the U.S. to negotiate without a comparable authority at the tables. The leaders in Bali still maintain that negotiations are in the final phase, and will be finalized by the end of 2013. This, then, will essentially be the last occasion for every TPP head of state to convene personally and strike the necessary compromises. The shutdown has forced the President to abandon this crucial stage of the negotiations, and jeopardizes the chances America’s agenda will be realized in the final agreement. Future windfalls American businesses and inventors could reap from this new standard of international intellectual property rights enforcement now hangs in the balance.

If you’re interested in keeping up with the negotiations in Bali, official updates from the United States Trade Representatives can be found here: http://www.ustr.gov/tpp

The American Provision that’s being proposed at the TPP conference has been provided to the public by Representative Darrell Issa, and can be found on the Citizens Trade official site: http://www.citizenstrade.org/ctc/wp-content/uploads/2011/10/TransPacificIP1.pdf

Mar 29

2013 Symposium – Creation Nation: IP & The Rise of Prosumerism

6th Annual PIPG Symposium

Creation Nation: IP & The Rise of Prosumerism

Read the rest of this entry »

Mar 20

Supreme Court Expands The “First Sale Doctrine” in Kirtsaeng v. John Wiley & Sons

On Tuesday, the Supreme Court ruled in Kirtsaeng v. John Wiley & Sons, No. 11–697, 2013 WL 1104736 (U.S. Mar. 19, 2013), to limit copyright protection by extending the “First Sale Doctrine” to include copyrighted works lawfully manufactured outside the United States. The doctrine permits owners of individual copies of a copyrighted work to sell that copy without the consent of the copyright holder. By extending the doctrine to include copies manufactured outside the United States, the Court has permitted importation of these copies, which often sell for significantly less in foreign countries than in the United States.

Kirtsaeng involves copies of textbooks published and sold in Asia by publisher John Wiley & Sons, then resold in the United States by Supap Kirtsaeng, a Thai national studying mathematics in the United States. Wiley sued for infringement, and won in both the Southern District of New York and in the Second Circuit Court of Appeals, both of which found Kirtsaeng’s assertion of the First Sale Doctrine to be prohibited because it did not apply to goods manufactured overseas.  In addition to reversing the decisions of the courts below, the Supreme Court’s ruling in Kirtsaeng overturns similar decisions in the Ninth Circuit and the Eastern District of Pennsylvania.

This decision further expands upon Quality King Distributors v. L’anza Research Int’l, 118 S.Ct. 1125 (1998), in which the Court held that copies manufactured in the United States, sold legally overseas and then resold in the United States, were subject to the First Sale Doctrine. The Kirtsaeng Court takes this concept one step further, applying the doctrine to copies manufactured overseas. The Court’s rulings in both Quality King and Kirtsaeng would seem to contravene the plain language of 17 U.S.C.A. § 602(a)(1), which expressly prohibits importing copies of copyrighted works acquired overseas without the copyright holder’s permission. However Justice Breyer, writing for the majority in Kirtsaeng, relied on the Quality King decision in finding that § 602(a)(1) incorporated the limitations that apply to the copyright holder’s exclusive distribution right, including the First Sale Doctrine.

Though the facts of Kirtsaeng apply directly to publishing, its effects are sure to be felt throughout the universe of copyright-protected works. For example, geographic price discrimination is common in the DVD market, where studios have relied on §602(a)(1) (as well as the relatively meager technological protection of regional codes) to prevent copies sold at low prices in developing nations from driving down prices in the United States market. The Court’s ruling in Kirtsaeng leaves studios with a potential dilemma: continue to sell DVDs at low prices in developing nations to avoid forsaking important markets, or raise prices to maintain margins in developed nations. Music labels face a similar predicament with CDs sold overseas. Only time will tell how markets for copyrighted consumer goods will ultimately react to Kirtsaeng.

Mar 18

2013 PIPG Symposium – 3.29.13

poster

Click here for detailed information

Mar 15

Ready or Not, Here She Comes!

Saturday, March 16th the America Invents Act comes into full effect. The Act is the largest patent law reform in decades. The biggest change to look out for, of course, is the new First Inventor to File system. No longer can an inventor secure protection for their invention just because they were the first to invent; now, they must be the first inventor to file that invention as well. That brings America in accord with the rest of the world but also maintains protection for inventors against copying of their inventions by only granting patents to inventors who independently invent the patented product. For more on the First Inventor to File read this Wired article.
The Act brings with it some other changes as well, notably a more expansive definition of prior art. For some of these other highlights read this short post and follow the links at the bottom of that article for even more.
Happy inventing, America!

Mar 06

Six Strikes and You’re Out!

If you engage in online file sharing, you could soon be the recipient of a stern warning! The new Copyright Alert System is a collaboration between Internet Service Providers and content owners. Content owners search file sharing sites for infringing content and then notify the Internet Service Providers (ISPs) when they find infringing content. The ISP, in turn, sends the infringing user a warning. Harmless so far. But get six such warnings and providers will take actions–or “mitigation measures”– such as throttling you internet speed. Wrongly accused? Worry not! For $35 you can appeal the decision (reimbursed if you prevail). So read this AP article while you still have that lightning-fast internet speed and watch this video that explains it all. Happy (legal) browsing!

Feb 26

The Super Bowl of Blog Posts!

Is the title to this blog post infringing? Well, it seems the NFL would assert that much…and more! In a recent television commercial, Samsung, the latest hand caught in the Intellectual Property cookie jar calls a blitz on the NFL’s aggressive enforcement of its trademarks and throws a flag on trademark law. Specifically, they imply that trademark law forbids use of NFL trademarked terms such as “Super Bowl” or team names, even in appropriate references, like referring to the “Big Game” itself. The entertaining commercial is posted here: Samsung’s NFL & Trademark Bashing Super Bowl Ad.

But Samsung may have overplayed their hand once again. While the NFL may indeed be Mama Bear protective of its trademarks, trademark law may not.

Professor R. Polk Wagner, an expert in Intellectual Property Law on the faculty at the University of Pennsylvania Law School, contends that the NFL is (perhaps overly) aggressively enforcing their trademarks because these marks are critically important to the business of the NFL. Similarly, fashion companies will go to great lengths to ensure exclusive use of their trademarks, often asserting trademark infringement even where they may not have the right to stop the use. As an example (without comment of course) see this PIPG Blog post discussing Louis Vuitton’s cease-and-desist action against this very organization.

Bullying aside, trademark infringement generally cannot be asserted when the use in question is simply naming the product described and not likely to cause any consumer confusion, Professor Wagner explains. For example, to say that this blog post is the Super Bowl of blog posts is prima facie infringement because I am using the NFL’s trademark of the Big Game to describe something else—my super blog post. But to say this is a blog post about the Super Bowl is not infringement because I am using the trademark to identify the thing it is protected to mark—the Big Game—which is what this blog post is about (sort of).

So how does the NFL get away with it? Why must Samsung refer to “El Plato Supreme’” or “the Big Game” when the game has a name—the Super Bowl!? Frankly, because if the NFL (or Louis Vuitton for that matter) wants to sue, they can sue. And regardless of the merits, litigation is expensive. Even the threat of a lawsuit can serve as an effective deterrent. In short, if this blog post should disappear…well, you will know why.

 

Feb 09

IP In-House: Corporate Careers in the Media, Fashion, Tech, and Pharmaceutical Industries

IP In-House Flyer 11x17 imagePenn Law Intellectual Property Group (PIPG) is proud to present a career panel featuring leading In-House Counsel from the Media, Fashion, Tech & Pharmaceutical Industries. Our panelists will discuss how intellectual property is prominent in their in-house roles, how they achieved their corporate positions, and offer summer and long-term career advice for students of all levels. Whether you’re interested in patents, copyright, or trademarks, our distinguished speakers’ experience spans all areas of IP!

The all-star cast of speakers:

Media: 
VERNON CHU
General Counsel
BBC Worldwide Americas

Fashion:
SHERRY JETTER
HMX Group, Polo Ralph Lauren, Donna Karan

Tech:
FREDERIC BECKLEY
General Counsel, EVP
MeetMe, Inc.

Pharmaceutical: 
CHARLES KINZIG
VP, Global Patent Litigation Governance and Corporate IP
GlaxoSmithKline

Moderated by our very own Professor CYNTHIA DAHL,
Director
Penn Law Detkin Intellectual Property and Technology Legal Clinic

Wednesday, February 13th. 4:30 – 6:00 pm.

Location: Gittis 214 (Penn law School). Catered Reception to follow. Don’t miss this great networking opp!

Sponsored by PIPG and GAPSA

 

SPEAKER BIOS

 

401-Chu-VernonVernon G. Chu (General Counsel; BBC Worldwide Americas)

Mr. Chu has been the head of the legal department of BBC Worldwide Americas (BBCWA), since July 1999. He is responsible for all legal matters affecting BBCWA in North and South America. He coordinates policy issues with BBC Worldwide in London such as fair-trading, trademark and copyright policy. He is responsible for the legal aspects of BBCWA’s cable channel, BBC America, its content and production business which produces US network shows such as Dancing With The Stars, Top Gear and Torchwood, and BBCWA’s global licensing and digital entertainment and gaming business.

In December 2007, Mr. Chu was selected as the 2007 Counsel of the Year by the Association of Media and Entertainment Counsel. Before joining BBCWA, he had been an associate with Kay Collyer & Boose in New York City from 1989-1995. As an attorney, his responsibilities included negotiating production and distribution agreements with networks, cable and public broadcasters and financing agreements for production of motion pictures, television series, specials and documentaries.

Mr. Chu graduated from the Wharton School in Philadelphia in 1982 with honors and a degree in accounting and economics. In 1985 he received his MBA from Cornell University. A year later, he graduated Cum Laude from Cornell Law School.

 

Sherry Jetter HMX Group Fashion Rep Career PanelSherry Jetter (Former General Counsel and SVP at HMX Group, VP of Intellectual Property at Polo Ralph Lauren, Assistant General Counsel at Donna Karan Co.)

Ms. Jetter has been an in house practitioner in the fashion industry for over 22 years. Among her corporate roles, Ms. Jetter has become an expert in brand protection, intellectual property and licensing.

Most recently, Ms. Jetter held the position of Senior Vice President and General Counsel at HMX Group, a New York City-based apparel manufacturer that owned the American brands Hickey Freeman, Bobby Jones, and its Hart Schaffner Marx flagship label, which President Obama wore to his first inauguration.

Prior to joining HMX, Ms. Jetter worked for 10 years at Polo Ralph Lauren Corporation as its Vice President of Intellectual Property and Legal Affairs. She got her start in the fashion industry at the Donna Karan Company as its first in house counsel and eventually served as the company’s Assistant General Counsel, Senior Director of Intellectual Property.

In October, 2012, Ms. Jetter started her own practice counseling clients in the fashion industry.

Ms. Jetter is a 1983 Cum Laude graduate of Barnard College, Columbia University and received her JD from Brooklyn Law School in 1986.

 

Beckley, Fred IP Inhouse photo Frederic Beckley (General Counsel & Executive Vice President, Business Affairs; MeetMe Inc.)

Mr. Beckley is the General Counsel and Executive Vice President, Business Affairs of MeetMe, Inc., the public market leader for social discovery. He joined the company in 2011 as its first General Counsel and is responsible also for content moderation, customer relations, and human resources.

Prior to joining MeetMe, Fred served as General Counsel and Executive Vice President, Business Development of TruePosition, Inc. Previously he held a number of positions at Verizon Corporation. Mr. Beckley began his professional career in private practice, first as an associate on the Mergers and Acquisitions Team at Dechert, Price & Roads and then as an associate in the Commercial Department of Pepper, Hamilton & Scheetz.

Mr. Beckley holds a J.D. from Yale Law School, an M.A.R. from Yale Divinity School, and a B.A. from the University of Pennsylvania.

About MeetMe, Inc.

MeetMe® is the leading social network for meeting new people in the US and the public market leader for social discovery (NYSE MKT: MEET). MeetMe makes meeting new people fun through social games and apps, monetized by both advertising and virtual currency. With 60% of traffic coming from mobile, MeetMe is fast becoming the social gathering place for the mobile generation. The company operates MeetMe.com and MeetMe apps on iPhone, iPad, and Android in English, Spanish, Portuguese, French, Italian and German.

 

Charles Kinzig imageCharles M. Kinzig (Vice-President, Global Patent Litigation Governance and Corporate IP Policy; GlaxoSmithKline)

Mr. Kinzig has held various positions within the IP department, counseling on intellectual property matters, preparing and prosecuting patent applications, licensing, and litigating patents. He assumed responsibility for managing the U.S. Corporate Intellectual Property department of SmithKline Beecham in 1998, which handled patent solicitation, prosecution, due diligence, litigation, and counseling activities for the company’s commercial operations and R&D in the U.S.  Through merger, the company became GlaxoSmithKline, and he assumed similar responsibilities for North and South America prior to his current position.

Mr. Kinzig graduated from The Johns Hopkins University with a B.A. and M.A. in Organic Chemistry, and spent over a decade in the medicinal chemistry group at Smith Kline & French Laboratories in Philadelphia, engaged primarily in drug design and discovery.  He left the R&D organization to join the patent department, and received his J.D. from Temple University’s Beasley School of Law.

 

Professor Cynthia Dahl (Director, Penn Law Detkin Intellectual Property and Technology Legal Clinic)

 Professor Dahl joins Penn Law as the Director of the new Detkin Intellectual Property and Technology Legal Clinic. She specializes in the business applications of intellectual property and technology. While Senior IP Counsel for TruePosition, Inc. a Liberty Media-owned international wireless location company, she grew the company’s extensive patent portfolio, drafted all manner of intellectual property agreements, managed litigation and advocated on behalf of the company in front of international standards bodies. Prior to working at TruePosition, she was a litigation associate at Holland and Hart LLP, and Pennie and Edmonds LLP. Before launching her legal career, she counseled artists at Volunteer Lawyers for the Arts in New York, and held several jobs in policy and the press, including working for Senator Bill Bradley (D-NJ) and Nina Totenberg at National Public Radio.

Professor Dahl graduated with a B.A. from Yale in 1991 and with a J.D. from Stanford Law School in 1998.

Older posts «

» Newer posts