General GWiR 13 March 2009 from IP Think Tank

Here is IP Think Tank’s weekly selection of top intellectual property news breaking in the blogosphere and internet.

Please join the discussion by adding your comments on any of these stories, and please do let us know if you think we’ve missed something important, or if there is a source you think should be monitored.

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Highlights this week included:

New record for international trade mark registrations in 2008 but signs of slowdown at year end and possible negative annual income (WIPO) (IP Frontline) (Intellectual Property Watch) (Law360)

Chile and Peru join PCT (IP tango) (Patent Docs) (Managing Intellectual Property) (WIPO)

Community trade mark fees to be reduced (Class 46) (Class 46) (Class 46) (BLOG@IP::JUR) (The IP Factor) (Out-Law) (Law360)

UK trade mark fees to be reduced?: IPO announces public consultation on trade mark fees (BLOG@IP::JUR) (Class 46) (Class 46) (Class 46) (Out-Law) (IPKat)

US Senate Judiciary Committee hearing on Patent Reform Act 2009 (Inventive Step) (Patent Prospector) (IAM) (Patent Baristas) (Peter Zura’s 271 Patent Blog) (Patent Docs) (Patent Docs) (Law360) (Hal Wegner)

Global – General

The global economic crisis and the intellectual property ecosystem IP Think Tank podcast 6 March 2009 (IP Think Tank)

Director’s liability, IP in Business Schools and US patent reform IP Think Tank podcast, 6 March 2009 (IP Think Tank)

Have your say on the global IP index (IP Think Tank)

Avoiding pitfalls in IP licensing (IP Frontline)

Differences in philosophy and approach led to split, former Ocean Tomo transactions boss explains (IAM)

Washington University economists M Boldrin and D K Levine: abolish copyright and patents to save the economy (TorrentFreak)

It’s the intellectual property, stupid! – Need for business and government to understand role of IP (IPEG)

Global – Trade Marks / Brands

New record for international trade mark registrations in 2008 but signs of slowdown at year end and possible negative annual income (WIPO) (IP Frontline) (Intellectual Property Watch) (Law360)

Coca-Cola is no longer the world’s most valuable brand (IAM)

WTO session tackles details of future register of GI products (Intellectual Property Watch)

Can a house mark or in-house brands be saved despite bankruptcy? (IP finance)

Global – Patents

Study published in Science magazine ‘Promoting Intellectual Discovery: Patents Versus Markets’ concludes free markets superior to patent monopolies (Ars Technica) (Techdirt)

Economic woes impact valuations, but not all sectors are suffering (Technology Transfer Tactics)

Cancer Institute study show impact of patent age on deal probability (Technology Transfer Tactics)

Should management be involved in patenting decisions? (Securing Innovation) search tool, tracking patent documents (Competitive Info) (Patently-O)

Patent damages as an incentive to transact (IP finance)

IPscore, new patent evaluation toy (IP finance)

Patent portfolios can pull companies out of financial rut (Law360)

Global – Copyright

Expanding the public domain: part zero (Creative Commons)


Pioneering decision on non-use: Pioneer Computers Australia Pty Limited v Pioneer KK (Australian Trade Marks Law Blog)

Proving a patent is obvious – be careful when preparing the evidence: Esco Corporation and Bradken Resources Pty Ltd v PAC Mining Pty Ltd and Central Queensland Mining Supplies Pty Ltd (Mallesons Stephen Jaques)


WTO review finds Brazil progressing on trade policy, IP rights protection (Intellectual Property Watch)


Can you copyright a Chess move: Bulgarian Chess Federation claims ‘live broadcasting’ of chess match violates copyright law (Techdirt)


CIPO releases annual report for 2007/08 (Patent Librarian’s Notebook)

Canada EU FTA lurching ahead leaving little time for public input (Excess Copyright)

Security interests in IP – WIPO, UNCITRAL and Canada (Excess Copyright)

Winnipeg man faces 52 copyright charges after RCMP seize more than 200,000 CDs and DVDs (Michael Geist)

Proving trade mark infringement – absent a defendant: Salam Toronto Publications and Mohsen Seyed Taghavi v Salam Toronto, Inc et al (Canadian Trademark Blog)

Nova Scotia Supreme Court confirms ‘declaratory relief is specifically available in the context of intellectual property disputes’: CKF Inc v Huhtamaki Americas Inc (Canadian Trademark Blog)

Departing employees and trade secrets (


Chile signs up to PCT (IP tango) (Patent Docs) (Managing Intellectual Property) (WIPO)


Multinationals strengthen their commitment to China; but are scared by IPR challenges (IP Dragon)

China advances in international patent application rating (Post-Grant)

Analysis on the trade mark of some reputation another person has used: MUJI trade mark dispute (DeBund)

Hermes denied pursuit to register 3D marks (DeBund)

Civil IP cases rise (DeBund)

Hotel background music deal between Music Copyright Society of China and Shanghai Tourism Industry Association (DeBund)

IP contribution to enterprises in service sector may amount to 70% (DeBund)


Who owns ‘Big Fat Snake’ band name following ousting of band-member? (Innovationpartners)


ECJ: No simple test for bad faith trade mark registration: Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (IPKat)

Court of First Instance: Shells all too common in bakery and confectionery sector: G M Piccolo Srl v OHIM (Class 46)

European Parliament votes for greater ACTA transparency (Michael Geist) (Ars Technica)

CTM fees to be reduced (Class 46) (Class 46) (Class 46) (BLOG@IP::JUR) (The IP Factor) (Out-Law) (Law360)


Estonian Supreme Court rules on trade mark licensees and limitations: Stol-I AS v Liviko AS (Class 46)


Recent Supreme Administrative Court decision concerning validity of utility model has ramifications for proceedings at National Board of Patents and Registration in other areas as well, including trade mark related matters (Class 46)


Cour de Cassation (supreme court) finds GAY not distinctive for online publications aimed at gay community, while FEMME is valid for print publication aimed at feminine readers (Class 46)


Sueddeutsche Zeitung reports that it appears Regional Court Munich I will decide copyright dispute over republication of Nazi newspapers in favour of publisher, Peter McGee (IPKat)

APM chairman says ‘economic crisis should make German government act more aggressively against counterfeiters’ (IP Dragon)

Opel IP confusion (IP finance)


Palakkad Paddy community admits to non-effect of GI tag on produce and dwindling production lines (Spicy IP)


Jerusalem District Court: Ahava enforces copyright law in case where parallel trading of trade marked goods is allowed: Dead Sea Laboratories v JWG (The IP Factor)

No likelihood of confusion between TAL EMEK and TAL EDEN (The IP Factor)

Decision regarding ‘Thank Goodness it’s Friday’ and Lemon (The IP Factor)


Japan Fair Trade Commission finds Japanese Society for Rights of Authors, Composers and Publishers’ method of comprehensive collection of royalties from broadcasters a form of private monopolisation prohibited by Antimonopoly Act (IPKat) (Managing Intellectual Property)


High Court of Kenya finds in favour of foreign trade mark proprietors against local distributors of proprietor’s products bearing disputed trade marks: Distell Limited Vs Southern Brandy Liquor Company Limited Vs Distell Kenya Limited (Afro-IP)

Transport Ministry to vet patented speed governors (IP Kenya)


Pirate DVD market booming in South Korea (ContentAgenda)


Vanilla appellation given protection in Mexico (IP tango)

New Zealand

The Ka Mate Haka: Generic IP law versus indigenous rights (International Law Office)


Nigeria to have one commission for IP? (Afro-IP)


Peru approves ratification of PCT (Patent Docs) (Managing Intellectual Property)


Government says Philippines should be removed from US government watch list, despite claims from American lobby groups (ContentAgenda)


DIX versus DIX or judgment versus judgment (Class 46)

PPO’s invalidates figurative mark belonging to FIRMA BATCZEW Stanislaw Komperda incorporating elements similar to EU flag (Class 46)


Video piracy group crushed, 1 million fake DVDs seized in Moscow (ContentAgenda)


SINGAPORE most innovative nation, according to study by Boston Consulting Group, National Association of Manufacturers and Manufacturing Institute (ContentAgenda)

South Africa

High Court of the Western Cape finds infringement of Purcellin mark: Union-Swiss v Medpro Pharmaceutica (Afro-IP)


Supreme Court to explore the limits between bidimensionality and 3D marks (Class 46)


Nullity of defensive trade marks: the GMAIL case (International Law Office)


Tanzania FCC reports on 2008 import seizures (Afro-IP)

United Arab Emirates

Dubai Department of Economic Development and Dubai Silicon Oasis Authority cooperate to unify trade name registration (International Law Office)

United Kingdom

Court of Appeal reverses trial judge’s decision in post-franchising case ChipsAway International Ltd v Errol Kerr (IPKat)

UK IPO opinion relating to cable tie known as Rapstrap; Dragon’s investment in the concept (IPKat)

Simon Buxton opposition to Ross Heaven’s registration of DARKNESS VISIBLE successful due to earlier use (IPKat)

UK trade mark fees to be cut?: UK IPO announces public consultation on trade mark fees (BLOG@IP::JUR) (Class 46) (Class 46) (Class 46) (Out-Law) (IPKat)

Strategic Advisory Board for Intellectual Property declares its approach to copyright priorities (IPKat) (Laurence Kaye on Digital Media Law)

United States
US General

ACTA FOIA request denied by Obama USTR on basis of state secrecy (Excess Copyright)

LES delivers letter to Obama urging improvement in innovation policy (Technology Transfer Tactics)

Something I have heard that could mean good news for US patent practitioners – new USPTO Director (IAM)

What good is the Federal Circuit? (Patent Docs)

American Recovery and Reinvestment Act of 2009 – economic stimulus includes financing incentives for R&D (IP Spotlight)

US General – Decisions

Court of Appeal State of California: Breach of confidence and unfair competition claims were pre-empted by California’s Trade Secret Act: K.C. Multimedia v. Bank of America Technology & Operations (IP Law Observer)

Supreme Court of South Carolina tightens rules for trade secrets discovery in matter between Bridgestone Corp and Russell Laffitte (Law360)

US General – Lawsuits and strategic steps

Deutsche Bank – Deutsche Bank sues ex-employee for pinching clients (Law360)

Goodyear Tire and Rubber Co – Wyko Tire engineers indicted in trade secret theft case (Law360)

LinkCo – LinkCo’s bid to void past settlement and reopen trade secret suit against Fujitsu denied (Law360)

US Patent Reform

Senate Judiciary Committee hearing on Patent Reform Act 2009 (Inventive Step) (Patent Prospector) (IAM) (Patent Baristas) (Peter Zura’s 271 Patent Blog) (Patent Docs) (Patent Docs) (Law360) (Hal Wegner)

Coalition for 21st Century Patent Reform statement on Patent Reform Bill introduction (IP Frontline) (IP Watchdog) (IP Frontline)

Green tech companies protest patent reform (IP Watchdog)

Unions oppose patent reform legislation (IP Watchdog)

Patent reform lobbying off to a fast start (Peter Zura’s 271 Patent Blog)

Senator Specter seeks resolution of issues before vote on Patent Reform Bill (Patent Docs) (Inventive Step)

Innovation Alliance claim court system has already brought about patent reform (Patent Baristas) (PatLit) (Patent Prospector)

Executive orders: White House seeks comments on patent policies (Patent Baristas)

The odds look to be against supporters of new US patent reform proposals (IAM)

Administrative patent validity determinations if the proposed US Patent Reform Act of 2009 passes (Intellectual Property Watch)

USPTO: More time to comment on deferred patent examination system (Patent Baristas) (Peter Zura’s 271 Patent Blog) (Patent Docs) (Daily Dose of IP)

US patent reform revived (Managing Intellectual Property)

Change in Patent Office philosophy can lead recovery (IP Watchdog)

US Patents

USPTO memo explains examination standards under Bilski (Peter Zura’s 271 Patent Blog) (Patently-O)

USPTO publishes classification order #1886 – Class 439 (Patent Librarian’s Notebook)

What is a troll patent and why are they bad? (Patently-O)

Did you know… hearsay is generally admissible in the ITC? (ITC 337 Law Blog)

Forward looking patent damages – Tomas Gomez-Arostegui paper ‘Prospective Compensation in Lieu of a Final Injunction in Patent and Copyright Cases’ (Patently-O) (Patent Prospector)

Kesan and Ball study ‘Transaction Costs and Trolls: Strategic Behavior by Individual Inventors, Small Firms and Entrepreneurs in Patent Litigation’ (Peter Zura’s 271 Patent Blog)

Hot topics in US patent re-examination (Patently-O)

Stays pending inter partes re-examination (Patently-O)

US Patents – Decisions

Entire Federal Circuit to decide if 271(f) applies to method claims: Cardiac Pacemakers v St Jude Medical (Inventive Step) (Patently-O) (Law360) (Hal Wegner)

CAFC issues expansive reading of Bilski: In re Lewis Ferguson, Darryl Costin and Scott C. Harris (Inventive Step) (Patent Prospector) (Law360) (Hal Wegner)

CAFC: Patent contributor not ‘co-inventor’: Natron v Schukra and Borg Indak (Law360) (Patent Prospector)

CAFC awards Mars interest in patent dispute with Coin Acceptors (Law360)

Supreme Court declines review of patent case involving whether defendant must perform all steps of claimed business method: MuniAuction, Inc v Thompson Corporation (IP Spotlight) (Hal Wegner)

District Court C D California: Directing method step to be performed outside US negates joint infringement: Ormco Corporation v Align Technology, Inc (Peter Zura’s 271 Patent Blog)

District Court N D Illinois: Experts allowed to testify for and against party in concurrent cases: Bone Care International, LLC v Pentech Pharms, Inc (Chicago Intellectual Property Law Blog)

District Court E D Texas: Judge cuts damages by $3 million in Shure earphone case (Law360)

Defendant’s knowledge of re-examination certificate may constitute ‘objective recklessness’: Ultratech International Inc v Swimways Corp (Peter Zura’s 271 Patent Blog)

District Court E D Texas: Patent verdict cut by ⅔ post verdict: Hearing Components, Inc v Shure, Inc (

Portland jury finds validity and infringement, awarding Blount nearly $2 million in damages in case concerning chainsaw nose sprocket design (Washington State Patent Law Blog)

ITC enters final determination in favour of complainant Pass & Seymour in investigation concerning ground fault circuit interrupters (ITC 337 Law Blog) (Law360)

Round I of amicus briefs in Bilski v Doll (Patently-O) (Inventive Step) (Law360) (IP Frontline)

Minnesota jury awards Rudolph Technologies $6.8 million in damages in patent suit against Camtek over semiconductor technology (Law360) (Philip Brooks’ Patent Infringement Updates)

US Patents – Lawsuits and strategic steps

Acco Brands – Acco settles patent dispute against PC Guardian Anti-Theft Products and Fellowes over lock technology for laptops (Law360)

Coca-Cola Co – Marshall Packaging Co hits Coca-Cola, Kraft with bottle-design patent suit (Law360)

Dish Network – Dish sues insurers for coverage in Katz patent suit (Law360)

Fellowes – Stay pending reexam granted as to one of three patents: Fellowes, Inc v Aurora Corp of America (Chicago Intellectual Property Law Blog)

Flexsys Americas – Despite being shut down by the ITC, Flexsys files motion to reopen case against Sinorgchem, KKPC and Kumho Tire Co in district court (Law360)

Honeywell International – Honeywell, Cree, Boston University drop LED patent fight (Law360)

Humanscale Corp – ITC institutes investigation based on complaint by Humanscale over importation and sale of allegedly infringing adjustable keyboard support systems by CompX (ITC 337 Law Blog) (Law3601`)

Magotteaux International – AIAE Engineering and Vega Industries’ motion to terminate investigation based on arbitration agreement denied; Magotteau&xrsquo;s motion to strike AIAE’s identification of its expert witness as untimely granted – matter concerning composite wear components (ITC 337 Law Blog) (ITC 337 Law Blog)

Nestle – Nestle sues Wysong over process used by Wysong 15 years before Nestle patented it; identical patent stopped in Europe due to Wysong prior art (Techdirt)

Papst Licensing – Papst gets second shot at camera IP suit against Sanyo (Law360)

Presstek – Respondents’ motion for summary determination denied in matter concerning laser imageable lithographic printing plates (ITC 337 Law Blog)

Ross, Colin A – Patent application for human eyebeam detection system developed by Colin A Ross MD publishes (The IP Factor)

Rothschild, Gertrude – Professor G Rothschild files new 337 complaint regarding LED chips against Chi Mei Lighting, Tekcore, Toyolite, Tyntek, Visual Photonics Epitaxy and Xiamen Sanan Optoelectronics (ITC 337 Law Blog)

Solvay – Solvay appeals from summary judgment of invalidity in dispute relating to process for manufacturing a blowing agent for rigid insulating foams: Solvay v Honeywell (PATracer)

St Clair Intellectual Property Consultants – Polaroid, T-Mobile, Sanyo, Kyocera Wireless latest camera makers to be targeted for patent infringement by St Clair (Law360)

Star Scientific – Supreme Court denies RJ Reynolds petition for certiorari in patent dispute with Star Scientific over toxin-reducing method of curing tobacco (Law360)

US Copyright

US National Association of Broadcasters opposes ‘tax on the performance of sound recordings’ (Excess Copyright)  

Radio, record labels battle over royalty rates (ContentAgenda)

US Copyright – Lawsuits and strategic steps

Associated Press – AP files lengthy answer and counterclaim in Fairey’s preemptive litigation over Obama image (Excess Copyright) (Law360)

REM – REM, Warner Music accuses ‘Walkmand’ song by Danish band Hej Matematik of copying their earlier ‘Supernatural Superserious’ but Hej Matematik’s song is cover of Danish song predating REM’s (Techdirt)

Wyeth Pharmaceuticals – Wyeth loses bid to drop copyright suit brought by Puerto Rican artist over advertisement (Law360)

US Trademarks

Leveraging ‘The Sharper Image’ mark after bankruptcy (IP finance)

US Trade Marks – Decisions

TTAB precedential no. 5: Board shows mercy, forgives cancellation petitioner who served petition one week after its electronic filing: The Equine Touch Foundation, Inc v Equinology, Inc (TTABlog)

TTAB precedential decision no 6: TTAB affirms section 2(e)(5) functionality refusal of shape of metal spray nozzle: In re UDOR USA, Inc (TTABlog)

TTAB affirms PTO refusal to amend FIT TEST application from services to goods: In re Aurel A Astilean (not precedential) (TTABlog)

TTAB reverses surname refusal of BERGFELD for wine, giving added weight to the rareness factor: In re Hall Wines, LLC (not precedential) (TTABlog)

TTAB affirms refusal for ACURA RL for autos, finding ACURA and RL too far apart on specimens: In re Honda Motor Co, Ltd (not precedential) (TTABlog)

TTAB questionably shows second red card to FUTBOLITO: merely descriptive for game tables, but confusingly similar to MLS FUTBOLITO?: In re Allen Batres Miranda (not precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps

American Mastiff Breeders Council – Federal judge rejects AMBC’s claim that its trade mark suit precludes Craig Williamson’s antitrust case alleging AMBC fixed puppy prices (Law360)

Experience Hendrix – Experience Hendrix sues, company with alleged connection to enjoined promoter, for trade mark infringement (Seattle Trademark Lawyer)

Hanna-Barbera Productions – Hanna-Barbera opposes registration of Yogiberry trade mark (Maryland Intellectual Property Law Blog)

Laughing Rabbit – Lighting manufacturer LR settles suit against UView Ultraviolet Systems over use of FREEDOM in connection with flashlights; following day LR files trade mark infringement suit against Photon Light Boards over use of PHOTON in connection with illuminated skate boards (Seattle Trademark Lawyer)

Louis Vuitton – Bad Boy Entertainment and Warner Music Group agree to remove images of LV’s trade marks from album and videos of disbanded group Danity Kane (Counterfeit Chic)

Polaroid Corp – Ritchie Capital Management fights Polaroid over fraud, trade marks (Law360)


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