General GWiR 19 December 2008 from IP Think Tank

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Highlights this week included:

Oleg Teterin seeks ‘tens of thousands of dollars’ for rights to use 😉 emoticon, a registered Russian trade mark (Techdirt) (RelatIP) (Ars Technica) (The IP Factor) (Out-Law) (Class 46)

New UK copyright consultation: consultation issues include access to works, incentivising investment and creativity, recognising creative input, authenticating works (IPKat) (Excess Copyright) (Out-Law) (Ars Technica)

European Court of First Instance, consolidating four appeals, annuls decisions of Board of Appeal and awards costs to Budvar in proceedings over BUD appellation: Budějovický Budvar, národní podnik v Office for Harmonisation in the Internal Market, Anheuser-Busch, Inc (IPKat) (Law360)

US CAFC provides further guidance on means-plus-function: Welker Bearing Co v PHD, Inc (Peter Zura’s 271 Patent Blog) (Patently-O) (Patent Prospector) (Promote the Progress) (Hal Wegner)



Global – General

Global week in review podcast – 12 December (IP Think Tank)

Comparing policy space in the WTO – Does TRIPS offer sufficient room to regulate public interests? (Guest post from Dr Henning Grosse Ruse-Khan) (Spicy IP)

Innovation will overcome recession – is your IP department prepared? (Financial Aspects of Intellectual Property)

IP finance seminar on patent and copyright term: ‘IP Term: What it Means in Finance Terms’ presentation (IP finance)

The difference between invention and innovation in the netbook space (Techdirt)

WIPO launches strategic change program (WIPO) (Intellectual Property Watch) (IP Kenya)

Draft programme of WIPO funder meeting for development (Intellectual Property Watch)

Confidential document from WIPO details strategy on IP, climate change (Intellectual Property Watch)


Global – Trade Marks / Brands

Singapore Treaty on the Law of Trademarks to enter into force in 2009 (WIPO) (IPKat) (IP Kenya)


Global – Patents

WIPO to launch new supplementary international search from 1 January 2009 (WIPO)


Global – Copyright

Hollywood fears piracy may thrive in economic crisis (ContentAgenda) (TorrentFreak)

Studios (temporarily?) gain upper hand in Blu-ray DRM battle (Ars Technica)



South African Times report on state of African music, lack of support and protection (Afro-IP)



Australian Copyright Tribunal: consumer valuation of copyright: Audio-Visual Copyright Society (t/a Screenrights) v Foxtel and Re PPCA (IPKat) (IP finance)

Innovation patents in Australia. The strongest patent in the world? (Patent Baristas)



Creative commons license porting process: Armenia, Azerbaijan, Georgia discussing license drafts (Creative Commons)



Canadian Association of University Teachers releases fair dealing advisory (Michael Geist)

More on satire and parody and the need for legislation in Canada (Excess Copyright)

Canada increases ‘music industry subsidy’ on blank CDs (TorrentFreak)



Influence of the financial crisis on enforcement of intellectual property in China (IP Dragon)

More IPR tribunals established in China (IP Dragon) (DeBund)

China and Russia sign intellectual property agreement for military-technical cooperation (IP Dragon)

‘Shan Zhai Ji’ in most searched list (IP Dragon)

SIPO Commissioner Tian Lipu explains China’s national IP strategy (Managing Intellectual Property)

Drafting an Anti-Counterfeiting Trade Agreement: Where is China? (IP Dragon)

Columbia Sportswear successful in reducing counterfeits in China (IP Dragon)

Shenyang Intermediate People’s Court orders New Apple Concept Technology to pay Apple 400,000 Yuan in damages for trade mark infringement and unfair competition (DeBund)

2386 IPR cases dealt with by Culture Administrations in Q3 (DeBund)

Well-known trade marks can be recognised on basis of the products’ sales volumes (DeBund)

Judicial Criteria for copyright cases (part 2) (DeBund)

Beer and logic: If Taiwan Beer is sold in china trade mark issue is solved in China (IP Dragon)

Largest damages award for patent infringement: Chint Group Co v Schneider Electric Low-Voltage (Tianjin) Co Ltd (International Law Office)



New Danish legislation enforces higher penalties for counterfeiting (Class 46)

First prison sentence in Denmark for trade mark and copyright infringement (Innovationpartners)

Danish Patent and Trademark Office recently launched initiatives: combating counterfeit medicines, cross-ministerial website on combating IP-piracy, extension on IP-marketplace to include designs (Innovationpartners)



Board of Appeal upholds opposition by International Olympic Committee against registration of OLYMPIC-CITY CASINO (Class 46)



OHIM: Ireland, Portugal, Sweden and UK opt out of national searches system (Class 46)

Community trade mark fee reduction: 40% or 50%? (Class 46)

Council Regulation 1229/2008 enters San Simón da Costa (PDO), Ail blanc de Lomagne (PGI), Steirischer Kren (PGI) into Register of protected designations of origin and protected geographical indications (Class 46)

Court of First Instance, consolidating four appeals, annuls decisions of Board of Appeal and awards costs to Budvar in proceedings over BUD appellation: Budějovický Budvar, národní podnik v Office for Harmonisation in the Internal Market, Anheuser-Busch, Inc (IPKat) (Law360)

Memo to EPO examiners: the patent quality debate has to be full, frank and nuanced (IAM)

European Patent Office extends coverage of Latin American countries in the bibliographic database (esp@cenet) (EPO) (Patent Librarian’s Notebook)



Helsinki Court of Appeal decision in contract and trade mark dispute over ‘Keltaiset Sivut’ (translation: Yellow Pages) for phone directories between Eniro and Fonecta (Class 46)

Helsinki District Court decision on trade mark establishment: Helsingin Taksi-Data Oy v TJP Lines Oy (Class 46)



Modifications of the IP Code (Class 46)



Indian Bayh Dole Bill introduced in Parliament (Spicy IP) (Spicy IP) (Spicy IP)

Pre-grant opposition comes under scrutiny (International Law Office)

Branding the ‘Himalayas’: descriptive, generic or GI? (Spicy IP)

L’Oreal files suit against MyDollarStore alleging infringement of IP rights and illegal importation of goods (Spicy IP)

Taj Mahal copyright – a non-issue: life size copy of Taj Mahal to be built in Bangladesh (Spicy IP) (Techdirt)

Q Corner: Minimum period for patent grant (Patent Circle)



Iranian artists call for tougher copyright protection (The IP Factor)



New Israel trade mark portal to be launched on 29 December 2008 (The IP Factor)



Geographical indications for Kenyan coffee (IP Kenya)

Safaricom sued over M-Pesa money transfer technology (Afro-IP)



Appellation of origin for hummus and other Arab dishes (The IP Factor)



Mexico tightens up consent letter practice (IP tango)

How the PCT has influenced the Mexican patent system (IP Frontline)


Papua New Guinea

Intellectual Property Office of Papua New Guinea (IPOPNG) launches website (IPKat)



Oleg Teterin seeks ‘tens of thousands of dollars’ for rights to  use 😉 emoticon, a registered Russian trade mark (Techdirt) (RelatIP) (Ars Technica) (The IP Factor) (Out-Law) (Class 46)



Total Repair Solutions pays £120,000 to settle claims it had too few licences for software installed on its computers (Out-Law)


South Africa

COPE wins trade mark battle against ANC (Afro-IP) (Afro-IP)

IP war looming between LEGALWISE South Africa and LEGALWISE Botswana (Afro-IP)



Spanish Community Trade Mark Court grants interim relief on the basis of 3D mark (Class 46)

Spanish court fines Spanish General Society of Authors and Editors for crashing, filming weddings to investigate possible copyright violations (Ars Technica) (Techdirt)



Amended counterfeiting provisions in the Trademark Act (International Law Office)



Copyright Society of Tanzania speaks out on music and movie piracy (Afro-IP)


United Kingdom

New UK copyright consultation: consultation issues include access to works, incentivising investment and creativity, recognising creative input, authenticating works (IPKat) (Excess Copyright) (Out-Law) (Ars Technica)

UK government backs 20-year music copyright extension (Ars Technica) (The IP Factor) (Managing Intellectual Property)

Gowers on UK term extension capitulation (Excess Copyright) (Out-Law) (Techdirt)

Allen & Overy required to declare projected costs in patent battle between RIM and Visto (IPKat) (IAM) (Law360)

UK IPO releases research that ‘shows that many businesses are not doing anything to ensure they protect their intellectual property’ (IPKat)

On dongles, teletext and trade marks – trade mark registration of generic or descriptive terms (IPKat)


United States

US General

US Chamber of Commerce sets 2009 IP goals (Managing Intellectual Property)

US technology, IP industries offer policy wish lists for Obama (Intellectual Property Watch)

Why Obama should change US trade policy on intellectual property (Techdirt)


US General – Decisions

Ex-Morgan Stanley employee sentenced to two years probation after he admitted to stealing confidential information (Law360)


US Patent Reform

USPTO pendency times and the lessons that Korea may be able to teach (IAM)

Federal Trade Commission hearing on the evolving IP marketplace: Chief Judge Michel questions post-grant opposition proceedings (Inventive Step)

Former patent officials say backlog should become a top priority (Government Executive) (Hal Wegner)

Congress should enact Rule 56 (Duty to disclose information material to patentability) immediately (Patent Fools)

Fixing the USPTO (Part 1) (PLI)

Patent reform, key cases to watch: Apotex v Sanofi-Synthelabo; Lucent v Gateway, FTC v Rambus (Hal Wegner)

Who should be in charge of patent reform? (Techdirt)

Patent damages: The Rooklidge v Thomas debate (Hal Wegner)

Congressional inaction and the destruction of the pool of senior members of the judiciary (Hal Wegner)

Seven Federal Circuit Judges senior eligible in the coming ten months (Hal Wegner)

Public Knowledge, Center for Democracy and Technology, Knowledge Ecology International, Public Patent Foundation and library community representatives meet with members of the transition team for the USPTO (Public Knowledge)


US Patents

60th anniversary of the conception of the new (1952) patent law (Hal Wegner)

CAFC affirms PTO’s right to fire quality assurance specialist for 35%+ error rate: Asokkumar Pal v Department of Commerce (not precedential) (Patently-O) (Patent Prospector) (Techdirt)

More on Article One patent project (Peter Zura’s 271 Patent Blog)

Evaluating the risk of patent infringement by means of semantic patent analysis: the case of DNA chips (Philip Brooks’ Patent Infringement Updates)

MPEP 1126: Applications that publish after the patent issues (Anticipate This!)

Is the Patent Office against patent applicants? (Inventive Step)

Patent allowance rate continues to drop (Inventive Step)

Additional application types eligible for participation in PPH between USPTO and EPO (Patent Docs)

Patent Office reminds patent practitioners to update contact information (Patent Docs)

Patent title ‘classified’ for application relating to weapons device (Techdirt)

Professor Robert P Merges releases ‘IP Rights and Technological Platforms’ working paper (Ars Technica)

More patent infringement battles between Asian companies to be played out in US courts predicts Paul Hastings (Law360)

Patent owners and applicants generally not using declarations to overcome KSR obviousness rejections (Hal Wegner)

New BPAI Rules on hold (Daily Dose of IP) (Hal Wegner)

Committee puts out national patent jury instructions (Law360) (Chicago Intellectual Property Law Blog)


US Patents – Decisions

CAFC provides further guidance on means-plus-function: Welker Bearing Co v PHD, Inc (Peter Zura’s 271 Patent Blog) (Patently-O) (Patent Prospector) (Promote the Progress) (Hal Wegner)

Court lacks personal jurisdiction over foreign patentee in declaratory judgment action: Avocent Huntsville Corp v Aten Int’l (Patently-O) (Patent Prospector) (Hal Wegner)

Enforcing foreign patents in the US: distinguishing Voda: Fairchild Semiconductor v Third Dimension (3D) (Patently-O)

Federal judge reduces $34 million jury verdict against Fairchild Semiconductor International to $6.1 million (Law360)

Inter partes re-examination final board decision, first merits appeal to the court(?): Cameron Int’l Corp v Patent of SAFOCO (Hal Wegner)

Fatal failure to update trial court on change in the law: Rentrop v Spectranetics (Hal Wegner)

§ 271(f) offshore infringement for method (following Union Carbide): Cardiac Pacemakers v St Jude Medical (Hal Wegner)

CAFC issues mixed ruling in apnea treatment patent dispute between Invacare and Respironics (Law360)

The Board goes picky, picky, picky, but why?: Ex parte Ghuman (Hal Wegner)

PTO should apply broadest reasonable claim interpretation to section 101 analysis: Ex parte Koo (Patently-O)

Warning customer of competitor’s potential patent infringement not tortuous interference: Polyad Co v Indopco Inc (Chicago Intellectual Property Law Blog)

Federal-Mogul employee loses bid for invention pay (Law360)

Enforcement of IP Rights relevant to industry standards: Qualcomm v Broadcom (24IP)

Damages apportionment: Lucent v Gateway (Hal Wegner)

In re Swanson: Ex parte re-examination in the USPTO (IP Frontline)


US Patents – Lawsuits and strategic steps

Acacia Research Corp – Cognex agrees to settle patent dispute with Acacia, Veritex and several other companies over product scanning technology (Law360)

Anheuser-Busch – Anheuser-Busch settles patent lawsuit brought by Canadian company over type of pressure-sensitive adhesive label (Law360) (Patent Prospector)

CIBA Vision Corp – CIBA Vision claims three more Johnson & Johnson Vision Care contact lens products infringe its patents (Law360)

Energizer Holdings – Energizer, Spectrum settle batteries patent suit (Law360)

FlashPoint Technology – FlashPoint files suits against Kyocera Sanyo Telecom and General Electric over alleged infringement of host of patent related to digital camera technology (Law360)

Kinetic Concepts – Kinetic Concepts expands vacuum-assisted closure patent infringement suit against Smith & Nephew (Law360)

Konica Minolta Photo Imaging – Konica’s suit against Papst Licensing will be transferred to Illinois if case is not settled in ongoing multidistrict litigation, federal judge rule (Law360)

Marvell Semiconductor – Marvell seeks declaratory judgment of patent invalidity against Wi-LAN (Law360)

Microsoft – Microsoft and Alcatel-Lucent settle long-running dispute involving dozens of patent claims, six separate cases and a $1.5 billion jury verdict that was later overturned (Law360) (Patent Prospector)

Motorola – Federal judge refuses to dismiss patent infringement and antitrust claims against Motorola arising from failed licensing deal granting Research in Motion (RIM) access to wireless technology patents (Law360)

Nintendo – Nintendo, Nyko settle patent dispute over Nunchuk controller (Law360) (Patents Prospector) (Seattle Trademark Lawyer)

OPTi – STMicroelectronics reaches settlement with OPTi in infringement suit over two patents related to compact ISA-bus technology (Law360)

Rambus – Federal judge dismisses two summary judgment bids by Hynix, Samsung, Micron and Nanya to have Rambus patents found invalid (Law360)

Siemens – Siemens asks for $160 million in sensor patent case against Seagate Technology (Law360)

St Jude Medical – Prominent cardiologist accuses St Jude of stealing information relating to his invention and making pacemakers that infringes his patented technology (Law360)

Variant – Sub-Zero hits back at Variant with patent validity challenge (Law360)


US Copyright

National September 11th Memorial Museum implements Creative Commons (Creative Commons)  


US Copyright – Decisions

Allegation of registration without certificate sufficient for copyright claim: Stereo Optical Co, Inc v Judy (Chicago Intellectual Property Law Blog)


US Copyright – Lawsuits and strategic steps

Oracle – Judge dismisses copyright infringement claim in suit filed by Oracle alleging SAP illegally accessed and stole programming related to Oracle’s PeopleSoft and J D Edwards lines (Law360)

Perfect Bride – Owners of rights in PERFECT BRIDE Turkish reality show lodge trade mark and copyright complaints over MOMMA’S BOYS show: Global Agency Ltd, Luftu Murat Uckardesler v NBC Universal, Inc, Ryan Seacrest Productions, Inc, Glassman Media, Inc and John Does Nos 1-10 (The Trademark Blog) (Techdirt)


US Trademarks

Bare facts about naked licensing – presentation slides by Michael G Atkins (Seattle Trademark Lawyer)


US Trade Marks – Decisions

SDNY: First sale protects competing candy sales: Krasnyi Oktyabr, Inc v Trilini Imports (Rebecca Tushnet’s 43(B)log)

CD Cal: Mixed ruling on trade mark and false advertising plumbing case: Falcon Stainless, Inc v Rino Companies, Inc (Rebecca Tushnet’s 43(B)log)

TTAB precedential decision: TTAB affirms 2(a) disparagement refusal of HEEB for clothing and entertainment services: In re Heeb Media, LLC (TTABlog)

TTAB precedential decision: TTAB decides ownership dispute over JOYCE for dance theatre and charitable services: Ballet Tech Foundation, Inc v The Joyce Theatre Foundation, Inc (TTABlog)

TTAB dismisses ‘Sopranos’ opposition: HBO neglects to prove standing: Home Box Office, Inc v Vanderbilt Trading Partnership (not precedential) (TTABlog)

TTAB finds PUCK merely descriptive of hockey puck-shaped security tags:  In re Invue Security Products Inc (not precedential) (TTABlog)

Bacardi & Co and Conde Nast Publications prevail in trade mark dispute with Tastemakers Media over use of the word ‘tastemakers’ (Law360)


US Trade Marks – Lawsuits and strategic steps

Bambu – Bambu files trade mark infringement suit against Love Fatigue over Barack Obama-related designs (IPKat)

Black Sabbath – Tony Iommo, founder and lead guitarist of black Sabbath sues Live Nation of use of the Black Sabbath name (The Trademark Blog)

Do Denim – Do Denim files trade dress complaint against Fried Denim (The Trademark Blog)

Microsoft – Federal judge denies most of Microsoft’s bid for summary judgment in case claiming Ram Distribution sold counterfeit Microsoft items (Law360)

Monster Cable – Monster claims it’s not a trade mark bully following Monster Mini Golf eBay auction to raise funds to fight Monster’s trade mark infringement claims (Techdirt)



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