IP Think Tank Global Week in Review General Edition – Friday, 26 September 2008

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:

WIPO General Assembly opens: New Director-General delivers acceptance speech (IPRoo) (IAM) (WIPO) (WIPO) (WIPO) (IPKat) (WIPO) (Intellectual Property Watch) (Intellectual Property Watch) (Managing Intellectual Property) (WIPO) (IP Menu News)

CAFC: ‘Point of novelty’ design test thrown out; the value of amicus briefs: Egyptian Goddess, Inc v Swisa, Inc  (PATracer) (Managing Intellectual Property) (IP Updates) (The Invent Blog) (Patently-O) (Washington State Patent Law Blog) (PLI) (IP Updates) (Patent Prospector) (Anticipate This!) (The TTABlog) (Law360) (Law360) (Post Grant Opposition) (IP Spotlight)

Department of Justice letter to Senators Specter and Leahy on Enforcement of Intellectual Property Right Act of 2008: don’t make us be Big Content’s copyright cops (Ars Technica) (Public Knowledge) (EFF) (Techdirt) (EXCESS COPYRIGHT) (Public Knowledge)

OHIM: Extraordinary Join Meeting on ‘How to better balance OHIM’s budget – the way forward’: CTM fees to fall (Out-Law) (Class 46) (IAM) (Managing Intellectual Property) (IPKat)

Global – General

Tackling counterfeiting – Everyone has their own way of doing things (IP Think Tank)

WIPO General Assembly opens: New Director-General delivers acceptance speech (IPRoo) (IAM) (WIPO) (WIPO) (WIPO) (IPKat) (WIPO) (Intellectual Property Watch) (Intellectual Property Watch) (Managing Intellectual Property) (WIPO) (IP Menu News)

At last, negotiators field questions about Anti-Counterfeiting Trade Agreement (ACTA) and its drafting process at public meeting (Ars Technica)(Techdirt)

Green marketers discuss IP protection for a greener market (Intellectual Property Watch)

‘IP-5’ biggest Patent Offices meet as WIPO assembly proceeds on policies (Intellectual Property Watch)

New IP model proposed to facilitate technology access in developing countries (Intellectual Property Watch)

Preparing for an IP mediation: flow charts, check lists and mind maps (The IP ADR Blog)

The IP lifecycle – managing to the changing value of IP (Securing Innovation)


Global – Trade Marks / Domain Names / Brands

InterBrand’s ‘Best Global Brands 2008’ ranking… (IP finance) (Seattle Trademark Lawyer) (Canadian Trademark Blog) (Class 46) (Ars Technica)

Global – Patents
Managing IP launches Green IP Award (Managing Intellectual Property)
Global – Copyright

PlayStation 3 video DRM: two strikes and you’re out (Ars Technica)

Report on the first interdisciplinary research workshop on free culture (Creative Commons)


Australia’s innovation review – an IP joke (IP Think Tank)

Australia considers an overhaul of patent laws: ‘Venturous Australia – Building Strength in Innovation’ report (Technological Innovation and Intellectual Property) (Managing Intellectual Property)


Campaign perspectives in copyright positions (Michael Geist) (Michael Geist)

Canadian election and promise of $20K pa copyright royalty income tax exemption (EXCESS COPYRIGHT)

John Caffery of band Kids on TV warns about effects of C-61 (Michael Geist)

Latest Olympic trade mark dust up is of anthemic proportions: VANOC’s applications to register WITH GLOWING HEARTS and DES PLUS BRILLIANTS EXPLOITS (Canadian Trademark Blog) (Michael Geist) (Now, Why Didn’t I Think of That?)

Margaret Atwood on creativity (Michael Geist)

National Graduate Caucus on copyright reform (Michael Geist)

Supreme Court dismisses auto parts resellers’ leave to appeal in action seeking expungement of trade marks for non-distinctiveness and abandonment: Hyundai Auto Canada v Cross Canada Auto Body Supply (West) Ltd & Ors (Canadian Trademark Blog)

‘Why copyright?’ presentation by Michael Geist on response to Bill C-61, growth of Fair Copyright for Canada and potential for different copyright reform choices (Michael Geist) (Michael Geist) (Michael Geist)


19th US-China Joint Commission on Commerce and Trade (IP Dragon) (Managing Intellectual Property)

Chinese domain name scams (The Invent Blog)

Pirate server operators busted in Jiangsu (China Hearsay)


European Brands Institute publishes ‘Eurobrand 2008’ ranking most valuable European brands (Class 46)

European Patent Office examiners strike over patent quality – 18 September (Out-Law) (Innovationpartners) (Techdirt)

France falters on the Community patent (IAM)

MARQUES conference in Noordwijk (Part 7) (Class 46)

MARQUES produces intellectual asset management toolkit (IP finance)

New rules on organic labelling and trade marks: Commission Regulation 889/2008 (Class 46)

Non-minor amendments to protected designations of origin announced (Class 46)

OHIM fee compromise: the MARQUES response (Class 46) (IPKat)

OHIM: Extraordinary Join Meeting on ‘How to better balance OHIM’s budget – the way forward’: CTM fees to fall (Out-Law) (Class 46) (IAM) (Managing Intellectual Property) (IPKat)

A game of names, figures and letters – inventing new names for cars. (Class 46)

Brand owners give guarded welcome to Community trade mark initiative (Managing Intellectual Property)

Finland, the brand (Class 46)

Is France going to ban mentioning Bordeux, Burgundy, Champagne and Cognac online? (Techdirt)


Warner loses Hari Puttar case before Delhi High Court for delay in taking action and suppression of material facts (SPICY IP) (IPKat) (Techdirt) (SPICY IP) (Innovationpartners)

Delay in evidence suffocates trade mark opposition: Pidilite Industries Limited v Registrar of Trademarks (International Law Office)

Delhi High Court rules in Wipro’s favour in its trade mark infringement action against local Delhi company (RelatIP)

Delhi High Court: Mattel succeeds with trade mark claims against RJ Software over Scrabulous but copyright claims fail (Out-Law) (Managing Intellectual Property)  (SPICY IP)

Indian Patent Office invites public opinion on cigarette packet patent sought by Godfrey Phillips (ipmINDs)

India’s first sound mark given to Yahoo, Nokia to follow (RelatIP)

Reports suggest major battle brewing between Bisleri and Coca-Cola over ‘Maaza’ trade mark (SPICY IP)


Israel Patent Office ruling: submission of tender to local government not considered publication (The IP Factor)


Microsoft reduces Office price to combat Kenyan piracy (Afro-IP)


Latvia ratifies Singapore Treaty on Law of Trademarks (Class 46)


Court refuses to admit market survey evidence in passing-off action: Sanbos (M) Sdn Bhd v Tiong Mak Liquor Trading (M) Sdn Bhd (International Law Office)


Mexican plant breeders’ rights: facts and figures (IP tango)

Plant variety protection system continues to bear fruit (International Law Office)

Trade mark searches in Mexico (RelatIP)

Apparently heavy litigation on Pink Ribbon trade marks in The Hague District Court (Class 46)

New Zealand

New Zealand considers amending copyright law to allow for satire and parody; introduces legislation to amend photographer commissioner rule (Michael Geist) (EXCESS COPYRIGHT)

IP crimes sentencing options amended (IP tango)

District Administrative Court in Warsaw delivers judgment in dispute over SeXemisja (SeX screening/broadcasting) figurative mark (Class 46)

Russian Federation
Tanks against counterfeit merchandise (Class 46)
Sao Tome and Principe

Sao Tome and Principe deposits instrument of accession to Protocol Relating to Madrid Agreement Concerning the International Registration of Marks (Afro-IP)

South Africa

Cape High Court holds that clothing designer Jenni Button had transferred all rights to trade using her name to her former company (Afro-IP)

Shame on African publishers! (Afro-IP)

Decree 1431/2008 introduces important amendments to IPR application procedures in Spain (IPR Helpdesk)



Tanzania: IP overview (Afro-IP)

Prof G Kakoma brings copyright infringement action against government for use of national anthem (Techdirt) (The IP Factor) (Afro-IP)

United Kingdom

Chartered Institute of Marketers says law restricting use of words associated with 2012 Olympic Games is ‘draconian’ (Out-Law) (Techdirt)

Keeping fictitious characters fashionable and highly IP-protectable: Postman Pat gets a makeover (IPKat)

No residual goodwill in MINIMAX trade mark: Minimax GmbH & Co KG v Chubb Fire Limited (IMPACT)

Roundup of 18 September Nodus meeting (IPKat)

The Company Names Tribunal: adjudicating on opportunistic company name registrations (Class 46) (Out-Law)

UKIPO issue report ‘Application of the inventive step test in different technological areas’ (IPKat)

United States
US General

Discussion of Kiser, Asher and McShane’s paper ‘Let’s not make a deal: An empirical study of decision making in unsuccessful settlement negotiations’ (Peter Zura’s 271 Patent Blog)

IP meets Hollywood – ‘Flash of Genius’ movie (Intellectual Property Directions)

Make better use of Federal Circuit, says Chief Judge (Managing Intellectual Property)

Mediation confidentiality: As Bratz/Mattel mediator speaks, Mike Young wonders if it’s too much (The IP ADR Blog)

USPTO declares mail service interruption and emergency in connection with Hurricane Gustav (Patent Docs)

US Patents – Reform

Massive Patent Reform Bill introduced into Senate (PLI) (Peter Zura’s 271 Patent Blog) (Hal Wegner)

Tafas brief filed (PLI)

US Patents

USPTO and Korean IPO sign memorandum of understanding regarding more comprehensive cooperation on patent examination (Daily Dose of IP) (Patent Docs)

Accelerated examination excels (Patent Prospector)

As approval rate for US patents drop, applicant shift to appeals (Patent Baristas)

Discussion of Margo A Bagley’s draft paper ‘The Need for Speed (and Grace): Issues in a First-Inventor-to-File World’ (Peter Zura’s 271 Patent Blog)

Examiners blocking unavoidable/unintentional revivals (The Invent Blog)

Investors can predict the winners of the alternative energy race: follow the patents (IP Asset Maximizer Blog)

KSR at the PTO Board: A snap shot (Hal Wegner)

Loss of privilege and patent trolls (PLI)

New Federal Rule of Evidence 502 on inadvertent privilege waiver (IP Updates)

Open letter for USPTO General Counsel: Green zone reform; broader policy concerns (Hal Wegner)

Patent community disdain for academia: National Science Foundation fills the void, $4+ million this year (so far) (Hal Wegner)

Patents and Wall Street (Patent Librarian’s Notebook)

Patents: property or privilege? (Technological Innovation and Intellectual Property)

Patents: property rhetoric v institutions (Technological Innovation and Intellectual Property)

Post-Ebay, Patent Holders Drawn to ITC (Law360)

The future of business method patents after Bilski (Law360)

The ‘wearing down examiners’ fallacy (Just an Examiner)
Trouble for patent trolls as new company seeks to spike their guns (IAM)
US Patents – Decisions

CAFC restates DSU standard for establishing ‘active inducement’ and affirms permanent injunction: Broadcom Corp v Qualcomm Inc (Philip Brooks’ Patent Infringement Updates) (Patently-O) (IP Updates) (Hal Wegner) (Law360) (Law360) (IP Updates)

CAFC: Erroneous revival by PTO is not a cognisable defence in an infringement action: Aristocrat Technologies Australia v International Game Technologies (Hal Wegner) (Law360) (Patent Prospector) (IP Updates) (Peter Zura’s 271 Patent Blog) (Patently-O) (Ladas & Parry)

CAFC: ‘Point of novelty’ design test thrown out; the value of amicus briefs: Egyptian Goddess, Inc v Swisa, Inc  (PATracer) (Managing Intellectual Property) (IP Updates) (The Invent Blog) (Patently-O) (Washington State Patent Law Blog) (PLI) (IP Updates) (Patent Prospector) (Anticipate This!) (The TTABlog) (Law360) (Law360) (Post Grant Opposition) (IP Spotlight)

CAFC: CSIRO patent infringed but may be obvious: Commonwealth Scientific and Industrial Research Organisation v Buffalo Technology Inc  (Hal Wegner) (Law360) (Patent Prospector)

CAFC: Trade show demonstration leads to personal jurisdiction: Campbell Pet Co v Miale (IP Updates) (Law360) (Washington State Patent Law Blog) (PLI) (Patently-O)

CAFC affirms that Lucent’s $1.5B patent victory is gone: Lucent v Gateway, Dell, & Microsoft (Patently-O) (Patent Prospector)

Court finds Abbott’s patent obvious and unenforceable: Therasense, Inc v Becton Dickinson and Company (PATracer)

Federal judge rules Pioneer Corp did not infringe Samsung SDI Co’s patent related to plasma display technology (Law360)

International Trade Commission delivers preliminary ruling against Tate & Lyle clearing majority of accused companies of infringement of patented technology for making sucralose (Law360)

Judge finds Scantibodies’ own tests exonerate Immutopics (PATracer)

Summary judgment of noninfringement granted in part: Renhcol Inc v Don Best Sports (EDTexweblog.com)

Supreme Court infringement extraterritoriality: Glowproducts.com v Litecubes, LLC (Hal Wegner)

Board reviews prior art for obviousness, finds anticipation: Ex parte Spriesterbach (Benefit of Hindsight)


US Patents – Lawsuits and strategic steps

Amazon – Sipco files patent infringement suit against Amazon and others over home automation systems (Law360)

AT&T – 800 Adept settles patent suit it brought against AT&T over call-routing technology (Law360)

AT&T – AT&T sues Airbiquity over navigation system patents (Law360)

Canadian CryoCath Technologies- CryoCath and Boston Scientific unit settle patent spat (Law360)

Clear With Computers – BJ’s Wholesale latest to settle online sales methods patent suit with Clear With Computers (Law360)

DataTreasury – DataTreasury files patent infringement suit against Washington Mutual over cheque-imaging (Law360)

GEOSPAN – GEOSPAN’s patent infringement lawsuit against Pictometry remains ongoing and on track for early 2010 trial date (Philip Brooks’ Patent Infringement Updates)

Google – Google.org invests in geothermal technology, seeks patent on floating data centres (Green Patent Blog)

Halliburton Energy – Halliburton sued by Packers Plus Services over oil and gas well related patents (Law360)

Invitrogen – eBioscience files declaratory judgment suit against Invitrogen seeking ruling that its products do not infringe nanocrystal semiconductor patents (Law360)

Juicy Couture – Carolyn Rafaelian alleges Juicy Couture copying her popular patented adjustable bangle bracelet (Counterfeit Chic)

Kraft Foods Global – Procter & Gamble accuses Kraft’s Maxwell House brand products of infringing plastic coffee container patents (Law360)

LG Electronics – LG sues Petters Group, Westinghouse and Vizio over patents for digital television technology (Law360)

Linksmart Wireless Technology– AT&T Mobility dropped from lawsuit over wireless technology because Linksmart failed to state a claim against it (Law360)

Microsoft – Federal Circuit won’t reinstate $1.54 billion Microsoft verdict: Microsoft Corp. v Alcatel-Lucent (Law360)

Microsoft – Alacatel seeks to block Microsoft from bringing new products into communication patents dispute (Law360)

Motorola – Acacia Research Corp settles patent infringement claims with Motorola, single remaining defendant in suit over fleet management technology (Law360)

PA Advisors – PA Advisors drops internet search software patent claims against ContextWeb (Law360)

ProMOS – Lin Packaging, ProMOS strike patent dispute settlement deal (Law360)

Samsung – Acacia Research Corp subsidiary settles copier patent dispute with Samsung (Law360)

Tyco Electronics – ADC Telecommunications accuses Tyco of infringing five patents for fibre-optic products (Law360)

Yahoo – Wilfulness claims remain in Function Media’s patent infringement suit against Yahoo over online advertising programs (Law360)

US Copyright

Department of Justice letter to Senators Specter and Leahy on Enforcement of Intellectual Property Right Act of 2008: don’t make us be Big Content’s copyright cops (Ars Technica) (Public Knowledge) (EFF) (Techdirt) (EXCESS COPYRIGHT) (Public Knowledge)

More against the Orphan Works Bill – article by Mark Dery in PRINT magazine (Lessig Blog)

S. 3325: A stitch in time can save billions: Tom Sydnor’s short paper uring Congress to pass Enforcement of Intellectual Property Rights Act (IPcentral Weblog)

US Copyright – Decisions

Judge orders new trial, implores Congress to lower statutory penalties for P2P: Capitol v Thomas (EFF) (Techdirt) (Ars Technica) (EXCESS COPYRIGHT)

Novels with different plots not substantially similar: O’Leary v Mira Books (Chicago IP Litigation Blog)


US Copyright – Lawsuits and strategic steps

Activision – Activision begins suing file-sharers (Techdirt)

Energy Intelligence Group – Energy sues financial services firm and ratings agency for allegedly electronically forwarding its newsletters (Law360)

RIAA – RIAA rejects damages award, forces trial, looks hypocritical: Maverick v Harper (Ars Technica)

RIAA – RIAA sues file-sharer defence lawyer Ray Beckerman, claiming he filed ‘frivolous’ motions and that his blog ‘Recording Industry vs The People’ ‘demeans the integrity of these judicial proceedings’ (IPKat)

US Trademarks

It ain’t easy being green: use of eco-conscious terms in branding (Law360)

Licensing, naked or clothed (Property, intangible)
US Trademarks – Decisions

Approving corporation’s trade mark infringement can cause personal liability: Century 21 Real Estate, LLC v Raritan Bay Realty, Ltd (Seattle Trademark Lawyer)

Court finds no likelihood of confusion between PRO-LITE and PROLINE for chainsaw accessories: Trilink Saw Chain, LLC v Blount, Inc (43(B)log)

Red Sox see no humour in SEX ROD for clothing; TTAB finds lack of bona fide intent and deems mark vulgar, disparaging: Boston Red Sox Baseball Club Limited Partnership v Brad Francis Sherman (precedential) (The TTABlog)

OIL FREE JOJOBA generic for cosmetics, says TTAB: International Flora Technologies, Ltd v Desert Whale Jojoba Co (non precedential) (The TTABlog)

Preliminary injunction denied in trade dress dispute: Multi-Vet Ltd v Premier Pet Products, Inc (Property, intangible)

TTAB finds fraud in section 8 declaration, cancels registration of Italian wine company: Sierra Sunrise Vineyards v Montelvini SpA (non precedential) (The TTABlog)


US Trademarks – Lawsuits and strategic steps

Glaceau – Glaceau, owner of ‘vitaminwater’ brand for energy drinks, secures temporary restraining order against Vogue International’s ‘vitaminshampoo’ hair care products (Managing Intellectual Property)

Green Patent Blog – Prosecuting eco-marks Part IV: Green Patent Blog requests reconsideration, argues acquired distinctiveness (Green Patent Blog)

Major League Baseball – MLB relents and features video that was the subject of copyright takedown notice (Techdirt) (Lessig Blog)

Weight Watchers – Weight Watchers files trade mark infringement action against Campbell Soup Co over ‘points’ mark (Law360)



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