IP Think Tank Global Week in Review, General Edition – Friday, 28 November 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:

European Court of Justice raises bar for famous brand owners wishing to prove dilution: Intel Corporation v CPM United Kingdom (Managing Intellectual Property) (IPKat) (IPKat) (Class 46)

RPX Corporation – Defensive patent aggregation club (Securing Innovation) (Patent Fools) (Patent Prospector) (Techdirt) (IAM)

Peterlin’s predecessor Pinkos to advise Obama’s new patent team as PPAC member; Pinkos’ qualifications questioned (Hal Wegner) (Patent Docs) (IAM)

German court rules 2-second sample used by producer in Germany does not infringe Kraftwerk’s copyright (creativecommons.org) (Content Agenda) (Techdirt)



Global – General

Push for TRIPS changes reaches highest level at WTO as meetings intensify (Intellectual Property Watch)

Inherited IP: benefits and burdens (IP finance)


Global – Trade Marks / Brands

Quick review of trade mark filing statistics in US and EU show no evidence of slowdown in investment in trade mark filings (IP finance)


Global – Patents

Investors in the green economy: you could lose your investment in green innovators by failing to identify the green inventors that came before them (IP Asset Maximizer)

Is Nichia’s LED litigation war chest merely monopoly money? (Green Patent Blog)


Global – Copyright

Conference calls on WIPO to boost support for collective management of copyright and related rights (WIPO)

Librarians take the copyright battleground in developing countries (Intellectual Property Watch)

Creative Commons study on how people understand the term ‘noncommercial use’ (Creative Commons)



Time to follow the example of Nashville? – Tackling music piracy in Africa (Afro-IP)



Patent infringement and account of profits: Black & Decker Inc v GMCA Pty Ltd (No 5) (IP Down Under)

MONSTER ENERGY keeps battling: Hansen Beverage Company v Bickfords (Australia) Pty Ltd (Australian Trade Marks Law Blog)

High Court provides guidance on contributory infringement provision: Northern Territory v Collins (International Law Office)

 PricewaterhouseCooper report – Making the intangible tangible, the economic contribution of Australia’s copyright industries (IP Down Under)

Productivity Commission asked to report on copyright restrictions on parallel importation of books – issues paper (IP Down Under)

Agreement with WIPO in relation to Australian Patent Office as an International Searching Authority and International Preliminary Examining Authority under Patent Cooperation Treaty (IP Down Under)



Again harsh words in US-China Economic Security Review Commission Report (2008) about intellectual property protection/enforcement in China (IP Dragon)

‘Free Trade Agreement China-Peru effective 2009’ (IP Dragon)

Intellectual property in China? You have come to the right place (IP Dragon)

Court protects transliteration of well-known international enterprise name (International Law Office)

How to go to China for innovation (China Law Blog)


Costa Rica

Costa Rica approves Free Trade Agreement between US, Central America and Dominican Republic (CAFTA) (IP tango)



EU judges on Community patent and court (IAM) (Managing Intellectual Property)

European IP forum considers standards-setting (Managing Intellectual Property)

European Court of Justice raises bar for famous brand owners wishing to prove dilution: Intel Corporation v CPM United Kingdom (Managing Intellectual Property) (IPKat) (IPKat) (Class 46)

Court of First Instance: ECOBLUE appeal fails: ecoblue AG v OHIM, Banco Bilbao Vizcaya Argentaria SA (Class 46)

Court of First Instance: No interim relief for ‘non-urgent’ collecting societies: Cases T-398/08, T-401/08, T-410/08; T-411/08 and T-422/08 (IP finance)

Genuine use and free distribution of goods: AG Ruiz-Jarabo Colomer’s opinion in Silberquelle GmbH v Maselli-Strickmode GmbH (Class 46)

Temperatures rise in ECJ chocolate bunny melt-down: Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (IPKat)

Court of First Instance: Bang & Olufsen 3D trade mark: substantial value in shape (Class 46)

OHIM Board of Appeal rules relevant public will not view VAC-VAC as double contraction of the word vacuum (Class 46)

The Kat roars – Parliament responds (failure of Curia to furnish French or English version of AG opinion in Silberquelle GmbH v Maselli-Strickmode GmbH) (IPKat)

OHIM grants 500,000th community trade mark (IPKat)



German court rules 2-second sample used by producer in Germany does not infringe Kraftwerk’s copyright (creativecommons.org) (Content Agenda) (Techdirt)


Hong Kong

Hong Kong SAR and Peru sign Cooperation Arrangement on Trade and Investment Facilitation (IP Dragon)



Delhi High Court: No ‘confusion’ for dilution under section 29(4): Ford Motor Co v C R Borman (Spicy IP)

To be or not to be patent free – Indian government ‘Draft Policy on Open Standards for E-Governance’ (Spicy IP)

Tirumala Tirupathi Devasthanam files for geographical indication status for Tirupati Laddu (Spicy IP)

Scotch whisky seeks geographical indication protection in India (International Law Office)



Israel Patent Office patent database goes online (The IP Factor) (IPKat)



‘Umbrella theory’ in Japan: Holes in a theory of partial priority (Hal Wegner)



Summary of recent trade mark decisions (The Trademark Blog) (Afro-IP)

Interview with Copyright Board CEO (Afro-IP)


Latin America

Gurry urges Latin American countries to take part in PCT (Managing Intellectual Property) (IP tango)



District Court of The Hague decision on Davidoff’s Cool Water testers and exhaustion: Coty v Tico Trading (Class 46)


New Zealand

Followers of fashion: spillover reputation and international brand protection (International Law Office)



Nigerian trade mark alphabet (Ip’s What’s Up)



TOKAJI as Hungarian GI cannot be monopolised as trade mark (Class 46)

Trade mark in design (Class 46)



Changes in the Portuguese Industrial Property Code (EPO)


South Africa

Springbok: private ownership of a discarded national symbol (International Law Office)

Tune in for live ANC v COPE name battle (Afro-IP)



Alicante Commercial Court enforces French geographical indication ‘Champagne’ (Class 46)



AFRI-COLA part descriptive, part deceptive, part registrable (Class 46)



General Assembly of the Court of Appeal confirms status of bad faith as a ground of invalidity: Case 2008/11-501E 2008/507 (Class 46)


United Kingdom

New UK-IPO name, cartoon crew (IPKat) (IPKat)

Not in front of the children – UKIPO trade mark registration practice and public policy/accepted principles of morality (IPKat)  

Over-defended IP action – who pays the costs?: Peer International Corporation, Southern Music Publishing Co and Peermusic (UK) Ltd v Editoria Musical de Cuba (IP finance)

Justice Kitchin upholds British Beer and Pub Association and British Hospitality Association appeal against decision of Copyright Tribunal on basis for calculation of fees which members have to pay for background music (IPKat)

Contempt of court: the risks of false testimony in trade mark infringement proceedings: KJM Superbikes Ltd v Hinton (IPKat) (IPKat)

‘Unwrapping the Law: Reflections on Christo, Copyright Law and Conceptual Art’ LLM dissertation (IPKat)


United States

US General

IP is a key to an Indian and Chinese challenge of US leadership according to US National Intelligence Council report (IAM)

Draft Chamber of Commerce USPTO report ‘Recommendations for Consideration by the Incoming Administration Regarding the US Patent and Trademark Office’ now available online (IAM)

Fast track arbitration for small IP disputes through the American Arbitration Association (IP ADR Blog)

Federal Circuit internal operating procedure (Patently-O)


US General – Lawsuits and strategic steps

Guru Denim – Guru Denim files trade mark and copyright infringement lawsuit over sales of allegedly counterfeit ‘True Religion’ jeans: Guru Denim v Hercel Zarrabian et al (Los Angeles Intellectual Property Trademark Attorney Blog)


US Patent Reform

Inter partes re-examination reform: open letter to Kevin Rivette, Chair, PPAC (Hal Wegner)

Peterlin’s predecessor Pinkos to advise Obama’s new patent team as PPAC member; Pinkos’ qualifications questioned (Hal Wegner) (Patent Docs) (IAM)


US Patents

PTO suppression of petitions decisions (Hal Wegner)

Raymond T Chen appointed as new Solicitor of the USPTO (Hal Wegner)

Patent Office issues appeals rules clarification (Patent Docs) (Peter Zura’s 271 Patent Blog)

Citation of law review articles (Patently-O)

Rewarding breakthrough innovation: Egyptian Goddess v Swisa (Patently-O)

Poor economic forecast and patent prosecution (Patently-O)

Tech doesn’t want to stop patent trolls (PLI)

RPX Corporation – Defensive patent aggregation club (Securing Innovation) (Patent Fools) (Patent Prospector) (Techdirt) (IAM)

Article One Partners launched as new global community to legitimise validity of patents (Securing Innovation)

IP merchant bank or litigation? (Philip Brooks’ Patent Infringement Updates)


US Patents – Decisions

CAFC: ‘Summary of invention’ with general, non-suggestive language not limiting; late citation of authorities at oral argument: Medegen MMS, Inc v ICU Medical, Inc (Promote the Progress) (Law360) (Hal Wegner)

CAFC: Evidence to overcome obviousness: Anderson Corporation v Pella Corporation (non precedential) (Promote the Progress) (Patent Prospector) (Law360)

CAFC: ‘Becom[ing] a more trustworthy officer of the court’; standards of review of grants and denials of summary judgment: Lacks Industries, Inc v McKechnie Vehicle Components USA, Inc (Hal Wegner) (Promote the Progress)

Are inter-partes reexams losing their ‘staying power’?: ESN v Cisco Systems (Peter Zura’s 271 Patent Blog)

BPAI: ‘Programmed computer method’ not patentable subject matter: Ex parte Halligan (Patently-O)

Double patenting: In re Basell Poliolefine Italia SPA (Promote the Progress)

Ability to challenge makeup of the BPAI on appointments clause of Constitution waived when not presented to the Board: In re DBC (Promote the Progress)

Sony to pay $18.5 million for infringement of Agere Systems’ patent (Ars Technica)

Arthrex permanently enjoined from making or selling suture anchors that infringe Smith & Nephew Endoscopy patent (Law360)

Mass Engineered wins $3 million verdict against Dell, Ergotron, CDW and Tech Data over patent for multi-screen display units (Law360)

Federal judge finds Triune’s patent infringement complaint frivolous and grants sanctions to defendants Pantech & Curitel Communications, LG Electronics and Walt Disney Co’s mobile phone division (Law360)


US Patents – Lawsuits and strategic steps

Apple – EMG Technology asserts new patent against Apple over iPhone’s touch screen (Law360)

Avid Identification Systems – Avid, Crystal Import settle cases in two different courts involving antitrust and patent claims over technology for identifying lost pets and livestock (Law360)

Beacon Power – Beacon Power settles lawsuit filed by Arete Power over patent related to flywheel energy storage technology (Law360)

Cryomed – Podiatrist Dr L M Fallat sues Cryomed for patent infringement and defamation (Law360)

Dell – Dell, Gateway reach settlement with Linex in patent suit over wireless antenna (Law360)

Dicam – Dicam asserts cell phone patent against Sprint, Sanyo (Law360)

Japanese Cash Machine – DC for the District of Nevada grants Japanese Cash Machine’s motion to bifurcate trial to consider inequitable conduct separately (Law360)

Kodak – Research in Motion seeks declaratory judgment that four of Kodak’s digital imaging and data integration system patents are invalid or unenforceable (Law360)

Medtronic – Medtronic loses jury trial bid in defibrillator suit against Boston Scientific unit Guidant Corp (Law360)

MicroStrategy – Federal magistrate judge awards Business Objects Americas approximately $2.4 million in attorneys’ fees, holding that majority of MicroStrategy’s claims were pursued in bad faith (Law360)

Qualcomm – Group of technology companies ask CAFC to reconsider its September ruling upholding ban on Qualcomm’s cellular chips and software (Law360)

Rambus – Federal Trade Commission files appeal with Supreme Court over allegations Rambus violated antitrust law by concealing information about its patent from standard-setting organisation (Law360)

Ryn Korea – ITC to investigate Korean shoemaker Ryn Korea for patent infringement at the request of Masai Marketing and Trading (Law360)

Samsung – InterDigital settles all outstanding patent litigation and arbitration involving Samsung’s sale of second- and third-generation cell phone handsets (Law360)

Texas Advanced Optoelectronic Solutions – TAOS files patent infringement suit against Intersil over digital ambient light sensor technology (Law360)

TiVo – Bench trial ordered to determine whether Dish’s new software for its digital recorders violates TiVo’s patent (Law360)


US Copyright – Decisions

Licensor of ‘Gone in 60 Seconds’ can pursue copyright and trade mark claims for retained rights in character ‘Eleanor’ the car: Halicki Films, LLC v Sanderson Sales & Marketing (Property, intangible)


US Copyright – Lawsuits

CBS Corp – Documentary director, Timothy Burke, sues CBS Corp alleging the network broadcast portions of his film without permission (Law360)

Dr Seuss Enterprises – Louisville scraps plans to use Dr Suess village and characters as part of Christmas display after ‘cease and desist’ letter from Dr Seuss Enterprises (Excess Copyright)

Paramount Pictures Corp – Federal judge dismiss some claims brought by ‘Funny Face’ director against Gap and Paramount Pictures over clothing retailer’s use of Audrey Hepburn’s image (Law360)

Toho Co – Think Godzilla’s scary? Meet his lawyers – Toho Co’s Godzilla IP protection efforts (WIRED)

Tribune Media Services – Warren Beatty sues Tribune over Dick Tracy rights (Law360)


US Trademarks

Michael E Hall opinion ‘The PTO’s dubious new Trademark Rule 2.85(f) concerning identifications in Madrid applications’ (TTABlog)

Brand Obama (Rebecca Tushnet’s 43(B)log)


US Trade Marks – Decisions

Court of Appeals for the Fifth Circuit upholds trade marks for school colours (Law360)

District Court: Dismissal for failure to prosecute: costs awarded not attorney’s fees: Vito & Nick’s, Inc v Barraco (Chicago Intellectual Property Law Blog)

‘Patently untenable’ trade mark claim: Robert Welsh dba Big Ten Development v Big Ten Conference (Property, intangible)

TTAB precedential decision: TTAB resolves procedural spat over discovery conference: Guthry-Renker Corp v Michael Boyd (TTABlog)

TTAB precedential decision: Failure to serve notices of opposition leads to swift TTAB dismissal: Schott AG v L’Wren Scott (TTABlog)

TTAB precedential decision: TTAB grants motion to compel proper initial disclosures: Influance, Inc v Elaina Zuker (TTABlog)

TTAB reverses 2(b) refusal of mark containing portion of Canadian flag: In re Certa ProPainters, Ltd (non precedential) (TTABlog)


US Trade Marks – Lawsuits and strategic steps

ING Direct Bancorp – ING files lawsuit against Discover Financial Services for alleged infringement of ‘orange ball’ trade mark (Law360)

MGM Mirage – Federal judge refuses to dismiss trade mark lawsuit filed by operator of Casino de Monte-Carlo in Monaco against MGM claiming its Monte Carlo Resort & Casino in Las Vegas (Law360)

Miyano Machinery USA – Trade mark preliminary injunction granted: Miyano Machinery USA v MiyanoHitec Mach. (Chicago Intellectual Property Law Blog)

Taco Bell – Rapper 50 Cent launches lawsuit against Taco Bell over ad campaign involving mock public letter to 50 Cent (Techdirt) (The Trademark Blog)



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