IP Law Watch – Page 11 – Legal issues, law and regulations concerning the world of IP

Indirect Patent Infringement Down Under

Jun 07 2022

The issue of contributory infringement of a patent under the Australian Patents Act 1990 (Act) does not often arise for consideration by the Australian judicial system. When it does arise, the question of whether or not the product supplied is a ‘staple commercial product’ under the relevant provisions of the Act is always of particular interest.

In only a few cases has the impugned product been held to be a staple commercial product, and so any case that expands upon that product class is a particularly valuable aid. It is therefore of interest that the Full Court of the Australian Federal Court has recently considered contributory infringement in Hood v Down Under Enterprises International Pty Limited [2022] FCAFC 69.

Diving Deeper Into the Amendments to the Australian Designs Act: Tips, Tricks and Risks (Part 2)

May 27 2022

In part 1 of this series (here), we considered the welcome introduction of a 12 month grace period that came into effect as of 10 March 2022. The grace period protects a design owner against inadvertent disclosure of a design before an application for protection of the design is filed – previously, this was fatal to having enforceable design rights. In part 2, we delve into the prior use infringement exemption that concurrently came into effect to mitigate the commercial risks that might arise as a result of the grace period.

Ronaldinho and Henry Marks Step Over Bad Faith Finding

May 25 2022

Bad faith has been a hot topic in UK and EU trade mark matters in recent years – not least in the sports world where recent prominent cases have concerned the football superstars, and one time teammates, Lionel Messi and Neymar. Whilst in those cases bad faith was found to be a valid ground for refusal of the trade marks in question, which the players did not consent to, a recent decision of the Appointed Person in the United Kingdom has provided an important clarification on how bad faith objections must be raised in the UK.

FTC Imposes Multi-Million Dollar Penalties for Deceptive Consumer Reviews; Best Practices Reminders on Endorsements and Testimonials

May 24 2022

In a widely distributed Notice of Penalty Offense sent to over 700 companies last year, the Federal Trade Commission (“FTC”) warned businesses about use of fake endorsements and consumer reviews. Forewarned should be forearmed.” This is a continuing reminder to companies to have systems in place to ensure endorsements and reviews comply with FTC guidelines. Companies that are found to be in violation after receiving a “we’re watching you” letter can face civil penalties of up to $46,517 per violation.

Recipients of the FTC’s letter included major consumer products companies, retailers, and advertising agencies. Recipients were not accused of any wrongdoing but were put “on notice” of their responsibilities under the FTC Act and the Commission’s increased focus on specific advertising practices, particularly endorsements.

Does Brexit Always Mean Brexit?

Apr 28 2022

The General Court recently decided the case Nowhere v EUIPO (Case T-281/21) and overturned the EUIPO decision (and general position) on the validity of UK earlier rights in the context of EU oppositions post-Brexit.

The EUIPO Communication No 2/20 made clear that the EUIPO will treat all UK rights to cease to be ‘earlier rights’ for the purposes of inter partes proceedings. However, the General Court held that the EUIPO Second Board of Appeal made an error in rejecting an opposition solely due to the UK earlier rights losing validity in the EU post-Brexit and that the relevant date to assess the validity of UK earlier rights should be the filing date of the opposed application.

Australia Re-Aligned With Major Jurisdictions for AI-Based Inventorship

Apr 22 2022

In July 2021, Australia was thrust into the spotlight as a favourable country to patent AI-created inventions as a result of the Australian Federal Court’s decision in Thaler v Commissioner of Patents [2021] FCA 879 – see our previous coverage here.

At first instance, the Court construed “inventor” as including “a person or thing that invents”.¹ The decision was an appeal from a Patent Office hearing where the Office rejected a patent application in the name of Stephen L. Thaler as the creator of the “inventor”, AI system (Device for the Autonomous Bootstrapping of Unified Sentience (DABUS)). As DABUS had autonomously generated the invention, for the purposes of the patent application Dr Thaler derived title to the invention from DABUS.

Copyright Dispute Over Andy Warhol’s Portraits of Prince Heading to U.S. Supreme Court

Mar 30 2022

The U.S. Supreme Court will review the standard for a “transformative” work as “fair use” under the Copyright Act. Specifically, whether a second work of art is “transformative” when it conveys a different meaning or message from its source material, or not where it recognizably derives from and retains the essential elements of its source material.

The Court agreed to review the Second Circuit’s decision that Andy Warhol’s Prince Series portraits of the musician Prince did not make fair use of celebrity photographer Lynn Goldsmith’s photograph of Prince. Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, No. 21-869 (petition granted Mar. 28, 2022).

The Kremlin’s Intellectual Property Cold War: Legalizing Patent Theft with Decree 299

Mar 28 2022

Russia’s bold response to Western economic sanctions following its invasion of Ukraine now includes what amounts to legalizing patent theft against “unfriendly countries.” On March 5, 2022, the Kremlin issued Decree 299, which states that Russian companies and individuals can use inventions, utility models and industrial designs without owner permission or compensation, if the patent hails from a list of “unfriendly countries.”¹ Specifically, the decree sets compensation for patent infringement at “0%” if the patent holder is a citizen of, is registered in, or has a primary place of business or profit in any of the 48 countries Russia previously designated as “unfriendly.”² Unsurprisingly, the list includes the United States, Great Britain, European Union members, Australia, and other critics of Russia’s actions against Ukraine.

Diving Deeper Into the Amendments to the Australian Designs Act: Tips, Tricks and Risks (Part 1)

Mar 25 2022

Protecting the visual appearance of a product, or its packaging, should be a key consideration in any comprehensive IP protection strategy. We have previously written about amendments to the Australian Designs Act 2003 (Cth) (here and here). All changes to the Designs Act have now come into force as of 10 March 2022. In this first of a series of articles, we delve deeper into amendments that introduce the long awaited grace period.

Even in the Digital Age, Only Human-Made Works are Copyrightable in the U.S.

Mar 21 2022

The U.S. Copyright Office Review Board refused copyright protection of a two-dimensional artwork created by artificial intelligence, stating that “[c]urrently, ‘the Office will refuse to register a claim if it determines that a human being did not create the work,’” see recent letter. The Compendium of U.S. Copyright Office Practices does not explicitly address AI, but precedent, policy, and practice makes human authorship currently a prerequisite.