IP News Roundup: Week Ending April 3, 2020

Copyright

Sovereign Immunity trumps Copyright Protection: Allen v. Cooper, Governor of North Carolina, No. 18-877 (US, March 23, 2020)

Two weeks ago the Supreme Court decided that North Caroline could not be sued under the Copyright Remedy Clarification Act (CRCA) of 1990 as copyright law does not strips states' of their sovereign immunity.

The ruling, came years after Frederick Allen, a videographer, sued the state of North Carolina in 2013 for using his videos of the Queen Anne’s Revenge (a underwater 300 year old shipwreck belonging to the infamous Captain Blackbeard that was discovered off the North Carolina Coast in 1996) without first acquiring his consent.

Back when the shipwreck was discovered in 1996, North Carolina contracted with Intersal (a sea based recovery company) to conduct recovery operations of the ship. Intersal, in turn, hired Allen to document the recovery efforts. During the process, Allen obtained copyrights in all of his works surrounding the recovery of Blackbeard’s ship.

When North Carolina decided to publish some of Allen’s videos on its website, Allen sued for copyright infringement. The state moved to dismiss the lawsuit in federal court based on sovereign immunity grounds. Allen, however, countered that CRCA removed state’s sovereign immunity in copyright cases and the federal district court agreed. The Fourth Circuit reversed, stating that Congress lacked the ability to stripe sovereign immunity in CRCA.

The ruling, essentially, gives states the right to infringe on any copyright work that they see fit. Many companies filed amicus briefs to before the Supreme Court’s decision stating an outcome such as this would allow states unrestricted access to infringe upon everything from photographs to Hollywood movies.

Although this appears to be big lost for proponents of copyrights, given that this ruling effects a large number of companies, such as Hollywood studios, online content creators, book publishers, etc., Congress will now have plenty of pressure to pass an updated version of CRCA to appropriately stripe states of this sovereign immunity in regards to copyright law.

Captain Blackbeard

Sources:

• Nautilus Productions

• Supreme Court of the United States’ Opinion

IP News Roundup: Week Ending March 20, 2020 - The COVID19 Fight

Patents

Patent Holders Likely Not Suing for Infringement in Fight Against COVID19

Two Italian engineers, Cristina Fracassi and Alessandro Romaioli, began distributing 3D printed medical valves used in reanimation devices that help patients breathe by mechanically ventilating their lungs for free to a hospital located in Chiari, a small town in northern Italy.

The hospital in Chiari has been treating patients for the COVID19 for weeks and had began to run out of vital medical equipment, including ventilator valves used in its CPAP Hood system, given Italy’s quick raise in confirmed COVID19 cases (which at the time of this article sits at over 53,000 confirmed cases) and the strain it has put on Italy’s medical system. Given that the patent holder of the medical valves could not provide the valves as quickly as the hospital needed it, local manufacturers stepped in.

Both Fracassi and Romaioli had reached out the hospital’s supplier to obtain specifications of the medical valve, but the company had refused to give the two engineers its specifications due to medical manufacturing regulations and the fact that the company did not want to disclose any internal documentation. The two engineers were, however, able to reverse manufacturer the device and have since 3D printed over 2000 of these valves for about $1 each.

Have these engineers violated patent law in European Union for printing these valves? Yes. Will they, however, likely be sued for doing so? Most likely not.

Unlike previous articles published, the patent holder here is not threatening or has threaten legal action against these inventors. Additionally, Article 31 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, an international patent treaty, allows for such patent infringements in times of emergencies for both governments and other authorized individuals to use without the consent of the patent holders.

Although Fracassi and Romaioli may not appear to be “authorized individuals,” given the nature of the COVID19 pandemic, the fact that their patent infringement was in response to that pandemic, and that a general humanitarian effort is being called upon around the world to combat the virus, the likelihood of this valve patent holder and similar patent holders to sue for infringement in such scenarios appears to very low, if not at all.

Additionally, given that many other governments around the world, such as Governor Cuomo of New York, are calling for local manufacturers to assist in producing medical equipment to combat the virus, implied authorization under Article 31 can also be argued for patent infringement.

3D Printed Valve - Courtesy Michele Faini

Sources:

• The Verge

• The Fast Company

• Cristan Fracassi

• COVID 19 Stats

• NY Governor

• EU Patent law

• Agreement on Trade-Related Aspects of Intellectual Property Rights

Trademark

Trademark Trolls Continue to Pursue COVID19 Applications

As reported previously on Secondary Meaning News, trademark trolls have already begun filing applications to trademark names associated with COVID19 in what appears to be a get rich quick scheme. Although these applications are expected to fail for the same reasons previously described, that has not stop additional applications to be filed in the USA. For instance, additional trademark applications for terms such as “We Cured COVID-19” (US Serial Number: 88827108) and “Together We Survived COVID-19 (US Serial Number: 88827109) have been filed.

China has also seen its fair share of trademark applications that seek to profit off of COVID19 in bad faith, which has prompted it crack down on such applications. On February 27, 2020, the Chinese Trademark Office (CTO) issued the “Guidelines for the Examination of Epidemic Prevention and Control-Related Trademarks.” Specifically, this note states that the the names of people involved in an epidemic, marks related to the epidemic virus and disease, marks related to epidemic-related drugs, and other marks related to the epidemic, cannot be trademarked by anyone other than the individuals/companies directly involved in the fight against disease (i.e., COVID19).

More specifically, the note includes examples such as Houshen Mountain Hospital, Leishen Mountain Hospital, and Doctor Li Weliang, the hospitals and doctor that were in the front-lines of the COVID19 outbreak in Wuhan. The CTO states that other individuals/companies filing for these trademarks likely to cause significant social adverse effects and should not be allowed to proceed. Given this, the CTO has already rejected over 1,000 such COVID19 related trademark applications.

Sources:

• Trademark Trolls and the Coronavirus

• US Serial Number: 88827108

• US Serial Number: 88827109

• National Law Review

Other

Chinese Patent Applications Drop Amid COVID19 Pandemic

The China National Intellectual Property Administration (CNIPA) has released statistics showcasing that there has been a 9% drop in patent applications in the first two months of this year when compared to 2019.

Specifically, there were 224,741 invention patent applications filed, 391,865 utility model applications filed (a 9% increase) and 88,406 design patent applications filed (a 20% decrease). Annualized, these would still present a tremendous number of filings in the US, which had only 597,141 patent applications filed in all of calendar year 2018.

No specific reason for the drop in patent applications was highlighted, but given that the COVID 19 became an epidemic in China at this time, it is reasonable to assume that forced quarantine, limited communication, and general concerns of the new virus may have played a role.

Sources

• National Law Review

• Press Release CNIPA

IP News Roundup: Week Ending March 13, 2020

Patents

Nintendo Wins Patent Dispute Against Gamevice

On March 10, 2020, The United States Patent and Trademark Office’s Patent Trial and Appeal Board found that Gamevice’s U.S. Patent No. 9,126,119 B2, titled “Combination Computing Device and Game Controller with Flexible Bridge Structure” (‘119 patent, shown below) was invalid.

This patent allowed for controllers to be separated and reconnected using a bridge system to a computer for control and use. This is very similar to Nintendo’s Switch console that utilizes a similar mechanism to discount its controllers (called “Joy Cons”) from its portable game console. Gamevice had previously filed two suits against Nintendo for infringing upon its ‘119 patent. In 2017, Gamevice filed suit against Nintendo as it claimed Nintendo's Switch device was similar to Gamevice’s Wikipad. The case, however, was dismissed.

In its second suit in March 2018, Gamevice filed a claim requesting that the US International Trade Commission (US ITC) investigate Nintendo’s Joy-Con controllers used within its Nintendo Switch console. Although the US ITC did not find any concerns regarding Nintendo’s use of its Joy-Con controllers in relation to Gamevice’s patent, Nintendo decided to file an inter partes review of Gamevice’s patent to put an end to all future all suits from Gamevice regarding its controllers.

The US Patent and Trademark Office filed a "termination decision document" on its database this week that explains why it ruled in Nintendo's favor. The biggest factors seem to be Gamevice's use of a flexible bridge to connect the pair of controllers, plus the fact that each controller has to be fitted to a tablet or smartphone. These facets are in contrast to the Switch's wireless connectivity and its lock-on technology.

Sources:

• Patent Trial and Appeal Board

• RPX Insight

• Engadget