IP News Roundup: Week ending 03/06/2020

OVO vs Bellroy

Trademark

"I let Ollie take the owl, told him brand it for me," not Bellroy! - OVO vs Bellroy

If you have heard of the rapper Drake (Aubrey Drake Graham), then you have probably also heard of his fashion line, October’s Very Own (OVO), which is represented by the standing owl below.

OVO, which was founded in 2008, has grown to a roughly $50 million fashion brand at the end of 2018, an admittedly impressive feat for a 10 year old company. It specializes in the sale of accessories, clothing, and shoes. For any brand gathering international success and attention, protecting its IP becomes increasingly important, which is exactly what OVO is attempting to accomplish in its new law suit against Bellroy PTY Ltd and 101 Holdings Inc (DBA Clae).

Bellroy, which also uses an owl logo, is an Australian company founded in 2010 that specializes in selling small leather goods such as smartphone cases and wallets. Bellroy, since its inception, has also gathered international success and attention and has earned revenues close to $60 million at the end of 2018.

What’s at the epicenter of this lawsuit, however, is that Bellroy had changed its logo from a crouched owl to a more up-right owl that very closely resemble’ s OVO’s owl logo, according to OVO. This change was done recently when Bellroy launched a joint venture with Clae for developing and marking Bellroy branded shoes, an industry where OVO is already selling shoes.

According to OVO, Bellroy changed its logo to more closely resemble its logo to cause customer confusion and mislead the public into thinking that Bellroy’s goods either emanate from, or in some manner are associated or affiliated with OVO, i.e., essential Bellroy is attempting to profit from OVO’s goodwill. OVO wants Bellroy and Clae to stop using the new owl logo and is seeking an unspecified amount of damages as well as any profits made from Bellroy’s and Clae’s collaboration.

Sources:

• Court Docket (Bloomberg)

• Compliant

• OVO timeline

• OVO 2018 revenues

• Bellroy

• Bellroy revenue

Patent

Apple loses Caltech lawsuit and settles Battery lawsuit

If you owned an iPhone 6, 6s, or 7 in the past, you may have heard of and/or experienced slowdowns with your phone that forced you to upgrade or pay for a battery replacement. Earlier this week, however, Apple has agreed to settle a class action lawsuit for $500 million and pay all owners $25 for slowing their older generation phones without first informing their owners.

If that wasn’t enough, Apple also lost an appeal this week to overturn a patent lawsuit bought by California Institute of Technology (Caltech) against it and Broadcom Inc.

Earlier this year, a federal jury in Los Angles found that both companies were infringing on Caltech’s patents on Wi-Fi technology and were ordered to pay Caltech $1.1 billion in damages. Specifically, Apple was ordered to pay $837.8 million and Broadcom was ordered to pay a $270.2 million verdict, according to lawyers for Caltech.

Apple pushed to have this verdict thrown out by arguing that Caltech’s patents were invalid, but the United States Court of Appeals for the Federal Circuit has ruled against Apple’s bid to overturn the decision. Apple tried to counter the claims by saying it used common Wi-Fi chips supplied by Broadcom, suggesting it was not responsible for the development of encoding and decoding solutions that might infringe on Caltech's IP.

Apple and Broadcom, however, plan on appealing this ruling.

Sources:

• Apple settlement for older phones

• Los Angles Times’ summary of lawsuit

• Apple Insider’s summary

IP News Roundup: Week Ending Feb 28, 2020

Damien Riehl at TEDxMinneapolis

Trademark

Trademark Trolls and the Coronavirus (COVID-19)

As summarized earlier this week, there are multiple trademark applications that appear to be trying to make a quick buck by trademarking names such as CORONAVAX, WUHAN CORONA MVAX, COVID-19 VAX., etc. All of these applications, however, will most likely fail do to the fact that they are merely descriptive and appear to be filed in bad faith. A more in-dept summary can be located here.

China’s New Trademark Law and What to Expect Going into 2020

On November 1, 2019, China’s new trademark law went into effect to curb bad faith filings and provide greater statutory damages against bad faith filers. Specifically, articles 6, 19, 33, 44, 63, and 68 of China’s trademark law have been amended to increase trademark protection for bonda fide good intent users of trademark. Will this law, however, help deter future bad faith filings and allow true IP owners to get their marks back? In short, the answer appears to be yes.

The updated Chinese trademark law intends to terminate trademark squatters, i.e., individuals that register a trademark with no intent to use other than to sue or require the true IP’s owner to buy the mark from them. Given China’s principle of “first to file” (i.e., the person who is the first to register a trademark in China will acquire the exclusive right to use it), a popular brand can lose its mark to an individual with bad intent by simply losing to the race to China’s Trademark Office (CTO). The new amendments to the Chinese trademark’s laws, however, looks adjudicate this problem by doing the following:

• Article 4 allows bad-faith filings at the application stage to be rejected;

• Article 33 allows for objection of bad-faith applications during the announcement period, i.e., during the three-month announcement period after the CTO announces the filing of a new mark, anyone may object to the mark and the CTO may subsequently refuse the mark.

• Article 44 allows for the cancellation of bad-faith registrations through invalidation proceedings, i.e., any organization and individual may request a mark to be cancelled due to bad-faith registration.

• Article 19 and 68 require that the CTO to comply to the new law by requiring the agency to reject bad-faith filings or face administrative penalties.

The largest number of trademark registrations for the last 18 years in a row have been in China. Although it is too early to cite trademark registrations for the year ending 2019, CTO has been denying trademark applications on based on bad faith filings in the past. Specifically, in 2018, the CTO denied around 100,000 applications based on this practice. Given now that rejection on bad faith has been officially codified in Article 4, industry experts, such as Fanny Zhang (Business Advisory Services Manager at Dezan Shira and Associates’ Beijing office) believe that the number of rejections is expected to go up.

Additionally, given that now article 44 allows for any organization or individual to challenge a mark on bad-faith grounds, industry experts such as Reinout van Malenstein (HFG Law & Intellectual Property) and Loke-Koon Tan (Partner at Baker McKenzie Hong Kong), all agree that this new law should make it easier for brand owners to re-acquire their mark and fight against any future filings against their mark.

Moving on forward in 2020, it will be interesting to see how many marks are contested and if China will continue to hold the title of most Trademark registrations annually given the first to file principle will no longer guarantee exclusive use to a mark.

Sources:

· Mondaq

· China Briefing

· XinhuaNet

· Baker and McKenzie

· IP Fact sheet

Copyright

Music for All, Copyright for None

If two artists, unbeknownst to each other, create a very similar sounding melody, either or can find themselves in the mist of a copyright litigation lawsuit with the other. This has happened and continues to happen all of the time in copyright law.

One lawyer, however, had the idea to use a computer algorithm to generate every possible 8-note melody imaginable to copyright and then release into the public domain. This, would essentially end copyright litigation for all future songs that claim copyright infringement of new melodies. That lawyer, Damien Riehl, along with his programmer Noah Rubin, did exactly that.

Damien and Noah built a software capable of generating 300,000 melodies a second. This software eventually lead to the creation of 68 billion 8 note melodies, which Damien later released into the public domain.

Damien, being a musician himself, did this to not stifle creators, but to allow them to create freely without the threat and cost of potential litigation. "The copyright system is broken and it needs updating. Under copyright law, numbers are facts, and under copyright law, facts either have thin copyright, almost no copyright, or no copyright at all" Mr Riehl said in a recent TedX Talk explaining the project. "So maybe if these numbers have existed since the beginning of time and we're just plucking them out, maybe melodies are just math, which is just facts, which maybe are not copyrightable."​

The melodies have been placed online with the intent of being further expanded. Noah’s data set has yet to encounter legal opposition in court.

Sources:

· Copyrighting all the melodies to avoid accidental infringement | Damien Riehl | TEDxMinneapolis

· Independent

Patent

Sad Face Emoji: Slack Technologies Inc. sues Phoji Inc. for Declaratory Judgement

Last week, Slack Technologies Inc. sued Phoji Inc in the United States District Court for the Northern District of California for declaratory judgement that it has not infringed upon Phoji’s U.S. Patent 9,565,149 B2 (‘149 patent). In short, Phoji has reached out multiple times to Slack Technologies claiming that it is infringing on its mobile messaging patent that allows users, in relevant part, to create and attach images (such as emojis) and audio without needing to go through the traditional method of attaching the image to a message. Slack has countered stating that its methodologies in its Slack Emoji platform (which allows users to select and insert emoji’s from its large catalog) are distinct from the ‘149 patent.

Specifically, Phoji, Inc. states that “the utilization and deployment of the Slack Emoji and the recent deployment of the clickable feature make us believe that Slack would find it beneficial to license Phoji, Inc. intellectual property,” as this clickable feature automates the creation and attachment of emojis to messages similar to the ‘149 patent. Slack, however, has refuted every claim raised by Phoji.

“As one non-limiting example, Claim limitation 1[e] [of Phoji’s patent that allows for the automation of emojis] requires a ‘semantic model’ configured to categorize a ‘personalized image library based on contact data and emotional state data.” Phoji has alleged Slack’s Emoji library of meeting the claim limitations of claim 1 of the ’149 patent reciting a “semantic model.” But a Slack user’s Emoji library is not ‘categorize[d]’ ‘based on contact data and emotional state data,’ as required by claim 1. Rather, a Slack user’s Emoji library is organized based on frequency and recency of use and a common physical attribute between Emojis. One exemplary common physical attribute used for organizing the Emoji library is grouping all flag Emojis (e.g., American Flag and Canadian Flag) together under an attribute called ‘Flags . . . . .’” (Slack Technologies, Inc. v. Phoji, Inc., No. 3:20-CV-01509 (N.D. Cal. Feb. 28, 2020).

Slack has also asked for a jury trail if the patent case is to proceed in court.

Sources:

https://www.law360.com/dockets/download/5e59bfff07b67500b552fdd5?doc_url=https%3A%2F%2Fecf.cand.uscourts.gov%2Fdoc1%2F035119016489&label=Case+Filing

Trademark Trolls and the Coronavirus (COVID-19)

On Feb 11, 2020, And Still, LLC (a private limited liability company in Massachusetts) filed a trademark application with the United States Patent and Trademark Office (USPTO) for the mark “COVID-19 VAX,” under the US serial number 88792612. If this name sounds familiar, that’s because it is. COVID-19 is the name the World Health Organization has given to the newly discovered coronavirus that was unknown before its outbreak in Wuhan, China in December 2019.

This mark has been filed as an “intent to use” application for exclusive use of the term in the vaccine industry. This means that if And Still, LLC proves within the next six months that it is using this name in commerce and the USPTO approves of the application, And Still, LLC would have exclusive use of “COVID-19 VAX” in the medical vaccine industry.

But can an applicant gain a monopoly on such a novel or descriptive term that has only recently been introduced into the world’s vocabulary? The answer, in short, is most likely no. As most trademark attorneys will point out, one of the most basic concepts of trademark law is that a term can not be trademarked if it is merely descriptive (see TMEP §§1209.01(c)–(c)(iii)). Descriptive marks, as the name implies, are marks that simply describe a product or mark, which cannot be trademarked.

Here, adding the word “VAX” (a word normally used as short hand for vaccine) to the official name of a virus is providing no function other than simply describing that the potential product or service is a vaccine for the COVID-19, i.e. the name in this application appears to be descriptive. Other industry personal, such as Robert Reading (former trademark analyst and now director at CompuMark) agrees that this mark is “likely to fail” the descriptive test to be trademarkable.

Additionally, “And Still, LLC” does not appear to be involved in the pharmaceutical, manufacturing, or medical industry. Thus, the likelihood that this company will introduce a vaccine to COVID-19 within the next six months and distribute it in commerce is extremely low. Other well known and experienced drug makers, such as Moderna, are only now just coming up with experimental coronavirus vaccines that are not guaranteed to work and may take many more months before a viable solution is found. This only further casts doubt that “And Still, LLC” will be able to use its mark in commerce in the next six months.

What we have here then appears to be the beginning of opportunistic trademark applications for a new word that is acquiring public awareness. In other words, this appears to be an example of a trademark troll application, i.e. a term for any entity that attempts to register a trademark without intending to use it and who then threatens to sue others who use that mark for financial gain.

This is not the first application that is attempting to potentially cash in or obtain exclusivity for the new coronavirus that is becoming a bigger epidemic with each passing day. A quick search through the US Trademark Electronic Search System (TESS) will reveal additional pending trademark applications such as 88774522 (WUHAN CORONA VAX), 88774534 (WUHAN CORONA MVAX), 88781934 (CORONAVAX), etc. Although these applications have been filed, the USPTO will still review the applications and may prevent them from further processing if it discovers that the applications have been filed in “bad faith” (see 15 U.S.C. §1051(b)), i.e., there must be a bonda fide intent to use the mark in commerce.

Not all applications, however, that use the “coronavirus” name appear to be descriptive or necessarily used in bad faith. For instance, the application 88790444 (CORONAVIRUS), intends to use its term for goods and services including "entertainment services in the nature of live vocal performances by a musical and vocal group." In this application, the goods and services are not used in reference to the virus or in any medical capacity, but in a more arbitrary fashion to describe a services provided in the entertainment industry.

Although trademark law is intended to shield and protect consumer's expectations and a producer’s brand, in an environment where a new term is introduced and obtaining popularity, those that intend to use it as a sword for a quick profit are likely in for a rude awakening.

Please note that image for this article was taken from Narvikk on iStockphoto.

Sources:

Articles

• World International Property Review

• World Health Organization

• Wall Street Journal

Statues

• TMEP §§1209.01(c)–(c)(iii))

• 15 U.S.C. §1051(b)

Filings

• US Serial Number: 88792612

• US Serial Number: 88774534

• US Serial Number: 88774522

• US Serial Number: 88790444

• US Serial Number: 88783939

• US Serial Number: 88781934