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
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.
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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.
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