If you have not registered your trademark in Canada, now is the time. Our northern neighbor will soon implement a massive overhaul to its Trade-marks Act, pursuant to 2014 legislation that has been on hold pending the adoption of corresponding regulations. Among other things, use of a trademark in Canada (or anywhere in the world, for that matter) will no longer be a prerequisite to ownership and enforcement of a Canadian trademark registration. The race to the Canadian Intellectual Property Office (CIPO) will be open to competitors, squatters, and trolls whose intent may be to re-sell trademark rights at a profit, interfere with a legitimate trademark owner’s ability to use a trademark in Canada, and possibly even demand a ransom at the border for importation of genuine goods. Filing a Canadian trademark application now, even if only defensively for future market expansion, should be given serious and immediate consideration.
In a historic vote, the people of Great Britain have chosen to leave the European Union in what has been dubbed “Brexit.” Many clients have registered their trademarks through the Community Trade Mark (“CTM”) system, now known as the European Union Trade Mark (“EUTM”), with the expectation that protection extends to the United Kingdom. Similarly, many clients have protected their inventions and novel designs via the European Patent Office (“EPO”) with rights extending to the UK. Rest assured that there is no emergency; there will be no immediate impact on intellectual property protection for at least 2 years as new trade arrangements are negotiated. While it is predicted that the British Parliament will pass legislation to ensure the continuity of CTM/EUTM trademark rights in an independent UK trademark system, clients might consider filing a national-level UK trademark application as a precaution. Patent rights in the UK should be entirely unaffected by Brexit, however, since the EPO is not an European Union institution and operates independently.
The legendary English rock band Led Zeppelin won a high-profile copyright infringement case on Thursday, after a California federal jury rejected claims that the opening to their famed megahit "Stairway to Heaven" was stolen from a song by the band Spirit.
The jury found that there was a reasonable chance that Jimmy Page or Robert Plant of Led Zeppelin had heard the song "Taurus" by Spirit, before they wrote "Stairway to Heaven" and could have copied it, but decided that the two songs were not "extrinsically similar." The jury was instructed that while the two songs might share similarities like chord progression, common musical elements such as chord progressions are ineligible for copyright protection.
Attorneys for the Plaintiff contended that evidence showed that the similarities between the two songs went beyond simple chord progression, and that Randy Wolfe of Spirit, deserved writing credit on the megahit and some of the millions of dollars the song had earned in the previous years.
The jury disagreed, finding that the original parts of "Taurus" were not similar to "Stairway to Heaven" and awarded the Plaintiff no amount of damages. Attorneys for the Plaintiff indicated that an appeal may be forthcoming.
Apple has been ordered to cease sales of both the iPhone 6 and iPhone 6 Plus in Beijing, after the Beijing Intellectual Property Office ruled that the aforementioned models violate the design patent held by the company Shenzhen Baili, for its 100C phone.
Apple quickly downplayed the ruling, stating in a press release that an appeal had already been filed, that would allow the phones to stay on the market in Beijing, pending the outcome. While the decision covers only Beijing, additional lawsuits could be filed against Apple elsewhere in the country, that could attempt to use the case as a precedent if not overturned.
The decision is another indication of Chinese officials increasing scrutiny of the company, amidst already growing concerns about the company's relationship with China.
Supreme Court grants district courts the discretion to award enhanced damages for egregious patent infringementWritten by James Ryan
The Supreme Court issued a unanimous decision earlier this week in Halo Electronics, Inc. v. Pulse Electronics, Inc., granting district courts the discretion to award enhanced damages up to three times the amount found or assessed, pursuant to 35 U.S.C. §284, against those guilty of patent infringement, however, limiting the award to “egregious cases of misconduct beyond typical infringement.” The decision reverses the Federal Circuit’s two-part test, established in In re Seagate Technology, LLC, as inconsistent with the language of §284. Seagate, which required the patent owner to satisfy an objective and subjective test before a court could increase damages for willful infringement, was found to be “unduly rigid” and confined the ability of district courts to exercise the discretion §284 conferred on them. For more on this case, visit http://www.supremecourt.gov/opinions/15pdf/14-1513_db8e.pdf.
Ninth Circuit Breaks from Sixth; Recognizes De Minimis Exception to Song Sampling Copyright InfringementWritten by W. John Eagan
Recognizing that it was taking an unusual step, the Court of Appeals for the Ninth Circuit deliberatley broke from Sixth Circuit precedent in VMG Salsoul, LLC v. Madonna Louise Ciccone when it determined that the 0.23 second sample of horns which was copied from an earlier song titled "Love Break" was de minimis, and therefore, did not constitute copyright infringement.
President Barack Obama on Wednesday signed the Defend Trade Secrets Act of 2016 ("DTSA") into law, creating a federal system of trade secrets law. The DTSA extends the current Economic Espionage Act of 1996 ("EEA") which criminalizes trade secret theft, and creates a new Federal cause of action allowing companies to sue to defend their trade secrets. This means that for the first time, trade secret owners can now bring civil suits in federal district courts. The bill was largely uncontroversial passing the Senate 87-0 and the House of Representatives 410-2.
Under the DTSA, for example, a federal court could have jurisdiction over a claim of misappropriation of a trade secret that is used exclusively on an internal basis by the victim or one that is related to a product or service that is in the development stage, so long as the trade secret is related to a product that is intended for use in interstate commerce.
The DTSA adopts the EEA's broad definition of a trade secret meaning almost any kind of tangible or intangible type of information can qualify as a trade secret so long as: (1) the information is actually kept secret; (2) the owner took reasonable measures to maintain that secrecy; and (3) independent economic value is derived from that secrecy.
The theft of trade secrets costs the economy more than $300 billion a year, according to the Commission on the Theft of American Intellectual Property. The DTSA represents the most significant expansion of Federal intellectual property law in a generation, fully recognizing a fourth type of intellectual property right, and is a major step forward in the protection of intellectual property in the United States.
In Petrella v. Metro-Goldwyn-Mayer, the "Raging Bull" case, the Supreme Court of the United States held that the defense of laches, whereby the accused infringer alleges that the right holder sat on its rights for too long before bringing suit, cannot be used to shorten the three-year statute of limitations set forth in the Copyright Act. In the case of SCA Hygeiene Products, AK v. First Quality Baby Products, LLC, the Supreme Court has recently taken up the question as it pertains to the defense of laches and the six-year statute of limitations set forth in the Patent Laws. Follow the case here for updates.