IPPro Issue 17

Issue 17

19 March 2019

Boarding the train to the future

New INTA board members discuss embracing the future

Influencer infringement:

@fuckjerry analysed

It depends

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In this issue

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INTA Board

Influencer Infringement

New INTA board members Tiki Dare, Ranjan Narula and Scott MacKendrick discuss how their tenure will help to shape the future of the association

Editor: Barney Dixon barneydixon@blackknightmedialtd.com +44 (0)203 750 6026 Reporter: Ben Wodecki benwodecki@blackknightmedialtd.com +44 (0)203 750 6017 Designer: James Hickman jameshickman@blackknightmedialtd.com +44 (0)203 750 6021 Contributors: Becky Butcher

Office Manager: Chelsea Bowles accounts@blackknightmedialtd.com Published by Black Knight Media Ltd Copyright © 2018 All rights reserved

Dorsey & Whitney partner Fara Sunderji outlines how so-called influencers can infringe copyright and what rights holders can do to protect themselves

Freedom of Expression

Oracle v Rimini Street

UN human rights expert David Kaye has called on the EU to make sure its copyright reforms remain in line with standards on freedom of expression

The US Supreme Court has overturned a ruling which awarded Oracle more than $12 million in a copyright dispute with Rimini Street

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Project Zero

It Depends

Amazon has introduced a new tool that enables brands to remove counterfeit listings automatically

Nadaline Webster explains how artificial intelligence could help lawyers eliminate the ‘it depends’ culture of legal practice

Associate Publisher: John Savage johnsavage@blackknightmedialtd.com +44 (0)203 750 6021 Publisher: Justin Lawson justinlawson@blackknightmedialtd.com +44 (0)203 750 6028

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Domain Names

Latest Events

Nominet’s Nick Wenban-Smith explains why the upcoming expansion of the .uk namespace will help keep the .uk domain relevant in an evolving market

Pick up your copy of IPPro at these industry events

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Subscribe now for free

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Copyright · Latest News

UN Secretariat Building, New York, USA

UN expert warns of EU copyright directive freedom of expression issues UN human rights expert David Kaye has called on the EU to make sure its copyright reforms remain in line with international standards on freedom of expression.

Kaye, the UN’s special rapporteur on freedom of expression said that article 13 “appears destined to drive internet platforms toward monitoring and restriction of user-generated content even at the point of upload”.

He continued: “Such sweeping pressure for pre-publication filtering is neither a necessary nor proportionate response to copyright infringement online.”

In the finalised text, article 13 of the European Copyright Directive will see content platforms and apps like YouTube, Facebook and Twitter requiring individual licences from rights holders in order for users to post material.

Kaye highlighted that the directive’s exemption for new, smaller content sharing providers “would not meet the concerns raised by earlier drafts”.

He argued that although Europe does hold a responsibility to modernise its copyright laws, it “should not be done at the expense of the freedom of expression that Europeans enjoy today”.

He pointed out that many platforms would not qualify for an exemption and “would face legal pressure to install and

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maintain expensive content filtering infrastructure to comply with the proposed directive”.

He said that this legal pressure would, in the long run, “imperil the future of information diversity and media pluralism in Europe, since only the biggest players will be able to afford these technologies”.

Kaye said that “it is far from clear” how platforms and members states will be able to defend freedom of expression under the directive’s proposed text. He added further that the lack of clear and precise language in the finalised text “would create even more legal uncertainty”.

He said: “Misplaced confidence in filtering technologies to make nuanced distinctions between copyright violations and legitimate uses of protected material would escalate the risk of error and censorship.”

“Who would bear the brunt of this practice? Typically it would be creators and artists, who lack the resources to litigate such claims.”

He suggested that the European Parliament should resolve any issues regarding the directive with digital rights groups, artists, journalists and other representatives of civil society before bringing a vote on the directive. The European Parliament is due to vote on the proposed directive in the last week of March. www.ippromagazine.com

Copyright · Latest News

Former CITMA president moves to Mewburn Ellis Former Chartered Institute of Trade Mark Attorneys (CITMA) president Kate O’Rourke has joined Mewburn Ellis as head of its trademark team in London. O’Rourke joins Mewburn Ellis having spent well over a decade at Charles Russell Speechlys. She will officially start on 1 April. She brings almost three decades of experience as a trademark attorney to the firm.

O’Rourke was president of CITMA between 2016 and 2018, presiding over the initial storm of concern following the UK’s vote to leave the EU and negotiating with the UK Government to ensure trademark rights and rights of representation were protected post Brexit.

Fornite copyright dance move lawsuits dismissed following Fourth Estate ruling Lawyers representing artists who took action against the developer of Fortnite will retract their copyright lawsuits following the Supreme Court’s ruling in Fourth Estate Public Benefit Corp v Wall-Street.com.

The Supreme Court ruled that US copyright owners cannot file an infringement lawsuit until the US Copyright Office has registered the work at issue.

Lawyers from Pierce Bainbridge who were representing Backpack Kid, Orange Shirt Kid, and Alfonso Ribeiro, said that all lawsuits would be retracted.

Ribeiro had sued Epic Games, the developer of Fortnite, alleging that the game used his signature dance move as an animation without his consent.

The dance appears in Fornite as an ‘emote’ titled Fresh.

Pierce Bainbridge said the dismissed lawsuits will be refiled once registration for the copyright has been obtained.

However, Ribeiro was denied copyright protection for his dance move in February, because “the work submitted for registration is a simple dance…[and] is not registrable as a choreographic work”.

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Last month, O’Rourke spoke on Brexit at the International Trademark Association’s Europe conference in Paris. There she expressed her hopes for a no-deal scenario to be taken off the table.

At Mewburn Ellis her Brexit work will continue.

The firm has previously said it will manage the conversion process of rightsholders’ pending EU trademark applications into UK equivalents for free post-Brexit.

O’Rourke is also vice chair of INTA’s pro bono committee and was awarded an MBE in 2016 for services to education.

Commenting on her move, O’Rourke said: “Mewburn Ellis has a reputation for excellence that cuts across the entire intellectual property community. I’m delighted to have the opportunity to help drive the firm’s ambitious plans to expand its high-quality trademark services still further.”

Mewburn Ellis partner Joanna Cripps commented: “Kate O’Rourke’s arrival at Mewburn Ellis could not send a bolder statement to the market about our firm’s intent to offer the very best trademark services available in Europe. We could not be more delighted to welcome her to the firm.”

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Copyright · Latest News

The Supreme Court Building, Washington DC, USA

SCOTUS overturns Ninth Circuit ruling in Oracle v Rimini Street The US Supreme Court has overturned a Ninth Circuit ruling which awarded Oracle over $12 million in litigation costs in a high profile copyright dispute with Rimini Street.

Rimini Street took the case to the Supreme Court following several hearings in the Eighth, Ninth and Eleventh Circuit courts and a stint at the Federal Circuit. It asked whether the Copyright Act’s allowance of “full costs” to a prevailing party is limited to taxable costs under the US code on judicial procedure.

Oracle had secured a permanent injunction against Rimini Street, banning it from support practices that are a violation of copyright laws.

The Supreme Court held in a unanimous ruling that the term ‘full costs’ in section 505 of the Copyright Act means the costs specified in the general costs statute codified at section 1821 and 1920 and that such awards do not get special treatment under copyright law. The opinion was delivered by the newest justice, Brett Kavanaugh, and the case was remanded for further proceedings.

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According to the Supreme Court’s opinion, section 1821 and 1920 “create a default rule and establish a clear baseline against which Congress may legislate”.

The justices found Oracle’s three substantial arguments as unpersuasive and said that Oracle’s interpretation would “create its own redundancy problem by rendering the second sentence of section 505 largely redundant”.

Even if Oracle was correct that the term ‘full’ has become unnecessary or redundant as a result of the 1976 argument, it “overstates the significance of statutory surplusage or redundancy”.

“Redundancy is not a silver bullet. We have recognised that some ‘redundancy is ‘hardly unusual’ in statutes addressing costs. If one possible interpretation of a statute would cause some redundancy and another interpretation would avoid redundancy, that difference in the two interpretations can supply a clue as to the better interpretation of a statute. But only a clue. Sometimes the better overall reading of the statute contains some redundancy.” www.ippromagazine.com

Copyright · Latest News Copyright directive to ‘hold back Europe’s creative economy’, warns Google SVP The finalised EU copyright directive text will hold back Europe’s creative and digital economy, according to Google senior vice president of global affairs, Kent Walker. In a blog post, Walker wrote that the finalised text “creates vague, untested requirements, which are likely to result in online

services over-blocking content to limit legal risk. At the same

time, the directive and services like YouTube accepting content

Nicki Minaj hits back at Tracy Chapman copyright infringement claims Onika Tanya Maraj, better known as Nicki Minaj, has denied copyright infringement claims from Fast Car singer Tracy Chapman. Chapman filed a lawsuit in the US District Court for the Central District of California alleging that Minaj’s song Sorry had utilised unauthorised samples of her song Baby Can I Hold You. Sorry was not released on Minaj’s recent Queen album after attempts by her representatives to use certain samples of Chapman’s on the track were rejected.

uploads with unclear, partial, or disputed copyright information

could still face legal threats.”

According to Walker, the text “needs to be clearer to reduce

legal uncertainty about how rights holders should cooperate to identify their content”.

He said that in order to achieve this it would mean giving

platforms references files and copyright notices with key

information like URLs to facilitate identifying and removing

infringing content, while not removing legitimate materials. He

warned that article 13 would hit platforms big and small.

Walker wrote that the latest version of article 11, which under the agreed text would mean that the reproduction of more

than single words or very short extracts of a news story would

require a licence, would “hurts small and emerging publishers,

and limit consumer access to a diversity of news sources. This narrow approach will create uncertainty, and again may lead

The track was then released by Aston George Taylor (aka Funkmaster Flex) on the popular radio station HOT 97.

online services to restrict how much information from press

Chapman filed the lawsuit following it being played on HOT 97. She demanded a trial by jury, actual and statutory damages and profits, and an order restraining Minaj from using the infringing work.

consumers to discover news content and reduce overall

Minaj has since denied Chapman’s accusations of infringement, however, she admitted that Sorry incorporates music and lyrics from Chapman’s music and that she made a recording without seeking authorisation to do so.

promoting quality journalism, the directive’s definition of what

She argued that her use in Sorry constituted fair use and that Chapman had “not properly registered her claim to the copyright in the composition”.

Minaj also argued that Chapman is not the owner of the copyright at issue and therefore lacks the standing to bring such proceedings.

publishers they show to consumers.

Cutting the length of snippets will make it harder for

traffic to news publishers, as shown by one of our recent

search experiments.”

He noted that whilst Google shares the directive’s goal of

counts as a ‘press publisher’ could be “interpreted too broadly, including anything from travel guides to recipe websites—

diluting any benefits for those who gather and distribute the kinds of news most central to the democratic process”.

Walker concluded by outlining Google’s current position

on the directive, stating: “We recognise and appreciate the progress in the text of the directive, but we remain

concerned about unintended consequences that may hurt

Europe’s creative economy for decades to come. The details

matter, so we urge policymakers to take these concerns into consideration ahead of the decisive vote and in the implementation phase that follows.”

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Copyright · Latest News US copyright owners cannot file infringement suits before work is registered A US copyright owner cannot file an infringement lawsuit until the US Copyright Office has registered the work at issue, the US Supreme Court has ruled. The 9-0 decision was an affirmation of the decision of the US Court of Appeals for the Eleventh Circuit’s decision in Fourth Estate Pub. Benefit Corp v Wall-Street.com.

Fourth Estate sued Wall-Street and its owner for copyright infringement of news articles that Wall-Street failed to remove from its website after cancelling the parties’ licence agreement.

Fourth Estate had filed applications to register the articles with the Copyright Office, but they had yet to be acted on by the Register of Copyrights.

Section 441 of the US Copyright Act states that “no civil action for infringement of the copyright in the US work shall be instituted until … registration of the copyright claim has been made in accordance with this title”.

The US District Court for the Southern District of Florida dismissed Fourth Estate. This decision was then affirmed by the Eleventh Circuit.

Now, the Supreme Court has now unanimously affirmed this verdict. Holding that registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright. Upon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration.

US attorneys have offered mixed reactions to the ruling with Alan Behr, a partner at Phillips Nizer noted that although the ruling is “disappointing to the creative community”, but added that the court’s ruling “appears quite correct in its analysis and its decision is hardly a surprise” Behr pointed out for the need for a “thorough review of the utility of having copyrights registered and making registration a predicate for access to courts to halt infringement”.

He explained that when the copyright law was enacted in 1976, “computer terminals were the size of Volkswagens and written information travelled at the speed of newspaper delivery trucks”.

Due to the far greater speeds at which information travels today, Behr highlighted that by the time a registration receives a certificate, “the core damage may well be done” because “infringement will usually win the race against registration”.

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Behr pointed out an obvious solution: that creation is where copyright begins. He said: “Let the date of completion be the date at which the right to sue may commence. And I will offer one better—get rid of copyright registration and so make our law a bit more like that of everyone else. What does the rest of the world know about enforcing copyrights that we do not?”

Marsha Gentner, senior counsel at Dykema, commented: “In the end, although the case engendered much commentary while pending—particularly with those siding with the Fourth Estate, arguing, essentially, policy or the equities— the unanimous decision was, to my mind, garden variety statutory interpretation. The court noted the current long (up to 8 months) delay for processing a copyright application to registration by the Copyright Office, but said this was a problem for Congress (not the court) to fix, either by way of the budget or legislation.”

Wolf Greenfield associate Emma Frank pointed out that the Supreme Court’s ruling, in practice, means that “while an author of a copyrightable work gains ‘exclusive rights’ in their work upon creation of the work, they cannot sue for infringement until they register that copyright with the Copyright Office”.

However, she pointed out that copyright owners should consider beginning the registration process now “in order to be able to protect their works through litigation—especially in industries where swift action on copyright infringement is imperative”.

One such industry is the fashion industry, which Frank said often relied on copyrights to gain temporary restraining orders or preliminary injunctions against knock-off designs that attempt to capitalise on a trend in a given fashion season.

She continued: “The Fourth Estate decision emphasises the importance of obtaining a registration when the copyright’s value comes from being the first or only one of its kind in a market or where ongoing infringement greatly impacts the value of a copyright.”

Eric Moran, partner at McDonnell Boehnen Hulbert & Berghoff, observed that despite the ruling, the Supreme Court “appeared sympathetic to the policy concerns that the ‘application approach’ addresses”.

He added: “Such concerns include delayed injunctive relief, potential wide dissemination of infringing works, and the harmonisation of US copyright laws with related laws in the US and elsewhere.” www.ippromagazine.com

Patents · Latest News EPO lettuce patent hit by opposition from pressure group Pressure group No Patents on Seeds has filed an opposition against a European patent on lettuce claiming it is derived from conventional breeding.

The disputed patent (2,966,992) was granted to Dutch food suppliers Rijk Zwaan Zaadteelt.

The patent covers lettuce seeds, plants and the harvest of lettuces that grow in a hotter climate.

No Patents on Seeds claims this is a trait found naturally.

According to No Patents on Seeds, these lettuce seeds are derived from conventional breeding without any involvement of genetic engineering.

Patents that cover the process of conventional breeding, as well as on plants and animals derived are prohibited by rule 28(2) for the interpretation of the European Patent Convention (EPC).

Christoph Then of No Patents on Seeds commented: “Patents on seeds can endanger food security. Such patents can block access to biological diversity that is needed by all breeders to develop new and even better varieties.”

“This is especially problematic in times of ongoing climate change. These patents are prohibited in Europe for very good reasons. The European Patent Office should no longer simply ignore these prohibitions.”

No Patents on Seeds has also called for a public protest against the EPO’s granting of conventionally bred plant traits in Munich on 27 March.

The EPO’s granting of such patents has caused mass public outcry from groups like No Patents on Seeds, with representatives from the 38 member states of the EPO meeting to discuss the crisis following several high profile invalidation cases.

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Patents · Latest News The European Patent Office, Rijswijk, the Netherlands

EPO’s annual report reveals growth in application numbers The European Patent Office saw a near five percent growth in patent applications in 2018, according to figures from the office’s annual report. In the EPO’s annual report, it said it had received a record 174,317 applications in 2018, a 4.6 percent increase on the previous year. EPO member states represented nearly half of all patent applications, with 47 percent. The largest EPO member state filer was Germany, with 15 percent. The biggest non-member state filer was the US with a 25 percent share of filings.

In terms of the top filers, Siemens took the top spot, with 2,493 patent applications. Huawei followed closely behind with only eight less than its German rival.

Medical technology related patents dominated the various technology filers, with almost 14,000 patent applications.

Second and third-placed technologies were digital communication and computer technology respectively.

A figure of note from the report is that one in five patent applications at the EPO in 2018 were from small and mediumsized enterprises.

In terms of the EPO’s efficiency, its figures suggested a 20 percent increase in the number of patents it granted, with searches, examination, and oppositions up by three percent.

Much has been made of the EPO’s patent quality in recent years. Former EPO president Benoît Battistelli’s tenure was riddled with allegations of overworking employees with absurd work targets, which in turn led to lower quality patents.Last year saw 384 complaints rise from 334, with over half stemming from examiner products and services.

Despite concerns, the report shows a one percent

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increase in user satisfaction with the office’s search and examination services.

Commenting on the annual report’s findings, EPO president Antonio Campinos said he thought 2018 was “a successful year for the EPO. Our production was up and there was a significant increase in the volume of granted patents.”

“Those are good achievements by the EPO staff, but performance isn’t just about granted patents and productivity. We’ve kept our focus on quality with new initiatives and improved timeliness. There’s also been progress in a whole host of other fields which we need to support our overall competitiveness. The European patent is now valid in more countries, we’ve continued to grow our patent information databases, and training and outreach activities have intensified.”

According to Campinos, the EPO is going to be implementing a multiannual work plan intended to improve various aspects of the office. He said that the office is “confident that those changes will result in better services for our users”.

He added: “For example, we’re going to have a look at how we can expand quality certification throughout the EPO and how we can create a more collaborative style of working for our staff with the aim of developing new services for our users. Digital transformation at the office is going to play a major part in this, for example, by enabling us to create virtual workspaces for staff or by helping to increase efficiency in the patent granting process. If we can bring about this kind of positive change, we’re confident that the EPO will be able to report good performance in the coming years, no matter what annual evolution we see in the patent landscape.” www.ippromagazine.com

Patents · Latest News

Patent disclosure bill for biologics proposed by US senator Collins US senator Susan Collins and a bipartisan group of colleagues have proposed a bill forcing drug manufacturers to disclose patents covering their respective products with the Food and Drug Administration (FDA).

The Biologic Patent Transparency Act will force manufacturers of approved products to “disclose and list patents covering their products with the FDA”.

The bill will require all patent information to be published in the FDA’s Lists of Licensed Biological Products with Reference Product Exclusivity and Biosimilarity or Interchangeability Evaluations often referred to as the ‘Purple Book’.

The Purple Book lists biological products licensed by the FDA under the Public Health Service Act. This includes any biosimilar and interchangeable biological products.

According to the bill’s text, it imposes transparency requirements similar to those required for small molecule drugs under the Hatch-Waxman framework, which it claims to have proven successful in the promotion and development of generics.

The transparency requirements will “encourage manufacturers to apply for patents sooner” according to the bill. This, in turn, will lead to “prospective biosimilar manufacturers to challenge weak or invalid patents earlier in the product development process”.

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The bill will also standardise publication of the ‘Purple Book’ and require FDA enhancements to it that will promote competition.

Senator Collins commented: “The past century could be termed the ‘Age of Miracle Drugs’. Today, however, we might define a ‘miracle drug’ as one that has not doubled in price since the last refill.”

“We must provide drug makers with the ability to recoup their investments, but at the same time, we cannot be blind to the costs of these drugs, nor to cases where patent laws are manipulated to preserve monopolies. This legislation is an important step to stop the patent gaming that blocks consumers from accessing lower-cost biologics.”

Democratic senator and supporter of the bill, Tim Kaine, added: “Biologic medicines can be life-changing for many patients, but we must do more to promote competition in the market to ensure patients can access and afford them.”

“Our bill sheds light on the ways patents can be used to deter competition and encourages manufacturers to obtain key patents earlier, which will help bring new treatments to patients faster.”

The bill also limits the enforceability of late-filed patents by the biologic manufacturer when a biosimilar application has already been filed with the FDA. www.ippromagazine.com

Patents · Latest News EPO users want greater flexibility in examination A majority of users at the European Patent Office (EPO) want greater flexibility in the timing of examination, according to a survey. In a survey of 627 EPO users, more than 300 said they would be in favour of a procedural option for postponing examination of a European patent application in order to increase flexibility.

Respondents in favour of a procedural option commented on the need to allow time for examination results to return from other countries, more time to assess the commercial value of an invention and better alignment of the timing of examination with long product development cycles and regulatory approval procedures.

Respondents also noted that a postponement of examination could optimise resources by postponing the prosecution and/or validation costs, especially for small and medium-sized enterprises.

Despite the majority calling for a postponement of examination option, those who weren’t in favour warned that any postponement of examination might “create de facto monopolies for dubious unexamined inventions which is not in line with the basic principles of patent law”.

Those not in favour argued that a balance between applicants’ rights and public interest would be lost and that it might benefit a few but not the public at large.

A staggering 444 respondents believe that a postponement option would have an impact on competitors’ behaviour, and 446 said that a postponed examination system would influence applicants’/patentees’ behaviour in filing or enforcing patents.

Despite the focus on a postponement option, other measures proposed by respondents include: improving the consistency of the time limits between two office actions, providing an additional fast-track examination option, and reducing applicant time limits.

Mewburn Ellis partner Robert Watson suggested that further studies would be needed to be carried out if the EPO is to introduce examination postponement for applications.

Watson said that if the EPO was to introduce such a clause, then it should look to see how other jurisdictions that already utilise such a service. Watson took aim at the narrow sample size for the survey, stating: “there is no clear majority for introducing such a fundamental change in the EPO’s procedures”.

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He noted that the comments against a system for postponing examination “highlighted the downsides for third parties and the public at large that would be caused by prolonging the pendency of applications”.

In this regard, any results would need to be “viewed with care” according to Watson as “third parties would be less likely to comment on a change to patenting procedures than regular patent applicants”.

Watson concluded that he was “not convinced” the data showed an overwhelming need for an overhaul.

HGF partner Matt Dixon remarked that if a postponement option were available, there “might be fewer exchanges with examiners that are designed just to keep the application pending, rather than achieving a refusal or grant”.

He continued: “I think you could see a focus on the applications that really matter commercially, which is likely to improve the quality of the submissions from the representatives, because the client cares more about these cases, and that should improve the quality of the interaction with the examiner and ultimately the quality of the resultant patent.”

The improvement of quality is something that has been a hot topic at the EPO in recent years, with the tenure of former EPO president Benoît Battistelli dogged with claims of overworked employees facing increasing work targets, resulting in lower quality patents.

In a letter to the EPO, German law firms Grünecker, Hoffmann Eitle, Maiwald, and Vossius & Partner expressed that EPO incentive systems which were implemented under Battistelli led to a range of problems, including issues of quality, the scope of protection and inadequately assessed patents.

But the EPO has refuted this and published a report last June claiming that patent quality and user satisfaction had in fact increased by nine percent.

With the introduction of a prospective postponement tool, Dixon suggested that it could lead to more examiner energy being spent on “getting to a defensible, commercially relevant patent than going through the motions of examination just because the relevant deadlines have come around”.

He reminds that there are already mechanisms in place at the EPO to prolong the examination process, but adds they are “quite expensive”. www.ippromagazine.com

Trademarks · Latest News Amazon introduces counterfeit removal tool for brands Amazon has introduced a new counterfeit removal tool that enables brands to remove counterfeit listings automatically.

authenticity of a brand’s products that are purchased in Amazon’s stores.

Under Project Zero, brands have the ability to utilise a selfservice counterfeit removal tool which allows them to remove counterfeit listings on Amazon themselves, thus removing the need to report fakes to the site.

Amazon said the serialisation service will “stop counterfeiting for every product unit before it reaches a customer”.

The information that brands use to take down counterfeit listings will also be used in its automated protections so to “better catch potential counterfeit listings proactively in the future”.

Project Zero uses automated protections and serialisation alongside the self-removal tool so that brands can have total control over removing counterfeits on the platform.

The product serialisation offers brands a product serialisation service that allows Amazon to scan and confirm the

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Through Amazon’s machine learning technology, brands simply provide the firm with logos, trademarks and other key brand data, which is then scanned against the entire product listing looking for suspected counterfeits.

Amazon said that tests of Project Zero’s automation aspect have “proactively stop[ped] 100 times more suspected counterfeit products as compared to what we reactively remove based on reports from brands”.

Vera Bradley’s chief legal and administrative officer, Mark Dely, commented: “Project Zero, with its automated protections and is a significant development that will help ensure our customers receive authentic Vera Bradley products from Amazon.”

www.ippromagazine.com

Nadaline Webster · Opinion

Is ‘it depends’ killing the legal profession?

Nadaline Webster explains how artificial intelligence could help lawyers eliminate the ‘it depends’ culture of legal practice and net them happier clients Whether you view the rise in legal technology as positive or not, there can be little doubt that it has created concerns in many quarters. No sooner had phrases like ‘artificial intelligence’ and ‘machine learning’ started tripping off our tongues than hundreds of articles began appearing debating whether or not these new creations would take legal jobs.

The ‘robo-lawyer’ of the future would research cases at the speed of light, producing just the right document from its data banks at just the right moment. It would be exactly like Mike from the hit TV show Suits. On steroids. In a metal casing.

In reality, there are many threats (and positives) to the future practice of law and while I could be accused of bias in this regard, I don’t believe AI to be the greatest of those. If I had drank more coffee, I might even raise the idea that it may, in fact, be our salvation from a far bigger threat.

The bigger threat In every online forum, you will find thousands upon thousands of people seeking legal advice. In many cases, these people have already obtained representation but they find themselves online looking for the one thing that their lawyer can’t provide: a clear answer.

For those familiar with the practice of law, it is easy to see why a clear answer to a question such as “I did X thing, here is some background, what is going to happen?” can be hard to answer.

A myriad of factors will play into the eventual outcome and it is the job of a lawyer to prepare their client for every possible outcome. A competent lawyer will have gone through the various potential results of the process and advised on the likelihood of each to at least some degree.

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Nadaline Webster · Opinion

In the business world, greater certainty is needed at a much faster pace than ever before

Nadaline Webster Director of content, trademarks TrademarkNow And yet, here the client is, consulting with strangers on the internet.

At the core, there are seven factors to be considered in assessing ‘likelihood of confusion’:

Every behaviour is driven by a need and in this case, people are effectively crowdsourcing the answer to their question.

They aren’t satisfied with ‘it depends’ and ‘maybe’. In some cases, they may be hoping to hear that what their lawyer told them isn’t necessarily true. But often, they are looking to hear the experiences of others in similar situations so that they can gauge for themselves with some more certainty what is coming next.

It is not just in the practice of civil or criminal law where this applies. In the business world, greater certainty is needed at a much faster pace than ever before.

Decisions need to be made today, this week, this month.

Those decisions will have a significant impact on the business and need to be powered by some level of certainty which is often unavailable.

How will advances in technology help?

Undeniably, there are certain activities at which technology excels and one of these is the high speed analysis of data from a variety of sources.

Relatedness of goods or services Similarity of marks Similarity in appearance Similarity in sound Similarity in meaning The visual presentation of design marks Intention of deception

It might be argued that with the exception of the last one on the list, the other six key factors should not be judged solely on a subjective basis but also objectively.

The mathematical similarity or distance between two names or two products could be combined with assessments of ‘confusability’.

This blending of mathematical models and the correlation with human perception could create a more predictable bar for how similar is too similar.

As the use of legal technology develops, perhaps one day we will see such objectivity introduced into courtrooms and along with it—increased certainty.

In today’s courtrooms and as it relates to trademark law, the analysis of ‘likelihood of confusion’ is a subjective one, prone to sometimes extreme variations in interpretation.

Such certainty will empower lawyers to adapt their advice models. Not all elements of every trademark case will contain factors that are able to be expressed with certainty but the ‘likelihood of confusion’ element is possible.

There are many decisions which will cause eyebrows to lift and leave lawyers trying to explain what just happened to confused clients.

In the future, there will be areas of practice where the phrase, ‘it depends’, might be eliminated and this can only be a good thing for the profession.

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Brand Protection · Feature

Remember your domain name in brand protection Nominet’s Nick Wenban-Smith explains why the upcoming expansion of the .uk namespace will help keep the .uk domain relevant in an evolving market Over 50 percent of the world’s population uses the internet, although in the UK this percentage is significantly higher: last year, 90 percent of adults in the UK were recent internet users. Internet use is not limited to communication anymore, and the medium brings with it all manner of considerations whether you are a user or a domain owner. Some of these are complicated yet important to keep abreast of, right down to being familiar with policies relating to the domain name on which a website operates.

Many of these sites are now designated for ecommerce.

Approximately 1.79 billion people are now spending their money online, so a business needs to cultivate an online presence to remain competitive, using the digital medium to attract and engage with their customers. Many new

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businesses can only succeed because of their online focus and eschew the offline world entirely—online-only retailer Boohoo recently announced a 44 percent increase in revenue in the past 12 months, for example.

Unfortunately, operating a business online brings certain risks, as the anonymity, complexity and speed of digital communications serves the criminal community just as well as the business. The past year has seen rising incidences of cyber attacks (including a 350 percent increase in ransomware attacks) and data breaches—both of which can cause irreparable damage to customer trust and brand reputation.

Naturally, companies are responding in kind with protection strategies to secure their brand. www.ippromagazine.com

Profile Brand Canada Protection · Feature · Country

Find out more about Right of Registration in our FAQs below: What is changing?

In June 2014, Nominet, the registry for the .uk Domain opened up registrations at the second level (name.uk) in addition to the third level (name.co.uk or name.org.uk).

Existing registrants of co.uk domain names had a fiveyear right of registration period in which the right to the corresponding .uk domain name was reserved for them.

This Right of Registration period will end on 25 June 2019, after which all unregistered second level domain names become generally available.

What contact has there been with registrants about this?

All co.uk registrants will have been contacted either by email or via their registrars over a five-year period to inform them that they had the right to register the corresponding second level domain name in advance of general availability.

What does the second and third level mean?

This refers to the levels within the domain name hierarchy or the distance from the dot. In this instance, the first level (or top level domain) is uk, which is run by Nominet as the registry. Registrants are able to register domains at the second level (yourname.uk) or/and the third level (yourname.org.uk or yourname.co.uk).

When will all the second level domains for which the right to register has not been taken up become available?

The second level domains will be made generally available from 1 July 2019.

Why would I want a second level domain name?

Nominet expanded the namespace to offer new and shorter options for those seeking memorable domain names, in line with the changing use and appreciation of domain names. You may also wish to secure your second level domain name as a brand asset or for brand protection purposes.

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What happens if I don’t register my corresponding domain at the second level?

If eligible registrants choose not to register the domain by 25 June 2019, it becomes generally available and a new registrant may secure a domain name with the same string but a different ending. This is a common occurrence across the industry, where different registrants often own and use domain names that have the same string but different endings, such as name.fr, name.com, name.net, etc. If you have any subsequent issues with the way in which the new domain is being used, you can lodge a complaint with Nominet’s Dispute Resolution Service.

Have other country code top-level domain (ccTLD) registries offered second level domain names?

Almost all ccTLDs allow registration at the second level.

New Zealand and Japan are two examples of countries that, like .uk, previously didn’t allow registrations at the second level but have recently opened up this area of their namespace.

How do I register my second level domain before the 25 June 2019?

You will need to register the .uk domain name yourself. We suggest contacting your current registrar for further advice.

I registered my co.uk domain name in the last five years – do I have a right to register the .uk equivalent?

Any domain registered before 11:59pm on 28 October 2013 has the rights to the equivalent .uk domain, providing there was no other corresponding .co.uk, .org. uk, me.uk, .ltd.uk, .plc.uk or .net.uk registered.

How can I check if I have the right to the .uk domain name?

You can check your rights to a .uk domain by contacting our customer support team on +44 (0)1865 332244.

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Brand Protection · Feature In addition to digital risks, the internet has also enhanced some of the historic threats to a brand. For example, the issue of counterfeits continues to be a major challenge due to a combination of online anonymity for a seller and the speed at which millions of people can view and buy goods. This is compounded by changing consumer behaviour; worryingly, there is disinterest or little concern among some consumers over whether they are purchasing an original or a counterfeit, creating a ready market for fakes.

Cyber attacks, data breaches and counterfeiting are the three key areas which must be covered by a brand’s online protection strategy—an essential investment in today’s world.

In addition, an eye needs to be kept on the changes and trends that will impact digital operations, which includes any changes to the domain name system.

For businesses with a domain name that ends in .co.uk, .org. uk, .me.uk, .net.uk, .plc.uk or .ltd.uk, there is an important upcoming change to be aware of. As registry for the country’s .uk internet namespace, Nominet will be increasing available domain names by opening up registrations at the second level (.uk) in addition to those at the third level (co.uk, org.uk, etc.) to anyone who wishes to own them. This expansion of the namespace will provide more opportunities for registrants to secure their unique domain name and helps to keep the .uk domain relevant in an evolving market.

For brands, the availability of second level registrations offers various benefits. The shorter domain name is a combination of company name and geographical location is simple and powerful online. A snappier domain can also

create new opportunities for marketing and promotion while reducing the length of the domain can make it easier for customers to remember.

It is also worth considering the fact that securing the brand’s domain name at the second level could offer another level of brand protection by comprehensively preventing any other party from registering and operating a business or an interest with the same name online. While there is no certainty that the second level domain would be used competitively—or even be registered by someone else—prevention is often better than cure, especially considering the relatively low cost of domain registration.

To ensure that brands have had a fair chance to register at the second level in advance of general availability, Nominet reserved the short equivalent of an existing registrant’s .uk domain for free almost five years ago. This ‘right of registration’ period, in which the existing domain name holder has the right to register the same domain on .uk, is now fast approaching its end (25 June 2019). Those brands keen to secure their second level domain must act before then or risk the domain being snapped up by someone else.

Being aware of changes, whether in digital infrastructure or criminal behaviour, is a crucial way for businesses and brands to stay secure and competitive online. Those brands intending to survive and thrive in our digital world must be proactive and innovative, whether it be in exploring new marketing opportunities, increasing their spend on cybersecurity provision, or securing all the pieces of internet real estate relevant to them.

Being aware of changes, whether in digital infrastructure or criminal behaviour, is a crucial way for businesses and brands to stay secure and competitive online Nick Wenban-Smith General legal counsel Nominet

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INTA Board · Interview

Boarding the train to the future New INTA board members Tiki Dare, Ranjan Narula and Scott MacKendrick discuss how their tenure will help to shape the future of the association During the International Trademark Association’s Europe conference, CEO Etienne Sanz de Acedo praised the ever-increasing diversity Ben Wodecki of its board. He described it reports as being “exceptional for the organisation” and “extremely rewarding” for him as CEO. He said that by having such a diverse board the association would have “a lot of extremely smart and sophisticated people sitting around a table sharing ideas”.

IPPro spoke with three such members, Tiki Dare, Ranjan Narula and Scott MacKendrick, to talk about how their positions on INTA’s board will propel the association in 2019.

Perceptions and provocations Tiki Dare, INTA’s new vice-president brings with her a background of working for high tech companies in Silicon Valley.

One of her responsibilities as the association’s vice president is as group officer for the advocacy group of committees.

Dare will also be working with the INTA teams developing and implementing policy position.

Moreover, INTA’s rotating presidency means that Dare is now only two years away from her own presidency.

Dare echoes Acedo’s comments on diversity, and says this is something INTA values when choosing its officers.

“Our board and current officers represent a diversity of countries and industries,” she says, “we really want to make sure we have that diversity reflected”.

As reflected in INTA’s strategic plan, Dare adds that she aims to promote the value of trademarks and brands, foster consumer trust and embrace innovation and change on a “truly international scale”.

One of INTA’s new board members is representing the furthering of the association’s international scale.

Ranjan Narula, the managing partner of RNA Technology and IP Attorneys, originates from India and says he hopes to bring his “perspective on the cultural and emerging market issues that could be quite different to more developed economies”.

Tiki Dare

Given INTA’s global reach, Dare reminds us of the importance for her, as a US representative, to listen closely to her colleagues from different industries and especially from different countries.

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Ranjan Narula

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INTA Board · Interview He explains: “India is an emerging economy with a lot of potential for brand owners.”

With his presence on the board, Narula said he believes he can help INTA members “appreciate the small nuances of this market as well as the differences in expectations of government and stakeholders”.

Narula says he can act as a bridge between differently developed economies.

One such issue that Narula raises is the problem of counterfeits. He observes that in some emerging economies governments have acknowledged this problem, but the onus is on brands to invest and control the flow of counterfeit products.

He adds that private players and enforcement agencies are left to take the lead on the issues.

In agreement with Narula, Scott MacKendrick, partner at Canadian law firm Bereskin & Parr and new addition to INTA’s board, says that counterfeiting is one of the “biggest challenges” for INTA.

Dare explained: “We really want teenagers, as the next generation of consumers, to understand the importance of buying genuine.”

Another challenge that all three board members greatly expressed concern on was INTA’s stance on anti-IP sentiments.

All expressed that INTA faces a challenge in working with governments and other stakeholders to reduce anti-IP sentiment and adapt the ways in which brands are evolving.

MacKendrick said the association sees the public misunderstanding IP frequently.

He adds: “You see press references where someone talks about getting a trademark for something when they are really seeking copyright or vice versa”.

“There is this real misunderstanding about the role of IP in the economy, the daily lives of consumers, and in society-atlarge, and there is an element of that then feeds into anti-IP sentiment. We’re going to have an ongoing role in addressing and resolving these misunderstandings.”

Dare explains that this is a big issue and expresses concerns over the number of countries that have adopted legislation that restricts the use of brands on specific products like tobacco and pharmaceuticals.

This issue is so problematic that Sanz de Acedo has suggested a full-time committee may have to be dedicated to it if it is “no longer an emerging issue but a real problem for brand owners and consumers”.

Embracing the future Despite the concerns raised by INTA and its board, the future seems bright.

Scott MacKendrick

MacKendrick argues that INTA needs to pay attention to why there is a demand for counterfeits and better understand why consumers want fake goods.

He also noted that the association’s Unreal Campaign, which is being used to teach the importance of trademarks and dangers of counterfeit products to teenagers, will continue.

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The association’s stance on these issues and many more are evident in its strategic plan, and Dare notes that INTA actively monitors new technologies and the challenges and benefits that come with them.

Dare also points out the importance of INTA’s pro-bono clearinghouse and adds that despite it its relative youth, members are getting many projects from it.

With challenges ahead, INTA stands well equipped to face the future and with talent like Dare, Narula and MacKendrick on board, the sky’s the limit. www.ippromagazine.com

Fara Sunderji · Interview

Influencer infringement:

@fuckjerry’s prolific infringement analysed Dorsey & Whitney partner Fara Sunderji outlines how so-called influencers can infringe copyright and what rights holders can do to protect themselves In January, social media influencer @fuckjerry admitted to his practice of “using content [of others] and not giving proper credit and attribution to its Ben Wodecki creators” and later apologised reports and promised not to post any future content without attribution.

Fara Sunderji, partner at Dorsey & Whitney discusses the situation and explains how users need to be more careful when it comes to memes and online materials, as well as how brands can protect their copyright online.

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What is the likelihood Fuckjerry will keep his promise after the outcry has died down? Is there any legal recourse for the original creators?

No one can predict what @fuckjerry will do, but all the recent posts have ‘credit and consent’ in the comments. The legal recourse for the original creators would have to be evaluated on a case-by-case basis.

Potential causes of action might include copyright infringement, claims for violation of right of publicity and unfair competition. www.ippromagazine.com

Fara Sunderji · Interview How can this sort of behaviour be curbed in the future?

Is more education needed?

the US has the DMCA that takes a more moderated approach than what is being proposed in Europe.

I think more education could help.

We need to come to an international agreement on a philosophy of how to address copyright issues in social media and other parts of the web—possibly through the World Intellectual Property Organization.

A few years ago, I’m not sure how much your average social media user understood the value of sponsored posts and how much social media advertising is worth to brands.

With some awareness of these concepts, it is pretty easy to see why copyright and the right of publicity matters on social media.

Copyright and memes are at the forefront of political discussions in Europe at the moment. MEPs are proposing drastic changes to curb these sort of aggregators. Is anything being done in the US? I’m not aware of anything formal being proposed in the US, but the EU’s Copyright Directive and any future member state enactment of legislation cannot be done in isolation when it applies to memes, social media and the web.

The online world is borderless and there will have to be international cooperation to come up with a workable solution.

We just can’t have the EU or any member state imposing greater responsibility on platforms and service providers while

The online world is borderless and there will have to be international cooperation to come up with a workable solution

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What can rights holders do to better protect their copyrighted work online?

This is a tough question when it comes to things like memes.

Putting aside the fact that with certain types of memes copyright protection may be very thin, there is a risk-reward calculus that rights holders have to perform.

The web and social media specifically is a great way to get noticed, and technology has made all of these new opportunities, but it has created so many ways for others to infringe someone’s work.

Being creative and selective about what you post online for free versus what you put out in another medium or for pay, might be the best path to protection along with banding together with you fellow content creators to ensure that the public at large understands why copyright is important—even on social media.

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