IPPro The Internet issue 84

Page 1

ISSUE084

02.02.2016

w w w. i p p r o t h e i n t e r n e t . c o m

The primary source of global intellectual property internet news and analysis

Anti-cybersquatting service gives brands a boost Accent Media, the registry for the .tickets gTLD, has launched a new anticybersquatting service that allows rights holders to contest the purchase of their trademarks as domain names. Domains Watch, which is live for .tickets domains and has already been used by Disney, Ticketfly, Nascar and AXS, holds registered domains in limbo for 30 days to allow rights holders to contest their rights. Rights holders with evidence of their rights can receive their domain names within five days.

Google fights fakers’ bad ads

Google suspended more than 10,000 sites and 18,000 accounts in 2015 for attempting to sell counterfeit goods through its advertising networks.

with Google—and why we’ve invested in sophisticated technology and a global team of 1,000+ people dedicated to fighting bad ads.”

The internet company revealed in a blog post on 21 January that it’s making extensive efforts to combat ‘bad ads’, such as those selling fake goods, through its advertising networks. It has promised to step up the campaign this year.

“Last year alone we disabled more than 780 million ads for violating our policies—a number that’s increased over the years thanks to new protections we’ve put in place.”

Google disabled almost 800 million ads last year that violated its policies. This was almost 50 percent higher than the 524 million takedowns in 2014. “Bad ads can ruin your entire online experience, a problem we take very seriously,” wrote Sridhar Ramaswamy, senior vice president of ads and commerce at Google. “That’s why we have a strict set of policies for the kinds of ads businesses can run

Using algorithms and human reviewers, Google targeted counterfeiters, pharmaceuticals, weight loss scams and phishing last year, blocking more than 12.5 million ads that violated its healthcare and medicines policy, and preventing nearly 7,000 phishing sites from using its ad networks. Google promised to step up its campaign this year, by further restricting what can be advertised as effective for weight loss, and adding new protections against malware and bots. Continued on p2

Registered domain names are published via domains.watch and can be challenged for a fee. Domains Watch assesses the case if an opposition is filed during the 30-day period. Continued on p2

GE loses hyperlink case The US Court of Appeals for the Federal Circuit has tossed an infringement case over patents for hyperlinking, securing a win for advertising company Vibrant Media against General Electric. The appeals court handed down its decision in December, affirming the Patent Trial and Appeal Board’s (PTAB) finding that the claims in both patents were invalid, following instituted inter partes reviews (IPRs). General Electric, which has a digital industrial business that offers cloud computing and software solutions, asserted the patents against Vibrant in April 2012 at the US District Court for the District of Delaware. Continued on p2


Latest News Google fights fakers’ bad ads Continued from p1

“Vibrant Media always believed that the patents were invalid, and the IPR process confirmed that.”

An Office for Harmonization in the Internal Market study published in January revealed “The case was a good example of how IPRs that mainstream advertising made up almost can be an effective strategic tactic when half of the adverts displayed on 14,000 faced with a patent infringement lawsuit.” webpages suspected of intellectual property rights infringement. IBM sells patents to Western Digital More than 1,500 unique brands were identified Data storage solution company Western during the study, with mainstream advertising Digital has acquired more than 100 patents making up 46 percent of all ads collected. from IBM.

Anti-cybersquatting service gives brands a boost Continued from p1

Western Digital has also signed crosslicence agreement with IBM, which was granted 7,355 patents in the US last year.

Domains Watch is a first-come, first-served system, so two applications for the same domain name will always go the original applicant provided it can provide evidence of its rights.

According to its statement, Western Digital expects the patent acquisition and cross-licence to strengthen its technology leadership position, which is already backed up by a portfolio of more than Steve Machin, co-CEO of Accent Media, 10,000 patents. commented: “Domains Watch represents an important step in the evolution towards creating Western Digital owns patents in distributed an open and safe space on the internet for rights storage, object storage and emerging nonholders and the rights protection community.” volatile memory. “Our early successes working with some of the world’s leading brands have demonstrated that this is a truly invaluable offering.”

General Electric loses hyperlink case Continued from p1

General Electric claimed that Vibrant’s In-Text product, which connects keywords in text to related content through hyperlinks, infringed the patents. Vibrant’s IPR petitions secured a stay of the district court litigation, and the successful invalidations of the patents by the PTAB, affirmed by the Federal Circuit in December 2015, mean the case has now been tossed. Kevin Littman, partner at Foley & Lardner, which represented Vibrant in the case, said:

Contents

Latest News

The Federal Circuit upholds an attorneys’ fees award in its first ruling since the Supreme Court’s guidance in Octane Fitness v ICON Health & Fitness p4

Latest News

Apple, Amazon, Microsoft and Walmart are among the Fortune 100 companies to have Further terms of the deal were not disclosed. registered a .sucks domain name p4 Mike Cordano, president of Western Digital, said: “This agreement reflects our Samsung’s bid to have its design patent focus on innovation.” infringement case against Apple heard by UK Intellectual Property Office opens the US Supreme Court is attracting a lot cross-border portability consultation of support p5 The UK Intellectual Property Office (IPO) is seeking feedback on the EU’s key Single Digital Market proposal to create a cross- Brand owners are feeling both the pull and border portability right for content. the push of Alibaba’s ecommerce platforms in China Feedback is being sought on how the p7 cross-border portability right, which would allow consumers to take their digital files or online subscriptions from one EU member Arrivals and departures at ICANN, Marshall state to another, should be shaped in the Gerstein and Bird & Bird enacting regulation. p10

Latest News

Alibaba Update

People Moves

IPzen 2


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Trademarks Patents Designs Copyright Anti-counterfeiting Border Enforcement Measures Domains Data Protection IP Litigation

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IP Due Diligence Annuities Transfer of Technology Piracy Licensing Distributorship Franchising Customs Related Assistance Registrations Renewals Assignments


Latest News As part of the Digital Single Market initiative, the European Commission proposed the cross-border portability right to make it “easier for Europeans to access and use content legally”. The European Commission aims to have the regulation for the cross-border portability right in force by 2017. It would become effective in all 28 members states. The UKIPO’s consultation revealed that the proposed regulation would only apply to paid subscription services and those that have verification mechanisms in place, as well as current contracts and acquired rights, to remove the need for lengthy contract renegotiations between licensees and rights holders. Comments must be provided to the UKIPO by 12 February.

Federal Circuit backs reading of Octane Fitness v ICON Health & Fitness The US Court of Appeals for the Federal Circuit has upheld an attorneys’ fees award in its first ruling since the Supreme Court’s guidance in Octane Fitness v ICON Health & Fitness. Lumen View was told to pay attorneys’ fees to FindTheBest because its patent infringement lawsuit was baseless, although the double award issued by the lower court was not appropriate and must be reassessed, the Federal Circuit ruled on 22 January. Start-up FindTheBest, which operated a search service that uses a comparison feature called Assist Me, was among almost 20 defendants accused of infringing Lumen View’s patent. The district court awarded attorneys’ fees to FindTheBest after invalidating Lumen View’s patent, which claimed a bilateral matching method that even “the most basic” pre-suit investigation would have shown was not infringed. The frivolous and objectively unreasonable lawsuit was held to be exceptional under the Supreme Court’s 2014 Octane Fitness v ICON Health & Fitness ruling, which said that an ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position, or the unreasonable manner in which the case was litigated. The Supreme Court ruled: “A district court may award fees in the rare case in which a party’s unreasonable conduct—while not necessarily independently sanctionable—is

nonetheless so ‘exceptional’ as to justify an The UK government confirmed the whitepaper’s award of fees.” release in a monthly newsletter highlighting updates on the Chinese IP environment. “The second category of cases in which the Federal Circuit allows fee awards is also Tencent said it has dealt with more than too restrictive. In order for a case to fall 13,000 cases of IP infringement on WeChat, within this second category, a district court covering both public and private accounts. must determine both that the litigation is objectively baseless and that the plaintiff Trademark infringement cases were most brought it in subjective bad faith.” the common complaint for both types of account, but the majority were made against “But a case presenting either subjective bad public accounts, with access to private faith or exceptionally meritless claims may accounts restricted to invited users only. sufficiently set itself apart from mine-run cases to warrant a fee award.” The China-Britain Business Council has also announced that it is launching an IP Ruling on 22 January, the Federal Circuit cooperation initiative with Tencent covering upheld the district court’s reading of the WeChat platform. Octane: “Even if Lumen View’s litigation conduct was not quite sanctionable, the The council teamed up with Alibaba last court reasonably determined that the case year to great effect, removing more than £8 was exceptional.” million worth of counterfeit versions of UK products from the company’s ecommerce “The allegations of infringement were platforms, which include Taobao. ill-supported, particularly in light of the parties’ communications and the proposed Brands flock to .sucks gTLD claim constructions, and thus the lawsuit appears to have been baseless.” Apple, Amazon, Microsoft and Walmart are among the Fortune 100 companies to have The district court also doubled the fee award registered a .sucks domain name. in a bid to deter Lumen View and other patent assertion entities from a “predatory The gTLD’s registry, Vox Populi, revealed strategy” that aims to “extract a nuisance in a blog post on 18 January that 55 settlement” through “threats to make the prominent brands from the Fortune 100 list, litigation expensive” and “frivolous” claims. which ranks the top US-based companies by revenue, have all signed up for their But the Federal Circuit took issue with the own domain name, including six from the way the district court calculated the award top 10. amount, because it “did not properly explain its determination”. Walmart, Apple, Chevron, General Motors, Exxon Mobil and Ford Motor, which occupy The Federal Circuit: “Deterrence is not six of the top 10 spots in the Fortune 100 generally a factor to be considered in list, have all picked up the .sucks domains determining a reasonable attorney fee. containing their chief trademarks, although Although deterrence may be a consideration they currently do not host any webpages. when determining whether to award attorney fees, it is not an appropriate consideration Vox Populi commented in the blog post: in determining the amount of a reasonable “The top 10 [Fortune 100 companies] are attorney fee, which is principally based on well-known to most people. Beginning the lodestar method.” this year with Walmart and running to CVS Health, it is a diverse group, reflecting the The award was vacated and returned to the broad reach of business.” district court for further consideration. “Each has a history of making the right WeChat is latest Chinese innovation decision most of the time. We’d like to think to fight counterfeit goods online registering a .sucks domain name is another one of those.” The owner of Chinese messaging app WeChat has released a whitepaper Instagram wants deal upheld highlighting the efforts it has taken to protect rights owners from infringement on Instagram has launched legal proceedings the platform. in the US in a bid to have a 2011 domain name purchase agreement upheld and WeChat owner Tencent’s whitepaper block a “sham” lawsuit in China. explained how it’s tackling intellectual property infringement among its more than Facebook-owned Instagram has asked for a 440 million users. declaratory judgement from the US District 4


Latest News Court for the Northern District of California AS Roma wanted the domain name transferred, that its five-year-old deal to purchase because it incorporates its trademark and is instagram.com from a Chinese family is identical or confusingly similar. valid. The case was filed on 13 January. The football club also claimed that asroma. The photo sharing service paid $100,000 in us “is so obviously connected” to AS 2011 for instagram.com, which was owned Roma that its registration by a third party “suggests opportunistic bad faith”. by Murong Zhou of China. Zhou, along with other family members, has made a business out of squatting on domain names containing famous trademarks, including Instagram’s, according to the district court complaint. Instagram has succeeded in winning another 21 domain names from Zhou through Uniform Domain-Name DisputeResolution Policy (UDRP) proceedings. The panellist called Zhou a “known cybersquatter” in the judgement ordering transfer of the domains.

Patent Act “raises serious constitutional concerns, is a misreading of the statute, and is dangerous to the technology industry”. Section 289 holds that an infringer is “liable to the owner to the extent of [its] total profit”.

“The [Federal Circuit’s decision] interprets Section 289 to expand the exclusive right “It is inconceivable that Giacometti could granted by a design patent well beyond the make any active use of the disputed domain powers granted to Congress by the Progress names without creating a false impression Clause. The Progress Clause grants of association with AS Roma.” Congress the power to give an inventor ‘the exclusive right’ to her ‘discoveries’.” But panellist Putnam Lowry ruled that although asroma.us is identical or “By interpreting the term ‘article of confusingly similar to AS Roma trademarks, manufacture’ to apply only to articles sold to Giacometti did not register the domain ‘ordinary purchasers’, the Federal Circuit’s name in bad faith. decision gives the inventor of a ‘discovery’ claimed in a fairly narrow design patent “Giacometti did not register or use the the right to the profits made on a complex disputed domain name in bad faith … device that is the result of literally thousands because Giacometti has rights or legitimate of separate, patented, innovations.” interests in the asroma.us domain name as a non-commercial fan club.” SCOTUS throws book at petitioner

But Zhou has so far failed to transfer the domain names, according to the complaint, and she claimed during the Samsung gains support for Supreme UDRP proceedings that she was induced by Court bid from CCIA members Instagram’s intermediary to sell instagram. Half a dozen amicus briefs have been filed com for an unreasonably low price. in support of Samsung’s bid to have its Members of Zhou’s family filed a “sham” design patent infringement case against complaint in the Shenzen Futian Court Apple heard by the US Supreme Court. against Instagram in December 2015, claiming the 2011 agreement is invalid The Computer & Communications Industry because she did not have the authority to Association (CCIA), Facebook, eBay Google sell the domain name. They want the deal and a string of other tech companies, as to be torn up and instagram.com returned. well as consumer advocacy groups and academics, filed amicus briefs this month Instagram wants the 2011 agreement to be calling for the Supreme Court to overturn upheld and the California district court to the Court of Appeals for the Federal Circuit’s find Zhou and her family in violation of the May 2015 decision in Samsung v Apple. Anti-cybersquatting Consumer Protection Act, as well as damages of up to $100,000 The Federal Circuit backed Apple and found for each of the 21 infringing domain names. that Samsung had infringed three design patents with its Galaxy smartphones, among AS Roma fan site gets to keep others. An en banc rehearing request was asroma.us domain name knocked back in November. Italian football club AS Roma has lost a bid to retrieve a confusingly similar domain name because it is used to host a noncommercial fan site.

Samsung was found by a jury to have infringed three ‘ornamental’ design patents and was eventually ordered to pay $980 million in damages. It has already paid $548 million of that sum to Apple. But Samsung National Arbitration Forum panellist still disputes whether it really infringed the Houston Putnam Lowry ruled on 11 January patents and wants the Supreme Court to that US resident Simone Giacometti did not revisit this area of patent law for the first time register asroma.us in bad faith. “in more than 120 years”. Giacometti registered the domain name in The amicus briefs back Samsung’s argument 2010 as an online base for the Los Angeles that the Federal Circuit erred by allowing AS Roma fan group. the original jury to award Samsung’s entire profits from the sale of smartphones found But the website has not been updated in to contain the patented designs. several years, with the fan group, which has more than 200 members, predominantly The CCIA argued in its brief that the Federal using a Facebook page instead. Circuit’s interpretation of Section 289 of the 5

Supap Kirtsaeng, who resold textbooks he purchased in Thailand to US customers via eBay, has lost his bid to have publisher John Wiley & Sons pay his attorneys’ fees. The US Supreme Court dismissed Kirtsaeng’s appeal on 15 January, holding that lower circuit courts were not split over how handle attorneys’ fee awards. John Wiley filed suit against Kirtsaeng in 2012, claiming his importation of the books was an infringement of its rights. But in March 2013, the Supreme Court held that the first sale doctrine applies to copies of a copyrighted works lawfully made abroad. The Court of Appeals for the Second Circuit then reversed its earlier decision that he did infringe. Kirtsaeng later sought to get his attorneys’ fees paid, but failed at district court and the Second Circuit. He appealed to the Supreme Court, arguing that his case had been handled at a different circuit court, his fees would have been awarded. The Second Circuit assessed Wiley on “objectively unreasonable” grounds, finding that Wiley’s claims were not and therefore did not need to pay Kirstsaeng’s fees. But in the latest decision, the Supreme Court said the petition “tries unsuccessfully to repackage various courts applications of a fact-intensive discretionary standard as an extensive series of circuit splits”. The court said the objectively reasonable analysis is not a departure from other circuits, but is in line with them.


Intellectual Property in an Innovative World


Alibaba Update

Mark Dugdale reports

Opposites don’t always attract B r a n d s are feeling t he pull a n d t h e pu sh of A l i ba ba ’s pl a t f o r m s Nestlé’s decision to partner with Alibaba points to the increasing importance of the Chinese ecommerce giant as a brand building tool in China.

$6.5 trillion in annual private consumption by 2020, according to a joint study by The Boston Consulting Group and the Alibaba-owned AliResearch Institute.

The multinational food and beverage company, which failed to trademark the KitKat shape in the UK on 20 January, announced more positive news the day before in the form of the Alibaba partnership, which will see Nestlé sell products through Tmall and Taobao, all in a bid to connect with Chinese retailers and consumers, particularly in China’s hard-to-reach rural areas.

At the same time, private online consumption is projected to increase 20 percent annually up until 2020, while growth in retail sales through brick-and-mortar stores is expected to reach a measly 6 percent. Ecommerce will drive an estimated 42 percent of total consumption growth—to $1.6 trillion, according to the study. Mobile ecommerce, which already accounts for 51 percent of all online sales in China, compared with a global average of 35 percent, will grow even faster, placing Alibaba and its stable of online and mobile platforms at a distinct advantage.

Sebastien Szczepaniak, vice president of group sales and e-business at Nestlé, said the company’s online sales are growing more than 25 percent per year, highlighting the importance of an online presence to the bottom line. “Moreover, offline purchases are increasingly influenced by what we see online, so brand building has gone beyond having good television advertising and nice packaging. Our ability to build brands on any touchpoint, be it digital or analogue, is vital.”

But where there are opportunities for brands, there are also opportunities for copycats, and counterfeiters have proven to be a scourge across Alibaba’s ecommerce platforms—one that is proving increasingly difficult to purge, much to the chagrin of those brands with so much to gain, because they are contending that it’s Alibaba that’s not doing enough.

For any brand wanting to build a presence in China, Alibaba’s ecommerce platforms are the places to do it. According to the company’s Q4 2015 financial results, its platforms had 407 million active buyers, an increase of 21 million over the prior quarter.

Indeed, the growing frustration with Alibaba’s anti-counterfeiting efforts became apparent when responses to the US Trade Representative’s call for comments on its (USTR) 2015 Notorious Markets list were made public.

That’s a huge portion of the Chinese consumer market, which is projected to remain one of the world’s fastest growing, reaching

Chief among Alibaba’s critics was the American Apparel & Footwear Association (AAFA), whose president and CEO, Juanita Duggan, said 7


Alibaba Update in a statement late last year: “Our members face enormous difficulty working with [Alibaba platform] Taobao in solving the problem of counterfeits, meanwhile illegal merchandise continues to proliferate.”

“Brand owners continue to report that Alibaba platforms, particularly Taobao, are used to sell large quantities of counterfeit goods,” reported the USTR.

“These problems persist despite our repeated efforts to work with them. The sheer volume of counterfeits on the site as reported by our members, along with the company’s unwillingness to make serious reforms is why, after three years, we feel it is necessary to recommend that Taobao be added back to the list and that the US elevate the pressure on them to make substantive, measurable improvements to the counterfeit problem.”

“Alibaba reported that it has added new enforcement features since the 2014 list,” according to the USTR, “including a good-faith product takedown procedure, a three- and four-strikes penalty system, and an English-language version of the TaoProtect portal to register IPR and submit takedown requests.” “Some rights holders also report good working relationships and cooperation with Alibaba’s enforcement teams. However, it is unclear what effect these procedures are having on the overall prevalence of counterfeit goods on the Alibaba platforms, particularly Taobao. Furthermore, submissions this year from trademark holders in several industries do not report improvement of the underlying problem.”

The public version of the AAFA’s comments to the USTR described Taobao’s takedown programmes as “incomprehensible, difficult to use, highly subjective, and do not often result in permanent takedowns”, despite more than three years of reforms put into place since Taobao’s first inclusion in the Notorious Markets list in 2012.

The USTR is “increasingly concerned” by rights holders’ reports that Alibaba’s enforcement programme is too slow, difficult to use and lacks transparency.

Alibaba enacted various measures over three years to protect IP on the likes of Taobao, including the creation of online platforms for rights holders to register IP rights and submit takedown requests, and employing thousands of people to work on takedowns, deal with consumer complaints, monitor listings, and partner with law enforcement agencies.

“The USTR does not re-list Taobao or Alibaba at this time but it encourages the company to enhance cooperation with all stakeholders to address ongoing complaints. Given the size and the scale of Alibaba’s platforms, stronger and more efficient systems for addressing right holders’ concerns should be undertaken without delay,” explained the USTR.

But it’s unclear what results these efforts have yielded, largely because Alibaba does not publish the relevant figures, leaving the AAFA unsatisfied that Alibaba has really done enough to warrant Taobao’s continued absence from the Notorious Markets list.

These steps should include simplifying Taobao’s processes for rights holders to register and request enforcement action, making its good faith takedown procedures generally available, and reducing its timelines for takedowns and issuing penalties for counterfeit sellers.

Alibaba remained adamant that it’s doing all it can to protect IP on its platforms, arguing in rebuttal comments issued on 12 October: “The refinements that we have introduced to our system in recent years already address some of the AAFA’s concerns.”

“The USTR will continue to monitor the situation in the coming year for evidence of whether the new enforcement changes are demonstrably effective in addressing ongoing concerns.”

Biting back, the AAFA claimed the systems and programmes that Alibaba “cites as progress are the very programmes our members have cited as being incomprehensible, difficult to use, and highly subjective”.

Although apparently unrelated to international pressure from the US, Alibaba took a clear step in the required direction by appointing Matthew Bassiur as head of global IP enforcement in December. He joined the Chinese ecommerce company from Pfizer, where he oversaw the pharma company’s anti-counterfeiting operations. Prior to Pfizer, he was counsel for IPR enforcement at Apple.

“These programmes are not nearly robust enough to handle the likely volume of counterfeits on the site. While Alibaba provided a long list of activity it has undertaken, the end result is still a system that does not result in permanent takedowns or a market that contains fewer counterfeits. Any search of Taobao on any day, including this morning, reveals dozens and dozens of listings of AAFA member brands at absurdly low prices—a strong indication that such merchandise is counterfeit.”

In his new role, Bassiur will lead a team that works with international brands and retail partners, industry associations, government regulators, law enforcement and other organisations to advance Alibaba’s anti-counterfeiting and IP rights protection efforts.

Getting to the heart of the issue, the AAFA added in its rebuttal comments that Alibaba has failed to respond to a request for a highlevel meeting to discuss an anti-counterfeiting strategy, a charge that the company denied and flipped, laying the blame at the trade association’s feet: “To resolve these issues, both parties need to communicate directly with each other. However, for the past several months, we have repeatedly requested the AAFA to have a direct substantive discussion without success.”

“Bassiur’s appointment is the latest step in Alibaba Group’s comprehensive and industry-leading efforts to fight counterfeits,” commented Jack Ma, executive chairman of Alibaba. “Counterfeiting is a problem that challenges all forms of distribution, whether in ecommerce or offline retail. We will continue to be relentless in our long-term commitment to protect both consumers and intellectual property rights owners, and we call on all companies in our industry to join our fight against bad actors,” added Ma.

“Insisting on only CEO level meetings does not indicate a willingness to truly sit down and discuss substantive issues; it seems directed more at achieving publicity than at building a global system to fight counterfeits and protect the interests of rights holders. If they are willing to have a substantive and working discussion with Alibaba directly, so are we.”

The solution to this standoff is likely a mixture of approaches— Alibaba can probably do more to stop counterfeiting on its platforms, while brands must do whatever they can to protect their rights, ideally in partnership with the relevant platform provider, so that any enforcement is as effective as possible. Further deteriorations in the relationships between Alibaba and brands would be the unacceptable outcome here, so the duty lies with all parties to work together to combat the counterfeit problem. IPPro

Despite the AAFA’s concerns, Taobao remained off the USTR’s 2015 Notorious Markets list, although the Alibaba platform did receive an honourable mention that was loaded with warnings. 8


LEARN.STRATEGIZE.NETWORK. We expect more than 9,500 brand management, trademark and other IP professionals from all over the world to register for the 2016 INTA Annual Meeting! Don’t miss this opportunity to be part of the world’s biggest brand owners meeting and take advantage of hundreds of educational sessions, business strategy meetings and networking opportunities. Meeting highlights include: • More than 300 educational offerings including 55 general educational sessions, more than 225 table topics, users’ group meetings with leaders from several national and regional trademark offices, a 2-day Course on International Trademark Law and Practice, Mediation Training, a new Academic Series, Career Development Day, the Trademark Administrators Brunch and more. • Opportunities to collect CLE credits from 50 U.S. states and CPD points from several international law societies. • Special offerings for IP professionals at corporations of all sizes, including the In-House Practitioners Workshop and Luncheon, the In-House Practitioners reception and 10 Industry Exchanges. • Hassle-free ways to conduct business in the Orange County Convention Center by booking one of 3 different types of meeting spaces. • More than 30 official networking events, including a new exclusive INTA Concert at the House of Blues, the Sunday evening Opening Ceremony and Welcome Reception, 17 paid networking excursions, Speed Networking, Annual Meeting Registrant First Time Orientation and Reception, and the Grand Finale. • Exhibition hall with more than 100 exhibitors and numerous sponsorship opportunities. • Over 100 committee, project team and Global Advisory Council meetings for the new committee term (2016–2017). • Numerous meeting conveniences just for you including complimentary shuttle services at INTA hotels and the Orange County Convention Center!

Register today at www.inta.org /2016AM!

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People Moves

Industry appointments Arrivals and departures at ICANN, Marshall Gerstein and Bird & Bird Fadi Chehadé, president of the Internet Corporation for Assigned Names and Numbers (ICANN), will become senior advisor to the executive chairman of the World Economic Forum.

Chehadé commented: “I am grateful for the opportunity to contribute to the World Economic Forum’s work, advising the Global Challenge Initiative on the Future of the Internet.”

The president and CEO of ICANN will join the World Economic Forum on 1 April to head up its Future of the Internet Initiative.

Chehadé announced his plans to leave ICANN in May 2015. He joined ICANN in 2012, replacing former president Rod Beckstrom.

The initiative will address digital trade, cyber crime and policies for facilitating internet access.

Klaus Schwab, founder of the World Economic Forum, said: “The forum’s work in this area will benefit from Chehadé’s vision in its 10


People Moves efforts to advance progress through multistakeholder cooperation on some of the practical economic, social and security issues facing the international community.” Vinson & Elkins has promoted Erin Ator Thomson to counsel. Based in the firm’s Austin office, she focuses on structuring and negotiating IP and technology transactions, counselling, and litigation. Eleven other promotions to counsel were made across the firm, including members in the financial, M&A and real estate sectors.

Editor: Mark Dugdale editor@ipprotheinternet.com +44 (0)203 750 6022

Scott Wulfe, managing partner of Vinson & Elkins, said: “We are excited to announce the promotion of these talented and deserving lawyers.”

Deputy Editor: Stephanie Palmer stephaniepalmer@blackknightmedialtd.com +44 (0)203 750 6019

Bird & Bird has recruited a team of patent attorneys for its office in Hamburg. The team, led by partners Felix Landry and Felix Harbsmeier, join from Uexküll & Stolberg.

Reporter: Tammy Facey tammyfacey@blackknightmedialtd.com +44 (0)203 750 6017

Landry focuses his practice on patent prosecution, oppositions and appeals proceedings.

Contributors: Becky Butcher and Drew Nicol editor@ipprotheinternet.com

Harbsmeier is active in the fields of electronics, physics and engineering and has worked on patent proceedings before the German and European Patent Office.

Marketing Director: Steven Lafferty design@securitieslendingtimes.com

Associates Moritz Neidel and Malte Frese have also joined Bird & Bird.

Marketing Executive: Ayla Uzunhasan ayla@blackknightmedialtd.com +44 (0)203 750 6020

Christian Hamsen, head of the Germany intellectual property group at Bird & Bird, said: “We are delighted with the competent strengthening of our successful patent attorney team.”

Designer: John Savage johnsavage@ipprotheinternet.com +44 (0)203 750 6021

Holland & Hart has added new attorney Teague Donahey to its offices in Boise, Idaho.

Associate Publisher: Carlos Northon carlosnorthon@ipprotheinternet.com +44 (0)203 750 6023

He arrives from Sidley Austin, where he served as partner.

Publisher: Justin Lawson justinlawson@securitieslendingtimes.com +44 (0)203 750 6019

Donahey handles high technology patent litigation disputes on behalf of major companies.

Recruitment Manager: Chris Lafferty chris@assetservicingtimes.com +44 (0)208 663 9624

He has worked on technologies related to software, computer hardware and telecommunications. Brian Hansen, administrative partner at Holland & Hart’s Boise office, said: “Donahey’s IP litigation experience accentuates our existing patent prosecution and transactional IP capability in Boise.”

Office Manager: Chelsea Bowles accounts@securitieslendingtimes.com +44 (0)203 750 6020

Slava Elkin has joined Marshall, Gerstein & Borun as partner.

Office fax: +44 (0)20 8711 5985

He previously served as a senior software engineer at a telecommunications company.

Published by Black Knight Media Ltd

Elkin focuses on US and foreign patent prosecution in software and electrical engineering.

Stay connected with IPPro The Internet on Twitter, Facebook and LinkedIn

He has helped clients develop patent prosecution in digital mapping, wireless communications and 3D modelling.

Published by Black Knight Media Ltd Provident House, 6-20 Burrell Row Beckenham, BR3 1AT, UK Company reg: 0719464

Two life sciences partners also joined Marshall Gerstein with Elkin. Jeffrey Sharp, managing partner of the firm, said: “Marshall Gerstein celebrates their tireless efforts in providing high quality service to the firm’s clients.” IPPro

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Black Knight Media www.blackknightmedialtd.com

Tired of keeping these turning on your own? So are we

Stay connected with the world’s top IP professionals with IPPro Connects, a handy guide to patent, copyright and trademark practitioners and the jurisdictions in which they operate

Featuring easily digestible guides to jurisdictions around the world

In-depth profiles of IP practitioners, because the individuals are as important as the firms

A dedicated website so that all of the information in IPPro Connects is available online

To be distributed at more than 20 conferences around the world throughout 2016

To find out more about IPPro Connects, contact: carlosnorthon@ipprotheinternet.com


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