In 2017, AM General LLC known for manufacturing the military vehicle known as the Humvee, sued Activision Blizzard, Inc., citing that Activision closely copied the design of the vehicle for several issues of the popular Call of Duty video game franchise, as well for repeatedly invoking the “Humvee” trademark and utilizing the vehicle and trademarks in various promotional materials.
The defendant argued that the strong protection afforded by the First Amendment warranted the dismissal of the AM General’s claims.
In April 2020, the court found, by using the Rogers Test, that Activision Blizzard’s interest in presenting military verisimilitude easily met the low bar for artistic relevance. Furthermore, by using the Polaroid Factors the court determined that Activision Blizzard’s use of Humvees was not explicitly misleading. Although some surveys did show some potential confusion amongst users, the fact that AM General was a manufacturer of vehicles and Activision Blizzard was a producer of video games heavily weighed against such assumptions.
In summary, the Court held in its decision to grant a summary judgment to Activision Blizzard against all of AM General’s claims, that “enhancing the games’ realism” was enough to determine the use of Humvees a part of the games artistic expression.
Such a case will prove helpful to art producers from all walks of life who might want to include possibly trademarked material in attempts to more closely ground their art in reality.
Perhaps the most widely applied test for protecting free speech, which is found under the First Amendment to the Constitution of the United States of America, in matters of trademark law.
This test spawns from the landmark case Rogers v. Grimaldi, where a performer by the name of Ginger Rogers sued the producers and distributors of a film under the title of Ginger and Fred, alleging that said title violated the Lanham Act by creating a false impression that she was involved in some manner in the film.
The Lanham Act, the primary federal trademark statute of law in the United States, prohibits, amongst other things, the use of marks that confuse as to the affiliation, connection, or association with the mark holder or as to the sponsorship or approval of hoods or services.
At the trial, Rogers offered evidence in the form of a survey that showed 43% of individuals exposed to the title of the film associated it with her. The defendants on the other hand argued that the First Amendment shielded the film from Rogers’s claims. The screenwriter submitted an affidavit claiming that the chosen name was meant as a symbol of hope during a difficult period, and the character in the film was never meant to resemble or portray the real Ginger Rogers.
Ultimately, the district court ruled in favor of the defendants concluding that the film was a work of artistic expression and not a commercial product, therefore being beyond the scope of the Lanham Act.
However, the Second Circuit dived deeper into the conclusion recognizing the commercial nature of many works of artistic expression and thus ruling that the Lanham Act could be applied to the titles of such works. The Second Circuit went on to state that the Lanham Act should not be applied unless the title has no artistic relevance to underlying work whatsoever, or if it has some artistic relevance unless the title explicitly misleads as to the source of the content of the work.
The Second Circuit applied this standard to the case in the form of a two-pronged test, by first establishing that the title of the film had some artistic relevance by sharing an underlying meaning with the contents of the film, and second, that the title was not misleading, stating that although to commercial products the Lanham Act is applied rigorously, because of the expectations of the consumers on their accuracy, titles of artistic works are not taken so literally.
Thus was born the Rogers Test, which may only be applied to non-commercial marks, which determines that the title of an artistic work is protected under free speech from the Lanham Act when a) the title of the work has some artistic relevance to the underlying work and b) that the title is not explicitly misleading as to the source of the content of the work.
Background of the case
The young Austrian Maximiliano Schrems – law student and resident in Ireland – made a complaint in 2011 to the Irish Commissioner for Data Protection against the social network Facebook, for transfer of their data from the servers of Facebook in Ireland to the servers of Facebook Inc. located in the United States for further processing.
In his claim, Schrems – based on the facts and evidence provided by Edward Snowden through which, the former agent revealed how the United States operated in global surveillance-, alleged that said country did not offer adequate protection to the personal data that received from users in the countries that are members of the EU, and did not even contain a process for the selection and treatment of these data, but rather took them in large quantities and thus processed them, using them for purposes other than those that truly informed the users of the social network –in their eagerness to fight terrorism-.
This motivated Schrems to request a ban on his data being transferred to the servers of Facebook Inc. The Irish body rejected Schrems’ proposal, based on Decision 2000/520 / EC, of July 26, 2000S, considering that The United States complied with an adequate level of protection. However, Schrems appealed this decision to the highest court in Ireland – the High Court -, which finally held that the United States made excessive interference with the personal data that was transferred to its territory.
The decision of the CJEU. Schrems´ I judgment.
The High Court asked the European Court to issue a preliminary ruling regarding the issue of whether said decision -2000/520/EC- is valid and whether it makes it impossible – or not – for the national authorities of the countries of the European Union to carry out a correct control regarding the personal data that is transferred from an European country – in this case, Ireland – to a third state. Finally, the European Court ruled that, although the EC decision 2000/520 prescribes that the United States has an adequate level of protection, the truth is that also the national organizations responsible for ensuring the protection of the data of its inhabitants, they are empowered to carry out this control, although the invalidity of a Decision – in this case, the one adopted by the European Commission – can only be declared by the CJEU.
Finally, the European Court, in order to rule as it did –declaring the invalidation of the EC decision-, taking into account, not what was established by the Commission’s Decision, but, in factual terms, whether the privacy of the data owners was protected when transferred to the United States. In other words, when making such an assessment, the third country is not required to have a regulatory framework and a level of protection identical to that of the EU; more than anything, that this third country provides an adequate protection framework for the data of the holders.
For all these reasons, it declared Decision 520/2000 invalid based on the following arguments:
1) That there was an interference with the right to privacy;
2) Declared that said interference meant a violation of the essential content of the right to privacy.
Due to the judgment issued by the CJEU that invalidated decision 520/2000 of the European Commission regarding what is known as “safe harbor”, regarding the transfer of data to the United States, it was adopted within this framework, the so-called decision 1250/2016, better known as “Privacy Shield”.
The purpose of this decision is summarized as follows:
– Acknowledges that the EU-EE Privacy Shield comprised of the privacy principles applicable to certified United States organizations (companies) and related commitments made by the Department of Commerce and other United States authorities, it provides an adequate level of protection for personal data transferred from the EU to these organizations.
– This means that personal data can be freely transferred to organizations in the United States included in the “Privacy Shield List”, which is prepared and published by the United States Department of Commerce.
– The application of the Privacy Shield guarantees the right to respect for privacy and the right to the protection of personal data of all persons in the EU whose personal data is transferred through the Privacy Shield.
– It also guarantees legal certainty for companies that rely on your application to transfer personal data from the EU to US organizations certified by the Privacy Shield.
Precisely this decision is the one that was declared invalid in the judgment of the Schrems II Case, issued by the CJEU on 07/16/2020, which will be subsequently commented.
If you’re reading this article, you will have received a notification of provisional refusal by a pre-registered Chinese or American TM holder who thinks your international trademark application is infringing on their IP rights. Here, we will go over the existing procedures to go against such a notification and fight to protect your IP in China and the United States.
If you need help with your trademark we have a trademark attorney with years of experience who can help you.
Provisional Refusals | Pre-registered Chinese TM
The People’s Republic of China is not necessarily renowned for their protection of IP – in fact, more than 70% of all counterfeited goods in trade are estimated to come from China, which accounts for around 12.5% of their goods exported and 1.5% of their GDP. Nonetheless, the Chinese market is gigantic and is an obvious target for many growing companies. Fortunately, they are signatories to the Madrid Protocol and there are certain mechanisms to protect trademarks in China. The most relevant national law to be aware of is the Chinese Trademark Law, and the relevant national TM office is the Chinese National Intellectual Property Administration (CNIPA), or Chinese Trademark Office.
Notice of opposition
Regarding the procedure, once the international trademark application has been published in the WIPO International TM Gazette, any pre-existing trademark holder may file a notice of opposition within 3 months, starting from one month after the publication date. There will be a further 3-month period to submit relevant documentation.
Once the applicant has received the notification of provisional refusal, they then have 30 days to respond to the opposition. At this point, the applicant must appoint a local representative in order to respond to the opposition. The applicant will also have a 3-month period in order to submit all other documentation relevant to their claim.
It is of utmost importance to understand that the opposition and the response to the opposition shall be the official legal claims of both parties and shall be reviewed by the CNIPA once all documentation has been submitted. These claims should be well-drafted with a coherent structure and a strong legal basis if you are hoping to have the best chances possible to receive a favorable outcome from the Chinese Trademark Office.
We should also take note of the ex officio refusal by the Chinese Trademark Office itself, where they have 12 months to exercise their right of refusal (in some cases 18 months). In this scenario, the trademark applicant will have 15 days to respond to the notice from the date of receipt, where the application shall be returned to the adjudication board of the Chinese Trademark Office for a second review. The CNIPA will then have 9 months to review the application again and will respond to the applicant in writing, declaring their final decision.
If the applicant, either under ex officio provisional refusal or through refusal by opposition, receives a final decision that is unfavorable, they will have 30 days to appeal the decision of the Chinese Trademark Office to the national courts of China. Again, it cannot be understated, to convince a judge that the national trademark office made the wrong decision will require a strong legal argument, something which only experienced IP lawyers can be trusted to construct.
If you would like help relating to an IP matter in China, feel free to get in touch with us.
Provisional Refusals | Pre-registered US TM
Given that the USA is home to some of the largest companies in the world, as well as being the world’s largest economy, it would be no surprise to find a growing company looking to protect their IP in the United States. The key piece of legislation to be aware of is the Trademark Act, and the relevant TM office is the US Patents and Trademarks Office (USPTO).
Notice of Opposition
Once the trademark application is received by the USPTO, and once provisionally approved by the Director, the application will be published in the Official Gazette of the USPTO. From that date, any pre-registered TM holders may file an opposition to the application within 30 days if they believe that the applicant’s new trademark would infringe on their own. This time period may be extended if requested in writing to the Director.
If this notice of opposition is accepted by the USPTO, they will notify the applicant and shall set up a Trademark Trial and Appeal Board in order to come to a final decision on the matter. The Board shall issue an institution order, which is a document that outlines the details of the opposition procedure. This shall be done electronically, and will typically set out a time frame of 40 days for the applicant to respond to the opposition, 6 months for discovery, and then the periods in which the parties can make their testimony – 30 days for the opponent, 30 days for the applicant, and 15 days for the opponent’s rebuttal.
In the applicant’s response to the opposition, they must clearly outline the legal basis for their claim as to why their trademark should be accepted. As stressed previously, it is essential that all arguments submitted to the Board must be based on strong, coherent legal claims – it would be highly recommended hiring an experienced IP lawyer for this.
Once the applicant has answered the opposition, the Discovery period begins, in which both parties may request and receive relevant information and documentation from the counterparty, including written interrogatories, document requests, depositions, and requests for admissions.
At the end of the discovery period, the final stages of the opposition proceedings shall begin. This entails the submission of briefs – mandatory for the opponent, optional (but recommended) for the applicant – which outline each party’s claims. If one of the parties requests an oral hearing, this shall be arranged, however, it should be noted that these hearing are of a summary nature – that is to say, no new evidence may be submitted, only a summary of both parties’ claims. It is common for judges to take advantage of these hearings to clarify aspects of the case that were not entirely clear in the briefs. Once finalized, the Board will make a decision regarding the admissibility of the international trademark application.
If unfavorable, either party may request a rehearing, reconsideration or modification of a decision within 1 month of the date of the decision. If unsuccessful, the losing party can still appeal to either the US Court of Appeals or it can request a brand-new trial in a District Court. A key difference between the two is the ability to introduce new evidence to the case – in the Court of Appeals, no new evidence or arguments may be submitted; in the District Courts, however, it is much more flexible and allows for the introduction of new evidence and arguments.
The US system for registering trademarks can oftentimes seem rather difficult, and just by looking at the law it can still seem unclear as to what path you should take. For any doubts, get in touch with us, and we would be happy to put your mind at ease.Read More
Patents granted in 2019 by USPTO
The USPTO granted a record of 333,530 patents in 2019, this represents a 15% increase with respect to 2018.
As with the previous 27 years, IBM has continued to hold on to the top spot for patents granted, with 9,262 in total for the year, whereas Samsung Electronics at 6,469 is second.
In terms of technology trends, medical and biotechnology are the fastest growing technical fields, with hybrid plant creation topping the list of trending technology, followed by CRISPR gene-editing technology, and then medicinal preparations (led by cancer therapies).
Other technical fields with substantial growth are Mobility, such as dashboards and other car-related inventions, quantum computing and 3-D printing.
US companies account for 49% of U.S. patents granted in 2019 up from 46 percent a year before. Japan accounts for 16% to be the second-largest, third place for South Korea at 7% (Samsung carrying a big part of that), and China (thanks to Huawei) passing Germany to be at number four with 5%.
20 top companies
The top 20 companies in terms of U.S. granted patents in 2019 are the following:
- International Business Machines: 9262
- Samsung Electronics: 6469
- Canon: 3548
- Microsoft: 3081
- Intel: 3020
- LG Electronics: 2805
- Apple: 2490
- Ford: 2468
- Amazon: 2427
- Huawei: 2418
- Qualcomm: 2348
- Taiwan Semiconductor Manufacturing: 2331
- BOE Technology Group: 2177
- Sony: 2142
- Google: 2102
- Toyota Motor Corp 2034
- Samsung Display: 1946
- General Electric: 1818
- Telefonaktiebolaget LM Ericsson:1607
- Hyundai Motor: 1504
By Maria Sol Porro, Trademarks Lawyer, and University Professor
On Monday, June 17, a U.S. District Court in Los Angeles ruled against VidAngel and fined the video filtering service $62.4 million which it must pay in reparation for damages to the plaintiffs, The Walt Disney Company, Warner Brothers, 20th Century Fox, and Lucasfilm.
Copyrighted material infringed
VidAngel, launched in 2013, is an entertainment platform that was created to help families filter out language, nudity, violence, and other content from movies and TV series. The independent company made international news in 2016 when Walt Disney Co., Lucasfilms, 20th Century Fox, and Warner Bros. all filed a lawsuit against it, claiming the video streaming service was infringing on their copyrighted material. During the trial, the Provo-based startup had previously filed for bankruptcy in 2017 and are currently still going through those proceedings.
In this context, the U.S. District Court in Los Angeles has reported that the platform streamed at least 800 titles from the studios meaning they will end up having to pay $150,000 per title in the ruling. The company’s defense was that VidAngel committed innocent infringement and should, therefore, be required to pay much less. Facing this disadvantageous ruling, VidAngel CEO Neal Harmon promised to fight back with an appeal.
Faced with this kind of meaningful decisions which are more protectionist every time, it does not seem risky to conjecture that the copyright industry has an increasing weight in the US economy, which makes it a much stronger industry. A similar phenomenon is also happening in the UE with the New Copyright Directive related to internet and platforms. Therefore, it seems that the balance between the freedom of the internet and the author rights is difficult to find.
Source: techcrunch.comRead More
A new generic top-level web domain was launched by the National Association of Boards of Pharmacy (NABP). The intention of this release is to be able to identify web sites that sell online prescriptions drugs in a legal and reliable way.
The register for this new web domain (.pharmacy) will be the first step in this process and is expected to begin in November 2014. For the moment, only companies that have already filed trademarks in the International Center for the defense of trademarks of ICANN can request a register in .pharmacy.
NABP applied for .pharmacy as a community-based gTLD representing legitimate online pharmacies and prescription drug-related organizations worldwide. This global pharmacy community includes, but is not limited to:
- Independent community pharmacies
- Chain pharmacies and any retailers offering pharmacy services
- Internet pharmacies
- Veterinary pharmacies
- Schools and colleges of pharmacy and continuing professional education providers
- Wholesale drug distributors
- Pharmaceutical manufacturers
- Durable medical equipment, prosthetics, orthotics, and supply providers
- Medical professionals advertising services related to a prescription drug
Source: http://www.nabp.netRead More
Recently a federal jury ordered two image licensing companies to pay $1.2 million to a freelance photojournalist for their unauthorized use of photographs he posted on Twitter. The $1.2 million was the maximum penalty available under the Copyright Act.
The jury found that two agencies had violated the Copyright Act; due to the use of photos taken by the photographer in Haiti after the earthquake that killed more than 250 thousand people.
This case is the first one to address how images available to the public by any social media such as Facebook or Twitter, can be used by others for commercial purposes. It is important to highlight that this is the first time the court established the liability for willful violations of the Copyright Act for this kind of actions.
On the other hand, in Latin America the regulation of pictures uploaded on Twitter or Facebook has not yet been addressed properly. Due to the lack of rules about this issue, it’s possible that the above mentioned resolution could be repeated in any court room in Latin America.
The commercial use of photographs published in any social media is definitely a trendy topic and should be followed in the future.
Save the date! Buy your tickets now for the Third annual Gastro-Intellectual Property Symposium at Chicago-Kent on November 7th.
Chicago Kent IPLS announces the Third Annual Gastro-Intellectual Property Law Symposium, which will focus on trademark issues related to the Cuban Embargo, and what might happen when the embargo ends.
Mariano Municoy, IP Lawyer at Moeller, is panelist at this event, together with Judith L. Grubner, partner at Arnstein & Lehr LLP and Joseph F. Schmidt.
For more information click here.Read More