The Case Schrems and the Fall of the Privacy Shield. First Part

By Manuel Lobato. Patents Lawyer.

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.

Decision 1250/2016.

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.

Sources:

https://eur-lex.europa.eu/legal-content/ES/LSU/?uri=CELEX%3A32016D1250

https://www.boe.es/doue/2016/207/L00001-00112.pdf

https://www.redalyc.org/jatsRepo/3376/337655201009/html/index.html

https://www.researchgate.net/publication/321792394

Provisional Refusals Under the Madrid Protocol: Country by Country Guide – China and USA

By Moeller IP Team.

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.

China

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.

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.

United States of America

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).

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.

Patents Granted by the U.S. Patent and Trademark Office (USPTO) 2019

By José Santacroce. Partner and Head of Patent Department

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:

1.  International Business Machines: 9262
2. Samsung Electronics: 6469
3. Canon: 3548
4. Microsoft: 3081
5. Intel: 3020
6. LG Electronics: 2805
7. Apple: 2490
8. Ford: 2468
9. Amazon: 2427
10. Huawei: 2418
11. Qualcomm: 2348
12. Taiwan Semiconductor Manufacturing: 2331
13. BOE Technology Group: 2177
14. Sony: 2142
15. Google: 2102
16. Toyota Motor Corp 2034
17. Samsung Display: 1946
18. General Electric: 1818
19. Telefonaktiebolaget LM Ericsson:1607
20. Hyundai Motor: 1504

Copyright Strikes Back

By Maria Sol Porro, Trademarks Lawyer, and University Professor

VidAngel Case

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.

Copyrgiht industry

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.com