Slurs, Insults and Cheers: the Latest TM and Copyright Cases Impacting Your Business 11/08/2017

Slurs, Insults and Cheers: The Latest TM and Copyright Cases Impacting Your Business 11/08/2017

Slurs, Insults and Cheers: The Latest TM and Copyright Cases Impacting Your Business

Presented by Alan Nemes

WERE YOU JUST INSULTING ME OR JUST REGISTERING A TRADEMARK? Matal v.Tam

58 U.S. ____, 137 S. Ct. 1744 (2017)

Disparagement Clause

Lanham Act §2(a) No trademark…will be refused registration…unless it: (a) consists of or comprises immoral, deceptive, or scandalous material; or matter which may disparage…..persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute.

Disparagement Clause Unconstitutional

. Supreme Court rules: . Disparagement Clause regulates content or viewpoint based speech in violation of 1st Amendment free speech . Limiting expressive speech requires strictest scrutiny . Even if commercial speech, government fails to meet its burden in demonstrating substantial interest in curtailing speech and narrowly drawing limits . Rejects claims that that trademarks are government speech or government subsidies.

Immorality and Scandal: Next to the Chopping Block? . Lanham Act §2(a): . No trademark…will be refused registration…unless it: . (a) consists of or comprises immoral, deceptive, or scandalous material; or matter which may disparage…..persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute.

In Re Brunetti No. 15-1109 (Fed. Cir. 2014)

Copyright Protection for Cheerleading Uniforms? Star Athletica, LLC v. Varsity Brands, Inc. 580 U.S. __, 137 S. Ct. 1002 (2017)

Star Athletica Varsity Brands Design Design

Star Athletica, LLC v. Varsity Brands, Inc.

Star Athletica Varsity Brands Design Design

Star Athletica, LLC v. Varsity Brands, Inc.

Star Athletica Design Varsity Brands Design

Star Athletica, L.L.C. v. Varsity Brands, Inc.

. 580 U.S. ____ (2017). . Holding: Design elements incorporated into useful articles are eligible for copyright protection if such elements can be conceived as a two- or three- dimensional work of art separately from the useful article, and would be eligible for copyright protection on its own after separation from the useful Article.

. Case is now remanded back to the District Court to determine whether the designs at issue in the case are actually protected by copyright.

Work of Art or Wholly Useful Article?

Brandir Intern., Inc. v. Cascade Pacific Lumber Co., 834 F. 2d 1142 (2nd Circ.1987)

Parody or Piracy? Louis Vuitton Malletier, S.A. v. My Other Bag, Inc. 674 Fed. Appx. 16 (2d Cir. 2016)

Google generic? David Elliott v. Google, Inc. 800 F.3d 1151 (9th Cir. 2017)

Doctrine of Foreign Equivalents In re S Squared, Inc. 86813357 (TTAB 2017) Not Precedential

UHAI translates to “LIFE” in Swahili Applicant

USPTO Rule Change 2017 . Specimen requirements for multiple goods claimed in one class.

. New rule change took effect July 8, 2017.

37 CFR § 2.161(h) 37 CFR § 7.37(h)

Questions

Alan Nemes 314.345.6461 [email protected]

Patent Venue: Where is Home?

By: Steve Holtshouser and Daisy Manning

Overview . Why is patent venue important? . What was resolved in TC Heartland? . What has been its Impact ? . What issues ? – Section 1400(b) first prong issues - residence – Section 1400 (b) second prong issues – REPOB and act . What can we expect in the future?

Why Does Venue Matter?

Why Does Venue Matter? . Other considerations – IPR stay policies – Consolidation of cases with common patents – Technical and patent expertise variance – Discovery practices – Section 1404 transfers – Dispositive, expert report and dispositive motion rules – Local patent rules and jury instructions – Role of magistrates

Section 1400(b)

(b) Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.

Section 1400(b) Jurisprudence . Legislative history – “domicile” and “reside” – Designed to be restrictive and cure abuses – Defendants sued wherever they could be “caught” . Fourco (1957) – U.S. Supreme Court – 1400(b) is exclusive source of patent venue – residence means state of incorporation . VE Holding (1990) – Federal Circuit – Drew definition of residence from 1988 amendments to Section 1391 = scope of personal jurisdiction

What was the impact of VE Holding?

. Contributed to rise of EDTX . 2013: 6100 patent cases filed . 2016: 4500 patent cases filed . Section 1404 - only recourse to combat forum shopping – High standard until recently: In re Google

Marshall Division, EDTX

TC Heartland LLC v. Kraft Foods Group Brands LLC (2017) . Patent battle over “Water enhancers” . Kraft: MiO brand drink enhancer . TCH: Refreshe, Skinnygirl and Sunkist brands

TC Heartland LLC v. Kraft Foods Group Brands LLC (May 22, 2017)

. Kraft sued TCH and parent in Delaware for infringement of patents covering flavored drink mixes . TCH - Indiana LLC with HQ in Indiana (SDIN) – Complaint alleged TCH is a “corporation” – SCOTUS petition for certiorari stated TCH was a “corporation” – Error acknowledged in SCOTUS briefing . TCH’s parent is an Indiana corporation

TC Heartland LLC v. Kraft Foods Group Brands LLC (May 22, 2017)

. Lower Court decisions – Relying on VE Holding (1990)– Section 1400(b) first prong satisfied because TCH subject to personal jurisdiction in Delaware (product sales) – TCH argued Fourco (1957) still good law – venue improper – Federal Circuit disagreed - VE Holding controls

TC Heartland LLC v. Kraft Foods Group Brands LLC (May 22, 2017)

. Fourco meant what it said and intervening Congressional tinkering with 1391 did not overrule it . For Section 1400(b), a domestic corporation resides only in the state in which it was incorporated – Do not look to Section 1391 to define 1400(b) . Under the facts this is a rare advisory opinion – TCH was not a corporation . Remanded for further proceedings – settled on remand

Was TCH a “change” in the law? . Who cares? (diminishing returns) – Pending defendants who had failed to make the arguments made by TCH o Rush to assert TCH – patentees claim waiver • Change in the law excuses waiver o Courts about evenly split • Fourco never overruled – any party could have raised it.  TCH did.  We did. • Unreasonable to expect parties to challenge Federal Circuit o Federal Circuit just asked for briefing on the issue • In re: Yahoo Holdings Inc., Fed. Cir., No. 18-103, 10/26/17

The Fallout: 90 Days Before and After

The Fallout of TCH: Before and After

Unresolved Issues: Residence Prong

. Declaratory Judgment actions . Corporations from multi-district states . Foreign corporations . Unincorporated associations (LLCs, LLPs, LLLPs)

Declaratory Judgment Actions . § 1400(b): Any civil action for patent infringement … . VE Holdings: It has long been held that a declaratory judgment action alleging that a patent is invalid and not infringed—the mirror image of a suit for patent infringement—is governed by the general venue statutes, not by § 1400(b). . Post-TC Heartland . Where can DJ defendants in patent suits be sued? . Incentivizes preemptive DJ actions?

Venue in Multi-District States

. Any civil action for patent infringement may be brought in the judicial district where the defendant resides … . TC Heartland: “‘residence’ in § 1400(b) refers only to the State of incorporation” . Does Stonite Prods. Co. v. Melvin Lloyd Co., 315 U.S. 561 (1942) answer this question? – WDPA “inhabitant” could not be sued in EDPA – § 1392 can not supplement § 1400(b)

Venue in Multi-District States . Diem LLC v. BigCommerce, Inc. (E.D. Tex. July 26, 2017) – Corporation resident of every district in state – Held Stonite inapplicable – Incorrect interpretation of Stonite?

. What about pre-TC Heartland? – Any district in state of incorporation: N.D. Ill, S.D. Ind., D. Neb., W.D. La. – Only district where defendant resides (i.e., principal place of business) in state of incorporation: E.D.N.Y., W.D. Mo., N.D. Tex., W.D. Tex., N.D. Cal., N.D. Oh., W.D. Mich.

Venue in Multi-District States . Rationale for expansive interpretation: – No reason to treat corporate defendants in patent infringement litigation any differently – § 1400 does not define residence – Second prong of § 1400 not rendered superfluous (non-corporate defendants) – § 1404 exists for inconvenient venues

. Potential issues: – Large states/convenience purposes undermined – § 1404 discretionary – Most districts following Stonite – forum shopping? – Contrary to plain language and legislative history?

Venue in Multi-District States . Rationale for narrow interpretation: − Stonite − “the judicial district …” − § 1400(a) − 1988 Amendments to § 1391, but not § 1400(b) − Nature of patent cases − Legislative history – intended to be restrictive

. Potential Issues: – No place of business in state of incorporation? – Contrary to TC Heartland? – Too restrictive for plaintiffs?

Venue for Foreign Corporations . TC Heartland footnote: “we do not address that question nor do we express any opinion on this Court’s holding in Brunette Machine Works, Ltd. v. Kockum Industries, Inc., 406 U.S. 706 (1972).” – Looked to Section 1391(d) for patent venue as to aliens (foreign corporations) – Can be sued in any district – Theoretically consistent? – Foreign corporations operate “outside the operation of all federal venue laws (whether general or special)”

Venue for Unincorporated Associations

. The legal domicile of … an artificial entity organized under state law is generally determined by reference to the state charter. See, e.g., Fairbanks Steam Shovel Co. v. Wills, 240 U.S. 642, 647–48 (1916). . An LLC or LP “resides” in the state under whose laws that entity is organized (no authority) . Sperry Products, Inc. v. Association of American Railroads, 132 F.2d 408 (2d Cir. 1942) = principal place of business. – Caveat: imports a Section 1391 concept

Unresolved Questions: Second Prong . What is a regular and established place of business (REPOB)? . Can REPOB of related entity satisfy § 1400(b)? . Nexus required between act of infringement and REPOB?

Unresolved Questions: Second Prong . REPOB and Act of Infringement – 3 questions – What is a regular and established place of business (REPOB)? – Can venue over related entity satisfy second prong? – Does second prong require nexus between act of infringement and REPOB?

What is REPOB? . A “Rip Van Winkle” issue – irrelevant during “reign” of VE Holding . Post-TCH – rush to make creative arguments . Raytheon C. v. Cray, Inc., 2017 WL 2813896 (E.D. Tex. 2017) – significant contacts/personal jurisdiction-like test – 2 Cray employees worked remotely from their private homes and made sales in EDTX

What is REPOB?

. Bristol-Myers Squibb Co. v. Mylan Pharms. Inc., 2017 WL 3980155 (D. Del. Sept. 11, 2017) – Not a REPOB: o Doing business/registering to do business o Personal jurisdiction o E-commerce website o Just shipping goods into the district

What is REPOB? . In re Cray, 2017 WL 4201535 (Fed. Cir. Sept. 21, 2017) (mandamus to transfer case to Washington) – Physical place – a fixed location where business is conducted – Regular and established – stable, established, meaningful time period (employee could move at will) – Of the defendant – ownership, control, more than mere advertising (here, not the defendant’s houses)

Related Entities . Related Entities – “defendant” means the named entity – Section 1400(b) not met by parent or sibling entities residence or REPOB . Unless: alter ego . Symbology Innovations, LLC, v. Lego Systems, Inc., 2017 WL 4324841(E.D. Va. Sept. 28, 2017) – Defendant parent had no physical presence in district but defendant sub did – Venue proper as to sub but not as to parent

Nexus Required? . Does Second prong require a nexus? . Scaramucci v FMC Corp., 258 F. Supp. 598 (W.D. Okla. 1966) – under the “special” patent venue statute, taking into consideration its purpose, “there must be some reasonable or significant relationship between the accused item and any regular and established place of business of the accused in the judicial district.” See Jeffrey Galion, Inc. v. Joy Mfg. Co., 323 F. Supp. 261 (1971).

Nexus Required? . Bristol-Myers Squibb Co. v. Mylan Pharm. Inc., No. CV 17-379-LPS, 2017 WL 3980155 (D. Del. Sept. 11, 2017). – “majority” view is no nexus is required but room for debate. – Federal Circuit in Cordis, 769 F.2d at 737 . Discussed earlier case: “no evidence to demonstrate that such activities were carried on concerning the specific product which was the subject of the infringement action”

Nexus Required? . Legislative History and Policy – convenience and practicality . so defendant’s “books of account and other records, as well as its officers and agents, readily available for use at the trial of such a case” – “where a permanent agency transacting the business is located, and that business is engaged in the infringement of the patent rights” . Representative Lacey (IA). Infringement of Letters Patent. Congressional Record Vol. 42 (Feb. 16, 1897) p. 1900H. (emphasis added). – restrictive legislation narrowly construed

First and Second Prong Issue: Burden of Proof . Split of authority − Procedural – governed by law of forum? − Non-procedural – governed by Federal Circuit law? − Majority view - Plaintiff: o This approach "may be considered the better view because it is consistent with the plaintiff's threshold obligation to show that the case belongs in the particular district court in which suit has been instituted." 14D Charles Alan Wright, et al., Federal Practice & Procedure § 3826 (4th ed. 2013). − Defendant: o Not surprisingly, EDTX placed burden on defendant.

Conclusions

. Balance of power has shifted in patent litigation . Delaware may be new hotbed – patentee friendly . 1400(b) creativity likely to continue . LLCs – prevalent form – unresolved . Forum shopping/venue abuse not dead

Questions?

Daisy Manning Steve Holtshouser 314.345.6430 314.345.6469 [email protected] [email protected]

Online Enforcement Strategies for the Digital Age

Presented by Tara Allstun

Outline

. What’s the Problem?

. What’s in our Toolbox?

. C&D Letters in a Digital Age

What’s the Problem? . Passing Off

. Metatags

. Social Media Accounts

. Counterfeits

. Unauthorized Sellers

. Culpability of Online Platforms

Google Business Verification

Counterfeiters

Adwords Takedown

Social Media Handles . What if someone is using my brand as a social media handle? . Consider social media accounts when deciding on your brand . Register early

The Toolbox

. Google Business Verification . Amazon Brand Registry . Social Media Sites – Trademark/Intellectual Property Policies . Online monitoring . C&D Letters

Google my Business

What is the Amazon Brand Registry?

. Effective starting April 30, 2017 . New toolbox, including – Proprietary searching – Predictive automation of reports for suspected IP violations – Increased authority over product listings . Requires a Registered Trademark

Amazon Brand Registry Requirements . Trademark – Word mark or Design mark with textual component . Trademark Registration Number . Image of Logo . Images of products and packaging bearing trademark – Note if the product itself is not branded, the packaging must be branded. . List of product categories in which the mark should be listed . List of countries where products are manufactured and distributed

Social Media Tools . Each of the major social media sites have internal policies and reporting mechanisms (usually from support website) for reporting online infringement – Facebook – Twitter – Instagram – Snapchat – Youtube – Pinterest

Google Alerts*

Strategy is the name of the game

. No “on-size-fits-all” strategy . Do your homework . Have a policy in place . Have employees trained on the policy . Think before you post! . Know your audience . Monitor online use of your marks*

C&D Letters in the Digital Age . Make sure you have priority . Who is the recipient of the letter? – Competitor? Fan? Licensee? . Would your client is comfortable if the letter is published online? . Is your client willing to go to court if the recipient files a DJ action?

REMEMBER – you might just go viral!

Questions?

Tara Allstun 314.345.6218 [email protected]

Stopping Infringing Goods at the Border

Husch Blackwell, LLP November 8, 2017

Stopping Infringing Goods at the Border A Customs and Border Protection Priority Trade Issue:

The theft of intellectual property and trade in fake goods threaten America’s economic vitality and national security, and the American people’s health and safety. *** To protect both private industry and consumers, CBP has made IPR enforcement a priority trade issue. CBP has developed a multi-layered, strategic approach to IPR enforcement.

CBP uses technology to increase interdiction of fake goods, facilitate partnerships with industry, and enhance enforcement efforts through the sharing of information and intelligence. CBP is refining its technology to more accurately identify suspected shipments of counterfeit and pirated goods for inspection.

CBP’s Multi-Layered Approach Detention, Seizure and Forfeiture

Trademarks: Customs will detain articles suspected of bearing a counterfeit mark. Upon determining that the mark is infringing Customs “will seize such merchandise and, in the absence of the written consent of the owner of the mark, forfeit the seized merchandise….” 19 CFR §133.21(e); 19 USC § 1526(e); 19 USC § 1595a

Customs will detain and deny entry to goods bearing “a copying or simulating” trademark. Thereafter, the merchandise may be seized and forfeited. 19 CFR §133.22(f); 19 USC § 1595a(c)(2)(C). More leeway for leniency if the goods are not counterfeit.

A “copying or simulating” trademark: One which may so resemble a recorded mark as to be likely to cause the public to associate the copying or simulating mark with the recorded mark.

Copyrights: The port director shall seize any imported article which he determines is an infringing copy or phonorecord of a copyrighted work protected by Customs. 19 CFR §133.42(b).

Infringing copies or phonorecords are “piratical” articles, i.e., copies or phonorecords which are unlawfully made (without the authorization of the copyright owner). 19 CFR §133.42(a).

CBP’s Multi-Layered Approach

. Detentions, seizures and forfeitures involve a strict administrative proceeding giving both sides the opportunity to provide pertinent information. . If CBP determines that the seized goods bear counterfeit marks or involve piratical copies then Customs will disclose to the owner of the mark or copyright the following information: • Date of importation and port of entry; • Description of the merchandise and quantity seized; • Name and address of the manufacturer, exporter and importer.

CBP’s Multi-Layered Approach Post-import audits of companies caught importing infringing goods. Collaboration with trading partners: Nov. 2016, Operation Charge-Up, joint IPR operation with H.K. Customs conducted at a U.S. express consignment facility. Partnering with other federal agencies: National Intellectual Property Rights Coordination Center, coordinating efforts among more than 15 U.S. government agencies plus Canadian and Mexican authorities, EUROPOL and INTERPOL. Civil fines: Not limited to the importer of record. 19 USC 1526(f) (“Any person who directs, assists financially or otherwise, or aids and abets the importation of merchandise”); 19 USC 1595a(b)(Every person who directs, assists financially or otherwise, or is in any way concerned in any unlawful activity….) . Section 1526(f): 1st seizure not more than the MSRP for genuine goods; thereafter, not more than twice the value “it would have had if it were genuine.” . Section 1595a(b): a penalty equal to the value of the article or articles introduced or attempted to be introduced. Referral for criminal investigation.

Initiating CBP Action Record the mark or copyright.

Recordation is online: Access CBP’s Intellectual Property Rights e-Recordation (IPRR) application at: www.iprr.cbp.gov

Cost is $190. Normally requires the U.S. Patent and Trademark Office registration or the U.S. Copyright Office registration.

However, as a result of the Trade Facilitation and Trade Enforcement Act of 2015 Customs accepts online applications for recordation of unregistered copyrights. Each unregistered copyright recordation will be valid for 9 months, with a potential one-time 90-day extension, while the registration application is pending with the USCO. Upon USCO registration, the copyright recordation continues to receive the benefits of border enforcement.

Initiating CBP Action

The mark or copyright recorded with CBP can be accessed and reviewed through the Intellectual Property Rights Search (IPRS) system on the CBP website. www.iprs.cbp.gov

Initiating CBP Action

. Initiate an investigation with the International Trade Commission and obtain an exclusion order under Section 337 (19 USC 1337): . Section 337 declares the infringement of certain statutory intellectual property rights and other forms of unfair competition in import trade to be unlawful practices. Most Section 337 investigations involve allegations of patent or registered trademark infringement. Other forms of unfair competition, such as misappropriation of trade secrets, trade dress infringement, passing off, false advertising, and violations of the antitrust laws, may also be asserted. . As of December 31, 2016 there were 101 active exclusion orders. . In FY 2017 there were 117 Section 337 investigations. 102 of the investigations involved solely patent infringement. The others involved a variety of trademark, copyright or trade secret misappropriation, infringement or other unfair trade practices.

Initiating CBP Action

Section 337 investigations are litigation. They result in an initial determination and final determination by an administrative law judge (which can be appealed to the CAFC) and can result in an exclusion order (limited or general) that Customs must enforce.

An example of respondents in a recent request for an investigation under Section 337:

Before contacting Customs To the extent possible:

. Obtain samples of the infringing/copying goods, including packaging, manuals and instructions.

. Identify the port.

. Obtain information concerning the infringing/copying goods:

 Shipment information (bills of lading). (Companies can request confidentiality for this information on imports and exports.)  Names and addresses of the manufacturer, the importer, and/or the consignee.  Product markings and descriptions.

There are a number of services that pull this information from bills of lading and provide it for a fee. Examples of some of those services: Piers, Panjiva, Datamyne, Import Genius

Contacting Customs

You have a recorded mark or copyright or an exclusion order; you know who is shipping the goods, who is importing the goods or who is receiving the goods.

The old fashioned method:

Call the port and ask for the import specialist or team specific to the goods. Contact the applicable Center for Excellence and Expertise. Contact CBP’s National Intellectual Property Rights Coordination Center. www.iprcenter.gov

E-Allegations: A means for on-line reporting suspected violations of trade laws or regulations related to the importation of goods into the U.S. These types of violations include false country of origin markings, health and safety issues, and intellectual property rights. www.eallegations.cbp.gov

You can remain anonymous, but in most cases, Privacy Act and Trade Secrets Act laws prevent CBP from disclosing the results of any research conducted as the result of an e-Allegation.

Contacting Customs

Educating Customs Customs wants the industry to educate CBP. See sample Product Identification Training Guide on the CBP website:

. Product description & images; recorded and registered trademarks and copyrights.

. Places of manufacturing & ports of importation.

. Genuine licensees.

. Known & alleged violators; product descriptions, images and examples of suspect goods and packaging; ports where suspected goods are being imported.

. Contact information.

Educating Customs

. At the port. . Through the Center for Excellence and Expertise. . Through the National Intellectual Property Rights Coordination Center.

Make it as easy as possible. Be persistent and respectful:

Questions

Thank You!

Robert Stang 202.378.2334 [email protected]

THE DEFEND TRADE SECRETS ACT LESSONS FROM THE TRENCHES: What we learned in the first 18 months

By: Mike Annis and Steve Holtshouser

Defend Trade Secrets Act (DTSA) – Federal cause of action for Trade Secret misappropriation . Creates national definition of trade secret and misappropriation . Provides uniform discovery process . Enhanced remedies

– State remedies are not preempted . Supplemental jurisdiction

The Promises of DTSA

– The Act provides expanded remedies

. Ability to obtain nationwide injunctive relief for actual or threatened misappropriation

. Ex parte seizure of trade secret material in certain situations

. Punitive damages (limited to 2x actuals)

. Attorneys fees (both ways - bad faith assertion)

– Ability to enforce against foreign actors

What Constitutes a “Trade Secret”? Uniform Trade Secrets Act (UTSA) and DTSA:

. information, including formula, compilation, program, pattern, method, device, process, technique;

. that derives independent economic value from not being generally known or readily ascertainable by proper means by others who can obtain economic value from its disclosure; and

. is the subject of reasonable efforts under the circumstances to maintain its secrecy.

Lessons from the Trenches 1. Identify your trade secrets – now - Identify through trade secret/data security audit

2. Protect your valuable information – always - keep your secrets out of the public domain

Lesson: Help Me Help You . Must institute reasonable protections against enemies from within….and those outside • Outside: firewalls, secure facilities , 2-factor authentication • Inside: Pre-employment Uptake procedures, employment/restrictive agreements During employment Limited access Train Post Employment Exit Interviews

Lesson: Venue is Still Very Important . Federal Courts are leaning on law developed under state’s acts – 85+% include at least one state law TS claim

. Some courts are getting more than their fair share – N.D. Illinois is single busiest jurisdiction

. 7th Circuit case law on preliminary injunctive relief – Likelihood of success = “more than negligible”

. Home of the inevitable disclosure doctrine

Lesson: Give Whistleblower Notice . In order to take advantage of attorneys fees and punitive damages remedies, the employer must provide notice of whistleblower rights before the alleged misappropriation

. Build into contracts – employment contracts, confidentiality agreements, non-competes, non-disclosure agreements (NDAs), third-party contracts

. Can include in Employee Handbooks or Policy Manual by cross-reference

Lesson: Give Whistleblower Notice

. Thus far, no one accused of misappropriation under the Act has successfully used the whistleblower provision as a defense to a misappropriation claim

. It is unclear whether entities have successfully instituted the Act’s notice requirements – too early to tell

. If you have not done so, check your NDAs, Employment Contracts, Restrictive Covenants, etc. to be sure you are complaint with Act’s requirements

Exemplary Notice Provision “Pursuant to the Defend Trade Secrets Act of 2016, I understand that:

An individual may not be held criminally or civilly liable under any federal or state trade secret law for the disclosure of a trade secret that: (a) is made (i) in confidence to a federal, state or local government official, either directly or indirectly, or to an attorney; and (ii) solely for the purpose of reporting or investigating a suspected violation of law; or (b) is made in a complaint or other document that is filed under sealed in a lawsuit or other proceeding.

Further, an individual who files a lawsuit for retaliation by an employer for reporting a suspected violation of law may disclose the employer’s trade secrets to the attorney and use the trade secret information in the court proceeding if the individual: (a) filed any document containing the trade secret under seal; and (b) does not disclose the trade secret, except pursuant to Court order.”

Lesson: Inevitable Disclosure is not (completely) Dead

. DTSA “rejects” the inevitable disclosure doctrine – Cannot prevent employment with competitor

. But, even without a non-compete, courts can enforce limitations on former employees who go elsewhere with your trade secrets

. This is where state law claims can backfill purposeful changes in DTSA

Lesson: Ex Parte Seizure is a Dud . Much hyped when DTSA passed . USMS can seize media containing TS

Lesson: Ex Parte Seizure is a Dud

Lesson: Ex Parte Seizure is a Dud . The remedy is analogous to a search warrant . Ex Parte means opponent not present to challenge . 8 findings required (affidavit) – Injunction not enough – Irreparable harm if not seized – Risk to applicant outweighs harm to subject – Applicant likely to succeed – Likely that subject has it – Subject will not surrender voluntarily – Reasonable particularity of place and item – Need to act ex parte

Lesson: Ex Parte Seizure is a Dud . Subject gets a post-seizure hearing in 7 days . Bond has to be posted . Special master holds the seized item . Price: – Applicant liable for damages if seizure “wrongful or excessive” . Experience: – OOO Brunswick Rail Mgt. v. Sultanov, 2017 WL 67119 (N.D.Cal. 2017) – denied; issued TRO – Magnesita Refractories Co. v. Mishra, 2017 WL 365619 (N.D.Ind. 2017) – ordered temp. seizure – 2 other cases – ordered defendant to surrender (no law enforcement)

Lesson: Overconfidence in NDAs . Often use typically overbroad legalese . Owners try to over-protect . Confidential information and trade secrets not synonymous . Need to distinguish “trade secrets” from information we don’t want a competitor to have . Not a substitute for robust preventive measures – the reasonable measures to protect that help define TS . Identify true trade secrets, protect accordingly and limit access to need-to-know – High risk tech – project specific NDAs

Lesson: Third-Party Information in Play . Technology sharing activity – parties enter into project- specific NDAs . Risk – your employees are in a position to create liability to third-party both during employment and post- employment – Recent example – Keep lines between their info and your info clear . Can your info became theirs? . Cover separately in employee exit interview

Lesson: Be Prepared to Respond . Not if – when. . Many have cyber attack response plans – engage in table-top exercises – Same for TS . Use common sense – departure of high level employees should trigger a response plan – Have a prepared exit interview checklist . Valuable opportunity that will pass – Interview close associates – Immediate electronic and forensic investigation – Investigate new opportunity . View it the same way police view a crime scene

Lesson: Be Prepared to Respond . What departments and personnel will be notified? – IT, legal, HR, tech . Most important source will be computer activity – USB copying – E-mailing to self – Removal of company media – Any deviation from normal routine . When do you involve outside counsel? – Involve outside counsel in prevention and response planning

Lesson: Don’t Wait Too Long . To avoid a fire drill, don’t wait too long to involve outside counsel . Counsel will need to learn what you know fast – Early notice reduces risk of error – Witnesses need to be interviewed, documents gathered on reviewed, experts consulted, pleadings prepared . There may be opportunities that can be exploited – Covert investigation – Forensic evaluation

Lesson: Cases Won or Lost at PI – Highlights the importance of response planning and early involvement of outside counsel – Sufficiency challenges; identification of alleged TS – Often a period of discovery between filing and “hearing” – Essentially, a condensed, expedited trial – Determination of likelihood of success on merits and PI requirements translates into . Prevention of continued access to and use of the TS . High probability of settlement

Lesson: Criminal Option? – Unlike patent infringement or trademark infringement, TS theft is a federal crime. – Reasons to refer to authorities . FBI, Grand Jury, Threat of Jail, Conviction makes the civil case – Reasons not to refer to authorities . Heart . FBI thresholds . Loss of control, possible stay . Secrets in hands of Government . Publicity

Questions?

Mike Annis Steve Holtshouser 314.345.6432 314.345.6469 [email protected] [email protected]

Canada: an overview of legislative changes

November 2017

Smart & Biggar – Canada’s leading IP firm

Canada’s IP Firm of the Year –Chambers Canada 2018 Awards

Canada’s Trademark Contentious Firm of the Year –MIP North American Awards 2017

“Best IP Firm in Canada” – MIP IP Stars 2017

Gold Band ranking – WTR 1000

Smart & Biggar 1 O Canada! Imminent Changes to IP Laws along the Northern Border 11/08/2017

Trademarks

Canada’s Significantly Amended Trademarks Act —What U.S. brand owners and counsel need to know

Smart & Biggar 2 O Canada! Imminent Changes to IP Laws along the Northern Border 11/08/2017

Bill C‐31: Overview

Most significant amendments to the TMA since 1950!

Bill C‐31 –now law, but not yet in force

• Bill C‐31 – introduced in March of 2014 – passed by Canadian legislature in June of 2014 – awaiting supporting regulations before coming into force – likely in force date: early 2019

Smart & Biggar 3 O Canada! Imminent Changes to IP Laws along the Northern Border 11/08/2017

Key amendments

Highlights: • Madrid Protocol • Singapore Treaty • Nice Agreement • Changes to filing requirements for Canadian applications

Primary effect of amendments

• Easier/faster/cheaper to obtain a trademark registration in Canada

Smart & Biggar 4 O Canada! Imminent Changes to IP Laws along the Northern Border 11/08/2017

The importance of Use

• Canada has always been a “use‐based” jurisdiction and this will remain the case • the right to register a trademark in Canada will depend on the party first to use the mark —we are not becoming a “first to file” country

No information on use provided

However, no information regarding use will be provided during the application process • No need to : – state whether the trademark has been used in Canada or provide the date of first use of the trademark in Canada in the application – rely upon use and registration in the home country – provide Declaration of Use or proof of use required at the end of the application process

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Bars to registration

• Same bars to registration, for example descriptive, primarily merely a surname, confusing with a registered mark • NEW! —express bar to registration where the features of a mark are “dictated primarily by a utilitarian functions”

Challenging an application

An application can be opposed • Grounds of Opposition: – The application does not conform to technical requirements, – The trademark is not registrable, – The applicant is not the person entitled to registration, – The trademark is not distinctive, and – NEW! The applicant was not using and did not intend to use the trademark in Canada as of the filing date of the application.

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Challenging a registered mark

A registered mark can still be … 1. cancelled for non‐use after it has been on the register for at least 3 years 2. expunged on the same grounds as provided in the previous Act: – the trademark was not registrable at the date of registration – the trademark is not distinctive – the trademark has been abandoned – the applicant was not the person entitled to register the mark – NEW! the registration of the mark is likely to limit the development of any art or industry

Terminology changes

Minor changes (but important to us!) • “trade‐mark” has become “trademark” • “wares” have become “goods” • “distinguishing guise” will disappear

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Non‐traditional marks

More non‐traditional trademarks can be registered: • a word • a hologram • a personal name • a sound • a design • a scent • a letter • a taste • a numeral • a moving object • a colour image • a texture • a figurative element • the positioning of a mark • a three‐dimensional shape • colour per se • a mode of packaging goods

Additional changes

Other new features: • Nice classification to be adopted (but not expected to change the requirement for a description “in ordinary commercial terms”) • Divisional applications available • Term of registration reduced from 15 years to 10 years • No more associated marks • No need for filing certified copies of home country registrations • Letters of Protest

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Transitional Provisions

1. Removal of requirement for filing a Declaration of Use – will apply to all pending applications upon coming into force 2. Shortening of the renewal term from 15 to 10 years – will apply to every registration due for renewal after the coming‐into‐force date, even if the mark was already renewed

Fee Changes

Current Law New Law

Filing & Registration $450 $330 for one class $100 for each additional class

Renewal $350 $400 for one class $125 for each additional class

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Recommendations

Things to consider: • File for unregistered important brands that are in use or intended to be used before the amendments come into effect • File for multiple classes before a fee‐per‐class system comes into effect • File sound and colour applications before proof of distinctiveness is required • After the amendments come into force, consider filing applications for broad lists of goods to insulate important marks.

CANADA’S PATENT ACT: WHAT’S OLD; WHAT’S NEW; WHAT U.S. COUNSEL NEEDS TO KNOW

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CANADA’S PATENT ACT: WHAT’S OLD

Canada’s Patent Act: What’s old

• Canada’s Patent Act based on U.S. Patent Act of 1836

• Major amendments 1923; 1935; 1989; 1993; 1996; 2014‐2019

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Canada’s Patent Act: What’s old

Since 1989 – • First to file; • Absolute novelty; • One year grace period (measured from Canadian filing date); • Member of PCT (PCT international filing date = Canadian filing date); • Deferred examination (5 years from Canadian filing date); • Limited divisional practice; • Reinstatement of abandoned applications within 12 months, as of right; • No continuation (or continuation‐in‐part) practice; • 20 year term; • Annual maintenance fees

PATENT ACT AMENDMENTS: WHAT’S NEW

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Three statutes amending the Patent Act

Economic Action Plan 2014 Act, No. 2–Not yet in force provisions relating to Patent Law Treaty (PLT).

Economic Action Plan 2015 Act, No. 1–Statutory privilege for communications between patent agents and their clients are in force. Force majeure provisions not yet in force.

Canada‐European Union Comprehensive Economic and Trade Agreement Implementation Act–Pharma patent term restoration and changes to patent linkage system in force.

Privilege

Patent Act amended June 24, 2016 to provide privilege for agent/client communications

Applies also foreign agent/client communications priviliged in home country

Parallel amendments made to Trademarks Act

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Canada/EU Comprehensive Economic and Trade Agreement (CETA)

Patent Act amendments in force September 21, 2017

Certificates of Supplementary Protection (CSPs) providing patent term restoration for delay in marketing authorization for drugs

End of “dual litigation” under Patented Medicines (Notice of Compliance) Regulations

PROPOSED PATENT RULES

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Overview and status

Implement Patent Law Treaty (PLT) Streamline administrative procedures Also provide force majeure protection Public consultation held in summer 2017 Next step—publication in Canada Gazette Parts I and II (possibly spring and fall 2018) with further consultation and possible changes Coming into force likely sometime in 2019 Schedule can always change due to e.g. IT issues

Availability of filing date or national entry

Current Proposed No filing dates granted on Electronic filing 24/7/365 (e.g. weekend or holidays or when get filing date on Xmas day) CIPO “closed for business” National entry at 30 months, or National entry at 30 months, 42 months if $200 late fee paid 42‐month national entry only on submission of declaration delay was unintentional and reasons for error, and CIPO agrees

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Filing requirements

Current Proposed Filing fee required on filing or Filing fee may be deferred national entry English or French translation Translation may be deferred required on filing or national entry No reference filings May file merely by referring to a previously‐filed application, and only submit application text later

Filing requirements

Current Proposed Not possible to incorporate Time‐limited opportunity to missing parts from priority incorporate missing parts (e.g. application omitted drawings) if found in priority application Generally no requirement to Priority document submit priority document (untranslated) must be submitted unless available from digital library (probably WIPO Digital Document Access Service)

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Restoration of priority

Current Proposed No restoration of priority. CA CA or PCT application may be or PCT application must be filed filed up to 14 months from within 12 months of earliest priority application and priority priority application. restored if applicant states delay was unintentional. Reviewable in later court proceeding.

Force majeure—floods, earthquakes etc.

Current Proposed CIPO can be declared “closed CIPO can “designate” a day if it for business” on Ministerial would be in public interest to order. Not possible to obtain a do so. Deadlines are then filing date, but CIPO deadlines extended to next non‐ extended. Historically never designated day. Filing date can used if CIPO unaffected. be obtained on a designated day.

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Maintenance fees

Current Proposed Only CA agent may pay Anyone can pay maintenance maintenance fee on pending fees on pending application or application (unique to CA) after grant

Anyone can pay maintenance fees after grant

Prosecution timelines shortened

Current Proposed Examination must be requested Examination must be requested within 5 years of CA (PCT) filing within 3 years of CA (PCT) filing date date 6‐month term to respond to 4‐month term to respond to office actions office actions (2‐month extension may be available)

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Amendment after allowance

Current Proposed $400 fee. Only limited $400 fee. Notice of allowance amendments permitted. To re‐ withdrawn and prosecution re‐ open prosecution, instead do opened. Much simpler and not pay issue fee when due, more rational approach. and reinstate ($200 fee) after abandonment.

Final fee

Current Proposed $300 + $6/page over 100 Same but excludes electronic including electronic sequence sequence listing—aligns with listing—can result in global norms for sequence unreasonable final fee listings

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Transfers

Current Proposed To change recorded owner, Current owner may request assignment or other transfer transfer without registering document must be registered title document—reduced costs and $100 fee paid for each application/patent

Correction of errors

Current Proposed “Clerical” errors may be “Obvious” errors may be corrected. But hard to show corrected—obvious that error in "the mechanical “something else was intended process of writing or than what appears…and that transcribing,” and CIPO may nothing else could have been decline to correct error. Focus intended than the correction.” on how error arose rather than substance of error. Time limits of 4 months from grant for applicant error or 6 months from grant for CIPO error.

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New notice provisions

Current Proposed Application can be abandoned CIPO must give notice of (or patent can lapse) if missed examination request or examination request not made maintenance fee before or maintenance fee not paid by application abandoned or deadline. CIPO not required to patent lapses. give notice of missed deadline.

Reinstatement and late payment requirements

Current Proposed Reinstatement as of right upon “Due care” standard may apply request and payment of $200 where abandonment or late fee within 12 months of payment in cases where new abandonment. Patent notice provisions apply— maintenance fee can be paid maintenance fees and late with surcharge. examination request. To be avoided

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Third party rights

Current Proposed None per se for abandonment May arise if request for or delayed payment of examination or maintenance maintenance fee. Potentially fee is late. Scope may be relevant to “reasonable” broad. To be avoided. compensation for damage under pre‐grant rights provisions?

CIPO graphic –proposed maintenance fee scheme

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CIPO graphic –proposed examination request scheme

Questions

Keltie Sim Luft Matthew Zischka Trademarks, Patents, Marketing & Advertising Information Technology ksluft@smart‐biggar.ca mzischka@smart‐biggar.ca

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