June 2017
Intellectual Property Monthly Newsletter
Dear Clients,
Welcome to the June issue of IP Monthly, filled with interesting news articles and developments. This month we highlight Kenya’s remarkable performance in the Global Innovation Index 2017. We hope that you will find the features in this newsletter informative.
Enjoy!
Important dates Interesting facts Historical dates in June about June in June
• 1 June: Global Day of Parents • The Romans called June ‘Iunius’ • 15 June 1844: Charles Goodyear or Junius, but it is unclear whether was granted a patent for • 5 June: World Environment Day this was after Juno, goddess of rubber vulcanization. marriage, or whether May and • 8 June: World Oceans Day June were named for the old and • 22 June 1897: William Barry young ‘maiores’ and ‘juniores’ patents the postmarking • 13 June: International Albinism and cancelling machine. Awareness Day • The Anglo-Saxons called June ‘sera monath’ (dry month) • 26 June 1945: The United Nations • 14 June: World Blood Donor Day Charter was signed by delegates • June is celebrated as National from 50 nations at San Francisco. • 18 June: Father’s Day Smile Month in the UK and National Oceans Month in the USA • 12 June 1964: The leader of the African National Congress (ANC) in South Africa, Nelson Mandela, is jailed for life for sabotage.
01 June 2017
• 14 June 1962: ‘General China’ • 26 June 1960: Politicians fearful of 130 countries. It was ranked third Waruhiu Itote, a Kenyan freedom of Kikuyu-Luo domination form in Sub Saharan Africa after South fighter living in restriction in Kenyan African Democratic Africa and Mauritius. Kenya was also Northern Province, is released. Union (KADU), which favours recognised as one of the countries, a federalist government. Ronald alongside Vietnam and India that is • 23 June 1972: Hurricane Agnes Ngala becomes president, out performing its peers in the same becomes the US’s costliest natural Masinde Muliro VP and Daniel development level when it comes disaster, affecting 15 states, with arap Moi chairman. to innovation. 119 deaths and USD 3 billion in damage. • June 1982: The Republic of This is an indicator that Kenya is Kenya is officially declared a realising that innovation is key when • 11 June 1987: Margaret Thatcher one-party state by the ruling it comes to economic growth. Kenya is the first British Prime Minister KANU party. Members of the was recognised as an innovation in 160 years to win a third Kenyan air force launch a failed achiever for outperforming it peers consecutive term. military coup in which 120 people and also developed countries in are killed. Forces loyal to the terms of innovation. African countries • 23 June 1931: Harold Washington government put an end to ranked highest in institutions and became the first African American the rebellion. market sophistication. mayor of Chicago, receiving 51% of the vote. • June 2013: The British As Kenya is recognised as an government stated that it innovative achiever it shows that there regretted the torture of thousands is a conductive environment allowing Kenya: Historical of Kenyans during the suppression people to innovate, and in turn build dates in June of the Mau Mau insurgency in the economy. the 1950s and promised GBP 20 million in compensation. For more on the Global Innovation • 1 June 1963: Jomo Kenyatta Index click here. becomes first Prime Minister of Kenya. Global Innovation Index 2017: Kenya is named an Developments in • 1 June 1964: Kenya becomes the Intellectual a republic with Jomo Kenyatta innovative achiever as its first President. Property arena
• 8 June 1964: Agriculture minister The Global Innovation Index is a Trademarks Bruce Mackenzie discloses that report co-published by Cornell Kenya will use GBP 1 million to buy University, INSEAD, and the World large Europeans farms for Africans. Intellectual Property Organization SA’s Polo sues Kenya firm (WIPO, a specialised agency of the over trademark • 11 June 2001: Moi reshuffles United Nations). It has been published cabinet and appoints opposition annually since 2007 and has become South African designerwear maker party leader Raila Odinga as a benchmark used by business leaders Polo has sued local manufacturer energy minister in the first coalition and other stakeholders in getting Wardrobe Collections Clothing Store government in Kenya’s history. insights about the state of innovation for producing clothes that bear a in different parts of the world. The name similar to its own, and which • 18 June 1961: KANU leaders James main focus of the report consists of is registered as a trademark. The Gichuru and Tom Mboya arrive in a ranking of world economies’ South African clothing manufacturer, London for talks with the Colonial innovation capabilities and results. through its parent firm LA Group, Secretary and announce they wants the High Court to bar have resolved to work closely with In the Global Innovation Index 2017, Wardrobe Collections from registering KADU to achieve independence. Kenya was ranked number 80 out the name Classic Polo as a trademark,
02 June 2017
arguing that allowing the move would Pandora and Paypal begin Discovery’s lifestyle channel TLC create confusion among consumers trademark litigation has inappropriately used the title of to the detriment of Polo South food reality show Foodistan, which Africa. Wardrobe Collections had A trademark lawsuit has begun was aired on its lifestyle channel applied to register its Classic Polo with PayPal suing music-streaming NDTV Good Times in January 2012, as a trademark before LA Group company Pandora on accusations sources in NDTV told ET. They said opposed the move at the Registrar that Pandora’s latest logo looks a lot TLC has used the Foodistan title for of Trademarks. The Registrar of like PayPal’s. Consumer confusion a cookery show, which is in disregard Trademarks, while admitting that is the basis of the argument, after of trademark protocols. Polo (South Africa) and Wardrobe PayPal found out via social media Collections’ Classic Polo are that members of the public were To read this story click here. conceptually similar, ruled that their mistaking the PayPal app—and its Source: The Economic Times resemblance was not enough to three-year-old logo—for the new create confusion among consumers. Pandora app. One of the postings Louis Vuitton looking to Johannesburg-based LA Group now on Twitter asked: ‘Did PayPal buy take ‘My Other Bag’ case wants Justice Francis Tuiyott Pandora?’ Pandora launched the to Supreme Court to reverse the decision and allow new logo in October as part of its it exclusive use of the word Polo in campaign to turn its free listeners After being shot down by the second its clothing. into paid subscribers. ‘Pandora’s circuit in its request for rehearing of recent adoption of a new “P” logo, its case against My Other Bag, Louis To read this story click here. which is unlawfully similar to PayPal’s Vuitton appears to be planning to Source: Business Daily logo, threatens the interests of take it to the United States’ highest PayPal’s customers and disrupts court. Earlier this month, Louis Neon signs give Heineken their user experience. PayPal brings Vuitton filed an application to the a headache this action to remedy the harm Supreme Court to extend the time Pandora is causing to the PayPal user to file a petition for a writ of certiorari Heineken has taken aim at a US experience and the PayPal brand,’ the from 14 May 2017 to 13 July 2017. In company for intentionally and payment company said in its federal short: Louis Vuitton is seeking extra unlawfully selling neon signs bearing intellectual property lawsuit filed in time to draft a cert petition. For the its trademarks. The Netherlands New York federal court. According to initiated, this is the document that based company, alongside its the lawsuit, PayPal said it had asked a losing party files with the Supreme Mexican subsidiary Cervezas Pandora to change its design but court asking it to review the decision Cuauhtemoc Moctezuma, has Pandora declined to alter the logo. of a lower court. The Supreme Court accused Bright Neon Signs for NOTE: Pandora has so far declined will then decide whether to grant promoting and selling signs that to comment on the lawsuit. PayPal certiorari and hear the appeal from use the trademarks ‘Heineken’ and also said it sent Pandora 110 pages of the lower court, which is extremely ‘Dos Equis’. Heineken and Dos Equis social media examples of ‘consumer rare. According to the Supreme are both brands of beer produced confusion’ about the logo similarities. Court blog, of the 7 000 to 8 000 by the Heineken Group. According cert petitions filed each term, to Heineken, it has spent tens of To read this story click here. the court grants certiorari and hears millions of dollars promoting its Source: The Trademark Lawyer Magazine oral argument in only about 80. brands through television, radio Granting a cert petition requires the and print media and sponsorships. Indian Channel, NDTV sends votes of four justices. According to the complaint, Heineken notice to Discovery channel is currently placed 87th on the list over trademark violation Before the court would be the issue of best global brands compiled by of parody, and likely, the test for brand consultancy Interbrand and New Delhi television based in India determining whether an allegedly 85th on the most valuable brands list has served a legal notice to factual infringing use of a party’s trademarks compiled by Forbes. entertainment major, Discovery is protected by the fair use defense. Networks International, alleging To read this story click here. that its trademark had been To read this story click here. Source: WIPR violated. NDTV has alleged that Source: The Fashion Law
03 June 2017
Haribo and Coca-Cola seek to key chains, guitar picks, posters, at the intersection of Routes 1 and settle differences over TM t-shirts, sweatshirts, bathrobes, and 1A in North Attleboro – in washable playing cards. marker. The owner, Steve Copoulos, The Coca-Cola company and said the phrase was just a joke a confectionary producer Haribo are in To read this story click here. customer had come up with, but the midst of negotiating a settlement Source: WIPR Dunkin’ Donuts have apparently agreement after a trademark taken it more personally as Mike’s dispute. In December 2015, Haribo Art Basel is suing Adidas Coffee is located in a space formerly filed a trademark application at over its limited Edition home to a Dunkin’ Donuts franchise the United States Patent and ‘Art Basel’ Shoes for 30 years. ‘Your actions are clearly Trademark Office (USPTO) for a designed to trade on the goodwill ‘Haribo’ mark. The mark consists of Adidas has been slapped with a and reputation associated with the the design of a cola bottle tipped trademark lawsuit courtesy of Art America Runs on Dunkin’ trademark slightly to the left with the wording Basel. According to a lawsuit filed by and constitutes both trademark ‘Haribo’ printed across the centre the art festival organiser on Tuesday infringement and trademark dilution,’ in brown lettering outlined in white, 30 May 2017 in the US District Court states a letter from Dunkin’, alleging and covers international class 30 for the Southern District of Florida, trademark infringement. (confectionary). Published in June Adidas is on the hook for the ‘willful last year, it was not long before the distribution of at least 1 000 pairs of To read this story click here. mark came to the attention of the sneakers bearing an unauthorised Source: The Trademark Lawyer Magazine Coca-Cola company. In December, reproduction of the plaintiffs’ the multinational beverage producer registered and incontestable ART filed an opposition to the trademark, BASEL® trademark.’ Art Basel alleges claiming priority and likelihood of in its suit – which sets forth claims confusion, dilution by blurring, and of federal trademark infringement, a false suggestion of a connection. federal false association and false designation of origin, federal To read this story click here. trademark dilution, and common law Source: WIPR trademark infringement, etc. – that its ‘name and mark has been used Hotel California owners deny internationally since at least as early Eagles TM claim as 1999 in connection with art fair expositions around the world and The owners of a Mexican hotel have related goods.’ argued that a trademark infringement lawsuit brought by US rock band To read this story click here. Eagles should be dismissed. Early Source: Fashion Law last month, WIPR reported that the rock band had sued Hotel California, Dunkin’ Donuts claim a hotel based in Todos Santos, trademark infringement Mexico, over the use of the mark ‘Hotel California’. ‘Hotel California’, Dunkin’ Donuts have started a the band’s most popular song, was trademark litigation case with released in 1976. Eagles alleged that a coffee shop in North Attleboro, the hotel has also sold merchandise Massachusetts, called ‘Mike’s Coffee’. bearing the ‘Hotel California’ mark Dunkin’ Donuts sent Mike’s Coffee to consumers in the US and to US a cease and desist letter after tourists who visit the hotel through discovering the use of the phrase its gift shop. The band has a pending ‘North runs on Mike’s’ – an alteration application, serial number 87/306,414, of their trademark ‘America runs on to register ‘Hotel California’ with the Dunkin’’. ‘North runs on Mike’s’ is US patent and trademark office for written on the store – a small shop
04 June 2017
‘Covfefe’ trademarks on years — launched court action to stop look into the licensing and distribution the rise him. A spokeswoman for Kellogg’s told of merchandise branded with AFP that the Kokkinakis family had Barcelona Football Club and Donald Trump tweeted the word tried to register their own trademark, Hello Kitty logos, among others. ‘covfefe’ and the whole internet which sparked the retaliatory action, went into meltdown. With memes, with a procedural hearing on 8 June To read this story click here. Twitter debates, and even conspiracy 2017. ‘Kellogg will continue to defend Source: WIPR theories being formed on the back of our very strong and iconic Special K it, the latest trend seems to apply for brand — which is known and loved Louis Vuitton: We are not a trademark for the word. Although by many Australians,’ the company trolls, we are defending our the meaning and origin of ‘covfefe’ said. The Sydney Daily Telegraph said intellectual property has remained unclear since Trump Kokkinakis, who has slipped down the tweeted the word/ combination of rankings from a career-high 69 due After spending nearly two years random letters, according to the US to injury, wanted to create a logo and fighting over whether My Other Bag patent and trademark office database brand for himself in a similar way that (MOB)’s canvas totes infringe Louis a handful of US companies and Roger Federer and Rafael Nadal have Vuitton’s famed trademarks and individuals are seeking to use created lucrative businesses marketing copyrights, the Los Angeles-based the term for business purposes. their own range of products. brand – which was handed its latest victory when the Second Circuit Just 10 days after the ‘notorious’ To read this story click here. refused to grant Louis Vuitton’s tweet, the patent office had received Source: Business Day request for a rehearing – asked the nine trademark applications for court to force Louis Vuitton to pay ‘covfefe’ for products ranging from European Commission probes nearly USD 400 000 in legal fees and t-shirts in Florida, to coffee in Virginia Nike and Universal Studios Louis Vuitton is fighting back. In and beer in California. So who really June 2014, Louis Vuitton filed suit has the right to call ‘covfefe’ his or The European Commission has begun against the small brand known for its her own? ‘The question really that is competition investigations into the designer bag on a canvas bag styles, interesting is who is going to get the licensing and distribution practices which include Balenciaga, Proenza right to it first, and whether Trump of Nike, Universal Studios and Schouler, YSL, Celine, and obviously, has any trademark rights at all,’ said Sanrio, the licensor of the Hello Kitty Louis Vuitton lookalikes. The Paris- Hannah T. Joseph, an attorney who brand. Announced on 14 June, the based brand alleged that the MOB practices intellectual property law investigations will look into whether bags not only infringe its federally the three companies’ practices illegally registered trademarks and copyrights, To read this story click here. restrict traders from selling licensed serve to dilute its world-famous Source: The Trademark Lawyer merchandise across borders and trademarks. Yet, in each round, Louis online within the EU single market. Vuitton has lost. But the parties’ battle Kellogg’s fights Kokkinakis In May, the Commission adopted is not yet over, as in January MOB over ‘Special K’ trademark the final report on the e-commerce asked the court to order Louis Vuitton sector inquiry as part of the mid-term to foot its litigation bill, including its Sydney — Australian tennis ace review of the digital single market lawyers’ fees and other costs. In its Thanasi Kokkinakis faced court strategy. During the inquiry, the Memorandum of Law in Support of action on 8 June 2017 from cereal Commission gathered evidence from [MOB’s] Application for Award of giant Kellogg’s, which is not happy at nearly 1 900 companies operating in Attorney’s Fees, MOB’s legal counsel plans to use his nickname ‘Special K’ the e-commerce sector for consumer takes one last opportunity to slam commercially. Kokkinakis and doubles goods and digital content. The Louis Vuitton, as it – and the court – partner Nick Kyrgios have been investigations into Nike, Universal have done throughout the litigation. dubbed the Special Ks by the media Studios and Sanrio were opened and the public, and the 21-year- because the Commission aims to To read this story click here. old wants to use the moniker as a tackle ‘potential barriers to online Source: The Fashion Law branding campaign across clothing and offline cross-border trade and tennis wear. But the US-based stemming from licensing practices multinational — which has held an implemented by the companies’. Australian trademark for its Special According to a release from the K breakfast cereal for more than 50 Commission, the investigations will
05 June 2017
Patents AVM refiled the claim, alleging that Galaxy S series of smartphones, Intel was continuing to unlawfully holding various quick-launch Apple and Nokia to ‘co- use their patent in a collection of its icons, for example. operate’ after settling designs. A recent six-day jury trial patent row considered the years of arguments To read this story click here. and hundreds of submissions Source: Phone Arena In December, Nokia sued Apple and ultimately reached the same claiming the company had breached conclusion as the earlier case: there Federal Circuit backs IBM 32 technology patents covering was still insufficient evidence to hold in software dispute displays, user interfaces and video Intel responsible. The co-inventor of encoding. The two companies have the patent and the president of AVM, The US Court of Appeals for the now signed a deal allowing Apple to Joseph Tran, had licensed a number Federal Circuit has backed technology use the technology, and Nokia will of its patents to Intel, but not the company IBM in its patent dispute receive an up-front cash payment. ‘547 patent. In 2006, he came across against computer software company Apple will also stock Nokia’s health an article that described technology Twin Peaks Software. In a decision products in its retail stores. The two very similar to his patent, he handed down on Friday, 26 May, the companies have not revealed specific contacted Intel and had a number of court upheld a finding by the US details of the financial agreement, licensing discussions with executives. District Court for the Northern District but one analyst suggested it would of California that a patent owned by be worth millions of dollars to Nokia. To read this story click here. Twin Peaks was invalid as indefinite. ‘The agreement is per year, so it’s Source: The Patent Lawyer Magazine US patent number 7,418,439, directed probably in the hundreds of millions to ‘a virtual file system that links two or of dollars range,’ said Keith Mallinson, Samsung files patents more file systems together and mirrors an industry analyst as Wiseharbor. for a tablet with a rollable between them in real time’ (a mirror ‘That’s partly because it covers many display and a smartwatch file system), was the patent involved in patents, and Nokia has some very with a camera the clash. Twin Peaks had claimed that important ones, they were one of IBM’s products using ‘a technology the pioneers of cellular standards. It’s truly amazing what you can find called both “Panache” and “Active But looking at Apple’s business... if you go digging deep into the public File Management”’ infringed the one industry estimate is that they database of the United States Patent patent. The district court held a claim made USD 140 billion (GBP 107 and Trademark Office. Both granted construction hearing and construed billion) revenue on iPhone sales in patents and patent applications two limitations, for claim 1 (the ‘means 2016. Even a small royalty against hide some surprising diamonds in for mounting’ limitation) and 4 (the that – less than 1% – would be in the the rough, such as the two outlined ‘mechanism for managing’ limitation), hundreds of millions of dollars.’ below. Among the many patents finding that the claim limitations were for ornamental designs of washing ‘insufficiently specific’. To read this story click here. machines, Samsung has snuck in Source: BBC Technology a rather interesting application for To read this story click here. a new kind of smartwatch. Source: WIPR Intel cleared in USD 2 billion The document describes a wearable lawsuit device, portrayed with a circular display featuring a camera lens in the A jury in Delaware concluded that middle. That’s right – a camera right in Intel had not infringed on a dynamic the center of the screen. Not just that, logic circuit patent. It means the but it also comes with optical zoom chip giant will not have to pay the capabilities, which makes it protrude USD 2 billion in compensation that from the surface of the display was suggested before the case. The when zooming in. Additionally, the lawsuit was originally filed in 2010 wearable is also described as having by AVM technologies (owner of a secondary flexible display right patent number 5,859,547) but due to in the watch band. From what the insufficient evidence was dismissed application shows, it will work a lot by the courts. It was in 2015 when like the edge panels on the Samsung
06 June 2017
US Supreme Court Adopts a plurality of parachute cords, something more significant: your International Exhaustion a parachute, and a breakaway cover. webcam. CBInsights reported the for patents: paving the way The parachute cords can include patent in question would be for a for parallel imports to exert a shock absorber to reduce the shock system that would use a smartphone downward pressure on on the package of the parachute or laptop’s front-facing camera to domestic pharmaceutical opening,’ said the patent abstract. take brief photos of you while you’re (and other) prices using Facebook. According to the To read this story click here. patent, Facebook could then use The Supreme Court of the United Source: WIPR these temporary photos to determine States on 30 May 2017 adopted your emotions when seeing various a rule of international exhaustion of Toyota seeks patent for tech types of posts on the news feed. patent rights for the United States that displays autonomous With this information, the social in Impression Products v. Lexmark car’s thought process media network could then provide International, No. 15-1189. The near- content tailored to keep you on the unanimous decision authored by Chief Toyota has sought patent for a service for longer. For instance, if Justice Roberts is unambiguous and new application which allows for you look at a photo of a friend or unequivocal. The Court paid short a head-up display in an autonomous animal and appear happy, Facebook shrift to contrary decisions of the Court vehicle. It gives information to the would include more of that type of of Appeals for the Federal Circuit in driver about what the self-driving content. Conversely, Facebook could Jazz Photo Corp. v. International Trade system is thinking. Some of the data also reduce the number of times you Commission, 264 F. 3d 1094 (Fed. Cir. includes making turns, lane changes, see content you dislike or to which 2001) and in this case on certiorari, constant running and acceleration. you react poorly. While Facebook Lexmark International v. Impression To help the driver better understand already has ways to self-curate what Products, 816 F.3d 721 (Fed. Cir. 2016) the information, graphics will be you see on your News Feed through In addition to adopting international used to show how the changes will unfollowing and other methods, the exhaustion, the Supreme Court ruled be accomplished. Additionally, the proposed facial emotion detection firmly against enforcement of post- HUD system would also display other system would be a significant sale restrictions through infringement important bits of important data move to expand and automate this actions based on patent. The court from connected car services or the process. To be sure, patent filings allowed for enforcement under navigation system like the speed limit aren’t a sure indicator of a company’s contract law of limitations that may for the road being used currently, product roadmap. Facebook told be included in patent licenses. and what’s coming ahead. As of now, the Independent the filing for the Toyota confirms that the HUD is the webcam detection patent was To read this story click here. best bet they have as this system relays purely exploratory. Source: IP WATCH all the data on the windscreen. This also prevents the driver from looking To read this story click here. Amazon flies high as away from the road to check out the Source: International Business Times USTPO grants parachute status of the autonomous driving delivery patent system. It is claimed that the system is Generic company IPR even capable of informing the driver study reveals ‘surprisingly high’ Online retailer Amazon has been about the safety levels of the self- institution rate granted a patent on a system to driving mode at any given point. deliver packages via parachutes. Generic drug companies filing inter The retailer filed its patent application To read this story click here. partes review (IPR) petitions at at the US Patent and Trademark Office Source: CarTrade.com the Patent Trial and Appeal Board in August 2015. US patent number (PTAB) have a ‘surprisingly high’ 9,663,234 was granted on Facebook files patent that institution rate but a lower invalidation 30 May 2017 by the office. The system takes secret photos to rate in final decisions, according to works by placing a parachute inside detect your emotions a study by Foley & Lardner. Foley a package’s label, allowing the attorneys reviewed 204 IPRs filed by package to be dropped from an aerial Facebook has slowly migrated into 14 generic drug companies against vehicle and land at its destination other platforms since its launch. pharmaceutical patents. The review without damage. ‘The system can A recent patent filing shows it could revealed a 75% institution rate for include a self-adhesive backing, potentially be keeping an eye on those IPRs, well above the average for
07 June 2017
all technologies. Generic companies the original complaint in June last year is due’. It added: ‘Plaintiff (Esplanade are also achieving a much higher at the US District Court for the Central Productions) has refused to provide to institution rate than the 63% for the District of California. It accused defendants (Walt Disney) any of the combined ‘biotechnology/pharma’ Sony of infringement relating to the materials purportedly infringed. category published by the USPTO continued use of patents after Sony’s in November 2016. Mylan by far was portfolio licence with LSI, a company To read this story click here. the biggest filer of these IPRs, with purchased by Avago Technologies, Source: WIPR almost 60. Amneal was far behind which then became Broadcom, it in second place, with 25. expired in March 2014. Broadcom Federal Circuit backs added that the PS4 infringed ten of Amazon in pillowcase row To read this story click here. its patents covering activities such as Source: Managing IP decoding audio and video content. The US Court of Appeals for the The case centred on US patent Federal Circuit has upheld a lower Switzerland tops WIPO numbers 5,870,087, relating to the court ruling that cleared Amazon of innovation index, but PS4 system controller and graphics copyright and trademark infringement disparity persists processor ‘capable of decoding video claims that had been brought by and other data’, as well as 6,744,387, a pillowcase designer. In a ruling Switzerland has retained its lead relating to encoding video content. handed down on 23 May 2017, the for the seventh consecutive year Analog technology supplier Avago Federal Circuit rejected Seattle-based in the World Intellectual Property acquired LSI in 2014, before also Milo & Gabby’s appeal. According to Organization’s (WIPO) innovation buying Broadcom in 2016. Avago then the judgment, the US District Court index. Sweden, the Netherlands, became Broadcom, who sued Sony for the Western District of Washington the US and the UK complete the for patent infringement. did not err when it dismissed the top five, while a group of nations company’s claim in July 2015. Milo including India, Kenya and Vietnam To read this story click here. & Gabby had accused Amazon of outperformed countries at the same Source: WIPR allowing ‘direct knockoff copies’ of its development level. The ‘Global animal-shaped pillowcases to be sold Innovation Index 2017’, co-authored by third parties online. By allowing by Cornell University, INSEAD and Copyright third parties to use images of the WIPO, was released 15 June 2017. pillowcases, Amazon had infringed its High-income economies took 24 Disney asks judge to toss out copyright, the company claimed. of the top 25 spots, with China Zootopia copyright claim the exception at 22. In 2016, China To read this story click here. became the first-ever middle income The Walt Disney Company has asked Source: WIPR economy in the top 25. However, a federal judge to toss out a copyright there is still a gap in ‘innovative lawsuit alleging that it infringed a Drake beats copyright claim capacity’ between developed and screenwriter’s work in its Zootopia with fair use argument developing nations and ‘lacklustre film. Esplanade productions, which growth rates’ for research and was founded by screenwriter Gary Rapper Drake has won a copyright development activities—at the Goldman, filed its suit against Disney infringement lawsuit after a federal government and corporate levels, at the US District Court for judge ruled his sampling of a spoken- the report found. the Central District of California in word jazz track was fair use. In his song March. It argued that Disney had Pound Cake/Paris Morton Music 2, To read this story click here. infringed Goldman’s copyright, that from the 2013 album Nothing was the Source: WIPR there was a breach of confidence and Same, Drake sampled a 1982 spoken- that Disney had competed unfairly. word recording, Jimmy Smith Rap. Broadcom and Sony settle However in the dismissal notion, filed The original track, performed by jazz PlayStation patent dispute on 22 May 2017, Disney said it was ‘just musician Jimmy Smith, said: ‘Jazz is another example in a long history of the only real music that’s gonna last. Sony and Broadcom have settled plaintiffs coming out of the woodwork All that other bullshit is here today a patent infringement disagreement after a motion picture has achieved and gone tomorrow. But jazz was, centring on Sony’s gaming console critical and financial success to claim is and always will be.’ Drake’s song PlayStation 4 (PS4). Broadcom filed credit—and proceeds—where none samples around 35 seconds of the
08 June 2017
song, including the edited sentence collecting societies and particularly copyright management information of ‘only real music is gonna last, all the public at large made up of users identifying him as the photographer. that other bullshit is here today and of copyright works. The photograph has a pending US gone tomorrow’. The estate of Jimmy copyright number of 1-4189520005. Smith sued Drake, and various music To read this story click here. Gould is seeking damages and profits publishers and record labels, in April Source: CIPIT Blog from Tiffany, or alternatively statutory 2014 at the US District Court for the damages of up to USD 150 000 for Southern District of New York. More than 60 groups, wilful infringement of the work. He companies, urge EU to step has also asked the court for a jury To read this story click here. up copyright reform trial, damages of up to USD 25 000 Source: WIPR for the allegedly false copyright A range of civil society groups and management, and attorneys’ fees. Copyright Board obtains court companies on 29 May 2015 urged order stopping music society the European Union to embrace a To read this story click here. from collecting royalties more ambitious agenda for reform of Source: WIPR the Union’s copyright law. The list of MCSK has obtained several court companies and organisations includes Puma suffers blow in dispute orders (the latest coming from the the Computer and Communications with Forever 21 High Court in Kakamega dated Industry Association (CCIA), Mozilla, 5th April 2017) to enable it to Creative Commons, European Digital Puma has suffered a blow in its design continue its operations as a collecting Rights, Center for Democracy and patent, trade dress and copyright society. In the latest turn of events, Technology, European Internet dispute with Forever 21, after failing KECOBO has now obtained two court Service Providers Association to obtain an injunction against the orders dated 31 May 2017 barring (EuroISPA), International Federation retailer. In April 2017, in a claim filed at MCSK from collecting royalties from of Libraries and Associations, the US District Court for the Central the public as well as publishing any Electronic Frontier Foundation, District of California, Puma sued the information insinuating that it is duly Bitkom and many more. fashion retailer over its Yoki Sneakers. licensed as a collecting society for the Puma said Forever 21 had ‘blatantly year 2017 pending hearing of the suit. To read this story click here. copied’ its Fur Slide sandal, which is These orders of 31 May 2017 granted Source: IP Watch a slip-on shoe featuring a ‘plush fur’ in favour of KECOBO ensure that if side strap with a satin foam backing. MCSK continues collecting royalty Tiffany embroiled in another In 2015 in collaboration with Rihanna, license fees from business owners copyright claim with Puma developed and launched the then the latter could trigger contempt photographer Creeper trainer under the band of court proceedings against its name Fenty Puma by Rihanna. The Board Directors and Chief Executive Jewellery company Tiffany has Creeper is protected by US patent Officer. This blogger is aware that become embroiled in a copyright number D774, 288 as well as trade this dispute between MCSK and infringement claim brought by dress, the claim said. The Fenty shoes KECOBO is being widely watched a photographer. Peter Gould, based in are also protected by copyright, the both nationally and internationally New York, filed a lawsuit against the elements of which include ‘the ridged with great interest. Most observers jewellery company at the US District vertical tooling and grainy texture are keen to see how the court will Court for the Southern District of encompassing the thick rubber outer address the substantive claims made New York on May 31 2017. According sole’, according to the suit. It added by MCSK against KECOBO. It is to the claim, Tiffany unlawfully that Forever 21 has ‘blatantly copied’ clear that how the court addresses used a photo taken by Gould of these shoes through its product the merits of this matter will have jewellery designer Elsa Peretti in Yoki Sneakers. implications for the collective a video on its website. That’s not management system as a whole all—Gould has alleged that Tiffany To read this story click here. including the operations of the other ‘intentionally and knowingly’ removed Source: WIPR
09 June 2017
Valentino slaps Steve Madden linked with allegations of tax evasion. right of photograph archives, filed its with copyright suit, alleges AFP reported a number of European lawsuit on Thursday, 8 June, at the ‘striking’ copies outlets made similar claims during the US District Court for the Central District Football Leaks releases in December. of California. The suit alleged that After being slapped with a copying At the time, the club released a five-star The Beverly Hills Hotel had lawsuit by Dr. Martens, Steve Madden statement saying the Spanish tax displayed an image by photographer has added another case to its list of authorities absolved the striker. Terence O’Neill without any licence pending lawsuits: One from Valentino. or payment. The photo is known as The Italian design house has filed a To read this story click here. The Morning After and is an image of copyright infringement suit against Source: B-R report American actress Faye Dunaway at the Madden in the US District Court for pool of The Beverly Hills Hotel in the the Northern Division of Georgia, a Model sues Kenya Airways early morning, following her receipt federal court in Atlanta, alleging that in image rights dispute of Best Actress honours at the 1977 the notorious copycat accessories Academy Awards. brand has replicated one of its most A model has moved to court to sought-after bags, as well as one of its protest the continued use of her To read this story click here. $800+ bag straps. In 2015, Valentino photos to advertise Kenya Airways Source: WIPR created ‘a two-dimensional design following the termination of her that it applied to a handbag,’ as well contract six years ago. Purity as its Camubutterfly Strap Design – Njogu has sued advertising agency both of which enjoy federal copyright Scangroup and Kenya Airways. protection in the US According to Ms Njogu argues that she did not Valentino’s complaint, Steve Madden surrender her constitutional right has since taken to manufacturing and to privacy in perpetuity when she selling ‘substantially and strikingly signed the now expired advertising similar’ bags and bag straps of its own. contract. She further claims that the The Italian brand claims that it ‘did not parties have refused to compensate authorise Steve Madden to copy or her in spite of her pointing out the make derivative works of the Double rights infringement. ‘My images and Purse Design or the Camubutterfly pictures have repeatedly been used Strap Design,’ and ‘in doing so, Steve and continue being used against my Madden has violated Valentino’s wish for their economic gain in exclusive rights.’ violation of my right to privacy as per the law,’ says Ms Njogu in court To read this story click here. documents in which she is seeking Source: The Fashion Law up to KES 5 million in compensation. The dispute stems from an Cristiano Ronaldo reportedly advertising agreement with the Faces Tax Investigation over agency in early 2007 in which she Image Rights was supposed to serve as KQ’s model in a promotion campaign, Real Madrid star Cristiano Ronaldo locally as well as internationally. faces an investigation into tax irregularities involving his overseas To read this story click here. image rights. El Confidencial reported Source: Business Daily that the state are preparing a claim ahead of 30 June when the case The Beverly Hills Hotel sued is set to expire. The claim would for using photo of actress involve returns between 2009 and 2011, when he is said to have diverted Ireland-based Iconic Images has filed some of his earnings to the British a copyright complaint against The Virgin Islands instead of reporting Beverly Hills Hotel in Los Angeles for all of them. Ronaldo has denied any allegedly infringing a photograph. wrongdoing. It’s not the first time the Iconic, a company that specialises in Portuguese international has been the acquisition and management of
10 June 2017
Counterfeits these products to avoid detection, the final default judgment. Gucci was often through a maze of ports and awarded USD 100 000 in damages Trump signs executive order with the fake labels added in a different for each of the 89 defendants’ on trade and counterfeits country from manufacturing. infringement, with another USD 110 000 awarded against eight US President Donald Trump has signed To read this story click here. of those defendants. The infringing an executive order to ‘promote the To read the full OECD report click here. domain names were also transferred efficient and effective administration’ Source: IP – Watch to Gucci. The luxury brand had of US trade laws. Trump signed the brought its claim in late December order on ‘establishing the enhanced Counterfeiting and piracy- last year, alleging counterfeiting collection and enforcement of stamping it out and trademark infringement, false antidumping and countervailing designation of origin, cybersquatting, duties, and violations of trade and It has long been known that and unfair competition. customs laws’, on Friday, 31 March. counterfeiting and piracy (respectively According to a release by the White the infringement of trademarks To read this story click here. House, within 90 days of the order and copyright, together known as Source: WIPR the secretary of Homeland Security, intellectual property, or IP) make up through the commissioner of the US a vast global business. But a report Man sentenced to prison Customs and Border Protection (CBP), published by the OECD suggests that, over counterfeit Justin will develop and implement a strategy despite the advent of such high-tech Bieber clothing for combating violations of US trade counter-measures, it is far bigger and customs laws. The order will than previously thought. The last such A UK man has been sentenced to also ensure the ‘timely and efficient survey by the club of 34 mostly rich 30 months in prison for selling over enforcement of laws’ protecting IP countries was in 2008. Updated the EUR 150 000 (USD 1 90 000) worth rights owners from the importation next year with data from 2007, it put of counterfeit goods. Meraj Gul, of counterfeit goods. the value of cross-border trade in from London, was convicted of fakes at USD 250 billion, or 1.8% of the producing and selling merchandise To read this story click here. total for all goods. The latest report bearing the branding and logos Source: WIPR estimates that by 2013 those figures of music artists and brands online, had risen to USD 461 billion, and 2.5%. including Justin Bieber and One Large amount of consumer Direction. The offences took place tech is counterfeit, OECD Some increase was predictable: global between March 2012 and February report finds trade has recovered since the financial 2015. The City of London Police crisis, and it is natural that illicit Intellectual Property Crime Unit Nearly 20% of mobile phones and commerce should too. The report’s (PIPCU) received a report in 25% of video game consoles sold lead author stated that he had not July 2014 from Surelock International, internationally are counterfeit, and expected the rise in percentage terms a private investigation company. the numbers are rising, according to be so high. In part, it could be It had conducted a probe on behalf to a report by the Organisation thanks to better data. of the music industry and carried for Economic Cooperation and out test purchases on Gul’s online Development (OECD). The report, To read this story click here. accounts. The company found that Trade in Counterfeit ICT Goods, Source: The Economist all of the products purchased were defines counterfeit as a trademark counterfeit. PIPCU then carried out violation, a fake product packaged Gucci grabs USD 9 million warrants in February 2015. Branded to look like real thing. The report verdict in counterfeiting claim and non-branded clothing, and stencil found China to be the leading source templates containing the designs of of counterfeit information and Gucci America, the US arm of brands and machinery were seized. communication technology (ICT) the luxury brand, has secured goods and United States technology a USD 9 million verdict and a To read this story click here. to be hardest hit. The OECD is the permanent injunction against online Source: WIPR organisation of wealthier nations. counterfeiters. On 17 April 2017 the The report details complex ways Judge at the US District Court for the counterfeiters produce and ship Southern District of Florida signed
11 June 2017
How do fast fashion retailers Minnesota, supported activists combined research presentations and get away copying high opposing Line 5, an oil pipeline discussions with the launch of the fashion brands? running through the United States’s Copyright and Innovation Network. Great Lakes. Further, various store Prof Martin Kretschmer (Director of In light of the recent flood of indie managers spoke at an activist event CREATe) kicked things off with an designers coming forth to call foul encouraging environmental awareness update on CREATe’s first funding on fast fashion retailers for copying and climate change sensitivity. In 2016, period, with close to 60 projects their designs (paired with a few Patagonia donated USD 7.1 million to delivering their final reports this not-so-fast fashion brands, which more than 800 nonprofit groups. summer. He also revealed that the have been called out for copying, event marked the launch of a new as well), a common question seems To read this story click here. phase for CREATe, having received to be: Why is this ok? In particular, Source: WIPR ‘follow-on’ funding from the UK why is it perfectly acceptable for Research Councils for a period of Zara, Mango, and co. to copy these UN Development Programme 18 months, focussing on four key designers’ work? How is this practice calls for reform of IP and areas with the aim of engaging with legal? Well, put simply, copyright law investor protection regimes the UK creative economy to improve is not necessarily a friend to fashion copyright practice and policy. These in the US. This is a blanket statement, A United Nations development are (1) co-creation in the production of course, but it bears quite a bit of programme report released places chain: animations and guidance; (2) truth, nonetheless. Since copyright importance on transforming global co-creation from cultural heritage: law, the type of intellectual property institutions, and establishing fair trade events and guidance; (3) co-creation law that protects ‘original works of and investment rules. The report calls in policy deliberation: peer production authorship,’ such as books, paintings, for global reform of the intellectual of evidence; and (4) the Copyright sculptures, and songs, does not property rights regime and investor and Innovation Network. protect useful things, like clothing protection regime. In addition, and accessories, it has provided a the report ranks countries on their To read this story click here. rather small amount of protection for human development level, putting Source: IPKat those things in their entirety to date. Norway first followed by Australia and Switzerland. To read this story click here. Our Work Source: The Fashion Law The human development report 2016 ‘Human Development for Everyone,’ launched in Stockholm, In the month of June we have: General news is the latest in a series of global Human development reports • Filed approximately 30 trademark published by the UN Development applications across East Africa; Patagonia: The company Programme (UNDP). • Assisted with approximately that recycles counterfeits 90 trademark renewals, recordals To read this story click here. of mergers, changes of names US-based outdoor clothing company, Source: The IP Watch and assignments of trademarks; Patagonia, is devoted to fighting • Filed eight renewal of patent issues such as climate change, and Event report: Trends in the annuity; and spent much of 2016 doing exactly creative digital economy • Been instructed on two passing what many have come to associate off/ counterfeit matters. it with: promoting environmental ‘What’s happening in the creative protection. The clothing company’s digital economy?’ A recent event, Environmental & Social Initiatives hosted by CREATe (the RCUK Centre 2016, published in November last for Copyright and New Business year, reported a busy 12 months. Models in the Creative Economy), In Washington, DC, it hosted a explored ‘Trends in the Creative Digital surfboard-signing event in protest Economy: Findings from the CREATe at offshore oil drilling; and stores Research Programme’ at the Digital in Chicago, Illinois, and Saint Paul, Catapult Centre in London. The event
12 June 2017
Our Team
Partners
JOHN SYEKEI ANTHONY NJOGU TERRY MWANGO Head of IP Department IP Litigation IP Litigation
Trademark, design, copyright and Litigation before various courts and Litigation before various courts and patent litigation, cancellation and tribunals (KIPI), dispute resolution, tribunals (KIPI), dispute resolution, opposition matters, trademarks, arbitration (local and international) arbitration (local and international) advertising, copyright, e-commerce, it contracts, franchising, licensing, E: [email protected] E: [email protected] foreign filing – Africa, counterfeiting and counterfeit raids practice
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DAVID OPIJAH DANIEL MWATHE CECIL KUYO IP IP IP Litigation
Patent prosecution, patent advice, Advertising, copyright, e-commerce, Litigation before various courts and trademarks, design, copyright it contracts, franchising, licensing, tribunals (KIPI), dispute resolution, and patent litigation, cancellation commercial contracts, foreign arbitration (local and international) and opposition matters, foreign filing – Africa filing – Africa, counterfeiting and E: [email protected] counterfeit raids practice E: [email protected]
13 June 2017
Our Team continued
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KRYSTAL MUINDI AGNES AKAL EDDAH KIAI IP IP Litigation IP
Trademark and patent renewals, Litigation before various Advertising, copyright, e-commerce, annuities, trademark clearance courts and statutory (KIPI) and IT contracts, franchising, licensing, searches, foreign filing – Africa arbitral tribunals commercial contracts
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ARIANA ISSAIAS
Advising on e-commerce; franchising, distribution and licensing arrangements; IP exploitation; EU/UK IP registrations
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