August 2018

Enforcement of Intellectual Property in China

Takeaway: China is addressing concerns about lax enforcement of intellectual property rights by seizing over 7 million items suspected of IP infringement.

Enforcing your intellectual property rights against Chinese entities is notoriously difficult, but an improving relationship between China and the World Trade Organization may change that.

According to China’s state-run news agency, China’s General Administration of Customs seized over 7 million items suspected of IP infringement in the first half of 2018.

In a recent report, the agency claims that this high volume of seizures demonstrates China’s seriousness towards addressing concerns regarding its purportedly lax enforcement of intellectual property rights.

This report seemingly responds to recent allegations from the United States of China’s “abusive practices with regard to intellectual property.”

In sum, stronger enforcement practices adopted by Chinese customs may offer the opportunity to enforce your intellectual property rights by registering your IP with China’s General Administration of Customs. Read more at their website here.

Ninth Circuit Rules on “Honey Badger Don’t Care” Trademarks

Takeaway: The Ninth Circuit will apply the Lanham Act to expressive works if the public interest in avoiding consumer confusion outweighs the public interest in free expression. If there is widespread recognition over a phrase, it is advisable to avoid using that phrase for commercial gain unless you first seek permission.

The Ninth Circuit Court of Appeals recently heard a case brought by Christopher Gordon. Gordon made the famous videos that feature the phrases “Honey Badger Don’t Care” and “Honey Badger Don’t Give a S—.” Gordon owns trademarks in both of those phrases covering greeting cards. Defendants Drape Creative, Inc. and Papyrus-Recycled Greetings, Inc., made greeting cards using the phrases and Gordon filed this lawsuit alleging a cause of action under federal trademark infringement. The district court granted summary judgment for defendants and Gordan appealed.

The Ninth Circuit uses the “Rogers” test from Rogers v. Grimaldi to balance the interests when a trademark owner claims that an expressive work infringes on its trademark rights. The courts weigh the public interest in avoiding consumer confusion against the public interest in free expression to determine whether the Lanham Act should apply to expressive works.

The court stated that the Defendants did not use Gordon’s “mark in the creation of song, photograph, video game, or television show, but largely just pasted Gordon’s mark into their greeting cards,” showing that a jury could determine that the defendants did not add any value protected by the First Amendment but rather just used the recognition of Gordon’s mark. Therefore, they reversed the district court’s decision and remanded for further proceedings on Gordon’s claims.

Canada Plans to Move to the Madrid Protocol in 2019

Takeaway: Canada is moving to the Madrid Protocol in 2019 so if you plan on seeking Trademark protection in multiple countries including Canada you may want to consider filing an international Madrid Protocol application.

At the Intellectual Property Institute of Canada, the Director General of the Canadian Trademarks Branch discussed plans to become a part of the Madrid Protocol. Canada plans to join the Madrid Protocol in 2019.

The Madrid Protocol allows a trademark applicant to apply for their mark in any of the participating countries by filing a single application, called an “international application.” This addition will give applicants the ability to reduce application costs if they plan on registering for a mark in both Canada and other countries.

The problem though, with this type of filing, is that U. S. Applicants are restricted to a generally narrow description of goods and services for their U. S. registration. We recommend using the Madrid Protocol where the mark has been registered for at least 5 years, as the international application is predicted upon the U. S. registration being in existence.

Canadian Trademark Use Requirements Update

Takeaway: Website or application interactivity that provides Canadians with some benefit will establish a trademark use in Canada even if there is no physical presence in Canada.

In Dollar General Corporation v. 2900319 Canada Inc., the court affirmed the decision that there need only be a sufficient level of interactivity with potential Canadian customers to show a proper use to establish trademark rights in Canada.

In this case, Dollar General operated stores in the United States but did not operate stores in Canada. Dollar General’s only presence in Canada was their website and application to which Canadians had access. Both the website and the app required Canadians to come to the United States to pick up their online purchases or required them to solicit a third-party carrier to deliver the products to Canada. Even though there was no shipping for online purchases, the fact that Canadians were able to access and purchase the product established a proper trademark use.

This decision shows that as long as a company has enough interactivity for Canadians to receive a benefit based on a web or application service, trademark use will be established.

This decision is significant because the Canadian Trademarks Opposition Board typically does not acknowledge ancillary services such as websites and applications to establish a proper trademark use in Canada. This decision impacts the way the Opposition Board has dealt previously with this type of use.

Glacier Films v. Turchin

Takeaway: Attorney’s fees payable to a prevailing party in a Copyright Infringement action must be based on the specifics of the case at hand, not on the general presumption of the type of copyright matter at hand.

In Glacier Films v. Turchin a production company sued Turchin, who downloaded and distributed a movie made by Glacier Films without paying for the movie and without the consent of Glacier Films. Initially, Glacier Films did not know who downloaded the movie, but after seeking information from the ISP where the movie was downloaded, they were able to track down Turchin. The way Turchin downloaded the movie was through a technology called BitTorrent.

BitTorrent chops files into smaller pieces and users download files in pieces from other users. Once the file pieces have been downloaded from the other users, they are reassembled into the original file. The district court ruled in favor of Glacier Films but did not award attorneys’ fees in the matter, causing Glacier Films to appeal decision.

In this case the Ninth Circuit determined that the district court based their decision not to award attorneys’ fees on a “generally unfavorable view of other BitTorrent litigation.” For this reason they determined that the district court abused its discretion by denying attorneys’ fees without evaluating the details of the case.

They noted that the Court’s analysis of whether attorney’s fees were warranted should have been based on the Glacier Films’ case and not on the Court’s view of other BitTorrent litigation. They additionally found that the District Court based its decision partially on the conduct of Glacier Films’ counsel in other suits.

The Ninth Circuit was not saying that some BitTorrent cases may well warrant a denial of fees. Rather, they were saying that “an approach that furthers the goals of the Copyright Act considers the facts of a given case, weighs the appropriate factors, and makes a fee determination based on the conduct of both parties.” Therefore, the Ninth Circuit reversed and remanded the case back to district court for “reconsideration” of whether to award attorneys’ fees.

European Courts Decide Whether You Can You Post Content That Is Freely Available On The Internet.

Takeaway: Be careful about what you post on your own website if you do not have permission to do so from the original creator. Before adding third-party content to your own website it is advisable to receive permission first.

Recently a secondary school student downloaded a photo that was posted online to use in a presentation at school without the original poster’s permission. After the child’s presentation, the child’s school posted a photo of the presentation on their own website.

Subsequently, the owner of the original photo sued the school for copyright infringement and 400 euros in damages in Germany. The court found that when someone uses a photo in a different location (i.e. on a different website) from the original photo, without permission, they are taking away from the traffic to the owner’s website and ultimately denying the artist any resulting revenue of that traffic.

The court found that even though the photo was freely available, a new poster must first seek permission to repost the photo on a different website. This is because the reposting of the photo makes it available to a “new public” of people online. Therefore, the court found that any reposting of content by a third-party without consent will be regarded as copyright infringement.

Cislo & Thomas LLP Celebrates Summer 

On August 3rd, Cislo & Thomas celebrated together with their annual summer party. Robert Feldman of Allstate and Mark Nielsen of Cislo & Thomas LLP provided delicious barbecue for the Cislo & Thomas team, while Daniel Cislo honored everyone for their hard work and dedication to providing Quality Client Care!