Ten years of the WIPR Annual: a decade of IP developments

2006

It seems hard to believe that Twitter, home to more than 280 million users, is already nine years old. On July 15, 2006 the micro-blogging website launched, bringing with it a host of intellectual property concerns.

Freelance photographer Daniel Morel provided one of the most high-profile examples of how Twitter has sometimes been problematic for IP owners. The case dates to 2010, when Morel posted 13 pictures of the Haitian earthquake of that year onto Twitter. An editor at news agency Agence France-Presse (AFP) discovered the photos and the agency then distributed some to image database Getty Images.

Morel claimed AFP had used the images improperly, prompting the news agency to sue him in 2010 seeking a ruling that it could lawfully use the photos. Morel then sued AFP, Getty and The Washington Post (which had used some of the photos but with which he later settled) for copyright infringement.

In 2013, AFP and Getty were fined $1.2 million for wilful infringement. The pair, in January 2014, filed a post-trial motion that asked for either an eradication of the jury’s findings, a reduction in the amount owed to Morel, or a new trial, although there have been no further developments.

2007

In 2007 new laws aimed at clamping down on the importation of counterfeit goods in India and shoring up the country’s customs enforcement were introduced.

The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 allow a right owner to notify (in writing) the commissioner of customs at the relevant port about goods suspected of infringing its IP rights. Customs authorities can then suspend clearance of suspected goods if the commissioner has reason to believe that the imported goods are IP-infringing.

Writing for the WIPR Annual in 2011, Anuradha Salhotra, managing partner at law firm Lall Lahiri & Salhotra, said the legislation aimed to strengthen the legal framework for IP and customs laws.

“It complies with border control measures as required by the World Trade Organization-administered TRIPS Agreement, keeping in tune with international practice and empowering customs officers in India to enforce the IP law,” she said.

The need for such a law appeared crucial in a country that had faced alleged problems with counterfeits. According to the World Health Organization, in 2002 India’s pharmaceutical companies had claimed that in India’s major cities, one in five medicines sold was counterfeit and that they had suffered a loss in revenue of “between 4% and 5% annually”.

2008

“The tension between trademark owners and the internet is an issue that concerns all trademark owners,” wrote Chris McLeod, the current president of the Institute of Trade Mark Attorneys. McLeod was writing in the WIPR Annual 2008 but you could be forgiven for thinking he was writing in this year’s edition. His main concern was keyword advertising, where bidders pay for a name to appear at the top of internet search rankings.

Trademark owners had found that third parties had purchased keywords matching their trademarks. In the article, McLeod discussed advertisers purchasing keywords covering the word ‘spicy’. One individual, Andrew Wilson, took exception, claiming it would confuse customers with his ‘Mr Spicy’ Community trademark. Wilson sued Yahoo but the English High Court cleared the search engine of trademark infringement. This decision led McLeod to conclude that the law on keyword advertising is “unfavourable to trademark owners”.

Now, one of the most well-known keyword disputes is set to rumble on into 2015. In November 2014, the English Court of Appeal ordered a re-trial in the Interflora v Marks & Spencer (M&S) case. The row began in 2008 and in 2013 the English High Court ruled that M&S infringed Interflora’s trademarks in its use of keywords for ‘Interflora’. Following an M&S appeal, the Court of Appeal overturned the finding of infringement.

2009

In 2009, Peter Sunde, Fredrik Neij, Gottfrid Svartholm and Carl Lundström, the co-founders of file-sharing website The Pirate Bay, were sentenced to one year in jail in Sweden and ordered to pay fines totalling kr30 million ($3.4 million), provoking protests across Europe.

"In 2002 India’s pharmaceutical companies had claimed that in India’s major cities, one in five medicines sold was counterfeit."

Traditionally, there has been a conflict between music right owners’ business models and the consumption of music online, and there have been several responses to this old problem, including the creation of streaming service Spotify. Elsewhere, in 2007 Radiohead (singer Thom Yorke, pictured left) released its album In Rainbows and asked fans to pay what they thought it was worth. In March 2015, Jay-Z and others re-launched Tidal as a rival to Spotify after there was feeling among musicians that the platform was not rewarding them sufficiently for their work.

In January 2015, Julia Reda of The Pirate Party published the first draft of proposals for copyright reform in the EU. She has met both hostility and support, but her sense is that the law needs to change to reflect the role of the internet in distributing artistic works.

2010

The sight of 36 Dutch women being escorted out of the Holland v Denmark game during the 2010 FIFA World Cup, held in South Africa, has become one of the best-known symbols of ambush marketing. Dressed in bright orange dresses and sporting the logo of beer company Bavaria, the women’s stunt was highly memorable, but not for the right reasons in FIFA’s eyes.

Authorities such as FIFA, the National Football League and the International Olympic Committee (IOC) all have strict rules for athletes, fans and brands on what they can and cannot advertise, in order to combat ambush marketing.

These restrictions, however, have attracted criticism that they go too far and do not allow athletes to monetise their rights at a time when they are most valuable. During the 2012 London Olympic Games, athletes rallied around the social media hashtag ‘#wedemandchange2012’ in protest against the ban on advertising with unofficial partners during the event.

The protest looks as though it is going to succeed. In July 2015, the executive board of the IOC is expected to relax the restrictions on advertising by allowing athletes to advertise an unofficial partner during the Games, as long as the campaign doesn’t associate the brand with the event itself.

Former Olympic athlete Jade Johnson will welcome the change. She previously told our sister publication Trademarks & Brands Online that: “It is good there is a bit of leeway, because too often athletes get lost in the soup of all this power and money.”

2011

After six years of discussion, on June 20, 2011 the Internet Corporation for Assigned Names and Numbers (ICANN) finally approved a shakeup of the domain name system. The board’s decision, only two days into ICANN’s Singapore meeting, paved the way for a vast expansion of the number of generic top-level domains (gTLDs). There were 22 generic suffixes at the time; a year later ICANN received nearly 2,000 applications (although around 750 were duplicates).

Until that day, and perhaps even now, many brand owners had probably never heard of ICANN, but the non-profit’s decision has widespread implications for protecting trademarks online. As Francis Gurry, director general of the World Intellectual Property Organization, had said two years before the decision: “The sale and broad expansion of new TLDs in the open market, if not properly managed, will provide abundant opportunities for cybersquatters to seize old ground in new domains.”

Although hundreds of new registries have launched, it’s still too early to draw any conclusions about the effect on infringement. What is striking, however, is that around 600 companies (roughly a third of total applicants) applied for a ‘dot brand’ domain, taking more control over their internet presence and helping to change the face of the domain name system.

2012

Should public health concerns trump IP rights? That was one question on people’s lips when Australia became the first country to introduce plain packaging legislation for cigarettes. From December 1, 2012, all cigarettes sold in the country had to be produced in a dark brown packet, with only a small space allowed for the brand name.

Since the Tobacco Plain Packaging Bill was passed, the tobacco industry and anti-smoking groups have disputed how effective the law has been.

Figures from Australia’s Bureau of Statistics show that smoking has gradually decreased since the law was introduced. The bureau said expenditure on tobacco products fell by more than AUD$100 million ($77 million) between December 2012 and March 2014.

Plain packaging legislation has now been approved in Ireland and England, but both are subject to potential legal challenges from tobacco companies.

Dan Smith, head of advertising and marketing law at law firm Wragge Lawrence Graham & Co, told WIPR in October 2013 that there had been a “huge amount of concern” that plain packaging could be the “thin end of the wedge” and people were worried that products such as alcohol, and high fat, salty and sugary foods would be the obvious next stop for plain packaging.

2013

On June 13, 2013, the US Supreme Court ruled that human genes are not patent-eligible simply because they have been isolated from the DNA sequence, striking down patents owned by genetic diagnostic company Myriad Genetics.

Myriad owned patents that gave it the exclusive right to isolate the BRCA1 and BRCA2 genes, mutations of which dramatically increase an individual’s chance of developing breast or ovarian cancer. The Association for Molecular Pathology had sued Myriad in 2009, arguing that those patents were invalid under section 101 on patentability.

The verdict temporarily muddied the waters with respect to determining patent eligibility of inventions that involve natural phenomena, and may have contributed to a surge in patent rejections by the US Patent and Trademark Office under section 101.

Some worried that the decision, along with Prometheus (also from the Supreme Court) in 2012, would have a negative impact on innovation in genetic diagnostics, which are predicted to play a big role in the development of personalised medicine.

Myriad has since been engaged in patent litigation with genetic diagnostic companies, including Ambry Genetics and Gene by Gene, which started offering their own BRCA tests immediately after the ruling. The last of these disputes was settled earlier this year.

2014

According to a report from professional services firm PricewaterhouseCoopers, China is expected to be the biggest economy in the world in 2030, overtaking the US, which currently sits in first position.

Much has been made of the rapid urbanisation of China’s cities and the development of the economy, and for brand and patent owners the story is no different. In 2014, China received record filings for patents and trademarks, and is currently the number one destination for global IP applicants.

Despite this, there have been problems. For example, right owners and IP professionals have complained about trademark squatting and the ‘great wall of patents’.

In response, the Chinese government in November 2014 opened the first court dedicated to IP disputes, in Beijing. Two more courts opened up in Guangzhou and Shanghai a month later. The intention is to provide an additional mechanism for IP owners, both Chinese and international, to assert their rights and challenge bad faith registrations.

The courts have generated a lot of discussion, and as we move further into 2015, IP lawyers will be keenly watching how they deal with disputes.

2015

The Innovation Act emerged out of the ashes of previous political attempts to reform the US patent system. The bill, with the same name and similar wording as its 2013 predecessor, appeared in February, again seeking to tackle non-practising entities (NPEs).

NPEs, also known as patent trolls, are a big issue for companies both big and small. They are often accused of filing frivolous lawsuits with the purpose of extracting settlement fees.

In 2014, the bill, one of several attempts to reform the system, was withdrawn after it did not generate enough support in the Senate.

Now, if passed, the reforms would require patent litigants to disclose details about who they are and on all parties with a financial interest in the patent(s). Judges would also be able to restrict the use of discovery letters.

Outside Congress, the proposals have generated support. Facebook, Google and Amazon are some of the notable names to have publicly supported changes to the patent system.

And in 2016 …

At the time of writing, it is more than two years since the agreement for the Unified Patent Court (UPC) was signed, but there still seems to be a long way to go before the new system appears in the flesh. Only six EU signatories to the deal have signed it, seven short of the requisite 13, and only one of the three mandatory signatories—France—has, with the UK and Germany yet to make their final move.

However, progress towards setting the renewal fees for the associated unitary patent is being made. The European Patent Office (EPO) has proposed two alternative models, based on the combined renewal fees of either the top four or five EPO member states for European patent filings, although these are by no means final.

Unless we see a wave of European political enthusiasm for the UPC soon, it seems unlikely the agreement will be in place until 2016 at the very earliest. One lawyer who is closely following the developments has told us that 2017 is most realistic.

Will the new system be popular, cost-effective and efficient? Will it make life easier for patentees? We will have to wait to find out.