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All is fair in Nortel patent war
readmore p3
readmore p3This fact means that Google was fully aware of the pat-ents-in-suit, said the consortium.
“Google subsequently increased its bid multiple times, ultimately bidding as high as $4.4 billion. That price was insufficient to win the auction, as a group led by the cur-rent shareholders of Rockstar purchased the portfolio for $4.5 billion.”
“Despite losing in its attempt to acquire the patents-in-suit at auction, Google has infringed and continues to infringe the patents-in-suit.”
Google’s infringement of the seven patents is “willful and deliberate”, and is primarily being carried out through the internet company’s key search engine revenue genera-tor, AdWords, said the consortium.
Samsung, on the other hand, is infringing the patents with its Galaxy family of smartphones, argued the con-sortium in a separate complaint.
Google has not offered a public statement on the complaint against it.
The group that beat Google to Nortel’s war chest of patents is taking the internet giant to court for infringement.
Rockstar, a consortium of companies includ-ing Apple and Microsoft that succeeded in buy-ing struggling Nortel’s patent portfolio in 2011 for $4.5 billion, filed infringement complaints against Google, Samsung and other companies on 31 October in the US District Court for the Eastern District of Texas.
The consortium, along with its subsidiary and licen-see of the Nortel patents, NetStar Technologies, has accused the companies of infringing seven patents covering internet search technology, which is particularly important to Google’s business.
In its complaint against Google, the consortium points out that the internet company tried to buy the portfolio of patents that was put up for sale dur-ing the bankruptcy of telecommunications multina-tional Nortel, initially offering $900 million.
Registrars go nuts for Donuts Donuts is moving ahead with the intro-duction of seven of its new gTLDs into the domain name system.
The applicant of more than 300 gTLDs—the programme’s biggest filer—expects the sunrise periods for .bike, .clothing, .guru, .holdings, .plumbing, .singles and .ventures to open on 26 November and close on 24 January 2014.
Donuts will forgo a landrush period, in which second level domain names can be secured at a premium, for all of the gTLDs, making them gener-ally available on 29 January 2014, without restriction.
It has also signed registry-registrar agreements with seasoned domain name registrars, including MarkMoni-tor, Netnames, GoDaddy, Melbourne IT and 101domain, to distribute domain names under the seven new gTLDs.
WiLAN worries may lead to saleWiLAN is considering selling itself af-ter a federal jury in Texas invalidated two claims in a patent that it asserted against Apple.
The self-styled patent licensing company, largely considered to be a non-practicing entity, saw its share price drop sharply following the decision to invalidate claims one and 10 in its US patent covering CDMA and HSPA technologies, which are used in smartphones.
The trial proceedings, which com-menced on 15 October, also conclud-ed in finding that Apple did not infringe the patent.
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Latest newsIBM invites Twitter to enter into negotia-tions over alleged patent infringement
p4Latest newsZynga did not violate Mattel’s Scrab-ble trademark, a UK justice rules p5
Latest newsUK ISPs block access to 21 websites after a music industry trade group secures a court order
p7
Videogame IPOsborne Clark’s Jas Purewal on how developers can use brands in their videogames without going to court
p8Madrid systemD Young & Co’s Wendy Oliver pro-vides an update on the international trademark registration system p9People movesFormer Microsoft patent counsel Bart Eppenauer moves into private practice, the ITC swears in a new commissioner, and more
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Registrars go nuts for DonutsContinued from page 1
Dan Schindler, Donuts co-founder and ex-ecutive vice president for sales and market-ing, said: “Having top-tier registrars such as these prepared to bring our new gTLDs to their customers is a significant step forward for anyone looking for better, more relevant identities for their products, services, compa-nies, and other interests.”
GoDaddy vice president of domains Rich Merdinger added: “Domain names are 21st century real estate and, as a registry, Donuts has the broadest selection of names about to hit the market.”
“This is a historic time for the internet and this new era of domain names provides new opportunities for anyone looking to get on-line. GoDaddy looks forward to helping small businesses take advantage of this new online real estate.”
WiLAN worries may lead to saleContinued from page 1
The jury’s finding in Texas came despite the other six defendants in the case—Alcatel-Lucent USA, Dell, Hewlett-Packard Company, HTC Corporation, Novatel Wireless and Sierra Wireless—earlier signing licence agreements to end the litigation.
“WiLAN is disappointed with the jury’s decision and is currently reviewing its options with trial counsel, McKool Smith. WiLAN does not be-lieve previous licence agreements signed re-lated to the patents are negatively impacted by this decision,” said the company in a statement.
On 24 October, WiLAN issued another statement amid continued fears about its share price, saying that although the company is “disappointed” with the decision in its case against Apple, is has enjoyed a strong financial position and results to date.
“The patent that was at issue in that case expires in just over three months and is only one patent in our portfolio of more than 3000. Since refocusing the company on intellectual property licensing in mid-2006, the company has signed more than 270 licence agreements worth between $725 million and $750 million.”
But the Canadian company then said on 30 October that it is considering a range of stra-tegic alternatives to boost shareholder value.
It “strongly believes in its current business strategy”, but does not feel that its current share price accurately reflects “its strong balance sheet, the value of its signed licence agreements, its business prospects or the residual value of its broad intellectual property portfolio”.
“Strategic alternatives to be considered may
include changes to the company’s dividend policy or other forms of return of capital to shareholders, the acquisition or disposition of assets, joint ventures, the sale of the company, alternative operating models or continuing with the current business plan, among other poten-tial alternatives.”
WiLAN earned $20.7 million in the third quarter of 2013, and expects to earn between $26 and $28 million in the final quarter of the year.
Since mid-2006 and up to the end of the third quarter this year, WiLAN has recorded more than $400 million in consolidated revenues.
Its estimated backlog position, or the value of signed licence agreements that have fixed pe-riodic payments plus management’s estimate of revenue to be reported and collected under signed running royalty licences, stands at be-tween $325 and $350 million.
It expects to collect this revenue over the next four years, with some licence agreements ex-tending for more than seven years.
Facebook seeks to dismiss class
Facebook is seeking to dismiss a proposed class action that accuses the site of illegally using chi ldren’s photos and names for advertising purposes.
The lawsuit was filed at US District Court for the Northern District of California in March 2012.
Facebook is allegedly using photos and names of children without the permission of their par-ents for its endorsement of social ads and sponsored stories to generate revenue, which is paid to Facebook by advertisers every time a user clicks through an ad to the advertiser’s landing page.
In its motion to dismiss the complaint, the so-cial networking site argued that the plaintiffs are not injured by the practice.
But the plaintiffs claim that when an under-age user endorses the advertisement, the user cannot prevent their name and likeness from appearing on a Facebook page and cannot remove them while continuing to ‘Like’ the advertisement.
California state law forbids the unauthorised use of a person’s name or likeness for com-mercial purposes, although Facebook’s terms state that users have to consent to their im-ages being used for advertising, according to the original complaint.
Earlier this year, a judge ruled that Facebook must pay $20 million to settle a class-action lawsuit. The suit was taken out by Facebook users whose pictures were used in sponsored stories adverts without their permission.
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Under the terms of the settlement, Facebook was ordered to amend the Statement of Rights and Responsibilities that governs use of users’ information on the site.
IBM: Twitter’s a patent infringerIBM has invited Twitter to enter into negotia-tions with it over alleged patent infringement.
According to an update to Twitter’s IPO filing with the US Securities and Exchange Com-mission, IBM accused the micro blogging site of infringing at least three patents and invited it to negotiate “a business resolution of the allegations”.
The patents-at-dispute cover a network-ing technique based on common contacts (US7099862), and a method of showing adver-tisements without interfering with an interactive site (US7072849). The third pertains to the use of interconnected computers to reduce web traffic (US6957224).
IBM, which has been the biggest recipient of US patents for the past two decades, receives about $1 billion a year in licensing revenue.
Twitter said in the regulatory filling: “Based upon our preliminary review of these patents, we believe we have meritorious defences to IBM’s allegations.”
“Although there can be no assurance that we will be successful in defending against these allegations or reaching a business resolution that is satisfactory to us.”
In 2006, IBM negotiated with Amazon be-fore filing a lawsuit over internet-commerce related patents.
The companies settled seven months later, with Amazon paying undisclosed damages.
Twitter’s initial public offering has raised con-cerns about the micro blogging website’s lack of a solid patent portfolio, which the company says leaves it open to infringement allegations.
As of 30 June, it had six US patents and ap-proximately 80 patent applications on file in the US and abroad.
“[T]here can be no assurance that these ap-plications will be ultimately issued as pat-ents. We may be unable to obtain patent or trademark protection for our technologies and brands, and our existing patents and trademarks, and any patents or trademarks that may be issued in the future, may not provide us with competitive advantages or distinguish our products and services from those of our competitors.”
Twitter also has a str ict pol icy of only asserting its patents to defend itself, and to do otherwise requires the permission of the named inventor.
Nokia extends licensing deal with SamsungNokia and Samsung have extended a previously unannounced licensing deal for f ive years.
The agreement would have expired at the end of 2013. The new deal will see Samsung pay-ing “additional compensation” to Nokia for five years from 1 January 2014, according to the Finnish company.
The compensation amount will be agreed in a binding arbitration that will be concluded in 2015.
“This extension and agreement to arbitrate represents a hallmark of constructive resolu-tion of licensing disputes, and are expected to save significant transaction costs for both parties,” said Paul Melin, chief intellectual property officer at Nokia.
In September, Nokia agreed to sell its mo-bile phone division to Microsoft. It will focus on network equipment and licensing its vast patent portfolio.
Microsoft has already agreed to license an ex-tensive portfolio of utility patents from Nokia for $2.2 billion.
It has also licensed more than 8500 design
patents from Nokia. The licences will last for 10 years, but can be extended.
Nokia’s licensing activities have also made an appearance in Samsung’s continuing patent battle against Apple.
According to reports, Samsung has told Nokia that it had learned the details of its deal with Apple—another existing patent agreement that has not been made public.
MPAA identifies internet pirates for USTR
The US Trade Representative (USTR) has identified a long list of internet pirates with the aid of the Motion Picture Association of America (MPAA).
The MPAA provided a list of BitTorrent sites, peer-to-peer networks, streaming hubs, link-ing websites and news groups in response to a USTR request for submissions from the public for its 2013 Special 301 Out-Of-Cycle Review of Notorious Markets on 30 September.
The USTR requested information on markets “where counterfeit and pirated products are prevalent to such a degree that the market exemplifies the problem of marketplaces that deal in infringing goods and help sustain global piracy and counterfeiting”.
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The MPAA has identified each site’s predomi-nant location determined by factors including server location, host location, and domain registrant location.
The infringing entities are based in Ukraine, Australia, Canada, China, Indonesia, Ireland, Brazil, Russia, Thailand, Mexico and India.
Some of the websites stated include extra-torrent.com, kicksass.to, thepiratebay.sx, torrentz.eu, and putlocker.com.
The list also shows several forms of content theft, which the MPAA argues, despite their differences, all have a major impact on the US movie and TV industry to compete with foreign industries.
“The American motion picture and television industry is a major US employer that supports approximately 2 million jobs and over $104 bil-lion in total wages in all 50 states,” said MPAA chairman and CEO, senator Chris Dodd.
“The rogue overseas marketplaces high-lighted in the filing undermine the people who work hard to create the movies and TV shows audiences love, and jeopardise the billions of dollars they contribute to the US economy,” concluded Dodd.
The comment period for the 2013 Special 301
Out-Of-Cycle Review of Notorious Markets report closed on 25 October.
Earlier this year, the MPAA represented major US movie companies in a long-running copyright case against BitTorrent tracker isoHunt.com.
The site closed on 23 October and the studios received a settlement from the website’s owner.
Zynga wins trademark lawsuitFarmVille creator Zynga has not violated Mat-tel’s Scrabble trademark, according to a High Court of Justice of England and Wales ruling.
Mattel argued that Zynga’s use of the word ‘Scramble’ in the Scramble With Friends app is too similar to the word “Scrabble”.
In his 1 November decision, Justice Peter Smith disagreed, although he did say that the Scramble With Friends logo might confuse us-ers as the curled ‘m’ in ‘Scramble’ looks like a ‘b’ at first glance.
Justice Smith said: “I have come to the con-clusion that the word ‘Scramble’, whether on its own or with ‘With Friends’, does not infringe the Scrabble trademarks. It is not similar and it is not likely to cause confusion for the rel-evant persons for trademark infringement and/or passing off.”
“However that is on the basis that any logo which purports to have the word ‘Scramble’ in it does not itself appear ambiguous. I am firmly of the view that Zynga’s present logo with the ‘m’ on its side gives the impression that the word is ‘Scrabble’ when one looks at it quickly and has the propensity to confuse...”
The ruling of the High Court suggests that Zynga needs to change the design of the Scramble with Friends logo.
Mattel had argued that Zynga infringed two European Community trademarks, covering Scrabble name and logo. It also asserted a trademark for a 3D ivory-coloured tile on which numbers and letters are shown.
Alan Hilowitz, a spokesperson for Mattel, said: “We are pleased that the English High Court ... affirmed Mattel’s request for an injunction against Zynga, finding that the similarities be-tween their Scramble With Friends logo and Mattel’s intellectual property likely would con-fuse the public into thinking they were in fact downloading Scrabble.”
“We are, however, disappointed that the court did not rule that Zynga should cease using the Scramble name, which Mattel intends to appeal.”
Zynga has gone to court over its With Friends games and apps in the past.
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A casual sex matchmaking app, Bang With Friends, infringed trademarks covering Zyn-ga’s With Friends series of games and apps, including Hanging With Friends and Chess With Friends, argued Zynga in the US.
The two companies settled in October, with the company behind Bang With Friends agreeing to change the name of the app.
Nokia wins UK lawsuit against HTCNokia has won a lawsuit in the UK against Tai-wanese smartphone maker HTC over patent rights concerning the transmission of data over mobile networks.
Nokia sued HTC at the High Court of Justice for England and Wales. Justice Richard Ar-nold said that HTC products infringed Nokia’s patent (EP0998024) for a modulator structure for a transmitter and a mobile station.
Nokia has filed more than 50 lawsuits in Eu-rope, Japan and the US in its patent fight against HTC. It won a court injunction banning HTC from using microphone parts in an Am-sterdam district court earlier this year.
In the UK case, HTC pointed out that Nokia had signed an agreement in the US not to sue Qualcomm, a chipmaker that sells parts to HTC, over the matter.
The Taiwanese firm stated that it did not need to take out a licence of its own because of the US patent exhaustion doctrine. But Justice Arnold said that as Nokia had registered its patent in Europe, the US deal did not override rights in the UK. “If the licensee has no right to sell in the UK, then a purchaser from the licensee cannot be in a better position.”
“[The] judgement is a significant development in our dispute with HTC,” a Nokia spokesper-son said.
“Nokia will now seek an injunction against the import and sale of infringing HTC products in the UK, as well as financial compensation.”
“HTC is disappointed by the decision that the UK court has reached in this case and we will be seeking to appeal the finding immediately,” said the company in a statement.
BPI blocks 21 infringing websitesUK ISPs must block access to 21 copyright infringing websites after the music trade body BPI secured a court order against them.
The court order became effective on 30 October.
BPI acted because the nine BitTorrent and 12 aggregator sites declined to cooperate in tackling their users infringement of copyright. It asked the High Court of England & Wales to block the websites after making the requests over the summer.
The High Court considered the evidence and issued an order to block the websites, making them inaccessible in the UK.
Geoff Taylor, chief executive of BPI, said that illegal sites are undermining music companies’ efforts to build a legitimate digital music sector in the UK.
“We asked the sites to stop infringing copy-right, but unfortunately they did not and we were left with little choice but to apply to the court, where the judge considered the evi-dence and declared that ISPs should not serve access to them.”
UK ISPs Virgin Media, BT and Sky have said that they will comply with the court order to block the sites.
The websites that will be blocked from to-day include TorrentDownloads, 1337x and FilesTube. In the past, BPI has secured court orders against The Pirate Bay, Kat, H33t and Fenopy, taking the total number of blocked sites to 25.
Taylor added: “While blocking can never be 100 percent effective, the existing court orders (covering four BitTorrent sites) have signifi-cantly reduced the use of those sites in the UK and we are confident that the blocks in relation to the additional 21 sites will help to further re-duce levels of illegal music downloading in the UK and grow our legal digital market.”
“We believe that we have shown that website blocking is fair and proportionate: all of the
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sites were given a chance to stop infring-ing copyright before we went to court, and the orders were then only made once a High Court judge had fully considered our detailed evidence.”
Trade groups want CBM expansionA group of trade associations want US Con-gress to expand a patent review programme at the US Patent & Trademark Office (USPTO) to help tackle non-practicing entities (NPEs).
The associations wrote to several US politicians on 28 October, bemoaning NPEs, which own, liti-gate and license patents, but do not manufacture, produce or otherwise operate in the industries that their portfolios cover, and the litigation that they bring to district courts against their members.
NPEs, particularly the more litigious form that are known as patent assertion entities, “impose huge costs on American businesses”, according to the associations.
This cost was “at least” $29 billion in 2011, wrote the associations, adding that they “drain funds from job creation”.
“Most companies have little recourse but to set-tle” because the average cost of patent litigation is $6 million.
Companies need an effective alternative for
challenging the validity of asserted patents outside of the courtroom. The associations pointed to the Covered Business Method (CBM) programme.
Created in 2011, the CBM programme “gives threatened companies a substantially less ex-pensive way to challenge low quality patents”.
But the programme is restricted to financial services patents, meaning that most asserted rights are not eligible.
“Other programmes for challenging patent valid-ity at the [USPTO] do not allow the [USPTO] to consider whether the patent is abstract, vague, or too broad, common problems with the busi-ness method patents asserted by [NPEs].”
The associations, which include the American Association of Advertising Agencies, the In-ternet Association, and the National Grocers’ Association, hope that presidential and con-gressional initiatives currently in the pipeline will expand the CBM programme to include patents covering other areas.
One of the polit icians who the letter is addressed to, House Judiciary Committee chairman Bob Goodlatte, introduced the Inno-vation Act into congress on 23 October.
The bill primarily aims to target abusive patent litigation, which its political backers stressed will tackle behaviour rather than individuals. It will not “diminish or devalue patent rights in any
way”, while introducing heightened pleading standards and transparency provisions, and a modernised version of fee shifting.
Pinterest and Getty sign licensing dealPinterest has signed an agreement with Getty Images for the use of its images in a bid to over-come some of its copyright infringement issues.
Pinterest, which is a social media site where us-ers share photos and ideas, has stated that the licence covers data related with to Getty mages as well as the images themselves.
Some Pinterest users do not verify whether the content they’re posting is something they can legally post to the website.
Under the terms of the agreement, Pinterest says it will pay fees to Seattle-based Getty for the data and images, and “will make sure their images get proper attribution”.
According to the announcement on the Getty Images blog: “Getty Images will use our PicS-cout image recognition technology to identify exclusive Getty Images content on Pinterest.”
“Then, we’ll use our API, Connect, to provide relevant metadata to Pinterest—including Getty Images photo credits, where and when the im-age was shot and more.”
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VideogameIP
Playing brandIPPro asks Osborne Clarke’s Jas Purewal how developers can use brands within their videogames without going to court
How would a videogame developer obtain permission to use a particular well-known trademark in its game?
A videogame developer will want a licence over not only a trademark but usually also copyright works as well (such as the trade-marks and copyr ight works involved in licensing a cartoon character). Occasion-ally, this can involve other intellectual prop-erty rights such as design rights, trade dress or patents. The usual route is to approach the licensing department of the trademark holder (for example, companies such as Disney and CBS Interactive have such teams), request a licence and then negoti-ate the terms.
How would they go about setting up a deal?
There will be several key parameters to the deal. The first is the licence itself: what does the developer get to do with the IP? Usually, it will be tied to a specific game or game on a specific platform(s) (for example, console, PC or mobile), with limited or no additional rights beyond that. The rights holder will usually want some kind of creative input or control over the usage of its IP in the game.
A second key parameter is the financial terms, which will vary very significantly depending on the deal. It might involve a single lump sum pay-ment from the developer to the rights holder, or it could involve an upfront payment plus a roy-alty share (usually a percentage of sales of the game). The royalty share can be complicated further by the rights holder requiring minimum guarantees on its royalty stream.
Other key parameters are more standard to licensing contracts (such as length of the li-cence, termination and liability allocation), although often such terms are approached in particular ways in the videogames industry.
What burdens would the brand place on the developer in terms of protecting the licensed trademark?
The brand will want to have creative input in the use of the brand. It will want information about exactly how the brand is going to be used in connection with the game. It will also want to veto any use of the brand that isn’t con-sistent with the way it deploys the brand itself.
There will normally be some sort of conse-quences if the brand is misused. That could be anything from liquidated damages to the right to terminate the contract.
In practice, what that means is the games developer will need to liaise with the rep-resentative of the rights holder during the course of the development of the game and demonstrate how the brand is going to be used, so that there is approval from the brand during the game’s development.
What avenues are open to developers when a brand refuses to license? Where do the likes of parody come into play?
Your rights are always going to be limited and you must take legal advice in terms of any al-ternative that might be available, not least that those alternatives are going to depend upon the laws in the country in question.
Parodying maybe an option available depend-ing on the legal system. For example, parody is more open as a legal defence to copyright infringement in the US, but not in the UK. However, trying to use any kind of alternative like that is potentially treading on dangerous ground, particularly in circumstances where the games developer has asked the rights holder for a licence and been refused, be-cause it could be interpreted as going ahead and using the IP anyway. Games developers need to be very careful going down the legal route instead of licensing—the brand may bring a lawsuit that a developer would rather do without.
How would an independent developer go about protecting its own IP?
The most important IP aspects of a game are copyright and trademarks, followed dis-tantly by patents and other IP rights. Key protections that a developer should en-sure are in place are: (i) properly drafted contracts where any disposal or use of IP (either its own or someone else’s are in-volved); (ii) properly drafted trademarks over the names and logos of its company, main games and game elements; (iii) po-tentially, copyright registrations in the US; and (iv) potentially acquiring other IP rights such as patents.
However, it is very important for a developer to adopt a cost-benefit analysis when weighing up each of these protections and working out when is the best time to obtain them. Equally, it is often worthwhile speaking with an IP lawyer who is familiar with the videogames industry, which can help to save much time and money in the long run.
What are the biggest issues for developers when it comes to IP protection?
IP rights are not well understood by many developers and this is one of the biggest issues for IP protection. Another issue is that the videogames industry moves so fast that often IP protection is the least of the developer’s concerns (for example, the time it takes to release and make substantial revenues from a game can be considerably less than it takes to obtain a patent or pos-sibly even to obtain trademarks in relation to the game).
Furthermore, even if the developer does seek to protect its IP then the limitations of existing IP law can be problematic: for example, there continue to be issues (es-pecially in the mobile world) of developers copying or ‘cloning’ each other’s games, for which many national copyright systems lack a sufficient answer at present. IPPro
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What do you make of the new accessions to the Madrid Protocol?
There has been quite a slow uptake, but in the last year or so we have seen the likes of New Zealand and Mexico, as well South American countries, sign up. The latter is interesting because they have not really had a presence before.
The more countries that sign up, the more at-tractive the international trademark system be-comes. We have found that it is a cheaper route than filing directly in multiple countries because everything is carried out collectively in one place. Renewals, for example, do not need to be completed separately.
It’s quite interesting to see where everything is going, because a pattern emerges when one country from a particular region takes the plunge. With Mexico and Colombia joining, the Latin American countries have begun to join too. Usually, if one country signs up to the Madrid Protocol, then others see how it goes and then move forward. Seven or eight have joined in the last year so, which is great.
What about Canada and Brazil?
It is shocking that Canada is yet to sign up to the Madrid Protocol, particularly because New Zea-land has joined and the contingent of English-speaking countries that are a part of the system is quite large.
Brazil is more imminent. The chamber of foreign trade in Brazil approved the Madrid Protocol in April of this year and congress is now review-ing it. That is in line with Colombia and other South American countries joining. Brazil has been able to look at how the protocol has been enacted in their laws and have something to benchmark against.
Canada is a little different. It does not use the Nice Classification system. It has different re-newal periods and very stringent intent-to-use provisions in terms of having a trademark ac-cepted in the country.
There is a lot of uproar from trademark agents in Canada, who are fearful of the Madrid Pro-tocol opening the floodgates to all manner of trademarks and worry that it is going to be too costly and difficult to implement. Local agents worry about a reduced amount of business if fil-ers decide to go completely for the international route rather than directly through them. The last
I heard about Canada was two or three years ago, so I don’t think the country is going to sign up to the Madrid Protocol any time soon.
What are the advantages of using the Madrid system over individual trademark offices?
Generally, the Madrid system is very cost effec-tive. To protect a trademark in Russia, for ex-ample, costs £72 via the international system. Doing that directly would cost a few hundred pounds, with having to use a local trademark agent and so on.
There are also the benefits of simplicity with a single language, central management and re-duced documentation. Many countries need power of attorney documents, but that is not a requirement when using the international route. The Madrid system can generally be quicker than direct filings, because the set procedures that a country agrees to when signing up to the Madrid Protocol ensure that it is clear when an applicant is likely to receive a registration.
Post-registration is also easier. It takes only a single recordal for any assignments or changes of name. With today’s climate of companies buying, selling and merging, recording chang-es worldwide becomes a huge consideration. I have worked on separate recordals, directly with national offices and they can cost many thousands of pounds.
Is anything happening that could at-tract more users to the Madrid system?
The European Community trademark (CTM) regulations are being reformed and there is uncer-tainty about what is going to happen to the cost of class designation. It is unclear whether, once the reforms are implemented, it will cost to designate a single class in a CTM application or whether there will be an initial cost for three classes.
Some filers may jump on the bandwagon and use the international system to designate a CTM in or-der to obtain their worldwide filings in one place, just in case the situation changes with the CTM.
Are there any concerns with the system?
There is a concern with some of the less devel-oped nations that have signed up to the Madrid Protocol. There are countries that have signed up but are yet to enact it in their local laws. We did a survey on a few of the African states in 2012 and there was definitely some concern about protecting and enforcing marks.
A filer pays its fees to the World Intellectual Property Organization (WIPO), but Botswana, for example, which signed up to the Madrid Pro-tocol in 2006, has not looked at or assessed the trademarks that have gone through to it in more than six years. WIPO is aware of it, as is the Botswana trademark office, but it does raise is-sues because if a similar trademark has been filed directly, then there could be some potential conflict when the international registrations that have been filed are assessed. IPPro
Movers and breakersWhat is happening with the Madrid system for international trademark registrations? IPPro asks D Young & Co’s Wendy Oliver about new accessions and moreMARK DUGDALE REPORTS
Many countries are poised to join the Madrid system for international trademark registrations, which already boasts more than 90 members.
The likes of India, Tunisia and Mexico are the most recent countries to sign up to the international trademark system under the Madrid Protocol. The ASEAN countries, which include Thailand, Singapore, the Philippines and Indonesia, have to join before the end of 2015.
Thailand and Indonesia may join the Madrid System sooner, while other nations, such as Costa Rica, the Dominican Republic and Jamaica, as well as African Intellectual Property Organization members, are also preparing to join the Madrid System.
But there is little news on Brazil and Canada joining a system that allows brands to register their trademarks globally with a single-language application that has one set of fees.
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Industry appointments
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Shook Hardy & Bacon LLP has snagged Microsoft’s former chief patent counsel.
Bart Eppenauer will be based in the new Seattle office as managing partner.
Eppenauer served as chief patent counsel at Microsoft in Redmond since 2003, where he led the patent group. He developed Micro-soft’s patent portfolio of over 35,000 issued patents worldwide.
He has also worked closely with government and judicial officials, academics, and industry leaders worldwide on intellectual property policy issues. He also has experience in multilateral IP transactions and licence agreements.
Eppenauer was an associate for three years in Shook’s IP practice, before leaving to join Micro-soft’s legal team in 1997.
“We are extremely excited to be opening a Seattle office and to have Eppernauer rejoin-ing the firm,” said Shook chair John Murphy. “Eppernauer’s legal and business experience is unparalleled and this was a truly unique op-portunity for us to open an office in a region in which we already have a substantial footprint from a practice standpoint.”
Eppernauer said: “I have worked closely with Shook’s IP group for more than a decade in my role at Microsoft and I am very pleased to be rejoining them.”
Canadian firm MBM has recruited Paul Sharpe as a partner for its Calgary office.
Sharpe is a registered patent agent in Canada and the US, and has more than 25 years of experience developing and protecting clients’ intellectual property.
He has an extensive background in a number of technologies including cloud computing, medi-cal devices, software and the internet.
Scott Miller has moved to Sheppard, Mullin, Richter & Hampton LLP, joining as a partner in the firm’s IP practice group.
Miller will be based in the firm’s Los Angeles office.
He joins Sheppard Mullin from Connolly Bove Lodge & Hutz, where he was the partner-in-charge of the firm’s Los Angeles office and a member of its management committee.
Miller has represented clients in litigation and other IP matters. He has served as first chair in numerous patent, trademark, trade secret and copyright litigation.
“Miller is an important addition to our IP practice and brings a broad-based IP litigation practice. With a diverse client roster that includes a variety of tech sectors such as telecommuni-
cations, data storage technologies, fibre op-tics, lasers, LCDs and medical products, his practice dovetails well with our IP and tech industry capabilities,” said Guy Halgren, chairman of Sheppard Mullin.
Scott Kieff was sworn in as a commissioner for the US International Trade Commission (ITC) on 18 October.
President Barack Obama nominated Kieff to the position of commissioner, and the US senate confirmed his appointment on 1 August, for a term expiring on 16 June 2020.
Before being appointed, Kieff took a leave of absence from his post as a professor at the George Washington University Law School.
He also served as director and a member of the research team of the Hoover Project on Commercialising Innovation. Previously, Kieff served as a faculty member of the Munich Intellectual Property Law Center at Germany’s Max Planck Institute.
Kieff practiced law for more than six years. He spent that time as a trial and patent lawyer for Pennie & Edmonds in New York and Jenner & Block in Chicago, and as a law clerk to US Cir-cuit Judge Giles Rich.
He regularly served as a testifying and consult-ing expert, mediator and arbitrator to law firms, businesses, government agencies and courts.
The ITC has also appointed Dominic Bianchi as general counsel, making him the agency’s chief legal advisor.
The general counsel and the other attorneys provide support to the commissioners and ITC staff on investigations and research studies.
Bianchi has served in several roles in the agen-cy, including acting general counsel and chief of staff under chairman Deanna Tanner Okun.
Mayer Brown JSM has added Gabriela Ken-nedy to lead its IP and technology, media and telecommunications group.
Kennedy will be based in Hong Kong.
She has more than 19 years of experience ad-vising clients on strategic and complex IP mat-ters and transactions, broadcasting regulation and media transactions, information technology outsourcing, data protection and privacy, do-main names, and telecommunications matters.
Elaine Lo, Asia chair and senior partner at Mayer Brown JSM, commented on the ap-pointment: “The depth of Kennedy’s knowl-edge of and experience in IP, media and tech-nology will further bolster our already strong practice. We are very pleased to have her lead the team.”
Prior to joining Mayer Brown JSM, Kennedy was a partner at Hogan Lovells.
“Kennedy is widely known throughout the in-dustry for handling ground-breaking litigation—particularly concerning copyright and digital piracy matters—and will be a tremendous as-set in servicing global clients in high-stakes IP matters,” said John Mancini, co-leader of the firm’s global IP practice. IPPro
Take with...
16 www.ipprotheinternet.com
IndustryPeople
What do you specialise in and why?
The majority of my work is contentious, with a particular focus on brands and designs protec-tion, licensing disputes and online issues. The clients that I act for are mostly in the fashion and luxury goods sector.
I also do a lot of anti-counterfeiting work, which involves developing online anti-counterfeiting programmes for clients, targeting the many-headed Hydra of websites selling fake goods and auction sites. What is a typical day for you?
It starts with breakfast and a couple of epi-sodes of Peppa Pig with my 18-month old boy. The fight against the email deluge be-gins on the train. The type of work varies. On many days, it will be a combination of work on various IP cases, which could involve writ-ing or responding to cease and desist letters, drafting pleadings and witness statements, carrying out case assessments, liaising with investigators undertaking due diligence on opponent’s activities, or advising clients on the best way to protect their IP (both through registrations and enforcement measures). More exotic days involve appearing in court on an application for an injunction, executing a search order on a counterfeiter’s premises, or attending mediations to settle disputes.
How do you get ready for an especially difficult case?
That very much depends on what’s difficult about it! Understanding the client’s aims and managing their expectations are usually the key to making the best of whatever hand of cards you are dealt. It’s always important to get as good an understanding as possible of the client’s industry. Knowing your ‘enemy’ is also crucial: what are they thinking, how deep are their pockets, and how can they be out-manoeuvred?
Is there a case you are most proud of, and why?
I obtained an injunction for Lady Gaga to prevent an online children’s game releasing a record label under the name of a spoof character called Lady GooGoo. The character, a baby cartoon version of Lady Gaga, was quite a clever creation, and the song that the defendants planned to release under her name was catchy and had many clev-erly weaved-in references to Lady Gaga songs. However, it was a shameless piece of free-riding on Lady Gaga’s name, and there was evidence that many young children believed Lady Gaga and Lady GooGoo were one and the same. As such, it was critical to my client to stop release of the song—and for me to save the UK from this song hitting the airwaves. Think Crazy Frog and you will have an idea of the trauma that this could have caused anyone over the age of 12.
What are your ambitions?
Career-wise, I would like to become one of the UK’s leading soft-IP practitioners. I would also like to author more leading texts—I am currently the co-author of the UK chapter of the OUP: En-forcing Rights Through Border Measures.
Outside of my career, I would like to work with animals in some way. I have huge admiration for rescue centres that are set up for unwanted and abandoned working animals.
Do you have any advice for students thinking of getting into IP law?
IP is a very popular area, so competition is fierce. When seeking a training contract, target firms that have a strong IP practice, and where trainees get to do a seat in it. Then, make it known to people in the IP department that you are interested in doing a seat with them. When it comes to qualification, do not despair if there is no job in IP—consider qualifying into something with transferable skills, such as general com-mercial or commercial litigation. It may well be possible to switch to IP in a year or so.
....Peter NunnIPPro takes five with Peter Nunn, an up-and-coming associate in Mishcon de Reya’s IP departmentHow did you get into intellectual property law?
It was something of a fluke. When I started my training contract, I thought that I wanted to spe-cialise in defamation. However, that department was not accepting trainees at the time, and an intellectual property seat was the next closest thing. Looking back, it was a very good thing—my skillset is much more suited to IP.
Peter Nunn is a specialist in the protection and enforcement of intellectual property rights, including copyright, trademark, passing off, design right, patent, confidential information and licensing disputes. He has particular expertise advising on IP issues that relate to the internet, such as how to close down websites that infringe a brand owner’s rights, as well as on the recovery of valuable domain names. He is also a recognised expert on cross-border customs detentions and enforcement. His advice is sought by clients in many sectors, including fashion, automotive, sport, music and pharmaceuticals.
Nunn gained significant commercial experience during six-month secondments at Cable & Wireless and the Forensic Science Service, and has been published a number of times in the specialist press on IP.