BCIP News

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10
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Our selection of #IPNEWS and articles

1. On the 26th of October the Italian National Competition Authority confirmed SIAE’s abuse of dominant position in the market for collective management of copyright

- Official press release (only available in Italian): http://www.agcm.it/media/dettaglio?id=80110151-3bc1-4273-9e5b-92b2feddf306&parent=Comunicati%20stampa&parentUrl=/media/comunicati-stampa

2. AG Szpunar advises CJEU to rule that copyright cannot subsist in military report in important fundamental rights case:

- http://ipkitten.blogspot.com/2018/10/ag-szpunar-advises-cjeu-to-rule-that.html

- For the full AG Opinion: http://curia.europa.eu/juris/document/document.jsf?text=&docid=207024&pageIndex=0&doclang=en&mode=req&dir=&occ=first&part=1&cid=2486799

3. The "markedly different" infringement approach finds application in Actavis v Eli Lilly in Icescape v Ice-World:

- http://ipkitten.blogspot.com/2018/10/lord-kitchin-applies-markedly-different.html

- https://intellectualpropertyblog.fieldfisher.com/2018/court-of-appeal-grapples-with-actavis-in-patent-infringement-case-icescape-v-ice-world

- http://www.mondaq.com/uk/x/749034/Patent/Court+of+Appeal+keep+their+cool+over+Actavis

- For the full text of the Judgment: https://www.bailii.org/cgi-bin/format.cgi?doc=/ew/cases/EWCA/Civ/2018/2219.html

4. The General Court stated that the “Cooking Chef Gourmet” cannot be a trademark:

- https://intellectualpropertyplanet.wordpress.com/2018/10/24/cooking-chef-gourmet-cannot-be-a-trademark-according-to-the-eu-general-court/

- https://www.worldipreview.com/news/de-longhi-fails-to-convince-eu-court-in-tm-case-16803?utm_source=World+IP+Review&utm_campaign=ef81b10e64-WIPR_Digital_Newsletter_12092018_COPY_01&utm_medium=email&utm_term=0_d76dcadc01-ef81b10e64-27263061

- For the full text of the Judgment: http://curia.europa.eu/juris/document/document.jsf;jsessionid=778E2C3F934076D3FDC253FF87573883?text=&docid=206582&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=2791121

5. Prince's Estate is Seeking Federal Trademark Protection for His Purple Pantone Hue:

- http://www.thefashionlaw.com/home/princes-estate-is-seeking-federal-trademark-protection-for-his-purple-pantone-hue

- Further deepen the topic at: http://time.com/5055141/prince-inspires-ultra-violet-pantone-color-of-the-year-2018/

6. UK Government response to the call for views regarding illicit IPTV streaming devices:

- https://www.iptechblog.com/2018/10/block-party-uk-government-considers-new-ways-of-clamping-down-on-illegal-streaming/

- https://www.gov.uk/government/news/pressure-grows-on-producers-of-illegal-streaming-devices-and-thieves-of-paid-for-content

- https://www.digitaltveurope.com/2018/10/23/uk-government-outlines-new-measures-in-piracy-clampdown/

- The full text of the Intellectual Property Office’s report at: https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/750177/Gov-Response-call-for-views-Illicit-IPTV.pdf

7. Unwired Planet vs Huawei: the Appeal:

- https://trustinip.com/unwired-planet-vs-huawei-the-appeal/

- https://www.worldipreview.com/news/english-court-of-appeal-set-to-rule-on-unwired-planet-v-huawei-16853

8. Wondering how to plan the IP aspects of your new start-up?

- Copyrights: Intellectual Property Considerations for Start-Ups

- https://www.ipwatchdog.com/2018/10/24/copyrights-intellectual-property-start-ups/id=102441/

- https://www.entrepreneur.com/article/322248

- https://www.lexology.com/library/detail.aspx?g=8c6b5ac0-7f50-4258-9632-c0c7bc62143a

- https://www.forbes.com/consent/?toURL=https://www.forbes.com/sites/maryjuetten/2018/10/11/intellectual-property-the-hard-way-part-iv-early-ip-disclosure/

- https://www.natlawreview.com/article/what-start-ups-need-to-know-about-intellectual-property

9. On the impact of Blockchain technology on the IP field:

- https://trustinip.com/can-blockchain-be-a-reasonable-step-to-keep-trade-secrets-safe/

- https://www.zdnet.com/article/sony-explores-the-blockchain-to-create-drm-intellectual-property-protection-tech/

- https://www.asiacryptotoday.com/how-blockchain-can-shake-up-the-future-of-intellectual-property/

- http://www.ipwatchdog.com/2018/10/12/expansion-blocking-patent-doctrine-trading-logic-gremlins/id=102260/

10. The Court of Luxembourg rules against wind turbine company in colour TM appeal:

- https://www.worldipreview.com/news/cjeu-rules-against-wind-turbine-company-in-colour-tm-appeal-16885

- Find out the full text of the Judgment at: http://curia.europa.eu/juris/document/document.jsf?text=&docid=207025&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=2741811

11. The Judgment of Lazio Regional Administrative Court let the issue of parallel imports stand out again, sheding new lights on it:

- http://trademarkblog.kluweriplaw.com/2018/10/22/parallel-imports-pharmaceuticals-rebranding-not-rebranding/

- https://www.limegreenipnews.com/2018/09/italy-parallel-imports-when-a-name-change-is-a-game-changer/

12. AI keeps on inflaming public debate between scholars and practitioners, hereby some articles:

- http://www.wipo.int/wipo_magazine/en/2018/05/article_0001.html

- https://singularityhub.com/2018/10/19/why-we-should-stop-conflating-human-and-machine-intelligence/#sm.0000118lfuxss0d74zfv99oiwq2mm

- http://www.wipo.int/wipo_magazine/en/2018/05/article_0003.html

- http://digitalhealthage.com/success-of-ai-driven-healthcare-depends-on-robust-ip-strategies/

- http://www.techinsights.com/about-techinsights/overview/blog/microsoft-azure-artifical-intelligence/

13. Nintendo won a copyright lawsuit against a go-kart operator in Tokyo:

- https://intellectualpropertyplanet.wordpress.com/2018/10/08/nintendo-won-a-copyright-lawsuit-against-a-go-kart-operator-in-tokio/

- https://www.japantimes.co.jp/news/2018/09/28/national/crime-legal/popular-go-kart-company-maricar-loses-court-battle-street-kart-business/#.W8DMe2gzbIU

14. Not strictly IP LAW, still intriguing issue: Amazon’s business model is currently under severe scrutiny of both scholars and antitrust institutions:

- Does Amazon comply with EU competition law? Some initial thoughts on the new Commission investigation

https://trustinip.com/does-amazons-business-model-comply-with-eu-competition-law-some-thoughts-on-the-new-big-antitrust-probe/

- Amazon faces a probe from EU's competition watchdog over sales data

https://www.technologyreview.com/the-download/612179/amazon-facing-probe-from-eus-competition-watchdog-over-sales-data/

- On the Amazon probe: neutrality everywhere (or the rise of common carrier antitrust)

https://chillingcompetition.com/2018/09/25/on-the-amazon-probe-neutrality-everywhere-or-the-rise-of-common-carrier-antitrust/

- [Still on time for this must-read (Author entry)] Amazon’s Antitrust Paradox

https://www.yalelawjournal.org/note/amazons-antitrust-paradox

15. The Italian Guardia di Finanza strategy to face counterfeit Hallowen products:

- https://siac.gdf.it/Notizie/Pagine/Controlli-per-un-Halloween-sicuro--.aspx

16. The operation "Falsicchio": protecting trademark rights of food products:

- https://siac.gdf.it/notizie/Pagine/Operazione-Falsicchio.aspx

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22
10
18

Our selection of #IPNEWS and articles

1. Landlords Beware: Michael Kors Takes on "Revolving Door of Counterfeiters" in New York City

2. Italian Supreme Court holds that an unauthorized derivative work may be both infringing and protectable

3. It’s not all about the shape: the strange case of the pink chocolate bar

http://www.medialaws.eu/its-not-all-about-the-shape-the-strange-case-of-the-pink-chocolate-bar/
for a previous analysis on KitKat’s efforts to have its four-fingered bar’s shape protected as trademark: https://www.theguardian.com/business/2017/may/17/kitkat-trademark-bar-nestle-cadbury

4. Intellectual property and e-commerce: Alibaba’s perspective

5. eBay is Suing Amazon Over its “Illegal” & “Clandestine” Scheme to Poach Sellers

6. Rihanna, Puma & Fenty Corp. Are Being Sued Over "FU" Garments and Accessories

7. The Evolution of Walmart and its Quest to Become an e-commerce Powerhouse

http://www.thefashionlaw.com/home/the-evolution-of-walmart-and-the-battle-of-online-dominance
for a previous article on this topic: https://www.forbes.com/sites/andriacheng/2018/08/16/walmarts-ecommerce-tactic-against-amazon-is-paying-off/#1a797bbdb74d

8. CJEU weighs on liability of owner of internet connection used to infringe copyright

http://ipkitten.blogspot.com/2018/10/cjeu-weighs-on-liability-of-owner-of.html

9. World Food Day! Patentable foods: The "Impossible" and the eggless

http://ipkitten.blogspot.com/2018/10/world-food-day-patentable-foods.html

10. When AI can be protected by patents?

https://intellectualpropertyplanet.wordpress.com/2018/10/19/when-ai-can-be-protected-by-patents/

11. General Court: mere fact that goods are different makes it possible to rule out any likelihood of confusion

https://www.worldtrademarkreview.com/enforcement-and-litigation/general-court-mere-fact-goods-are-different-makes-it-possible-rule

12. The Italian Guardia di Finanza seized about 15,000 fake “Made in Italy” products in Torino

https://siac.gdf.it/notizie/Pagine/Falso-made-in-it.aspx

13. The Italian Guardia di Finanza seized more than 310,000 products in Salerno

https://siac.gdf.it/notizie/Pagine/Sequestrati-oltre-310000-prodotti-pote.aspx

14. Almost 3 million products seized by the Italian Guardia di Finanza in Cagliari

https://siac.gdf.it/notizie/Pagine/Sequestrati-quasi-3-milioni-di-prodotti.aspx

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04
10
18

REPORT ON THE EU CUSTOMS ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS: RESULTS AT THE EU BORDER, 2017

The enforcement of intellectual property rights (hereinafter, “IPR”) by Customs is recognized as being a commonly investigated issue of the European policy initiatives. In the words of the Commission, “it is important to provide right-owners with the certainty that the fruits of their inventions will be protected. The competitiveness of European businesses depends on it”. In this regard, the past decade has seen a further boost in the European Customs administration, indeed, already known for its high enforcement ratio and effectiveness.

In light of the above, the present Report is an overview of the detentions carried out under Customs procedures in 2017. The topic is examined via statistics on the description, quantities and values of the goods seized, as well as on their provenience, the means of transportation and the type of IPR presumably infringed. In fact, thanks to Regulation (EU) No 608/2013, bulk of data concerning Customs enforcements of IPR are transmitted on a daily basis by the Member States to the Commission. Once elaborated and recapped, these information allowed to shed new lights on the performance and current trends of the enforcement actions.

Within this framework, the enforcement procedure ordinarily takes origin from the right-holder’s application for action. Specifically, the right-holder is entailed to request Customs, on a national or European basis, to act if there is the suspect that his IPR right has been violated. The 2017 “Report on the EU Customs enforcement of Intellectual property rights” shows that 2’776 national and 1’271 Union applications were lodged by right-holders. On the other hand, also the EU Customs have the power to autonomously undertake an action for detention. In such cases, the first step of the procedure consists in identification of the right-holder. Then, a national application has to be submitted within 4 working days to permit the Customs to continue the detention or suspension of the release of the goods. However, the past year has seen these officio procedures playing a rather limited role, adding up to 2% of the total.

As mentioned above, two of the most relevant information concern the number of seizures by the Customs and the number of articles detained. With reference to the first, it can be observed a decrease by 9% in 2017 of the air freights, sea transport and post modes. Appreciably, the latter almost halved. On the contrary, the interceptions in express courier and road transport witnessed a slight increase compared to the 2016 records.

In relation to the quantity of articles detained, each interception may amount to different volume of products, ranging from few to millions of unities. The total number of articles detained shows a decrease in the amount of 24% compared to the previous year: 34 million of articles were detained in 2017 vis-à-vis the 41 million of the precedent year. Interestingly, a decrease of approximately 50% marks out perfumes and cosmetics, clothing accessories, ink cartridges and toners, toys, cigarettes, lighters and packaging materials. Among these categories, the most significant decrease in absolute terms pertains to the cigarettes, with 7 million packages being less detained, representing 70% of the total decrease in articles. With reference to the domestic records, Lithuania excels in terms of number of articles detained, with more than 6 million of units, while Finland surged up of 2’185%, stepping from 18’191 to 415’728 units in the last year.

Following the detention by the Customs, more than two-third of the products have been destroyed following one of the two procedures depicted in Regulation (EU) No 608/2013. First, goods have been destroyed, under the ‘standard procedure’ pursuant to article 23 of Regulation (EU) No 608/2013, after a confirmation from the right-holder and an agreement from the holder of the goods. Second, Article 26 provides the applicant with the possibility of requesting the destruction of goods transported in a small consignment without the need to notify the right-holder of every shipment. Not surprisingly, this procedure led to a significant reduction in the administrative burden for both custom authorities and the right-holders, while, at the same time, it positively affected the counter-action towards counterfeit products transported by post and express couriers. This conclusion is further confirmed by the abovementioned decrease in these two transport modalities (i.e. post transport, as said, halved). In less than 10% of the detentions, goods appeared to be non-infringing original goods, or goods in relation to which the right-holder did not take any action. Similarly, one case of detention out of ten ended up with a legal action before the Court initiated by the right-holder in order to determine the infringement.

A global perspective of the countries of provenance shows that China is still the main source country of detained goods (73%). Moreover, and confirming the last decade trend, together with a group of eastern countries, China leads the rank of the so called “top exporters”: China, Hong Kong, Turkey, Vietnam and India export in Europe more than 90% of the total amount of detained products. Focusing on the value of the detained products, the trade from Hong-Kong is at the top of the rank in relation to the luxury segment. The reason lies on the detentions of high-value luxury goods.

Finally, as already examined in the past decade, approximately nine out of ten detained goods, both in terms of value and in terms of quantity, presumably violated an EU, International or National trademark.

In conclusion, while the numbers are slowly decreasing, illicit importations of counterfeit products are still a huge issue that may irreparably harm many EU business. Numbers show clearly that the system in place work, but it’s still a great burden on IP right holders and Customs authorities in order to keep up with the amount of infringements.

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14
09
18

EU controversial #Copyright #Directive approved

With the approval of the new Copyright Directive, the European Parliament has clearly shown its determination to grant right-holders an effective protection. Indeed, the Directive was passed in Strasbourg with 438 votes in its favor, 226 against and 39 abstentions. Now it is up to the Council to decide whether to keep the Directive in its present state or to modify the articles, and to vote its final version.

The approved text has been partially amended from the previously rejected proposal. In the words of the European Parliament, the amendments put in place are aimed at “[bringing] tangible benefits for EU citizens, researchers, educators, writers, artists, press and cultural heritage institutions and to open up the potential for more creativity and content by clarifying the rules and making them fit for the digital world”. Concurrently, online platforms, like YouTube and Facebook, and news aggregator, such as Google News, will have to enforce a higher online protection standard and adequately remunerate all authors for their creations.

The European position backs up the Commission proposal, aimed at strengthening the online platforms’ liability with regards to the infringements of copyright law. The Directive requires all information society service providers, who store and provide to the public user-generated content, to cooperate with right-holders and implement adequate and proportionate measures, in order to enforce copyright protection. These include the adoption of effective content recognition technologies, violation reporting procedures and clear terms of service, in order to swiftly flag and remove infringing contents.

Furthermore, the new boundaries of liability will impose to online platforms and news aggregators to remunerate who holds rights over the copyrighted material they publish online. Media outlets are now entitled to fair compensation for the digital use and publication of their work on third party websites. The new copyright discipline expressly allows journalists themselves, and not only the publishing houses they work for, to benefit from the remuneration stemming from said obligation. With a specific intent to encourage the growth of start-ups and consequently innovation in a broader sense, the text explicitly excludes from its field of application small and micro online-companies.

Mindful of some of the criticisms raised in July, the new Directive specifically states that the upload of contents on non-profit online encyclopedias, such as Wikipedia, or open source sharing platforms, like GitHub, will be automatically exempt from compliance to the obligations set out by the new European dispositions.

Finally, the Parliament opted to strengthen the contractual position of authors and artists. First, they will be allowed to demand additional remuneration from their licensees, whenever the agreed fees are deemed to be “disproportionately” low compared to the earnings and benefits deriving from the exploitation of their creations. Second, they will be entitled to revoke or put an end to the exclusivity of a license, if it appears that the counterparty is not making use the licensed work.

For European and foreign copyright holders, this decision of the European Parliament is an exceptional victory and a stepping stone towards a full recognition of the work of many creators and businesses, but this is not the end of the journey and we will make sure to keep a close eye upon the work of the European legislator.

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