Chapter

Chapter 7 CASE ON INTELLECTUAL PROPERTY 7.1 Case on Patent Samsonite Corporation vs Moon Light Travels. The local agent of Samsonite Corporation initiated a criminal proceeding under the Penal Provision against a trader who imported counterfeit ‘Samsonite’ product in the year 2008 for marketing in Bangladesh. The Agent investigated markets through their own investigator and found counterfeit product in a famous market, Shahbagh Biponi Bitan. Accordingly the Agent informed the same to Rapid Action Battalion (RAB-3). The Commanding Officer of RAB-3 entrusted the operation to one of its team leaders, Assistant Superintendent of Police. [htpp://www.bdresearchpublicatons.com/admin/journal/upload/09251/09251.pdf, last visited on 13 March 2016] The team leader investigated the place and found the allegation true. The RAB Team conducted raid on February 27, 2008 and arrested three people with huge counterfeit ‘Samsonite’ product. The local police lodged criminal action under the penal provision. The infringers found no other alternative but to surrender with the local Agent and accordingly disclaimed entire seized items of 310 big suitcases in quantity in favor of the local agent and given adequate compensation including undertaking for not trading anymore with counterfeit ‘Samsonite’ product. The matter disposed of in February 2010 on the basis of out of court settlement. S. M. Ata Naznin, “ProTectng InTellecTual ProperTy RighTs in Bangladesh: An Overview,” Bangladesh Research Publicatons Journal. Vol. 6 No. 1 ( August2011), Pp. 12-21. The Code of Civil Procedure 1908. 2. The case is Commil v. Cisco, U.S. Supreme Court, No. 13-896.2015 Commil USA, LLC, Cisco Systems, INC. Certiorari to the United Stated of Appeals for the Federal Circuit No. 13–896. Argued March 31, 2015—Decided May 26, 2015 Petitioner Commil USA, LLC, holder of a patent for a method of implementing short-range wireless networks, filed suit, claiming that respondent Cisco Systems, Inc., a maker and seller of wireless networking equipment, had directly infringed Commil’s patent in its networking equipment and had induced others to infringe the patent by selling the infringing equipment for them to use. After two trials, Cisco was found liable for both direct and induced infringement. With regard to inducement, Cisco had raised the defense that it had agood-faith belief that Commil’s patent was invalid, but the District Court found Cisco’s supporting evidence inadmissible. The Federal Circuit affirmed the District Court’s judgment in part, vacated in part, and remanded, holding, as relevant here, that the trial courterred in excluding Cisco’s evidence of its good-faith belief that Com-mil’s patent was invalid. In Commil v. Cisco (Supreme Court 2015), the Supreme Court has held [http://patentlyo.com/patent/2015/05/invalidity-defense-inducement.html last visited on 11 March 2016]: A defendant’s “belief” that a patent is invalid does not serve as a defense to charges of inducing infringement of the patent.  “The scienter element for induced infringement concerns infringement; that is a different issue than validity.”  Of course, if the patent is proven invalid then no liability attaches.  Thus, the defense here had asked for a holding that a good-faith-but-incorrect-belief of invalidity serve as a defense. In what appears to me again as dicta (though powerful dicta), the court also indicated its agreement with the Federal Circuit that inducement requires proof that the accused both (1) knows of the patent-in-suit and (2) knows that the actions induced constitute patent infringement.  Although the court initially wrote that this issue “is not in question here,” it then went-on to explain how Global-Tech should be read to require knowledge-of-infringement as a prerequisite to induced infringement liability.  “Global-Tech requires . . . proof the defendant knew the acts were infringing. And the Court’s opinion was clear in rejecting any lesser mental state as the standard.” The court had been encouraged to allow belief-of-invalidity as a defense in order to help stifle “abusive patent assertion.”  In a several paragraph statement of dicta, the court explained that it understands the potential problem of frivolous actions, but that district courts are have the tools of addressing the problem. One tool, for instance, is that of sanctioning attorneys through Rule 11 and awarding fees under Section 285. “These safeguards, combined with the avenues that accused inducers have to obtain rulings on the validity of patents, militate in favor of maintaining the separation expressed throughout the Patent Act between infringement and validity.” All members of the court agreed with notion that inducement does require knowledge of the infringing nature of the accused acts.  Justice Scalia joined by Chief Justice Roberts argued in dissent that a would-be defendant who (in good faith but wrongly) figures out that a patent is invalid (though without actually invalidating the patent) should be free to act without concerns regarding inducement.  Interesting, the pair note that the majority opinion “increases the in terrorem power of patent trolls.” This is a split decision for patentees.  On the one hand, it pushes away an entire set of defenses to inducement. But, on the other hand, the court solidifies a high wall by requiring proof that an accused inducer have known that the induced acts would constitute infringement of the asserted patent claims.  In my view, this requires at least a limitation-by-limitation claim chart or an admission. Recent Patent Litigation Cases (2014-15): India Patent Litigation in India has steadily increased over last 2-3 years. Dramatic swift has been observed in the innovator’s perspective from the mere aspect of invention to gaining patent protection for their respective invention. Patent owners have adopted aggressive approach towards their patent protection and enforcing their proprietary rights as businesses, are now well-positioned in the realm of patent litigation.  The patent owners are not at all hesitant to challenge the validity of patent rights of their rivals. There has also been gradual increase in the understanding of the complex patent infringement and validity issues. We will now deal with some of the recent and important patent litigation cases in India. [https://iiprd.wordpress.com/2015/04/29/recent-patent-litigation-cases-2014-15-india, last visited on 11 March 2016] Merck vs. Glenmark over “Sitagliptin” In an interesting note, Hon’ble Supreme Court of India on Special Leave Petition filed by Glenmark stayed the Delhi High Court order which passed injunction against Glenmark for the generic drug Sitagliptin till 28th April 2015. Merck Sharp & Dohme filed an application for an ad interim injunction restraining the respondent/defendant Glenmark Pharmaceuticals from using its patented product Sitagliptin (Indian Patent No. 209816) at the Supreme Court. The Delhi high court conclusively held that all the three ingredients (Prima facie, Irreparable injury and balance of convenience) for passing the order of injunction were established by MSD and hence injuncted Glenmark from manufacturing and selling of Zita and Zitamet. Ericsson vs. Xiaomi In December 2014, Ericsson had filed a suit against Xiaomi in India for the alleged infringement of the 8 standard-essential patents. The Delhi High Court granted an ex-parte injunction on the sale, manufacture, advertisement, and import of Xiaomi’s devices. Xiaomi claimed that its latest devices in the Indian market (as of December 2014), the Mi3, Redmi1S and Redmi Note 4G, contained Qualcomm chipsets, which implemented technologies licensed by Ericsson. Xiaomi subsequently challenged the injunction before a Division Bench of the Delhi High Court, which issued temporary orders to allow Xiaomi to resume the sale, import, manufacture, and advertisement of its mobile devices subject to the following conditions: Xiaomi would only sell devices having Qualcomm chips. Xiaomi would deposit Rs. 100 towards royalty for every device it imported to India from the date of the launch of the device in India toJanuary 5, 2015. This amount was to be kept in a fixed deposit for three months during the proceeding of the case. Novartis vs. Cipla In another patent litigation case, Delhi High court barred Indian generic drugmaker Cipla from making or selling generic copy of Novartis’s “Onbrez” by giving temporary injunction to Novartis. Citing famous Roche vs Cipla case, the court observed that Novartis has a strong prima facia case and as the validity of the patent is not seriously questioned, there is a clear way out to grant injunction. Further, the court observed that Cipla did not provide any figures about the “inadequacy or shortfall in the supply of the drug.” Earlier Cipla lunched its generic version of Indacarterol in October claiming “urgent unmet need” for the drug in india. Without going conventional way, Cipla, also approached the Department of Industrial Policy and Promotion (DIPP) to exercise its statutory powers under Section 66 and Section 92 (3) to revoke Indian Patents IN222346, IN230049, IN210047, IN230312 and IN214320 granted to Novartis AG for the drug Indacaterol. Cipla argued on the basis of 3 main points i.e. “epidemic” or a “public health crisis” of COPD, unable to manufacture the same in India by Patentee and high cost of patented drug. Vringo Vs. ZTE In January 2014, Vringo and Vringo Infrastructure filed a patent infringement suit in the Delhi High Court against ZTE, over the alleged infringement of its patent IN200572. In February 2014, the Delhi High court granted an ad-interim ex-parte injunction restraining ZTE from importing, selling, advertising, installing or operating devices that comprise the infringing components. The High court also appointed local commissioners to inspect ZTE’s premises and instructed customs authorities to detain ZTE’s shipments that may contain such devices and to notify Vringo. In March 2014, ZTE appealed against the injunction, which was vacated on August 5 the same year with ZTE being ordered to deposit Rs. 17.85 crore to the court. The suit is sub judice now. As of August 2014, ZTE had filed for the revocation of IN200572 on grounds of it not being innovative as well as for violating some statutory provisions under Section 64 of the Indian Patents Act. [http://inpublic.globenewswire.com/2014/09/02/VRINGO+PROVIDES+UPDATE+TO+SHAREHOLDERS+HUG1853040.html, last visited on 11 March 2016] Vringo vs. Asus In April 2014, Vringo filed a patent infringement suit against AsusTek Computer Inc. in Delhi High Court. As per public updates issued by Vringo to its shareholders, Vringo has alleged the infringement of patent IN223183 entitled “Method and system for providing wireless communication using a context for message compression” by Asus in India. Asus had claimed that in the context of IN 223183 it was using technology licensed to it by Google. In August 2014, Google filed a request to become a party to the proceedings. Vringo had requested for an injunction on Asus’ use of the technology in India. The injunction has not been granted yet. No further information about the lawsuit is publicly available. [http://inpublic.globenewswire.com/2014/09/02/VRINGO+PROVIDES+UPDATE+TO+SHAREHOLDERS+HUG1853040.html last visited on 11 March 2016] SYMED Labs vs. Glenmark Pharmaceuticals In another case of SYMED Labs vs. Glenmark Pharmaceuticals, Symed Labs Ltd. had sued Glenmark Pharmaceuticals Laboratories before the Delhi High Court for allegedly infringing two of its patents: IN213062 & 213063. First patent was granted for “Novel intermediates for Linezolid and related compounds” while the ‘063 patent was granted for “A novel process for the preparation of linezolid and related compounds. While declaring the judgment on 9th Jan 2015, the judge convinced that the Plaintiff has got good prima facie case in favour of SYMED. Further the judge decided that protection to the patent processes ought to be granted to the Plaintiff as damages will not be an efficacious remedy. Thus, there will be irreparable loss and injury because of the long uninterrupted use of patents, the balance of convenience also lies in favour of the Plaintiff. Thus the judge granted an ad interim injunction restraining Glenmark from manufacturing, selling, offering for sale, advertising or directly or indirectly dealing in the production of Linezolid manufactured in a manner so as to result in infringement of the Plaintiff’s registered Patents. Maj. (Retd.) Sukesh Behl & Anr. vs Koninklijke Phillips In this litigation case, Sukesh Behl made a counter claim for revocation of the suit Patent No. 218255 under Section 64(1)(m) of the Patents Act, 1970 (for short “the Patents Act”) for non-compliance of the provisions of Section 8. Earlier in another suit Koninklijke Phillips sought for permanent injunction restraining Sukesh Behl from infringing its patent and for other incidental reliefs. While delivering the judgement, the judge answered the question of whether the failure to comply with the requirement of Section 8 of the Patents Act would invariably lead to the revocation of the suit patent under Section 64(1)(m) of the Patents Act, the word “may” employed in Section 64(1) indicates that the provision is directory and raises a presumption that the power of revocation of patents conferred under Section 64(1) is discretionary. Citing Chemtura case, the judge hold that the power to revoke a patent under Section 64(1) is discretionary and consequently it is necessary for the Court to consider the question as to whether the omission on the part of the plaintiff was intentional or whether it was a mere clerical and bonafide error. Finally, the judge dismiss the plea of Sukesh Behl for revocation of said patent under section 64 (1) (m). Enercon vs. Dr. Aloys Wobben In this land mark decision, Hon’ble Supreme Court of India addressed the multiplicity of patent proceeding cases with respect to Invalidation, opposition and revocation. Dr.Aloys Wobben has filed around 19 infringement suits before the High Court and Enercon India Limited have filed around 23 “revocation petitions” before the Appellate Board, praying for the revocation of the patents held in the name of the Dr. Wobben. The respondents had also filed “counter claims” to the “patent infringement suits” filed by the appellant.  Even though some revocation petitions have been settled by the IPAB, the same issues were being re-agitated by Enercon before the High Court. The Supreme Court of India following rules – firstly, if “any person interested” has filed proceedings under Section 25(2) of the Patents Act, the same would eclipse all similar rights available to the very same person under Section 64(1) of the Patents Act. This would include the right to file a “revocation petition” in the capacity of “any person interested” (under Section 64(1) of the Patents Act), as also, the right to seek the revocation of a patent in the capacity of a defendant through a “counter-claim” (also under Section 64(1) of the Patents Act). Secondly, if a “revocation petition” is filed by “any person interested” in exercise of the liberty vested in him under Section 64(1) of the Patents Act, prior to the institution of an “infringement suit” against him, he would be disentitled in law from seeking the revocation of the patent (on the basis whereof an “infringement suit” has been filed against him) through a “counter-claim”.  Clearly, this judgment laid a smooth road for complex patent litigation practices in India. It would be interesting to note the developments that would take place in the Patent protection scenario in India and the gradual increase in the patent litigation cases in India. 8.2 Cases on Design 1. Skullcandy vs. Skelanimals On Monday, Nov. 14, the Park City-based headphone, accessories, and clothing manufacturer Skullcandy filed a complaint against Skelanimals -- a music-related accessories and apparel brand -- in the Utah District of federal court in Salt Lake City for trademark infringement. [http://lizerbramlaw.com/2011/12/07/skullcandy-v-skelanimals, last visited on 13 March 2016]. The suit claims that consumers will be confused by the use perhaps even deceptively of Skelanimals' similar style skeleton logos. The complaint alleges that the use of the logos will damage Skullcandy's value. According to its website, Skelanimals was copyrighted in 2008 and licensed by Art Impressions Media Group an agency in Calabasas, Calif., that creates what it calls "lifestyle brands." The Skelanimals logos are based on various transparent animal designs, making their skeletons visible on dogs, birds, spiders, and other animations. The logos are applied to an array of items, such as cell phones, computers, handbags, and hats. Skullcandy, by comparison, was formed in 2003 and has developed a sizeable market in the action sports industry, collaborating on headphones and other products with athletes such as two-time world surfing champion Mick Fanning and X Games and Dew Tour skater Pierre Luc Gagnon, as well as several NBA players including Derrick Rose and Kevin Durant. Skullcandy claims it "reflects the collision of the music, fashion and action sports lifestyles" and that its distinctive logo symbolizes that. A representative for Skullcandy declined to comment to ESPN, except to note that the legal department said the complaint "has no legal effect until it has been served, which it has not." However, the Salt Lake Tribune quoted Tom Burton of Skullcandy's legal counsel, saying, "We have registered trademarks on that skull across the world, particularly in the headphone category. We are recognized globally for that skull. we have to protect it." (The rep said that Burton was simply paraphrased.) A request for comment by Skelanimals went unanswered, and no one was made available to address the suit during a phone call to Art Impressions. 2. Sony Ericson vs Clearwire Corporation The case is Sony Ericsson Mobile Communications AB et al. v. Clearwire Corp. et al., case number 1:11-cv-00048, in the U.S. District Court for the Eastern District of Virginia.January 2010 saw mobile communications company Sony Ericsson filing legal action against wireless internet service provider (WISP) Clearwire Corporation for having a green swirly logo similar to their own. The action was taken shortly after Clearwire announced plans to move into the mobile phone market. The Sony mobile-division had demanded $150,000 in cash from Clearwire to cover its legal fees, in addition to three times this amount for the copyright infringement of their logo. However, Sony Ericsson decided to drop the lawsuit earlier this year in May, once Clearwire established that they no longer had any immediate plans to launch a smartphone on to the market. Clearwire’s change of heart was no doubt a combined result of the popularity of its core technology – WiMAX – decreasing worldwide, the company’s primary customer Sprint turning to the competition and Intel selling of its Clearview shares. [http://www.law360.com/cases/4d318ea95cdfbf0a84000026, last visited on 13 March 2016] 3. Apple Vs Apfelkind The owner of a small cafe in Germany by the name of Apfelkind (meaning “apple child”) was shocked to receive a cease-and-desist letter back in October this year from computing company Apple. Apple issued the letter in a bid to prevent the eatery from using the image an apple within their logo a red, apple-meets-child’s-face design. Apple stated that the cafe’s logo could “confuse customers” (particularly due to the inclusion of a leaf) and see consumers assume that the cafe is somehow affiliated with the tech giant. Press accounts of the case state that the intentions of Apfelkind’s owner Christin Roma include applying her logo to fashion garments, toys and its services once the cafe moves into the realm of a franchised chain and this is what has Apple most concerned. Although Roma admits to being a fan of Apple products herself, she is refusing to drop her patent application for the logo. The case continues as does Apple’s relentless battle to sue any company which dares bear an apple fruit within their logo. [http://www.dailymail.co.uk/news/article-2055869/German-cafe-Apfelkind-logo-dispute-Apple.html, last visited on 14 March 2016] 4. Nike vs. Point 3 Basketball The Jordan Brand-arm of the Nike Corporation released its first signature shoe for basketball-star Dwayne Wade back in April this year, marked with a logo comprising a number 3 set in cross hairs. Just a few weeks later however, basketball hoops and apparel manufacturer Point 3 Basketball filed a claim for trademark infringement of their logo, claiming that the one which appeared on Wade’s shoe was “virtually identical” to their own. The two brands launched a joint press release last week stating that a “mutually agreeable business resolution” had now been reached (a pay-off, perhaps?) The second Wade-branded shoe meanwhile was too announced last week and displays a completely rethought logo (which resembles a “3”, “M” and “W” all at once) on the tongue of the sneakers. [http://www.topdesignmag.com/logo-copyrights-and-wrongs-5-interesting-recent-infringement-lawsuits, last visited on 14 March 2016] 5. Variety VS The Vandals Back in 2004, Californian punk band The Vandals landed themselves in a spot of legal bother when they released their album Hollywood Potato Chip with the bands’ name emblazoned on the front in the style of the logo for entertainment-trade magazine Daily Variety. The magazine took an instant dislike to the fonts’ resemblance, for the title of the release is a negative expression of the materialistic culture of Hollywood – a message Variety did not want to be associated with. The case was eventually settled with the band agreeing to redesign the cover art to include a different font. In April 2010 however, Variety once again tried to sue to band in the wake of several images of the original cover design appearing on certain websites. The Vandals continue to claim that they are not responsible for the third-party distribution of such images and have headlined several benefit gigs in order to raise money to cover their ongoing legal fees. Interestingly, it is the bands’ bassist and law student Joe Escalante who is representing the band in the case. Escalante says that he has been studying incredibly hard to ensure that he is prepared for court. [http://www.topdesignmag.com/logo-copyrights-and-wrongs-5-interesting-recent-infringement-lawsuits, last visited on 14 March 2016] 8.3 Trademark Trademark Infringement in Bangladesh and Abroad with the Light of Cases Certain recent case reference regarding trademark infringement are submitted in this chapter to know about what constitutes an offence in trademark act and what punishment is awarded by the court. [http://internshipreportbd.blogspot.com/2013/01/trademark-infringement-in-bangladesh.html, last visited on 13 March 2016] Anil Kumar Ghosh Vs Shamir Kumar Ghosh Fact of the case: The facts of Trade Mark Application No. 3 of 2000, as slated in the petition the petitioner has been engaged hi the business of manufacturing and marketing of pure gawa ghee for a considerable length of time. To distinguish his product the petitioner adopted a trade mark consisting of the words "Baghabari Special Khali Gawa Ghee" together with the picture of a cow on the label with u distinctive colour scheme, design and get-up for the first time and applied for registration to the Trade Marks Registry. Dhaka under application No. 34733 in class 29 on the 15th of March, 1992. The application was duhl advertised in the Journal No. 171 for the month of March and April. 1995. There was no opposition from any quarter. The mark proceeded to smooth registration and it was registered on. 24-2-98 Annexure-A. It is claimed that due to superior quality of the ghee manufactured and marketed, long and continuous use of the trade mark and various sales promotion measures 54 DLR (2002) undertaken by the petitioner the trade mark "Baghubari Special Khnli Gawa. Ghee" acquired great reputation in the market/It attained such distinctiveness that any reference to the trade mark "Baghuburi Special Khali Gawa Ghee" referred to the product manufactured and marketed by the petitioner and none else. Judgment:In view of the above, the applications are allowed without any order is to cost. The trademark roistered under No. 38902 in Class-29 and No. 55568 in class-29 are expunged from the register of the trade marks and the Registrar is directed to rectify the same accordingly. Apple vs. Samsung case Fact of the case: 2010 August 24, a san jose, calif, jury awarded Apple inc. a whopping 1.50 billion damages. Apple had accused Samsung of copying its intellectual property, including its very broad design patents for rectangular "electronic devices'. And Apple wants to use those patents to shop its competition from selling items like the new Galaxy tablet and Android based smart phones. Intellectual property law is based on the notion that copying is bad for creativity. It is usually cheaper to copy something that creates something wholly new. If innovators are not protected against imitation, they will not invest in more innovation. At least that's how the story goes. The real world, however, tells a different story. Imitation is at the center of an enormous amount of innovation. Rules against copying are sometimes necessary. But in many cases, they serve to slow down innovation. Copying, in short, is often central to creativity. There has been a lot of speculation as to how a jury could come up with such a one-sided verdict in as complicated and long a case Apple vs Samsung. In the days since the verdict Samsung has been claiming that apple is trying to limit customer choice'. This accusation is disingenuous at best. Samsung was offering a choice of vendor not choce of product. Apple spent a number of years coming up with a way to imagine what a Smartphone could be, then sprang it on the world with more type than logic. Almost magically within a few months Samsung and other vendors started offering their own iphone, most of which were distinguishable and function from more than a few inches away. There was a real difference between what comprised the pre- iphone market and what Apple introduced. The iphone ,even though many of its parts has been seen before, put things together in a way that no one else had and changed what the average consumers thought of when of a portable internet experience. Samsung was part of the pre-iphone ecosystem that suddenly looked clunky, clumsy, and antiquated, Clearly, the company had to respond, but it apparently was not to the task of thinking on its own to produce a Samsung imagining of the mobile internet So, Samsung basically decided to clone the I phone. This case is far from over- both sides have many more patents and lawyers to throw at each other- but so far the result has been a plus for us. 3. Hamza Rubber Industries Vs Golam Dastagir Gazi Fact of this case: The defendants opposed the application by filing a written objection denying the case of the plaintiff. Their case, in brief, is that the industry established by the defendants in 1997 is of very good quality. Taka 12 crore was invested in 'he project and funds were raised from the creditors both national and international. About 350 employees are employed. They arc manufacturing and selling tyres using the device of double elephants facing each oilier with their trunks held high along with the embossment 'HAM7.A TYRES' and 'HAMZA TUBES', and huge quantity of tyres arc already marketed to the dealers all over the country. They have already applied for registration of their device of double elephants. Their device is so dissimilar to that of the plaintiff, single elephant and double elephants back to back one after another along with embossment 'GAZI TYRES' is no scope for any confusion. On 19-02-2000 they obtained a search report from the office of the Registrar that none is using their trade mark. In order to secure their tyres, they also, applied for copy right of their design. In the premises, they contended that the plaintiff has no case for temporary injunction and the balance of convenience is in their favor. 53DLR(2001). Judgment: In the result, the appeal is dismissed. Let the parties bear their own costs. The learned Additional District Judge in passing the impugned judgment and order. For the reasons stated hereinabove the Rule is liable to be discharged. 4. Red Bull Wins Trademark Infringement Case in the UAE Red Bull is a registered trademark in the UAE. The Red Bull registered trademark reserves exclusive rights to the product's distinctive logo, name, symbol and design, which identify and distinguish it from other products. In this case, Red Bull argued that the competitor was misleading customers into believing that its product was a Red Bull product or was endorsed by Red Bull due to its similar name and packaging, and hence carried the benefits and qualities that Red Bull offers. Ultimately, the court took the view that the competitor had intentionally adopted a product which appropriated part of the trade or reputation of Red Bull and had attempted to capitalize on Red Bull's reputation, effective marketing and significant market share. This decision serves as a warning to any business tempted to take advantage of the reputation of a competitor's product by copying distinctive aspects of the brand. Selim Chidiac, Red Bull's Regional Director, commented: "Red Bull strives to protect our loyal consumers from being misled into purchasing products that do not conform to our impeccable standards and high-quality stringent scientific testing. "We would also like to congratulate the local UAE judicial system for how seriously they treat trademark infringement cases. This is good news, both for the manufacturers, who stand to lose revenue, and for consumers who are misled into purchasing products they believe to be the genuine article, but which are in fact poor imitations." Chidiac added. 5. Google Loses First Round in Trademark Infringement Case U.S. District Court Judge Ronald Lew, in the Central District of California, has denied Google's request to transfer the case to its home court: the Northern District of California. The company, which provides Internet filter software, is alleging Google infringed trademark on AdWords, according to a technology and marketing Saw blog by Eric Goldman. Cybersitter alleges Net Nanny, a competitor, paid to have its ads pop up when Internet users search for "Cybersitter" on Google, the Cybersitter v. Google complaint indicates. Cybersitter, which was an AdWords advertiser until 2010, agreed to Google's terms of service, which includes a condition to take legal action on all ad-related disputes in court in Santa Clara County, California. Google contended, under those terms, Cybersitter's case should be heard in a northern California court. Lew, however, said Cybersitter's complaints against the search engine giant weren't covered by Google's AdWords contract. "This is one of three remaining trademark lawsuits against Google for AdWords," Goldman wrote. "The other two pending suits are Rosetta Stone and Home Decor Center; Google just won the Jurin case. In this ruling, Google suffers a preliminary loss in the Cybersitter case on a couple of key points. 1 still think Google will eventually win this case one way or another, but it's still a bummer ruling for Google. It also is a signal that Google may have an uphill battle with this judge." In the past, judges have ruled in Google's favor, which has forced companies in distant locations to pursue their cases in the San Francisco area. 6. Levi's Wins Trademark Infringement Case in China The iconic stitching on the back pockets of Levi's jeans is the classic symbol of the brand and also a registered trademark. In order to protect its trademark, Levi Strauss and Co., owner of the Levi's brand, has launched several trademark infringement lawsuits in Belgium, South Korea, and Singapore, The United States, Japan and other countries. In early 2011, Levi's filed its first lawsuit over infringement of its double-arched "Arcuate" stitching trademark in China. Shanghai's Pudong New Area People's Court recently ruled that four defendant companies infringed on the company's trademark. In January, Levi's filed lawsuits in Shanghai and Beijing over infringement. Shanghai's Pudong New Area People's Court received the indictment earlier than the court in Beijing and accepted the case on Jan. 25. It was the first time that Levi's filed lawsuits over infringement of its stitching trademark in China. Among the four defendants, Hangzhou Hongye Clothing Company and Jianchiwode Clothing Company are owners of Jasonwood jeans, Zhongshan Renxin Clothing Factory is the manufacturer of the jeans, and Shanghai Xinning Shopping Center Company is the jeans' distributor. Levi's asked the court to order the four companies to immediately stop using its arcuate stitching design, destroy all infringing products and delete all Internet ads. Moreover, it also asked for a compensation of 1 million yuan from the Jasonwood brand owners and the manufacturer. Shanghai Xinning Shopping Center Company took all infringing products off the shelf immediately after the suit was filed. Levi's said during the court hearing that the arcuate design was first registered as a trademark in the United States in 1943 and the trademark is now registered in 166 countries and regions including China. Jasonwood argued that it designed its trademark based on the letter "J," and it is different from Levi Straus's arcuate design. Producers in the jean industry all use tags and leather labels as trademarks and arcuate design is neither a trademark nor is used as a trademark. Jasonwood has not violated Levi Straus's arcuate design and has only used the "J" label in part of its jean products with a small sales volume. The court ruled that the arcuate designs of the defendants and plaintiff are nearly identical and their positions on the back pockets are almost the same. The defendants' practices of using trademarks on the back pockets that are similar to Levis will likely mislead customers and have violated the plaintiffs exclusive right to use the trademark, so the defendants must immediately stop the violation and make the compensation. In terms of compensation, since Levi's could not prove that the defendants used the illegal trademarks on all jeans they produced and sold, the court did not support the company's claim for 1 million yuan in compensation. The court has required the four defendants to stop the trademark infringement and demanded that Hangzhou Hongye and Jasonwood must immediately eliminate all the hyperlinks of related products from their official websites and join Zhongshan Renxin in paying a total of 350,000 yuan in compensation to Levi's. 7. Gucci Wins Trademark Infringement Case against Guess Gucci may not be getting even close to the full $120 million it was seeking in its trademark infringement suit against Guess Inc., but it is walking away the victor. Yesterday, a U.S. district court judge awarded Gucci only $4.66 million, saying while Guess did indeed infringe on some of Gucci's marks, Gucci was not entitled to damages for lost sales or harm to its brand. Judge Shira Sheindlin went on to say that Gucci's expert analysis was "highly speculative." The Italian apparel designer, more formally known as The House of Gucci, sued Guess claiming the American clothing company "Gucci-ized" many of its products by mimicking Gucci's trademarked designs on wallets, belts, shoes and other items. In the suit it filed in 2009, Gucci said that Guess infringed on six of its designs. In February, Judge Scheindlin had allowed Gucci to pursue claims regarding four of those trademark infringement claims: its green-red-green stripes, a script logo, a stylized "Square G" and a group of four interlocking "G"s known as a "Quattro G." Paul Marciano, CEO of Guess, released a statement saying the judgment showed Gucci had "overreached" and "misled the court with a number of facts that were unsupported by the evidence." He added, "Overall, we are extremely satisfied and vindicated that this case should have never been filed." AMF Inc. v. Sleekcraft Boats Between the two ends of the spectrum lie many close cases, in which the courts will apply the factors listed above. So, for example, where the marks are similar and the products are also similar, it will be difficult to determine whether consumer confusion is likely. In one case, the owners of the mark "Slickcraft" used the mark in connection with the sale of boats used for general family recreation. They brought an infringement action against a company that used the mark "Sleekcraft" in connection with the sale of highspeed performance boats. Because the two types of boats served substantially different markets, the court concluded that the products were related but not identical. However after examining many of the factors listed above, the court concluded that the use of Sleekcraft was likely to cause confusion among consumers. 9. Dyson v Registrar of Trade Marks Dyson had made and sold bagless vaccum cleaners since 1993. Sought to register trademark of: "a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation" (image attached to application). High Court took view that illustrations were entirely descriptive of product. Then made a preliminary reference to ECJ on issue of distinctiveness; however ECJ ignored this question, and instead chose to answer question of whether subject matter of application was in fact capable of registration at all. Held: 1. Subject matter of case is not a particular type of transparent bin or collection chamber, 1. Rather it is all the conceivable shapes of such a bin or collection chamber. 2. Thus the 599F.2d341 (9lh Cir. 1979) 2007 (ECJ) sign sought to be registered is a mere property of product concerned 3. Hence does not constitute a 'sign' for purposes of Article 2. Justifications 4. Were someone to be given trademark relating to non-specific subject matter, would gain an unfair competitive advantage. 1. i.e. as they would be able to prevent competitors designing vacuum cleaners with any sort of transparent collection bin on its external surface, regardless of its shape. 2. This would be contrary to purpose of Article 2. 5. Thus on facts, Graphic Representation Smell Sieckmann [2002] (ECJ) C sought to register trademark described as a 'balsamically fruity odour with a slight hint of cinnamon'. When making application, C also deposited its chemical breakdown and a sample of odour in a container to German Trade Mark office. Issue was whether an intangible sign may be registered. Held; 'Graphic Representation1 1) As per Article 2: I) Trade mark may consist of something not capable of being perceived visually ii) but only provided it can be represented graphically 2) This graphic representation must allow the sign to be represented visually (so that it can be precisely identified in trade mark registry. 3) This representation usually done via images, lines or characters 4) Any graphic representation must be: 1. clear, 2. precise, 3. self-contained, 4. easily accessible, 5. intelligible, 6. durable, 7. objective. 'Facts' 1. On facts, C had not given adequate graphic representation of odour it wished to register. 1. Neither a chemical formula, description of odour nor a sample of odour is sufficiently clear and precise to constitute a graphic representation 2. As these are not sufficiently precise. Eden [2006] Company sought to register smell of ripe strawberries'. Used this verbal description, and an image of a strawberry. Kraft Foods Globe Brands LLC. vs IBN Sina Food Products Pvt. Ltd. Kraft Foods Globe Brands LLC, a US company having the The brand, ‘Tang’ is a popular name in concentrated form for preparing soft drinks product. Kraft has secured the IP rights in Bangladesh in the year 1987 and has business since long through its agent, Sajeeb Corporation. A Bangladeshi small entity, Ibnsina Food marketed preparations for soft drink under brand, Ibnsina Orange Tang. On an application with the local police station the enforcing agencies seized the items and put the people under trial. The District Court has also issued an ad-interim order restraining the Ibn Sina for not trading with the mark ‘Tang’. Ibn Sina tried to obtain registration for the mark with suffix Tang but the Trademark Department has rejected all their applications. Case on Copyright Copyright has never been an easy, black-and-white kind of issue. Arguments over copyright between creative’s happen all of the time, it’s an inescapable issue. Read through some of these famous court cases that have created major public discourse over copyright how it’s handled, what it means, and why we should all care. [https://99designs.com/blog/tips/5-famous-copyright-infringement-cases, last visited on 14 March 2016] Rogers vs. Koons Case: Photographer Art Rogers shot a photograph of a couple holding a line of puppies in a row and sold it for use in greeting cards and similar products. Internationally, renowned artist Jeff Koons in the process of creating an exhibit on the banality of everyday items, ran across Rodgers’ photograph and used it to create a set of statues based on the image. Koons sold several of these structures, making a significant profit. Upon discovering the copy, Rodgers sued Koons for copyright. Koons responded by claiming fair use by parody. Outcome: The court found the similarities between the 2 images too close, and that a “typical person” would be able to recognize the copy. Koon’s defense was rejected under the argument that he could have used a more generic source to make the same statement without copying Rogers’ work. Koons was forced to pay a monetary settlement to Rodgers. Significance: This is one of those famous cases that encompassed a larger issue in the art world, the issue of appropriation art. Can you build upon another’s work to create your own original piece? And if you do so, does that constitute derivative work? It also brought up the issue of photography as art, was photography just a documentation of the world, or is it a creative and artistic product? Neither of these issues was entirely answered by the case, of course, but it has also become a reference used in many cases afterward. You can parallel this with vector-tracing a photograph for your design. Are you creating a derivative work that subtracts value from the original artist? The Associated Press vs. Fairey Case: Famous street artist Shephard Fairey created the Hope poster during President Obama’s first run for presidential election in 2008. The design rapidly became a symbol for Obama’s campaign, technically independent of the campaign but with its approval. In January 2009, the photograph on which Fairey allegedly based the design was revealed by the Associated Press as one shot by AP freelancer Mannie Garcia with the AP demanding compensation for its use in Fairey’s work. Fairey responded with the defense of fair use, claiming his work didn’t reduce the value of the original photograph. Outcome: The artist and the AP press came to a private settlement in January 2011, part of which included a split in the profits for the work. Significance: Though there wasn’t a court case and an actual verdict, this case created a lot of discourse around the value of work in these copyright battles. It’s unlikely that Garcia’s work could have ever reached the level of fame it did, if not for Fairey’s poster. Garcia himself stated he was “so proud of the photograph and that Fairey did what he did artistically with it, and the effect it has had,” but still had a problem with the fact that Fairey took the image without permission and without credit for its originator. Credit, credit, credit! On 99designs you cannot use licensed work but in the right circumstances you can use stock imagery. When doing so, make sure everyone knows the source. 3. Cariou vs. Prince Case: Richard Prince is a well known appropriation artist, one who transforms the work of others to create new meaning in his own work. For an exhibition in the Gagosian Gallery, Prince appropriated 41 images from a photography book by French photographer Patrick Cariou, claiming fair use that he created new meaning out of the photographs. Cariou argued that it wasn’t fair use, but copyright infringement. Outcome: A judge ruled in favor for Cariou in 2011, claiming the changes made to Cariou’s photographs weren’t significant enough to constitute a change in meaning, fair use. However, the case is currently in appeal and the final decision has not yet been reached. Significance: The initial ruling in this case in favor of Cariou has created huge divisions in the artistic community. It brings up questions about artistic intent and the subjectivity of art, asking “who was this judge to determine whether or not the appropriated artwork had enough meaning to be considered fair use” when the art could be interpreted differently by each person who viewed it. The jury is still out on this one. 4. Modern Dog Design vs. Target Corporation Case: Seattle design firm Modern Dog utilized a series of sketches of dogs in their compendium put out by Chronicle Books in 2008. The firm alleges that illustrations from that design have been used in a T-shirt produced by Disney/Target for sale, and filed a lawsuit in 2011. Outcome: TBD. There hasn’t been a decision yet in this case but Modern Dog has been campaigning online pretty heavily for publicity and funds to help with its legal fees over the issue. Significance: The Modern Dog case has brought to light a question burning in the mind of many designers and artists what happens if a major corporation with many more resources than me, utilizes my artwork for profit? Modern Dog was recently forced to sell their studio to cover the legal costs associated with this battle, so it’s turning into a very extreme situation for them. We’ll have to keep an eye out for how this progressed and continues to change the conversation around this issue. Always defend your designs. Regardless of who you’re going up against, if you think your design is in the right, then make it known. 5. Vanilla Ice vs. David Bowie/Freddie Mercury Case: Vanilla Ice had a hit, in 1991, with Ice Baby; Sit sampled but did not credit the song Under Pressure by David Bowie and Queen. Though at first denying it, Vanilla Ice later retracted the statement saying it was “a joke”. Facing a lawsuit by the duo, Vanilla Ice fessed to sampling the work. Outcome: The case was settled privately out of court with Ice paying an undeclared sum of money and crediting Bowie/Queen on the track. Significance: There’s really not a ton of meaning directly related to design with this one (except for, don’t use other people’s creative work!). But I couldn’t resist adding it. This is one of the most hilarious copyright cases ever. 6. Whit by specialist vehicles ltd v yorkshire specialist vehicles ltd others[2014] EWHC 4242 (Pat) (17 December 2014). Just before the United Kingdom generally shuts down and stops functioning for a few days, Mr Justice Arnold slipped out a decision that is positively anti-Arnoldian.  It comes in at slightly less than 100 paragraphs, but retains the characteristic table of contents that is suggestive of a much longer judgment. The reason well, it is a design case.  Relating to ice cream vans, no less.  The case is Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd & Ors [2014] EWHC 4242 (Pat) (17 December 2014). As the judgment found, the defendants Yorkshire Specialist Vehicles Ltd, and the individuals Amer and Omar Rubani, had the claimant Whitby Specialist Vehicles Ltd make for them an ice cream van according to Whit by's "Mondial" design.  Ice cream vans are not made from scratch, but are converted from other vehicles, in the present case a Mercedes Sprinter 213 van, which the defendants supplied.  The defendants Amer and Omar then physically copied the purchased Mondial by using panels from the Mondial as plugs to produce moulds from which further GRP panels were made and by copying the mechanical components. At trial, Amer and Omar admitted that this was what they had done, despite having previously denied it.  It was alleged that up to 30 infringing vans had been made by the defendants. The design of the Mondial was protected by UK Registered Design No. 4,000,395.  Despite the concession "Whitby entirely accepts that the design of the Mondial was not revolutionary, but an evolution of earlier Whitby ice cream van designs, and in particular a model called the Millennium", the judge found that the design was novel and had individual character.  He considered a number of standard features of ice cream vans in the design corpus, and a number of differences between the Millennium and the registered design, before coming to this conclusion. Despite "minor differences" between the design of the Defendants' van and the Registered Design, the judge concluded that the designs were very similar, and so found infringement. UK unregistered design right was found to subsist in a number of aspects of the design:  21 were initially pleaded, 2 were abandoned, all of which were held to be original.  One of the remaining aspects was considered commonplace, and a further few designs were excluded by the must-fit/must match exclusions.  The designs that valid design right thus subsisted in were found to be infringed - copying was not in the end denied, and the defendants' designs were "very similar". There was also found to be trade mark infringement deriving from the fact that one of the copied panels had the words "WHITBY MORRISON" moulded onto it. The largest single issue to be determined was not a validity or infringement matter, but the liability of the fourth defendant, Ghulam Rubani, father of Omar and Amer.  All three maintained that he had had no involvement.   The judge found, after consideration of the surrounding circumstances, that he had both primary and joint liability for all of the design infringements specifically mentioned in the judgment, but left for the enquiry into damages how many further infringements he may have participated in.This Kat regrets that so few UK registered design cases result in a finding of infringement.  This is a rather sad and messy tale (tail), but he is at least heartened that it shows that registered designs do provide real protection.