Overview of the Trademark Modernization Act

The recent COVID-19 relief bill included a number of changes to trademark law.  The Trademark Modernization Act has now been signed into law and allows third parties to:

  1.  File Petitions for Expungement or Reexamination
  2. Submit evidence supporting a refusal to register a trademark

Click here for full article and additional changes to the law

Internet Archive Being Sued over COVID-19 “Emergency Library”

The Internet Archive (IA) is a nonprofit organization that has digitally preserved more than 1.4 million books and historical documents. The organization is best known for the Wayback Machine which comprises nearly 390 billion pages of internet archives. Following the recent pandemic, IA began another project called the Open Library in which it allowed users to borrow digital copies of archived books. These books included not only those in the public domain but works that are still under copyright protection. IA does own physical copies of each book and much like a standard library, the Open Library lent only one digital copy of each book out at a time.

In June of this year, a number of publishers challenged the Open Library claiming that IA was engaging in piracy of these copyrighted works. The suit requests an injunction against further lending of protected material but does not seek to shut down IA as an organization. Even if successful, works within the public domain would still be available.

Read full article here: https://www.vox.com/2020/6/23/21293875/internet-archive-website-lawsuit-open-library-wayback-machine-controversy-copyright

Contract Drafting: It’s All in the Details

In 1881,  Dr. Joseph Lawrence invented Listerine and it remains the #1 best selling mouthwash.  Later that year, Dr. Lawrence sold the secret formulation to a pharmacist named Jordan Lambert.  The contract drafted in this exchange required Lambert to pay Dr. Lawrence a royalty  based on volumetric sales for as long as Listerine was sold.

For many years, Lambert and his successors continued to pay the royalty as promised, but in 1931 the secret formula was leaked to a medical journal and published.  Warner-Lambert continued to pay the royalties in spite of the disclosure but fifteen years later, those royalties totaled $1.5 million for the year. Warner-Lambert grew weary of paying fees on a formula that had lost its trade secret value and attempted to invalidate the agreement in 1959.

The court quickly ruled that the loss of the trade secret had no bearing on the royalties due. It held that the contract was clearly and concisely drafted and that payments were required to continue in perpetuity until  Listerine sales were discontinued. Consequently, the royalty payments continue 139 years later.

A share of these royalties came up for auction earlier this month. The winning bidder paid $561,000 for the share even though it generated only $32,000 in revenue last year.  With royalties rolling in for the foreseeable future it may still prove to be a good investment.  Even so, the story serves as a great example of lack of foresight in contracting drafting.

CLICK HERE FOR CLOSING BID PRICE

Engineer Posts Open-source DIY “Ventilator-ish” Device Instructions

With the recent increase in confirmed coronavirus cases many are concerned that ventilator supplies may run low.  One man has come up with a way to create a ventilator-like apparatus by modifying a standard CPAP machine.  This device is not FDA approved and does not appear to have been tested by any medical professionals; however, it’s encouraging that people are trying to come up with alternative solutions for potential ventilator shortages.  Please make/use this device at your own risk as I cannot comment on its safety or efficacy.

Click here for full article

 

China Applies for Patent to Treat Coronavirus

The Wuhan Institute of Virology has recently filed a patent application for the drug remdesivir to treat coronavirus.  The patent was filed jointly with the Military Medicine Institute of the People’s Liberation Army Academy of Military Science.     The Chinese believe that remdesivir and chloroquine (an anti-malarial drug) are effective at combating the virus.  Chloroquine is an eight year old drug and China is free to manufacture it but remdesivir has been patented by Gilead Sciences Inc.  Any production or use of this drug would require sublicensing or approval by Gilead.

CLICK HERE FOR ARTICLE

 

 

 

EU Says Inventors Must Be Human

The European Union (EU) recently rejected two patents applications where the invention was created by artificial intelligence (AI).  These inventions were created by a “creativity machine” comprised of a system of multiple artificial neural networks. These networks generate new ideas, analyze their performance, and assess distinctions between existing inventions and the newly generated idea. The EU Patent office found both AI inventions to be new and industrially applicable; however, the patents were refused because the invention was not created by a human.

Click here for article

Do the Scots own BURNS NIGHT?

The Scotch Whisky Association recently filed an opposition to the mark BURNS NIGHT filed by an Atlanta distiller of American malt whiskey.  The Association claims that BURNS NIGHT is “highly evocative of Scotland when used on a whisky product,” and is likely to cause a consumer to believe that the spirit being purchased is a Scotch as opposed to an American whiskey.

The mark would not seem to be a simple geographic indicator so can an annual celebration of the Scottish poet Robert Burns prevent registration of the mark?  It is an interesting question as Robbie Burns Night is acknowledged in many other parts of the world as well, particularly Canada and the US.

CLICK HERE FOR FULL ARTICLE

 

What Constitutes a Counterfeit?

Rolex has recently filed suit against laCalifornienne for allegedly dealing in fake watches. LaCalifornienne has been adding non-Rolex sanctioned dials, crystals, and other accessories to pre-owned Rolex® watches and reselling them as genuine Rolex® watches.  Rolex considers any watch that includes a non-Rolex part to be a counterfeit.

Rolex filed a similar case against a jeweler that was “enhancing” Rolex® watches with gemstones and other decorative adornments.  The Fifth Circuit sided with Rolex in that case.

In a similar case involving the modification of circuit breakers, the Ninth Circuit held “that “when an original mark is attached to a [reconditioned] product in such a way as to deceive the public [as to the source of the product], the product itself becomes a ‘counterfeit’ just as it would if an imitation of the trademark were attached.”

CLICK HERE FOR FULL ARTICLE