Biden Decision on COVID Vaccine Patent Waivers is More About Global Leadership than IP

By Professor Justin Hughes

Back in October 2020 – as the world recorded its first million COVID-19 deaths – South Africa and India presented a proposal at the World Trade Organization for “a waiver from the implementation, application and enforcement” of global intellectual property rights “in relation to prevention, containment or treatment of COVID-19.” Along with other western countries, the Trump administration strenuously opposed the idea. But on Wednesday the Biden administration said it is prepared to go along with such a waiver, at least for coronavirus vaccines.

What happened?

Read the entire USA Today op-ed>>

The Implications of Trademark Forefeiture in U.S. v. Mongol Nation

By Professors Jennifer E. Rothman and Rebecca Tushnet

This op-ed originally appeared in the Tuesday, Feb. 26, 2019 edition of the Los Angeles and San Francisco Daily Journal 

Last month, District Judge David O. Carter of the Central District of California invited the submission of amicus briefs to address a series of questions arising from litigation in United States v. Mongol Nation, CR13-0106-DOC, an ongoing case brought by the United States against a motorcycle gang, Mongol Nation. The government has sought through criminal forfeiture, pursuant to 18 U.S.C. Section 1963(a)(1) of the Racketeer Influenced and Corrupt Organizations Act to have the court transfer to it the defendant’s trademarks. Judge Carter specifically sought guidance from amici on a series of questions involving intellectual property, constitutional and criminal laws.

A group of law professors led by Rebecca Tushnet of Harvard Law School submitted a brief to the court in support of neither party. The brief addresses the first two questions posed by Judge Carter:

• Whether criminal forfeiture of any and all legal and equitable rights of any kind or nature associated with or appurtenant to a collective membership mark violates the First Amendment to the United States Constitution.

• Whether criminal forfeiture of a collective membership mark is feasible under intellectual property law.

In particular, the brief focuses on the limits of a transfer of the defendant’s marks under trademark and First Amendment law. The brief was signed on to by seven leading intellectual property scholars: Stacy L. Dogan (Boston University), Mark A. Lemley (Stanford), Jessica Litman (Michigan), Mark P. McKenna (Notre Dame), Jennifer E. Rothman (Loyola Law School, Los Angeles), Jessica Silbey (Northeastern University), and Rebecca Tushnet (Harvard Law School).

The Right of Publicity―A Misunderstood, Misshapen, Bloated Monster

By Professor Jennifer Rothman

This post is excerpted from the Volokh Conspiracy, where Prof. Rothman is guest blogging this week.

The right of publicity is a law that few people outside of Hollywood know much about. Nevertheless, it is an increasingly important right in our digital age even when celebrities are not involved. The right of publicity provides a right to control uses of your identity, particularly your name, likeness and voice, and to stop others from using those without permission. The boundaries of these state right of publicity laws vary widely from state to state, with some limiting the claims to uses in advertising or on products, and others allowing almost any claim when the use is for the defendant's advantage. Some states limit claims only to those brought on behalf of the living, while others extend such rights after death.

In the book, I consider both the opportunities and risks that such right of publicity laws pose. I challenge the conventional, yet erroneous story of the right of publicity's development, and by doing so I provide direction on how to avoid the right's current dangerous path. The right of publicity in its current form jeopardizes the liberty of the very individuals that it is supposed to protect, while also interfering with free speech, and copyright law.

Today, I will share a short excerpt from the Introduction to the book that lays out some of the dangers and possibilities that the right poses, which I develop further in the book:

The right of publicity can be a valuable mechanism for addressing a variety of twenty-first century concerns about uses of people's images. But, despite the many benefits of having a right of publicity, its current incarnation comes with a host of dangers. The right of publicity limits what the public can say about public figures, even dead ones, and can bar the public from making sculptures, T-shirts, and posters honoring the recently deceased, such as Prince, Carrie Fisher, Robin Williams, and Muhammad Ali. It can block (and has blocked) the distribution and sale of busts of civil rights heroes, like Martin Luther King Jr. It has prevented video game makers from accurately depicting football players on historical team rosters, and television networks from using clips of their own broadcasts.

Read the complete post on the Volokh Conspiracy on Reason.

Intellectual Property – Ethiopia’s Experience (continued)

Professor Justin Hughes recently completed a State Department trip to Ethiopia to conduct talks on intellectual property. The U.S. embassy in Addis Ababa's official blog is publishing a series of his posts on the topic. The first was published on June 1, 2017.

In my last blog post, I focused on Ethiopia’s coffee industry; now let’s talk more broadly about Ethiopian’s intellectual property (IP) laws and how those laws potentially impacts the country’s growth.

Ethiopia is almost unique among African countries for its lack of participation in the multilateral treaties that govern the international IP system. There are two main multilateral conventions for IP: the Paris Convention (for patents and trademarks) and the Berne Convention (for copyright law). Today, those treaties have 195 and 183 members, respectively. Ethiopia is the largest economy not participating in the Paris Convention and perhaps the second largest economy not participating in the Berne Convention (after Iran).

Read the complete blog post

Intellectual Property – Ethiopia’s Experience

Professor Justin Hughes recently completed a State Department trip to Ethiopia to conduct talks on intellectual property. The U.S. embassy in Addis Ababa's official blog is publishing a series of his posts on the topic. The first was published on May 19. 

It’s been a pleasure to come to Ethiopia as part of the U.S. State Department’s public speaker series; the State Department invited me here to talk about intellectual property (IP) laws as well as international trade, the two subjects I teach at Loyola Law School at Loyola Marymount University in Los Angeles. During my trip, I’ve spoken before audiences from Addis Ababa and Hawassa universities; conducted a 1.5 day workshop for the Ethiopian Intellectual Property Office (EIPO), and had many smaller meetings and site visits, including the Ethiopian Agricultural Research Institute in Addis, the Oromia Coffee Farmers’ Cooperative Union in Oromia, and rural health centers and health posts in Amhara.

Read the complete blog post>>

Charter-Time Warner Merger & Data Usage: How a Ruling Could Impact Consumers

By: Professor Karl Manheim

The Federal Communications Commission has recommended approval of Charter Communications’ merger with Time Warner Cable, making the combined company the nation’s second largest broadband provider. As a condition for FCC approval, Charter/TWC will not be able to impose usage-based charges or data caps on its broadband subscribers for seven years. Can the FCC impose such a condition? Maybe, but ultimately it may not matter.

In 2002, under a Republican administration, the FCC ruled that cable broadband was an “information service,” and thus mostly unregulated under the Federal Communications Act of 1934 and the Telecommunications Act of 1996. The Supreme Courtt upheld that determination in NCTA v. Brand X (2005). In 2010, the FCC began regulating cable broadband to achieve Net Neutrality, but in Verizon v. FCC (2014) the Court of Appeals for the DC Circuit invalidated the FCC order because the agency had earlier deemed cable broadband to be an information service, hence not subject to FCC regulatory jurisdiction. Last year, under a Democratic administration the FCC reversed its 2002 Order and ruled that cable broadband was a “telecommunications service,” and thus within the agency’s Title II jurisdiction (as a public utility). 2015 Report and Order on the Open Internet aka "net neutrality"). It is this ruling that allows the FCC to impose a no-cap policy (as a condition for merger). Verizon has once again appealed the FCC Order; that case is pending.

If the DC Circuit upholds the 2015 Order, then the no-cap condition will stand. If it invalidates the Order, then cable companies may have wide berth to do as they wish.

Keep in mind that the FCC is only 1 of 3 federal agencies who have to pass on the competitive effects of telecom mergers; the other 2 being the FTC and the DoJ. In the case of cable companies, state regulators may have to approve as well. Also keep in mind that cable companies will increasingly rely on broadband revenue as more customers cut the cord on cable video service. That’s why it is so expensive (roughly $50/mo for a service that costs the company far less than that). But even though cable companies have a license to print money, I still wouldn’t put my marbles there. That’s because customers will soon be able to cut the cable broadband cord too. We are in the middle of an FCC auction that will repurpose TV frequencies (channels 46-51) from broadcast TV to mobile Internet (ch. 52-69 have already been reclaimed). Once that happens, the speed of your Internet connection on your cell phone will rival that on cable (or DSL). Then we can kiss the cable companies and their monopoly prices goodbye.

4th Annual US-China IP Conference 2015

Loyola Law School, Los Angeles, Berkeley Center for Law & Technology, and Renmin University of China Law School organized the fourth annual US-China IP Conference to compare developments and trends in two countries critical for any IP creation and protection strategy. Leading scholars, government officials and practicing lawyers from China will join US experts to examine vital current topics including: new trends in transnational technology investment, developments in copyright, and cross-border IP enforcement.

Professor Seagull Song and Director of the Asia-America Law Institute, Professor Justin Hughes, and Professor Jeffrey Atik will be speaking at this event.

Year in Review: Top Chinese Entertainment Law Cases between 2014-15
The year of 2014 has been a fantastic year for Chinese film market. China became the second largest box office in the world, right behind the U.S. In same year, we also witnessed a significant increase in entertainment law cases filed, argued and decided by Chinese courts, covering issues ranging from copyright infringement, trademark, anti-unfair competition, to privacy, right of publicity, defamation, labor law, and of course, contract disputes. This presentation will discuss some top Chinese entertainment law cases decided during the same period of time and addresses key issues of significance to the Chinese entertainment industry. They range from idea/expression dichotomy, movie title protection, director credit, movie revenue sharing, and the balance between privacy and freedom of speech.

Recent Developments on Copyright: Legislation and Cases
As part of a panel discussing recent developments in U.S. copyright law, Professor Hughes discussed the Ninth Circuit's recent Garcia v. Google decision as well as movements in Washington toward ratification of the Beijing Treaty on Audiovisual Performances (2012) and the Marrakesh Treaty for the Blind (2013).

Specialized IP Courts
An almost all-EU patent court is the institutional centerpiece of the new EU 'unitary' patent system. The new court, to be known as the European Unified Patent Court, will have jurisdiction over all invalidation and infringement actions involving patents issued by the European Patent Office that are designated to have 'unitary effect,' that is effectiveness within the great number of EU states participating in the new scheme. The substantive patent law to be applied by the new court is an awkward amalgam of European, treaty and national law - and the national law is determined largely by the formalistic presence of the patent applicant in a particular EU member state. Atik's presentation explores the various sources of this new (and variegated) substantive patent law, and the hierarchical relationship of its various elements.

The conference will be held at University of California Berkeley on October 8-9, 2015. Click here to register.

Loyola Professor Explores How and Who Makes Copyright Policy in Washington

Professor Justin Hughes, William H. Hannon Distinguished Professor of Law, recently published a pair of essays clarifying the level of copyright law expertise in the U.S. Patent & Trademark Office. Rebutting claims made by an entertainment attorney in an op-ed that appeared in The Hill, Hughes notes that “that USPTO currently has a bench of copyright expertise as least as deep as the team at the Copyright Office.” Read his full essays:

• The Hill 
• The Media Institute (expanded)

Prof. Rothman Submits Amicus Brief in Right of Publicity Case

Professor Jennifer Rothman submitted an amicus brief along with UCLA Professor Eugene Volokh supporting en banc review by the Ninth Circuit in Davis v. Electronic Arts, a case involving the right of publicity.

SUMMARY OF ARGUMENT

The panel decision in this case followed the majority opinion inIn re NCAA Student-Athlete Name & Likeness Licensing Litigation (“Keller v. Electronic Arts”), 724 F.3d 1268 (9th Cir. 2013)(commonly known as Keller), which defines thisCircuit’s law on the right of publicity and the First Amendment. No petition for rehearing en banc was filed in Keller, so this is the first clear opportunity for the entire Circuit to consider whether Kelleris correct.

Keller’s conclusion that references to real players in fantasy sports video games are not protected by the First Amendment is mistaken, and dangerously so. The Keller majority begins with the sentence, “Video games are entitled to the full protections of the First Amendment, … ‘[l]ike the protected books, plays, and movies that preceded them[.]’” 724 F.3d at 1270-71 (quotingBrown v. Entm’t Merchs. Ass’n, 131 S. Ct. 2729, 2733 (2011)). It therefore follows that, to the extent video games may infringe the right of publicity for depicting or referring to real people, so may books, plays, songs, and films.

Thus, under the logic of Keller, the makers of the recent filmSelma might be liable for a host of right of publicity violations unless they got permission from Coretta Scott King, Andrew Young, John Lewis, Harry Belafonte, and the heirs of Martin Luther King, Jr., J. Edgar Hoover, Lyndon Johnson, and others. The Academy Award-winning Forrest Gump might also have infringed historical figures’ right of publicity unless the filmmakers got permission from the Elvis Presley, John Lennon, and Abbie Hoffman estates. Simon & Garfunkel’s Mrs. Robinson, which asked “Where have you gone, Joe DiMaggio?,” might have infringed Joe DiMaggio’s right of publicity.

Campus in the Spring

By Associate Professor Elizabeth Pollman

This year we are celebrating the 50^th anniversary of our law school campus.  I love what an interesting space we inhabit in downtown Los Angeles, and I consider myself lucky to get to teach on such a unique and functional campus that has been designed with an artistic vision.  

But the campus, of course, really comes alive with all of us who spend our time here, and I wanted to share how I’m reminded of that on an almost daily basis. It is the time of the spring semester when law review boards change over and the faculty receives emails with the lists of students who will be taking the helms of the various journals at Loyola.  I’m delighted to see current and former students on the lists, and I remember how busy my students are outside of the classroom.  It is also the season for receiving emails from students, diligently letting me know that they have to miss a class because they are attending (and winning!) a trial competition.  Sometimes I come across other interesting and important activities that Loyola students are up to and here’s a new one: – the dlreporter.com.

The Dotted Line Reporter is a Loyola law student-produced blog that has excellent, timely content focused on business and legal developments in the entertainment industry.  The blog provides lots of interesting info and analysis on a wide range of topics in film, television, music, sports, the arts, and more.   The site is packed with content on trending topics I want to read – everything from the recent “Dumb Starbucks” parody to the Time Warner-Comcast merger.  What is truly impressive is how many of the stories are not just the same sound bites you’d find on bigger, well-known blogs and websites but are rather original commentary and reflect thoughtful research.  The “Dumb Starbucks” piece, for example, was the result of one of the student contributors actually going over to the faux coffee storefront and interviewing folks and sleuthing the story. 

What I also love about this new blog is how it reflects the entrepreneurial spirit of the students who have started it.  I teach business law courses here at Loyola, and I try to bring to life the law we study – how the cases we read, for example in Business Associations, reflect scenarios where real people were pursuing innovative ideas, career or investment goals.  The students creating the dlreporter.com have that entrepreneurial, industrious spark to use their interests to pave their own paths to success.

Visiting Prof. Hughes Contributing to Prawsblawg Series

This semester, Loyola is delighted to be hosting Professor Justin Hughes, who is visiting from Cardozo School of Law. Professor Hughes is currently participating in an online forum on Robert Merges' book, Justifying Intellectual Property. You can find his first post here.

Attraverso: Supreme Court to hear major gray-market case

By Professor Jeffery Atik

On Monday, Oct. 29, the U.S. Supreme Court will hear arguments in *Kirtsaeng v. John Wiley & Sons, Inc.*, a case that promises to resolve (finally) whether the first-sale doctrine applies to copyrighted works produced and sold abroad and then imported into the United States. It is no small surprise that this is an open question, as the current U.S. copyright act has been in place since 1976. And the copyright first-sale doctrine is older than that.

Compare the situation in Europe, where the European Court of Justice has long ago established that exhaustion (corresponding to the first-sale doctrine) occurs with full effect throughout the European territory, notwithstanding the national character of most European IP rights. A copyright holder which sells a book in France may not use its German copyright to block the importation or resale of that book in Germany.

But not so with respect to IP protected goods first sold outside of Europe: these goods may be blocked by the IP right holder when introduced to the European market. Thus, it is said that the Europeans practice regional exhaustion (first-sales within European cut off IP rights), but not international exhaustion (IP right holder retain rights with respect to goods first sold outside Europe).

Book Review: Steve Jobs by Walter Isaacson

By Professor Jeffery Atik

If only Lytton Strachey had written this biography of Steve Jobs. He would have punctured Jobs, ridiculed his dirty feet and preachiness, his unshattered conviction of his own primacy. Not that Jobs wasn't a great figure: he certainly was. But there is something off-putting when a biographer lets his subject declare (and so establish) his own importance. The temptation in reviewing this biography is to assess the subject and not the book. And the subject is certainly compelling. Jobs' accomplishments are familiar, his eccentricities less so. And so there is sordid attraction exercised by his abandonments, his eating disorders, his cruelty.

Isaacson relishes his access to Jobs and produces a work Larry King would envy. Certainly Jobs' foibles are presented -- but simply because a biographer has a license to report 'warts and all' does not discharge his critical responsibility. Isaacson does not judge Jobs. At best, he reports -- in various fragments -- the partial judgments of Jobs' many friends, colleagues and acquaintances. Joan Baez is perhaps the most honest of all: she has little to say beyond a typifying story (Jobs is clueless) and leaves the impression that she meant more to Steve than Steve ever meant to her.

No doubt many readers of this book will search for easy recipes for replicating Jobs' phenomenal business achievements. Jobs seems to have had two running theories for Apple's success. The first account celebrates Apple's industrial design. The design story is complex -- and has deep psychological roots. Jobs learns from his father (a modest man he greatly admired) of the importance of finish, even for elements hidden from view. Design does not reflect the creator's integrity; it assures it. But design involves more than form following function -- the book is replete with stories of Jobs' rejecting engineers' design compromises that duly reflect functional concerns. The aesthetic trumps the functional in these stories (Isaacson gives no counterexamples), at times leading to stunning product, and at other times, to disappointment and delusion. In the affair known as "Antennagate," Jobs had insisted that a gorgeous steel rim surround the iPhone 4. Unfortunately, this compromised an essential function: the phone dropped calls at a higher rate. The technical solution adopted by many (and offered by Jobs) was an ugly case which, of course, masked the iPhone 4's design!

Jobs had a wonderful design sense, though he became increasingly closed off to new aesthetic experience. Dylan remained the center of his musical universe (his iTunes list is true to baby-boomer form). He perceives Bach's greatness -- but stops there (though Yo-Yo Ma is a 'friend'). Had Jobs been more intrigued by music -- and willing to explore - he may have found artists who better reflected his simplicity instincts.

Attraverso - Digital Copyright Crimes and the Trans-Pacific Partnership

By Professor Jeffery Atik

The IP provisions of the Trans-Pacific Partnership (TPP), a regional trade agreement involving the United States and 10 other Pacific Rim nations, are not merely 'TRIPS Plus;' they are also 'WIPO Plus.'

Two major multilateral copyright treaties came into force following the establishment of TRIPS: the 1996 WIPO Copyright Treaty and the 1996 WIPO Performances and Phonograms Treaty. Together, these treaties expand protection to authors and performers in the digital environment. As WIPO products, these two treaties, known together as the WIPO Internet Treaties, reflect fairly broad international consensus, in contrast to the more contentious 'TRIPS Plus' norms promoted by the United States and Europe in various bilateral and regional settings. The now abandoned Anti-Counterfeiting Trade Agreement (ACTA) was an attempt to construct TRIPS Plus broadly, outside of the WTO.

The WIPO Internet Treaties establish new categories of unlawful activity, but they do not require the imposition of criminal penalties on infringers. For example, Article 11 of the WIPO Copyright Treaty requires signatories to "provide adequate legal protection and effective legal remedies" against persons who circumvent technological measures for the protection of copyrighted works. While the WIPO Copyright Treaty does not prevent a signatory from imposing criminal liability in these cases, neither does it mandate it.

The 1998 Digital Millenium Copyright Act (DMCA) purports to be the United States implementation of the WIPO Internet Treaties. Yet the DMCA arguably goes beyond the WIPO Internet Treaties by imposing criminal liability on persons who "willfully violate" DMCA's central provisions "for purposes of commercial advantage or private financial gain."

The Trans-Pacific Partnership and IP Crimes

By Professor Jeffery Atik

True, we know little about the current form of the draft Trans-Pacific Partnership -- a regional trade agreement to involve the United States and ten other countries (Australia, Brunei Darussalam, Canada, Chile, Malaysia, Mexico, New Zealand, Peru, Singapore and Vietnam) -- but we can be certain that TPP will include an Intellectual Property chapter with a battery of TRIPS Plus features. We can get a hint at the IP content of an eventual TPP -- or at least at the negotiation goals of the United States -- by examining the IP provisions of recent U.S. Free Trade Agreements such as those concluded with Peru, Panama and South Korea. Or we could look back at the recently concluded ACTA, now abandoned by the European Union, one of ACTA's principal sponsors. Or we can look at the text of a leaked draft that may or may not be accurate. So let's apply all three approaches to create an amalgam for conversational purposes -- and explore the criminalization mandates found in the leaked TPP draft.

TRIPS introduced criminalization obligations to the international IP system. With the passage of years, these provisions are regarded as inadequate by crucial U.S. IP constituencies (along with TRIPS' enforcement more generally). The United States has included expanded criminalization mandates as part of its TRIPS Plus program. Additional activities are subject to criminal liability under the terms of recent FTAs and ACTA and in the leaked TPP draft.

Article 15.1 of the leaked TPP draft echoes TRIPS Article 61: "Each Party shall provide for criminal procedures and penalties to be applied at least in cases of willful counterfeiting or copyright or related rights piracy on a commercial scale." Ignore for a moment the insertion of the phrase "or related rights." The TPP leaked draft tracks the first sentence of TRIPS Article 61 word-for-word, including the problematic "on a commercial scale" limitation. It also replicates the language found in the recent FTA entered into with South Korea.

Revisiting China's IP Conviction Thresholds

By Professor Jeffery Atik

Among the many changes to the international IP landscape wrought by the WTO's TRIPS Agreement was the unprecedented mandate to impose criminal liability for the most egregious acts of trademark and copyright infringement. Criminal sanctions add to civil and administrative remedies to create a climate of observation of IP rights throughout the WTO space. In anticipation of its joining the WTO -- and in response to pressure from the United States -- China amended its domestic criminal law to provide for the possibility of imprisonment or fines in certain instances of IP infringement as a complement to civil and administrative remedies. Nonetheless, there remains continuing concern held by IP holders about the effectiveness of China's IP enforcement. Much of the current 'TRIPS-plus' program (including the discarded ACTA and the emerging Trans-Pacific Partnership [TPP]) is intended to indirectly influence China with regard to IP enforcement.

In 2007, the U.S. brought a three-prong challenge to China's IP system within the WTO dispute settlement system. The central part of the dispute involved a U.S. assertion that China failed to give full effect to the TRIPS criminalization mandate. Article 61 of TRIPS obligates WTO members to provide "for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale."

ACTA's slow European demise

By Professor Jeffery Atik

The Anti-Counterfeiting Trade Agreement (ACTA) reached the end of the road on July 4, when the European Parliament rejected the treaty, by a stunning vote of 39 for and 478 against (with 165 courageous MEPs abstaining). The profound reversal is all the more remarkable given that the governments of all EU member states had earlier supported ACTA (reflected in a unanimous approval of the EU Council in December 2011). Throughout, ACTA continued to enjoy the support of the EU's administrative arm, the European Commission.

ACTA was promoted as an articulation of higher IP enforcement standards by the 'like-minded' First World states (chiefly the United States, Japan and Europe) that control the greater stock of the world's valuable intellectual property. There was a wide range of objections to ACTA, but the greater concerns expressed in Europe was its potential disregard for due process and its potential inconsistency with Europe's strong privacy rights. While ACTA may ultimately come to life (upon ratification of six signatory parties), it has little practical import in the absence of European participation.

The first cracks in European support for ACTA appeared in the course of Member State approvals. As a so-called mixed agreement - a treaty involving both Brussels-level authority and residual Member State sovereignty - ACTA required approval of all 27 EU Member States, as well as ratifications by the relevant EU institutions. Twenty-two EU Member States signed ACTA on January 26 of this year, but five Member States (including Germany and the Netherlands) hesitated. As the months progressed and opposition to ACTA mounted, ACTA's prospects in the holdout Member States declined further. And several EU Member States - led by Poland - sought to negate their prior approvals within their respective national ratification processes. As Member States began to defect from the accord, ACTA's days were numbered.

Apple Fights for iPad Trademark Rights

By Professor Jeffery Atik

Apple's lawyers woke up last month to discover that its China-based iPad trademark litigation with Proview had spilled over to California's courts. On February 17, Proview sued Apple in state court in Santa Clara county, asserting that Apple had defrauded Proview of its IPAD trademarks registered in Europe and in key Asian markets. The California iPad litigation is not a trademark infringement case (Apple's U.S. rights to the iPad mark are not challenged) -- rather Proview disputes Apple's ownerships of the various foreign IPAD marks registered by Proview. Proview urges that its assignment of these marks to Apple be rescinded, due to what it considers to be Apple's fraud. With that said, the California litigation forms part of the larger conflict between the two firms -- which has occupied courts in Hong Kong and Shenzen, China -- and so reflects Proview's grand strategy to cloud Apple's claims to the iPad marks, either by resort to law or by subjecting Apple to public embarrassment. And here lies a tale of Apple's over-cleverness, in approaching Proview in the guise of IP Application Development Limited, a stealth UK company whose name's initials conveniently spell out "IPAD."

The iPad has developed into one of Apple's most important products, now accounting for 26 percent of Apple's gargantuan sales and defining a new category of computing device. The iPad trademark is thus one of Apple's most valuable assets. And so it seems difficult to recall that leading up to Steve Jobs's January 2010 introduction of the device, there was much fascination -- and much mystery -- as to what it would be called. When Steve asked his fans to welcome a "truly magical and revolutionary product," few could conceive how commonplace the term iPad would shortly become in our everyday vocabularies.

Recent litigation -- starting in China but now clouding Apple's claim to the iPad trademark in other Asian markets and Europe as well -- reveals that Apple took elaborate steps in the five months prior to the January 2010 launch to secure the iPad mark. Apple knew exactly where to look: back in 2005 it had a spat of litigation with a Chinese firm, Proview, over Apple's rights to the iPod trademark. Proview had a product line with a similar name: its IPAD. That dispute ended with a non-disclosed settlement and some lingering bad blood between the firms.

Rival Victorias battle for trademark in Transatlantic beer dispute

By Professor Jeffery Atik

On January 31, in yet another Transatlantic beer conflict, Europe's General Court upheld the determination of the European Trademark Office (OHIM) to deny the trademark registration of "Victoria de Mexico", a long-established beer brand from Mexico. Case T-205/10. Grupo Modelo, the owner of Victoria de Mexico, launched the Victoria de Mexico brand in the United States in 2010 and hoped to replicate this success in Europe. It shall not be. The European trademark application for "Victoria de Mexico" was rejected, due to the successful opposition of a rival Spanish beer, known as "Victoria". The Spanish Victoria has been marketed since 1928, and has held trademark registrations in Spain and Europe since 1994 and 2002 respectively.

Article 8(1)(b) of the European Trademark Regulation states that a trademark shall not be registered in the event of an opposition by a prior trademark proprietor where "because of its identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected . . ."

The General Court upheld the Trademark Office's finding that the proposed "Victoria de Mexico" mark would cause a likelihood of confusion, including a likelihood of association, with the existing "Victoria" brand.

The General Court noted that the two marks -- "Victoria de Mexico" and "Victoria" -- would apply to the same product: beer. Given the identical product space, the likelihood of confusion is considerably heightened. In examining the two marks for similarities, the General Court, following European precedent, divided its analysis into three parts: visual, phonetic and conceptual. Further, the Court explicitly considered the perception of the marks by two idealized European beer consumers: one who understands Spanish (or another Romance language or even -- perhaps -- English) and one who does not. The challenge of protecting traditional trademarks, rooted in particular national languages, which now function across the multilingual European market is deftly explored.

In reviewing the two marks for visual similarity, the General Court concludes that the word "Victoria" is dominant in each -- and that the various other figurative elements found in the two marks are "common" and "banal". One trusts the two graphic artists have passed on, and so escape the sting of the General Court's evaluation of their work.

Occupy the public domain

By Professor Jennifer Rothman

This op-ed, which discussed the implications of the Supreme Court's decision in Golan v. Holder on the public domain, originally appeared in the Feb. 6, 2012 edition of the San Francisco Chronicle.

If you celebrated Martin Luther King Jr. Day by watching the "I Have a Dream" speech on YouTube, you broke the law. Or at least that's what the Martin Luther King Jr. estate contends. It claims that if you want to legally watch a video of the Rev. King's copyrighted speech - one of the most important speeches in our country's history - you need to pay its foundation $10.

Instead of providing for sharing such important moments, our government has been complicit in endorsing a vision of copyright law in which nothing is free for use by the public. Recently, the same King foundation demanded that the federal government pay $800,000 to use King's words and image on the memorial statue of him in Washington, D.C. Rather than asserting the importance of this monument for our culture and its status as a public, nonprofit use of his name and words, the government caved.

Read the complete op-ed in the San Francisco Chronicle.