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China’s New Trademark Law Amendment: Could discouraging squatters detrimentally affect foreign tech firms?

Written by: Brendan Everton

There appears to be good news coming from China for brand owners. The 10th Session of the Standing Committee of the 13th National People’s Congress in China (NPC) has amended the Chinese Trademark Law and will go into effect on November 1, 2019. [1] The changes are meant to help prevent trademark squatting in China, which has long been a problem. [2]

Trademark squatting or trademark piracy is “the registration or use of a generally well-known foreign trademark that is not registered in the country or is invalid as a result of non-use…”. [3] The intent is to “sell the trademark back to the real owner; … distribute products labeling the trademark to consumers who believe the products are real; … exclude the real owner from the market by establishing a claim of trademark infringement; or … use the trademark to market products which are different from those sold by the real owner.” [4]

The Chinese Trademark system is a first-to-file system. [5] First-to-file systems give an exclusive right to the trademark filed first. [6] Consequently, this system results in a race to file, which encourages bad faith filers to take advantage of the system. There are some safeguards in the Chinese regime to fight against trademark squatting. [7] The courts in China have thus far interpreted these protections narrowly making it difficult for foreign companies to protect their trademarks. [8] This is in contrast to the first-to-use system, which gives exclusive rights to the person who uses the mark first. [9] Through the use of this system, countries largely are able to avoid the problem of bad faith filings. [10]

Hoping to resolve this problem, the new amendment moves ever so slightly towards a first-to-use system. Article 4 of the Trademark Law has been amended to clearly state that “applications filed in bad faith without intention to use should be rejected.” [11] This is a significant change which allows the China Trademark Office to weed out bad faith applications during the examination process. [12] Anyone is now empowered to challenge bad faith applications during the examination process at relatively low cost. [13] This will benefit start-up companies who currently do not have the deep pockets needed to challenge the legitimacy of trademarks.  Additionally, trademark agencies are no longer able to represent an applicant if they know the individual is applying for the trademark in bad faith and has no intent to use the trademark. [14] Penalties are applied to both the trademark applicant and agency for violations. [15]

The new system appears to be an excellent start to tackling a problem that has long plagued China. However, some analysts worry the lack of a definition for bad faith may limit the effect that the law could have. [16] Too broad of a definition may harm foreign companies looking to take advantage of the Chinese markets. [17] Including the phrase “no intent to use” has worried some individuals. If this phrase is applied to include foreign firms filing defensive trademarks, it would deny trademarks to companies with legitimate business interests. [18] Unfortunately, the courts in China have been known to side with domestic companies when disputes over trademarks have occurred with American companies. [19]

There is a reason to be optimistic. This is not the only major change that China has made in the last year concerning intellectual property abuse. [20] This suggests that the Chinese government is attempting to improve the climate for foreign firms. There is hope it will attract more foreign companies to the Chinese market, suggesting the courts may start to change course.

While many of the components of the new amendment are encouraging, successfully attracting foreign companies by improving the trademark conditions will require the Chinese government to toe a thin line, allowing international firms to file patents for strategic defensive purposes and preventing bad faith filers from driving foreign business away.

[1] Benny Yip and Catherine Zheng, Good news about bad faith: China amends its Trademark Law, LEXOCOLOGY (June 21, 2019), https://www.lexology.com/library/detail.aspx?g=1add3fb0-713c-4637-9f48-02ffe23be3c3 [https://perma.cc/C9HU-SQ65].

[2] Yip, supra note 1.

[3] WIPO Intellectual Property Handbook: Policy, Law and Use, WORLD INTELLECTUAL PROPERTY ORGANIZATION 90 (2008).

[4] Kitson Sangsuvan, Trademark Squatting, 31 Wis. Int’l L.J. 252, 259 (2013).

[5] WIPO Intellectual Property Handbook: Policy, Law and Use, supra note 2, at 90.

[6] Sangsuvan, supra note 3, at 263.

[7] Yip, supra note 1.

[8] Id.

[9] Sangsuvan, supra note 3 at 262.

[10] Id.

[11] Yip, supra note 1.

[12] Id.

[13] Id.

[14] Id.

[15] Id.

[16] See Frank Ready, China’s Move Against Trademark Trolls Isn’t Sure Bet with U.S. Tech Companies, LAW.COM (July 30, 2019 at 9:30 AM), https://www.law.com/legaltechnews/2019/07/30/chinas-move-against-trademark-trolls-isnt-sure-bet-with-u-s-tech-companies/?slreturn=20190913133554.

[17] Yip, supra note 1.

[18] See Robert Burrell and Michael Handler, Dilution and Trademark Registration, 17 Transnat’l L. & Contemp. Probs. 713, 729 (2008).

[19] Id.

[20] Id.

 

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When Inspiration Becomes Imitation: A Look at Copyright and Trademark Use in Harry Potter-Themed Cafes

Written By: Justine Levy

Sitting in a local cafe in Las Vegas called Bad Owl, I found myself wondering if they acquired licensing rights to one of the biggest franchises in history – Harry Potter. Although the shop was noticeably busy, I could not help but think how pricey that license would cost.

This themed café has distinctive features that anyone familiar with the Harry Potter universe would immediately recognize. Their décor is of owls and magical ornamentation and their tagline is “Serious Coffee with a Hint of Magic.” Those acquainted with Harry Potter will recognize “serious” as an homage to Sirius Black, a significant character in the franchise. Bad Owl also serves a beverage initially entitled “butter beer lattes” but re-branded to “butterbrew” within a year of opening. [1]

When the first location opened, Bad Owl was a sensation, and a media frenzy followed. Their website highlights that they have been featured on Zagat, Cosmopolitan, Fox News, Sprudge, Eater, Thrillist, and PopSugar. [2] I recall seeing videos about the store shared on Facebook by friends and family far from Las Vegas. It is hard to believe that they have avoided the diligent legal watchdogs at Warner Bros. with that level of publicity, unlike the owners of 9 ¾ Café.

9 ¾ Café opened in 2017 in Mong Kok, Hong Kong and differs drastically from the Bad Owl locations in Las Vegas. 9 ¾ Café is less a whimsically inspired coffee shop and more of a literal interpretation of the Harry Potter films. The café is adorned with props from the movie, such as the Gryffindor coat of arms, broomsticks, and wands. There is half of a trolley sticking out from the wall almost identical to the one found at King’s Cross Station in London. And, they sell food and drink items named Professor McGonagall’s Magical Salad, Polyjuice Potion, and Muggle Drink (of which Warner Bros. have trademark registrations on). [3]

Although the restaurant opened in 2017, Warner Bros. only filed suit against the café in January 2019, citing copyright and trademark infringement. [4] It is reported that Warner Bros. is requesting the café change its name and remove the infringing items, damages for use of the copyrights and trademarks, and several injunctions. [5] This is, understandably, not the first time Warner Bros. has pursued legal action against alleged would-be Harry Potter infringers.

For example, in 2009 Warner Bros. shut down a Harry Potter-themed Halloween dinner that was to be held in West London for alleged copyright infringement. [6] Many articles on the story fail to mention the key issue Warner Bros. had with the event – the host Ms. Marmite Lover was selling tickets and charging for the dinner. [7] This means that Ms. Marmite would have been commercializing on the Harry Potter trademark and copyright.

Themed cafes (and dinners) raise many questions about the scope of trademark and copyright protection. How much use of the original material is too much? When does inspiration become imitation? Would a fair use analysis be proper or sufficient for determining boundaries of these cafes?

So, how has Bad Owl avoided a similar fate than that of 9 ¾ Café or Ms. Marmite Lover? It may be because Bad Owl is merely an inspired expression of Harry Potter instead of a literal interpretation.

 

[1] Bradley Martin, Harry Potter-Inspired Bad Owl Coffee Flies to the Southwest, EATER LAS VEGAS (Aug. 7, 2017, 12:00 PM), https://vegas.eater.com/2017/8/7/16104850/bad-owl-coffee-expands-southwest.

[2] BAD OWL COFFEE (Sept. 15, 2019), https://www.badowlcoffee.com.

[3] Coconuts Hong Kong, ‘Harry Potter and the Lawyers of Admiralty’: Wizard-Themed Café Sued for Copyright Infringement, COCONUTS HONG KONG (Jan. 16, 2019, 4:10 PM), https://coconuts.co/hongkong/food-drink/warner-bros-sues-harry-potter-themed-cafe-for-trademark-infringement.

[4] Lianne Tan, Copyright, Trade Marks and Character Themed Cafes, LEGALVISION (Jun. 8, 2016), https://legalvision.com.au/copyright-trade-marks-and-character-themed-cafes.

[5] Hong Kong Harry Potter-Themed Café Sued for infringement, THE COPYRIGHT LAWYER (Jan. 16, 2019), https://copyrightlawyermagazine.com/hong-kong-harry-potter-themed-cafe-sued-for-infringement.

[6] Emma Rowley, Harry Potter and the dinner party of doom, LONDON EVENING STANDARD (Oct. 26, 2009, 11:19 AM), https://www.standard.co.uk/news/harry-potter-and-the-dinner-party-of-doom-6761727.html.

[7] Thom Geier, Harry Potter and the Deathly Lawyers: Warner Bros. blocks a fan’s Potter-themed dinner party, ENTERTAINMENT WEEKLY (Oct. 27, 2009, 3:12 PM), https://ew.com/article/2009/10/27/harry-potter-lawyer-dinner-party.

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Terms of Service and the Erosion of the Right to Privacy

Written By: Elliot Millerd-Taylor

“I wouldn’t want to slow the wheels of progress. But then, on the other hand, I wouldn’t want those wheels to run over my client in their unbridled haste.” [1]

In a set of recent decisions, courts in the Ninth and Tenth Circuit have held that as long as the government stays within the parameters of the intrusions you agree to in the Terms of Service (TOS) with an internet service provider there is no search subject to the warrant requirement or, in the alternative, a reasonable expectation of privacy. [2]

For example, in United States v. Wilson, the court denied a motion to suppress evidence implicating the defendant in the possession, distribution, and solicitation of child pornography because the government’s visual examination of the images turned over by Google did not “significantly expand” on the proprietary technology Google uses to search someone’s email. [3]

Facially, the district court’s decision comports with the majority of Fourth Amendment case law.  However, this surface level appearance masks the troubling implications of the decision.

First, Google’s TOS for Gmail reserves the right to investigate suspected misconduct, review content, and remove or refuse to display content that violates policy. [4] In short, you are not obligated to use or be allowed to use the service if you break the law.

Second, 18 U.S.C. 2258(a) compels Google to turn over “actual knowledge of any facts or circumstances” that indicate a user is distributing, solicitating, or producing child pornography to the CyberTipline of the National Center for Missing and Exploited Children (NCMEC).  This includes relevant identity, geographic, and historical reference material.

Finally, Google goes beyond 18 U.S.C. 2258(a)’s requirements. Google uses a proprietary hashing technology to identify possible violations which are then manually identified by trained employees who catalogue and assign a hash value to the image.  Next, Google places this information into a server that matches the hash value to known media.  Then, Google turns the information over to NCMEC.  In short, Google searches a user’s email in a manner that would require a law enforcement office to procure a warrant. [5]

Where does this leave things?

As noted in Amicus Curae in Wilson, this potentially means that one will need to operate their own email server in order to maintain a reasonable expectation of privacy on the internet. [6] A ridiculous proposition, but it would not be the first time a Fourth Amendment case said facially or economically ridiculous and impracticable behavior was reasonable. [7]

Recent decisions and jurisprudence however, portend good omens. In Byrd v. United States, the court held that violating a signed contract which had provisions barring certain behavior did not eliminate the reasonable expectation of privacy the Fourth Amendment provides. In short, the court held you cannot sign away your rights or your reasonable expectations of privacy. [8]

Finally, the concern over third party or private searches in the internet age held in dissenting opinions regarding the Fourth Amendment. Most recently, Justice Gorsuch’s dissent in Carpenter v. United States now seem justified. [9] There may be five votes on the court to expand upon the Carpenter holding. [10] Justice Gorsuch noted that the Smith and Miller exceptions to the Katz test could have dramatic and deeply problematic implications for the Fourth Amendment in an era when the majority of American society conducts its business through electronic mediums. [11] In noting that even the reasonableness test leads to unreasonable results, Gorsuch’s dissent notes that the court’s case-by-case approach to the Fourth Amendment threatens the ability of the court to adequately address these new concerns with the Fourth Amendment. [12]

Much like the internet’s disruption of the American economy, it now seems that it provides challenges to the fundamental civil liberties of all Americans as frequently as, well, someone sending an email.

 

[1] Star Trek: Court Martial, (NBC Television Broadcast 1967).

[2] United States v. Wilson, 2017 U.S. Dist. Lexis 98432; see also United States v. Wolfenbarger, 2019 U.S. Dist. LEXIS 148822 (N.D. Cal. 2019); United States v. Ackerman, 296 F. Supp. 3d. 1267 (D. Kan. 2017); and United States v. Stratton, 229 F. Supp. 3d 1230 (D. Kan. 2017).

[3] United States v. Wilson, 2017 U.S. Dist. Lexis 98432 at 17-18.  The first indictment was two counts under 18 U.S.C. §§ 2252(a)(2) and 2252(a)(4)(b). A second indictment a month later charged defendant under 18 U.S.C. § 2251 (d)(1)(A), §2252 (a)(2), and § 2253 (a)-(b).

[4] Id. at 19-20.

[5] See United States v. Comprehensive Drug Testing, Inc., 621 F.3d 1162 (9th Cir. 2010) (Kozinski, J., concurring) (“These and similar search tools should not be used without specific authorization in the warrant, and such permission should only be given if there is probable cause to believe that such files can be found on the electronic medium to be seized.”). A discussion of the limitations placed on the government’s use of hashing technology.

[6] Jennifer Lynch, Your Fourth Amendment Rights Should Not be Limited by Terms of Service, ELECTRONIC FRONTIER FOUNDATION (Sep. 27, 2019), https://www.eff.org/deeplinks/2019/04/your-fourth-amendment-rights-should-not-be-limited-terms-service. See also, Carol D. Leonning, Rosalind S. Helderman & Tom Hamburger, FBI Looking Into The Security of Hillary Clinton’s Private E-mail Setup, THE WASHINGTON POST (Sep. 27, 2019) (discussing as to why this is a bad idea – Secretary of State Hillary Clinton, George W. Bush administration, and the Trump administration), https://www.washingtonpost.com/politics/fbi-looks-into-security-of-clintons-private-e-mail-setup/2015/08/04/2bdd85ec-3aae-11e5-8e98-115a3cf7d7ae_story.html?noredirect=on&utm_term=.e7190be442d0. See also, Matt Apuzzo & Maggie Haberman, At Least 6 White House Advisors Used Private Email Addresses, THE NEW YORK TIMES (Sep. 27, 2019), https://www.nytimes.com/2017/09/25/us/politics/private-email-trump-kushner-bannon.html. See also, Nina Burleigh, The George W. Bush White House ‘Lost’ 22 Million Emails, NEWSWEEK MAGAZINE (Sep. 27, 2019), https://www.newsweek.com/2016/09/23/george-w-bush-white-house-lost-22-million-emails-497373.html.

[7] United States v. Carpenter, 138 S. Ct. 2206, 2266 (2018).

[8] Byrd v. United States, 138 S. Ct. 1518 (2018).

[9] Carpenter, 138 S. Ct. at 2261.

[10] Id. 

[11] See Katz v. United States, 88 S. Ct. 507  (1967) (Harlan, J., concurring); Smith v. Maryland, 99 S. Ct. 2577 (1979); United States v. Miller, 96 S. Ct. 1619 (1976).

[12] United States v. Carpenter, 138 S. Ct. 2206, 2266 (2018) (Gorsuch, J., dissenting) (harbors particularly sharp opinions on the reasonableness of a police helicopter flying 400 feet above one’s backyard).

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Gene Therapy: Therapy For All, But Patents For None?

Written By: Elyse Gottschalk

If you Google the top 10 life-improving inventions of the 2000s, unsurprisingly, the top of the list is “mobile broadband”, the technology that brought live streaming to “cat video” lovers across the globe. [1] While Apple and Samsung were in a race for the best smart phone, science was partaking in its own endeavor – the task of sequencing the human genome, known as the Human Genome Project. After nearly 13 years, three billion DNA base pairs and every gene in the human genome were identified, qualifying it as the second ranked life-improving invention of the 2000s. [2]

But, the Human Genome Project was not the end. It was the beginning of the “genomic revolution”, with the race for development of gene-based therapies at the forefront. [3]

Gene therapy, the replacement of mutated, dysfunctional genes with functional ones as a cure for lifelong (typically fatal) diseases caught the interest of scientists, recognizing the expansive and potentially lucrative opportunity. However, development and testing of these kinds of treatments involves huge amounts of money, and scientists are beginning seek patents to protect their discoveries. [4]

Gene patents are one of the most controversial categories of patents in the United States and abroad. Patent proponents focus on incentivizing invention and promoting commercialization through the economic efficiency provided by a patent monopoly. [5] They argue that, without the protection of patents, because of the unusually high failure rate of biology-based research, the economic burden would limit development to large biopharma companies that could absorb the loss. In addition, in the absence of patent protection, collaborative efficiencies would be stagnated, with companies relying on trade secrets as a means of protection, slowing the development of treatments. [6]

Those opposing patent protection to genetic material argue that it is not consistent with the intent of 35 U.S.C. § 101, which does not historically extend patent protection to phenomena of nature. [7] Their concerns were addressed in Association for Molecular Pathology v. Myriad Genetics, where the Supreme Court held that a gene sequence in its natural form was not patentable, as distinguished from cDNA, a stripped version of DNA sequence isolated in a lab. [8] This means that a specific version of the DNA once isolated or with a specific mutation is patentable, while the sequence itself is broadly available for use.

While the court refused to address the public policy implications, this was a win for those concerned that gene patenting had negative implications for patient care. In fact, as part of the Appellate courts review, the AMA submitted an amicus curiae brief stated that gene patents interfere with diagnosis and treatment, quality assurance, and patient access to health care because it limited the options available for the treatments, leaving patients at the mercy of those holding the monopoly. [9]

Gene therapy, though in its infancy, is becoming a hot topic for scientists and patent lawyers alike. While the Supreme Court’s decision in Association for Molecular Pathology v. Myriad Genetics has provided some guidance into the patentability of genetic material and treatments, like gene therapy itself, the potential developments remain largely untapped. Patent attorneys, the scientists of patent law, will find themselves tasked with navigating the world of opportunities (and associated challenges) presented by the “genomic revolution”, by walking the line between protecting the inventor and benefiting society. The public policy implications that are the underpinnings of patent law are no exception here.

[1] Will McClennan, Great Life-Improving Inventions of the 2000s, The Richest (Nov. 23, 2013), https://www.therichest.com/business/technology/the-top-10-life-improving-inventions-of-the-2000s/.

[2] Id.

[3] Simon Trip and Martin Gruber, Economic Impact of the Human Genome Project (2011).

[4] Id.

[5] Laurie L. Hilla, The Race to Patent the Genome: Free Riders, Hold Ups, and The Future of Medical Breakthroughs, 11 Tex. Intell. Prop. L.J. 221, 237-42 (2003).

[6] Id.

[7] Id.

[8] Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013).

[9] Id.

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End of U.S. Copyright Term Extension Act is a Win for the Commons

Written By: Christopher J. Martinez

 

Advocacy groups in favor of creative works falling into the “public domain” received a win when the Sonny Bono Copyright Term Extension Act (“CTEA”) expired January 1, 2019. The American University Washington College of Law co-hosted an event with Creative Commons USA, Wikimedia DC, and the Program on Information Justice and Intellectual Property (“PIJIP”), discussing CTEA’s expiration, entitled “An Expansion of the Commons: Copyright, Creative Commons and the Public Domain.”[1] The event focused on why the shift in policy took place, and “what it mean[t] for the public domain.”[2]

The public’s perception of the public domain was a contributing factor for the non-renewal of the CTEA. Whereas the public domain was seen in a negative light, akin to a “junk heap,” the advent of the internet shifted public opinion of the public domain to that of a “resource for creativity.”[3]

The Copyright Act of 1976 originally extended copyright protections from a maximum of 56 years to 75 years.[4] This was again changed when the CTEA was enacted by Congress in 1998, extending copyright protection to a maximum of 95 years.[5] Without an extension, works from 1923 have finally entered the public domain. [6]

The CTEA faced constitutional challenges in its early years, despite the negative opinion associated with the public domain. In Eldred v. Ashcroft, various associations using previously copyrighted works that had fallen into the public domain brought suit against the Attorney General, claiming the CTEA violated the constitutional requirement stating copyrights would last for “limited times,” and thus violated their First Amendment rights.[7] The Supreme Court held the extension of 20 years was acceptable, equating it to extensions that patents had received, and which did not make protections indefinite.[8] The Court further held the CTEA “protect[ed] authors’ original expressions from unrestricted exploitation,” which is different from the First Amendment that protects “free speech concerns when the government compels or burdens the communication of particular facts or ideas.”[9]

While Creative Commons was not the plaintiff in Eldred v. Ashcroft, it was born out of the lost case,[10] and had the same concerns. It does not want to completely end copyright protections but does not want protections to endue for such a long time. Instead, it wanted to create “new spaces for creative reuse[.]”[11] Creative Commons allows authors to “share [their] knowledge and creativity to build a more equitable, accessible, and innovative world.”[12] It supports copyright protections, and even proposes six different types of licenses designed to give authors the protections they desire, while allowing works to be cultural resources through specific and limited means.[13]

Going forward, works from 1923 are in the public domain, meaning each new year strips old works of their protections and introduces them to the public domain, allowing more works to be used in “education or silent films,” for example.[14] Meredith Jacob, assistant director for academic programs of PIJIP, states “[t]here is a real demand [among educators] for materials in which they don’t have to make the fair use considerations.”[15] Finally, despite this win, it is still important for people to discuss “how public domain and fair use furthers their needs on the issues that they are passionate about.”[16]

 

[1] David Branigan, Open Access Advocates See End of US Copyright Term Extension Act As Win for Commons,Intellectual Property Watch (January 26, 2019), https://www.ip-watch.org/2019/01/25/open-access-advocates-see-end-us-copyright-term-extension-act-win-commons/.

[2] Id.

[3] Id.

[4] Id.

[5] Id.

[6] Id.

[7] Eldred v. Ashcroft, 537 U.S. 186, 186 (2003).

[8] Id.

[9] Id.at 190.

[10] Branigan, supra note 1.

[11] Id.

[12] What We Do, Creative Commons, https://creativecommons.org/about/ (last visited Apr. 10, 2019).

[13] Branigan, supra note 1.

[14] Id.

[15] Id.

[16] Id.

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Elected Officials Blocking Constituents on Twitter

Written By: William C. Besl Jr.

In high school, it was always a huge deal when someone “subtweeted” about a friend or even blocked their frenemy of the week. High school only lasts four years, but some people never grow out of it as seen in a case brought against an elected official in February. Missouri state representative Cheri Reisch blocked her constituent Mike Campbell after he retweeted a post condemning Reisch for accusing her opponent of being unpatriotic when the opponent put her hand behind her back during the national anthem.[1]

Most twitter disagreements are settled in the school halls, but the Western District of Missouri court will settle this issue. In Campbell v. Reisch, the court is less concerned with drama and more focused on the constitutional issues raised when an elected official essentially refuses to hear the opinion of a constituent. The case is still pending after Reisch’s motion to dismiss was denied in early February.[2]

The case primarily raises First Amendment freedom of speech concerns, but also addresses whether Representative Reisch acted under her elected authority when tweeting.[3] In response to these concerns, some have asked Twitter to step in and make a special verification symbol for elected officials and make it impossible to block individuals from that account.[4] Another suggestion is that Twitter should simply ban all politicians from its website.[5] Many may agree with this rather drastic measure after having to watch President Trump’s disaster of a Twitter feed for the past three years.

Last year, Knight First Amendment Institute at Columbia University sued President Donald Trump in the Southern District of New York.[6] This case raised the same First Amendment concerns as in Campbell.[7] The court awarded declaratory judgment ordering President Trump to unblock the plaintiffs, and it is now on appeal at the Second Circuit.[8] It is likely that Representative Reisch’s case will turn out the same.

With social media becoming ever more engrained in the political process, the heads of these networking platforms need to address these First Amendment concerns before the 2020 election cycle.

 

[1] Campbell v. Reisch, No. 2:18-CV-04129-BCW, 2019 WL 57433 (W.D. Mo. Feb. 8, 2019).

[2] Id. at 7.

[3] Id. at 2.

[4] Eric Goldman, Another Politician Probably Violated the First Amendment By Blocking a Constituent on Twitter, Technology & Marketing Law Blog (Feb. 16, 2019), https://blog.ericgoldman.org/archives/2019/02/another-politician-probably-violated-the-first-amendment-by-blocking-a-constituent-on-twitter-campbell-v-reisch.htm.

[5] Id.

[6] See Knight First Amendment Institute at Columbia University v. Trump, 302 F.Supp.3d 541 (S.D.N.Y. 2018).

[7] Id. at 549.

[8] Id. at 579.

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IP Protection For Schedule I Substances: Trade Secret Law Supplements In The Cannabis Industry

Written By: Cinder Cancilla

The protection of intellectual creations afforded by the law of Intellectual Property is comprised of the following four categories: patents, copyrights, trademarks, and trade secrets.[1] IP law aims to encourage a creative and innovative climate by balancing public interests with those of the innovators.[2] However, this balancing of interests becomes problematic when an inventor or producer is in the industry of Cannabis, where it is legal under State law but remains illegal under Federal law.[3] Fortunately, State-governed trade secret laws provide an alternative route of access to protection for those innovators’s intellectual creations in the Cannabis industry.

Under trade secret law, almost anything may qualify for protection as long as it has the potential to yield commercial value,[4] regardless of novelty.[5] Coca-Cola’s claim to “the world’s most guarded secret” is a famous example of where protection under trade secret law is favored over patent law; had Coca-Cola patented their recipe rather than keeping it a secret, exclusive use would be limited to merely twenty years.[6]

Categorically, trade secrets are fundamentally distinct because liability does not arise from mere appropriation like it does with patent, copyright, and trademark law.[7] Instead, liability under trade secret law requires the misappropriating party wrongfully acquire, disclose, or use an innovation that is, in fact, a secret.[8]  Secrecy need not be absolute, as disclosure may be necessary to exploit the innovation for commercial value.[9] However, reasonable precautions of preventing disclosure are necessary.[10] In the context of trade secret law, the term ‘wrongful’ may include a breach of contract (such as an employment contract), theft, bribery, misrepresentation, or a violation of some other confidential relationship.[11]

If we apply the principles of trade secret law to the cannabis industry, keeping in mind that it is an industry that is and has been largely criminalized for some time, it becomes clear that one’s good will and pedigree are critical to promoting new products or services, and to distinguishing between existing products or services.[12] In a landscape of vast products and services constantly emerging and evolving, intellectual property that the creators and inventors might seek to protect include: methods of treatment or application of cannabis products to one’s person; recipes for cannabis infused edible products; THC, CBD, and other chemical extraction techniques; consumption methods; indoor/outdoor growing processes[13]; customer lists; preferred vendors; business plans; or a variety of other proprietary information.[14] These products or services may be protected under state trade secret law where other categories of IP law can’t under the Controlled Substances Act,[15] so long as they are kept secret, through means such as: employment contracts for those involved in the production or services; non-disclosure agreements with specific vendors or retailers; or perhaps concealing access to greenhouses. Creators and inventors in the cannabis industry might also consider connecting their secret information with other materials, such as marketing collateral, apparel and accessories, etc., as additional means of placing intellectual products into commerce[16] to potentially bolster their ability to enforce protection of their products or services.

At the heart of trade secret laws are relationally specific duties.[17] As long as precautions preventing disclosure are reasonable under the circumstances, creators and innovators, i.e. those in the Cannabis industry, may protect their intellectual products from unauthorized use under trade secret laws. Accordingly, it is critical for those in the Cannabis industry to determine whether protecting their intellectual products under trade secret law is a practical alternative to the other categories of intellectual property that cannot provide adequate protection.

 

[1] https://www.law.cornell.edu/wex/intellectual_property.

[2] https://www.wipo.int/about-ip/en/.

[3] 21 U.S.C.A. § 841(a)(1) (West through P.L. 115-231).

[4] Cal. Civ. Code § 3426.1 (West current with all laws through Ch. 1016 of 2018 Reg. Sess., and all propositions on 2018 ballot).

[5] Robert G. Bone, A New Look at Trade Secret Law: Doctrine in Search of Justification, 68 Calif. L. Rev. 241 (1998) [hereinafter A New Look] (introduction to trade secrets).

[6] Alison Malsbury, Now is the Time to Identify and Protect Your Cannabis Trade Secrets, Canna Law Blog (June 12, 2018), https://www.cannalawblog.com/now-is-the-time-to-identify-and-protect-your-cannabis-trade-secrets/.

[7] A New Look, supra.

[8] Cal. Civ. Code § 3426.1 (West current with all laws through Ch. 1016 of 2018 Reg. Sess., and all propositions on 2018 ballot).

[9] A New Look, supra.

[10] Cal. Civ. Code § 3426.1 (West current with all laws through Ch. 1016 of 2018 Reg. Sess., and all propositions on 2018 ballot).

[11] A New Look, supra.

[12] Nicole Grimm, George Lyons III, and Brett Scott, Protect Your IP, Cannabis Business Times (July 11, 2018), https://www.cannabisbusinesstimes.com/article/protect-your-ip/.

[13] Nicole Grimm, George Lyons III, and Brett Scott, Protect Your IP, Cannabis Business Times (July 11, 2018), https://www.cannabisbusinesstimes.com/article/protect-your-ip/.

[14] Larry Sandell, What Cannabis Entrepreneurs Need To Know About Intellectual Property, Marijuana Moment (June 14, 2018), https://www.marijuanamoment.net/what-cannabis-entrepreneurs-need-to-know-about-intellectual-property/#your-business-secrets.

[15] 21 U.S.C.A. § 841(a)(1) (West through P.L. 115-231).

[16] Larry Sandell, What Cannabis Entrepreneurs Need To Know About Intellectual Property, Marijuana Moment (June 14, 2018), https://www.marijuanamoment.net/what-cannabis-entrepreneurs-need-to-know-about-intellectual-property/#your-business-secrets.

[17] A New Look, supra.

0

Non-Appropriation in Space: A Surprisingly Old Dilemma with Patent Law

A Brief History on the Need for Patent Reform as More Nations and Private Entities Enter Space

Written By: Jessica Ramsey

On January 27, 2017, the Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, Including the Moon and Other Celestial Bodies (the “Outer Space Treaty”) celebrated its fiftieth anniversary.[1] Arguably the most important body of space law with 89 signatory states[2], it is both shocking and predictable that the Treaty has never been amended.[3]

Why?

History explains. In October 1957, the U.S.S.R. successfully launched the first artificial satellite, Sputnik I, effectively initiating the Space Race.[4] The following July, the United States founded the National Aeronautics and Space Administration (“NASA”).[5] Less than a year later, the United Nations created the Committee on the Peaceful Uses of Outer Space (COPUOS).[6]

In 1967, COPOUS created the Outer Space Treaty, which was signed by over 50 nations amid the Cold War and global fear of nuclear weapons positioned in space.[7]  The Treaty is seventeen Articles of broad, cautionary language, warding against extending the arms race beyond the atmosphere.[8] Yet, because of its breadth, it has proven significantly more difficult to amend than to sign.

But here is where questions regarding patents in space likely began. Article II of the Outer Space Treaty explicitly states that space, including celestial bodies, “is not subject to national appropriation” by any means.[9]

Put bluntly, this is the precise opposite objective of a patent. Patents are territorial rights and almost every country has its own patent laws.[10] There are cooperative international systems like the Patent Cooperation Treaty (WIPO patents),[11] but these still do not remove the territorial nature of patents.[12]

Thus, the dilemma is revealed: patent law only provides protection in the territory of the country the patent is filed within. Even international patent laws require the territory be under control of a party state.[13] If no one country can control any territory in space, how is the appropriate patent law in space determined?

In 2004, this question was considered in “Intellectual Property and Space Activities,” a WIPO issue paper.[14] The document explains reconciling patent and space law is important mostly because space activities are becoming increasingly privatized.[15] These non-governmental entities tend to be “more conscious of their ‘property,’” including intellectual property.[16] This, paired with increasing international cooperation and immense private investments required in space activities, heightened the need for “simple, uniform and reliable” IP laws.[17]

Yet, the Outer Space Treaty and both national and international IP laws remain largely unchanged.[18] The only United States code specifically regarding IP in space was enacted in 1990 and merely overlaid current patent laws onto the territory of outer space.[19] This rather cookie-cutter approach is not in alignment with the Outer Space Treaty’s stance on “no national appropriation” in space.[20]

As of 2019, it has been 61 years since the first artificial satellite launched into space and 51 years since the signing of the Outer Space Treaty.[21] COPUOS membership has risen from 18 to 92 member states.[22] The Cold War has ended, the Internet was created, and the world has reached new heights of globalization.

Yet, the dilemma remains. The faster people enter space; the faster inventions will be produced as problems are experienced and subsequently solved through technology. The more technology created in space, the higher the need for uniform patent laws.

How will territorial patent laws and non-appropriative space law be reconciled?

 

[1] Jonathan Lim, The Future of the Outer Space Treaty – Peace and Security in the 21st Century, Global Politics Review 4, Oct. 2018, http://www.globalpoliticsreview.com/publications/2464-9929_v04_i02_p072.pdf (last visited Feb. 17, 2019).

[2] Id.

[3] 18 U.S.T. 2410.

[4] Steve Garber, Sputnik and The Dawn of the Space Age, NASA, Oct. 10, 2007, https://history.nasa.gov/sputnik/ (last visited Feb. 17, 2019).

[5] Steven J. Dick, The Birth of NASA, NASA, Mar. 28, 2008, https://www.nasa.gov/exploration/whyweexplore/Why_We_29.html (last visited Feb. 17, 2019).

[6] Committee on the Peaceful Uses of Outer Space, United Nations Office for Outer Space Affairs,

http://www.unoosa.org/oosa/en/ourwork/copuos/index.html (last visited Feb. 17, 2019).

[7] 18 U.S.T. 2410.

[8] Id.

[9] Id.

[10] Protecting intellectual property rights (IPR) overseas, United States Patent and Trademark Office, Jul. 4, 2009, https://www.uspto.gov/patents-getting-started/international-protection/protecting-intellectual-property-rights-ipr (last visited Feb. 17, 2019).

[11] Inside WIPO: What is WIPO?, World Intellectual Property Organization, https://www.wipo.int/about-wipo/en/ (last visited Feb. 17, 2019)

[12] PCT FAQs: Protecting your Inventions Abroad: Frequently Asked Questions About the Patent Cooperation Treaty (PCT) (status on October 2017), World Intellectual Property Organization, https://www.wipo.int/pct/en/faqs/faqs.html (last visited Feb. 17, 2019).

[13] Id.

[14] Intellectual Property and Space Activities: Issue paper prepared by the International Bureau of WIPO, World Intellectual Property Organization, Apr. 2004, https://www.wipo.int/export/sites/www/patent-law/en/developments/pdf/ip_space.pdf (last visited Feb. 17, 2019).

[15] Id.

[16] Id.

[17] Id.

[18] 18 U.S.T. 2410; World Intellectual Property Organization, supra note 12.

[19] 35 U.S.C § 105 (1990).

[20] 18 U.S.T. 2410.

[21] Garber, supra note 4; 18 U.S.T. 2410.

[22] Committee on the Peaceful Uses of Outer Space: Membership Evolution, United Nations Office for Outer Space Affairs, http://www.unoosa.org/oosa/en/ourwork/copuos/members/evolution.html (last visited Feb. 17, 2019).

0

Mind What You “Like” on Facebook

Written By: Ali Mousavi

The connection between a person’s browsing history and his or her own state of health is too tenuous to support plaintiffs’ contention that the disclosure requirements of HIPAA or California Civil Code section 1798.91 apply in the Smith case.[1]

Facebook has been capturing and selling the details of users who browse third-party health sites.[2] Plaintiffs, Winston Smith and two Jane Does, alleged that Facebook violated numerous federal and state laws by collecting and using their browsing data from various healthcare related websites.[3] The suit names Facebook and seven cancer institutions as defendants.[4]

The suit alleges that Facebook’s use of tracking cookies means that any site with a “like” button can potentially send browsing data to Facebook. That includes the site they have visited, any pages within that site, and anything they might enter into the search bar.[5] Plaintiff Smith alleges that Facebook captured the information about his “likes” and sold the information without his consent.[6]

In determining consent, courts determine “whether the circumstances, considered as a whole, demonstrate that a reasonable person understood that an action would be carried out so that their acquiescence demonstrates knowing authorization.”[7] The court cited an excerpt of Facebook’s disclosure that explains its collection and use of information of a person who visits or uses a third-party website that in turn uses Facebook’s services, for example, the “like” button.[8] The Ninth Circuit’s reading of the disclosure is that a reasonable person viewing the pertinent part of the disclosure would understand that Facebook maintains the practices of “(a) collecting its user’s data from third-party sites and (b) later using the data for advertising purposes.”[9] Consequently, the court held that knowing authorization of these practices constitutes the plaintiff’s consent.[10] Therefore, the Ninth Circuit held that the district court properly dismissed the action due to the fact that knowledge is a consent.

Plaintiff also argued that the collected data is subject to more stringent disclosure requirement under the Health Information Portability and Accountability Act of 1996 (“HIPAA”).[11] The court rejected this argument stating that the connection between a person’s browsing history and his or her own state of health is too “tenuous” to be protected under HIPPA.[12] The court reasoning was that the information available on publicly accessible websites “stands in stark contrast” to the personally identifiable patient record and medical histories protected by the statute.[13]

What is left as an option for Smith and other Facebook users is to be mindful of what they “like” on Facebook.

 

[1]Smith v. Facebook, Inc., 745 F. App’x 8 at 9 (9th Cir. 2018).

[2] Emma Woollacott, Man Called Winston Smith Files Lawsuit Against ‘Big Brother’ Facebook, Forbes, Mar. 19, 2016, https://www.forbes.com/sites/emmawoollacott/2016/03/19/man-called-winston-smith-files-lawsuit-against-big-brother-facebook/#1217059c7e28 (last visited Mar. 10, 2019).

[3] Smith, 745 F. App’x 8 at 8.

[4] Woollacott, supra note 2.

[5] Id.

[6] Id.

[7] Smith, 745 F. App’x 8 at 8.

[8] Id.

[9] Id. at 8-9.

[10]Id. at 9.

[11] Id.

[12] Id.

[13] Id.

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Many Cannabis Entrepreneurs “Caught In The Weeds” When Trying To Protect IP

Written by: Danielle Keller

The legal growth, distribution, and commercial sales of cannabis has created an opportunity for many entrepreneurs. However, experts in the industry note several barriers to obtaining protection along with some possible solutions. While it is not impossible to secure IP rights on cannabis-related inventions, there are a “number of factors to consider and a number of complexities.”[1] Some issues the industry is currently running into include:

  • Regulatory complexities: Many state laws that legalize the production and sale of cannabis products conflict with federal law which lists cannabis as a “Schedule 1” drug under the Controlled Substances Act, making possession of cannabis illegal.[2]
  • Troubles with Trademarking: Federal trademark protection is not achievable with the requirement that the thing sought to be trademarked must have a “lawful use in commerce” Under the Federal Trademark Act.[3]
  • Undeveloped Industry: The cannabis industry has been likened to the “wild west”[4] as the industry grows and businesses are working to establish broad protection of their products and processes in gaining a competitive advantage.
  • Patenting a Plant: As with any patent, the inventor bears the burden of proving that their cannabis plant is not a naturally occurring substance as is– rather, they have altered a natural substance so that the invention is new and novel. This is an added level of complexity as developer in this instance must show that the plant can be asexually reproduced.[5]

While this list is not exhaustive, there are certainly a number of factors to consider and a number of complexities to be aware of. Experts urge entrepreneurs to hire an IP attorney early on to navigate these complexities, and to assist in the development of an IP strategy. Businesses should also act fast to submit applications to the USPTO, “I always recommend applying for federal or state trademark registration at the outset of starting a cannabis business,” Jeffrey D. Welsh (founder of Frontera Law Group, a boutique law firm specializing in the legal cannabis industry). [6]

 

[1] Carly Klein, The Complicated Relationship Between IP Law & CannabisIPWatchdog, Nov. 10, 2018, https://www.ipwatchdog.com/2018/11/10/complicated-relationship-ip-law-cannabis/id=102941/.

[2] Id.

[3] Alison Malsbury, The Anatomy of a Cannabis Trademark TTAB DecisionCanna Law Blog, June 16, 2018, https://www.cannalawblog.com/the-anatomy-of-a-cannabis-trademark-ttab-decision/.

[4] Javier Hasse, Protecting Your IP Is (No Surprise) Even Harder in the Cannabis BusinessGreenEntrepreneur, Jan. 2, 2019, https://www.greenentrepreneur.com/article/324845.

[5] Klein, supra note 1.

[6] Hasse, supra note 4.