In this issue the Federal Circuit upholds an attorneys’ fees award in its first ruling since the Supreme Court’s guidance in Octane Fitness v ICON Health & Fitness.
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Anti-cybersquatting service gives brands a boost Accent Media, the registry for the .tickets gTLD, has launched a new anti- cybersquatting service that allows rights holders to contest the purchase of their trademarks as domain names. Domains Watch, which is live for .tickets domains and has already been used by Disney, Ticketfly, Nascar and AXS, holds registered domains in limbo for 30 days to allow rights holders to contest their rights. Rights holders with evidence of their rights can receive their domain names within five days. Registered domain names are published via domains.watch and can be challenged for a fee. Domains Watch assesses the case if an opposition is filed during the 30-day period. Continued on p2 GE loses hyperlink case The US Court of Appeals for the Federal Circuit has tossed an infringement case over patents for hyperlinking, securing a win for advertising company Vibrant Media against General Electric. The appeals court handed down its decision in December, affirming the Patent Trial and Appeal Board’s (PTAB) finding that the claims in both patents were invalid, following instituted inter partes reviews (IPRs). General Electric, which has a digital industrial business that offers cloud computing and software solutions, asserted the patents against Vibrant in April 2012 at the US District Court for the District of Delaware. Google suspended more than 10,000 sites and 18,000 accounts in 2015 for attempting to sell counterfeit goods through its advertising networks. The internet company revealed in a blog post on 21 January that it’s making extensive efforts to combat ‘bad ads’, such as those selling fake goods, through its advertising networks. It has promised to step up the campaign this year. Google disabled almost 800 million ads last year that violated its policies. This was almost 50 percent higher than the 524 million takedowns in 2014. “Bad ads can ruin your entire online experience, a problem we take very seriously,” wrote Sridhar Ramaswamy, senior vice president of ads and commerce at Google. “That’s why we have a strict set of policies for the kinds of ads businesses can run with Google—and why we’ve invested in sophisticated technology and a global team of 1,000+ people dedicated to fighting bad ads.” “Last year alone we disabled more than 780 million ads for violating our policies—a number that’s increased over the years thanks to new protections we’ve put in place.” Using algorithms and human reviewers, Google targeted counterfeiters, pharmaceuticals, weight loss scams and phishing last year, blocking more than 12.5 million ads that violated its healthcare and medicines policy, and preventing nearly 7,000 phishing sites from using its ad networks. Google promised to step up its campaign this year, by further restricting what can be advertised as effective for weight loss, and adding new protections against malware and bots. Google fights fakers’ bad ads Continued on p2 Continued on p2 The primary source of global intellectual property internet news and analysis ISSUE084 02.02.2016 www.ipprotheinternet.com
Transcript
Anti-cybersquatting service gives brands a boost
Accent Media, the registry for the .tickets gTLD, has launched a new anti-cybersquatting service that allows rights holders to contest the purchase of their trademarks as domain names.
Domains Watch, which is live for .tickets domains and has already been used by Disney, Ticketfly, Nascar and AXS, holds registered domains in limbo for 30 days to allow rights holders to contest their rights.
Rights holders with evidence of their rights can receive their domain names within five days.
Registered domain names are published via domains.watch and can be challenged for a fee. Domains Watch assesses the case if an opposition is filed during the 30-day period.
Continued on p2
GE loses hyperlink caseThe US Court of Appeals for the Federal Circuit has tossed an infringement case over patents for hyperlinking, securing a win for advertising company Vibrant Media against General Electric.
The appeals court handed down its decision in December, affirming the Patent Trial and Appeal Board’s (PTAB) finding that the claims in both patents were invalid, following instituted inter partes reviews (IPRs).
General Electric, which has a digital industrial business that offers cloud computing and software solutions, asserted the patents against Vibrant in April 2012 at the US District Court for the District of Delaware.
Google suspended more than 10,000 sites and 18,000 accounts in 2015 for attempting to sell counterfeit goods through its advertising networks.
The internet company revealed in a blog post on 21 January that it’s making extensive efforts to combat ‘bad ads’, such as those selling fake goods, through its advertising networks. It has promised to step up the campaign this year.
Google disabled almost 800 million ads last year that violated its policies. This was almost 50 percent higher than the 524 million takedowns in 2014.
“Bad ads can ruin your entire online experience, a problem we take very seriously,” wrote Sridhar Ramaswamy, senior vice president of ads and commerce at Google.
“That’s why we have a strict set of policies for the kinds of ads businesses can run
with Google—and why we’ve invested in sophisticated technology and a global team of 1,000+ people dedicated to fighting bad ads.”
“Last year alone we disabled more than 780 million ads for violating our policies—a number that’s increased over the years thanks to new protections we’ve put in place.”
Using algorithms and human reviewers, Google targeted counterfeiters, pharmaceuticals, weight loss scams and phishing last year, blocking more than 12.5 million ads that violated its healthcare and medicines policy, and preventing nearly 7,000 phishing sites from using its ad networks.
Google promised to step up its campaign this year, by further restricting what can be advertised as effective for weight loss, and adding new protections against malware and bots.
Google fights fakers’ bad ads
Continued on p2 Continued on p2
The primary source of global intellectual property internet news and analysis
ISSUE08402.02.2016w w w. i p p r o t h e i n t e r n e t . c o m
An Office for Harmonization in the Internal Market study published in January revealed that mainstream advertising made up almost half of the adverts displayed on 14,000 webpages suspected of intellectual property rights infringement.
More than 1,500 unique brands were identified during the study, with mainstream advertising making up 46 percent of all ads collected.
Anti-cybersquatting service gives brands a boostContinued from p1
Domains Watch is a first-come, first-served system, so two applications for the same domain name will always go the original applicant provided it can provide evidence of its rights.
Steve Machin, co-CEO of Accent Media, commented: “Domains Watch represents an important step in the evolution towards creating an open and safe space on the internet for rights holders and the rights protection community.”
“Our early successes working with some of the world’s leading brands have demonstrated that this is a truly invaluable offering.”
General Electric loses hyperlink caseContinued from p1
General Electric claimed that Vibrant’s In-Text product, which connects keywords in text to related content through hyperlinks, infringed the patents.
Vibrant’s IPR petitions secured a stay of the district court litigation, and the successful invalidations of the patents by the PTAB, affirmed by the Federal Circuit in December 2015, mean the case has now been tossed.
Kevin Littman, partner at Foley & Lardner, which represented Vibrant in the case, said:
“Vibrant Media always believed that the patents were invalid, and the IPR process confirmed that.”
“The case was a good example of how IPRs can be an effective strategic tactic when faced with a patent infringement lawsuit.”
IBM sells patents to Western Digital
Data storage solution company Western Digital has acquired more than 100 patents from IBM.
Western Digital has also signed cross-licence agreement with IBM, which was granted 7,355 patents in the US last year.
According to its statement, Western Digital expects the patent acquisition and cross-licence to strengthen its technology leadership position, which is already backed up by a portfolio of more than 10,000 patents.
Western Digital owns patents in distributed storage, object storage and emerging non-volatile memory.
Further terms of the deal were not disclosed.
Mike Cordano, president of Western Digital, said: “This agreement reflects our focus on innovation.”
UK Intellectual Property Office opens cross-border portability consultation
The UK Intellectual Property Office (IPO) is seeking feedback on the EU’s key Single Digital Market proposal to create a cross-border portability right for content.
Feedback is being sought on how the cross-border portability right, which would allow consumers to take their digital files or online subscriptions from one EU member state to another, should be shaped in the enacting regulation.
Latest NewsThe Federal Circuit upholds an attorneys’ fees award in its first ruling since the Supreme Court’s guidance in Octane Fitness v ICON Health & Fitness p4
Latest NewsApple, Amazon, Microsoft and Walmart are among the Fortune 100 companies to have registered a .sucks domain name p4
Latest NewsSamsung’s bid to have its design patent infringement case against Apple heard by the US Supreme Court is attracting a lot of support p5
Alibaba UpdateBrand owners are feeling both the pull and the push of Alibaba’s ecommerce platforms in China p7
People MovesArrivals and departures at ICANN, Marshall Gerstein and Bird & Bird p10
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As part of the Digital Single Market initiative, the European Commission proposed the cross-border portability right to make it “easier for Europeans to access and use content legally”.
The European Commission aims to have the regulation for the cross-border portability right in force by 2017. It would become effective in all 28 members states.
The UKIPO’s consultation revealed that the proposed regulation would only apply to paid subscription services and those that have verification mechanisms in place, as well as current contracts and acquired rights, to remove the need for lengthy contract renegotiations between licensees and rights holders.
Comments must be provided to the UKIPO by 12 February.
Federal Circuit backs reading of Octane Fitness v ICON Health & Fitness
The US Court of Appeals for the Federal Circuit has upheld an attorneys’ fees award in its first ruling since the Supreme Court’s guidance in Octane Fitness v ICON Health & Fitness.
Lumen View was told to pay attorneys’ fees to FindTheBest because its patent infringement lawsuit was baseless, although the double award issued by the lower court was not appropriate and must be reassessed, the Federal Circuit ruled on 22 January.
Start-up FindTheBest, which operated a search service that uses a comparison feature called Assist Me, was among almost 20 defendants accused of infringing Lumen View’s patent.
The district court awarded attorneys’ fees to FindTheBest after invalidating Lumen View’s patent, which claimed a bilateral matching method that even “the most basic” pre-suit investigation would have shown was not infringed.
The frivolous and objectively unreasonable lawsuit was held to be exceptional under the Supreme Court’s 2014 Octane Fitness v ICON Health & Fitness ruling, which said that an ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position, or the unreasonable manner in which the case was litigated.
The Supreme Court ruled: “A district court may award fees in the rare case in which a party’s unreasonable conduct—while not necessarily independently sanctionable—is
The UK government confirmed the whitepaper’s release in a monthly newsletter highlighting updates on the Chinese IP environment.
Tencent said it has dealt with more than 13,000 cases of IP infringement on WeChat, covering both public and private accounts.
Trademark infringement cases were most the common complaint for both types of account, but the majority were made against public accounts, with access to private accounts restricted to invited users only.
The China-Britain Business Council has also announced that it is launching an IP cooperation initiative with Tencent covering the WeChat platform.
The council teamed up with Alibaba last year to great effect, removing more than £8 million worth of counterfeit versions of UK products from the company’s ecommerce platforms, which include Taobao.
Brands flock to .sucks gTLD
Apple, Amazon, Microsoft and Walmart are among the Fortune 100 companies to have registered a .sucks domain name.
The gTLD’s registry, Vox Populi, revealed in a blog post on 18 January that 55 prominent brands from the Fortune 100 list, which ranks the top US-based companies by revenue, have all signed up for their own domain name, including six from the top 10.
Walmart, Apple, Chevron, General Motors, Exxon Mobil and Ford Motor, which occupy six of the top 10 spots in the Fortune 100 list, have all picked up the .sucks domains containing their chief trademarks, although they currently do not host any webpages.
Vox Populi commented in the blog post: “The top 10 [Fortune 100 companies] are well-known to most people. Beginning this year with Walmart and running to CVS Health, it is a diverse group, reflecting the broad reach of business.”
“Each has a history of making the right decision most of the time. We’d like to think registering a .sucks domain name is another one of those.”
Instagram wants deal upheld
Instagram has launched legal proceedings in the US in a bid to have a 2011 domain name purchase agreement upheld and block a “sham” lawsuit in China.
Facebook-owned Instagram has asked for a declaratory judgement from the US District
nonetheless so ‘exceptional’ as to justify an award of fees.”
“The second category of cases in which the Federal Circuit allows fee awards is also too restrictive. In order for a case to fall within this second category, a district court must determine both that the litigation is objectively baseless and that the plaintiff brought it in subjective bad faith.”
“But a case presenting either subjective bad faith or exceptionally meritless claims may sufficiently set itself apart from mine-run cases to warrant a fee award.”
Ruling on 22 January, the Federal Circuit upheld the district court’s reading of Octane: “Even if Lumen View’s litigation conduct was not quite sanctionable, the court reasonably determined that the case was exceptional.”
“The allegations of infringement were ill-supported, particularly in light of the parties’ communications and the proposed claim constructions, and thus the lawsuit appears to have been baseless.”
The district court also doubled the fee award in a bid to deter Lumen View and other patent assertion entities from a “predatory strategy” that aims to “extract a nuisance settlement” through “threats to make the litigation expensive” and “frivolous” claims.
But the Federal Circuit took issue with the way the district court calculated the award amount, because it “did not properly explain its determination”.
The Federal Circuit: “Deterrence is not generally a factor to be considered in determining a reasonable attorney fee. Although deterrence may be a consideration when determining whether to award attorney fees, it is not an appropriate consideration in determining the amount of a reasonable attorney fee, which is principally based on the lodestar method.”
The award was vacated and returned to the district court for further consideration.
WeChat is latest Chinese innovation to fight counterfeit goods online
The owner of Chinese messaging app WeChat has released a whitepaper highlighting the efforts it has taken to protect rights owners from infringement on the platform.
WeChat owner Tencent’s whitepaper explained how it’s tackling intellectual property infringement among its more than 440 million users.
Latest News
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Court for the Northern District of California that its five-year-old deal to purchase instagram.com from a Chinese family is valid. The case was filed on 13 January.
The photo sharing service paid $100,000 in 2011 for instagram.com, which was owned by Murong Zhou of China.
Zhou, along with other family members, has made a business out of squatting on domain names containing famous trademarks, including Instagram’s, according to the district court complaint.
Instagram has succeeded in winning another 21 domain names from Zhou through Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings.
The panellist called Zhou a “known cybersquatter” in the judgement ordering transfer of the domains.
But Zhou has so far failed to transfer the domain names, according to the complaint, and she claimed during the UDRP proceedings that she was induced by Instagram’s intermediary to sell instagram.com for an unreasonably low price.
Members of Zhou’s family filed a “sham” complaint in the Shenzen Futian Court against Instagram in December 2015, claiming the 2011 agreement is invalid because she did not have the authority to sell the domain name. They want the deal to be torn up and instagram.com returned.
Instagram wants the 2011 agreement to be upheld and the California district court to find Zhou and her family in violation of the Anti-cybersquatting Consumer Protection Act, as well as damages of up to $100,000 for each of the 21 infringing domain names.
AS Roma fan site gets to keep asroma.us domain name
Italian football club AS Roma has lost a bid to retrieve a confusingly similar domain name because it is used to host a non-commercial fan site.
National Arbitration Forum panellist Houston Putnam Lowry ruled on 11 January that US resident Simone Giacometti did not register asroma.us in bad faith.
Giacometti registered the domain name in 2010 as an online base for the Los Angeles AS Roma fan group.
But the website has not been updated in several years, with the fan group, which has more than 200 members, predominantly using a Facebook page instead.
Patent Act “raises serious constitutional concerns, is a misreading of the statute, and is dangerous to the technology industry”.
Section 289 holds that an infringer is “liable to the owner to the extent of [its] total profit”.
“The [Federal Circuit’s decision] interprets Section 289 to expand the exclusive right granted by a design patent well beyond the powers granted to Congress by the Progress Clause. The Progress Clause grants Congress the power to give an inventor ‘the exclusive right’ to her ‘discoveries’.”
“By interpreting the term ‘article of manufacture’ to apply only to articles sold to ‘ordinary purchasers’, the Federal Circuit’s decision gives the inventor of a ‘discovery’ claimed in a fairly narrow design patent the right to the profits made on a complex device that is the result of literally thousands of separate, patented, innovations.”
SCOTUS throws book at petitioner
Supap Kirtsaeng, who resold textbooks he purchased in Thailand to US customers via eBay, has lost his bid to have publisher John Wiley & Sons pay his attorneys’ fees.
The US Supreme Court dismissed Kirtsaeng’s appeal on 15 January, holding that lower circuit courts were not split over how handle attorneys’ fee awards.
John Wiley filed suit against Kirtsaeng in 2012, claiming his importation of the books was an infringement of its rights.
But in March 2013, the Supreme Court held that the first sale doctrine applies to copies of a copyrighted works lawfully made abroad. The Court of Appeals for the Second Circuit then reversed its earlier decision that he did infringe.Kirtsaeng later sought to get his attorneys’ fees paid, but failed at district court and the Second Circuit.
He appealed to the Supreme Court, arguing that his case had been handled at a different circuit court, his fees would have been awarded. The Second Circuit assessed Wiley on “objectively unreasonable” grounds, finding that Wiley’s claims were not and therefore did not need to pay Kirstsaeng’s fees.
But in the latest decision, the Supreme Court said the petition “tries unsuccessfully to repackage various courts applications of a fact-intensive discretionary standard as an extensive series of circuit splits”.
The court said the objectively reasonable analysis is not a departure from other circuits, but is in line with them.
AS Roma wanted the domain name transferred, because it incorporates its trademark and is identical or confusingly similar.
The football club also claimed that asroma.us “is so obviously connected” to AS Roma that its registration by a third party “suggests opportunistic bad faith”.
“It is inconceivable that Giacometti could make any active use of the disputed domain names without creating a false impression of association with AS Roma.”
But panellist Putnam Lowry ruled that although asroma.us is identical or confusingly similar to AS Roma trademarks, Giacometti did not register the domain name in bad faith.
“Giacometti did not register or use the disputed domain name in bad faith … because Giacometti has rights or legitimate interests in the asroma.us domain name as a non-commercial fan club.”
Samsung gains support for Supreme Court bid from CCIA members
Half a dozen amicus briefs have been filed in support of Samsung’s bid to have its design patent infringement case against Apple heard by the US Supreme Court.
The Computer & Communications Industry Association (CCIA), Facebook, eBay Google and a string of other tech companies, as well as consumer advocacy groups and academics, filed amicus briefs this month calling for the Supreme Court to overturn the Court of Appeals for the Federal Circuit’s May 2015 decision in Samsung v Apple.
The Federal Circuit backed Apple and found that Samsung had infringed three design patents with its Galaxy smartphones, among others. An en banc rehearing request was knocked back in November.
Samsung was found by a jury to have infringed three ‘ornamental’ design patents and was eventually ordered to pay $980 million in damages. It has already paid $548 million of that sum to Apple. But Samsung still disputes whether it really infringed the patents and wants the Supreme Court to revisit this area of patent law for the first time “in more than 120 years”.
The amicus briefs back Samsung’s argument that the Federal Circuit erred by allowing the original jury to award Samsung’s entire profits from the sale of smartphones found to contain the patented designs.
The CCIA argued in its brief that the Federal Circuit’s interpretation of Section 289 of the
Opposites don’t always attractBrands are fee l ing the pul l and the push of A l ibaba’s p lat forms
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Nestlé’s decision to partner with Alibaba points to the increasing importance of the Chinese ecommerce giant as a brand building tool in China.
The multinational food and beverage company, which failed to trademark the KitKat shape in the UK on 20 January, announced more positive news the day before in the form of the Alibaba partnership, which will see Nestlé sell products through Tmall and Taobao, all in a bid to connect with Chinese retailers and consumers, particularly in China’s hard-to-reach rural areas.
Sebastien Szczepaniak, vice president of group sales and e-business at Nestlé, said the company’s online sales are growing more than 25 percent per year, highlighting the importance of an online presence to the bottom line.
“Moreover, offline purchases are increasingly influenced by what we see online, so brand building has gone beyond having good television advertising and nice packaging. Our ability to build brands on any touchpoint, be it digital or analogue, is vital.”
For any brand wanting to build a presence in China, Alibaba’s ecommerce platforms are the places to do it. According to the company’s Q4 2015 financial results, its platforms had 407 million active buyers, an increase of 21 million over the prior quarter.
That’s a huge portion of the Chinese consumer market, which is projected to remain one of the world’s fastest growing, reaching
$6.5 trillion in annual private consumption by 2020, according to a joint study by The Boston Consulting Group and the Alibaba-owned AliResearch Institute.
At the same time, private online consumption is projected to increase 20 percent annually up until 2020, while growth in retail sales through brick-and-mortar stores is expected to reach a measly 6 percent. Ecommerce will drive an estimated 42 percent of total consumption growth—to $1.6 trillion, according to the study. Mobile ecommerce, which already accounts for 51 percent of all online sales in China, compared with a global average of 35 percent, will grow even faster, placing Alibaba and its stable of online and mobile platforms at a distinct advantage.
But where there are opportunities for brands, there are also opportunities for copycats, and counterfeiters have proven to be a scourge across Alibaba’s ecommerce platforms—one that is proving increasingly difficult to purge, much to the chagrin of those brands with so much to gain, because they are contending that it’s Alibaba that’s not doing enough.
Indeed, the growing frustration with Alibaba’s anti-counterfeiting efforts became apparent when responses to the US Trade Representative’s call for comments on its (USTR) 2015 Notorious Markets list were made public.
Chief among Alibaba’s critics was the American Apparel & Footwear Association (AAFA), whose president and CEO, Juanita Duggan, said
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in a statement late last year: “Our members face enormous difficulty working with [Alibaba platform] Taobao in solving the problem of counterfeits, meanwhile illegal merchandise continues to proliferate.”
“These problems persist despite our repeated efforts to work with them. The sheer volume of counterfeits on the site as reported by our members, along with the company’s unwillingness to make serious reforms is why, after three years, we feel it is necessary to recommend that Taobao be added back to the list and that the US elevate the pressure on them to make substantive, measurable improvements to the counterfeit problem.”
The public version of the AAFA’s comments to the USTR described Taobao’s takedown programmes as “incomprehensible, difficult to use, highly subjective, and do not often result in permanent takedowns”, despite more than three years of reforms put into place since Taobao’s first inclusion in the Notorious Markets list in 2012.
Alibaba enacted various measures over three years to protect IP on the likes of Taobao, including the creation of online platforms for rights holders to register IP rights and submit takedown requests, and employing thousands of people to work on takedowns, deal with consumer complaints, monitor listings, and partner with law enforcement agencies.
But it’s unclear what results these efforts have yielded, largely because Alibaba does not publish the relevant figures, leaving the AAFA unsatisfied that Alibaba has really done enough to warrant Taobao’s continued absence from the Notorious Markets list.
Alibaba remained adamant that it’s doing all it can to protect IP on its platforms, arguing in rebuttal comments issued on 12 October: “The refinements that we have introduced to our system in recent years already address some of the AAFA’s concerns.”
Biting back, the AAFA claimed the systems and programmes that Alibaba “cites as progress are the very programmes our members have cited as being incomprehensible, difficult to use, and highly subjective”.
“These programmes are not nearly robust enough to handle the likely volume of counterfeits on the site. While Alibaba provided a long list of activity it has undertaken, the end result is still a system that does not result in permanent takedowns or a market that contains fewer counterfeits. Any search of Taobao on any day, including this morning, reveals dozens and dozens of listings of AAFA member brands at absurdly low prices—a strong indication that such merchandise is counterfeit.”
Getting to the heart of the issue, the AAFA added in its rebuttal comments that Alibaba has failed to respond to a request for a high-level meeting to discuss an anti-counterfeiting strategy, a charge that the company denied and flipped, laying the blame at the trade association’s feet: “To resolve these issues, both parties need to communicate directly with each other. However, for the past several months, we have repeatedly requested the AAFA to have a direct substantive discussion without success.”
“Insisting on only CEO level meetings does not indicate a willingness to truly sit down and discuss substantive issues; it seems directed more at achieving publicity than at building a global system to fight counterfeits and protect the interests of rights holders. If they are willing to have a substantive and working discussion with Alibaba directly, so are we.”
Despite the AAFA’s concerns, Taobao remained off the USTR’s 2015 Notorious Markets list, although the Alibaba platform did receive an honourable mention that was loaded with warnings.
“Brand owners continue to report that Alibaba platforms, particularly Taobao, are used to sell large quantities of counterfeit goods,” reported the USTR.
“Alibaba reported that it has added new enforcement features since the 2014 list,” according to the USTR, “including a good-faith product takedown procedure, a three- and four-strikes penalty system, and an English-language version of the TaoProtect portal to register IPR and submit takedown requests.”
“Some rights holders also report good working relationships and cooperation with Alibaba’s enforcement teams. However, it is unclear what effect these procedures are having on the overall prevalence of counterfeit goods on the Alibaba platforms, particularly Taobao. Furthermore, submissions this year from trademark holders in several industries do not report improvement of the underlying problem.”
The USTR is “increasingly concerned” by rights holders’ reports that Alibaba’s enforcement programme is too slow, difficult to use and lacks transparency.
“The USTR does not re-list Taobao or Alibaba at this time but it encourages the company to enhance cooperation with all stakeholders to address ongoing complaints. Given the size and the scale of Alibaba’s platforms, stronger and more efficient systems for addressing right holders’ concerns should be undertaken without delay,” explained the USTR.
These steps should include simplifying Taobao’s processes for rights holders to register and request enforcement action, making its good faith takedown procedures generally available, and reducing its timelines for takedowns and issuing penalties for counterfeit sellers.
“The USTR will continue to monitor the situation in the coming year for evidence of whether the new enforcement changes are demonstrably effective in addressing ongoing concerns.”
Although apparently unrelated to international pressure from the US, Alibaba took a clear step in the required direction by appointing Matthew Bassiur as head of global IP enforcement in December. He joined the Chinese ecommerce company from Pfizer, where he oversaw the pharma company’s anti-counterfeiting operations. Prior to Pfizer, he was counsel for IPR enforcement at Apple.
In his new role, Bassiur will lead a team that works with international brands and retail partners, industry associations, government regulators, law enforcement and other organisations to advance Alibaba’s anti-counterfeiting and IP rights protection efforts.
“Bassiur’s appointment is the latest step in Alibaba Group’s comprehensive and industry-leading efforts to fight counterfeits,” commented Jack Ma, executive chairman of Alibaba.
“Counterfeiting is a problem that challenges all forms of distribution, whether in ecommerce or offline retail. We will continue to be relentless in our long-term commitment to protect both consumers and intellectual property rights owners, and we call on all companies in our industry to join our fight against bad actors,” added Ma.
The solution to this standoff is likely a mixture of approaches—Alibaba can probably do more to stop counterfeiting on its platforms, while brands must do whatever they can to protect their rights, ideally in partnership with the relevant platform provider, so that any enforcement is as effective as possible. Further deteriorations in the relationships between Alibaba and brands would be the unacceptable outcome here, so the duty lies with all parties to work together to combat the counterfeit problem. IPPro
We expect more than 9,500 brand management, trademark and other IP professionals from all over the world to register for the 2016 INTA Annual Meeting! Don’t miss this opportunity to be part of the world’s biggest brand owners meeting and take advantage of hundreds of educational sessions, business strategy meetings and networking opportunities.
Meeting highlights include:
• More than 300 educational offerings including 55 general educational sessions, more than 225 table topics, users’ group meetings with leaders from several national and regional trademark offices, a 2-day Course on International Trademark Law and Practice, Mediation Training, a new Academic Series, Career Development Day, the Trademark Administrators Brunch and more.
• Opportunities to collect CLE credits from 50 U.S. states and CPD points from several international law societies.
• Special offerings for IP professionals at corporations of all sizes, including the In-House Practitioners Workshop and Luncheon, the In-House Practitioners reception and 10 Industry Exchanges.
• Hassle-free ways to conduct business in the Orange County Convention Center by booking one of 3 different types of meeting spaces.
• More than 30 official networking events, including a new exclusive INTA Concert at the House of Blues, the Sunday evening Opening Ceremony and Welcome Reception, 17 paid networking excursions, Speed Networking, Annual Meeting Registrant First Time Orientation and Reception, and the Grand Finale.
• Exhibition hall with more than 100 exhibitors and numerous sponsorship opportunities.
• Over 100 committee, project team and Global Advisory Council meetings for the new committee term (2016–2017).
• Numerous meeting conveniences just for you including complimentary shuttle services at INTA hotels and the Orange County Convention Center!
Fadi Chehadé, president of the Internet Corporation for Assigned Names and Numbers (ICANN), will become senior advisor to the executive chairman of the World Economic Forum.
The president and CEO of ICANN will join the World Economic Forum on 1 April to head up its Future of the Internet Initiative.
The initiative will address digital trade, cyber crime and policies for facilitating internet access.
Chehadé commented: “I am grateful for the opportunity to contribute to the World Economic Forum’s work, advising the Global Challenge Initiative on the Future of the Internet.”
Chehadé announced his plans to leave ICANN in May 2015. He joined ICANN in 2012, replacing former president Rod Beckstrom.
Klaus Schwab, founder of the World Economic Forum, said: “The forum’s work in this area will benefit from Chehadé’s vision in its
Industry appointmentsArrivals and departures at ICANN, Marshall Gerstein and Bird & Bird
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efforts to advance progress through multistakeholder cooperation on some of the practical economic, social and security issues facing the international community.”
Vinson & Elkins has promoted Erin Ator Thomson to counsel.
Based in the firm’s Austin office, she focuses on structuring and negotiating IP and technology transactions, counselling, and litigation.
Eleven other promotions to counsel were made across the firm, including members in the financial, M&A and real estate sectors.
Scott Wulfe, managing partner of Vinson & Elkins, said: “We are excited to announce the promotion of these talented and deserving lawyers.”
Bird & Bird has recruited a team of patent attorneys for its office in Hamburg.
The team, led by partners Felix Landry and Felix Harbsmeier, join from Uexküll & Stolberg.
Landry focuses his practice on patent prosecution, oppositions and appeals proceedings.
Harbsmeier is active in the fields of electronics, physics and engineering and has worked on patent proceedings before the German and European Patent Office.
Associates Moritz Neidel and Malte Frese have also joined Bird & Bird.
Christian Hamsen, head of the Germany intellectual property group at Bird & Bird, said: “We are delighted with the competent strengthening of our successful patent attorney team.”
Holland & Hart has added new attorney Teague Donahey to its offices in Boise, Idaho.
He arrives from Sidley Austin, where he served as partner.
Donahey handles high technology patent litigation disputes on behalf of major companies.
He has worked on technologies related to software, computer hardware and telecommunications.
Brian Hansen, administrative partner at Holland & Hart’s Boise office, said: “Donahey’s IP litigation experience accentuates our existing patent prosecution and transactional IP capability in Boise.”
Slava Elkin has joined Marshall, Gerstein & Borun as partner.
He previously served as a senior software engineer at a telecommunications company.
Elkin focuses on US and foreign patent prosecution in software and electrical engineering.
He has helped clients develop patent prosecution in digital mapping, wireless communications and 3D modelling.
Two life sciences partners also joined Marshall Gerstein with Elkin.
Jeffrey Sharp, managing partner of the firm, said: “Marshall Gerstein celebrates their tireless efforts in providing high quality service to the firm’s clients.” IPPro
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