Final TPP Agreement Reached; Full IP Text Yet to Be Released

After eight years of negotiations, it was reported on Monday, October 5, 2015, that a final agreement to the Trans Pacific Partnership (TPP; Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) was reached. While a final text of the TPP agreement has yet to be released, and is reported to not be available for at least another month, some TPP member state governments have provided some details concerning the TPP’s IP provisions.

Ars Technica reported that New Zealand government officials announced that the TPP agreement will require New Zealand to extend its copyright protection term from life of the author + 50 years to life of the author + 70 years, thereby requiring New Zealand to adopt copyright protections beyond minimum requirements provided in existing international copyright treaties such as the Berne Convention for the Protection of Literary and Artistic Works and the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

Despite the potential expansion of copyright protections under the TPP, such reporting also revealed that the TPP agreement will not require New Zealand to adopt stronger Internet Service Provider (ISP) enforcement provisions against repeat copyright infringers. According to the reporting, New Zealand will not be required to adopt a “six-strike” enforcement program, namely requirements mandating that a New Zealand ISP terminate an infringer’s Internet account after six cases of reported copyright infringement, as established amongst many U.S. ISPs.

It remains unclear whether all TPP member states will be required to adopt these copyright protections, as well as what other mandated IP protections are included in the TPP. Further information about the TPP’s IP chapter and its implications on TPP member states will be reported here once available.

Advertisements

A Tale of Two Meanings: Preventing Cultural Miscommunication in Brand Development and Protection

Co-Authored By Josie Isaacson, Gonzaga University School of Law, J.D. 2015, Magna Cum Laude; Washington State Bar Pending.

Last month, global sportswear company Adidas introduced a new sneaker design featuring a blue and yellow floral pattern. While unsymbolic to most global consumers, the design has a completely different connotation in Sweden. A very similar blue and yellow flower design is the logo for the Sweden Democrats Party (Sverigedemokraterna, SD) – a nationalist party described by some as racist. To add insult to injury, Adidas launched the new shoe design the same week the SD launched an unpopular anti-beggar campaign in Sweden’s capital Stockholm utilizing similar designs, which was shut down due to widespread public criticism.

It should come as no surprise that a product’s name or design may be perceived differently depending on the cultural lens thru which it is viewed. Cultural misunderstandings can have potentially devastating consequences for a company and its products as it can ruin product launches and marketing efforts no matter how much financial resources and time is spent on foreign marketing and promotional efforts.

So how can a business prevent foreign cultural misunderstanding?

The first way to prevent cultural misunderstanding is to understand how it manifests. Typically, it appears in three ways:

  • Color Symbolism. Color symbolism can vary widely from country to country and often can take on unexpected diametric meanings. For example, the color purple in Western cultures such as the United States has a strong connection to royalty, wealth, and honor in the military (e.g. Purple Heart). However, in other cultures such as Brazil and Thailand, purple represents mourning.
  • Design Symbolism. The same global variation in meaning can be shown for design features of a product or trademark, where a design element may be innocuous in one culture but negative in another. For example, a logo with a blue eye in the United States has no apparent meaning by itself. However, in other cultures, a blue eye is commonly linked to the negative meaning of the “evil eye” curse.
  • Translation Differences. Differences in translation between languages are the most common form of cultural misunderstanding. For example, when the American Dairy Association’s popular “Got Milk?” slogan expanded into the Mexican market, the slogan lost its appeal when the Spanish translation of the slogan read “Are you lactating?”

Next, it is important to do your homework, namely prior foreign market research. Any amount of time and money invested in foreign cultural research prior to introducing a new product in a new market can be a lifesaver. Prior research can be anything from a simple Internet search, to performing formal trademark clearance, to even organizing a focus group of people from the target foreign market. Here is a breakdown of these measures:

  • Conduct an Internet Search: An Internet search is by far one of the cheapest research methods to identify cultural differences in words, colors, and symbols in the target market. If Adidas had searched Google.se or a local Swedish search engine, they might have become aware of the flower symbol through searching for “blue and yellow flower” or an image search of similar symbols. However, an Internet search alone will not provide comprehensive results without utilizing other search and research methods.
  • Trademark Clearance: A formal trademark clearance search can expose any potential conflicting registered trademarks being used in the target market. For example, SD has a number of design mark registrations of their flower symbol at both the Swedish Patent and Registrations Office (Patent-och Registreringsverket – PRV) and at the European Union trademark office (Office for Harmonization in the Internal Market (OHIM)). By identifying these conflicts early, a trademark clearance search can not only reduce the risk of cultural miscommunication, but also limit the risk of foreign trademark infringement.
  • Focus Groups: Organizing a focus group can be the best way to get the real feel for how the consumer in the target foreign market will perceive and respond to a new product or service being introduced in the country. Many cultural differences are subtle or varied enough that an Internet or trademark clearance search may not reveal them. While relatively more expensive, obtaining personal cultural knowledge from conducting a local focus group survey can be very informative and help to ensure a product or service overcomes cultural miscommunication.

What’s the Takeaway? While it is unknown what prior research steps Adidas took before introducing the blue and yellow floral design in Sweden, relatively simple prior research measures could have been taken to prevent their failed foreign product launch. As each foreign market has its own sensitivities, there is the potential for cultural miscommunication in every country. Taking steps to research the potential meanings or perceptions to a mark or design prior to launching the product or service abroad will not only save a company money and time but also protect against bad publicity.

A Great Honor in the Trade-Related Twitter World

Today I was recognized by one of my favorite trade and export-related blogs, Shipping SolutionsInternational Trade Blog, as being an Export Thought Leader on Twitter. I was flattered to be listed among other persons and organizations I highly admire in the export world, including Becky Park DeStigter (@IntlEntreprenr), The International Trade Administration (@TradeGov), U.S. Customs & Border Protection (@CustomsBorder), and other distinguished people and organizations.

A link to the blog article can be found here.

Thank you Shipping Solutions for the recognition. It is truly an honor!

A Breakdown of Russia’s New Notice and Takedown Legislation

Last month, Russia formally adopted multiple online copyright enforcement reforms to its Anti-Piracy Laws (Federal Law No. 364-FZ; “Reforms”). Including in these Reforms were streamlined Internet Service Provider (ISP) injunction procedures, the establishment of a digital fingerprinting system to allow for the online identification of copyright protected works, and the establishment of Russia’s first statutory notice and takedown procedures—allowing qualifying persons or entities who have rights to copyright-protected work(s) (collectively, “Rights Holders”) the ability to extrajudicially petition Russian-based website owners, and eventually their ISPs, to remove infringing hosted content.

On its face, Russia’s new notice and takedown procedures provide qualifying Rights Holders a highly needed extrajudicial enforcement tool to fight online copyright infringement in one of the world’s most infringing online markets. In April 2015, Russia was listed on the Office of the U.S. Trade Representative’s (USTR) Priority Watch List in the USTR’s 2015 Special 301 Report, identifying countries who do not provide adequate protection for intellectual property. The 2015 301 Report cited Russia for having “persistent” online copyright piracy problems, as well as being the home of several piracy websites that “damage both the market for legitimate content in Russia as well as in other countries.”

While Russia’s new notice and takedown procedures in many ways mirror similar procedures in other jurisdictions, there are some important differences Rights Holders should be aware of concerning the new procedures. To understand these differences, it is important to first look at the actual notification procedures.

Procedures: Based on an unofficial translation of the Reforms, a Rights Holder must provide the operator of an infringing Russian-based website notification of an alleged infringement including:

  • Name of the legal owner or authorized agent of the copyright protected work(s), including their location, address, passport information, telephone number, fax number, and email address;
  • If an authorized agent, provide an attestation as to his or her representation of the owner(s) of the copyright-protected work(s);
  • Identification of the copyright protected work(s);
  • Identification of the domain name(s), network address(es), and other identifying information of the infringing website in question;
  • Consent to use personal information included in the notification; and
  • The Rights Holder’s claim that the copyright-protected work(s) and being used on the identified website(s) without the owner’s of the work(s) permission or any valid legal grounds.

Within 24 hours of receipt of a Rights Holder’s notification, the website’s operator will need to either:

  • Request additional information from the Rights Holder concerning their notification;
  • Remove the allegedly infringing content; or
  • Provide proof that the website operator is authorized to use the allegedly infringing content.

If the website operator does not restrict access to the allegedly infringing content within 24 hours after receiving the Rights Holder’s notice, the website’s ISP will have three days to block access to that website. If the ISP restricts access to the website in question, the ISP must notify Russia’s telecommunication agency (Federal Service for Supervision in the Sphere of Telecom, Information Technologies and Mass Communications (Roskomnadzor)) of the incident, and such data will be placed in a infringement registry.

Ok, now that we know the procedures, what are the main takeaway points?

Additional Steps May Be Needed: Unlike most national notice and takedown procedure systems, notices under Reforms are to be sent to website operators prior to sending to the website’s ISP. While a website operators and ISP can often be one and the same, e.g. Facebook or Google, Russia’s notice and takedown procedures may require submitting an additional notice to an ISP if a website operator fails to remove infringing content identified by a Rights Holder in a notice under the procedures.

Qualifying Content: Prior to passage of the Reforms, the Anti-Piracy Laws only covered “movies, including movies, TV films”, thereby excluding many other works normally qualifying for copyright protection in Russia and other countries. The Reforms expands qualifying works to “objects of copyright and (or) related rights (except photographic works and works obtained by processes similar to photography.” While these changes expand protection under the Anti-Piracy Laws beyond solely movies to songs, written works and other normally copyright-protected works, it expressly excludes “photographic works.” Excluding photographic works from protection under the new notice and takedown procedures means Rights Holders of such works would need to seek a judicial order to remove infringe content hosted by a Russian-based website, subjecting such Rights Holders to potentially substantial enforcement delays and costs.

Prosecution Requirements: Like the U.S., Russia does not require prosecution (registration) of copyright-protected works in order to utilize the Anti-Piracy Laws’ new notice and takedown procedures.

Country-Specific Restrictions: Although not identified in the Reforms, notifications sent through the Anti-Piracy Laws’ new notice and takedown procedures will likely need to be sent in Russian. Further, to ensure compliance, foreign Rights Holders will likely need to work with qualified Russian counsel to effectively utilize the new notice and takedown procedures. This can have additional costs and time delays for foreign Rights Holders.

What’s The Takeaway? Absent prior statutory provisions, the Reforms’ notice and takedown procedures do provide Rights Holders greater means to protect their works online in Russia. However, due to limitations on qualifying works, and additional and country-specific procedures beyond similar notice and takedown procedures in other countries, it remains to be seen whether Russia’s statutory notice and takedown procedures will become an effective extrajudicial enforcement tool against cross-border online copyright infringement.

Improvement over the Rest or More of the Same? Australia’s Proposed Extraterritorial Online Copyright Injunctive Reforms

I am happy to announce that I have the honor of publishing an opinion article in the European Intellectual Property Review (EIPR) to be released this month. Titled “Improvement over the Rest or More of the Same? Australia’s Proposed Extraterritorial Online Copyright Injunctive Reforms,” the article examines Australia’s recently-implemented copyright injunctive reforms that will allow a rights holder to obtain an injunction against a foreign-based website, and evaluates the reforms in relation to its foreign counterparts in the United States and Europe.

The article will be available on Westlaw and in print form (can be ordered here) within the next couple of weeks. Enjoy!

The Real Damage of Infringing Well-Established Global Brands

In recent weeks, there have been a number of U.S. trademark lawsuits reported in the news that have driven home the true costs of infringing well-known international brands. In one case, German footwear and sportswear behemoth Adidas filed a U.S. federal trademark infringement lawsuit against fashion designer Marc Jacobs (Case No. 3:15-cv-00582) for infringing its internationally renowned three-stripe branding. Particularly, Adidas claimed that Marc Jacobs’ MARC fashion collection line from Autumn/Winter 2014 included a four-stripe design on several pieces of clothing that infringed a number of Adidas’ registered three-stripe designs (U.S. Reg. Nos. 3,029,127, 3,087,329, and 2,278,591 and others).

It was also reported that California winemaker Joseph Phelps Vineyards (JPV) filed a U.S. federal trademark infringement lawsuit against international wine and spirit conglomerate Moët Hennessy (Case No. 2:15-cv-02803) for infringing its established sparkling wine brand DÉLICE, a registered U.S. federal trademark for wines in international class 033 (U.S. Reg. No. 1447846). JPV’s lawsuit followed Moet’s prior attempts to cancel JPV’s DÉLICE registration in a USPTO Trademark Trial and Appeal Board Proceeding (Proceeding No. 92061085), and Moët Hennessy’s launch of a sparkling wine product under the same name.

While neither of these trademark cases raise any unique cross-border IP protection issues, they do show the damaging and often unintended consequences of infringing well-established international brands. Beyond liability and associated costs arising from such lawsuits, the news reporting of these cases have arguably damaged public perceptions towards Marc Jacobs and Moët Hennessy’s goods and services. News reports of Adidas’ lawsuit not only lumped Marc Jacobs together with other “copycat” fashion designs in recent disputes, they also highlighted the fact that Marc Jacobs’ MARC fashion line was being discontinued. Similarly damaging, news reports of JPV’s lawsuit included JPV’s claims that Moët Hennessy’s acts in relation to JPV and its DÉLICE brand were “malicious,” due to Moët Hennessy’s attempts to cancel JPV’s DÉLICE U.S. trademark registration, while subsequently launching a competing wine product under the exact same name.

The damage of Marc Jacobs and Moët Hennessy’s alleged acts go well beyond trademark liability as they directly impact public perceptions towards these companies and their goods and services. News reports on the Adidas lawsuit highlighted Marc Jacobs’s business failings with its MARC line. More damaging is that such reporting also appeared to characterize Marc Jacobs’ alleged acts as copycatting, and thus unoriginal, a label no fashion designer or creative business would want. Similarly, reporting Moët Hennessy’s acts towards JPV as being maliciously aggressive portrays Moët Hennessy as being a senseless multinational business who will stop at nothing to obtain its desired results. This not only portrays Moët Hennessy as a bully, it also paints them as being similarly unoriginal. In both cases, negative reporting of such companies’ alleged acts arguably have done more damage to their business than any single trademark infringement lawsuit could ever do.

What’s The Takeaway? If there is one thing that can be taken away from these cautionary tales is that businesses need to ensure the brands they select and develop, both at home and abroad, are original. Doing so is needed not just to avoid trademark liability, but to more importantly protect their valuable public perception. Taking precautionary measures in selecting and utilizing a brand can help to ensure businesses not only reduce their trademark liability, but effectively protect positive public perceptions towards their goods and services.

Last Minute IP Speaking Event

For those that will be around Seattle this Friday, March 27th, I will be speaking at the Seattle Angels Meetup Group’s Pitch & Demo Night on IP protection for start-ups and entrepreneurs. It will be from 4:00-7:00 P.M at the Good Bar in Pioneer Square. Regardless of your interest in IP, it should be a good networking event for entrepreneurs or anyone working at a start-up.

Hope to see you there!

Presentation on Cross Border IP Protection for U.S. and Canadian Businesses

For those interested in U.S. and Canadian IP protection issues, I will be giving a presentation at the April 2, 2015 King County Bar Association (KCBA) – Intellectual Property Section meeting in Seattle, Washington on U.S. and Canadian cross-border IP protection issues. Particularly, the presentation will cover IP protection issues that U.S. businesses should consider as they expand into Canada, and conversely, IP issues Canadian businesses should consider as they enter the U.S. market.

The April 2nd KCBA IP Section meeting will be held at KCBA’s headquarters at 1200 Fifth Avenue, Suite 700, Seattle, Washington 98101. A webcast of the meeting will be made available to KCBA IP Section members. Further details on the webcast are available here.

Hope you can make it!

USTR Releases Annual Out of Cycle Review of Notorious Markets

It is that time of year again when the Office of the U.S. Trade Representative (USTR) releases its annual report on Notorious Markets—The 2014 Out-of-Cycle Review of Notorious Markets. As we reported on last year, this annual review identifies foreign physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial IP piracy and counterfeiting.

This year’s review identified several foreign social media and file transferring websites, as well as a number of Internet service providers (ISPs), as being notorious markets including those hosted or located in Argentina, the British Virgin Islands, Canada, China, Czech Republic, France, Netherlands, Panama, Philippines, Poland, Russia, San Marino, Spain, Switzerland, Ukraine, the United Kingdom and Vietnam. Additionally, physical markets in Argentina, Brazil, China, Ecuador, India, Indonesia, Mexico, Nigeria, Paraguay, Thailand and Uruguay were also identified as being notorious markets.

The USTR also highlighted a number of recent developments including efforts by certain previously listed Chinese sites to curb piracy activities on their websites, as well as increased enforcement actions by rights holders and government officials to shut down physical and online markets in Brazil, the European Union and Ukraine among others.

What’s The Takeaway? As we have said before, every foreign market has its own IP protection challenges. U.S. businesses that operate abroad or are expanding into new markets should review the USTR’s 2014 Out of Cycle Review of Notorious Markets to help evaluate the IP protection risks associated with particular markets they wish to enter. Doing so can help to ensure that such businesses can better protect their IP assets abroad.

Recap to Online Copyright and Trademark Enforcement in the U.S. and Abroad

For those who did not have a chance to attend my January 20, 2015 presentation Online Copyright and Trademark Enforcement in the U.S. and Abroad, the Washington State Bar Association International Practice Section’s Blog, The Global Gavel, has provided a summary of my presentation. It overviews the main issues discussed and key takeaway points. Those with further questions should feel free to contact me.

A link to the presentation summary can found here.