The United States Patent and Trademark Office (USPTO) has announced a new Patent Public Search tool (the “Search tool”). The new Search tool promises to provide more convenient, remote, and robust full-text searching of all U.S. patents and published patent applications.

The USPTO claims that the new Search tool combines the capabilities of four existing search tools scheduled to be retired in September 2022. Furthermore, the USPTO worked to improve the user friendliness of the Search tool. The alleged benefits include providing multiple layouts, highlighting functions, tagging functions, notes functions, and improving the quality of search results, etc.

To aid users with the launch of the new Search tool, the USPTO also introduced a new Patent Public Search webpage. The webpage includes FAQs, training resources, and other information related to the new Search tool.

Press Release here.

On 3 February, Nike sued StockX in U.S. Federal Court for trademark infringement in relation to StockX’s sale of non-fungible tokens (“NFTs”) tied to images of Nike shoes.

StockX operates an online platform for reselling of sneakers and other goods.  Nike alleges that buyers of the StockX NFTs were told that the tokens would eventually be redeemable for physical shoes.  In addition to trademark infringement, Nike has claimed that “inflated prices and murky terms of purchase and ownership” surrounding the NFTs have hurt Nike’s reputation.

Nike has plans to release “a number of virtual products” of its own following its acquisition of digital art studio RTFKT in December.

Nike’s suit comes less than a month after handbag maker Hermès sued artist Mason Rothschild, also in U.S. Federal Court, for trademark infringement, after Rothschild advertised and sold a line of digital handbag NFTs under the name MetaBirkin.

In an open letter to Hermès, Rothschild has asserted First Amendment protection for the NFTs, stating that Metabirkins are “a playful abstraction” and “a commentary on fashion’s history of animal cruelty.” Hermès has pushed back on this assertion, stating in its complaint: “Although a digital image connected to an NFT may reflect some artistic creativity… the title of ‘artist’ does not confer a license to use an equivalent to the famous BIRKIN trademark…”.

For the full stories, see here and here.

The Canadian Federal Court upheld a trial decision that simpler works have a lesser ambit of copyright protection:

The Pyrrha Designs were relatively simple copyrighted works; it followed that there was a limited ambit of copyright protection. Put another way, “the simpler a copyrighted work is, the more exact must be the copying in order to constitute infringement.” (para. [53]).

Read more here, and the full decision here.

The World Intellectual Property Organization (“WIPO”) has recently announced a new global awards program directed towards small and medium sized enterprises. The program aims to recognize the individuals and enterprises that are making a positive impact at home and beyond their borders. Any small or medium sized enterprise from any one of WIPO’s 193 member states may self nominate for such award by 14 March 2022.

Learn more about it here.

In Janssen Inc. v. Sandoz Canada Inc., 2021 FC 1265, the Federal Court interpreted the scope of section 16.1 of the Patent Act, the recently enacted provision concerning patent agent privilege.

Section 16.1 provides that communications between a patent agent and their client that are intended to be confidential and are made for the purpose of seeking or giving advice relating to the protection of an invention are protected by patent agent privilege.

In interpreting section 16.1 in this decision, the Court held that patent agent privilege does not apply to all communications between a patent agent and their client, but only to communications related to seeking or giving advice in matters “relating to the protection of an invention” (at paragraph 14). The Court expressly concluded that patent agent privilege therefore does “not extend to an analysis as to whether a product infringes third party patent rights”, i.e. a non-infringement opinion (at paragraph 18). However, whether “an infringement opinion of one’s own patent” was protected by patent agent privilege was notably undecided in this decision (at paragraph 18).

Find the full decision here,  courtesy of IPPractice, and to read more about this decision please see Sufficient Description.

YouTube, the second most visited website in the world (after only its parent, Google), is currently facing a lawsuit regarding the company’s copyright protection program. The action was commenced by Maria Schneider, a musician and advocate for musicians’ rights and copyright, and Pirate Monitor Ltd., an anti-pirating (software, not boats) organization. They brought a class action against the video giant last year on behalf of a proposed class of small copyright owners, alleging that YouTube’s copyright systems prioritizes enforcing the rights of large companies while allowing smaller content creators’ content to be infringed.

On the 13th December 2021, YouTube brought a motion to dismiss to the San Francisco federal court, alleging the plaintiffs are “hiding the ball,” repeatedly changing their claims, prejudicing the defendant’s ability to defend. Allegedly, the plaintiffs did not identify all the works they are suing over, adding new copyright to the case “whenever they please.” YouTube claimed a “potpourri of pleading problems” in the Plaintiffs’ First Amended Complaint, including an alleged failure to establish ownership of at least 13 claimed copyrighted works.

Pirate Monitor Ltd has since voluntarily dismissed its claims with prejudice, amid allegations the company fraudulently attempted to gain access to YouTube’s Copyright System. The alleged actions include hiring individuals in Pakistan to upload thousands of copied videos, then reporting the videos for a DCMA takedown, sometimes before the videos got even a single view. YouTube is still pursuing counterclaims against Pirate Monitor and its founder, Gábor Csupó, arguing the company is simply his alter-ego.

The hearing is currently scheduled for 10 March 2022.

On 29 November, Lululemon Athletica Canada Inc. (“Lululemon”) filed to sue Peloton Interactive Inc. (“Peloton”) in California alleging infringement of six different US design patents in a high-profile legal battle in the athletic leisure apparel space. Peloton has pre-emptively filed on 24 November in New York.

The situation is not always this tense between the two companies. In 2016, Lululemon and Peloton launched a co-branding relationship, with Lululemon providing Peloton with apparel, and Peloton selling the merchandise with its own trademark alongside Lululemon’s logo.

However, earlier this year, Peloton ended the relationship and shortly after announced its own private label, Peloton Apparel. In response, Lululemon accused Peloton of copying its designs and pushing out copycat products.

Legal experts suggest that the infringement claim may be difficult to prove because subtle variations could be enough for a court to dismiss complaints of infringement. However, the legal experts feel that Lululemon has a strong case with its allegation of unfair competition especially given the timing of Peloton’s actions.

For the full story, read here.

The Canadian Intellectual Property Office (CIPO) has launched a new online national entry request tool for Canadian national phase entries of international PCT patent applications. The new tool was introduced as part of CIPO’s overall IT modernization. Advantageously, national phase entry requests no longer need to be submitted via CIPO’s general correspondence form and a Canadian application number can be obtained immediately.

Read more here.