Thursday thingies

French Trade Mark Registry
says "Stop" to JE SUIS CHARLIE applications

A French update on JE SUIS CHARLIE trade mark applications:  Following Jeremy's Sunday morning post about OHIM's statement about the making of speculative applications for the JE SUIS CHARLIE mark, comes an update of the position in France from Sarah Bailey at the Paris office of Simmons & Simmons.  Sarah reports:

"In a succinct press release issued on 13 January 2015, the French Trade Mark Registry has indicated that it will not register any of the numerous speculative trade mark applications that it has received for the slogan JE SUIS CHARLIE, or which include a reference to it, since the terrible events of 7 January 2015.

The Registry has justified its position on the grounds that the sign does not meet the requirements as to distinctiveness, considering that the slogan cannot be monopolised by a business given its use by the community at large (see this link here).

The Registry’s rapidity in publishing its position on these applications must be praised, although it is perhaps too absolute a statement, implying that all applications for, or including, the slogan will automatically be rejected. It would no doubt have been more appropriate to indicate as OHIM has done that this type of application “will probably” be subject to an objection.

It will not have escaped a keen eye that the Registry does not cite a specific provision in the French Intellectual Property Code to justify its position. This may be because for some mysterious reason, the French legislator did not consider it necessary to transpose article 7(1)(b) CTMR. Readers will be reassured to know however that the French judges nevertheless apply this condition when examining the validity of an application, and the public order and morality requirement also appears in the Code."

A change of fortunes for
Costco in the 9th Cirucit

Wiley blocks Omega's copyright battle in the 9th Circuit:  Four years ago, the Amerikat was busy updating readers on the copyright battle between Costco and Omega in relation to the first sale doctrine before the US Supreme Court.  That fight ended in a 4-4 per curiam split before the Court (Justice Kagan recused herself- see summary here).  The Court held that copyright goods manufactured abroad were not goods "lawfully made under" Title 17 (US copyright law statute) and therefore were not subject to the first sale doctrine. That it is to say, copyright proprietors could control if and the manner in which their goods are imported and sold in the US as long as those goods were manufactured abroad.  This was considered a significant setback for US retailers and for the US economy as it was alleged to encourage the foreign manufacture of goods.  Not surprisingly, the decision resulted in some disquiet in the lower courts (see posts here) and was eventually taken up by the Supreme Court again in John Wiley.  In that case the Supreme Court held 6-3 that the place of manufacture should not be a relevant consideration for determining whether the first sale doctrine applies.  In the meantime, Costco had returned to the Ninth Circuit but yesterday the Court of Appeals for the Ninth Circuit held that the decision in Wiley now means that it is Costco who is the victor notwithstanding that the highest court had already ruled the other way in the case.  This curious state of affairs was picked up by a concurring judge, Judge Wardlaw, who instead affirmed the decision on the basis of Costco's defence of copyright misuse.  Readers can read the decision here and the Washington Post's article here.

Valencia Martin-Wallace

USPTO creates new "Patent Quality" Commissioner post:   Today, Deputy Director of the USPTO and President Obama's pick to become Director, Michelle Lee, announced the creation of a new post with the snazzy title of "Deputy Commissioner for Patent Quality".  USPTO veteran and assistant deputy commissioner for patent operations, Valencia Martin-Wallace, has been promoted to the newly created post.  According to the USPTO, in her new role Ms Martin-Wallace will manage and lead the USPTO's quality initiatives for "sustaining the high quality of the USPTO's patent validation processes and products by implementing and maintaining a comprehensive quality management system".  For more information see this article in the National Law Journal and this post from IPWatchdog.