Yesterday, my kids and I watched the new movie, Chip N’ Dale:Rescue Rangers. This is probably the funniest Intellectual Property law related movie I’ve seen. Disney takes on IP Law doctrine and policy in a very humorous way. As an exercise in understanding U.S. IP law, the facts the movie raises are very nice. Here’s a few examples: ET v. Batman; Ugly Sonic; Chippendales; and on and on. They also take on: a glimpse at the future of augmented reality; artificial intelligence and creativity; culture wars; Hollywood nostalgia reboots (talk about bootlegging); and the future of counterfeiting. There are so many references my brain almost exploded from overload. As a tip, be sure to take in the background materials, e.g., advertisements. Lol. They take some pretty nice shots at competitors, but I wonder what’s going to come back. Interestingly, the Pirates of the Caribbean ride at Disneyland has been closed for “refurbishment.” [In full disclosure, I am a very big fan of Disney and may be extremely biased.]
IP finance
"Where money issues meet IP rights". This weblog looks at financial issues for intellectual property rights: securitisation and collateral, IP valuation for acquisition and balance sheet purposes, tax and R&D breaks, film and product finance, calculating quantum of damages--anything that happens where IP meets money.
Monday, 23 May 2022
Friday, 20 May 2022
White Hat Hackers Safe from CFAA Prosecution?
The U.S. Department of Justice announced yesterday that it will not prosecute white hat researchers under the Computer Fraud and Abuse Act! However, white hat hackers beware: There are many state laws that criminalize such behavior. The press release states:
The Department of Justice today announced the revision of its policy regarding charging violations
of the Computer Fraud and Abuse Act (CFAA).
The policy for the first time directs that good-faith
security research should not be charged. Good faith security research means
accessing a computer solely for purposes of good-faith testing, investigation,
and/or correction of a security flaw or vulnerability, where such activity is
carried out in a manner designed to avoid any harm to individuals or the
public, and where the information derived from the activity is used primarily
to promote the security or safety of the class of devices, machines, or online
services to which the accessed computer belongs, or those who use such devices,
machines, or online services.
“Computer security research is a key driver of improved
cybersecurity,” said Deputy Attorney General Lisa O. Monaco. “The department
has never been interested in prosecuting good-faith computer security research
as a crime, and today’s announcement promotes cybersecurity by providing
clarity for good-faith security researchers who root out vulnerabilities for
the common good.”
The new policy states explicitly the longstanding practice
that “the department’s goals for CFAA enforcement are to promote privacy and
cybersecurity by upholding the legal right of individuals, network owners,
operators, and other persons to ensure the confidentiality, integrity, and
availability of information stored in their information systems.” Accordingly,
the policy clarifies that hypothetical CFAA violations that have concerned some
courts and commentators are not to be charged. Embellishing an online dating
profile contrary to the terms of service of the dating website; creating
fictional accounts on hiring, housing, or rental websites; using a pseudonym on
a social networking site that prohibits them; checking sports scores at work;
paying bills at work; or violating an access restriction contained in a term of
service are not themselves sufficient to warrant federal criminal charges. The
policy focuses the department’s resources on cases where a defendant is either
not authorized at all to access a computer or was authorized to access one part
of a computer — such as one email account — and, despite knowing about that
restriction, accessed a part of the computer to which his authorized access did
not extend, such as other users’ emails.
However, the new policy acknowledges that claiming to be
conducting security research is not a free pass for those acting in bad faith.
For example, discovering vulnerabilities in devices in order to extort their
owners, even if claimed as “research,” is not in good faith. The policy advises
prosecutors to consult with the Criminal Division’s Computer Crime and
Intellectual Property Section (CCIPS) about specific applications of this
factor.
All federal prosecutors who wish to charge cases under the
Computer Fraud and Abuse Act are required to follow the new policy, and to
consult with CCIPS before bringing any charges. Prosecutors must inform the
Deputy Attorney General (DAG), and in some cases receive approval from the DAG,
before charging a CFAA case if CCIPS recommends against it.
The new policy replaces an earlier policy that was issued in
2014, and takes effect immediately.
Thursday, 5 May 2022
How Europe can build on strengths in SEPs to reclaim leadership in cellular with 5G and 6G
The EU is in grave danger of “throwing out the baby with the bathwater” in its prospective attempts to reform SEP licensing with interventions for the purported benefit of European Small and Medium-Sized Enterprises (SMEs) in IoT.
Europe was once preeminent in cellular communications with 2G GSM—including standard-essential technology innovation, product developments and sales, network deployments, and operator services adoption by consumers. Since its heyday in the in the late 1990s, Europe has declined through a succession of falls from various leading positions in cellular.
![]() |
Revenue growth captured in
cellular by newcomers from outside Europe |
Source: Companies’ yearend reports and average annual
exchange rate figures
The European Commission’s initiatives to regulate standard essential patents (SEPs)—most significantly in cellular technologies and ostensibly for the benefit of SMEs and other technology implementers—are oblivious to this bigger picture. It is vital for all Europeans that the region’s remaining major players in the cellular ecosystem can flourish profitably and are able to continue investing in R&D for innovation, new products, network deployments and services growth. That means ensuring standard-essential technology developers including the European Union’s Ericsson and Nokia can make fair and adequate returns on their SEP investments. The SEP licensing system needs to be reinforced, not weakened with prospective interventions that are inconsistent, contradictory or that have weak factual justification and would jeopardise Europe’s competitiveness.
Re-establishing European strength in cellular also requires reregulation of operator and other services markets so that European mobile network operators can become profitable leaders in the mobile ecosystem once again. Hopefully the EU’s new Digital Markets Act (DMA) that seeks to reign-in the dominant and abusive behaviour of Big Tech companies such as Apple, Alphabet and Meta will help European mobile operators and others improve their competitive positions and abilities to become leaders rather than remain followers with new technologies and services. Anticipated measures against these Big Tech “gatekeepers” include restrictions on bundling and self-preferencing between complementary services (e.g. search versus shopping), and mandating interoperability among different messaging platforms.
The European Commission, with its call for evidence for an Impact Assessment regarding a new framework for standard-essential patents closing May 9, 2022, follows the US Department of Justice and the UK’s Intellectual Property Office with public consultations on the topic of SEP licensing. These focus on various issues including improved “transparency” with the counting of essentiality-checked patents in setting royalty rates, prospective new collective licensing arrangements and purported problems such as opportunistic behaviour by patent owners and implementers.
While the European Commission threatens to meddle with SEP licensing, a paper I have written for 4iP Council considers the broader strategic issues on Europe’s competitiveness in cellular. This longer read shows that virtually all the $14 billion in SEP royalties to Europe’s world-leading innovators Ericsson and Nokia over the last 5 years— that were vital to fund their R&D at a total cost of around $10 billion in 2021—were export revenues generated on smartphone sales by Apple and Asian OEMs. Royalties generated from SEPs in Europe are tiny in comparison: most IoT modules are produced by a top five manufacturers that are Chinese, and there is no requirement for software application developers to take SEP licenses.
Licensing costs pale in comparison to total revenues and profits derived as the cellular ecosystem expands to be worth many trillions of dollars in products, services and applications including IoT.
This summary article was originally Published in RCR Wireless on 4th May 2022.
Tuesday, 19 April 2022
Women and the Unified Patent Court - Free Webinar hosted by OxFirst April 28 3 p.m. UK time
Date & Time: April 28 2022 15h00 -16h00 GMT = 16.00 – 17.00 CET
The Influence of Women in IP: Women and the Unified Patent Court.
What the Panel Discussion is About
The establishment of the Unified Patent Court is likely the biggest game
changer in European patent system. But what role and influence will women play
in shaping this new Court?
Should under the UPC the opportunities for women be stronger established?
Should women judges, given equal qualification and competence, be given
priority in the selection process? Should there be adjustments made to allow
judges who are also parents to participate in the UPC?
And, is there a need to come to grips with more gender-neutral language
under the UPC?
This panel addresses these and more questions relating to women in IP and
asks what can be done to remove gender barriers in intellectual property.
About the Speakers
Marina Tavassi has until most recently been the President of the Milan Court of Appeal. She has been a judge in Italy for over 40 years (specialized in IP) and sat on Samsung vs Apple, Italy. Since June 2014, she has also been a member of the panel of experts responsible for drafting rules of procedure for European Unitary Patent Court. She has also been a national judge on the Enlarged Board of Appeal of the European Patent Office (based in Munich). She is of counsel with BonelliErede.
Julia Dias is Senior IP
Policy Counsel for Huawei. Julia specialises in SEP/FRAND licensing, litigation
and policy. She is also the Vice Chair of the IPR working group of Digital
Europe. Prior to joining Huawei, Julia gained IP experience in the UK and in
Germany, including at the EPO where she worked in various ICT projects focusing
on SEPs and emerging technologies.
Katie Colart Katie
is a partner in the London IP litigation team at Kirkland & Ellis. Katie
specialises predominantly in patent litigation across a range of sectors
including life sciences and tech. Katie regularly deals with major cross-border
disputes of significant strategic importance to her clients and is ranked as an
“Up and Coming” lawyer by Chambers, and a “Next Generation Partner” by The
Legal 500.
How to Join:
https://oxfirst.com/webinars/the-influence-of-women-in-ip-women-and-the-unified-patent-court/
After registering, you will receive a confirmation email containing information about joining the webinar.
Attention, please sign up with your professional email account. We don’t accept registrations from personal email addresses. Participation is limited at 100 participants. We reserve the right to eliminate participants. By joining the OxFirst webinar you agree to our Privacy Policy (found here) and to receive forthcoming information on our webinars, newsletters and events.Friday, 15 April 2022
Google: Investing in Education . . .
Google recently released some interesting information concerning its economic impact in the United States. It is very impressive. Google released its Economic Impact Report for 2021 and announced its investment of over $9.5 billion in U.S. Offices and data centers. Notably, Google states in a blog post:
Google’s offices and data centers provide vital anchors to
our local communities and help us contribute to their economies. In the U.S.,
over the past five years, we’ve invested more than $37 billion in our offices
and data centers in 26 states, creating over 40,000 full-time jobs. That’s in
addition to the more than $40 billion in research and development we invested
in the U.S. in 2020 and 2021.
Google also notes that:
Today we are also releasing our 2021 Economic Impact
Report, which reflects Google’s wider contribution to the economy. The
report shows we helped provide $617 billion in economic activity for millions
of American businesses, nonprofits, creators, developers and publishers last
year. In addition, the Android app economy helped create nearly two million
jobs last year, and YouTube’s creative ecosystem supported 394,000 jobs in
2020.
We also continue to help people get the skills they need to succeed
in today’s economy, from our role as a founding
member of the Michigan Central innovation district in Detroit to our
$100 million Google
Career Certificates Fund — a new financial model for helping people
access education and digital skills.
The Google Career Certificates programs
and Fund is an ambitious project:
The goal is to enable Social Finance to reach more than
20,000 American workers. This investment in America’s future has the potential
to drive $1 billion in wage gains.
This fund is a new kind of financing model. We’ll invest
Google capital and Google.org grants and provide our Career Certificate
program. Social Finance will provide funding to nonprofit partners like Merit
America and Year Up, who in turn will provide services like career coaching,
living stipends and job placement support. And we’ll connect students to an
employer consortium of more than 150 companies who are looking to hire workers
with these skills.
It’s all designed around student success. They will receive
all of this at no upfront cost. And will only pay it back once they find a job
earning at least $40,000 a year. Social Finance will then redistribute those
repayments to future learners, making this model more sustainable.
Friday, 8 April 2022
U.S. Congressional Research Service Report on Potential COVID-19 IP Rights Waiver
The Congressional Research Service has released a report for the U.S. Congress concerning the COVID-19 Patent Waiver agreement between the U.S., India, South Africa and the EU. The report discusses the leaked agreement and outlines specific issues for the U.S. Congress to consider:
Key issues include ·
Should more congressional input or approval be required before the
Administration could agree to modifying TRIPS obligations (as proposed in some
pending bills)? · How
would the proposed agreement affect innovation incentives for COVID-19 vaccines
and other treatments? What would it mean for U.S. competitiveness vìs-a-vìs
China, which poses major IPR theft challenges? ·
How would the proposed agreement affect global COVID-19 vaccine production and
access? Would any boost occur quickly enough to respond to the pandemic’s
current stage, or be more relevant to respond to potential future variants?
What does the proposed agreement mean for future pandemic responses? · Is the U.S. position on
this waiver particular to COVID-19 or a general policy shift as it relates to
historical U.S. positions in advancing IPR in trade agreements? How may these
issues shape potential debate on Trade Promotion Authority renewal and U.S. IPR
trade negotiating objectives? ·
What would a timely COVID-19 IPR outcome—or its absence—mean for debates about
the WTO’s relevance in the changing global economy?
The report is available,
here.
Thursday, 7 April 2022
Global Detroit Entrepreneur in Residence Program
Global Detroit is a very interesting organization which is basically focused on economic development in Michigan and the general Detroit area. Detroit has struggled economically. Notably, Global Detroit has an Entrepreneur in Residence program which focuses on bringing foreign born entrepreneurs and their companies to Detroit/Michigan through working at a host university as a mentor. Here is a success story:
Ashok Seetharam was living in Milwaukee when his startup,
PAXAFE, began to take off. But he wasn’t sure he’d be able to stay. PAXAFE was
Ashok’s third startup. After moving to the U.S. from India and graduating from
Brown University with a graduate degree in Biomedical Engineering, he
co-founded Orthopedix and led the company through XlerateHealth, an early-stage
healthcare accelerator program. Orthopedix ultimately licensed its patented
technology to a major orthopedic implant manufacturer. Next, he oversaw product
development and a team of engineers for another healthcare startup, Toggle
Health.
In late 2018, Ashok and Ilya Preston founded PAXAFE in
Milwaukee. Ilya’s family immigrated from Russia when he was a child. He and
Ashok met at XlerateHealth in 2017. They originally helped kickstart a
Minnesota startup focused on the transport of medical specimens, but ended up
parting ways to start their own company. PAXAFE develops hardware and software
IoT solutions that enable cheaper, intelligent shipping insurance.
International startup founders face major challenges to
launching their companies in the U.S. To remain in the country, they typically
need an H-1B visa, which is available to foreign-born “specialty workers” in
specific, largely high-tech fields. Ashok was permitted to remain in the U.S.
for a short time on a different visa following his graduation from Brown, but
he needed an H-1B visa to stay.
Fortunately for Ashok, in late 2018 Global Detroit launched a
program called Global EIR. A partnership with the national Global EIR
program, the program places foreign-born startup founders at universities to teach
and mentor. By working at the university, Global EIRs are able to legally work
in the US. This affords them the opportunity to launch their startups here and
apply for a concurrent H-1B through their company. Global Detroit
currently partners with the University of Michigan’s Economic Growth Institute
on the program. Ashok was accepted, and PAXAFE moved their headquarters to Ann
Arbor last summer. The company has recently closed on an additional $650,000
round of pre-seed funding, bringing their total raised in 2019 to almost $1
million. Working out of Ann Arbor SPARK, they have begun piloting their product
and hiring for new positions.
“I didn’t think it was possible to continue building my
company in the U.S. when I didn’t make the H-1B lottery,” Ashok recalls. “That
all changed when I learned about Global Detroit and Global EIR. Not only did
they help with my immigration through the Global EIR program but also continued
to provide unparalleled support– both personally and with the business–which
maximized our chance of success.”
Tuesday, 29 March 2022
TRIPS Waiver Compromise on COVID-19 Vaccines and Treatments Announcement Coming Soon?
The AIPLA and other IP organizations have issued a joint statement on a tentative TRIPS waiver compromise. On March 15, 2022, Adam Hodge, USTR spokesperson stated, in part:
Since last May, USTR has worked hard to facilitate an outcome
on intellectual property that can achieve consensus across the 164 Members of
the World Trade Organization to help end the pandemic. USTR joined informal
discussions led by the WTO Secretariat with South Africa, India, and the
European Union (EU) to try to break the deadlock.
The difficult and protracted process has resulted in a
compromise outcome that offers the most promising path toward achieving a
concrete and meaningful outcome. While no agreement on text has been reached
and we are in the process of consulting on the outcome, the U.S. will continue
to engage with WTO Members as part of the Biden-Harris Administration’s
comprehensive effort to get as many safe and effective vaccines to as many
people as fast as possible.
I wonder how Russia's invasion of Ukraine impacted the consensus building. The Joint Statement provides:
JOINT STATEMENT ON TENTATIVE TRIPS WAIVER COMPROMISE
Written March 28, 2022
On March 24, AIPLA, along with the Intellectual Property Owners Association (IPO), Licensing Executives Society International (LESI), Licensing Executives Society USA & Canada, and the New York Intellectual Property Law Association (NYIPLA) issued a joint statement on the tentative TRIPs Waiver Compromise. Our organizations are concerned by reports that the European Union, India, South Africa, and the United States have reached a tentative compromise on a proposed TRIPS waiver of intellectual property (IP) rights. We strongly support equitable, widespread and successful distribution of vaccines necessary to meet the challenges of COVID-19. However, the proposal currently being reported incorrectly portrays IP as a barrier to production and supply of COVID-19 vaccines. Our organizations know of no evidence to support that IP is such a barrier. In fact, the World Health Organization has stated: “[w]ith global vaccine production now at nearly 1.5 billion doses per month, there is enough supply to achieve our targets, provided they are distributed equitably. This is not a supply problem; it’s an allocation problem.”1 Solving the allocation problem is best accomplished by focusing on improvements to supply chain and distribution issues, rather than by concentrating on the red herring of intellectual property as an alleged barrier. Intellectual property has been critical to the development of technology that has enabled a global COVID-19 response and it continues to fuel efforts to more effectively distribute vaccines and advance other needed technology. We should not undermine our ability to respond to this and future pandemics.
Footnote 1: See https://www.who.int/campaigns/vaccine-equity (accessed on 18 March 2022).
Global Recorded Music Industry Doing Quite Well
The IFPI has released a report titled, “Global Music Report 2021.” The Report reviews the revenues for the global recorded music industry. The news is good with streaming paving the way for an increase in revenue even with COVID-19! The press release states:
The global recorded music market grew by 7.4% in 2020, the
sixth consecutive year of growth, according to IFPI, the organisation that
represents the recorded music industry worldwide. Figures released today in
IFPI’s Global Music Report show total revenues for 2020 were
US$21.6 billion.
Growth was driven by streaming, especially by paid
subscription streaming revenues, which increased by 18.5%. There were 443
million users of paid subscription accounts at the end of 2020. Total streaming
(including both paid subscription and advertising-supported) grew 19.9% and
reached $13.4 billion, or 62.1% of total global recorded music revenues. The
growth in streaming revenues more than offset the decline in other formats’
revenues, including physical revenues which declined 4.7%; and revenues from
performance rights which declined 10.1% – largely as a result of the COVID-19
pandemic.
I couldn’t agree more with the
statement by the IFPI Chief Executive Frances Moore:
“As the world contends with the COVID-19 pandemic, we are
reminded of the enduring power of music to console, heal and lift our spirits.
Some things are timeless, like the power of a great song or the connection between artists and fans. But some things have changed. With so much of the world in lockdown and live music shut down, in nearly every corner of the globe most fans enjoyed music via streaming.”
And, the whole world was happier with music:
·
Latin America maintained its
position as the fastest-growing region globally (15.9%) as streaming revenues
grew by 30.2% and accounted for 84.1% of the region’s total revenues.
·
Asia grew 9.5% and digital revenues
surpassed a 50% share of the region’s total revenues, for the first time.
Excluding Japan (which saw a decline of 2.1% in revenue), Asia would have been
the fastest-growing region, with exceptional growth of 29.9%
·
Featured as a region in the report for the first
time, recorded music revenues in the Africa & Middle East region
increased by 8.4%, driven primarily by the Middle East & North Africa
region (37.8%). Streaming dominated, with revenues up 36.4%.
·
Revenues in Europe, the
second-largest recorded music region in the world, grew by 3.5% as strong
streaming growth of 20.7% offset declines in all other consumption formats.
·
The US & Canada region grew
7.4% in 2020. The USmarket grew by 7.3% and Canadian recorded music revenues
grew by 8.1%.