INNOVATE! HAMILTON

Dispute Over RNAI Technology

RNA interference, or RNAi is a cutting edge area in biotechnological research. RNAi technology could potentially be used to turn off genes responsible for serious diseases. It may also yield mechanisms for turning on helpful but inactive genes. RNAi technology was the subject of the 2006 Nobel prize winning research by Craig Mello and Andrew Fire. Basic research continues in academic labs, but biotech companies are racing to create commercial drugs based on RNAi.

This exciting and lucrative field has also spawned high stakes litigation in the United States.

Alnylam Pharmaceuticals and the Max Plank Institute have sued the Whitehead Institute for Biomedical Research , MIT, and the University of Massachusetts for allegedly misappropriating intellectual property relating to patent applications for RNAi technology. The case focuses on two patent portfolios based upon research conducted by Tom Tuschl, in cooperation with other leading researchers affiliated with various universities and research institutions, (the Tuschl-I applications and the Tuschl-II applications). The research producing the Tuschl-I and the Tuschl-II applications was conducted over a period several years, during which time researchers joined and left the research team, and researchers moved from between research institutions, assigning their rights in their work to their then current sponsors. Patent rights management agreements exist between various sponsoring research institutions to facilitate protection and licensing of the intellectual property, but the ownership of the Tuschl-I and Tuschl-II does not directly overlap. Attempts to use research conducted for the Tuschl II project to support patentability of the Tuschl-I patent applications has caused Alnylam Pharmaceuticals and the Max Plank Institute (who have rights in only the Tuschl II applications) to seek legal redress for their possible losses resulting from the use of the Tuschl -II research results in the granting of Tuschl-I patents, in respect of which they do not have ownership and from which they cannot derive financial recompense.

For more information on the tangled web before the Suffolk County Superior Court in the Commonwealth of Massachusetts:

http://dockets.justia.com/docket/court-madce/case_no-1:2009cv11116/case_id-123116/

 

ORGANIC CERTIFICATION: New Developments

There have been several new developments in the past month with respect to the federal governments new regulations.

First, a new logo was introduced:

Second, Canada and the US reached an agreement that will allow both Canadian and US producers to export certified organic products into the other jurisdiction without the need for additional certifications. Both the above logo and the USDA Organic seal may be used on certified organic products in both countries.

 

 

For more information on this agreement, visit Canadian Food Inspection Agency web site at: http://www.inspection.gc.ca/english/corpaffr/newcom/2009/20090617e.shtml.

Third, the federal regulations are finally considered to be in force as of June 30, 2009. Under these regulations, agricultural products represented as "organic" (or marked with either of the above logos) must be certified by an accredited body for sale in international and inter-provincial trade. The federal regulations do not apply to agricultural products produced and sold within the same province, but some provinces already have their own regulations and the rest are expected to enact similar regulations in the near future.

A list of Certification Bodies accredited by the Canadian Food Inspection Agency can be found here: http://www.inspection.gc.ca/english/fssa/orgbio/cbliste.shtml

A list of Conformity Verification Bodies can be found here: http://www.inspection.gc.ca/english/fssa/orgbio/cvbliste.shtml.

Americans Coveting our Maple Leaf?

A clothing manufacturer known as American Clothing Associates has filed an application to register a maple leaf design as a TM in Europe. The design mark also includes the letters RW below the leaf design. However, the leaf design does bear a striking similarity to the iconic maple leaf that appears on the Canadian flag, etc.

So far their application has been refused as confusing with Canada's national symbol (protected under international law), but the decision is under further appeal. If interested in a more legal analysis, check out the commentary on the IPKAT blog.

THE DOWNLOAD DECADE

The Globe & Mail has started publishing an ambitious series of articles and multi-media publications documenting the growth of music sharing on the internet and the tangled copyright conundrums raised by this activity.

The series is entitled "The Download Decade". Ironically enough, its available for download from the Internet. Check it out. 

Copyright in Baseball Card Designs

LARRY NEUMEISTER of the Associated Press has an article recently published on salon.com about a new copyright lawsuit alleging infringement of the format of baseball cards. Take a look at it.

The interesting aspect of this case is that the alleged copyright infringement reportedly relates only to the certain elements in the layout for the baseball cards, including:

"a colorful, divided two-tone border, the player's photograph superimposed on a thin white border, the player's autograph toward the bottom of the picture and the use of an image of a baseball on a bottom corner of the card".

Unfortunately, it is not uncommon for businesses to copy design elements from their competitors' advertisements, forms, labels, etc. as a shorthand to getting their products to market. Given the sometimes simple or even obvious nature of these designs, copyright is rarely considered. However, there is no litigant more motivated than a business competitor and the consequences (ie. legal costs and lost profits) are rarely worth the savings on the cost of developing original materials.

Do IP Rights Interfere with Research?

Some believe that the commercial drive to protect IP rights, especially trade secrets and patents, slow down and otherwise interfere with the progress of scientific research by making it difficult to share information. Others believe that the commercial value of trade secrets and patents are essential to driving scientific research by rewarding the inventors. This is a debate that is only going to receive more attention as the Universities increase their involvement in the commercial sphere.

The Toronto Star recently reported on an initiative at the University of Toronto to bring together academic and industry researchers to conduct basic research on the three-dimensional structure of human proteins in an open access environment. Apparently, more than 100 laboratories participate in the corsortium, including three pharmaceutical companies. All of its findings are available free to any scientist.

US Releases Some Details on ACTA Negotiations

As some may recall from earlier posts, the US, Canada and several other countries have been negotiating an international agreement concerning intellectual property for several years under a cloud of secrecy.

Apparently, the US has taken the position in the past that the agreement related to issues of national security since the subject matter included controlling the piracy at international borders. As a consequence, public disclosure of the details was discouraged.

In any event, the US has now put out a six page summary outlining the purpose of the negotiations, but providing few other details. In particular, there is no information as to the status of the negotiations or copies of any draft text.

Registering Generic Terms as Trademarks

James Adams of the Globe & Mail recently reported on a trademark dispute between art dealers in Toronto over the term PAINTERS 11. Apparently, the term PAINTERS 11 was used by a group of abstract painters that operated loosely under that name in Toronto from 1953-1960. Reading between the lines, I suspect that there was likely some dispute between art dealers as to which painters should be properly described as members of this group. One art dealer reportedly took it upon itself to register the term as a trademark in Canada so that it could attempt to control the use of the term – claiming that its goal was to rehabilitate the term by ensuring that it was used to refer to a fixed membership.

Unfortunately, it's not an uncommon occurrence for individuals to file applications to register generic terms. Although generic terms are not considered registrable at law, applications sometimes slip through the trademark office examination process. This is particularly problematic for terms that have not yet made it to a dictionary or atlas. Of course, when the registrant tries to enforce its trademark registration, the alleged defendants are outraged. Nevertheless, such defendants are often compelled to incur legal costs to resist infringement claims and/or seek expungement of the registration.

In this case, the outcry from the arts community was so extreme that the art dealer subsequently announced that it was cancelling its trademark application.

Counterfeiting via the Internet

Law.com published an excellent article by Besunder and Sherwin on March 18, 2009 concerning a legal dispute between Tiffany Jewellers and eBay that has been winding through the US courts for some time now. The case concerns liability for the sale of counterfeit goods via the Internet.

Counterfeit goods are products that are sold in association with a trademark without the authorization of the trademark owner. Its the most subversive form of  trademark infringement.

As discussed in detail in the article, the heart of the issue is whether Internet auction sites - like eBay - have a positive duty to investigate potential infringers and prevent the sale of counterfeit articles on their web site and, if so, when that duty may be triggered.

Its reported that eBay's official policy on counterfeit goods is a "notice and take down" regime. This requires trademark owners to monitor the eBay web site and give it notice of each instance where counterfeit goods are advertised via the web site. For many brand owners, this type of policy may be satisfactory. However, this policy is less satisfactory when counterfeit goods for one brand are routinely sold via the web site, in some cases by repeat offenders.

According to the article, Tiffany reported 20,000 instances of counterfeiting to eBay in 2003 and 135,000 in 2006. It argues that eBay cannot avoid a positive duty to police potential infringement in these circumstances.

While the law generally does not impose liability on "common carriers" like telephone and courier companies for the actions of their customers, the law generally does not condone willful blindness either. My expectation is that the court will find a solution in the middle of the two positions and impose liablity on eBay beyond a certain threshold.

The difficult policy question will then be where that threshold should be placed and how it should be triggered. Some trademark owners fail to police their marks at all so it would be nonsensical and unfair to place that burden on eBay. However, where a trademark owner does actively policy their mark, there has to be a tipping point where the routine sale of counterfeit goods on a single web site should not be tolerated by either the trademark owner or the operator of the web site. In the long run, its bad business of everyone.

Copyright & Excerpting

Ironically, this is a topic of special interest to bloggers.

Some may recall that the Associated Press (AP) sent a few ill-considered letters last year to some bloggers to complain about excerpts of their articles published online without permission. In this regard, AP also proposed a fee schedule for excerpts of as little as 5 words. There was a HUGE online backlash amongst bloggers - some complained that AP's behaviour threatened their rights to "fair use" and "free speech" , some threatened to send invoices to AP for quoting their own articles and some determined to "boycott" AP by refusing to cite AP as a source or to link to AP articles on their blogs. [Note that not all of these complaints would apply in Canada as we have different standards for "fair dealing" and "freedom of expression"].

Although AP apparently never withdrew the initial "demand letter" that started all the fuss, it did subsequently announce that it was reconsidering its position with respect to blogs and it is my understanding that the proposed fee schedule was therefore withdrawn. Nevertheless, their position appears to be that it is more appropriate for blogs to use short summaries of articles written by others instead of direct quotations, even short ones, and then provide a hyperlink so that readers can view the original article in context.

It appears that AP has now refined its approach. It has reportedly launched a lawsuit in New York State against a so-called on-line news aggregator, All Headline News (AHN), alleging that AHN had improperly copied its articles and/or simply rewritten its articles for publication via its online news service. In doing so, AP is relying on copyright and an obscure US legal doctrine known as "hot news misappropriation". This legal doctrine apparently recognizes a "quasi-property" right in time-sensitive facts reported by one publisher where they are gathered at a cost to the publisher and "copied" by a competitor. There is some interesting commentary by other bloggers on this case here and here.

At the end of the day, the real issue is whether and how "real" news gatherers like AP can continue to pay journalists to gather such news for publication and make a profit if a competitor can simply "rewrite" it at minimal cost. Frankly, I suspect that AP would like to sell its headlines and articles to news aggregation services, but it can't sell what seems to be free.

The New York Times had an interesting article on March 2, 2009 about the issues and options facing the newspaper industry in this regard. [I understand that The New York Times is a member of AP].

Update: April 13, 2009

The New York Times has published a further article on this issue and the concerns of the Associated Press about news aggregators on the Internet.