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Notorious L.I.S.T Taobao in the limelight INTA’s new president A familiar face takes the reigns Something infringing this way comes Spotify faces the music ISSUE134 23 Jan 2018

Something infringing this way comes sue Lana Del Rey for copyright infringement Radiohead are suing Lana Del Rey for ... inspired by Creep, Radiohead feel it was. ...

Mar 20, 2018



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Notorious L.I.S.TTaobao in

the limelight

INTA’s new presidentA familiar face takes the reigns

Something infringing this way comesSpotify faces the music

ISSUE134 23 Jan

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US Trade Representative Robert Lighthizer has revealed the findings of his office’s 2017 Special 301 Out-of-Cycle Review of Notorious Markets, highlighting 25 online markets and 18 physical markets, including Alibaba’s Taobao ecommerce platform.

According to a statement from the office of Lighthizer, the activity of these markets

“harms the American economy by undermining

the innovation and intellectual property rights of US owners of IP rights in foreign markets”.

“Imports in counterfeit and pirated physical products is estimated at nearly half a trillion dollars, or around 2.5 percent of global imports,” it said.

Lighthizer commented: “Marketplaces worldwide that contribute to illicit trade

cause severe harm to the American economy, innovation, and workers. The Trump Administration is committed to holding intellectual property rights violators accountable and intensifying efforts to combat counterfeiting and piracy.”

Of Taobao, the report said that the website offered “a high volume of

USTR targets Taobao in Notorious Markets review, Alibaba refutes allegations

Continued on page 5

3 IPPro The Internet

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Published by Black Knight Media LtdCopyright © 2018 All rights reserved

Taobao in Notorious Markets reviewTaobao hits the USTR’s Notorious Markets list yet again, despite recent enforcement efforts


INTA PresidentTish Berard becomes INTA’s 2018 president and lays out her strategy for the association


UDRP DecisionsINTA, Delta Airlines and The Beach Boys appear in the latest roundup of UDRP decisions


Spotify AnalysisWith a $1.6 billion lawsuit lodged against it, Spotify faces the music ahead of its public listing


Industry EventsPick up your copy of IPPro The Internet at the latest and greatest industry events


Industry AppointmentsMovers and shakers at Akerman, Mewburn Ellis and DLA Piper


4 IPPro The Internet


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infringing products” and stakeholders “continue to report challenges and burdens associated with IP enforcement on the platform”.

It recognised Alibaba’s efforts to curb the sale of infringing products on Taobao, but said that the “prevalence of infringing listings and sales continues to be a challenge and there are additional steps Alibaba must take to address ongoing concerns”.

According to the report, Alibaba should “seriously consider expanding its reported ban on automotive air bags and air bag components on the and platforms to the Taobao platform”.

It also recommended that Alibaba ensure its referrals of criminal leads to Chinese authorities lead to meaningful enforcement outcomes, and seek to improve the effectiveness of its repeat infringer policy.

An Alibaba spokesperson said that the company had been “turned into a scapegoat by the US Trade Representative to win points in a highly-politicised environment and their actions should be recognised for what they are”.

“The US Trade Representative’s actions made it clear that the Notorious Markets List, which only targets non-US marketplaces, is not about intellectual property protection, but just another instrument to achieve the US Government’s geopolitical objectives.”

The spokesperson concluded: “Alibaba reiterates our point of view: we will continue to strengthen our IP protection system with world leading technology and a collaborative approach with brands and other stakeholders.

Taobao in Notorious Markets reviewContinued from page 3

INTA elects 2018 president

The International Trademark Association (INTA) has elected Tish Berard as its 2018 president and chair of its board of directors.

Berard has served on INTA’s board since 2011 and was formerly vice president and general counsel for Hearts On Fire Company.

She succeeds Joe Ferretti, vice-president and chief counsel of global trademarks at PepsiCo.

According to INTA, Berard will seek to advance trademark protection for small and medium-sized enterprises (SME).

She has created a presidential task force to “explore what it means to be an SME from different geographic regions, to assess the interest of SMEs and entrepreneurs in intellectual property and to identify effective communication strategies for conveying the importance of IP to these groups”.

Berard’s appointment coincides with the launch of INTA’s 2018-2021 strategic plan, which is geared towards promoting the value of trademarks and brands, while reinforcing consumer trust.

Berard commented: “I am honored to partner with INTA as we work toward prioritising the key directions of our new strategic plan, while remaining laser focused on our mission to strengthen trademark protection, achieve harmonisation of trademark laws, and continue advocacy for effective enforcement mechanisms around the world.”

INTA CEO Etienne Sanz de Acedo said: “We are delighted that Tish Berard will help usher in a new era of innovation and change as we seek to amplify safety and security for consumers and promote the important role that trademarks and brands play in the global economy.”

5 IPPro The Internet

News Round-Up

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“Our efforts and results speak for themselves: over 100,000 brands, including 75 percent of the world’s most valuable consumer brands, do business on our platform.”

Last year, Alibaba was involved in a series of enhanced enforcement efforts that targeted IP infringers, including the launch of its Big Data Anti-Counterfeiting Alliance and the success of its Operation Cloud Sword.

Cloud Sword resulted in the end of 417 counterfeit production rackets.

Taobao was returned to the Notorious Markets list in 2016 after a four year absence, which the US Trade Representative said was down to “unacceptably high” levels of reported counterfeits and piracy.

But according to an end of year report from Alizila, Alibaba’s corporate news website, its IP protection programme improvements have resulted in 28 times more listings proactively

take down than removed reactively between September 2016 and August 2017.

Alizila said that 98 percent of those proactive takedowns resulted in removals before a single sale was made.

Alibaba also shut down more than 230,000 bad merchants across its platforms during this period, and provided 1,573 leads to police, with more than 1,000 arrests made as a result, according to the Alizila report.

An Alibaba spokesperson added that the company has addressed all three of the US Trade Representative’s 2016 recommendations for the Taobao platform.

This includes the creation of simplified processes for rightsholders to register and request enforcement action, the availability of good faith takedown procedures, reduced timelines for takedowns and issuing penalties for counterfeit sellers.

The company has since issued a point by point refutation of the allegations levelled against it in the Notorious Markets report.

For example, the Notorious Markets report said that small and medium-sized enterprises (SMEs) using the Taobao platform “continue to have problems accessing and utilising takedown procedures on Taobao”.

“In 2017, more SMEs have requested assistance from US government agencies and embassies regarding Taobao than any other ecommerce platform,” it said.

Alibaba argued that this “proves nothing” and that it is the biggest commerce platform in the world, making it inappropriate to compare platforms by simply counting complaints with no context.

“What about Amazon, eBay and others? The Trade Representative has no basis for comparison, because it does not ask

6 IPPro The Internet

News Round-Up

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for similar data from US companies,” Alibaba explained.”

“The ecommerce company said it has engaged in “extraordinary direct outreach” to US SMEs through roadshows and work with the US government.

Alibaba said it has also participated in the US Patent and Trademark Office’s roadshows to “educate SMEs on our IP protection programmes”.

Alibaba also took issue with the assertion from the report that Alibaba had “undertaken efforts, some within the last six months, to curb the offer and sale of infringing products on Taobao”.

It said: “The implication that we have only been focused on this for the last 6 months is ridiculous.

Addressing counterfeits has been a top priority of Alibaba for many years.

Alibaba added: “Alibaba has made steady progress over that time, as evidenced by our Notorious Markets submissions since 2012 (when Taobao was taken off the list).”

Alibaba added: “The Trade Representative completely ignores the work we have done for many, many years.”

“It is condescending for the Trade Representative to assert that Alibaba should continue to do the good work we are doing.”

Radiohead sue Lana Del Rey for copyright infringement

Radiohead are suing Lana Del Rey for copyright infringement, claiming that the Del Rey’s 2017 song Get Free is similar to their 1992 song Creep.

Del Rey confirmed the news on Twitter on 7 January and revealed that Radiohead wanted 100 percent of the royalties for her song.

The singer explained that she had offered the band 40 percent of the royalties, but Radiohead declined.

Del Rey wrote: “I know my song wasn’t inspired by Creep, Radiohead feel it was.”

“Their lawyers have been relentless, so we will deal with it in court.”

An official complaint has yet to surface.

Angela Jack, associate at intellectual property law firm EIP, commented: “In the UK, to bring a successful case for copyright infringement, Radiohead would need to show both that Get Free is derived from Creep and that it is similar to it.”

“This would require expert evidence on chord progression and similarity of tune, although on first listening it seems unlikely that they will have any difficulty on this second point.”

“On the first point, it is sufficient for copyright infringement even if the work is a subconscious derivation and the infringer does not consciously realise that they are copying the work.”

“Given this low threshold and how well known Creep is, I am not surprised that Lana Del Rey has already offered to pay

7 IPPro The Internet

News Round-Up

Trim: 92(W) x 120mm (H)

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Radiohead some of the royalties from Get Free.”

Radiohead has since denied that any legal action has been taken against Del Rey, but have confirmed that they are seeking credit for the song.

J A Kemp to open in Paris

Intellectual property law firm J A Kemp will open a new office in Paris, its second in continental Europe.

The Paris office will open on 1 February and cover a full range of IP services, including patents, trademarks and designs.

J A Kemp currently has offices in London, Oxford, Cambridge and Munich. The new office will expand its reach in Europe, the US and Japan.

The firm has seen a 30 percent increase in staff over the past five years and opened its Cambridge office in 2016.

The Paris office will be lead by Graham Lewis and Jimmy Nicholls who are partners at J A Kemp.

Lewis and Nicholls are both patent attorneys with a specific focus on biotechnology and life sciences.

They will be joined by trademark partner, James Fish, who will lead the firm’s Paris-based trademark services.

Gyimah replaces Johnson

Sam Gyimah has been appointed as minister of state for universities and science.He replaces Jo Johnson as part of the Conservative party’s cabinet reshuffle.

Johnson will become minister of state at the department for transport and minister for London.

Johnson also held the role of minister of intellectual property.

It is unclear if Gyimah will take on these responsibilities or whether Johnson will continue as minister for IP.

Johnson took on the responsibilities this time last year, following the departure of Baroness Lucy Neville-Rolfe from the role in December.

8 IPPro The Internet

News Round-Up

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The International Trademark Association (INTA) has won a domain dispute over at the Alternative Dispute Resolution Forum.

According to INTA, the infringing domain resolved to a webpage that prominently stated ‘INTA International Trademark Association 140th Annual Meeting’ and offered users a “housing request form” that allowed them to book hotel rooms near the venue for INTA’s 2018 annual meeting. That page has since been taken down.

INTA explained that the domain was “confusingly similar” to its INTA trademark and that the original registrant had “no rights or legitimate interests in the disputed domain name” and that it was being used in “bad faith”.

Sole panellist David Sorkin agreed with INTA, finding that the addition of ‘2018’ and ‘.org’ to the domain, did not substantially distinguish it from INTA’s trademark.

He also agreed that INTA had made a case that the registrant lacked rights and legitimate interests in the domain and the registrant had not responded to the dispute failing to provide any evidence of such rights or interests.

Finally, Sorkin ruled that the domain was registered in bad faith as it uses the INTA trademark to solicit hotel books in competition with INTA. The domain was transferred to INTA.

Delta Airlines has claimed 27 domains in a UDRP dispute at the Alternative Dispute Resolution Forum.

According to Delta, all 27 domains were owned by the same person operating under several aliases and included the Delta trademark, along with generic terms such as ‘free’ and ‘air’.

Delta said that the original registrant did not use a privacy service, but provided false and incomplete registrant information.

Sole panellist Charles McCotter found that the domains confusingly similar to the Delta trademark and that the original registrant did not have “rights or legitimate interests in the disputed domain names”.

“[Delta] has not authorised respondent to use its marks. Respondent is not commonly known by the disputed domain names. The WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name,” he said.

McCotter also found that all domains resolved to an identical website offering fraudulent surveys purportedly from Delta.

He said that this evidenced the original registrants bad faith. All 27 domains were transferred to Delta.

Brother Records, the owner of the intellectual property rights relating to The Beach Boys, has claimed in a UDRP dispute at the World IP Organisation Arbitration and Mediation Centre.

According to the record company, it had engaged in discussions with the owner of the domain, David Roberts, in which Roberts had made it clear that the disputed domain name related to a tribute band that was unaffiliated with The Beach Boys.

Brother said it agreed to allow Roberts to register the domain name, in exchange for the transfer of

However, Brother claimed that Roberts refused to transfer the domain name without payment and has continued to use it.

Sole Panellist John Swinson found that the domain name was identical to The Beach Boys trademark, bar the omission of the prefix

“the”, which “does not prevent a finding of confusing similarity”.

Swinson also ruled that Roberts had no rights or legitimate interests in the domain and the use of the trademark “creates an implied affiliation”.

Finally, he said that the domain was filed in bad faith, as it was “clear that [Roberts] registered the disputed domain name with the trademark in mind”.

“[Roberts] likely intention was to attract internet users who are fans of The Beach Boys.” IPPro

Whose Domain Name Is It Anyway?INTA, Delta Airlines and The Beach Boys have all appeared in UDRP disputes at the Alternative Dispute Resolution Forum and WIPO Arbitration and Mediation Centre in recent weeks

9 IPPro The Internet

UDRP Decisions

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CCoommppeetteennccyy We take challenges to show our competence by, e.g. 1) sending us a pending or granted patent for our comments about how we can improve the claims, 2) sending us a pending patent specification without the claims for us to draft the claims for the client's comparison with the original claims, or 3) sending to the firm the client is currently using and this firm at the same time an initial disclosure so that the client can compare and find out which firm can provide the better claims.

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The end of last year saw Spotify hit with a $1.6 billion lawsuit. Wixen Music Publishing, whose clients include Neil Young, The Beach Boys and Missy Elliott, claimed that the music streaming service had “in many cases used [its] music without a licence and without compensation”.

For Spotify, a company that is reportedly pursuing a direct listing, a lawsuit of this caliber could affect its trading price and damage its $19 billion valuation.

The scale of its alleged infringement is concerning, with Wixen asserting that Spotify has “repeatedly failed to obtain necessary statutory, or ‘mechanical’ licences to reproduce and/or distribute musical compositions on its service”.

Wixen has demanded damages of $150,000 for each copyrighted work infringed, for an award of at least $1.6 billion.

The lawsuit said that, “while Spotify has become a multibillion dollar company, songwriters and their publishers, such as Wixen, have not been able to fairly and rightfully share in Spotify’s success.”

According to Benjamin Semel, partner at Pryor Cashman: “News from this lawsuit could affect the timing and trading price of Spotify’s public listing.”

He says: “This lawsuit speaks to the risk for music services like Spotify of a strategy to seek forgiveness rather than permission.”

In its lawsuit, Wixen claimed that Spotify’s acts, including its failure to “develop and implement procedures to properly licence songs, have caused and will continue to cause irreparable harm and injury to Wixen and the artists it represents”. Spotify reportedly operates at a loss, increasing from a loss of €231.4 million ($283 million) in 2015 to €539.2 million ($601.4 million) in 2016.

The company’s Spotify for Artists website previously showed a “Spotify Explained” page, which described what it does for the music

Something infringing this way comesThe $1.6 billion lawsuit levelled at Spotify is a hard pill to swallow for a company that reportedly operates at a loss and is preparing for a public listing, but this isn’t the company’s first rodeo

11 IPPro The Internet

Barney Dixon reports

Spotify Analysis

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business. Spotify argued that it was “working hard” to fix problems in the music industry that have resulted in music consumption generating “little to no money for artists”.

The page said: “By bringing listeners into our free, ad-supported tier, we migrate them away from piracy and less monetised platforms and allow them to generate far greater royalties than they were before.”

“We have succeeded in growing revenues for artists and labels in every country where we operate, and have now paid out over $1 billion in royalties to-date ($500 million of which we paid in 2013 alone).”

Spotify pays royalties based on the number of streams for an artists songs as a percentage of total songs streamed on its service.

That web page is no longer presently available to the public, but can be accessed via internet archive websites. Spotify declined to comment on its impact on piracy.

According to Wixen, Spotify has approximately 30 millions songs in its catalogue and failed to pay to pay songwriter royalties to a publishing company around 21 percent of the time. Using this figure as an estimate, Wixen claims that Spotify has infringed 6.3 million composition (21 percent of 30 million songs).

Spotify has claimed that it benefits the music industry by drawing users away from piracy with its free service tier.

But Wixen’s lawsuit suggests that Spotify “brazenly disregards US copyright law and has committed willful, ongoing copyright infringement.”

This suggests that rather than being their saviour, Spotify is harming the artists that rely on its platform, and Wixen is not the first to claim this.

For example, in May 2017, Spotify agreed to pay $43 million to settle a class action copyright lawsuit that claimed it had failed to pay proper royalties to thousands of artists using the platform.

So, is there a reason for Spotify seemingly repeating the same mistakes? Semel explains that current copyright law gives music services the ability to compel songwriters and publishers to licence their songs.

But he adds that the law sets out a “very specific process that must be followed to compel such a licence … Failure to follow the process in good faith (or negotiate a direct licence) can leave a music service like Spotify asking for forgiveness from an awful lot of people”.

“It should come as no surprise to Spotify that there are differing opinions on the price for forgiveness,” he says.

Despite of the $1.6 billion lawsuit lodged against it, Semel says Spotify is more likely focused on the upcoming Copyright Royalty Board determination on mechanical royalty rates, as well as the fate of the Music Modernisation Act, ahead of its direct listing.

He explains: “The complaints in the Wixen lawsuit against Spotify are part of what the proposed Music Modernisation Act is meant to address.”

“Among other things, the Music Modernisation Act would establish a music collective paid for by services and managed by copyright owners.”

“The collective would provide blanket licences to services that cover all musical works for which the compulsory license is available. Spotify could pay royalties to the collective to cover all available works and be insulated from lawsuits such as the one by Wixen.”

Semel adds: “On the other side, copyright owners would sign up with the collective and claim their works in order to ensure that they receive royalties.”

“The Music Modernisation Act is the most promising music copyright reform yet proposed to address these concerns, and has the support of the major trade organizations on both sides of the industry.” IPPro

Wixen’s lawsuit suggests that rather than being their saviour, Spotify is harming the artists that rely on its platform, and Wixen is not the first to claim this

12 IPPro The Internet

Spotify Analysis

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March 2018

IP Law Summit

Las Vegas

March 2018

Global IP Exchange, Europe


April 2018



May 2018

INTA 2018


13 IPPro The Internet

Industry Events

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US law firm Akerman has strengthened its intellectual property and commercial litigation practices with the hire of two partners, Caroline Mankey and Kanika Corley.

Mankey and Corley join Akerman’s Los Angeles team from Sedgwick.

Mankey is an experienced trial lawyer, focusing mainly on IP as it relates to the entertainment, arts, fashion, retail and technology.

She covers various facets of IP, including copyright, trademarks and licensing.

Corley’s practice covers commercial disputes and soft intellectual property litigation. She works with multimedia companies, musicians and fashion brands.

Lawrence Rochefort, chair of Akerman’s litigation practice group, commented: “Caroline Mankey and Kanika Corley are highly skilled lawyers who bring important depth to our IP and commercial litigation team in Los Angeles and nationwide.”

“We look forward to making even greater contributions to our clients through their comprehensive knowledge of the entertainment, arts, fashion, retail, sports and technology sectors.”

Sue Zabloudil, Los Angeles office managing partner for the firm, added: “Caroline Mankey and Kanika Corley add great value to Akerman’s national IP and litigation platforms, as we expand our Los Angeles presence to meet the growing needs of our clients.”

“In Los Angeles and nationwide, we remain focused on making Akerman a place where clients benefit from a diversity of ideas and experiences essential to advance their goals as well as our culture of collaborative innovation.”

Mewburn Ellis has hired trademark attorney Dydra Donath as partner in its Munich office.

Donath joins the firm from Winter, Brandl, Fürniss, Kaiser, Polte, where she worked for 20 years.

Her practice focuses on trademarks in a variety of industries, including the medical technology, pharmaceuticals, automobiles and fashion.

Mewburn Ellis opened its first Europe office in Munich late last year. The firm has offices in London, Bristol, Cambridge and Manchester.

The office is located near the European Patent Office and offers a full range of IP services in patents, trademarks and designs.

Commenting on her new position, Donath said: “[Mewburn Ellis] is undergoing a period of impressive growth, not only in Munich, but across its entire range of IP services.”

She added: “I very much look forward to helping drive that growth still further, not least in relation to the firm’s EU Intellectual Property Office work, for which it has an excellent reputation”.

Tanis Keirstead, partner at Mewburn Ellis and leader of the Munich office, commented: “We are extremely pleased to welcome Dydra Donath to Mewburn Ellis. Her formidable experience will be invaluable as we cement our reputation as the preeminent European IP firm. 2017 saw Mewburn Ellis not only celebrate its 150th anniversary, but also open its new Munich office. As we begin 2018, our prospects for further growth mean we could not be more excited about what the future holds.”

DLA Piper has named Frank Ryan and Ann Ford as co-chairs of its global and US-based intellectual property and technology practices.

Ryan will work alongside Stéphane Lemarchand as co-chair of the global practice and will continue to serve with Ford as co-chair in the US practice. He is also deputy chair of the firm’s global media, sport and entertainment sector and is on the firm’s executive committee and global board.

Ryan’s practice covers the full spectrum of intellectual property rights and he has particular experience in patent, trademark, trade secret, false advertising and business litigation.

Ford was previously vice chair of the US IP and technology practice and is also the US chair of the firm’s trademark, copyright and media practice, the global co-head and US head of sectors, and a member of its executive and policy committees.

She has specific experience in restructuring IP assets for tax planning, as well as knowledge in uniform dispute resolution procedures. IPPro

Industry appointments at Akerman, Mewburn Ellis and DLA Piper

14 IPPro The Internet

Industry Appointments