Posts Tagged: "ecommerce"

Preliminary Injunction Granted to Alibaba Against AlibabaCoin Cryptocurrency Operators

On Monday, October 22nd, U.S. District Judge J. Paul Oetken of the Southern District of New York entered an opinion and order in a trademark case brought by Chinese e-commerce giant Alibaba against a group of companies operating in Dubai and Belarus involved in marketing a cryptocurrency known as AlibabaCoin. Judge Oetken’s order granted Alibaba’s motion enjoining the defendants from using Alibaba’s protected marks in the U.S., including in connection with goods and services provided over the Internet to U.S. consumers. Another motion filed by Alibaba to compel documents from the defendants was denied as moot.

Managing international trademark portfolios in the Age of Globalization

Managing international trademark portfolios in the age of globalization can be a fickle endeavor.  Ecommerce has blown the top off traditional thinking as it relates not only to advising your clients on what and where to file, but also how to strategically maintain those filings in the face of an increasingly crowded and adversarial global marketplace.  When a brand attempts to gain a foothold with an emerging clientele, fortune tends to favor the strategically bold.  For this reason, companies are often trying to establish their IP rights in countries where actual use or implementation may not be in the cards for years.  In the case of trademarks, the benefits are obvious: if/when a product is launched, a service begins, or a brand is introduced, a strong and enforceable portfolio is waiting to greet and protect it.  However, in jurisdictions around the world, such a strategy leaves open the possibility of an attack on these rights, most commonly in the form of a non-use cancellation action. 

IBM Wins $82.5 Million Award Against Groupon in Jury Verdict

On July 27th, a jury verdict entered into the District of Delaware awarded $82.5 million in reasonable royalties to information technology giant IBM after that company asserted a series of patents against e-commerce marketplace provider Groupon. The jury determined that Groupon infringed on a series of four patents asserted by IBM.

Amazon.com: A Retail Giant With Major Counterfeit, Piracy and Data Privacy Issues

It’s not just counterfeits of gadgets or luxury fashion items available for sale on Amazon, lining the already deep pockets of Bezos. As we’ve noted in other reports, there are plenty of counterfeit items that mimic badges and official documents from law enforcement agencies like the Federal Bureau of Investigations and the Secret Service. But a recent letter sent by the Federal Communications Commission in late May of this year indicates that Amazon is also allowing the sale of set-top boxes which falsely use FCC logos in the branding, indicating that the device is permitted by FCC regulation when in fact it is not.

PayPal Secures Patent for Augmented Reality Glasses

The unusual direction of innovative developments in the field of fintech is underscored by U.S. Patent No. 9953350, called Augmented Reality View of Product Instructions, which was issued to PayPal in late April. This patent protects a method by which an augmented reality view of an identified object is generated to include promotional material, recommendations, location to purchase the product and product instructions from a database correlated with the object. This technology enables the user’s ability to access information related to a product by creating an augmented reality in which users may be able to see product and service reviews and listings associated with buyers and sellers, recommendations, and product tutorials.

Amazon CEO Bezos is Knowingly Complicit in Online Sales of Counterfeit Goods, According to Report

Although Amazon is typically quick to reference its anti-counterfeit policy as proof of its commitment to weeding out inauthentic products from its retail platform, watchdog groups continue to point at major concerns regarding Amazon’s true intentions regarding the sale of counterfeits. Most recent among these is a press release issued on June 5th by The Counterfeit Report which strongly suggests that Amazon and Jeff Bezos have every intention of skirting the rules to continue the financial benefits they receive from the sale of counterfeits. The Counterfeit Report received multiple e-mail responses to counterfeit product issues it presented to Amazon. Those official Amazon e-mails indicate that Bezos received e-mails from The Counterfeit Report and that the e-mail sender was answering on Bezos’ behalf. Amazon’s official stance, as outlined by these e-mails, counterfeit products will continue to be listed on Amazon’s website in countries where the trademark covering the brand isn’t registered.

Daimler trademark lawsuit alleges that Amazon.com doesn’t do enough to prevent infringement and counterfeits

At issue in the trademark infringement suit is Amazon’s sale of counterfeit wheel center caps bearing distinctive Mercedes-Benz trademarks… Daimler argues that Amazon “facilitates the sale of an exorbitant number of counterfeit and infringing goods” through its platform, counterfeit activity which has increased since 2015 when the company began inducing Chinese manufacturers to list on its U.S. and European e-commerce platforms. Daimler notes that lawsuits over counterfeit products have been filed against Amazon by well-known consumer brands including a February 2017 suit filed by French luxury goods brand Chanel against the American e-commerce giant.

Is Europe really moving away from protecting Online platforms?

The media and political debate continues to rage: should new obligations be put on online platforms and other internet intermediaries to try to limit the availability of unlawful content online, and if so what should those obligations look like?… The combination of proposed Article 13 of the draft Copyright Directive and the Commission’s latest Communication will lead some to conclude that Europe is indeed moving away from protecting internet intermediaries. It certainly appears that the two developments would place a much greater onus on platforms than is currently the case. A fuller picture will be known in May 2018, when the Commission says the work of ensuring “swift and proactive detection and removal of illegal content online” will be complete, and the Copyright Directive in final form. But the direction European policy makers are heading in is already evident.

The Growing Problem of Online Counterfeit Products

Many states have statutes that make counterfeiting a state crime, but often only if the trademark is registered in that state. According to Lo Cicero, state registrations give local prosecutors and law enforcement officers jurisdiction – and they may be more able and willing to tackle local counterfeiters than are busy federal prosecutors. Thus, where budgets will allow and brand owners have significant counterfeit concerns obtaining state trademark registrations in at least several states, including California and New York, could be a worthwhile investment.

IP Rights strategies for preventing and handling infringements in China

Securing IP rights in China has been a priority for companies selling or manufacturing in China due to the country’s singular attitude to intellectual property, which has been much abused. Today 84.5% of counterfeits originate in either China or Hong Kong, and as the world becomes progressively more connected alongside the rise of e-commerce and cross-border exportation capabilities, increasingly there is a need for IP protection strategies of all companies to be adapted to Chinese policies.

Are e-Commerce Sites Protecting Innovators & IP Owners?

Mark Lopreiato, the inventor of the Forearm Forklift, recorded sales of $4 million in 2008 but since then has seen a 30% drop, which he attributes to cheap replicas available on eBay and Amazon. In point of fact, there have been a number of examples of innovative companies suffering from the sale of replicas on Amazon and other e-commerce sites. In extreme cases, global brands like Birkenstock have stopped business with Amazon and other e-commerce retailers altogether. Sustained pressure on e-commerce sites from both professional and governmental bodies have yielded some results in recent years, with almost every major site now offering some level of IP protection tool or process. This also serves the interest of bigger sites as Amazon, eBay and their Chinese counterpart Alibaba are shielded from legal liability, provided they can offer a timely takedown service for IP owners.

Is there a Tide-Change in the Prospects of Patenting Business Method Innovations?

In the years after the Alice decision, it had seemed as though examiners in the business method art units felt as though their hands were tied with respect to issuing applications. Even if they had recommended an application for allowance, it was often sent back by quality review with an indication that a patent-eligibility rejection should be made or maintained. However, in early 2017 – at least with respect to a handful of applications – examiners’ perspectives seem to have changed, where they were more willing to work with the applicants to find eligible claim material and/or suitable arguments to be put on the record that would suffice for an allowance… While we note that the business method allowance prospects still remain substantially below those in other Technology Centers, the beyond-doubling of this statistic is of practical significance.

§ 101 Rejections in the Post-Alice Era

The § 101 rejection rate for patent applications in the e-commerce work groups approaches 100%, then drops precipitously for the remaining seven of the top ten work groups with the greatest percentage of § 101 rejections. Before Bilski, the § 101 rejection rate in the e-commerce work groups hovered around around the 30% mark, but has now tripled. The remaining work groups have also seen their § 101 rejection rates rise by 200-300%, although they make up a significantly smaller proportion of total rejections than in the e-commerce art units. While it did not surprise us that these work groups were at the very top of the list for § 101 rejections, we also wanted to know what other technologies are particularly prone to § 101 rejections.

The Anatomy of a Bogus Alice Rejection

First, this type of circular “logic” is at the heart of virtually all Alice rejections. Here the examiner concludes there is nothing significantly more than the judicial exception (which in this case is an abstract idea) because the additional elements add no more than the abstract idea. In other words, the examiner says there is nothing significantly more than the abstract idea because there is nothing more than the abstract idea. The Alice equivalent of this “how dare you ask me, I’m your mother” simply says what you’ve claimed is abstract because it is abstract, period. Clearly, a conclusory rejection like this without any real explanation does not satisfy the examiner’s prima facie burden to articulate a valid reason to reject. After all “because” is not a reason.

Alice Experts and the Return of Second Pair of Eyes to the PTO

In every art unit examiners confirm that there is an examiner within the Art Unit who is the Alice expert and that examiners have said that even if they are ready to allow a case, nothing can be allowed without the approval of that Alice expert. This sounds quite similar to second pair of eyes review, which wreaked enormous havoc on the patent system over a decade ago. Second pair of eyes review was one of the primary reasons why patent pendency got out of control and the backlog of patent applications grew to well over 1 million unexamined patent applications. It seems to have returned under the guise of Alice.