In this episode we have the chance to interview James Bikoff, who is frequently litgating trademarks of the International Olympic Committee, FIFA and other large sports associations. The we also talk about a podcasting patent that was recently cancelled. And in the end, we tell you about decisions of the Enlarged Board of Appeal of the European Patent Office regarding the patentability of plants.
Rolf Claessen and Kenneth Suzan
Episode 26 – April 17, 2015
RC = Rolf Claessen
KS = Kenneth Suzan
JB = James Bikoff
Hi. This is Mark Lemley from Stanford Law School and you are listening to IP Fridays.
KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.
RC: Welcome to the 26th episode of IP Fridays. Today we have a very prominent guest, Jim Bikoff, who is litigating trademarks for the International Olympic Committee as well as FIFA and other popular sports associations and we will also tell you about a podcasting patent that has been partly revoked and the European Patent Office issued two important decisions of enlarged boards of appeal regarding the protection of essentially biological processes and products resulting thereof. But before we jump into all this, I want to say that we are very proud to be hosting our own little reception, or Meet-Up, during the INTA meeting in San Diego for the IP Fridays Podcast so if you want to be on board and meet us personally, you can see everything you need to know in the show notes of this episode or simply go to www.ipfridays.com/inta. We are also proud to be co-hosting the Meet the Bloggers Event during the INTA meeting in San Diego and you can find out more at www.meet-the-bloggers.com.
So first I want to tell you about a podcasting patent that has been partly cancelled. Patent 8,112,504 had been issued to Personal Audio LLC and this patent basically covered podcasting in its broadest claims and this patent became interesting to the news when the owner of the patent started to sue both comedians, like Adam Carolla, who had a podcast and also three major television networks so on October 30, 2013, the Electronic Frontier Foundation, with the help of pro bono attorneys filed a petition requesting the inter partes review of this patent and, in particular, claims 1 – 35 were relevant to podcasting. It was actually not so easy to find prior art since the patent dates back to a filing date in 1996. They were able to find a publication by CNN on their Website in the year of 1994 which was the CNN Newsroom Video Magazine and the USPTO agreed that this publication actually made the relevant claims obvious over the prior art. If you want to read the full story, you can go to www.ipfridays.com/podcastingpatent.
Ken Suzan had the chance to interview Jim Bikoff who is litigating the trademarks for the International Olympic Committee and here is what he had to say…
KEN SUZAN’S INTERVIEW WITH JAMES BIKOFF:
KS: Thank you Rolf. Today we are speaking with James Bikoff, a partner in the intellectual property practice of Smith, Gambrell & Russell LLP.
Jim works out of the firm’s Washington DC office and his practice focuses on formulating and implementing worldwide trademark and copyright protection and enforcement programs for clients in the consumer and industrial product sectors, as well as non-profits, and service providers such as banks and insurance companies. He also engages in Internet and domain name counseling and enforcement actions.
Mr. Bikoff has been active for over 30 years directing worldwide trademark and copyright protection, litigation and anti-counterfeiting enforcement. More recently, Mr. Bikoff has been active in Internet and domain name litigation. His clients have included the International Olympic Committee, Major League Soccer, the Federation Internationale de Football Association, the American Red Cross, the National Grange and Tristar Insurance. Jim also counsels a growing number of wineries and restaurants on trademark and copyright issues.
Jim graduated, cum laude, from the University of Cincinnati in 1962. He received his LL.B. from Columbia University School of Law in 1965 and obtained an LL.M. in Trade Regulation from the New York University School of Law in 1966.
Welcome Jim to IP Fridays.
JB: Thank you Ken. Glad to be here.
KS: Jim, you handle trademark matters for the International Olympic Committee. Can you tell our listeners about the enforcement activities you have handled?
JB: Well, since the mid-80’s I have had a connection with the Olympics and representation. We handle copyright and trademark enforcement matters for both the International Olympic Committee and have handled them also for the United States Olympic Committee and these actions take place during Olympic games that are held in the United States where we have been in charge of enforcement matters representing both the United States Olympic Committee, the National Olympic Committee, the Organizing Committees for the Atlanta 1996 Games, the Salt Lake City 2002 Winter Games, and we also counsel the International Olympic Committee year-round on Internet, domain name and Website infringement matters, counseling registration of domains, etc. and we have had a lot of work, especially in Olympic years, we have also been active in helping to pass legislation to get special protection to Olympic marks such as the Anti-Counterfeiting Act of 1984 and the Anticybersquatting Protection Act of 1999.
KS: In the United States, are there any special laws or regulations for registering Olympic-related marks?
JB: Well, the protection in the United States is two-fold. First, and I think the most effective protection, is the Olympic and Amateur Sports Act which is a statute that was originally passed in 1950 as the Amateur Sports Act and amended in 1978 and it is now called the Olympic and Amateur Sports Act. That Act gives special protection to Olympic marks. It is a statute that can be found under the 36 U.S.C. 22506 and it is a rather interesting statute because it says basically that without the consent of the USOC or IOC any person who uses, for the purpose of trade to induce the sale of any goods or services or promote any theatrical exhibition, athletic performance or competition, using either the symbol of the IOC (which is the 5 interlocking rings) or any trademark, trade name, etc. that represents association with or authorization by the IOC or the USOC is subject to a civil suit. The only exception is a grandfather clause which covers people who used any of those words or symbols prior to 1950 and also people in the Olympic Peninsula of Washington State. Those are the only exceptions.
KS: Are you finding a lot of infringing marks coming through on a regular basis?
JB: Well, I would say that there are always infringements around the world but the Olympic Committees, because they are non-profits and because they want to devote their funds to the games that are being held and not divert those into constant legal fees, they pick and choose where to bring enforcement. Now I should say that besides the Olympic and Amateur Sports Act they also have trademark registrations in the United States and throughout the world so that bolsters the protection. We have had infringements. There have been many, many settlements. There has been some litigation especially litigation involving the rings, as well as the word “Olympic” and various other words that are protected like “Olympiad.”
KS: Do you believe that the system in the United States is working well to protect Olympic-related marks?
JB: I do. I think there is strong protection and that is why many cases are settled by people who either apply for Olympic marks and get those marks accepted, or people who use those marks without knowledge generally will agree to phase them out and adopt other marks because of the strong protection.
KS: Are there any particular victories, you have been practicing for many years, that you can share with our listeners?
JB: Well, the Gay Olympic case stands out because that was a lawsuit against the use of the word “Olympics” by the Gay Games which were then called “The Gay Olympics” and that decision really bolstered protection by finding that the Amateur Sports Act was an Act that was legitimate and that the rights of the USOC and IOC in the marks were confirmed as being not simply trademark rights but rights protected by special statute which had broad coverage. So we think that was a particular victory. We also had an interesting case later on called the O-M Bread Decision which said that even for grandfathered uses, those are restricted to the goods or services that were used before the statute took place. So a person who had grandfathered rights could not expand those rights and in that case it was a bread manufacturer who had rights in selling bread but then went into some other products that were not bread products and they were restricted simply to the products they had produced when they were grandfathered.
KS: Interesting. What about other countries? Do other countries have similar systems as the United States in terms of registration and enforcement?
JB: Well they do and I can just enumerate these because there are three sets of rights here. One is the National Statutes that are prevalent in many foreign countries that are similar to the Olympic and Amateur Sports Act and provide strong rights to the International Olympic Committee. The other is the Nairobi Treaty which is a worldwide treaty that protects the five rings in 67 or so countries so between these two types of protection, we are talking about many, many countries that have special protection for Olympic marks. Finally, I should say that marks are protected online also in the ICANN world there is special protection for the words “Olympic” and “Olympiad” in all the new generic top-level domain names and not just in the English language but in the UN languages plus three others, German, Greek and Korean and that protection, as you know, there have been new gTLDs released and that helps to make sure that cybersquatting is cut down on Olympic marks.
KS: Jim, switching gears to counterfeiting, you have shut down many counterfeiters over the years, how have the counterfeiters of today differed than the counterfeiters of let’s say five or 10 years ago?
JB: Well, I think the major difference is the move to the Internet. Five or 10 years ago we were still dealing with mostly containers being shipped from the Far East to ports in the United States. Now we see many more shipments that are being made based on Internet orders and sent by post or courier, which are much harder to intercept. That is one of the major changes – the move from physical shipments by boat and airplane to shipments by post and courier, small shipments directly to consumers. The second thing that is more interesting, I think, is that in the 70’s and 80’s we saw the real beginning of product counterfeiting, although it does go back to the Middle Ages, but we saw the start of really enhanced counterfeiting by folks in other countries and a lot of that was luxury goods like watches and clothing and perfumes. But more recently we have seen an escalation in dangerous counterfeit products like food, beverages, pharmaceuticals, auto parts, aircraft and defense equipment. So that is really something that is more dangerous to consumers.
KS: Are companies today seeing heavy losses as a result of counterfeiting? Is it really still a major problem for most companies?
JB: Yes, I think it is a major problem for many industries and companies. There are rather serious losses but it is not just the losses to the companies, it is also the loss of tax revenues to governments, it’s the loss of jobs to workers because every time a counterfeit product is purchased, there is a real product that doesn’t get sold. So I think there is a real hit on industry. It’s not just trademarks, it’s also copyrights, the copying of motion pictures before they are released, the copying of records on the sharing platforms, many of which have been stopped but many more of which are still active constitute a real heavy loss and I can’t even quantify it. People have tried to quantify it as being 1% or 2% of world trade but I think there really is not an exact number because some companies do not want to reveal information about this and it’s still very difficult to quantify.
KS: Let’s talk about the Internet for a second. Are there any issues with respect to unauthorized streaming of content that you can talk about?
JB: Yes. Well this comes up just about every other year when there is an Olympics and we have managed to shut down unauthorized streaming mainly by cooperation with ISPs. We have been able to curtail it very quickly. I remember during the London games, there was a site streaming and we were able, through the cooperation of the ISP, to shut it down within 24 hours so in these instances quick action is necessary and cooperation is very helpful and we have been getting it so far.
KS: Continuing with the Internet, I know you are heavily involved with UDRP work. Can you update our listeners on any important GTLD developments or other matters of interest?
JB: Well, what’s interesting is that so far with the release of gTLDs, there has been about 500 new gTLDs now and what we have seen is there is increased cybersquatting and there is a need for trademark owners to consider at least defensive registrations on the second level. Getting a new gTLD is very expensive, but once it is released then the cybersquatting starts with people registering well-known brands on the second level and what we have been doing with our clients is trying to create a template for their particular businesses so that they can obtain protection. Not everybody wants to do that. There is a real need for education of businesses and industries so they can at least take minimal steps, which are not expensive, to get protection. If say you are a food company, there is no reason why you should not register some second level domain names under .food, as an example, or if you are an insurance company, under .insurance. There are a lot of these domains that have been released and we find that industry is, so far, playing catch-up. There really has not been an awful lot of attention to protection. So I would encourage all brand owners to think about consulting an attorney and working out a system where you don’t have to spend a lot of money but you can get protection, even if it is only defensive, to make sure that others don’t steal your trademark in these new gTLDs.
KS: Where do you think the domain name system is heading? Will it just be more and more gTLDs? What should practitioners be doing for their clients today?
JB: Well, as to where it’s heading, I think the jury is still out at this point. We have seen some gTLDs, mainly the geo’s like .berlin and .london which seem to be doing very well with local businesses registering their name attached to .london or .nyc or whatever, but as far as a lot of the others, they have been very weak, there has been very few registrations. For instance, I noticed yesterday that .cricket was released and in the first few days they only had 134 registrations on the second level which is not a good showing at all. So, a lot of these are not attracting many registrants. Some are and I think we will just have to wait and see. As to where it is heading also, ICANN will probably not have another round of gTLDs until possibly as late as 2020. There is a lot of analysis that has to be done on the first round. There are a lot of problems that have occurred in connection with issuance of top-level domains that differ from one another only by an “s” like .car against .cars. That is something that we think most trademark practitioners will recognize as a problem. There has also been problems for people trying to enforce rights in the domain names under some of the mechanisms that are present under ICANN, so there is a lot to do and I think that practitioners today should be sitting down with their clients and trying to work out a cost effective method to get protection at this point in whatever gTLDs affect their industries.
KS: Jim, thanks so much for joining us today. This has been very informative. Thank you for being on IP Fridays.
JB: Well thank you Ken, I enjoyed it. Take care.
RC: If you want to learn more about Jim, you can go to www.ipfridays.com/bikoff.
In this episode, we also have news from the European Patent Office, the Enlarged Board of Appeal had the pleasure to deal with two cases again. These cases related to the production of tomatoes and broccoli. The case numbers are G2 of 13 and G2 of 12. The decisions have been published in the end of March, 2015 and they basically give a clear interpretation of Article 53B EPC. This article reads, European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals. This provision shall not apply to microbiological processes or the products thereof. So in these two cases the Enlarged Board said that plants are not plant varieties so there is a very narrow interpretation of the language of this article and it also said that a product by process claim is not a claim for the process for the production of plants and should therefore be allowed. So this is a very narrow interpretation of the exclusion of patentability of essentially biological processes or plant varieties so if applicants are directing their claims to individual plants or plant material then it should be allowed and it should also be allowed if you claim a product by process claim where the process features are essentially biological process features but the claim itself is not a process claim so it is not excluded by this article. To read the full text of these decisions, you can go to www.ipfridays.com/broccoli.
I hope you enjoyed this episode and also I hope that we see some of you in San Diego.
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