News of the Week

Hey everyone!

I just came across this article which reminded of something interesting that I saw while walking to the bus stop the other day. If you’ve passed between Vine St. and Yew St. on 4^th Ave lately, you’ve probably seen a bunch of trees lined up in an elaborate marketing campaign for the new Terrex store. Terrex is a line of outdoor activewear and gear by Adidas, and they have just opened a location on West 4^th Avenue. As mentioned in the article linked above, West 4^th Ave is a hub for outdoor clothing with brands like Patagonia, Arc’teryx, and now Terrex, all within a few blocks of each other.

The first time I saw the Terrex store, I chuckled to myself because of how much the name sounded like “Arc’teryx” – especially when you say them out loud. That’s why I was interested to see that the Squamish Chief article directly raised this issue, pointing out that “the store banners sound similar, and the names could be confusing.” It sort of reminded me of when I lived in downtown Toronto and I would see “Balenciaga” shoes like this for sale on Spadina.

Adidas Canada’s vice-president of retail, Lesley Hawkins, was quoted in the article saying “I understand that there is some similarity in the names, but Terrex has existed for a long time.” However, it appears that Terrex used to be sold only as a brand at the regular Adidas stores; the solo-branded Terrex stores are a recent addition to Adidas.

I certainly questioned whether it was just a coincidence that Terrex opened at this specific location with such a similar name. According to Hawkins, when Adidas decided to open at this location in 2021, they did not know that Arc’teryx would move nearby (just a few storefronts down).

In my experience as a consumer, Terrex’s new location certainly benefited from its similarity to the nearby Arc’teryx. The Arc’teryx brand has been very popular in Vancouver, and they just opened a large new storefront on 4^th Avenue; when I saw Terrex, I immediately thought to compare it’s pricing and merchandise to Arc’teryx.

The similarity of the two names made me think of the intellectual property in the Arc’teryx brand, how Terrex may be allowed to benefit from being compared to Arc’teryx, and whether they are doing so intentionally or not.

I just saw this short news release and thought it might be of interest.

Patagonia Sues Gap Article

The suit is related to the Gap allegedly copying Patagonia’s “iconic” flap pocket on its fleece jackets. The short article specifically discusses goodwill and confusion, including an example of a customer genuinely being confused.

I enjoyed the velcro video we watched in class and I was trying to think of other such examples, beyond things such as kleenex, xerox, and rollerblades discussed in class. One day, on my way to playing spikeball, a game involving a small trampoline-like thing and a ball, I was thinking of how spikeball potentially fits in here. I was thinking this given that I often here tournaments in which one plays spikeball as “Roundnet” tournaments and was wondering whether these terms were what the game was actually called, key manufacturers within the game, or other entities. As it turns out, even though the game was introduced to me as spikeball and I don’t know of anyone who would not call it by this name, Spikeball is actually the name of a company that manufactures equipment for what the sport is actually called, that being roundnet. The founder had purchased the rights to the product as the original inventor did not patent it, and began manufacturing. I think that this situation is analogous to rollerblades and inline skates, in which while most people do call it rollerblading, the technical terminology would be that they are inline skating. I wonder if this mark can potentially lose reputation/goodwill as it may become generic. Only time will tell.

https://www.kiplinger.com/article/business/t049-c000-s002-small-business-success-story-spikeball-inc.html

Twitter has successfully prevented a Singapore technology firm called VV Technology from registering a yellow hummingbird as a trademark for a mobile application. The application was filed in 2018 and was opposed by the American company, Twitter.

In 2019, the principal assistant registrar ruled in favour of twitter, which led to the appeal by VV Technology. VV Technology has now lost its appeal before the High Court. It will be interesting to see how things unfold and if VV Tech is going to appeal once again.

Does anyone think the marks are similar? Feel free to comment below.

The article link : Twitter wins court tussle as Singapore tech firm fails in appeal to have bird logo trademarked – CNA (channelnewsasia.com)

Hi all,

With the Major League Baseball season officially commencing today, I thought it was fitting to share an interesting story about the Philadelphia Phillies mascot, the Phillie Phanatic!

While I’ve attached the link to the full Bloomberg Law story (and the short copyright settlement approval) below, here is a short summary of the story for those interested:

The Philadelphia Phillies purchased a copyright assignment in the Phanatic costume from Bonnie Erickson and Wayde Harrison, who created the costume, pursuant to two agreements: one in 1978 and another in 1984. However, the US Copyright Act allowed Erickson and Harrison to terminate the copyright grant 35 years post-agreement. Thus, the Phillies sued Erickson and Harrison in 2019, seeking a declaration that the two individuals cannot terminate their copyright interest in the mascot. While the two sides ultimately settled the matter confidentially in November 2021, two different magistrate judges made some interesting comments about the case prior to the settlement (which, in my opinion, unduly favour the interests of the Phillies due to their stature as a large MLB franchise and the Phanatic’s wide popularity as a memorable mascot):

1. A federal magistrate judge in August 2021 recommended that the Phillies be allowed to continue using the 2020 version of the mascot without having to pay the creators, and
2. Magistrate Judge Sarah Netburn said the current Phanatic costume is a derivative work created by the Phillies while it had rights to the design, exempting it from the creator’s termination rights.

Again, while the case was ultimately settled confidentially, it is worth considering whether the above statements unreasonably prejudice the rights of the creators in an attempt to allow the Phillies to capitalize on its highly profitable use of the Phanatic as its mascot. Ultimately, baseball is back, and the Phanatic is too!

Article: news.bloomberglaw.com/ip-law/phillie-phanatic-is-back-after-lawsuit-settlement-approved

Copyright Case: www.bloomberglaw.com/public/desktop/document/PhilliesvHarrisonEricksonIncorporatedetalDocketNo119cv07239SDNYAu/4?1649374041

Hi everyone,

As the new Formula 1 (F1) season is fast approaching, the first race of the season being on March 20th, I was curious about how F1 handles IP. This curiosity is derived from the innovation that F1 exhibits each season. For those that do not know, each year each F1 team has to develop a new car based on the guidelines going into that season. This year is particularly special as this season we are going to see the most radical change in guidelines in years. F1 is all about finding the grey areas in the guidelines to develop technology that will give you an edge as every hundredth of a second could mean the difference between winning and losing. On the line is not just pride but teams are compensated by F1 at the end of the season based on their position in the standings. Where a team places can make a difference of 10s of millions of dollars, which of course would make the team more competitive going into the next year as they’d have more funding. Teams definitely have trademarks in their brands but revolutionary F1 technology is often not patented. Teams spend hundreds of millions of dollars developing this technology and do not patent it but rather try to keep their innovations as trade secrets – why is this so? You may think it sounds ridiculous that a company would spend that amount of money to develop technology and not patent it. This is the case because the governing body of F1 has actually said that if a team attempts to patent technology and enforce it, that technology would be banned. If a team patents a design and implements it, the other teams will simply vote it out via the FIA Technical Working Group. The logic here is that if one team develops technology that blows the competition out of the water and then patents it, the racing (which is the whole purpose of F1) would suffer. No one wants to see a race for second with one team dominating. It is a bit funny to write that as Mercedes has actually been dominant from 2014-2021, their driver’s championship streak finally came to an end last year when Red Bull finally won (in a very controversial fashion). Mercedes’s run of dominance is attributed to great drivers, a great engineering team (with some well-kept trade secrets), and a massive budget but not patents. Another reason for the lack of patents in F1 is patenting technology takes time. Cars are updated throughout the year from race to race, if something works it stays, if it doesn’t the team could potentially change it. The patent process is often lengthy and would not keep up with the pace of an F1 season or radical changes in development from year to year.

Despite not patenting the technology in F1, teams that are often owned by major car manufacturers often implement the technology they develop for their F1 cars into their road vehicles. It’s unclear how or if this technology gets patented for road car use but it is definitely cool to see that innovation show some utility on larger scale. An example of such a technology is paddle shifters developed in the 80s and now incorporated in many cars around the world. There are many more examples and I have attached a few articles below for everyone if they would like to learn more about F1 and IP or about the innovations that have made it into road cars.

Thanks for reading!

-Amit Chandi

https://www.formula1.com/en/latest/article.how-f1-technology-has-supercharged-the-world.6Gtk3hBxGyUGbNH0q8vDQK.html 

https://blog.ipleaders.in/driving-force-behind-intellectual-property-formula-1/ 

https://www.iposgoode.ca/2021/05/formula-1-living-in-a-patent-free-world/#:~:text=Strict%20patent%20rules%20would%20essentially,keep%20the%20playing%20field%20level.%E2%80%9D

https://www.budgetdirect.com.au/interactives/special-feature/f1-trickle-down-effect.php 

One interesting topic I thought of in relation to IP law is IP and COVID-19 vaccines. As the wealthy countries of the world vaccinate their populations, even arriving at the stage of providing a third booster dose, developing nations lag significantly far behind in vaccination rates. This is partially due to supply issues as wealthy countries put down big money to secure their vaccine procurement contracts and hoard a large, outsized chunk of the global vaccine supply. This article, “Dose of Desperation,” outlines this exact problem in intricate detail. Canada, alongside other wealthy countries, bought up an outsized share of the global vaccine supply leaving poor countries to struggle to source the lifesaving medication. The Canadian government has acknowledged that the fight against COVID won’t be over unless the world en mass has access to vaccines. It seems to be that without widespread access to vaccines, new variants and outbreaks will continue to emerge putting the entire world at some level of risk. It will take a truly global effort to effectively end the COVID-19 pandemic. One question that has stuck with me through the course of these unprecedented times is, is it truly justified to provide IP in vaccines to the companies that have developed them when we as a global community are faced with a deadly virus that has taken the lives of millions? Currently, IP law prevents developing countries from making their own domestic, generic version of the vaccines. I understand that the rationale in providing IP in one’s creations is partially to incentivize inventors and scientists to innovate, but is a global pandemic a valid reason to ignore these goals of IP law? I wanted to explore whether there is a case to be made to suspend the patents for the vaccines so generic versions can be produced – would doing so actually have an effect and get vaccines out more broadly? Or would doing so still fail to meet the goal of providing vaccines more broadly, sooner?

Here is an interesting clip, CBC Clip, from the CBC that delves into these questions and outlines Doctors without Borders stance that patents should be suspended. Doctors without Borders’ argues this debate is cut and dry as it is about saving lives over saving systems (referring to IP law). The COVAX program that has multiple partners and contributors, mostly wealthy countries, was designed to increase vaccine availability without the suspension of patents. There has been buy-in from the US and many EU countries into COVAX but both the US and EU have initially been against suspension of patents. The article I linked above details how despite the program having some success, most countries have failed to meet their commitments on getting vaccines to developing countries as soon as possible. Also, there have often been shipments of vaccines that arrive at their destination expired and of no use. Is mass production of the vaccines stripped of IP the answer? Would there even be sufficient facilities to produce the vaccine generically? Doctors without Borders’ seem to think so and the organization has cited the slow and ineffective rollout to developing countries as a reason to suspend the patents.  The Doctors without Borders representative in the clip, a co-inventor of the Hep C vaccine, acknowledges that the IP law system we have in place currently does incentivize innovation and is effective in a normal context, it’s just in the context of the COVID-19 pandemic that has had widespread effects on society that even go beyond the illness (financial impacts, child development issues, etc) the requirements of the system should be outweighed by the impact of the pandemic. Despite it being unlikely every country will directly benefit from suspending the patents, any increased global production of vaccines helps – especially in places like India that have a large chunk of their population unvaccinated despite being a large producer of vaccines for wealthy countries.

About 10 months ago, it seemed the US had come around on this issue as President Biden has changed his stance to support a temporary waiver of the vaccine patents. Here is an article explaining the change in course: US reverses stance. However, at the time I am writing this post there is still no waiver as the US and the other 100+ countries in favour of waiving the patents have met stiff opposition from the UK and Germany for the most part. Here is an interesting article explaining the pushback and where this debate has gone over the last year: Vaccine Waiver Pushback.

Moderna has made statements they would share IP but only in a post-pandemic situation – what’s the point then? What Moderna Reveals About the Cruel Absurdity of “Innovation” Under Pharmaceutical Monopolies. In my opinion, we need to make a stronger push to get waivers for vaccines so developing countries can produce supply at home and increase vaccine availability. The pharmaceutical companies may want to complain and throw a fit but if we’re being honest, these companies, while doing the world a great service in inventing these vaccines, have been paid back for their contribution plenty of times over. These companies have made billions of dollars over the course of the pandemic and providing countries with the ability to produce generic vaccines to finally make a global push to draw this pandemic to a close seems like a no-brainer to me.