15 Jan
2021

Hendrix family trademark dispute; ICANN 70 confirmed; Australian company changes ‘racist’ branding – news digest

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest round-up, we look at the NCAA pausing an athlete name, image and likeness vote, the US Intellectual Property Alliance launching with the aim of raising IP awareness, Authentic Vision and ATQ Germany teaming up, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Jonathan Walfisz (JW) and Tim Lince (TJL).

Market radar:

NCAA pauses athlete name, image and likeness vote – In October 2019, the governing board of the National Collegiate Athletics Association (NCAA) has voted unanimously to permit students participating in athletics the opportunity to benefit from the use of its name, image and likeness. The move was a significant one, with the board of governors directing each division to change name, image and likeness rules by January 2021. A vote was due this week on name, image and likeness and transfer proposals but at the last minute these were tabled, the NAA instead adopting a resolution stating it is committed to modernizing its rules. It stated: “Several external factors, including recent correspondence with the US Department of Justice, prompted members to delay voting on the proposals.” In a statement, council chair M. Grace Calhoun, athletics director at Pennsylvania, said: ““The council remains fully committed to modernising Division I rules in ways that benefit all student-athletes. Unfortunately, external factors require this pause, and the Council will use this time to enhance the proposals.” (TL)

USIPA launches with aim of raising IP awareness and collaboration – The United States Intellectual Property Alliance (USIPA), a non-profit dedicated to raising levels of IP awareness, collaboration and diversity, was launched this week. The organisation, which will bring together national, state, and local IP organisations, is built on three IP pillars: awareness and education; ecosystem collaboration; and diversity and inclusion. The USIPA Board currently has over 60 members from across the IP ecosystem, with representatives from the likes of the USPTO, Intellectual Property Owners Association, Licensing Executives Society, US Chamber of Commerce and the Center for Intellectual Property Understanding. Several state IP alliances are also on the board. “It is inspiring to see so many IP leaders and organizations join together to facilitate American IP objectives through support for inventors, designers, students and startups,” said Scott Frank, USIPA Chair. "The alliance will enhance our ability to compete in the global economy and encourage new innovation and creativity for now and decades to come.” (TL)

Authentic Vision and ATQ Germany team up to fight auto fakes – Anticounterfeiting and authentication solutions provider Authentic Vision has unveiled a partnership with ATQ Germany EK, a manufacturer of tested, OEM-quality automotive parts. The tie-up will see Authentic Vision mplement its authentication solution across ATQ Germany’s lines of parts. “Our partnership with ATQ Germany EK. assures consumers they have purchased genuine automotive parts that meet stringent manufacturer specifications for safety, performance and durability. We are pleased to be working with ATQ as a high-quality automotive components supplier and to bring our authentication solution to their supply chain. We are excited about the partnership and the benefits it provides to ATQ Germany EK’s supply chain and customers,” stated Thomas Weiss, CEO and founder of Authentic Vision. (TL)

Australian company changes ‘racist’ branding – Saputo Dairy Australia has announced that it will rebrand its cheese snack from ‘Coon Cheese’ to ‘Cheer Cheese’ this week after selling it under the previous name for over 80 years, reports the BBC. The original name was taken from American cheese maker Edward William Coon, who registered a patent for a cheese ripening process in the 1920s. Despite the distinct origin, the word is historically regarded as a racist slur and Aboriginal groups have campaigned for its removal from the cheese’s branding for years. The move comes a significant amount of time after similar decisions took place mid-last year by brands such as Uncle Ben’s, Land O’ Lakes, and Washington Redskins. (JW)

IACC and HSI extend collaboration in fight against fakes – The International Anti-Counterfeiting Coalition (IACC) and US Homeland Security Investigations (HSI) have signed a memorandum of understanding to advance collaboration in the fight against fakes. The MoU provides an official framework for the IACC and HSI, working through the National Intellectual Property Rights Coordination Center (IPR Center), to enhance operational effectiveness of IP crime enforcement through joint events, law enforcement training, closer engagement between the public and private sector, and information sharing. "Fakes kill jobs, innovation and people. Only by working together can we protect consumers and businesses, especially entrepreneurs, from the dangers of counterfeiting and piracy. We have partnered with the HSI and the IPR Center for many years and it is an honour to cement our collaboration through this MoU," said Bob Barchiesi, IACC president. (TL)

Legal radar:

Hendrix family comes to blows over trademark rights – Jimi Hendrix’s brother Leon Hendrix and niece Tina Hendrix have been found in contempt of court for violating a permanent injunction against use of their relative’s trademarks. The origin of the dispute is in the Jimi Hendrix trademarks that were owned by the musician’s father Al Hendrix’s company Experience Hendrix. Al Hendrix “expressly excluded Leon Hendrix and his family from that management team”, which passed into Al’s adopted daughter June’s hands after his passing. The permanent injunction in 2019 against Leon and Tina was the result of a suit by Experience Hendrix that found they were trading off the Jimi Hendrix trademarks with their tuition free ‘Hendrix Music Academy’. After continuing their operation, a court this week found Leon and Tina in contempt. Tina said of the decision: “I am astonished that the courts have sided with Experience Hendrix and stripped us from our rights to use our own family surname after a lifetime of doing so. This is a rare occurrence. The plaintiff gained the Hendrix name by virtue of adoption and has used it ever since, only to exploit millions of dollars off of Jimi Hendrix’s music, while using the proceeds to eliminate Jimi’s biological family members one by one, starting with Jimi’s own son, then Jimi’s brother and now his niece. I have never made one dollar off of my uncle while running a free music school for kids.” (JW)

Office radar:

(For more of the latest coronavirus-related updates from national IP offices, please read our dedicated article which is being continuously updated)

CNIPA releases new IP enforcement guiding cases – The China National Intellectual Property Administration (CNIPA) recently released three guiding administrative cases focused on IP enforcement. According to MARQUES, the cases provide guidance to the Administrations for Market Regulation (AMR) across mainland China. In fact, this is the first time that CNIPA has released guiding cases. For convenience, MARQUES has summarised the three case, with Haoyu Feng and Tingxi Huo from Chofn IP (and members of the MARQUES China Team) commenting: “The three trademark-related guiding cases have explicitly categorized the three types of trade mark use above as infringement and will help he AMRs nationwide to punish similar infringement in more consistently and efficiently.” (TJL)

Domain Radar:

ICANN 70 confirmed as a virtual event The Internet Corporation for Assigned Names and Numbers (ICANN) has announced that the ICANN Board of Directors has made the decision to convene ICANN70 as a virtual public meeting due to the continuing impact of the COVID-19 pandemic. The meeting was initially planned to be held in Cancún, Mexico. In consultation with community leaders, the ICANN 70 Virtual Community Forum dates have been modified and the meeting is scheduled to be held 22-25 March 2021. In a statement the organisation explained: “The health and safety of fhe ICANN community is always a top priority, and as such, holding ICANN 70 as an in-person meeting would not be feasible on its scheduled date.” ICANN 70 will be the fourth ICANN virtual public meeting since the pandemic began. (TL)

On the move:

Bell Nunnally adds IP partner – Roxanne Edwards has joined Bell Nunnally as partner and member of the firm’s intellectual property group. She previously practiced at Dallas-based Klemchuk LLP. Edwards focuses her practice on global brand development, protection, strategy and enforcement. (BD)

Siho Yoo joins Lewis Roca Rothberger Christie in Silicon Valley – Lewis Roca Rothberger Christie has appointed Siho (Scott) Yoo to of counsel in the firm’s intellectual property group in the Silicon Valley office. Yoo assists clients with their patent litigation, preparation and prosecution needs. He also provides advice on trademarks and other IP and technology matters. Yoo is fluent in Korean and has represented multiple Korean companies looking to enter the US market. (BD)

Maynard Cooper & Gale strengthens litigation bench with new hire – Suparna Datta has joined Maynard’s intellectual property practice group as of counsel in the firm’s Birmingham office. “We are excited to have Suparna join our nationwide Intellectual Property team,” said Sasha Rao, chair of Maynard’s intellectual property practice and partner in the San Francisco office. “Suparna’s deep electrical engineering background and extensive experience in both patent litigation and prosecution make her a strong addition to the practice.” (BD)

Dechert adds partners in Washington DC and Silicon Valley – Howard Levine and Jennifer Swan have joined Dechert in Washington DC and Silicon Valley, respectively. They are both partners within the firm’s intellectual property group. Jeff Plies, chair of Dechert’s intellectual property group, said, “We are thrilled to welcome Howard and Jennifer to the firm. Their strategic addition is a reflection of the growth opportunity we see in our life sciences litigation practice.” (BD)

DLA Piper welcomes IPT partner in Paris – Frank Valentin, formerly of Altana, has been appointed to partner within DLA Piper’s intellectual property and technology practice in Paris. He joins with a team of four others on 15 January. (BD)

Lewis Silkin expands IP team in Hong Kong and London – Two new partners, David Swain and Antony Craggs, have joined Lewis Silkin in Hong Kong and London, respectively. Swain is the new head of intellectual property in the Hong Kong office where he will lead the launch of the firm’s IP practice in Asia. He will also counsel clients on a range of non-contentious IP issues across the spectrum of IP assets. Swain has joined Lewis Silkon from Deacons. Craggs is a specialist in transactional and contentious IP matters. Based in London, he will help boost the firm’s IP disputes capabilities, particularly within patent litigation. Craggs spent four years as a partner at D Young & Co before joining Lewis Silkin. (BD)

New IP consultancy launched in Hong Kong – Hong Kong-based firm Oldham, Li & Nie has launched OLN IP, a consultancy specialising in IP services. Managing director Benjamin Choi and firm head Vera Sung will lead a team of IP experts across Hong Kong and Shanghai offices to provide IP management across trademarks, copyright, patents and design portfolios. (JW)

And finally...

WTR Connect returns this spring with five days of strategic content – The second WTR Connect series of digital events will take place the week commencing 15 March 2021. The event will offer more than 20 interactive digital sessions, each designed to facilitate discussion, benchmarking and the sharing of best practice around key topic areas and challenges facing trademark and brand leaders. The theme for the event is ‘exchanging cost-effective and resource-efficient best practices’ and each day will start with a keynote address from a major industry figure, which is followed by live breakout discussions lasting for a maximum of 60 minutes. Registration is free for WTR subscribers and participants can register for as many sessions as they like across the week, building their own schedule. For event timings, and to sign up to attend, please click here.

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WTR Editorial