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We first wrote on this topic nearly a year ago[1]. Since then, courts have had an opportunity to interpret some of the provisions of the federal Defend Trade Secrets Act (DTSA). Indeed, since it was signed into law, more than 360 DTSA claims have been filed, with more than 343 complaints filed in federal court. California has seen more of these cases than any other state, finding itself host to over 15% of all DTSA claims.

As we addressed in our previous blog, there are some key distinctions between the DTSA and California’s Uniform Trade Secret Act (CUTSA) that may inform companies how to run their businesses and prepare for litigation should it be necessary. Some of these distinctions have come into greater focus as courts have interpreted the DTSA, at times with surprising results.

Inevitable Disclosure. When enacted, the DTSA was generally thought to reject the doctrine of inevitable disclosure like CUTSA. The doctrine of inevitable disclosure enables a plaintiff to “prove a claim of threatened misappropriation by demonstrating that the nature of a former employee’s new employment will ‘inevitably’ lead him to rely on the plaintiff’s trade secret.”[2] The DTSA provides that a court may enjoin “any actual or threatened misappropriation . . . provided the order does not prevent a person from accepting an offer of employment under conditions that avoid actual or threatened misappropriation.” 18 U.S.C. § 1836(b)(3)(A)(i)(I)).

Nevertheless, some courts have issued inevitable disclosure injunctions under the DTSA. For example, in Mickey’s Linen v. Fischer, the district court for the Northern District of Illinois granted a preliminary injunction, finding that the defendant-former employee would “inevitably use or disclose [the plaintiff’s] trade secrets during his employment with [a competitor].[3] Thus, notwithstanding DTSA’s prohibition on injunctions that preclude employment, there may be jurisdictions where it is possible to obtain an injunction based on inevitable disclosure (although California is unlikely to be one of them).[4] This is somewhat ironic since one of the purposes in enacting DTSA was uniformity across jurisdictions.

Whistleblower Immunity.[5] Unlike CUTSA, the DTSA expressly provides for whistleblower immunity. The thought was that whistleblowers would be more likely to whistleblow if they did not have to worry about the cost and burden of a resulting DTSA lawsuit. But that is not how it has turned out, at least based on Unum Group v. Loftus.[6] There, defendant employee moved to dismiss the plaintiff employer’s trade secret misappropriation claims on whistleblower immunity grounds. He claimed that he had turned over the documents that he took to his attorney in order to report and investigate a violation of law. The court denied the motion, reasoning that such defense cannot be adjudicated at the pleading stage and, instead, a defendant must submit to discovery and present evidence to justify the whistleblower immunity. Although this requirement may burden the putative whistleblower defendant, it may also prevent a defendant from evading litigation based on a mere cry of whistleblowing.

Ex Parte Seizure Order. Unlike CUTSA, the DTSA expressly allows a plaintiff to request – without any notice to the defendant — a court order directing enforcement officials to seize property to prevent further misappropriation. Given the potential power and disruptive nature of such a remedy, there was a lot of talk and concern about this aspect of the DTSA before and after its enactment. But, with the DTSA having over a year under its belt, practice shows that ex parte seizures are rarely sought and courts almost never issue them. The remedy is treated as truly extraordinary. Mission Capital Advisors LLC v. Romaka, [7] is one of the few cases where a DTSA ex parte seizure order was actually granted. The court there reasoned that the requisite extraordinary circumstances were present in light of the forensic evidence and misrepresentations about data deletion. The result in OOO Brunswick Rail Management v. Sultanov [8] – denial of an ex parte seizure order — is more the norm. There, the plaintiff argued that the seizure was necessary to stop data deletion and destruction of the evidence.[9] In denying the seizure requests in that case, the court instead ordered document preservation and delivery of devices to the court at the time of a scheduled preliminary injunction hearing.[10]

Sheppard Mullin attorneys have extensive experience litigating trade secret disputes, as well as navigating clients through the nuances of trade secret law outside of litigation.

[1] The Federal Defend Trade Secrets Act vs. The California Uniform Trade Secrets Act. Ms. Edelson is an editor and contributing author to TRADE SECRET LITIGATION AND PROTECTION IN CALIFORNIA (Defend Trade Secrets Act Supplement (State Bar of California 2017). Mr. Kim is a contributing author. Mr. Salen is a contributor to that Supplement.

[2] Rebecca Edelson and Jesse Salen, Federal DTSA versus California UTSA, California Business Law Practitioner, Vol. 32, No. 2, p. 38 (Spring 2017).

[3] No. 17 C 2154, 2017 WL 3970593, at *12-13 (N.D. Ill. Sept. 8, 2017); see also Molon Motor & Coil Corp. v. Nidec Motor Corp., No. 16 C 03545, 2017 WL 1954531, at *5 (N.D. Ill. May 11, 2017)(denying motion to dismiss because there was “enough to trigger the circumstantial inference that the trade secrets inevitably would be disclosed by [the former employee] to [the defendant-competitor].”); see also Panera, LLC v. Nettles, No. 4:16-cv-1181-JAR, 2016 WL 4124114 (E.D. Mo. Aug. 3, 2016) (finding the doctrine helpful for understanding why an employee’s duties at Papa John’s would almost certainly require him to draw upon and use Panera’s trade secrets).

[4] The DTSA prohibits injunctions that conflict with applicable state law precluding restraints on employment. 18 U.S.C. §1836(b)(3)(A)(i).

[5] A whistleblower is ordinarily thought to be someone who brings to light illegal activity of her company (e.g., by disclosing the matter to the attention of the authorities). Without laws to protect them, whistleblowers may risk reprisal and retaliation. The DTSA’s whistleblower immunity provision is one such law.

[6] No. 16-cv-40154-TSH (D. Mass. December 6, 2016)

[7] No. 1:16-cv-05878-LLS (S.D.N.Y. July 29, 2016)

[8] No. 5:17-cv-00017-EJD, 2017 WL 67119 (N.D. Cal. Jan. 6, 2017); see also Balearia Caribbean Ltd., Corp v. Calvo, No. 16-23300-CIV-WILLIAM, (S.D. Fla. Aug. 5, 2016) (denying a DTSA seizure request for failure to satisfy the “extraordinary circumstances” test and instead issuing a temporary restraining order).

[9] Id. (Plaintiff sought seizure of a laptop, mobile phone, and digital copies of Google and Rackspace email accounts of two former employees which allegedly contained plaintiff’s trade secrets.).

[10] Id.

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Cryptocurrencies and blockchain technology are rapidly emerging as disruptive technologies. As has happened with many new technologies, particularly disruptive ones, a patent arms race is occurring. The number of patents being filed for these technologies is rapidly increasing.

The number of published applications shows roughly a tenfold increase over the number of issued patents.

Despite this increase in patent filing activity, many companies are unaware of what aspects of this technology can be patented and many myths and misconceptions exist. In addition to the usual misconceptions about patents (detailed below), the open source aspect of many blockchain-based inventions leads to greater confusion. The patentability of software and technology platforms does not cease just because some or all of the software is open source or built on a known protocol.

This paper addresses what companies need to know about patent strategies for cryptocurrencies and blockchain technology. The key takeaway is to consult with a patent attorney who focuses on blockchain technology and get an assessment of whether your inventions are patentable. Don’t miss out due to misconceptions or bad advice.

Click here to view the full article.

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A summary of the European Commission’s Policy Document on standard essential patents (SEPs).

After considerable preparations and consultation the European Commission has on 29 November 2017 issued a Communication [1] “setting out the EU approach to standard essential patents”. This Communication is part of the wider Europe’s Digital Single Market initiative. Notably, however, this long-awaited paper is not likely to change the current landscape of FRAND litigation and licensing, and intentionally does not address the most controversial issues of the current debate.

The Communication attracted significant controversy within the Commission’s services (including DG Competition, DG Grow, DG Connect) as well as intense lobbying by stakeholders. Key issues initially thought to be included in the paper ultimately were not addressed, notably use-based licensing and licensing-to-all. The Commission defers these issues to an expert group which it will set up to gather industry practices, although without committing to providing further guidance in this area. Given the significant impact any more substantive statements on these topics would have had on either side of the industry, no news is probably good news.

Transparency and Access to Information

In the first section entitled increasing transparency on SEP exposure, the Commission sets out its views on how to increase transparency and access to relevant information relating to SEPs. This is probably the most notable part of the document, as the Commission addresses fundamental requirements for FRAND license negotiations which will hardly be controversial.

This section is partly addressed to SDOs who are encouraged to provide greater transparency, quality and accessibility in their databases and in the way they collect data. The Commission also addresses SEP owners and states that they “necessarily have to invest in substantiating to SEP users why patents from the patent holder’s portfolio are essential of the standard or how these patent are being infringed”. This should be achieved through more up-to-date and precise declarations. The Commission points out that 73% of patents declared essential in ETSI are granted after the standard is set. Final patents might differ considerably from a declared patent application and this should be addressed by a dynamic declaration process and an ongoing obligation to keep records up to date. In addition, the declared SEP should be linked to the relevant section in the standard and interested parties should be given contact details of the SEP owner to facilitate licensing. Finally, SDOs should encourage parties to publish details on judgements relating to litigated SEPs.

The Commission also points to a de facto presumption of essentiality resulting from recorded declarations. It identifies the need of a higher level of scrutiny on essentiality claims. The Commission however falls short of making a concrete proposal and merely states that any benefit of an increased scrutiny of essentiality (by an independent technical expert) must be balanced against the cost associated with such a review.

Overall, the Commission identifies in this section important elements of FRAND negotiations without providing a definitive view on whether (and how) these transparency measures should be applied to existing standards or rather only to new and key standards such as 5G. The Commission might well address these issues directly with SDOs in future. It is likely that it will have to deal with individual complaints against SEP owners who allegedly fall short of the transparency requirements set out in this Communication.

FRAND

In the second section the Commission recognizes the divergence of interpretation of the meaning of FRAND and offers “signposts” with a view to open a discussion on this subject encouraging stakeholders to engage in a dialogue with each other and the Commission on the meaning of FRAND. This is not a new topic and it remains to be seen which turn the discussion is going to take with the Commission’s involvement.

The Commission lists four principles which “should be taken into account” to assist with the valuation of SEPs without providing a definitive view on the matter. Licensing terms should relate to the economic value of the patented technology and “in principle should not include any element resulting from the decision to include the technology in the standard”. The value of the technology should be based on its present economic value irrespective of the market success of the product while also providing adequate incentives to innovate. The Commission favors a top-down approach in evaluating FRAND value where the value is a proportion of an aggregate rate for the standard assessing the overall added value of the technology. In how far deviation from these evaluation methods will amount to possible infringements and antitrust scrutiny remains to be seen.

In terms of non-discrimination the Commission endorses the position taken by Mr. Justice Birss in the Unwired Planet v Huawei case ([2017] EWHC 711 (Pat)), namely that there should be no discrimination between implementers that are “similarly situated” and suggests a case-by-case, or sector-by-sector approach. The Commission recognizes that those involved in FRAND licensing and litigation have the greatest expertise in this area, and to capture the knowledge for the benefit of the rest of the industry, it will set up an expert group which will look at FRAND licensing practices in more depth. This will not likely result in another policy document but rather assist in creating greater transparency in the market.

Enforcement of SEPs

In the third section the Commission reiterates the limits antitrust law imposes on the use of IP injunctions defined most recently by the CJEU in the case Huawei/ZTE (C-170/13) while also referring to the CJEU’s rules on the ping-pong between SEP owners and willing licensees. The Commission will continue to work with stakeholders to develop and use methodologies which allow for efficient and effective SEP litigation as well as mediation and ADR.

Other initiatives announced today include new Guidance on the Directive on the enforcement of intellectual property rights (IPRED), measures against counterfeiting and piracy, initiatives to reduce the volume of counterfeited goods reaching the EU market. The press release can be found here.

Comment

This Communication is the result of a lengthy debate between different Commission services and key stakeholders of the industry, and the lack of clearer policy statements is ample evidence of the high level of controversy continuing to surround SEPs and FRAND licensing.

The Commission emphasizes the importance of the application of EU competition law to SEPs and the concept of FRAND. It has been careful in not trying to steer the debate in favor of one side of the industry. This stands in contrast to a recent statement by the US DOJ’s new assistant attorney general Makan Delrahim, found here.

The Communication will no doubt be referred to by SEP owners and potential licensees in national litigation to argue their case and judges will be asked to assess the content of the Communication. While the Commission’s new Communication may therefore be of some help, the parties to FRAND negotiations will have to continue to carefully self-assess their behavior on the basis of existing case law and guidance or risk falling under the scrutiny of judges and antitrust authorities who will assess anticompetitive effects of non-FRAND behavior. The Commission will remain an active enforcer in this area and it is also encouraging to see that more and more judges on both sides of the Atlantic take the challenge to rule in this complex area and their judgments will add to the legal certainty.

[1] Under EU law a Communication is an administrative document with no legally binding effect and merely summarizes current Commission views on a topical issue, here SEPs. A Communication is without prejudice to any interpretation of law by the Court of Justice of the EU and not binding on future Commission enforcement of EU competition law.

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We first wrote on this topic nearly a year ago[1]. Since then, courts have had an opportunity to interpret some of the provisions of the federal Defend Trade Secrets Act (DTSA). Indeed, since it was signed into law, more than 360 DTSA claims have been filed, with more than 343 complaints filed in federal court. California has seen more of these cases than any other state, finding itself host to over 15% of all DTSA claims.

As we addressed in our previous blog, there are some key distinctions between the DTSA and California’s Uniform Trade Secret Act (CUTSA) that may inform companies how to run their businesses and prepare for litigation should it be necessary. Some of these distinctions have come into greater focus as courts have interpreted the DTSA, at times with surprising results.

Inevitable Disclosure. When enacted, the DTSA was generally thought to reject the doctrine of inevitable disclosure like CUTSA. The doctrine of inevitable disclosure enables a plaintiff to “prove a claim of threatened misappropriation by demonstrating that the nature of a former employee’s new employment will ‘inevitably’ lead him to rely on the plaintiff’s trade secret.”[2] The DTSA provides that a court may enjoin “any actual or threatened misappropriation . . . provided the order does not prevent a person from accepting an offer of employment under conditions that avoid actual or threatened misappropriation.” 18 U.S.C. § 1836(b)(3)(A)(i)(I)).

Nevertheless, some courts have issued inevitable disclosure injunctions under the DTSA. For example, in Mickey’s Linen v. Fischer, the district court for the Northern District of Illinois granted a preliminary injunction, finding that the defendant-former employee would “inevitably use or disclose [the plaintiff’s] trade secrets during his employment with [a competitor].[3] Thus, notwithstanding DTSA’s prohibition on injunctions that preclude employment, there may be jurisdictions where it is possible to obtain an injunction based on inevitable disclosure (although California is unlikely to be one of them).[4] This is somewhat ironic since one of the purposes in enacting DTSA was uniformity across jurisdictions.

Whistleblower Immunity. [5] Unlike CUTSA, the DTSA expressly provides for whistleblower immunity. The thought was that whistleblowers would be more likely to whistleblow if they did not have to worry about the cost and burden of a resulting DTSA lawsuit. But that is not how it has turned out, at least based on Unum Group v. Loftus.[6] There, defendant employee moved to dismiss the plaintiff employer’s trade secret misappropriation claims on whistleblower immunity grounds. He claimed that he had turned over the documents that he took to his attorney in order to report and investigate a violation of law. The court denied the motion, reasoning that such defense cannot be adjudicated at the pleading stage and, instead, a defendant must submit to discovery and present evidence to justify the whistleblower immunity. Although this requirement may burden the putative whistleblower defendant, it may also prevent a defendant from evading litigation based on a mere cry of whistleblowing.

Ex Parte Seizure Order. Unlike CUTSA, the DTSA expressly allows a plaintiff to request – without any notice to the defendant — a court order directing enforcement officials to seize property to prevent further misappropriation. Given the potential power and disruptive nature of such a remedy, there was a lot of talk and concern about this aspect of the DTSA before and after its enactment. But, with the DTSA having over a year under its belt, practice shows that ex parte seizures are rarely sought and courts almost never issue them. The remedy is treated as truly extraordinary. Mission Capital Advisors LLC v. Romaka, [7] is one of the few cases where a DTSA ex parte seizure order was actually granted. The court there reasoned that the requisite extraordinary circumstances were present in light of the forensic evidence and misrepresentations about data deletion. The result in OOO Brunswick Rail Management v. Sultanov [8] – denial of an ex parte seizure order — is more the norm. There, the plaintiff argued that the seizure was necessary to stop data deletion and destruction of the evidence.[9] In denying the seizure requests in that case, the court instead ordered document preservation and delivery of devices to the court at the time of a scheduled preliminary injunction hearing.[10]

Sheppard Mullin attorneys have extensive experience litigating trade secret disputes, as well as navigating clients through the nuances of trade secret law outside of litigation.

[1] The Federal Defend Trade Secrets Act vs. The California Uniform Trade Secrets Act

[2] Rebecca Edelson and Jesse Salen, Federal DTSA versus California UTSA, California Business Law Practitioner, Vol. 32, No. 2, p. 38 (Spring 2017).

[3] No. 17 C 2154, 2017 WL 3970593, at *12-13 (N.D. Ill. Sept. 8, 2017); see also Molon Motor & Coil Corp. v. Nidec Motor Corp., No. 16 C 03545, 2017 WL 1954531, at *5 (N.D. Ill. May 11, 2017)(denying motion to dismiss because there was “enough to trigger the circumstantial inference that the trade secrets inevitably would be disclosed by [the former employee] to [the defendant-competitor].”); see also Panera, LLC v. Nettles, No. 4:16-cv-1181-JAR, 2016 WL 4124114 (E.D. Mo. Aug. 3, 2016) (finding the doctrine helpful for understanding why an employee’s duties at Papa John’s would almost certainly require him to draw upon and use Panera’s trade secrets).

[4] The DTSA prohibits injunctions that conflict with applicable state law precluding restraints on employment. 18 U.S.C. §1836(b)(3)(A)(i).

[5] A whistleblower is ordinarily thought to be someone who brings to light illegal activity of her company (e.g., by disclosing the matter to the attention of the authorities). Without laws to protect them, whistleblowers may risk reprisal and retaliation. The DTSA’s whistleblower immunity provision is one such law.

[6] No. 16-cv-40154-TSH (D. Mass. December 6, 2016)

[7] No. 1:16-cv-05878-LLS (S.D.N.Y. July 29, 2016)

[8] No. 5:17-cv-00017-EJD, 2017 WL 67119 (N.D. Cal. Jan. 6, 2017); see also Balearia Caribbean Ltd., Corp v. Calvo, No. 16-23300-CIV-WILLIAM, (S.D. Fla. Aug. 5, 2016) (denying a DTSA seizure request for failure to satisfy the “extraordinary circumstances” test and instead issuing a temporary restraining order).

[9] Id. (Plaintiff sought seizure of a laptop, mobile phone, and digital copies of Google and Rackspace email accounts of two former employees which allegedly contained plaintiff’s trade secrets.).

[10] Id.

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Growing frustration in the fashion community regarding weak or non-existent intellectual property laws has finally caught the attention of some nations. Nigeria is one nation that currently is trying to alleviate this frustration by reforming its intellectual property laws. This reform is driven, in part, because, Lagos, Nigeria has quickly risen as a fashion hub, and has been compared with such fashion centers as London, Paris, Milan, and New York. Nigerian designers have recently experienced great global success and visibility. For example, Amaka Osakwe has been pushing the limits of Nigerian fashion and has gained the attention of fashionistas in the United States and abroad. In 2014, she was invited to the White House by Michelle Obama, an admirer of her work, and her “Maki Oh” designs have been worn by Lupita Nyongo and other A-list celebrities. Last year, Ms. Osakwe was named a LVMH Louis Vuitton Moët Hennessy Finalist, placing her among the most notable young fashion designers in the world today. Other talented Nigerian designers include Duro Olowu, Deola Sagoe, Lisa Folawiyo, and Lanre DeSilva-Ajayi. As these designers continue to gain worldwide recognition, they must protect their designs from infringement both within Nigeria and globally.

The first hurdle — protecting their fashion designs in Nigeria — is not a simple task. Copyright protection is typically sought for the two-dimensional aspects of clothing design, while design law may protect the three-dimensional design and shape of the piece. However, under both Nigeria’s copyright and design laws, designers have encountered significant difficulty protecting their works. Section 1(3) of Nigeria’s Copyright Act states: “An artistic work shall not be eligible for copyright, if at the time when the work is made, it is intended by the author to be used as a model or pattern to be multiplied by any industrial process.”[1] As a result, protection under the Nigerian Copyright Act is not available where a designer intends to mass produce his or her garments. This creates an inadvertent disincentive for Nigerian designers striving for global success because commercially marketed designs are unprotected under the Copyright Act.

Alternatively, Nigerian designers may seek protection by obtaining a design patent, which permits mass production, but is also difficult to secure.[2] Designers who chose this route are often impeded by the lengthy processing time required to obtain the patent, the fees associated with the application and registration process, and the burden to prove that their designs are entirely “new,” varying significantly from each prior design in every country across the world.[3] Each of these obstacles, particularly the last, may preclude protection under Nigeria’s Patents and Design Act: “Any anticipation of the design anywhere in the world, by any means whatsoever before the date of the application for registration of the relevant priority date destroys novelty.”[4] This high standard for proving novelty is often difficult to meet, especially for designers known for their particular aesthetic, as displayed in their prior works, and because fashion designs are often derivative of prior designs.

Nigerian intellectual property scholars have recognized these dilemmas facing Nigerian fashion designers in light of Nigeria’s ascension in the world fashion marketplace and suggested intellectual property reform to remedy them. In an interview with The Guardian, Professor Adebambo Anthony Adewopo, an intellectual property law scholar at Lagos State University and Senior Advocate of Nigeria stated, “[Nigerian intellectual property] laws have remained largely unsuited to the emergent commercial and technological development” and “[w]hat [Nigeria] need[s] is a holistic reform of IP in substance and in form, including a well-articulated national IP and innovation policy.”[5]

Such reform could result in laws that better protect fashion designs, as exemplified in the laws of some nations in the European Union. For instance, France’s Copyright Act lists fashion designs as works of art that are afforded full copyright protection, regardless of production intent.[6] If such a law were implemented in Nigeria, it could help propel Nigeria’s growing fashion industry by protecting its designers from infringement.

Also, in 2002, the European Union established a Fashion Design and Unregistered Community Design right. It also empowered fashion designers to litigate infringement claims before the Court of Justice of the European Union (“CJEU”) asserting that “individual in character” designs, meaning designs for which the overall impression is different from that of one or more earlier designs, were copied by someone within the jurisdiction of one of the member states.[7] This standard, upheld by the CJEU in Karen Millen Fashions Ltd. v. Dunnes Stores, et al.,[8] differs from that in Nigeria, which requires not only that the impression of the design be different, but that the design be completely unanticipated elsewhere in the world.

Nigeria is not the only country that could benefit from reforms similar to those highlighted. Australia’s copyright law is similar to Nigeria’s in that a design loses copyright protection if it is applied to more than fifty articles.[9] According to the World Intellectual Property Organization (“WIPO”) on Australian design, “copyright protection is . . . available for works of artistic craftsmanship, such as one-off fashion garments and jewelry. However, if you intend to mass produce or make multiple copies of items, you should rely on design law rather than copyright law.”[10] The organization then states, though, that, “[i]f you have publicly disclosed your designs (e.g., if your designs have appeared in fashion magazines, paraded garments at a fashion show, or sold it as a product) prior to registration you may have lost your ability to protect your design.”[11] Should designers fall into this disclosure trap, perhaps in their haste to debut their new “it” pieces during the long pre-registration period and before the fashion trend expires, they may be without protection.

The United States also has unsuccessfully attempted copyright reform to protect fashion designs, and the debate about the adequacy of its current copyright protections continues.[12] The United States Supreme Court’s holding in Star Athletica, L.L.C. v. Varsity Brands, Inc., (“Star Athletica”), expanded the scope of the separability analysis by affirming the Sixth Circuit decision that the design features incorporated in a useful article, such as the cheerleading costumes in the case, are protected under the Copyright Act when they can be separated from, and are capable of existing independently of, the design’s utilitarian aspects.[13] Following the Star Athletica precedent, the “separability doctrine” has been successfully used to protect fashion designs in the United States.[14] Yet, debate persists about the impact of the decision. Some scholars still advocate the need for copyright reform to clarify the separability doctrine and to ensure consistent protection for fashion designs in the United States.[15] Regarding potential design protection, the United States’ Congress has yet to pass legislation specifically protecting fashion designs, although a few bills have been introduced in recent years.[16]

In addition to the hurdle of gaining protection for designs in Nigeria, Nigerian designers also must determine whether they have recourse under international law to bring actions against infringers in other countries — which options are problematic. The Berne Convention for the Protection of Literary and Artistic Works (the “Convention”) does not recognize fashion designs as copyrightable works. WIPO has not interpreted the Berne Convention as permitting protection for fashion designs per se. Certain protections are afforded to copyrights and designs in other jurisdictions but often the situs of creation is the determining factor for analyzing copyright protection, while the situs of infringement is the determining factor for the laws applied in any potential lawsuit.

Innovation and technology have revolutionized the fashion industry by increasing the speed of reproduction of materials. This also has hastened the pace of infringement worldwide. The need for reform of Nigerian intellectual property laws to protect Nigerian fashion designs is apparent. Intellectual property law reform in Nigeria would not only be beneficial to protecting designers and the industry at large, but also could provide direct economic advantages which would help protect the prosperity of Nigeria’s fashion designers. Legal scholars in Nigeria and other similarly situated countries are recognizing the need for reform and the economic and reputational benefits that such reform could bestow. For now, designers should first determine to what extent their works can be protected in their native countries and worldwide. As a general matter, the issues discussed here highlight the complexities with designing, selling, and marketing clothing in various countries, especially when designs are not well protected. Designers should consult with their legal advisors to understand the intellectual property laws of different countries so they may fashion an informed business strategy for obtaining international success.

[1] Chapter C28, Laws of the Federation of Nigeria, 2004.

[2] Patents and Designs Act (Chapter 344, Laws of the Federation of Nigeria 1990).

[3] Id. at Section 13(5).

[4] Enyinna S. Nwauche, Prior Use and Registration of Designs in Nigeria, at 827.

[5] Betram Nwannekanma, ‘Nigeria’s intellectual property laws not suited for emerging commercial and technological development’, Oct. 3, 2017, available at https://guardian.ng/features/law/nigerias-intellectual-property-laws-not-suited-for-emerging-commercial-and-technological-development/.

[6] French Copyright Act of 1783, Art.112-2

[7] Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Designs.

[8] Karen Millen Fashions Ltd. v. Dunnes Stores, Dunnes Stores (Limerick) Ltd., ECLI:EU:C:2014:206, available at http://curia.europa.eu/juris/document/document.jsf;jsessionid=9ea7d2dc30dde341be9729aa48178799e5c4c69fe003.e34KaxiLc3qMb40Rch0SaxyNaNz0?text=&docid=150202&pageIndex=0&doclang=en&mode=lst&dir=&occ=first&part=1&cid=849624.

[9] Reg. No. 17 of the Copyright Regulations, 1969.

[10] Fashion Rules: A Guide to Intellectual Property for Australian Clothing and Fashion Design Industry, WIPO, 2009.

[11] Id.

[12] See, e.g., The Innovative Design Protection and Privacy Prevention Act: Will Design Protection Be In Vogue in Congress?, Sheppard Mullin Fashion and Apparel Law Blog, Aug. 23, 2010, available at https://www.fashionapparellawblog.com/2010/08/articles/enforcement-of-fashion-laws/the-innovative-design-protection-and-privacy-prevention-act-will-design-protection-be-in-vogue-in-congress/?utm_source=feedburner&utm_medium=feed&utm_campaign=Feed%3A+FashionApparellLawBlog+%28Fashion+Apparell+Law+Blog%29.

[13] Star Athletic, LLC v. Varsity Brands, Inc., No. 15—866, slip. op. at 7 (Mar. 22, 2017), https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf; Who’s Got the Spirit?! Supreme Court Decides Star Athletica, LLC v. Varsity Brands, Inc.; New Two-Part Test Seeks to Clear Up the “Mess” But Questions Still Remain About the Subjective Nature of the Separability Analysis, Sheppard Mullin Fashion and Apparel Law Blog, Mar. 27, 2017, available at https://www.fashionapparellawblog.com/2017/03/articles/miscellaneous/whos-got-the-spirit-supreme-court-decides-star-athletic-llc-v-varsity-brands-inc-new-two-part-test-seeks-to-clear-up-the-mess-but-questions-still-remain-about-the-su/.

[14] See, e.g., L.A. T-Shirt & Print, Inc. v. Rue 21, Inc., Slip Copy, 2017 Copyr.L.Dec. P 31,135.

[15] See, e.g., Julie Zerbo, Protecting Fashion Designs: Not Only “What?” but “Who?”, 6 Am. U. Bus. L. Rev. 595, 596 (2017)

[16] See H.R. 2033, S. 1957, H.R. 2511, and H.R. 2196.

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Cryptocurrencies and blockchain technology are rapidly emerging as disruptive technologies. As has happened with many new technologies, particularly disruptive ones, a patent arms race is occurring. The number of patents being filed for these technologies is rapidly increasing.

The number of published applications shows roughly a tenfold increase over the number of issued patents.

Despite this increase in patent filing activity, many companies are unaware of what aspects of this technology can be patented and many myths and misconceptions exist. In addition to the usual misconceptions about patents (detailed below), the open source aspect of many blockchain-based inventions leads to greater confusion. The patentability of software and technology platforms does not cease just because some or all of the software is open source or built on a known protocol.

This paper addresses what companies need to know about patent strategies for cryptocurrencies and blockchain technology. The key takeaway is to consult with a patent attorney who focuses on blockchain technology and get an assessment of whether your inventions are patentable. Don’t miss out due to misconceptions or bad advice.

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