New Year. New u…seful IP updates!

Date: Feb 13, 2024

The Mills Selig IP team has experience acting in patent infringement disputes for both patent owners and for those developing rival technology. 

This is the team’s first article of 2024 and, as always seems to be the case, the festive period provided a few IP gems

The first came in the form of tech giant Apple’s legal wranglings over their latest smart watches (Santa brought me an Apple watch, but it wasn’t posh enough to include the tech under scrutiny).

In September 2023 (just in time to be added to the Christmas lists of tech hungry teenagers), Apple announced the release of the Watch Ultra 2 and the Watch Series 9. Following Apple’s release, Masimo, a global medical technology company, alleged that Apple’s new models infringed patents held by them in respect of pulse oximetry technology.

Masimo filed a complaint with the International Trade Commission (ITC), alleging that Apple had poached its staff and used their knowledge to steal its blood oxygen monitoring technology. The ITC enforces and investigates acts of unfair competition, including patent, trademark, or copyright infringement; trade secret misappropriation; or antitrust. The ITC issued an Exclusion Order and Cease and Desist against Apple. As a result, Apple was barred from importing its new watches into the United States from Christmas Eve onwards. The Orders were subject to a 60-day review by the President, who had the power to veto the ITC’s decision. Apple sought a reprieve from the President, but this was refused.

Apple made an emergency application to the US Court of Appeal to halt the Orders. The Court of Appeal paused the ban on 27th December.  Apple have since disabled the blood oxygen feature on watches being sold directly by them into the US (although other retailers continue to sell the models with the feature enabled).  It remains to be seen whether the ITC will reverse its original decision. 

The Mills Selig IP team has experience acting in patent infringement disputes (although such disputes are certainly less common in NI than in the US) for both patent owners and for those developing rival technology.  We also regularly act in matters requiring emergency injunctive relief. Apple’s counsel must surely have spent Christmas day drafting that crucial application!

The New Year brought with it a copyright gift to those with a creative streak. On 1 January 2024 the copyright to the original Mickey Mouse character from Disney’s 1929 film “Steamboat Willie” expired, entering the public domain after 95 years.  This leaves the iconic and much-loved character vulnerable to the modern-day world. Among other things, a horror film entitled “Mickey Mouse Trap” depicting the character as a masked killer is due to be released in March.

Under UK copyright law, any copyright for literary, musical, dramatic and artistic works lasts from the date of the creation of the work until 70 years following the author’s death. The law in the US is similar.

However, back when the Mickey Mouse character was first created, US copyright law allowed a maximum of 56 years of protection. Disney lobbied to change this rule and succeeded with the passing of the Copyright Act 1976 which brought in 75 year protection for works published after 1922. Disney’s 75 years were thus set to expire in 2003. Such is the clout of the Disney empire that they successfully lobbied Congress again, and the Copyright Term Extension Act 1998 was passed –  dubbed the “Mickey Mouse Protection Act.” This extended copyright protection to 95 years.

While the 1928 character is no longer under copyright, later versions of Mickey are still protected. Creators are now free to remake the “Steamboat Willie” character but must be very careful not to fall into legal difficulty if any new depiction resembles the later versions of the character. Disney are notoriously litigious and take aggressive action against anyone they consider to be infringing their IP rights. It will be interesting to see how this unleashing of Mickey unfolds!

Editorial prepared by Kirsten Magee, Partner, Litigation @ Mills Selig with the assistance of Kate McCandless and Jamie Farrell-Murray

Kirsten Magee, Partner, Litigation
Kirsten is a highly skilled and experienced commercial litigator with a background in advising both private and public sector clients on a wide range of complex, high-value disputes.

T: 028 9024 3878

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