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 Intellectual Property
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December 2009
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The purpose of this newsletter to keep in
touch with our friends and colleagues as well as
provide practical information and news relating to
Intellectual Property law.
Please forward this newsletter to anyone who
might be interested. Previous issues of
GRR Intellectual Property News can be found on our
website.
We take this opportunity to wish our friends
and colleagues a happy holiday and a wonderful new
year!
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| Special Announcement--Jim Reisman to
Retire |
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After having founded Gottlieb, Rackman & Reisman in
1970 with George
Gottlieb and Mike
Rackman, and having practiced intellectual property
law for 44 years, our partner, Jim
Reisman, has announced his plans to retire as of December
31, 2009.
The transfer of Jim's IP work to other attorneys in our
firm will be smooth and straightforward. Then, as of January
1, 2010, Jim will become "Of Counsel" to the firm so he
can remain involved in any particular issues or matters
where his advice is needed.
While Jim will be in the office regularly until the end
of January, 2010, and then periodically as needed, he will
become more involved in volunteer work as well as taking
advantage of the many New York cultural pursuits that he has
always loved. Anyone who wants to contact Jim before he
retires can e-mail him at jreisman@grr.com or just call him to
wish him
well. |
| GRR Client Wins Motion for Summary Judgment,
Resulting in Dismissal of Case Alleging Copyright
Infringement |
|
On November 17, 2009, GRR client R/G Black Tie LLC won
its motion for summary judgment in a copyright infringement
case. R/G Black Tie was represented by George
Gottlieb and Maris R.
Kessel. Plaintiff Lon Keith Klein, a jewelry designer,
brought a copyright infringement action against GRR's client
R/G Black Tie LLC in the Eastern District Court of New York.
Klein claimed that he had made drawings for cuff-links which
R/G Black Tie had improperly used as part of a "Steinway"
licensed program. However, the "Steinway" cuff-link program
did not move forward. After single samples were made, the
licensed business terminated and the samples were discarded.
Our client provided financial data to show that no sales had
ever been made and hence there were no profits from any sale
of cuff-links. On this basis, the Court granted our summary
judgment motion and terminated the suit, without any need of
further investigation or trial. Click here
for a copy of the
decision. |
| Attorney
Presentations &
Publications |
|
 George
Gottlieb and Marc P.
Misthal have contributed an extensive chapter on
intellectual property to the newly released book Fashion
Law: A Guide for Designers, Fashion Executives and
Attorneys. The book takes a practical approach to
addressing legal issues in the fashion industry. It is the
first book to comprehensively examine, in one volume, those
areas of the law implicated in the fashion business
(including, in addition to intellectual property issues,
franchising, distribution, rentals, leasing and
import/export). Fashion Law, published by
Fairchild Books, is available from Amazon.com, Barnes and
Noble and other booksellers.
On November 10, 2009, Barry A.
Cooper gave a CLE presentation to approximately fifty
attorneys on the basics of patent law. The presentation
was sponsored by Hudson Valley Bank.
Amy B.
Goldsmith's CLE presentation on the Valuation of
Intellectual Property is now available from Lawline.com.
Click here
for more information.
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| Google Revises
Settlement to Appease Objectors and Justice
Department |
|
As reported in our prior issues (see here
and here),
Google is seeking to settle a class-action suit brought by
authors and publishers over its Google Books program. On
November 13, 2009, Google and the representatives of authors
and publishers filed a revised settlement with the Court in
order to cure many of the issues raised by the original
settlement. The areas of concern included class
notification, antitrust law, and conformance with foreign
treaties. Whether the revised settlement has traveled
far enough to address the concerns raised by the original
settlement is not yet known. The revised
settlement applies only to U.S. books and inserts registered
for copyright before January 5, 2009 and foreign works
published in the U.K., Australia or Canada as of January 5,
2009. Importantly, books and inserts from all other
countries around the world have been removed.
Additionally, the Books Rights Registry, which will oversee
the royalty payments to rights holders, will now include
representatives from the U.K., Australia and Canada.
This change will appease many of the foreign objectors and
bring the settlement more in line with international
treaties. The Books Rights Registry must also
affirmatively search for the copyright owner after holding
unclaimed profits for five years; the unclaimed money is
donated to charity after ten years. Additionally, an
independent fiduciary will be appointed to represent the
owners of unclaimed works. By including a representative
of the class members and requiring a search for owners of
unclaimed royalties, the rights of those members of the class
who are most at risk of being underrepresented are better
protected. Eliminated from the
settlement is the "most favored nations" clause, which would
have given Google the power to limit the Registry's ability to
license content to Google's competitors. Thus,
competitors such as Amazon and Microsoft will be less
disadvantaged if they chose to market a competing
product. Antitrust objectors may not feel this is
enough, but it certainly limits the anticompetitive nature of
the original settlement. The revised settlement
includes many other changes (providing additional free
terminals to public libraries; inclusion of Creative Commons
licenses; moves the opt-out deadline to early
2010). Even with all of these changes, many objections
will remain. But since the Department of Justice was
consulted in the drafting of the revised settlement, it is
very likely that this version will be approved. The next
step is a fairness hearing with the Court, scheduled for
February 18, 2010. We will continue to report on all
developments. For further information, contact Joshua
Matthews. |
| Reputation in One
Member State Entitltes Trademark Owners to Protection from
Dilution and Misappropriation Throught EU |
|
In PAGO International GmbH v. Tirolmilch registrierte
Genossenschaft mbH, Case C-301/07 (ECJ, Oct. 6, 2009)
(click here
for decision), the European Court of Justice ("ECJ")
ruled that a registered Community Trademark's ("CTM")
reputation in only one member state of the EU is
sufficient to prevent third parties from using
a similar mark throughout the European Community that
would take unfair advantage of, or dilute
the distinctive quality of, a CTM.  Pago International owns a trademark, widely known in
Austria, consisting of the image of a juice bottle and a glass
of juice. The mark is used in connection with the
advertising and sale of fruit drinks and fruit juices, and is
the subject of a CTM registration. When the Austrian
company Tirolmilch, also a manufacturer of fruit
drinks, began packaging its competitive LATELLA
products in a glass bottle similar to that of
Pago's and started advertising these products by
featuring a bottle next to a full glass, Pago sued Tirolmilch
for trademark infringement and dilution. Pago argued
that Tirolmilch was trading on the
well-known reputation of its PAGO & Design mark in
Austria, and sought an EU-wide injunction to prevent the
continued advertising and sale of Tirolmilch's products.
The Austrian Supreme Court found that Tirolmilch did not take
unfair advantage of the PAGO & Design mark's reputation,
but asked the ECJ to rule on whether a CTM with a reputation
in only one member state (Austria), can be protected as a
"trade mark with reputation" throughout
the EU. The ECJ ruled that a CTM may be protected based
on its reputation if the mark is known by a "substantial part"
of the European public. Because a single
member state may be considered a "substantial part" of the
European Community, a trademark that is well-known in
only one member state can be protected throughout
the EU on the basis of that reputation. The
decision is consistent with the practices of
the EU Trademark Office ("OHIM") and many national courts
who have taken a similar view that a well-known trademark
in one member state may rely on its reputation across the
EU. For further information, contact Lesley
Matty. |
| Yours, Mine and Our
Genes or Myriad's? |
|
In our July
newsletter, we reported on the case of Association for
Molecular Pathology, et al., v. Myriad Genetics, et al.,.
09 Civ. 4515 (S.D.N.Y.). On November 1, 2009, Judge Robert
Sweet issued an 85 page decision (available here)
denying the defendants' motion to dismiss. The Court held that
it had subject matter jurisdiction and that plaintiffs had
standing to proceed against the U.S. Patent Office, Myriad
Genetics and the other defendants for constitutional
violations. The Court also held that the plaintiffs'
allegations of constitutional violations (that products of
nature cannot be patented) were "plausible and specific," and
noted that the suit raised complex questions regarding the
need to promote biomedical research while protecting the
constitutional right to one's genetic identity. We will
continue to keep our eyes on this
case. For
further information, contact Amy B.
Goldsmith. |
| Personal Names Not Required to Have Secondary
Meaning for Registration |
|
Christopher Brooks v. Creative Arts By
Calloway, LLC, Opposition No. 91160266 (T.T.A.B. October
30, 2009). Christopher Brooks, Cab Calloway's
grandson, opposed issuance of a trademark registration for
CAB CALLOWAY for entertainment services that had been filed
in the Patent and Trademark Office by Creative Arts By
Calloway, LLC, a company founded by Cab Calloway's widow and
two of her daughters. The grandson claimed prior
rights in the name THE CAB CALLOWAY ORCHESTRA in connection
with live musical performances. To support their position,
Mr. Brooks' aunt and grandmother sought to rely on statements
made by Mr. Brooks in a prior litigation in which they accused
Mr. Brooks of infringement. The Trademark Office,
however, found that arguments made in the earlier infringement
proceedings were irrelevant and not binding on either party to
the opposition action, because both the proceedings and legal
standards were different. The infringement action was a
court case deciding use of the name. In contrast, the
opposition action was before the Patent and Trademark Office
deciding the right to register a name. Next, the
Trademark Office found that although surnames (i.e., last
names) cannot be registered as trademarks in the U.S. absent
secondary meaning, there was no requirement that personal
names (i.e., first and second names) have secondary meaning
before they could be registered. Because the grandson
had used THE CAB CALLOWAY ORCHESTRA name first and because
there was no requirement that he show secondary meaning in
order to obtain trademark rights in the name in the Trademark
Office, he had priority of use of the name over his aunts and
grandmother. Accordingly, his opposition to the
registration of CAB CALLOWAY was sustained. For
more information, contact Barry A.
Cooper. |
| Howard Stern Mediates Patent Rights
Dispute |
|
The legal arena of intellectual property has now entered
the wild and wacky world of Howard Stern. During the November
10 broadcast of the Howard Stern Show, Mr. Stern presided over
an extensive debate on the issue of patent rights between two
women, both of whom claimed they had invented an underwear
product that hides a particular female physical
attribute. Treger Strasberg, who sells her undergarment
product under the trademark KAMELFLAGE, claims that she, and
not a woman named Shannon, first came up with the idea of
underwear that hides this attribute. Both Treger and Shannon
claimed that they had already filed patent applications. As
part of the debate, a patent attorney called in to the show
and correctly explained that under U.S. law what was critical
was not who filed first, but rather who could prove that they
first invented the underwear
product. Interestingly, Treger Strasberg, through
her company Ruby Tuesday Designs, has now filed a lawsuit for
trademark infringement, false designation of origin and unfair
competition in the Eastern District of Michigan against the
company Camelflage LLC. (see complaint here),
with whom Shannon is apparently associated, based upon
Shannon's use of the very similar name CAMELFLAGE. It appears
that this legal fight over female undergarments is far from
over. For more information contact Jeffrey M.
Kaden. |
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Intellectual Property News Editorial Board: Richard S.
Schurin ( rschurin@grr.com), Marc P.
Misthal ( mmisthal@grr.com), and Steven
Stern ( sstern@grr.com) of Gottlieb,
Rackman & Reisman, P.C. Suggestions, questions
and comments should be directed to the Editorial Board by
email or telephone (212) 684-3900. For nearly forty
years, Gottlieb, Rackman & Reisman, P.C. has provided
legal advice and guidance on all aspects of patent, trademark,
copyright, and unfair competition law, tailoring its counsel
to the specific needs of its clients.
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