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 Intellectual Property
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February 2011 |
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The purpose of this
newsletter is 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. | |
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GRR Client
Obtains Preliminary Injunction |
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On
December 23, 2010, after a two day evidentiary hearing, Judge
Rakoff of the Sourthen District of New York issued a
preliminary injunction in favor of GRR client Famous Joe's
Pizza, Inc. Famous Joe's Pizza was represented by GRR
attorneys Maria A.
Savio
and Marc P.
Misthal. The preliminary injunction bars the
defendants from using reviews of Famous Joe's Pizza's
restaurant to promote their restaurants and from otherwise
associating themselves with Famous Joe's Pizza's
restaurant. A copy of the decision can be found here. The case has been covered in
the Wall
Street Journal and the Daily
News.
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GRR
Attorney Contributes Chapter to Book on Trademark
Strategy |
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Attorney
Presentations & Publications |
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Ted
Weisz was quoted in an article in the Wall Street Journal
about new procedures in the Patent Office intended to expedite
the examination of patent applications. The article can
be found here.
Amy B.
Goldsmith's
presentation on
Critical
Implications of Costco v. Omega on the Grey Goods and the
First Sale Doctrine is
now available from Lawline.com. Click here
for more
information. |
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Fantasy
Trophy? Not in the Real World
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The interrelated businesses
of professional football and fantasy football are normally in
sync with one another. NFL players participate in fantasy
leagues and the NFL's own website includes its own fantasy
products and information. And when a football fan wins
in a fantasy football league, one of the awards they are
likely to receive is a trophy - much like the famous Vince
Lombardi Trophy that is awarded to the NFL Super Bowl champion
(this year it was the Green Bay Packers). However, under
U.S. copyright and trademark laws, one can go only so far into
the NFL's territory before it turns a half-hearted three man
rush into an all-consuming blitz.
A fantasy
football business got itself into legal hot water with the NFL
over the design of its wooden trophies.Titlecraft, Inc., a company
which produces fantasy football league trophies, tried
initiating a legal preemptive strike by seeking a declaration
from the federal district court located in Minnesota that its
trophies do not infringe the NFL's proprietary rights in the
Lombardi Trophy. However, this strategy ultimately
backfired as the NFL, instead of "punting", threw the "bomb"
by counterclaiming against Titlecraft for copyright and
trademark infringement.
In the lawsuit, the NFL
sought summary judgment in its favor regarding Titlecraft's
liability for copyright infringement. Under U.S. law, to
establish a viable claim for copyright infringement, the NFL
was required to demonstrate that (1) it owns a valid copyright
to the Lombardi Trophy design; (2) Titlecraft had access to
the trophy; and (3) Titlecraft's trophy design and the
Lombardi Trophy design are substantially similar in
appearance. Because there was no dispute that the NFL
owned a valid copyright in the Lombardi Trophy design or that
Titlecraft had access, the only issue on which the Court was
asked to opine was substantial similarity.
The court concluded that
the design of the Titlecraft trophy was substantially similar
in design and appearance to the Lombardi Trophy. The
Court found that there was no dispute as to the visual
similarities between the trophies, including the
downward-angled footballs, the scale and size of the
footballs, no other football-related adornments, the direction
of the laces, and the smooth-like surfaces of the
footballs. The court went on to say that "no
ordinary observer could conclude that Titlecraft's trophies
have anything but the same concept and feel as the Lombardi
Trophy." In fact, the court went on to state that
Titlecraft's trophies are "appropriations" of the Lombardi
Trophy because they are virtually identical in "shape, size,
aesthetics, and feel."
In the end, the court
granted the NFL's motion for partial summary judgment against
Titlecraft (click here
for the decision). Although Titlecraft made a veiled
attempt to point out what the court ultimately considered to be minor differences in
appearance, the court, rather sarcastically, concluded that
"'if it walks like a duck, quacks like a like and looks like a
duck, it has got to be a duck' - or in this case a copy."
Game over. Or is it?
Indeed, query whether Titlecraft will throw out the "red flag"
and file an appeal. Stay tuned.
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Who May Sign
Trademark Applications and Related Documents that are Filed
with the USPTO
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A common question, especially from attorneys
in foreign countries, is whether they can sign U.S. trademark
applications and related documents on behalf of their clients.
Clients would normally grant general powers of attorney to
these lawyers to sign trademark applications. The rules in the
United States are quite strict.
Not
authorized: the signatory is presumed to be
unauthorized (in which case the application may lose its
filing date) in the following situations:
?
No title or position is provided (ie,
President, member of an LLC)
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The signatory is a foreign attorney or a
foreign law consultant with a U.S. firm
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A non-attorney is the signatory
(paralegal, administrator)
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The address of the signatory is that of a
foreign law firm
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The signatory of an application filed by a
foreign company identifies herself as an attorney but doesn't
provide the name of a law firm or an address
?
Attorney-in-fact is used without
identifying details such as membership in a State Bar,
firm name and address
?
The identifier is "general counsel" or "in
house counsel" without identifying details such as admission
to practice in the USA
?
The person signing identifies herself as
an "authorized signatory" but doesn't list her relationship to
the applicant or registrant
?
The signatory is a new attorney from a
different firm, when the applicant or registrant had
previously appointed a qualified practitioner and no new power
of attorney or revocation of the previously appointed power
has been made of record
Authorized:
In the following situations, a signatory is presumed to be
authorized to represent an applicant or registrant:
?
The signatory is identified by her title
or position (e.g., "President," "Vice President,"
"Treasurer," "Secretary") of a U.S. corporation or the
equivalent for another type of business entity (e.g.,
"Partner" for a partnership, "Member" or "Principal" for a
Limited Liability Company)
?
The person signing for a previously pro
se applicant or registrant identifies him/herself as an
attorney in good standing of the bar of the highest court of
any state in the United States who is practicing abroad (e.g.,
Mary Smith, member of New York State Bar, with offices in
Nassau, Bahamas)
?
The signatory for a foreign company
identifies him/herself as "general counsel" or "in-house
counsel" AND a "corporate officer" or another corporate
officer position (e.g., "Secretary," "Treasurer," or
"Vice President")
?
The signatory for a previously pro
se applicant or registrant identifies him/herself as an
attorney with a United States law firm or as "general counsel"
or "in-house counsel" of a United States applicant
?
The person signing is from the same law
firm but is a different attorney from the the current attorney
of record
In view
of the foregoing, there is a presumption that outside counsel
may not be entitled to sign a trademark application
especially since the rules also provide that the signatory
must have "first hand knowledge of the facts" and actual or
implied legal authority to bind the applicant. Hence, if an
attorney or outside counsel is not directly involved in the
actual business of the company, it will be difficult for him
or her to state that he or she has "first hand knowledge of
the facts" meaning knowledge of the company's business and
decisions.
Moreover,
even if "attorney" is written under the signature line, it
will be necessary to state that the attorney is licensed to
practice in one of the 50 states of the United States, by
saying "Member of the Bar of the State of ___."
Additionally, legal authority to bind the company in
general is given to an officer of the company, and that is one
reason why the in house general counsel is normally a
corporate officer.
To avoid
all of these issues, an officer of the company should sign the
application, and the title of the officer should be clearly
listed.
An
alternative could be to have the application prepared
electronically and subject to previous authorization and
consent, including the name of one of the officers of the
company.
For further information, contact Diana
Muller or Marc P.
Misthal. |
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New Domains in
Asia |
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Two
new country code Top Level Domains will be launched soon in
Asia. Companies will have the opportunity to register a domain
name, typically the company's trademark, in English or Chinese
characters, followed by a Chinese character suffix meaning
Hong Kong, as follows:
_______.香港, and one signifying
China, namely
________.中國.
Businesses who manufacture or sell products or offer services
in Asia will likely take advantage of the new domain names,
but businesses who are concerned about "knock-off" websites
should also take note.
For
further information, contact Amy B.
Goldsmith. |
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Court
Dismisses Claim that Harry Potter Book is an
Infringement |
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Allen v.
Scholastic Inc., 10 CV 5335 (S.D.N.Y. Jan. 6, 2011).
Plaintiff
sued Scholastic, Inc. ("Scholastic") in his capacity as the
trustee of the estate of Adrian Jacobs, alleging that J.K.
Rowling's Harry Potter and the Goblet of Fire
infringed the copyright in Jacobs' book The Adventures of
Willy the Wizard - No 1 Livid Land ("Livid
Land"). Jacobs published Livid Land in
1987. Scholastic moved to dismiss the
complaint, arguing that even assuming that it had access to
Jacob's book, any similarities between the books were not
protectable. After reviewing the two books,
the court agreed and dismissed the lawsuit.
The court explained that there were some similarities
between the works, such as the fact that both books tell the
story of a wizard competition, but those similarities are not
protected by copyright. The court noted
that the total concept and feel, themes, characters, pace and
setting of the works were very different.
As a result, the court determined that since there were
no protectable similarities between the works Jacobs could not
assert any meritorious claim and dismissed the case.
For
further information, contact Marc P.
Misthal. |
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Defendant not
Liable for Affiliate's use of Third Party Trademark in Online
Ads |
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1-800
Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist.
LEXIS 132948 (D. Utah Dec. 15, 2010).
Plaintiff
1-800 Contacts sued defendant Lens.com for trademark
infringement, alleging that Lens.com had bid on the
misspellings and variations of the 1800COTNACTS mark and that
Lens.com's affiliates had bid on plaintiff's
1800CONTACTS mark, all for the purpose of generating sponsored
links, through Google's AdWords program, for defendant's
website. Plaintiff moved for summary
judgment on its claim of trademark infringement.
In
analyzing the issue, the court explained that the case
presented two different types of use: (1) use of plaintiff's
mark as a keyword, and (2) use of plaintiff's mark in
the language of advertisements, or sponsored links. In
both instances, defendant's affiliates - not defendant
itself - purchased 1800CONTACTS as keywords and used the mark
in the text of ads. The court
concluded that both types of use of 1-800 Contacts' mark were
actionable. The court further pointed out
that Lens.com could be liable for direct infringement if it
keyword purchases had resulted in consumer
confusion.
The
court explained that the focus of the likelihood of confusion
analysis is on consumers viewing the mark, and that since
consumers do not view keywords, the likelihood of confusion
does not change if the advertisement they are shown upon entry
of a trademark as a keyword is the same as the advertisement
that appears when a generic term is entered as a keyword (a
competitor's purchase of a broad match for the keyword
"contacts," may result its advertisement being displayed by a
search for "1-800 Contacts"). This was
reinforced by the fact that a majority of plaintiff's
impressions (appearances of an advertiser's link on a user's
computer) were triggered by non-trademarked keyword searches.
As a result, the court concluded that the mere purchase of a
trademark as a keyword cannot alone result in consumer
confusion.
Next,
the court ruled that advertisements which used plaintiff's
mark, which were placed by an affiliate, produced a strong
likelihood of confusion. Remarkably, plaintiff did not name
the affiliates as a party to the case and instead sought to
impose liability on defendant for the actions of its
affiliates. The court dismissed all of plaintiff's secondary
infringement theories and as a result, plaintiff lost its
case. Therefore the question remains whether this plaintiff -
or any plaintiff - could emerge victorious if an advertising
affiliate uses a protected trademark in its online ad copy
and the affiliate is named in the lawsuit. Keep your
lenses peeled for further developments in this area of
law.
For
further information, contact Rachel M.
Weiss. |
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Intellectual Property News Editorial
Board: Amy B.
Goldsmith (agoldsmith@grr.com), 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 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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