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 Intellectual Property
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July
2010 |
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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 Patent for Plating
Technology |
|
GRR client Surface
Technology, Inc., a leader in the metal finishing industry,
was recently awarded U.S. Patent No.
7,744,685. The patent, which was
prosecuted by GRR attorneys Ted Weisz and Barry R.
Lewin,
covers electroless metal plating, a process used on numerous
devices such as automobile parts and textile machinery.
In particular, the patent is directed to an electroless metal
plating bath essentially free of heavy or toxic metal
stabilizers. Recent environmental protection regulations
restrict the materials used in certain products which will
ultimately be disposed of in land fills, such as automobiles,
so as to avoid environmental issues when the products are
disposed. The regulations are intended to significantly
reduce or entirely eliminate toxic or heavy metals from
products during the manufacturing process. Surface
Technology's new patent protects its innovative plating
technology, and that technology allows manufacturers to better
comply with new environmental regulations during plating by
providing for plating compounds essentially free of heavy or
toxic
metals. |
| Attorney
Presentations & Publications |
|
On July 9,
2010, Ted Weisz and Maris Kessel gave a presentation about
patents to the Hillcrest Jewish Center community.
GRR has launched a Spanish
version of its website, which can be found here. |
| National
Pork Board Objects to Advertisement for Unicorn
Meat |
|
On April 1, 2010, April Fools Day, the ThinkGeek.com
website published an "advertisement" for Canned Unicorn
Meat (click here
to see the ad). The advertisement described unicorn as
"the new white meat" and touted unicorn as an "excellent
source of sparkles!" If that was not enough, the
ad also explained how the the Sisters at Radiant
Farms, who care for the unicorns at the end of their
lives, "massage each unicorn's coat
with Guinness daily and fatten them on a diet comprised
entirely of candy corn."
Worried that consumers might actually confuse "the new
white meat" - i.e., unicorn, with "the other white meat,"
i.e., pork, counsel for The National Pork Board sent
ThinkGeek, Inc. a cease and desist letter. The first
page of the letter, which has been made available on
the we b(click here), suggests that The
National Pork Board did not get the joke. For example,
the letter states - "[w]e are writing you in connection
with your activities at the website www.thinkgeek.com wherein
you have been marketing a product called 'Radiant Farms Canned
Unicorn Meat' using the slogan 'Unicorn - the new white
meat.'"
It is unclear whether the National Pork Board will bring
suit seeking an injunction to prevent the Sisters at Radiant
Farms from continuing to market and sell their Canned Unicorn
Meat. Is it any wonder that many people think lawyers
don't have sense of humor?
|
| How the Supreme Court's
Bilski Decision Affects Corporations |
|
Although Supreme
Court decisions often impact policy, particular Supreme Court
decisions rarely result in a sudden change in how
business is conducted. The Supreme Court's recent
decision in the Bilski case (click here for a copy of the decision)
is the exception. Bilski's impact is immediate,
affects business and inventors directly, and businesses should
consider Bilski when devising a corporate patent
strategy.
Before the Supreme Court's decision,
patents directed to business methods were limited to those
inventions meeting the "machine or transformation" test,
whereby each patent claim needed to include a particular
machine or involve a transformation of matter. The
particular machine needed to be at least somewhat specialized
- often, a general purpose computer was not enough to meet the
test. Many business methods, including some related to
financial services, resource allocation, or other
computer-performed functions, could not meet the test.
Even biological patents, such as those relating to assaying
for diagnostic purposes, could not meet the machine or
transformation test. Numerous pending applications were
rejected under the "machine or transformation" test and the
validity of patents granted prior to the adoption of
the "machine or transformation" test was being
questioned.
The Supreme Court eliminated the
"machine or transformation" test as the sole test for
determining patentability but gave no guidance for determining
whether a business method is patentable. After the
Supreme Court's Bilski opinion, patents directed to
business methods are more likely to pass scrutiny at the
United States Patent and Trademark Office.
As with other types of patents, patents directed
to business methods can provide a competitive edge to the
patents' owners. To the extent that business methods,
such as implementations of algorithms, processes directed to
ways for ordering and provisions, and methods associated with
back office operations are new, useful, and not obvious, it
may be financially advantageous to apply for patent protection
and to enforce such granted patents. In general, it is
worth reviewing internal processes to determine what methods
might now be candidates for patent protection. The
sooner one identifies such opportunities and applies for
patent protection, the better. Once the lower courts
start considering the issue, they are likely to narrow the
types of business methods that are
patentable.
For further information,
contact Barry R.
Lewin. |
| YouTube Not Liable for Copyright
Infringement |
|
In 2007, YouTube,
the popular video website, was sued by Viacom, Paramount, the
National Football League and others for copyright
infringement. Viacom and the other plaintiffs alleged
that YoutTube permitted users to upload video clips protected
by copyright to its website, and then profited by showing
advertisements on the web pages displaying the video
clips. YouTube claimed that since it had adopted a
"notice and take down" policy and promptly removed clips that
copyright owners identified as infringing, it was entitled to
the protections of the Digital Millennium Copyright Act
("DMCA"), which limits the liability of websites for copyright
infringement if, among other things, they adopt such a
policy. Viacom and the other plaintiffs asserted that
since YouTube was generally aware that there was a plethora
infringing content on its website, it was not entitled to the
protections of the DMCA. On cross-motions for summary
judgment, the court engaged in an extensive review of the DMCA
and its legislative history. The court concluded that
"[m]ere knowledge of prevalence of such [infringing] activity
in general is not enough" to disqualify a website from the
DMCA's protections. As the court explained, interpreting
the DMCA to exclude websites from its protections if they had
general knowledge of infringing conduct occurring on their
website would impose responsibility on websites to discover
which of their users' postings infringe a copyright. In
the court's eyes, such an interpretation would contravene the
structure and operation of the DMCA; the court also pointed
out that to impose such a responsibility would be contrary to
the recent decision in the Tiffany v. eBay case (see
our prior article here).
For
the time being, the court's decision (available here) shows that the DMCA is
effective in limiting the liability of websites for copyright
infringement. Whether that will ultimately be the case
remains to be seen, since Viacom has already indicated that it
intends to appeal the court's decision. We will keep you
updated on any future developments.
|
| Credit Card Companies: On the
Hook for Trademark Counterfeiting? |
|
Brand owners may have a new weapon in their arsenal
against trademark counterfeiters and infringers....attack the
credit card companies which process the buyer's
purchases. On June 23, 2010, Judge Harold Baer, a
venerable member of the federal court in Manhattan, refused to
dismiss an action brought by Gucci America ("Gucci") against
several credit card processing companies in which Gucci
alleged that the defendants (1) intentionally induced the
website TheBagAddiction.com to infringe through the sale of
counterfeit goods or (2) knowingly supplied services to
websites selling counterfeit products and had sufficient
control over infringing activity to merit liability.
Click here
for the decision. The defendants
supplied credit card processing services to the website
TheBagAddiction.com, which Gucci had successfully sued for
trademark counterfeiting and infringement. Gucci alleged
in its Complaint that each of the defendants had direct
knowledge that TheBagAddiction.com was a replica site, selling
only replicas of Gucci's products; Durango's business was to
facilitate "high risk" credit card processing services, and
Woodforest and Frontline's services both included active
review of the website's replica product offerings. Judge Baer
found these allegations sufficiently detailed to support a
claim for intentional inducement of infringement and
therefore refused to dismiss the case. This
decision could easily apply to any credit card company with
direct knowledge that it is processing transactions for
websites which actively market counterfeit products such as
popular movies and music. It will be interesting to see
if others adopt this approach in their efforts to stop the
sale of infringing or counterfeit products on the
internet. |
| IP Retaliation in Brazil Suspended
Until 2012 |
|
After the WTO decided that
U.S. cotton subsidies were unfair and illegal and granted
Brazil the right to "cross-retaliate", Brazilian trade
officials were ready to impose sanctions against 102 U.S.
products and cease to enforce intellectual property rights on
U.S. products from pharmaceuticals to DVDs. See the
article in our March issue, here. This retaliatory
action could have caused over $829 million of harm to the U.S.
After a series of negotiations between Brazil and the U.S.,
the dispute was recently settled when the Brazilian government
agreed to suspend retaliation for the next two years based on
certain promises made by U.S. negotiators.
To resolve the
dispute, the U.S. made a proposal embodied in a
Memorandum of Understanding to be discussed when Congress
revises the Farm Bill. Under the Memorandum of
Understanding, the U.S. may agree to give Brazil $147.3
million per year in the form of a "technical assistance fund"
to help Brazilian farmers. The proposal was recently
approved by CAMEX, the Brazilian foreign
board.
If the U.S. does not fulfill the terms and
conditions of the Memorandum of Understanding, Brazil may
re-start the process of taking retaliatory action in
2012.
For further
information, contact Diana Muller or Margarita
Serrano. |
| NFL Licensing Practices May Violate
Antitrust Laws |
|
At the end of May
the Supreme Court issued its much awaited decision in
American Needle, Inc. v. National Football League in
which it found that the practices of National Football League
Properties (NFLP) might violate U.S. antitrust laws. A
copy of the decision can be found here.
American
Needle challenged the intellectual property licensing
practices of NFLP, an entity formed by the NFL's 32 teams in
1963 to develop, license and market their intellectual
property, on the basis that those practices violated the
antitrust laws of the U.S. which make "[e]very contract,
combination... or, conspiracy, in restraint of trade"
illegal. The challenge came in December 2000 when
American Needle, a prior non-exclusive licensee of NFLP
properties for apparel, was denied a license at about the time
that the teams voted to authorize NFLP to grant exclusive
licenses of their intellectual property portfolios, and one
such exclusive license was granted to Reebok to make head wear
for all 32 teams for 10 years.
The Supreme
Court held that NFLP's conduct could be deemed "concerted
action" of the 32 teams, and thus the legality of that conduct
was not categorically beyond the U.S. antitrust laws, as the
NFL argued it should be, but that it was not per se illegal,
as American Needle might have wanted. The practices of
NFLP, the Supreme Court held, are to be judged under the "Rule
of Reason" to determine if they are anticompetitive. The
case now returns to the district court for a determination of
whether the specific licensing practices of NFPL are
reasonable or
anticompetitive.
|
| Trademark Office Issues Rare Dilution Ruling |
|
Only once since
1999, when dilution became available as a ground for
oppositions and cancellations, has the TTAB sustained a
dilution claim. In National
Pork Board and National Pork Producers Council v. Supreme
Lobster and Seafood Company, Opposition No. 91166701 (June
11, 2010) [precedential], the TTAB was apparently
so convinced of its decision that not only did they find
dilution by blurring, they did not even reach the likelihood
of confusion basis raised by Opposer.
In this case, the association which promotes
the interests of members of the pork industry opposed the
possible registration of the mark THE OTHER RED MEAT
for salmon based on prior rights in and issued
registrations for the slogan THE OTHER WHITE
MEAT. The TTAB considered the elements
of a dilution claim: (1) whether opposer's mark is
famous; (2) whether it became famous prior to the date on
which Applicant filed its application (i.e., Applicant's
constructive first use date; in this case Applicant's mark was
filed based on an intent to use); and (3) whether Applicant's
mark is likely to blur the distinctiveness of opposer's famous
mark.
In considering fame, the TTAB looked
at advertising expenditures, consumer surveys, tracking
studies and media references. Survey
evidence convinced them that the Opposer's mark was
"among the most well-know advertising slogans in the U.S.
given awareness rates of eighty to eighty-five percent of the
general adult population and rates of correct source
recognition at nearly seventy percent of the
population." Opposer's mark was up there with YOU CAN'T
LEAVE HOME WITHOUT IT, JUST DO IT, LIKE A GOOD NEIGHBOR and
KING OF BEERS. The TTAB also concluded that
a "well-designed" telephone survey showed an
association between the marks.
Of special interest was the TTAB's
consideration of the "intent" to create an association by the
Applicant with the slogan used by Opposer, finding that the
assertion of Applicant's CEO that he came up with the slogan
"out of the blue" to stretch credulity given his involvement
in the food industry, and that the connotation that
Applicant intended for its mark (healthy and nutritious
features of salmon) was the same as the connotation that
Opposer had established for its slogan.
We wonder what the TTAB would have decided if
Applicant's mark had been WHERE'S THE
SALMON?
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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 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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