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 Intellectual Property
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March
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 Secures Registration for "Motion"
Trademark |
|
Consumers are accustomed to seeing trademarks that
consist of a word, logo, or a combination of both. However,
there are many other less familiar nontraditional trademarks
that consumers see daily in the marketplace. "Non-traditional"
trademarks include scent, color, three-dimensional
configurations, sound and motion trademarks. Companies are
constantly looking for innovative ways to make their products
and services stand out through different sensory
techniques. GRR is at the forefront of protecting
so-called non-traditional trademarks, having secured trademark
registrations for furniture, handbags and lamps, among other
items. Recently, GRR attorney Maris R.
Kessel successfully prosecuted an application in the
U.S. Patent and Trademark Office for a "motion" mark. On
February 9, 2010, the Trademark Office issued Registration No.
3,746,208 for a motion mark to The Cooper Union. The motion
mark can be seen here.
At present only a handful of motion marks are registered in
the United States, but more companies are likely to add
animation or motion to their marks, particularly for use
on
websites. |
| Attorney
Presentations & Publications |
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George
Gottlieb and Marc P.
Misthal will be speaking at a program on Fashion and the
Law, to be held on March 18, 2010 at 666 Fifth Avenue, 28th
Floor. The program will cover areas of the
law that fashion companies must learn to deal
with. If you are interested in attending, please RSVP to
info@grr.com by March 12, 2010.
Marc P.
Misthal was interviewed for an article for the E Commerce
Times on the sale of counterfeit products on the internet and
the recent sale of allegeldy counterfeit products by internet
retailer Newegg.com. The article can be found here.
Barry
Lewin served as a guest-lecturer at Rutgers School of Law
in Newark, N.J. for a Patent Litigation course. Barry
spoke about the day-to-day activities of a patent and
trademark practitioner.
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| The
Party's Over - Everyone Must Stop Singing "Bow Wow Wow, Yippie
Yo, Yippie Yea" |
|
In 1982, funk legend George Clinton and his band
Parliament Funkadelic recorded the song "Atomic Dog". In
the song, Clinton first sang the phrase "Bow Wow Wow, Yippie
Yo, Yippie Yea," which according to music "experts" is an
anthem of the funk music era.
Recently, the Sixth Circuit Court of Appeals
affirmed that Clinton's funk anthem was infringed by the
band Public Announcement in their recording of a
song named "Dog in Me". In its decision (a copy of which
can be found here),
the Court held that Bow Wow Wow, Yippie Yo, Yippie Yea and the
song's rhythmic panting easily met the standard for
copyrightability and had been infringed.
However, the most interesting part of the Court's
decision was its description of how the song was originally
composed by George Clinton and his band mates. As the
Court described, there was never any written score, and the
song was composed spontaneously. Specifically, witnesses
at trial testified that " when George arrived at the studio he
had been partying pretty heavily so he was, you know, feeling
pretty good." Because he was unsteady at the
microphone, the witnesses testified that they "got on either
side of him. We just kind of kept him, in front of the
microphone" while he recorded the vocal tracks the same
night.
We wonder how many songs have been composed this
way!
|
| Patent Term Adjustment Calculations
by Patent Office are Wrong |
|
Up until the mid 1990's, the term
of a U.S. patent was 17 years from the date of issuance.
As a result, delays in the United States Patent &
Trademark Office ("Patent Office") during examination, while
causing a delay in patent issuance, did not shorten the
17-year patent term monopoly. However, in 1994, the
patent laws were changed to be more consistent with most
foreign jurisdictions. One of those changes mandated that for
applications filed on or after June 8, 1995, the U.S. patent
term started on the date the patent issued but concluded 20
years from the date the patent application was filed.
This meant that any Patent Office delays during examination
could significantly reduce the effective life of an issued
patent In 1999, Congress enacted the American Inventor
Protection Act ("AIPA"). AIPA provided for a patent term
adjustment if there was a delay during examination caused by
the Patent Office. AIPA guaranteed (1) prompt Patent
Office responses (the "first guarantee") and (2) that a patent
would issue within three years after filing (the "second
guarantee"). Any delay because of failing to comply with
the first or second guarantee would add on one day for each
"delay" day. Significantly, a recent decision of
the Court of Appeals for the Federal Circuit ("Federal
Circuit") enlarged the term of certain patents based on its
interpretation of AIPA. The decision is Wyeth and
Elan Pharma International Ltd. v. Kappos, decided January
7, 2010, discussed the way in which the Patent Office
calculates patent term adjustments under AIPA. The
Federal Circuit found that the Patent Office interpreted and
applied AIPA too narrowly, resulting in denial
to patent owners of the full patent term adjustment
to which they were legally entitled.
The Patent Office had apparently
been granting any patent term adjustment based on the greater
of the delay under the first guarantee or under the second
guarantee. The Federal Circuit ruled that this was improper
and ruled that in order to properly determine the correct
patent term adjustment, the Patent Office must combine delays
under the first guarantee and the second
guarantee.
|
| Are Your Goods Red, White and
Blue...or Gray? |
|
In a global economy, branded
goods manufactured in one nation are often sold through
authorized distributors in many other nations. "Gray goods"
are branded goods which are sold outside the authorized
channels of trade; goods are gray if they were intended for
one market--let's say Europe--but are imported into another
market, namely the USA, and if those goods are materially
different from the goods marketed to U.S. customers.
In the U.S., there are several steps a brand owner
can take to position itself for a legal challenge against an
importer of gray goods (or against one's own manufacturer or
distributor). The first is to tightly control the relationship
with manufacturers and distributors. Marking each product with
a unique country code, serial number and distribution
identifier creates a mechanism for the brand owner to track
product distribution. Tracking in this fashion serves two
functions: the brand owner can supply the manufacturer with
the labels (containing a hidden code), thus enabling the brand
owner to determine if the manufacturer has established a
second line of quasi-genuine products. Second, if a suspect
shipment has the proper markings but was not intended for the
U.S. market, the identifiers can help in back-tracking where
the diversion of goods occurred.
Even without using unique identifiers, the brand
owner can employ warranties which exclude coverage for gray
goods. In general, most U.S. courts treat products which do
not contain a brand owner's warranty as not "genuine" goods,
and therefore, even though the brand is that of the owner, the
fact that the goods are unauthorized constitutes an
infringement of the Trademark Act. So long as the warranty
exclusion language is clear and comports with the brand
owner's client service policy (brand owners may want to
provide warranties even if the product was diverted!), then
there is no legal impediment to implementing this practice in
the U.S.
|
| Facebook Granted
Patent |
|
The U.S. Patent and Trademark Office has come under a lot
of fire lately for not keeping up with advances in the newest
and hottest IT fields. However, one company that is an
industry leader has recently been granted a patent that could
impact social networking.
Facebook has just received Patent No.
7,669,123. This patent covers an electronic social
network (no big surprise there) in which a newsfeed is sent to
the members of a designated group of users about a member of
the group. Although this was a novel feature when
introduced on Facebook, it is now common on many social
networking sites.
Contrary to popular view, the USPTO, has been and is
granting patents in the IT field. IT companies with
novel projects related to graphic user interfaces, electronic
social networking and other systems should consider patents as
a means of protecting their
work. For
further information, contact Ted
Weisz. |
| U.S. Non-Compliance with WTO Rules
Could Create Suspension of IP Rights in
Brazil |
|
After a seven year dispute between Brazil and the
United States in the World Trade Organization (WTO) regarding
U.S. cotton subsidies Brazil considered unfair, in August of
2009 the WTO authorized Brazil to retaliate against the United
States. The Brazilian government is determined to
increase pressure in order to motivate U.S. compliance with
WTO rules. Thus, in February of 2010 Brazilian President
Lula da Silva issued a provisional decree to enable the
suspension of Brazil's obligations to protect U.S.
intellectual property rights, particularly patent rights.
Under the new legal framework, Brazil will be able to limit or
suspend intellectual property rights when the World Trade
Organization gives
authorization. For
further information, contact Diana
Muller or Margarita
Serrano. |
| Infringement
of Design Patent is Determined by Reviewing
Illustrations |
|
In 2006, Crocs, Inc., maker of the popular shoes, brought
a proceeding before the International Trade Commission
("ITC") seeking to ban the importation of shoes similar
to the Crocs' shoes and which allegedly infringed various
patents owned by Crocs, including a design patent (often
called a picture patent) covering the look of the Crocs
shoes. An administrative judge of the ITC found that
there was no infringement of Crocs' design patent, relying on
a detailed verbal description of the matter claimed in the
design patent. As a result, the administrative judge
refused to ban the importation of the shoes that were the
subject of Crocs' complaint. Crocs sought review of the
decision by the ITC, which affirmed the decision. Crocs
then appealed to the Federal Circuit, which reversed the lower
determinations. In explaining its decision, the court
pointed out that the administrative judge's reliance on a
detailed verbal description to determine whether there was
infringement was misplaced, since, in design cases,
infringement is determined by comparing the illustration in
the design patent to the accused product. Since the
administrative judge's analysis was flawed, the Federal
Circuit remanded the case for further investigation and a
determination of whether an importation ban would be
appropriate after a proper analysis of the infringement
question. For more information, contact
Marc P.
Misthal. |
|
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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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