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 Intellectual Property News |
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March 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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Testimony of GRR Attorney Aids in Conviction of Street Vendor Selling Counterfeits
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GRR attorney Marc P. Misthal testified on behalf of GRR client LONGCHAMP at the criminal trial of a New York City street vendor arrested for selling counterfeit LONGCHAMP LE PLIAGE bags. Mr. Misthal's testimony related to the U.S. trademark registration owned by LONGCHAMP and the differences between the counterfeit bag and the legitimate LE PLIAGE bag. The vendor was arrested last year by New York City Police Officers who had received special training from GRR in how to identify counterfeit LE PLIAGE bags. After a two day trial, the street vendor was convicted of attempted counterfeiting and was sentenced to seven days in jail (and not community service, a sentence often handed down to counterfeiters).
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Attorney Presentations & Publications |
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Jeffrey M. Kaden was profiled in the February 25-March 5, 2011 issue of Long Island Business News. The profile can be found here. |
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Who Knew? Not Us!
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Breaking political and legal news! Sarah Palin and her daughter Bristol have both submitted trademark applications for their names. The application process has not, however, gone as smoothly as they would have probably anticipated, in part because they evidently did not use the services of a law firm having a sufficient expertise in the practice of trademark law. Nonetheless, if their applications are eventually granted by the U.S. Trademark Office, "Joe the Plumber" and the rest of America can look forward to a variety of Palin-brand products.
According to the electronic records of the Trademark Office, the Palins both applied for trademarks in the fall of 2010. If and when the applications are accepted, Sarah Palin's name would become a registered trademark in the areas of "information about political elections," "providing a website featuring information about political issues," and "educational and entertainment services ... providing motivational speaking services in the field of politics, culture, business and values." As for Bristol, her brand would apply to "educational and entertainment services, namely, providing motivational speaking services in the field of life choices."
There are, however, several problems with both applications, first and foremost being that neither is actually signed! In addition, the Trademark Office has rejected both applications on the grounds that the evidence they submitted in order to demonstrate trademark use is wholly insufficient-for example, Sarah Palin only submitted screenshots of websites where her name appears, something that any competent trademark lawyer knows would not be accepted by the Trademark Office.
Even more egregious is the first use date of January 1, 1996 in Sarah Palin's application. While just about anyone who had a computer in 1996 had online access, it was not very common for most people to have their own websites. We therefore seriously doubt that Sarah Palin, who is certainly not known as person who is "ahead of her time" and who was otherwise virtually unknown outside of the Alaskan frontier in the mid 90's, had a website where she provided information about political issues in 1996.
Whatever obstacles stand in the way of the Palins gaining acceptance of their trademark applications, we are quite confident that they will eventually triumph. And while we understand that their trademarks currently only apply to political campaigning and public speaking, we suspect that the Palins will extend their branding efforts into the consumer product industry. After all, who better then the Palins to market their own line of semi-automatic hunting rifles, bear skin maternity wear, chastity garments and rhythm enhancing dancing shoes.For more information contact Jeffrey M. Kaden.
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My Trademark Can Be Used As Your Keyword? Not in California.
| | Trademark owners, take note. Recently, a federal district court in California awarded Binder & Binder a permanent injunction barring defendant Disability Group from using Plaintiff's BINDER AND BINDER trademark as a Google AdWord. The icing on the cake was an enhanced damages award of $292,235.20 for willful infringement. Harry J. Binder, et al. v. Disability Group, Inc., et al., 07-2760-GHK (Jan. 25, 2011, C.D. Cal. 2011).
In many keyword cases, the first issue with which the court wrestles is whether the use of the plaintiff's trademark as a keyword by the defendant is "use" within the Trademark Act. Most courts to consider the issue have ruled that keyword use of a trademark by a competitor is "use in commerce." The court in the Binder case did not discuss the issue, holding that "[t]he use of the AdWords through Google constituted use in commerce in connection with the sale or advertising of Defendants' services."
Once "use in commerce" is established, a plaintiff must prove likelihood of confusion. Use of BINDER AND BINDER as an AdWord by the defendant caused defendant's website to appear as a sponsored link when potential customers inputted BINDER AND BINDER in their Google browser. The court held that there was a strong likelihood of confusion, based on the following: (1) the BINDER AND BINDER trademark is strong; (2) the defendant used the identical mark; (3) the plaintiff and defendant provided identical services; (4) defendant's actions were willful: it intentionally selected the BINDER AND BINDER mark due to its strength in the marketplace; (5) both parties aggressively used the Internet to market their services; and (6) actual confusion had occurred.
Based on these factors, the court issued a permanent injunction and the large damage award. While the case was pending, Google changed its AdWord policy to permit (1) purchase of a trademark as a keyword to trigger a sponsored advertisement and (2) use of a trademark in an advertisement but only under certain circumstances. Google will also accept and perhaps act on complaints by trademark owners.
Accordingly, when choosing AdWords, businesses should keep in mind the possible negative consequences of using a competitor's trademark to drive traffic to a competing website. And brand owners may wish to consider monitoring the use of their trademark as keywords.
For further information, contact Amy B. Goldsmith. |
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Shaping Patent Law: The Supreme Court and Inducement Liability
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This is the first in a series of articles regarding cases pending before the U.S. Supreme Court which may have an impact on the present patent laws in the United States.
An issued patent may protect the patent owner from direct infringement as well as "induced" infringement; under the Patent Act, "[w]hoever actively induces infringement of a patent shall be liable as an infringer." To "induce infringement," a party must have sufficient actual or constructive knowledge such that they know or should know that their actions would induce others to infringe. The issue facing the Supreme Court in Global-Tech Appliances, Inc. v. SEB S.A. (10-6) (argued Feb. 23, 2011) is to what extent prior knowledge can be considered applicable to inducing infringement.
Global-Tech involves a patent for a well insulated skirt around a deep fryer. The manufacturer-defendant purchased plaintiff's product overseas and copied it for sale in the U.S., but it is not clear whether the defendant knew the product was subject to patent protection in the U.S. In any case, the defendant hired a patent attorney to perform a patent right-to-use search, but did not tell the patent attorney of the known product or that defendant had purchased it. The patent attorney's search did not identify plaintiff's patent and defendant went ahead and manufactured and sold the product to retailers. Among other allegations, the defendant was accused of inducing the retailers to infringe plaintiff's patent.
The lower courts found that defendant's "deliberate indifference" was sufficient for induced infringement liability under the statute. The question before the U.S. Supreme Court is whether, instead, a defendant must show "affirmative intent" as opposed to "deliberate indifference" in inducing others to infringe.
What does this mean to inventors? One of the purposes of a right-to-use search is to help inventors understand the scope of protections others have and to allow the inventors to design around that scope of protection, if possible. Based on the facts of this case, defendant later re-designed the product to work around the patent. Liability could have been avoided had the defendant informed the patent attorney of the competing product before the search began, and the patent attorney could have widened the search to include patents held by particular manufacturers (one of whom who turned out to be the plaintiff). No doubt, because the product was re-designed later anyway, such an activity could have saved defendant litigation costs in the long run. No matter which way the Supreme Court decides, inventors should realize that there is no downside to making their attorneys aware of known products before a right-to-use search begins so that the search is as comprehensive as possible.
For further information, contact Barry Lewin.
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Chicago Wildflower Garden Not Protectable Because it is Not "Fixed"
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Kelley v. Chicago Park District, 08-3701 (7th Cir. Feb. 15, 2011).
The Visual Artists Rights Act (VARA), part of the Copyright Act, gives an artist the right, during his lifetime, to prevent distortion of his works, where that distortion would prejudice his or her honor or reputation. This provision applies to a "work of visual art", namely a painting, drawing, print or sculpture. This author's right is derived from the moral rights of authors, well-accepted in European law, but relatively new in the United States.
Chapman Kelley, an established artist, designed and installed a wildflower display comprising two enormous elliptical flower beds in downtown Chicago. These received wide-spread favorable critical review. After the garden had been on display for several years, the City downsized and materially altered the garden without Kelley's permission. Kelley then sued the City, alleging that his wildflower garden was a copyrightable work of visual art, and that the City had violated VARA by improperly altering it, thereby harming Kelley's reputation.
The Copyright Act defines a protectable work as one which is an "original" work of authorship fixed in a tangible medium of expression "from which the work can be perceived."
The Appellate Court found the garden display to be "original", but questioned whether it was fixed and the work of any "author". Starting with the premise that not all conceptual art may be protected, the Court found that the garden was not "fixed, since the essence of a garden is its vitality, not its fixedness. It may endure from season to season, but its motive is one of dynamic change." It also found that the garden was not the work of an "author"; Kelly designed it, planted it and cultivated it, but he did not "author" it. It therefore dismissed Kelly's claim and held in favor of the City.
For further information, contact George Gottlieb.
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World of Warcraft Cheat Program Violates Digital Millennium Copyright Act...Barely
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MDY Industries, LLC v. Blizzard Entertainment, Inc., Nos. 09-15932, 09-16044 (9th Cir. 2010).
World of Warcraft ("WoW") is a popular online role playing game owned by Blizzard Entertainment. In WoW, players create fantasy characters and travel through the game battling monsters and acquiring items to improve their characters. MDY Industries created a computer program for WoW users who wanted to improve their characters without spending hours and days in front of their computers. MDY's program, called Glider, operates in conjunction with WoW, but without Blizzard's permission.
WoW's End User License and Terms of Use (the small print no one ever reads) prohibit the use of programs like Glider in WoW. Glider's use steadily grew from its first inception, and WoW developed a program called Warden to detect Glider and prohibit its use in WoW. MDY adapted Glider to avoid detection by Warden, and Blizzard eventually sued MDY for copyright infringement and violations of the Digital Millennium Copyright Act ("DMCA").
On appeal, the court of appeals held that MDY does not infringe Blizzard's copyright by its sale of Glider, and that MDY is not liable for contributory or secondary copyright infringement. The court of appeals explained that Glider did not reproduce any of Blizzard's copyrighted content, beyond reproduction authorized by WoW's Terms of Use. Further, any violations of the Terms of Use do not constitute copyright infringement (though they may represent breach of contract violations by the individual users).
Where Glider finally did get caught was regarding the anti-circumvention provisions of the DMCA. The DMCA prohibits the distribution of products for the purpose of circumventing a technological protection of copyrighted material. The court of appeals found that WoW included three distinct categories of copyrighted material: 1) literal elements, i.e. the source code stored on players' hard drives, 2) individual non-literal elements, i.e. the discrete visual and audible components of the game, such as a visual image of a monster or its audible roar, and 3) dynamic non-literal elements, i.e. the real-time experience of traveling through different worlds, hearing their sounds, viewing their structures, encountering their inhabitants and monsters, and encountering other players.
According to the court of appeals, Warden does not control access to the literal elements or the individual non-literal elements. Nevertheless, Warden controls access to the dynamic non-literal elements of WoW. Since the non-literal elements of WoW are protected by copyright and since Warden is a technological measure protecting infringement of the non-literal elements, the court of appeals found that the adaptation of Glider to avoid detection by Warden violates the DMCA.
For further information, contact Joshua R. Matthews.
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Who Owns Betty Boop? | |
Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 09-56317 (9th Cir. Feb. 23, 2011).
Betty Boop, created by Max Fleischer, first appeared in cartoon films made by Fleischer Studios, Inc. in 1930. In 1941 Paramount acquired the rights to Betty Boop from Fleischer Studios, Inc. Fleischer Studios, Inc. dissolved in 1946, and in the early 1970s Max Fleischer's family attempted to revive his cartoon business by forming a new Fleischer Studios, Inc., the plaintiff in this case. A.V.E.L.A. licensed third parties to sell Betty Boop merchandise, and Fleischer Studios sued for copyright and trademark infringement, asserting that it owned all rights to Betty Boop. According to Fleischer Studios, Paramount had transferred its rights to UM&M TV Corp. in 1955; in 1958 UM&M transferred its rights to National Telefilm Associates, Inc., which became Republic Pictures in 1986; and Republic transferred its rights to Fleischer Studios in 1997. In arguing against the copyright infringement claim, A.V.E.L.A. challenged Fleischer's title to Betty Boop. The court of appeals, after examining the transfer agreement between Paramount and UM&M, found that the agreement reserved to Paramount all rights in Betty Boop, so that UM&M had not acquired any rights. As a result, the court of appeals found that Fleischer Studios had no standing to assert a claim for copyright infringement. Likewise, the court of appeals found that there was no merit to Fleischer Studios' trademark infringement claim since A.V.E.L.A., by licensing others to make Betty Boop merchandise, was using Betty Boop as a decorative element and not as a trademark. The court of appeals found further support for its ruling in Supreme Court precedent holding that where a copyright is in the public domain, a party may not assert a trademark infringement action against an alleged infringer if that action is essentially a substitute for a copyright infringement action. According to the court of appeals, if it upheld Fleischer Studios' trademark claim, Betty Boop would never enter the public domain, a result contrary to Supreme Court precedent. One wonders how Disney will reconcile this decision with its efforts to protect Mickey Mouse.
For further information, contact Marc P. Misthal. |
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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 over 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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