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 Intellectual Property
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May 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.
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GRR Client Wins Award of Statutory Damages and
Attorney's Fees in Copyright Case
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On April 29, 2009, GRR client M. Lady LLC won an
award of $50,000 in statutory damages and recovery of its
attorney's fees. M. Lady was represented by Richard
Schurin.
In a 25 page opinion, the Court found that even
though the defendants had sold only $3,000 worth of infringing
goods, since they had willfully infringed plaintiff's
copyright rights M. Lady was entitled to an award of statutory
damages of $50,000. This award was fifteen times
the defendant's gross sales. The Court also
awarded M. Lady recovery of its attorney's fees. A
copy of the opinion can be found here. |
| GRR Helps Composer/Guitarist Protect His
Copyrights |
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When composer, singer and guitarist Bob Delia had a
dispute with some former colleagues, he retained GRR. On
behalf of Mr. Delia, GRR sued for copyright infringement. A
Consent Judgment was entered preventing the former colleagues
from using Mr. Delia's songs "Tombstone Bound" and "Horses" in
any way, including making any further recordings and playing
the songs in concert. Amy B. Goldsmith
represented Mr. Delia.
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| Attorney
Presentations &
Publications |
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On May 12, 2009, Steven Stern will
give a lecture at the Gemological Institute of
Amercia on copyright and design patents for
jewelry.
On May 18, 2009, Amy B. Goldsmith
and Jeffrey M. Kaden
will speak at the Surtex Licensing Show, to be held at the
Jacob K. Javits Center. The topics they will cover
include basic intellectual property rights (patents,
copyrights and trademarks) and the mechanics of licensing from
the perspectives of both the owner/ licensor and the
licensee/manufacturer. More information is available here, and
registration information can be found here. Barry A. Cooper
was quoted in a May 6, 2009 article on
LinuxInsider.com about Google's use of the term
"android" as the name of its mobile phone operating
software. The article can be found here.
On April 24, 2009, Amy B. Goldsmith
spoke about protection of intellectual property in China and
India at the 2009 Economic Forum on India and China
Businesses, sponsored by the Department of International Trade
& Marketing of the Fashion Institute of
Technology. On April 21, 2009, Amy B. Goldsmith
and George Gottlieb
delivered a Continuing Legal Education seminar at a local
general practice firm about the interaction between the set-up
of a corporation and protecting the corporate name and company
brands as trademarks in the U.S. and internationally.
Yuval H. Marcus
co-authored an article published in the May 2009 issue of
The Intellectual Property Strategist entitled "TTAB
Fraud Standard." The article discusses the TTAB's
G&W decision realting to fraud in multi-class
trademark applications and the pending Bose and
Grand Canyon appeals to the United States Court of
Appeals for the Federal Circuit. The article can be
found here. |
| The Second Circuit Changes Course
on Trademarked Keywords |
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| On April 3, 2009, The United States Court of Appeals
for the Second Circuit issued a decision in Rescuecom Corp. v.
Google Inc., 562 F.3d 123 (2d Cir. Apr. 3,
2009) holding that Google's sale of trademarked keywords
as part of its AdWords advertising program may give rise to
liability for trademark infringement. Prior to the
decision, district courts in the Second Circuit had dismissed
trademark infringement claims on the grounds that
the sale or purchase of trademarked keywords did not
constitute a "use in commerce" within the meaning of the
Lanham Act. The Second Circuit's decision changes the
law in the Second Circuit and brings it in accord
with other circuits that have considered the issue.
An article written by Yuval H. Marcus
about the Second Circuit's Rescuecom decision
that was published in the May 2009 issue of the Westchester
County Bar Association Newsletter can be found here.
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Will Google Books Change
Everything?
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| The way authors and publishers are paid for their
creative works is facing significant change. In 2004,
Google began scanning millions of books in anticipation of
creating an unprecedented online digital library. In
response, representatives of authors and publishers sued
Google for copyright infringement - these lawsuits were
subsequently combined and given class-action status.
This past fall, a proposed settlement was reached and a
fairness hearing will take place on October 7, 2009. If
approved by the Court, the settlement will have far reaching
implications.
The proposed settlement, which can be found
here, would allow
Google to provide online access to a digital library on par
with the Library of Congress. Since the settlement stems
from a class-action lawsuit, the settlement will apply to
everyone in the class who has not affirmatively opted out by
September 4, 2009. Therefore, the settlement will apply
to nearly every author and
publisher.
Under the settlement, Google would create a licensing
program similar to the ASCAP and BMI programs already in use
by the music industry. Under these programs, content
users pay a flat fee and in return are given a limited license
to use music from the program's library. All the fees
collected from the program are pooled and distributed to the
content creators based on the demand for each particular
work.
Critics of the proposed settlement point to two
provisions that they say would give Google too much
power.
One provision provides that authors and publishers who
have not opted out are prohibited from establishing a
competitor to Google Books. If this provision is
included in the final settlement, competition with Google
Books will be foreclosed because few authors and publishers
are anticipated to take the affirmative step of excluding
themselves from the settlement. Another provision of the
settlement allows Google Books near exclusive rights to
distribute orphan works. Orphan works are those works
which are protected by copyright, whose owners cannot be
identified or are not easily identifiable.
On April 28, 2009, Judge Denny Chin ordered a four month
extension of both the deadline to opt out of the settlement
and the date of the fairness hearing. Previously these
dates were May 5, 2009 and June 11, 2009
respectively.
Whatever the ultimate outcome of this dispute,
significant changes are in store for the publishing
industry. Authors and publishers should carefully
consider how these changes will impact their intellectual
property rights. For further information contact Joshua
Matthews. |
Why Does It Take So Long For a Patent to
Issue?
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| Clients are very often surprised to learn that in
most cases it will be years before a patent issues.
There are several reasons for this slow process. First, due to
a backlog in the U.S. Patent Office, it takes a long time for
an examiner to review a particular application. This is
especially true in the computer arts where it may take two or
three years before any type of initial response is received.
Second, once an Examiner reviews an application, it is likely
that he will reject it. In many fields, over 90% of
patent applications are initially rejected. This is not
necessarily bad because it sets the stage for negotiations
with the examiner. Imagine that you want to buy a house
and you make your first offer to the seller. If your
first offer is immediately accepted you would feel that you
are overpaying. Similarly, an early allowance of an
application may be an indication that its claims are too
narrow and that after negotiations, the examiner may have
allowed some broader claims. A patent with broader
claims offers broader protection and is more valuable than one
with narrower claims. While getting a patent quickly may be
important, a lengthy prosecution process that ultimately
results in a patent with the broadest possible claims will
ultimately be more valuable to you and your business.
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Trademark Applicants Must be Able to
Objectively Prove They Have an Intent to
Use
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Friedrich Winkelmann of Germany filed an Intent-to-Use
application to register V.I.C. in connection with various
goods, including cars, claiming priority to a German trademark
registration. Honda Motor Co., Ltd. opposed the
application, claiming a likelihood of confusion with its CIVIC
trademark. After taking discovery, Honda amended its
Notice of Opposition to allege that Mr. Winkelmann had lacked
a bona fide intent to use the V.I.C. mark in commerce when he
filed his application, and Honda moved for summary judgment on
that ground. In opposing the motion, Mr. Winkelmann
submitted declarations from his counsel and pointed to his
applications and registrations for the V.I.C. mark outside of
the U.S. In support of its motion, Honda submitted Mr.
Winkelmann's discovery responses in which he stated that he
had not had activities in the U.S. or employed a business plan
or strategy there and that he could not identify evidence
showing he had an intent to use the mark. The Trademark
Office granted Honda's motion, explaining that Mr. Winkelmann
had not come forward with any objective, documentary evidence
of his intent to use the mark. As a result, the
Trademark Office refused to issue a registration to Mr.
Winkelmann. In view of the foregoing, an applicant
filing an Intent-to-Use application must have some way to
corroborate its intent, such as a business plan or
promotional activities relating to the U.S., otherwise the
application and any registration that may issue from it will
be subject to attack.
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| Covenant Not to Sue Extends to Customer Accused of
Infringement |
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Despite a patent owner's attempt to limit a covenant not
to sue in a settlement agreement to only the settling
party/supplier, the Federal Circuit held that such a covenant
is a complete defense to a claim of patent infringement in a
subsequent patent suit by the patent owner against the
supplier's customer. In considering whether an
unconditional covenant not to sue amounts to a sale authorized
by the patent owner, the appellate court agreed with the lower
court's conclusion, explaining that a covenant not to sue is
equivalent to a license agreement benefiting the
supplier. Since this "license" allowed the supplier to
sell its product, any subsequent sales to the supplier's
customer were allowed under the doctrine of "patent
exhaustion", which terminates all patent rights once a
patented item is sold. According to the court, the fact
that the patent owner and supplier intended to limit the
covenant not to sue to only the supplier was irrelevant.
Moreover, the covenant not to sue was a defense benefitting
the customer not only as to patents identified in the
settlement agreement between the patent owner and the
supplier, but also as to a broader patent not mentioned in the
settlement agreement and not even issued when the settlement
agreement was signed. The Court reasoned that to hold
otherwise would effectively negate the covenant.
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OCTOMOM Next Hot Trademark?
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The term OCTOMOM may just be the next hot
trademark. On April 10th, 2009, octuplet mother Nadya
Suleman filed two new trademark applications to register
OCTOMOM. One application seeks to register the mark for
use in association with a reality based television show while
the second covers disposable diapers, pants and other clothing
articles. Beating Ms. Suleman to the punch, however, was
a Texas company by the name of Super Happy Fun, who one month
earlier had filed its own application to register OCTOMOM for
computer games, toys and entertainment services. Super
Happy's website indicates that it has also developed a game by
the name of FERTILE MYRTLE, which requires participants to
press down on a doll's swollen belly to produces another
adorable bundle of joy. It remains to be seen whether
the Trademark Office will allow Ms. Suleman's applications to
issue, given that that there may now be a "crowded
field." For further information,
contact Richard S.
Schurin. |
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Intellectual Property News Editorial Board: Richard S.
Schurin ( rschurin@grr.com), Marc P. Misthal
( mmisthal@grr.com), Steven Stern ( sstern@grr.com) and Yuval H. Marcus
( ymarcus@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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