Amy B. Goldsmith's article "Licensing Your Art for Product Manufacturing" appeared in the September 2009 issue of Art Calendar.

 

On September 25, 2009, Amy B. Goldsmith and Jeffrey M. Kaden gave a presentation to the law firm of L'Abbate, Balkan, Colavita & Contini, L.L.P. in Garden City, New York on how trademarks, trade dress, copyrights and design patents and can protect product designs.
 
Diana Muller and Ted Weisz recently attended a conference on IP organized by the Associa磯 Brasileira Da Propriedade Intelectual in Rio de Janeiro, Brazil.  After the conference, Diana and Ted visited several corporate clients as well as law firms in Brazil (see photo at right).  This trip was so well received that Diana and Ted are planning to return next year.

Allen Rubenstein traveled to Israel where he met with various law firms.
 
Barry Lewin traveled to Chile where he met with representatives of an important local company to discuss patent matters. He also visited colleagues at local law firms.   

As reported in our May 2009 issue, Google reached a settlement of a class action lawsuit brought by authors and publishers over Google's Google Books program.

Before the settlement can go into effect, it must be approved by Southern District of New York Judge Denny Chin.  Judge Chin scheduled a fairness hearing for October 7, 2009.  In advance of the fairness hearing, numerous parties filed papers with the Court. One of those documents, the Statement of Interest of the United States, which recommended that the court disapprove the Settlement in its present form, has pushed Google back to the negotiating table.

In its current form, the Settlement contains four general areas of concern.  First, the Settlement raises issues of proper class notification and class representation.  Foreign owners of U.S. copyrights and owners of "orphan" works (works whose owners cannot be identified) are not represented in the settlement negotiations.  Individuals and libraries are also not represented in the settlement negotiations. 

Second, the settlement raises antitrust concerns.  The settlement greatly limits the ability of copyright owners to recover damages from Google for using their works.  This limitation would not apply to Google's competitors, who would be subject to liability if they incorporated "orphan" works into their offerings.

Third, the Settlement conflicts with certain existing copyright laws.  The Constitution grants Congress alone the authority to grant copyright monopolies upon authors.  The proposed settlement potentially changes substantive copyright law, raising the possibility of a conflict between the roles of the legislative and judiciary branches.

Lastly, the settlement may not comport with the Berne Convention for the Protection of Literary and Artistic Works, to which the United States is a signatory.  The Berne Convention requires member countries to provide copyright protection for citizens of foreign nations.  Forcing foreign owners of U.S. copyrights to opt out or accept limited payments for the use of their works would not be consistent with the Berne Convention's prohibition against creating formality requirements as a prerequisite to the enjoyment and exercise of a copyright.

To cure these problems, it is widely expected that Google will prepare a revised settlement for the Court within the next few months.  The revised settlement will likely include new class representatives, more extensive efforts at providing direct notice to copyright owners, limits to the power of the Book Rights Registry, a trust to hold and distribute revenue associated with orphan works, and avenues for competitors to gain similar terms for the distribution of orphan works.

The U.S. Department of Justice (DOJ) is in the process of reviewing the settlement for antitrust violations, and if a revised settlement is agreed upon, the DOJ will still have to approve it.  And any approved or disapproved settlement is likely to be appealed, meaning that a final outcome of the Google Books project is still a long way away.

For further information, contact Joshua Matthews.

 

New products having unique ornamental shapes can be protected by design patents. One major advantage of design patents over utility applications is that design patents are less expensive to prepare, file and prosecute, and they are issued much more quickly.  In an interesting twist, Google was recently awarded a design patent for its web page (see image at left).  Therefore, in addition to products, it appears that web pages (despite their ephemeral nature) may be the subject of design patents as long as they include some elements that are new, original, and ornamental.

For further information, contact Ted Weisz.

Despite eBay's recent European victories (see our June issue), on September 18, 2009, the Paris Tribunal de Grande Instance ordered the online auction house to pay LVMH Mo봠Hennessy Louis Vuitton SA ("LVMH") ?80,000 in damages (approximately USD $118,000) for "brand counterfeiting", specifically eBay's unauthorized use of LVMH luxury perfume brands Christian Dior, Givenchy, Kenzo and Guerlain in keyword searches.
 
Unlike other European lawsuits against eBay, this particular action did not allege that eBay is liable for the sale of counterfeit products on its website, but rather that the auction house committed trademark infringement by purchasing these specific LVMH perfume brands as Google AdWords and then displaying these brands in its Google advertisements.
 
As there are two pending cases before the European Court of Justice concerning Google AdWord issues, eBay may eventually be able to circumvent the French court's ruling should it conflict with EU law as it is shaped by these future decisions.
 
In addition to the damage award, eBay is enjoined from further use of the LVMH brands in its AdWord advertisements.  eBay will be subject to a ?1,000 fine (approximately USD $1,500) for each future infringement in violation of Tribunal's order.

For further information, contact Lesley Matty.