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 Intellectual Property
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August 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. Previous issues of
GRR Intellectual Property News can be found on our
website. | |
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| Attorney
Presentations &
Publications |
|
Marc P. Misthal
was interviewed for an article on ImagingBiz.com on
the basics of trademark law. The article can be found here.
An interview with Amy B. Goldsmith
regarding the dangers of filing patent, trademark and
copyright applications yourself was posted on
Entrepreneur.com, and is available here.
Maria A. Savio
was quoted in an article in E Commerce Times regarding the
injunction issued against Microsoft Word. The article is
available here. |
| Red Light. Green
Light. How Many Claims May I File? |
|
Nearly two years ago, the United States Patent Office
issued new rules restricting the number of claims and the
number of continuation applications that could be filed for
each invention. In an eleventh-hour decision, the
implementation of the rules was enjoined by a district court
in Virginia. That court found that the rules extended
beyond the scope of the Patent Office's power and could only
be implemented by Congress. Reviewing that decision, the
Federal Circuit Court of Appeals found that some of the Patent
Office's new rules were within its power to implement, while
others were not. This month, the Federal Circuit will
gather a panel of 7 judges for an "en banc rehearing" - an
event that takes place in limited circumstances to decide
cases of particular importance - to decide the fate of the new
rules. Until a final resolution is reached, patent
applicants are permitted to indulge in filing an unlimited
number of continuation applications and as many claims as they
wish. For further information,
contact Joshua R.
Matthews. |
| "Fair Use"--A
Subjective Defense to a Charge of Copyright
Infringement |
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| Many potential defendants who receive a notice letter
from a copyright owner accusing them of infringing a copyright
by marketing a "substantially similar" product rely on the
"fair use" defense. These defendants allege that the
"borrowing" of material from the original is a "fair use" -- a
transformative use that promotes the useful arts, for the
benefit of the public.
Two copyright cases, with different results, show how
difficult it is to evaluate the validity of this defense. In
the first case, Liebowitz v. Paramount Pictures Corp.,
137 F.3d 109 (2d Cir. 1998), the well known photographer Annie
Liebowitz shot a photo of a nude and very pregnant Demi Moore
for the cover of Vanity Fair. This celebrity cover received
enormous media coverage. To promote the movie The Naked Gun 33
1/3, Paramount Pictures created a poster that copied this
cover in great detail, using a model that closely resembled
the pregnant Ms. Moore and then changing the model's head to
that of the movie's star, Leslie Nielsen. The district court
held that Paramount's poster parodied and commented on the
message of the Liebowitz photograph, and that as a result
Paramount's use of the image was a "transformative" use.
 
In a more recent case, Salinger v. Colting (see
discussion in this issue), Fred Colting did not fare as well
when he wrote a book called 60 Years Later: Coming
Through the Rye, which told the story of a seventy-six
year old man named "Mr. C". Mr. C escapes from a New York City
retirement home, and the book recounts his adventures in New
York City. Mr. C's adventures are very similar to those of
Holden Caulfield in J.D. Salinger's The Catcher in the
Rye. In fact, many characters from The Catcher in the
Rye appear in 60 Years Later. In ruling on Mr.
Salinger's request for an injunction, the district court ruled
that 60 Years Later was not a fair use because the book
basically retold the same story found in The Catcher in the
Rye-changing the age of the characters was not enough to
make it a transformative use.
These two cases demonstrate that evaluating whether
something is a fair use has occurred is a very subjective
determination, making it difficult to predict with any
certainty whether a court will, in fact, find the challenged
work to be a permissible fair use. For further
information, contact George
Gottlieb. |
| Copyright Office Changes Rules and Increases
Fees |
|
The U.S. Copyright Office has announced two important
rule changes. Effective August 1, 2009, the Copyright
Office increased various filing fees. To encourage
electronic filing, many of the fee increases are associated
with paper filings. For example, the fee for filing
paper documents to register a copyright increased from $45 to
$50, and the fee for registering a group of photographs (which
at this time can only be done on paper) increased from $45 to
$65. A complete listing of the fee increases can be
found here.
Additionally, the
Copyright Office has proposed a rule (available here) which
would change the rules regarding the submission of deposit
copies. As Copyright Office rules currently stand, an
application to register a copyright must be accompanied by two
copies of the work to be registered. The proposed rule
would exempt works that are published in the U.S. and are only
available online (such as electronic serials) from deposit
until such time as the Copyright Office demands the deposit of
copies of the work. If this rule goes into effect, it
would be a significant departure from the Copyright Office's
prior rules.
Both the fee increases and
the proposed rule of change reflect the Copyright Office's
efforts to keep up with technological
developments.
For further information, contact Marc P.
Misthal.
|
| Why Can't I Use my Name...I am a
Gucci!! |
|
Gucci America, Inc.
v. Gucci, 07 Civ. 6820 (S.D.N.Y. August 5,
2009) A few years ago, the ex-wife (Jennifer
Puddefoot) and daughter (Gemma) of the late Paolo Gucci, a
designer for the Gucci company family, with the help of
licensing agent Edward Litwak, licensed use of JENNIFER GUCCI,
a "Green Red Green Stripe" design and a JG logo for a
variety of goods, including gelato and coffee, a line of
bedding products, cosmetics and hosiery, and licensed use of
GEMMA GUCCI and the JG logo for wines, gelato and
handbags. Neither Jennifer nor Gemma Gucci had any prior
experience in working with any of the products which Litwak
had licensed. None of the products used a disclaimer
indicating no connection with Gucci America. Displeased
with the introduction of these "Gucci" products, in 2007 Gucci
America, Inc. obtained a temporary restraining order against
the sale, promotion and marketing of these products. A trial
was held in 2009, and as a result of the trial the court found
that the licenses had been entered into after the U.S.
Trademark Office refused applications for the marks GEMMA
GUCCI and JENNIFER GUCCI on the ground that they were
confusingly similar to the GUCCI mark and would cause public
confusion. As a result, the defendants were permanently
enjoined from using GEMMA GUCCI and JENNIFER GUCCI and any
other names or designs confusingly similar to the registered
GUCCI trademarks. The court also concluded that the
defendants had acted in bad faith, and accordingly ordered an
accounting of profits, an award of attorneys' fees and costs,
as well as punitive damages against Litwak. The court's
order also permitted the use of GEMMA GUCCI or JENNIFER GUCCI
in very limited circumstances which the women will likely
never be able to fulfill, namely that the Trademark Office and
recognized trademark counsel must approve of the use and the
ladies must design or select products in categories in which
they have "acquired demonstrable reputation(s), skill and
knowledge. For further information, contact Amy B.
Goldsmith. |
| Sequel to The Catcher in the Rye not a
Permissible Fair Use |
|
| Salinger v.
Colting, 09-CV-5095 (S.D.N.Y. July 1, 2009).
Defendant Frank Colting wrote a book entitled
60 Years Later: Coming Through the Rye that
purported to be a sequel to J.D. Salinger's The Catcher in
the Rye. The Colting book featured a seventy-six
year old character called "Mr. C" escaping from a New York
City retirement home and wandering the streets of New
York-much in the same way that The Catcher in the Rye
features Holden Caulfield wandering the streets of New
York. After hearing of the Colting book's planned
publication, Salinger sued Colting, seeking an injunction to
prevent publication of the Colting book as an infringement of
his copyrights in The Catcher in the Rye and the
character of Holden Caulfield. After a hearing, the
court found that the Colting book was substantially similar to
The Catcher in the Rye and, as a result, infringed
Salinger's copyright. Colting argued that even if his
book was an infringement, it commented and critiqued The
Catcher in the Rye, making it a permitted fair use for
which there is no remedy. The court disagreed.
According to the court, a key factor in determining whether a
new work makes a fair use of an older work is whether the
newer work transforms the older work in order to make its
point. After reviewing the two works, the court found
that the Colting book did not transform The Catcher in the
Rye; instead, the court found that the Colting book retold
the same story with older characters. Moreover, the
court pointed out that the Colting book retold the same story
using nearly identical supporting characters, settings and
tone. Accordingly, the court issued an injunction
barring the publication of the Colting book in the United
States. Colting has already appealed the court's
decision, and The New York Times Co., Gannett Co. Inc., the
Associated Press and Tribune Co. have all filed briefs
supporting Colting's position.
For more information,
contact Marc P.
Misthal. |
| Subway Shop that Also Operated as a Strip Club
Ordered to Pay Damages |
|
Anthony "Cousin Vinny" Agnello, who has been described in
press reports as a "notorious sleaze merchant," apparently
wasn't making enough money with his strip club business and
thought he could supplement his income by combining his
night-time strip club with his day-time SUBWAY sandwich
shop. Mr. Agnello unfortunately had not read his
franchise agreement carefully enough and didn't realize that
the owners of the SUBWAY trademark might disapprove of his use
of the SUBWAY mark for his other business. Mr.
Agnello's troubles started last year at the end of his initial
franchisee training session. Caught up in the graduation
spirit at a cocktail party, Mr. Agnello passed out business
cards of his strippers for the enjoyment of his classmates and
staff. Mr. Agnello reports that "the next day they
[Subway] said it was a moral violation, and escorted him off
the grounds." This year, Mr. Agnello was also cited by
Subway for having posters of sex dolls and nude dancing
services on his restaurant walls. At that point,
Subway's legal department decided to terminate his franchise
agreement and bring a lawsuit. The lawsuit did
not go well for Mr. Agnello. On July 28, 2009,
Magistrate Judge Frank Maas said that in addition to losing
his license to use the mark, Agnello should pay Subway $90,000
plus attorneys fees. A copy of the decision can be found
here. For
further information, contact Richard S.
Schurin. |
|
|
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 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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