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June 2011 |
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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's
Patent Revived After Four Years of Abandonment
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GRR successfully
helped a client revive a patent that the U.S. Patent and
Trademark Office had identified as being abandoned four years
earlier for lack of payment of maintenance fees.
In this unusual case, the client had been self-tracking
dates for payments of maintenance fees and, in their tracking
system, had inadvertently transposed the day and year digits
in a date. As a result, a particular
maintenance fee had not been paid and the client was unaware
that the patent had become abandoned. The
client realized the error when the next maintenance fee was
coming due. On behalf of the client, Barry
Lewin prepared a petition to revive the application and
worked with the client to prepare extensive declarations
detailing the circumstances surrounding the unavoidable delay
in paying the maintenance fee. Initially,
the petition was denied, but GRR filed a request for
reconsideration, supplementing the original filing with
further detail. Because the patent is the
subject of a very significant technological advancement, the
client now intends to move forward with licensing the patent
to a variety of third
parties. |
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GRR Clients
Obtain Consent Judgment Against Infringer
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GRR clients
Artemide SpA and Artemide, Inc. (www.Artemide.net) recently
secured a Consent Judgment against an infringer of several of
Artemide's lighting products, which are protected by
trademarks and trade dress (and, in one case, by a design
patent). The infringing lighting products were copies of
Artemide's well known MERCURY, TOLOMEO, NUR and CASTORE
lighting designs. Artemide had sued Kirch Industrial Co
(U.S.A.) Ltd. for violating its intellectual property rights,
which rights Kirch subsequently specifically recognized in the
Consent Judgment.
Artemide was
represented by Amy B.
Goldsmith and Rachel
Weiss. |
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Attorney
Presentations & Publications |
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The
Internet's Red Light District: Trademarks in the .XXX
Domain |
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Beginning in September, 2011, ICM
Registry, the registrar for the new .xxx domain name (yes,
it's for the "adult" industry) will accept applications from
owners of registered
trademarks to block their trademarks from being issued to a
third party as the prefix for this new adult internet
destination. The period in which trademark owners will be able
to block their registered trademarks from the .xxx domain will
last only 30 days, so it is important to
participate.
Parties seeking to register .xxx
domain names will have to verified as being in the adult
entertainment industry (applicants for .xxx domain names will
receive e-mails asking them for additional information, which
they must supply before a domain name will be permitted to go
live).
It is now possible to "pre-register,"
or let ICM know of your interest in a particular domain
name. Those who "pre-register" will receive updates from
ICM on the availability of the name(s) in which they are
interested.
If you're interested in protecting
your company's valuable trademark from being diluted in this
fashion, please contact us for further information about the
procedure, fees and costs.
For further information,
please contact Amy B.
Goldsmith or Marc P.
Misthal. |
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Fighting
Piracy in Brazil |
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On
May 6, 2011, Brazil implemented the National Brand Owner
Registry. Owners of trademark registrations in Brazil now have
the option of submitting their trademarks to the Registry,
which will be used by police, prosecutors, and customs
officials to research and to verify that seized goods aren't
genuine.
If
your company is already in Brazil or may expand into this
rapidly growing market, consider protecting your company's
brand in Brazil via trademark registration and inclusion on
the National Brand Owner Registry.
For more information, contact
Amy B.
Goldsmith, whose practice
includes the global protection of brands.
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Color Me
Interested: Color Can be Protected as a
Trademark |
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The rights and
protections afforded to owners of color trademarks are the
same as those guaranteed to owners of all other trademarks
capable of being registered under the Lanham Act. Whether the
chosen shade is pink for home insulation, green for a bottle
of mineral water, teal blue for a famous retail store or blue
for artificial turf in a football stadium, colors, like names,
logos, fragrances or sounds, can acquire trademark
significance to distinguish goods and services.
 Historically, it was unclear whether color could be
protected as a trademark. In 1985, the
Federal Circuit Court of Appeals reversed a decision of the
Trademark Office and permitted the registration of the color
pink for Owens-Corning's insulation. However, other courts
refused to recognize that color could act as a trademark;
under the "color depletion" theory, these courts surmised that
registration would have anticompetitive consequences because
of the limited number of colors available to
competitors.
 It took ten years for the Supreme Court to opine
that color trademarks were registrable.
However, to qualify for registration, a color must be
nonfunctional and distinctive such that it has acquired
secondary meaning. Secondary meaning can be obtained by
consistent use of a certain color as a mark over time, which
use causes the consuming public to associate the color with
the appropriate source. The Court ruled against the "color
depletion" theory because (1) the functionality doctrine could
be applied to avoid anticompetitive consequences and (2) there
are a variety of colors available to competitors for
products.
The
functionality doctrine prohibits registration of any feature
that is "essential to the use or purpose of the article" or
"affects costs or quality." When applied to colors,
functionality can be equated with both utilitarian and
aesthetic features. For example, the color of a glass bottle,
which protects its contents from harmful UV radiation, is a
utilitarian feature. However, the color of a boat motor, which
has the capacity to minimize the appearance of the motor and
guarantee compatibility with different boat colors, is an
aesthetic feature.
Since
1995, many organizations have taken advantage of the ability
to protect their colors in order to prevent others from
receiving exclusivity over a particular color and in order to
preserve their own exclusivity. For example, in 2008,
Boise State University filed for federal trademark
registration for the blue color of its artificial football
stadium turf, which was granted in April of 2011.
 
If
your business is associated with a particular color, you may
join Owens-Corning and Boise State University as the owner of
a federal registration for your color.
For
further information, contact Diana
Muller, whose practice includes counseling clients on
global trademark protection, or Erica
Gould.
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Not
Fair Use: How a Well-Known Artist Committed Copyright
Infringement When he Copied too Much Without Commenting on or
Criticizing the Original Work |
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This is the second of two articles focusing on
recent controversies involving Copyright Law and "Fair
Use".
In last month's
newsletter we discussed Conan O'Brien's parody of "Friday" and
2 Live Crew's parody of "Oh, Pretty Woman".
But not all copying can be justified by calling it a
parody. A recent decision from a federal
court in New York, Cariou vs.
Prince et al., 08-CV-11327 (S.D.N.Y. March 18, 2011),
recently rejected an artist's "fair use" defense to claims of
copyright infringement after he copied substantially from
another artist's photographs, and his work did not comment on
or criticize the original works. Richard
Prince, a famous "appropriation artist", copied significantly
from Patrick Cariou's Yes, Rasta, a collection of
portraits of Rastafarians and landscapes images from
Jamaica. In 2000, Cariou published his
Yes, Rasta collection of photographs of Jamaican
Rastafarians.
In or about
2007 and 2008, Richard Prince began incorporating photographs
from Cariou's Yes, Rasta into a series Prince was
developing called "Canal Zone." First, in
St. Barts in 2007, Prince displayed "Canal Zone" as 35
photographs torn from Cariou's book and attached to a wooden
backing board. Prince had painted over some
of the 35 photographs, used some of Cariou's pictures in their
entirety or near-entirety, and used only portions of some of
the other images. In 2008, at a show at a
New York gallery, Prince displayed "Canal Zone" as a series of
29 paintings, 28 of which incorporated photographs from
Yes, Rasta. In these 28 paintings,
Prince incorporated parts or the entirety of 41 photographs
from Yes, Rasta.
Prince did not
seek to comment on or criticize Yes, Rasta or
Cariou as an artist. Prince testified that
he doesn't "really have a message", that he attempts to
communicate when making art and that when he created the
paintings for "Canal Zone", he did not intend to comment on
Cariou's works. Rather, he sought to pay
tribute to other painters, including Picasso, Cezanne and
Warhol, and to create beautiful works of art that related to
musical themes. The court therefore
concluded that Prince's copying from Cariou was not "for
purposes such as criticism, comment, news reporting,
teaching...scholarship, or research", the examples of "fair
use" provided in the 1976 U.S. Copyright Act.
The court also
found that Prince's work was not "transformative" of Cariou's
original photographs. Rather than infuse
the original works with new expression, meaning or message and
create new original artworks, Prince created replacement
copies of the Yes, Rasta
photographs. Prince's works "superseded"
the original images and crowded out the market for Yes,
Rasta or any derivative works Cariou might create. At the
time Prince's "Canal Zone" collection was displayed at the
Gagosian Gallery in New York, Cariou had been in discussion
with another Manhattan gallery about displaying and selling
prints from Yes, Rasta. However, the
gallery learned of Prince's "Canal Zone" exhibition and broke
off negotiations with Cariou because they did not want to
exhibit works that had been "done already" at a nearby
gallery. Meanwhile, Prince and the Gagosian
Gallery sold eight paintings from "Canal Zone" for a total of
$10,480,000. As the court described it,
Prince and the Gagosian Gallery had "usurped" the market for
Cariou's photographs.
Moreover,
Prince had copied too much from Cariou's collection both
quantitatively and qualitatively. As noted
above, Prince had copied at least 41 photographs from Yes,
Rasta, and many of these images were copied in their
entirety or near-entirety. The court
further highlighted that: "in the majority of his paintings,
Prince appropriated the central figures depicted in portraits
taken by Cariou", and "[t]hose central figures are of
overwhelming quality and importance to Cariou's photos, going
to the very heart of his work."
Because Prince
had copied so much from Cariou's original photographs, had not
created works that commented on or criticized Cariou or his
original photographs, and because Prince's works had clearly
crowded out the market for Cariou's Yes, Rasta
photographs and any potential derivative works, Prince could
not legitimately avail himself to the "fair use"
defense. Quite the contrary, his copying
was found to have violated Cariou's copyright rights.
Prince and the Gagosian Gallery are appealing the district
court's decision and will soon submit their legal arguments to
the Second Circuit Court of Appeals.
For
further information, contact Ariel S.
Peikes, who counsels clients regarding copyrights.
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Out-of-State
Uploading of Infringing Material Subjects Uploader to
Jurisdiction of New York Courts |
Penguin
Group (USA) Inc. v. American Buddha, (N.Y. March 24,
2011). New York law permits New York courts to
exercise jurisdiction over an out-of-state defendants where
the acts of that defendant cause injury to a New York entity
and the out-of-state defendant reasonably expects such
consequences. How does this rule apply when an
out-of-state publisher uploads infringing literary materials
to the internet, which can be viewed everywhere, and the owner
of the copyright in that materials is a New York-based
publisher? The New York Court of Appeals, reviewing
this question on referral from the Second Circuit Court of
Appeals, held that in such circumstances the out-of-state
publisher was subject to jurisdiction in New York. The
state court said that uploading infringing material on the
internet causes injury to the copyright holder by creating an
environment for the sales of the original copyrighted material
to diminish, and thus the copyright holder is damaged where
its offices are located. This ruling appears to be an
enlargement of prior case law, which generally held that
placing infringing material on the internet in one state did
not grant jurisdiction over that party in a different state,
unless the infringing party also sold the infringing material
into that state. New York companies can now stay home
to litigate copyright cases involving uploads, which will save
time and money.
For more
information, contact George
Gottlieb, whose practice includes counseling clients on
copyright infringement issues.
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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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