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 Intellectual Property News |
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November 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 Defeats Motion to Dismiss that Argued Court Lacked Jurisdiction Over Defendants
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GRR client Knoll, Inc., represented by GRR attorneys George Gottlieb, Marc P, Misthal and Ariel S. Peikes, sued Moderno, Inc. and its principal for trademark infringement and related claims arising from Moderno's sale of infringing copies of the items in Ludwig Mies Van der Rohe's famous Barcelona Collection, which is comprised of the Barcelona Chair, Barcelona Stool, Barcelona Couch, Barcelona Table, and the Flat Brno Chair. All five of these items, as well as the BARCELONA trademark, are the subjects of incontestable trademark registrations.
Defendants responded to the lawsuit by filing a motion to dismiss on the ground that the New York federal court lack jurisdiction over them, even though they conceded that they had sold their infringing products into New York. The basis for defendants' argument was their position that they conduct all of their business through a California based website. The defendants suggested that they could only be sued in California.
Knoll opposed the motion, pointing out that defendants ship products into New York and therefore actually do business in New York (defendants identified the FDNY as a satisfied customer on their website); that defendant's website can be viewed by New York consumers; and that New York consumers can use the website to pay the defendants for their products and to arrange for delivery of defendants' products into New York. Relying on a recent decision by the Second Circuit Court of Appeals, Knoll also argued that even one sale by defendants of the alleged infringing products into New York confers New York Courts with jurisdiction over the defendants.
The court agreed with Knoll (see decision here), explaining that jurisdiction in New York over the defendants was proper because Knoll alleged in its complaint that the defendants "have sold and continue to sell products in the form of or derivatives of the designs that are the subjects of Knoll's...trademark registrations in New York." (emphasis supplied). At this early stage of the case, Knoll's allegations that the defendants "operated a website offering furniture, including the alleged infringing furniture, to New York consumers and made sales" to New York consumers, including the alleged infringing furniture products, is "sufficient...to defeat defendants' motion to dismiss for lack of personal jurisdiction." As a result, the case will proceed in the Southern District of New York.
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Attorney Presentations & Publications
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On October 19, 2011 Ariel S. Peikes and Rachel M. Weiss presented to members of the Elizabeth Foundation for the Arts on a variety of issues in copyright law.
Amy B. Goldsmith's presentation on Reality Television: Copyright Issues and Participant Contracts is now available from Lawline.com. Click here for more information.
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GRR Client Honored
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Congratulations to Jonathan Green, author of Murder in the High Himalaya, for being awarded the prize in the Mountain and Wilderness Literature category in the 2011 Banff Mountain Book Competition. Murder in the High Himalaya also won the American Society of Journalists And Authors Outstanding Non Fiction Book of 2011 this past summer. Mr. Green is represented by Amy B. Goldsmith.
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A Scandalous Finger
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Under the Trademark Act, a trademark will be refused registration by the U.S. Trademark Office if the mark consists of or comprises "imoral, deceptive, or scandalous matter..." In the case of In re Luxuria, s.r.o., the Trademark Trial and Appeal Board ("Board") affirmed a refusal by the Trademark Examiner to register the bottle design shown below, for various beverages, on the ground that the mark is considered vulgar by most people, and therefore is scandalous or immoral. Applicant unsuccessfully argued that the "giving the finger" gesture is not considered scandalous or immoral in the 21st century if it is not directed at a particular individual or group.
While arguing that the mark should be registered by the Trademark Office, Applicant Luxuria was forced to admit that the design configuration depicts what is commonly referred to as "giving the finger" or "giving the bird" or "flipping the bird". The Board took what is known as "judicial" notice of several dictionary definitions of these terms. These definitions evidently supported the Board's position that the gesture depicted in Applicant's mark is vulgar and obscene.
In refusing registration, the Board was also persuaded by the fact that the goods to which the mark was to be applied are general consumer products that are routinely sold in grocery stores and are sometimes viewed by parents shopping with their children. "[E]ven if some individuals might personally find bottles 'giving the finger' funny, many, if not all, of these individuals would not find it funny to expose their children to such a configuration." The Board concluded as follows:
[The] gesture depicted by applicant's mark is the visual equivalent of an extremely offensive expletive. Just as these words would be considered scandalous and immoral if used as a trademark, even if it was not clear to whom the insult was directed, the visual depiction of these words by the finger gesture shown in applicant's mark is equally scandalous and immoral.
On a related point, before deciding to refuse registration, the Board chided Applicant for its actions on its appeal. Applicant had twice requested to have the matter sent back to the Examining Attorney so that it could submit certain additional evidence for the record. The Board refused, however, largely because the requests came very late in the appeal process and because Applicant did not explain why it could not have found this evidence earlier.
Nonetheless, Applicant foolishly decided to attach that very same evidence to its Brief. The Board "was at a loss" to understand why Luxuria would submit such material in this manner; it therefore refused to accept the evidence and the Brief as a whole. The Board sarcastically pointed out:
We cannot help but note the convergence between [A]pplicant's actions toward the Board and the message conveyed by its mark.
The Board told Luxuria where it could go!
For more information, contact Jeffrey M. Kaden. |
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DOMAIN NAME ALERT: Do You Have Spare Change of $185,000?
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Beginning January 12, 2012 and through April 12, 2012, the most expensive domain name filing ever will take place. Right now, there are 22 Generic Top-Level Domains (gTLDs), including .com, .net, .org, and others. In the summer of 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) decided to open up new gTLDs, including .YOURCOMPANYNAME and .YOURBRAND and .CATEGORY. For instance, if your company name and brand is "bonsai", ICANN is now permitting you to operate your own registry under that name. If you love sailing, then you can purchase .SAILING. The cost of $185,000 (it's not a typo!) was designed to avoid cybersquatting and to generate funds for ICANN to support this new program. This cost presumes that there is no quarrel between legitimate applicants, which will necessitate an auction with the highest bidder winning. ICANN is planning to advise applicants if they succeeded in the application process by November 2012. But at that point, there won't be any refunds.
The application process could be described as arduous (for all of the details, see ICANN's Applicant Guidebook). Applicants are required to verify their corporate status as well as submit the names of individual directors, officers, partners, and major shareholders of that entity. And don't expect secrecy: the names and positions of individuals included in the application will be published as part of the application. Additionally, in most cases, the application must include audited or independently certified financial statements for the most recently completed fiscal year for the applicant (these won't be disclosed). Lastly, the applicant must submit a comprehensive business plan for the new registry, which cannot be mothballed once established; an active registry must be maintained.
According to ICANN, "Applicants will need to demonstrate the operational, technical and financial capability to run a registry and comply with additional specific requirements." Practically, this will involve hiring staff to maintain the new registry. However, the gTLD can be maintained solely for the company's own use, with the issuance of second level domains limited to the company's own personnel and contacts. The new gTLD can also be set up to promote the company's own brand and to exclude access by competitors, cybersquatters, or scammers. ICANN also won't bind the company to that business plan; once the new gTLD is established, the company is free to do what it wants within the limits of the registry agreement, which will require additional fees: (a) a fixed fee of US$6,250 per calendar quarter; (b) and a transaction fee of US$0.25 (once more than 50,000 transactions have occurred in the TLD during any calendar quarter or any four calendar quarter period).
What if you don't have $185,000 but your brand is still important to you? There will be procedures to prevent others from co-opting your company's trademark but they haven't been published in detail yet.
One more point: the new gTLD won't permit registration of two initials, so if your trademark is U2, the new gTLD is not for you.
So who might be interested in filing? Cities such as London, Paris, New York may spend their marketing dollars for these domain names; so might famous corporate brands, celebrities, and global sports organizations (think .NIKE, .BIEBER, and .BASKETBALL).
As ICANN provides more information, we'll publish updates.
For further information contact Amy B. Goldsmith, who counsels clients on domain name issues.
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Fight Over OCCUPY WALL STREET Lands in Trademark Office
| | The Occupy Wall Street movement has finally made its way to the U.S. Trademark Office.
Leaders of the Occupy Wall Street movement, based in Zuccotti Park in lower Manhattan, have filed a trademark application in the Trademark Office to register that term. The application is intended to cover various goods including newsletters, backpacks, T-shirts and other services including "entertainment services". The filing was made by "Occupy Wall Street, AKA Friends of Liberty Park" of New York, New York.
According to the Wall Street Journal, the demonstrators have a silk-screening station in Zuccotti Park to print "Occupy Wall Street" on T-shirts. Their attorney, Samuel Cohen, has stated that the filing was made to prevent others not affiliated with the Wall Street group from using "Occupy Wall Street" for improper purposes.
The trademark application, filed on October 24, 2011, was filed on the very same day that another "Occupy Wall Street" application was filed by Fer-Eng Investments, LLC of Rancho Santa Fe, California. This application also covers various articles of clothing and footwear, but not "entertainment services."
Both of the above applications were preceded by still a third application, filed October 18, 2011, again covering various items of clothing. This application was filed by an individual, Diane Maresca, of West Islip, New York, and has since been abandoned.
The Trademark Office will eventually determine who, if anyone, owns the phrase. The first response from a Trademark Examiner should take place in five to nine months. In the meantime, the name has already gone commercial. A recent search on Ebay shows more than 5,000 hits for "Occupy Wall Street".
For further information contact George Gottlieb, who counsel clients on securing trademark rights.
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Can Spiderman Fight a Copyright Suit?
| | The Broadway musical "Spider-Man: Turn Off the Dark" has been the subject of much press chronicling its tortured road to Broadway. Now it is at the center of a copyright infringement lawsuit filed by Julie Taymor, the ousted director and a co-writer of the show.
Ms. Taymor filed a lawsuit against 8 Legged Productions LLC, the show's production company, claiming that its use of a modified version of her dialogue and stage directions constitute copyright infringement. Ms. Taymor claims that she is owed royalties for all performances of the musical since it was reworked in April, and that the producers breached contracts giving her approval over all changes to the musical's script. A copy of the complaint is available here.
For their part, the producers contend that Ms. Taymor has been appropriately compensated and that they have repeatedly tried to resolve this matter.
Sounds like "super" attorneys are going to be needed to work this one out.
For further information contact Marc P. Misthal, who counsels clients on enforcing copyrights. |
No Protection for Diaper Idea
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Pollick v. Kimberly-Clark Corp., 11-12420-BC (N.D.Mich. Sept. 23, 2011).
The seminal doctrine that one cannot copyright an idea remains strong in the United States. Richard Pollick sued Kimberly Clark Corp ("KC"), the maker of Huggies brand diapers, after KC marketed a diaper made to resemble jeans. Apparently Mr. Pollick had submitted a disclosure to KC of his "diaper jeans" prior to the introduction of KC's jeans diaper. Pollick obtained and asserted a copyright registration, claiming that the product offered by KC violated his copyright.
A picture is worth a thousand words, and looking at the photos below side by side, the question put to the Court on a motion to dismiss the complaint was: Is KC's jeans diaper substantially similar to Pollick's diaper jeans?
 | | Huggies Front |
 | | Pollick Front |
 | | Pollick Back |
 | | Huggies Back |
Opposing the motion, Plaintiff contended that he "is not trying to protect the 'individual generic or otherwise common elements necessary to represent jeans' . . . rather, he is asserting rights over the creative expression of diapers designed to resemble jeans." That was a fine line argument. KC countered that there was no copying, even if the ideas were the same, and that's what the Court held after an elaborate review of the law and the policies behind why copyright protects expressions, not ideas.
Interestingly, but probably incorrectly, the Court also relied on color to support its finding that the respective products were not substantially similar. Since the Court was thorough in listing the other differences in the appearances of the products, the decision is unlikely to be reversed if an appeal were to be filed.
Moreover, finding the plaintiff's complaint objectively unreasonable, the Court also awarded attorneys fees and costs to KC. Noting that in copyright cases the grant of fees and costs is the rule, not the exception, the Court relied on a litany of support: "frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence."
The lesson here is to remember that the only way the disclosure of an unpatentable "idea" to another can be protected is via contract. (There was no discussion in the opinion relating to the breach of any such agreement, or to a contract claim, so one likely didn't exist). Complete coverage is only afforded by a non-disclosure/non-compete agreement whereby the company refrains from using the idea in consideration for the opportunity to acquire that idea from the submitter. "Naked" submissions (not covered by diapers, jeans or otherwise!) are completely insufficient.
For further information, contact Maria A. Savio, whose practice includes counseling clients on copyright matters and the protection of consumer products.
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Intellectual Property News Editorial Board: Amy B. Goldsmith (agoldsmith@grr.com) and Marc P. Misthal (mmisthal@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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Gottlieb, Rackman & Reisman, P.C. | 270 Madison Avenue | New York | NY | 10016
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