DEBLOIS'
INTELLECTUAL PROPERTY UPDATE
My goal in creating this Intellectual Property (IP) Law blog is to serve as a source of information for anyone interested in Intellectual Property Law and to provide a few answers to commonly asked questions about intellectual property rights. For anyone looking for information on issues involving patents, trade secrets, trademarks, and copyright rights, as well as some of the most current court decisions in the legal field, you're in the right place. I want to provide some insight into the proper steps to take to protect your legal IP rights, though consulting with a competent, experienced attorney is essential if you have a specific questions.
License is Required for Playing Music in Public Establishments
(Posted Apr 23, 2013)
Business owners should be advised that a license is required for any public performance of music. Some owners are unknowingly playing music in their restaurants, bars, gyms, and storefronts from CDs, iPods, or MP3 players in violation of Copyright Laws.
What is needed are public performance rights -- the right to play music that the general public will hear in one way or another. Public performance rights licenses are handled by two very large companies named ASCAP (American Society of Composers, Authors and Publishers) and BMI (Broadcast Music Incorporated). Each one handles a catalog of about 4,000,000 songs. Their fees depend upon the type of establishment, size, etc.
Further information on how to obtain a license from BMI and ASCAP can be found at:
www.bmi.com/licensing and www.ascap.com/licensing/generallicensing.aspx
The penalty for failing to obtain a license is a potential lawsuit for copyright infringement. Under the Copyright Law, the violator can be subject to sanctions, which can include an injunction and the copyright owner's actual damages, as well as the infringer's profits, or statutory damages of up to $30,000 for each copyrighted song performed without a license (up to $150,000 if the infringement is willful).
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Copyright Claim Dismissed for Lack of Specificity
(Posted Mar 18, 2013)
A recent decision from the Southern District of New York demonstrates the importance of pleading sufficient factual allegations in a copyright infringement case. In Kane LLC v. Scholastic Corp., Case No. 12-cv-3890, 2013 WL 709276 (S.D.N.Y. Feb. 27, 2013), the Court dismissed plaintiff's copyright claim because it did not specify which works were at issue, which acts constituted infringement, and the time period that the infringement occurred.
Plaintiff was a stock photograph agency that licensed certain copyrighted photographs to defendant. The parties entered into a licensing agreement which granted defendant the right to use the photographs under certain limited terms. In the complaint, plaintiff alleged that defendant used the photographs without permission or beyond the scope of the licensing agreement. Plaintiff listed the works in the complaint, but indicated that the list was not exhaustive. Defendant moved to dismiss the complaint.
The Court granted the motion to dismiss on the grounds that the complaint did not specify which works were at issue and did not allege the acts that constituted infringement. Specifically, the Court noted that it was unclear whether the copyright registration numbers contained in the complaint corresponded to the list.
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Fight Over Chocolate Kisses Trademark
(Posted Feb 18, 2013)
As demonstrated by a recent lawsuit filed by a carpet manufacturer against chocolate-giant Hershey, one has to ask how far large companies are going to go in attempt to stretch their trademark rights. What these companies want is a monopoly over their marks in every good and service.
However, trademark rights are limited in scope. The goods and services listed on a trademark registration establish the scope of the applicant's rights in the relevant mark. This, however, does not prevent large companies from testing the boundaries.
In the lawsuit, Shaw Industries Group Inc., a carpet manufacturer owned by Berkshire Hathaway Inc., is seeking declaration that a carpet color it calls "Chocolate Kiss" does not infringe Hershey's "Kisses" and "Hershey's Kisses" trademarks.
Shaw has used the name "Chocolate Kiss" for a particular carpet color for over two decades without any indication of confusion between the products or the companies until December of 2012, when Hershey sent a cease and desist letter to Shaw in demanding that it stop using the "Chocolate Kiss" name. Despite Shaw's response that it already planned to phase out the use of the "Chocolate Kiss" color name in June of 2013, Hershey demanded that it immediately stop using the term and threatened to file suit. Shaw, however, beat Hershey to the punch.
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Covenant Not to Sue Forestalls Trademark Invalidity Claim
(Posted Jan 21, 2013)
On January 9, 2013, the U.S. Supreme Court in Already, LLC v. Nike, Inc. unanimously ruled that Already could not dispute the validity of one of Nike's trademarks after Nike agreed not to sue the company for infringement.
Nike sued Already, a designer and marketer of athletic footwear, for trademark infringement and Already counterclaimed to declare the trademark invalid. Eight months after filing suit, Nike provided Already with a covenant not to sue, and subsequently moved to dismiss all claims. In the covenant not to sue, Nike agreed to "unconditionally and irrevocably" refrain from making any claims or demands against Already, as well as its employees, distributors and customers, for any possible cause of action based on trademark infringement, unfair competition or dilution relating to the Nike trademark. In its motion to dismiss, Nike asserted that the covenant not to sue terminated the case or controversy and rendered the case moot.
The district court dismissed the counterclaims as moot and the Second Circuit affirmed. The Supreme Court unanimously affirmed. It held that the broad covenant not to sue, which covered past and future shoes, met the demanding standard of mootness by voluntary cessation, particularly as Already has no plans to develop or market shoes which infringe on the trademark. Since Nike had agreed unconditionally not to sue Already, the federal courts lacked jurisdiction over Already's counterclaims that Nike's trademark is not valid.
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Standard to Obtain TROs in Trademark Infringement Claims Get Tough
(Posted Dec 17, 2012)
As everyone shops for toys this holiday season, many have encountered counterfeits that are strikingly similar at first glance, but with their low price point compared to the actual licensed product, these counterfeits have lured away or even deceived consumers.
In response, toy developers and manufacturers who obtained federal trademark and copyright registrations commenced actions for trademark and copyright infringement, trademark counterfeiting, false designation of origin, and unfair competition, and sought a temporary restraining order and preliminary injunction to immediately stop the counterfeit sales.
The standard to which a court will grant a temporary restraining order and preliminary injunction requires a showing of irreparable harm. This showing, however, may have been made stricter in trademark cases by a recent decision by a District Court in California by that precluded a presumption of irreparable even upon a plaintiff's demonstration of a likelihood of success on the merits.
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Claim for Breach of Implied Contract not Preempted by Federal Copyright Act
(Posted Nov 20, 2012)
In an important decision for the entertainment industry, the Second Circuit held that a claim under state law for breach of implied contract, including a promise to pay, is not preempted by the Federal Copyright Act.
In 2010, a suit was brought by Forest Park Pictures against Universal Television Network, Inc. (the television production arm of NBCUniversal, a subsidiary of Comcast Corp., which controls USA Network), for breach of contract over USA Network's show Royal Pains. Forest Park alleged that in 2005, it developed an idea for a show called "Housecall," in which a doctor, after being expelled from the medical community for treating patients who could not pay, moves to Malibu to attend to the rich and famous. Forest Park developed storylines and character bios, and pitched the concept to an executive at USA Network. Although nothing materialized after the meeting, in 2009, USA Network began airing Royal Pains, a show that focuses on the life of a "concierge doctor" providing medical services to the wealthy residents of the Hamptons. Forest Park brought suit against Universal for breach of contract.
The U.S. District Court for the Southern District of New York held that Forest Park's claims were preempted by the Federal Copyright Act because the allegations entailed theft of uncopyrightable idea and granted Universal's motion to dismiss.
The Second Circuit reversed by holding that a claim for breach of an implied contract, including a promise to pay, is not preempted by the Federal Copyright Act because even though uncopyrightable material may fall within the subject matter of the Copyright Act, there are qualitative differences between a contract claim and a copyright-violation claim.
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Red Soles of Designer Footwear can be Trademarked in the Fashion Industry
(Posted Oct 23, 2012)
In a decision that is captivating the fashion industry, the Second Circuit held that a single color can serve as a legally protected trademark; specifically -- the color red used on the sole of luxury shoe designer Christian Loubotin's shoes is protectable as a trademark. Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 11-3303-cv (2d Cir., Sept. 5, 2012).
Louboutin's signature line of high-fashion women's footwear utilizes a high-gloss, red-colored bottom, and costs approximately $1,000 for a pair. Louboutin explained that "[t]he shiny red color of the soles has no function other than to identify to the public that they are mine." In 2008, Louboutin registered the red sole as a trademark with the United States Patent & Trademark Office, based upon the strength of the asserted recognition of the red-soled shoes in the fashion industry.
In 2011, Yves Saint Laurent (YSL) attempted to market a line of women's shoes that utilized a red sole, which allegedly infringed the Louboutin red-sole trademark. Last year Louboutin sued YSL under the Lanham Act and sought a preliminary injunction. YSL counterclaimed to cancel Louboutin's federal trademark registration. Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445, 451 (S.D.N.Y. 2011). The district court in that case denied Louboutin's motion for a preliminary injunction and ruled that a single color can never serve as a trademark in the fashion industry, because color is an element of fashion design. The court also declared Louboutin's trademark registration to be invalid.
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Trademark Expo and Education Event Returning to the USPTO
(Posted Sept 20, 2012)
The U.S. Department of Commerce's United States Patent and Trademark Office (USPTO) will once again host its annual National Trademark Expo on Friday, October 19th, from 10:00 am to 5:00 pm and Saturday, October 20, 2012, from 10:00 am to 4:00 pm. at the USPTO's headquarters in Alexandria, VA.
This event advances the agency's mission in educating the public about trademarks and the value of intellectual property in the global marketplace. The event will highlight the importance of trademarks through educational seminars, exhibits, displays of authentic and counterfeit goods, and costumed characters featuring registered trademarks. There will also be numerous exhibitors from the U.S. government, non-profits, and corporations -- each showcasing their federally-registered trademarks and providing valuable information about trademarks. Some exhibitors include NASCAR, Mattel, GEICO and NASA. A full list of Exhibitors can be found below.
The event is free and open to the public. No registration is required. Additional information about the Trademark Expo can be found on the USPTO website at www.uspto.gov/TMexpo.
The schedule of the educational seminars is as follows:
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(Posted Aug 29, 2012)
What is a gTLD? gTLDs are generic top-level domains similar to .com, .net or .org. The current system has 24 gTLDs. Soon, we will be seeing new gTLDs, such as .ART, .NEWS, .STORE, in the largest-ever expansion of the Internet's naming system. The Internet Corporation for Assigned Names and Numbers (ICANN), the nonprofit organization that manages this piece of the Internet's infrastructure, has been preparing for this domain name expansion for nearly a decade. In June of 2011, it formally approved the expansion and started planning the application process for new gTLDs.
On June 13, 2012, ICANN held a "Reveal Day" event during which the new gTLD applications were unveiled -- all 1,930 of them. The applications greatly exceed the 500 applications originally anticipated, demonstrating the impact of the new gTLD program on the Internet space in the coming months and years. The applicant list included several automakers like Fiat, Chrysler and Volkswagen -- as well as a few banks including JPMorgan Chase and Barclays. Several tech companies, including Apple, Google, Netflix and AOL, also submitted applications to turn their brand name into a domain. Amazon submitted applications for 76 gTLDs, including .read, .store, .music, .fire, .cloud, .news and .pay. Google also played big, applying for 101 new domains.
It is important for organizations -- even those that did not apply for their own new gTLDs -- to remain aware of the program, its upcoming deadlines, and potential enforcement options. For brand owners and trademark holders, this means taking steps and developing a strategy to detect and deter possible infringement.
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(Posted July 24, 2012)
Google's AdWords is a powerful advertising platform. But what happens when a competitor bids on your trademark, or slips your mark and brand name into its website's metatags in order to lure away a potential customer searching for your business? Not surprisingly, companies who lost the placement wars weren't too happy and commenced trademark infringement lawsuits against the competitor and the search engine that sold the keyword bids and advertising placement. However, suits against Google and similar search engines died in August 2010, after a District Court's opinion in Rosetta Stone Ltd. v. Google, Inc., 2010 WL 3063152 (E.D. Va. August 3, 2010). But the flood gates may soon be opened.
The 4th Circuit in Rosetta Stone Ltd. v. Google, Inc., 2012 WL 1155143 (4th Cir. April 9, 2012) gave Rosetta Stone another chance. The bulk of the District Court's decision was reversed, allowing Rosetta Stone to proceed to trial. Although the Rosetta Stone litigation will not be resolved relatively soon, the 4th Circuit's decision is significant because (1) it clarifies that trademark infringement analysis in a keyword advertising context will follow the traditional legal standard applicable to likelihood of confusion; and (2) it establishes that a company can bring a trademark infringement action against Google, and similar search engines, on the basis that the sponsored links are confusing to the customers.
At the District Court level, Google argued that it legitimately used trademarks as keyword triggers to help make consumers make more informed choices, and its use of the trademarks are "functional" to its business, thus making it immune to trademark infringement claims. The District Court agreed and concluded that (1) there was no evidence to support a likelihood of confusion of consumers, in part because the search engine provider was not attempting to pass off its goods or services as Rosetta Stone's; and (2) that the use of marks as search engine advertising keywords was protected by a functionality defense, because the keywords served an indexing function in pulling up sponsored advertising links.
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