US Paperless Copyrights

In July 2008, the US Copyright Office has implemented the next significant phase toward reaching its goal of a paperless office, and has begun accepting online applications for copyright registrations. Inducements to use the online filing system include a lower filing fee ($35 for a basic claim, as opposed to $45 for a paper filing), an earlier effective date of registration, and the ability to upload files electronically directly into the US Copyright Office files. Initially, the types of copyright filings are limited to basic claims to copyright for literary-, visual arts-, and performing arts works, including books, motion pictures, sound recordings and single serials. Basic claims are defined as either a single work, multiple unpublished works if they are by the same author(s) and owned by the same claimant, or multiple published works if they are all first published together in the same publication on the same date and owned by the same claimant.
continue reading »

Psystar No Apple

On July 3, 2008, Apple sued Psystar, a Florida corporation, alleging copyright-, trademark- and trade dress infringement, unfair competition and breach of contract. The lawsuit comes after Psystar launched its Open Computer, a PC pre-loaded with Apple's operating system and marketed as a low-cost alternative to Apple's hardware. The complaint charges Psystar with misappropriating Apple's software and damaging Apple's reputation. Apple also claims that Psystar's OpenServ server illegally uses Apple's Mac OS X Server Edition and that it wrongfully gives the impression that Psytar is affiliated with Apple.

While the lawsuit was anticipated immediately after Psystar began selling its products in April, the recourse Apple is requesting was not—among the requests is a total recall on all Open Computer and OpenServ systems.

continue reading »

For eBay a Tale of Two Legal Systems: the Best of Times and the Worst of Times

Two recent trademark decisions regarding eBay's online initiatives to track counterfeit products stand in stark contrast to one another and highlight contradictory views about who should bear the burden of tracking online trademark infringement. A United States federal judge ruled on July 14 that eBay is not responsible for monitoring the sale of counterfeit goods, and that its current procedures for tracking infringement are reasonable. A French Court of Appeals, on the other hand, fined eBay $61 million in June for selling counterfeit Louis Vuitton and Dior products.

On June 18, 2004, Tiffany and Company ("Tiffany") sued eBay, claiming eBay was liable for trademark infringement, false advertising, unfair competition, and direct and contributory trademark dilution by allowing the sale of counterfeit jewelry on its online auction. Tiffany alleged that it, along with other large designer labels, loses $30 billion annually to online sales of knockoff products. Both Plaintiff and Defendant attempted to prove the inadequacy of other's anti-counterfeiting measures. Tiffany claimed that eBay's $20 million annual anti-counterfeiting budget is insufficient, while eBay claimed that the $14 million Tiffany spends annually to prevent trademark infringement (0.1 percent of its annual revenue) is also insufficient. EBay also pointed out that it maintains a staff of 250 full-time employees responsible solely for tracking trademark infringement, and that through its VeRO (Verified Rights Owner) Program, owners can point out listings selling counterfeit goods which eBay then removes.

A New York judge ruled in favor of eBay on every single count, asserting that trademark owners, not websites, are primarily responsible for protecting their rights. In its June decision, which Tiffany requested the New York Federal Court to recognize before issuing its decision, the French Court of Appeals ruled differently. The Tribunal de Commerce in Paris awarded Louis Vuitton and Christian Dior Couture €38.6 million in damages ($61 million), for eBay's sales of counterfeit products and urged eBay to institute a global solution to the problem of counterfeit products.

A possible explanation for the different outcomes is that the ultra fashion-conscious French culture might simply be more sympathetic to designer labels combating online trademark infringement. France and the United States are both attempting to police internet activity and protect intellectual property, but they fundamentally disagree as to what is realistic and who can effectively achieve these goals.

continue reading »

Ignorantia Excusat

In an unanticipated development for the music industry, a Texas Court recently overruled a motion for summary judgment filed by the Recording Industry Association for America ("RIAA"). Representing five well-known recording companies, including Sony BMG Music Entertainment, the RIAA filed a complaint in January, 2007 against a college-aged defendant, seeking damages for 39 claims of copyright infringement. The infringed material included files downloaded from Kazaa, a popular website used to download and share music files.

The defendant admitted to downloading copyrighted material, but claimed to be unaware that downloading the files was illegal. The Copyright Act's minimum statutory damage award per claim is $750, but if a defendant is unaware or has no reason to believe that a certain activity constitutes illegal file sharing or downloading, she may claim an ‘innocent infringement' defense under 17 USC 504(c)(2), which could reduce the statutory damages to $200 per claim. The defendant then has the burden of proving lack of knowledge at trial. While notice of copyrights on the cover of a CD bars use of the defense when the copied material is the CD itself, the question remains whether the defense applies when the material in question is only portions of the CD downloaded online.

The defendant signed an affidavit stating that she did not know file sharing on Kazaa was illegal because Kazaa did not inform her that its files were stolen copyrighted materials. She also pointed to her age at the time of the offense, sixteen, and lack of technical knowledge as proof of innocent infringement. RIAA argued that she could have easily found out the music was stolen, as the defendant admitted to owning CDs with notices of copyrights, and referenced a Seventh Circuit decision holding that the innocent infringer defense does not apply if a defendant could have easily found out the work in question was copyrighted.

Construing all evidence in a light most favorable to the non-moving party, the defendant, the Court denied RIAA's motion for summary judgment. The parties must now advise the Court whether they plan to settle or proceed to trial.

continue reading »

China To Overhaul Its Patent Laws

The Chinese Patent Office, formally known as the State Intellectual Property office (SIPO) has announced the expected implementation of its patent law amendment sometime in early 2009. The amendment was approved by the State Council and is being sent to the Standing Committee of the National People's Congress for final approval.

The Amendment to Patent Law (in its present draft) is intended to increase the threshold of patent grant, thereby raising the bar as to what is considered patentable, to add new provisions encouraging the promotion and utilization of patented technologies, to strengthen the protection of patent rights, and to prevent rights abuse by patent owners by balancing the patent owner's and public interests.

Some proposed changes have been fought by foreign companies doing business in China. For example, the amended law will treat inventions made in China by foreign companies conducting research in China as having been locally invented, thereby requiring a first filing in China for all such inventions, irrespective of the ownership or foreign citizenship of the company or its parent. The United States has similar provisions for US inventions, which require a license before any foreign or PCT counterpart applications can be filed.

continue reading »

Apple Stew

Apple Inc.'s January 16th Notice of Opposition to New York City's trademark application for the GreeNYC apple-shaped logo is currently attracting harsh criticism and stirring much debate.

The opposed trademark is intended for New York City's new campaign to raise environmental awareness, and it is starting to appear on everything from hybrid gasoline-electric taxicabs to recyclable grocery bags.

Apple points out in its opposition that it has extensively used and advertised the Apple logo since at least 1977, and that today Apple is one of the best-known and most valuable brands in the world. On a local level, since 2002 Apple has opened three retail stores in Manhattan which are quickly becoming popular tourist attractions. Due to the allegedly similar appearance and commercial impressions of the two marks, the similarity of goods and services, the likelihood of confusion and risk of dilution of the Apple logo's distinctiveness, Apple believes it will be damaged by the issuance of the applicant's trademark.

No doubt this is not the last dispute that will arise in the Go-Green craze. The word "green" appeared in 2400 trademark applications in 2007, doubling the number of its appearances in 2006 and becoming the most popular word in all 2007 applications.

continue reading »

Catalogs as Specimens of Use

In a recent non-precedential decision the TTAB once again ruled against the use of catalogs as an acceptable specimen of use in connection with goods. The ruling of In re U.S. Tsubaki, Inc. distinguished prior decisions in which use of catalogs as specimens of use had been allowed, stating that, since the specimen included "no sales form, no pricing information, no offers to accept orders, and no special instructions for placing orders anywhere on the specimen", it did not qualify as a point of sale display.

The specimen submitted by the applicant, Tsubaki, was a page from a catalog, containing a photograph of the goods (roller chains and power transmission components), the trademark, and the applicant's phone number and domain name. The sticking point was whether or not the specimen included the information a consumer would need to order the goods, thereby removing it from the realm of mere advertisement, into the acceptable format of "point of sale displays." In addition to the requirement that a catalog contain a photograph of the goods and display the mark near the goods, it must also include "an offer to accept orders or instructions on how to place an order." TMEP§904.03(h) (5th ed. 2007).

The applicant argued that the specimen did include a contact number that was used by customers to place orders. Furthermore, in quoting a 2007 TTAB decision the applicant argued that its goods are not the type that would make an order form suitable. In re Valenite Inc., 83 USPQ2d 1345 (TTAB 2007). Rather, consumers knew it was necessary to place orders over the phone where technical assistance can be provided to ensure the correct selection, so detailed ordering instructions were unnecessary. The board rejected this argument.

In support of its ruling, the board distinguished the Valenite ruling. In Valenite, the applicant also sought registration for a mark in connection with highly technical goods, "tools for power operated metal cutting machines." In that case, the board accepted a catalog page when the applicant was able to successfully show that its business was not one in which order forms were suitable by submitting a declaration attesting that the selection of the appropriate product would require significant technical assistance and consultation. Consequently, the combination of the technical information on the website and the customer service number were found to be a suitable invitation and to contain sufficient information to allow consumers to purchase the goods. In the present case, however, the Board found that there was no evidence that order forms were not appropriate or that customers "know that orders are placed over the phone." First, unlike in Valenite, there was no evidence about the manner in which relevant customers typically purchase chains to support conclusory statements in the applicant's brief. Secondly, the specimen did not contain technical information or specification sheets, while the specimen in Valenite did contain such information. Third, the board found that the catalog page was more akin to a "fact sheet, catalog page, or brochure" rather than a point of sale display. This particular catalog page did not contain any pricing information and, in line with a prior decision In re MediaShare Corp, the board found that the specimen did not constitute a point of sale display. 43 USPQ2d at 1306.

While not citable as precedent, this recent decision does explain USPTO examination standards for acceptable specimens and clarifies circumstances in which a catalog is considered acceptable proof of use.

continue reading »

After the Land Rushes, a Deluge

At its recent Board meeting, the Internet Corporation for Assigned Names and Numbers (ICANN) approved the creation of additional gTLDs (generic top-level domains), potentially allowing anyone who meets the requirements to operate a gTLD.

The number of TLDs has previously been limited to 21 gTLDs, such as .com, .org, .net, .gov, .asia, along with approximately 250 different ccTLDs (country-code top-level domains). The new proposal will allow any public or private organization to register any string of letters as a gTLD.

This expansion has the potential for allowing companies to register their brands as gTLDs, such as .msn for Microsoft, or .mac for Apple. It is also likely that a number of cities will operate gTLDs, such as .berlin, .paris, or .nyc. Although trademarks will not be automatically reserved, an objection-based mechanism for trademark owners to argue for protection will be considered. In addition to objections based on rights infringement or confusing similarity of the gTLD name, objections will likely also be available against a gTLD name based on moral judgments. Disputes will be resolved through a yet to be determined independent dispute resolution provider, or an auction for competing applications. Even non-contentious gTLD applications will have to pass through application, evaluation, delegation and approval phases.

It is anticipated that the final version of the implementation plan will be published in early 2009, with applications for new names being available in mid-2009. The cost for applying for a new gTLD has not been set, but is expected to range from $100,000 to $500,000. Any business or organization applying must also prove that it is capable of managing a gTLD or can reach an agreement with a company that will.

Whether the expansion of gTLDs will have a positive or negative effect on the use of the internet is open to great debate. Previous expansion of the gTLD space to include such suffixes as .biz and .travel, has had limited success in drawing internet users away from the .com space. It remains to be seen if these new niche gTLDs will succeed in attracting direct internet traffic, or whether they will be primarily reachable through search engine listings. Corporations will need to strategically plan the extent of their offensive and defensive domain name acquisitions, and to continue policing their rights against infringing and cyber-squatting activity on the internet.

continue reading »

J&J Cross with Red Cross

A New York federal judge recently ruled in Johnson & Johnson v. The American National Red Cross, 07 Civ. 7061 that the American Red Cross did not violate federal law or international treaties when it licensed four companies in 2005 to manufacture and sell products bearing its Red Cross logo.

In 2007, Johnson and Johnson ("J&J") sued the American Red Cross ("ARC"), claiming that its licensing agreements with Target, Wal-Mart, Walgreens, and CVS all of whom also sell Johnson & Johnson products constituted both a criminal offense and a violation of the Geneva Conventions. J&J also claimed that licensing the Red Cross trademark to retailers with whom it already conducts business constituted tortious interference with its contractual relations. Defendants then filed a counterclaim, alleging that J&J's use of the mark is a criminal violation of the same statute that J&J accused ARC of violating.

In a May 15th decision, Judge Rakoff ruled on summary judgment motions filed by J&J, ARC and its licensees as codefendants. The decision held that use of the Red Cross logo neither violated federal statute criminalizing fraudulent use of the mark nor ARC's 1910 amended congressional charter. Judge Rakoff also ruled that while the Geneva Conventions discourage commercial use of the mark, claiming that it lessens the spiritual significance of the emblem and its connotation with relief aid, such use is not banned in the treaties. Judge Rakoff also dismissed defendants' counterclaim, as J&J is one of several corporations whose use of the Red Cross logo predates ARC's federal charter, and J&J's use of the Red Cross logo is not substantially different today. The one issue remaining for trial is whether ARC's contracts with the four retailers constituted tortious interference.

continue reading »

"Two Stripes and You're Out!" Says Adidas

Two recent trademark infringement cases have attacked the legality of products sold at Payless ShoeSource ("Payless"), a shoe store known for selling name brand look-alikes at discount prices.

Adidas AG alleged in 2001 that Collective Brands, the owner of Payless, sold 272 different models of shoes that infringed Adidas's three-stripe logo. Adidas declared that the three-stripe logo was equivalent to the Adidas brand itself, and pointed out the popularity of the mark worldwide. While Payless never sold shoes bearing an exact replica of the three-stripe design, a jury found on May 5, 2008, that shoes with both two and four stripes infringed the Adidas mark, and that all but one of the 272 models to which Adidas objected infringed the company's trademark. The jury awarded Adidas $305 million in actual and punitive damages and ordered Payless to disgorge profits of $137 million. The jury awarded punitive damages upon finding that Collective Brands willfully infringed Adidas's trademark and recklessly disregarded its intellectual property rights. Collective Brands, claiming the award is excessive and unreasonable, has asked the judge to overrule or reduce the amount awarded.

K-Swiss, a California-based company that makes tennis shoes bearing a five-stripe design, announced on June 27, 2008, that it reached a $30 million settlement agreement with Collective Brands following claims that Collective Brands is also selling shoes that infringe the K-Swiss trademark. Collective Brands agreed not to sell or advertise confusingly-similar products, and it has until the end of the year to sell existing inventory.

Collective Brands is not the first company to mimic the three-stripe logo, although the sheer quantity of its similar models and its large profits from look-alike shoes make it an attractive target for Adidas.

In hopes that it will receive additional favorable rulings with respect to look-alike products, Adidas has recently sued Walmart. It claims that Walmart's tennis shoes bearing two- and four-stripe designs amount to infringement of Adidas's trademark. Walmart is one of three dozen retailers Adidas has sued in infringement claims in the United States and Europe since 1999.

As the world's second largest sporting-goods maker, second only to Nike, Adidas is trying to protect what has become one of the most valuable and well-known trademarks worldwide.

continue reading »

Montenegro Update

All national trademark registrations valid in Serbia as of May 28, 2008 (cut-off date) will be automatically valid in Montenegro. No revalidation of these rights is required and trademark owners are under no obligation to establish the validity of their rights in Serbia, because all existing rights as of the cut-off date have been copied from the database of Serbian IP Office to the database of Montenegro IP Office.

Serbian applications pending as of the cut-off date may be re-filed in Montenegro with original Serbian filing date preserved if re-filed by November 28, 2008.

continue reading »

No Fraud Pre-Publication

On May 2, 2008, the TTAB laid new precedent for the increasingly-notorious fraud cause of action. The Panel Majority in University Games Corp. v. 20Q.net Inc., Oppositions Nos. 91168142 and 91170668 (May 2, 2008), ruled that a correction of error in the goods specification of a use-based application prior to publication creates a rebuttable presumption of no fraud.

Opposer University Games Corp. filed oppositions against each of Applicant 20Q.net's applications for the mark 20Q, related to a question and answer computer game, arguing that the applications are confusingly similar to its TWENTY QUESTIONS trademark registration for a board game.

Both proceedings were ultimately consolidated, and Applicant filed for a motion for summary judgment and a counter claim of fraud, alleging that Opposer had committed fraud on the PTO when it filed its original use-based application. Opposer's original application for the mark TWENTY QUESTIONS alleged use with "Board games, t-shirts and supporting promotional materials including videos and paper products" in International Class 28. The goods "t-shirts and supporting promotional materials including videos and paper products" were ultimately deleted following an office action requiring that they either be placed in the appropriate class or deleted altogether. During the discovery period, however, when asked to identify all products the TWENTY QUESTIONS had ever been used with, Opposer listed only those goods which appeared on the application at the time it matured to registered, namely, "a board game for correctly identifying well-known persons, places, things and years using game cards and board pieces" in International Class 28. Noting the discrepancy, Applicant filed a counter-claim for fraud alleging that Opposer fraudulently misrepresented at the time it filed its application that its mark was in use on "t-shirts and supporting promotional materials including videos and paper products."

Opposer argued that deletion of the goods prior to publication of the application negated the materiality element necessary to prove fraud, as such goods were not a part of the application as considered for approval. Opposer further clarified that at the time of its application, t-shirts and promotional products bearing the TWENTY QUESTIONS mark were in fact being distributed at trade fairs, but stated further than even if this were not the case, the deletion of the goods prior to publication requires dismissal of the fraud claim.

The Board held that the fact that Opposer amended the listing of goods prior to publication of the application constitutes a rebuttable presumption that opposer lacked the willful intent to deceive the Patent & Trademark Office. Judge Walsh dissented, not disagreeing with the dismissal of the fraud claim, but stating his opinion that summary judgment should have been granted sua sponte to Opposer because timely correction of an error prior to registration and prior to any challenge to the application should completely defeat any fraud claim.

continue reading »

.CA Domain Names Becoming More Restrictive

The Canadian Internet Registration Authority (CIRA) recently passed quarterly revisions to its policies, rules, and procedures, in relation to .CA Canadian country code top-level domain names. The most noteworthy revision, with an effective date of June 10, 2008, is the elimination of immediate availability of WHOIS information for individual Registrants. Access to WHOIS information for corporate Registrants will remain available, but may be protected in special circumstances. In the event of a trademark or other intellectual property dispute, CIRA has provided detailed Rules and Procedures for obtaining individual contact information. In addition to the WHOIS information restrictions, CIRA's own Domain Name Dispute Resolution Policy and dispute rules may present another obstacle to obtaining a registered .CA domain name that infringes upon one's intellectual property rights. This is due to the policy and rules requiring greater proof of Registrant's "bad faith" and "no legitimate interest" than typically required for a successful UDRP proceeding. The burden of the higher standard of proof is further evidenced by the fact that only approximately 100 Dispute Resolution Decisions have been issued since 2002 through CIRA's Dispute Resolution Policy.
continue reading »

USPTO Pique

As has been widely discussed in the patent community, the US Patent and Trademark Office (USPTO) has been enjoined by a US District Court in Virginia form implementing new, and to most minds onerous, rule provisions restricting the number of claims, continuations and requests for continued prosecutions, and mandating submission of examination support documents that effectively requires the applicant and his attorney to perform the functions of a patent examiner. The decision has been viewed by many as just, since the attempted solution by the USPTO of its ever increasing backlog of unexamined patent applications was addressed by a sledge-hammer solution that would only open the floodgates of increasingly-complex patent litigation. The breath of fresh air expected from a new, and hopefully more patent-savvy administration, no matter its political inclinations, could break open the administrative and legislative logjam created to date.

The USPTO, however, in an apparent fit of pique, has filed a notice of appeal, and must follow up with an Appeal Brief within 60 days. The consensus is that no Appeal Brief will be filed by the USPTO. Even if one is, the case will only be remanded to the U.S. District Court in Northern Virginia for determination of other issues that were not reached because of the dispository issue that provided the grounds of the rejection, that is, that the USPTO overstepped its authority to promulgate substantive revisions that affected the rights of patent applicants.

continue reading »

Adidas Earns its Stripes

On April 10, 2008, in a case between Adidas AG and Adidas Benelux B.V. on the one hand, and Marca Mode CV, C&A Nederland CV, H&M Hennes & Mauritz Netherlands BV and Vendex KBB Nederland BV on the other hand, the European Court of Justice ruled that the general interest in leaving certain signs available to all (also known as Freihaltebedurfnis) is not a proper consideration in determining infringement.

The case dates back to 1997, when Adidas sued H&M in Dutch court, alleging that retailer's two-stripe designs infringed Adidas's famous three-stripe trademark. The District Court in Breda ruled in Adidas's favor and issued an injunction. H&M appealed, requesting a declaration of non-infringement, and arguing that because the public views such stripes appearing on garments as purely decorative, they do not establish any link between the various manufacturers who place stripes on their apparel. The Dutch Court of Appeals decided in 2005 that although Adidas's trademark had acquired a high degree of distinctiveness, the difference between the designs, three stripes versus two, eliminated any possibility of consumer confusion. The Court based its decision in part on the concept of Freihaltebedurfnis, ruling that stripes and simple stripe designs are decorative and generally-accepted, and therefore should be available to all.

Adidas appealed the decision to the Dutch Supreme Court, which asked the European Court of Justice (ECJ) whether it is proper to take designers' general need for access to a basic design element, such as stripes, into account when assessing the rights of a trademark owner. The ECJ dismissed the defendants' critical Freihaltebedurfnis argument as irrelevant, and confirmed that the scope of exclusive rights provided a trademark owner is to be based on the public's perception only—whether the average consumer might be mistaken as to the origin of athletic garments bearing stripe designs that are similar to Adidas's famous trademark. For marks with a reputation, Article 5(2) of the Trademarks Directive does not require a likelihood of confusion but merely a link in the minds of the public. The ECJ clarified that whether it is this link or a likelihood of confusion that must be proven, the concept of Freihaltebedurfnis is extraneous to the assessment; whether or not the public perceives the sign as decoration cannot affect the protection conferred to a trademark when the sign is so similar to the trademark that the relevant public is likely to perceive that the goods come from the same source.

The decision does not mean that designers must avoid all stripe motifs, but Adidas's trademark registration does limit its competitors' ability to use stripes in a way that consumers are likely to associate with Adidas. The case will now go back to the Netherlands to allow the court to conduct a standard consumer-confusion analysis.

continue reading »

Service Marks Come to Bangladesh

Bangladesh's Trademarks Ordinance of 2008 introduces, for the first time, a system for registering service marks. The Trademark Office began accepting applications seeking protection under service classes 35 to 45 on February 15, 2008. The new Ordinance is set to be enacted in its entirety in the near future.
continue reading »

Israel's New Copyright Law

A new Copyright Law will take effect beginning May 2008 in Israel. The new legislation alters the duration of copyright protection for certain types of works. Photographs, for example, will be protected for 70 years following the death of the author; up from 50 years following the creation of the negative. Sound recordings will become a separate category, apart from musical works, and the term of protection will be reduced to 50 years from the creation date. The new terms will not be retroactively applied to works created before the Law takes effect. Other notable changes include broader interpretation of Fair Use exemptions, as Courts will now have discretion to determine whether a particular use is permitted on a case-by-case basis; presumption of ownership for commissioned works based on implied contracts; abrogation of minimum statutory damages; and a five-fold increase in the maximum statutory damages available in infringement cases.
continue reading »

Patent Marking on Products a Prerequisite to Damages

Patent infringement litigation is a minefield for the unwary. In addition to standard defenses, such as non-infringement of the patent claims by the accused product or invalidity of the asserted patent, some esoteric defenses are sometimes raised to defeat otherwise valid infringement claims.

Notice of the existence of a patent is a requirement under the US patent laws, and failure to provide appropriate notice results in severe limitations on recovery of damages. Under 35 U.S.C. §287(a), patent marking on the patented goods (or if not possible, then on the packaging associated with the patented goods) is required. If the goods are not marked with an appropriate notice, then damages incurred before actual notice of the patent cannot be awarded, and an infringer may only be enjoined from further infringement. Appropriate marking of patented products normally takes the form of "U.S. Patent No. 1,234,567" or "Pat. No. 1,234,567." If a patent application has been filed and has not been finally adjudicated to grant, appropriate marking of "Patent Pending" or "Pat. Pend" is permitted as prospective notice that a product may be later covered by a patent, when granted.

Goods that are properly marked provide constructive notice that the goods are patented. If patented goods are not properly marked, but the patent owner provides actual notice of the existence of a patent, for example, by sending a letter to a manufacturer of the accused goods drawing attention to the patent, then the measure of possible damages begins from the date the notice is received.

Care must be taken to only properly mark patented products since improper patent marking can also raise issues of unfair completion. Another patent statute, 35 U.S.C. §292, criminally penalizes a person who is found to engage in false marking of a product when no patent or application exists, and the statute permits any person to assert the statute against a person who is engaging in such conduct. Any damages recovered in such an assertion of the statute by a plaintiff are equally divided by the plaintiff and the U.S. Government. By statute, damages are limited to "not more than $500 for every such offense" and case law has deemed each instance of a false marking to be an offense. Thus if 2000 products are marked falsely, then each instance is an offense and subject to the penalty, with potential damages being $1,000,000.

The statute was included in a revision of the patent laws enacted in 1870. Similar laws, so called qui tam actions were passed during the Civil War to inhibit war profiteering. Private persons could bring such actions and a monetary incentive was provided, usually in the amount of one half of the recovery. Similar policing of the marking statute was intended as incentive to cause potential abusers of patent marking to abide by the patent laws. Two such actions have been filed in the Eastern District of Virginia, against Solo Cup and against Gillette, claiming that marking on products of expired patents constitutes false marking. This issue has survived a motion to dismiss, and will most probably create new precedent in the field of patent marking.

continue reading »

New Patent Rules Voided by US District Court

The District Court has voided the Final Rules that the USPTO had attempted to put into force on November 1, 2007, and that had been subject to a temporary restraining order entered on October 31, 2007, by making the injunction permanent. The Court's reasoning followed the most cogent point made by the Plaintiffs Tafas and GlaxoSmithKline plc.—the USPTO has overstepped its rule-making authority and the Final Rules cannot be implemented without a change in the US patent law by the US Congress. The district court defined a "substantive rule" as any rule that "affect[s] individual rights and obligations;" and at least the prohibition in the now-void rules of more than two continuations and one Request for Continued Examination as well as the limitation placed on the number of claims were found to be substantive changes. The court did not address any other grounds or issues raised in the litigation, relying on the substantive point only for its decision.

The Injunction Order is broad in its reach: "Defendants Jon W. Dudas and the United States Patent and Trademark Office and their agents, servants, and employees are permanently enjoined from implementing the Final Rules." In the opinion explaining the Order rendered on April 1, 2008, formally a ruling on the Plaintiffs' Motion for Summary Judgment, U.S. District Court Judge Plato Cacheris stated: "Because the USPTO's rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as ‘otherwise not in accordance with law' and ‘in excess of statutory jurisdiction [and] authority.' 5 U.S.C. § 706(2)."

The Patent Office has two ways to overcome the Injunction Order, and it is considering each of them. The first is the judicial route, and General Counsel for the USPTO James Toupin announced that the USPTO is considering an appeal to the Court of Appeals for the Federal Circuit (CAFC), hoping to at least partially overturn the broad injunction. Such an appeal, even if treated as an expedited matter, cannot be heard by the CAFC before the November election and more than likely the CAFC cannot decide the appeal sooner than a year from now, when a new administration will have taken over the reins of the USPTO. A second, legislative, avenue is the patent reform bill now pending in the US Congress, in which the USPTO may seek inclusion of a provision granting the substantive rulemaking authority denied it by the district court. That bill is considered by some Washington insiders as not likely to be put to a vote before the full Congress in this session, and substantive patent reform will most likely have to wait for a new administration that will want to influence the USPTO position in a new direction.

continue reading »

Intersport Wins Right to Use MARCH MADNESS on Mobile Programming

The NCAA has had great success in enforcing its trademark rights in MARCH MADNESS, a mark that has a contentious history of ownership. In 2003, the NCAA successfully stopped a sports marketing group from using the mark, and fended off allegations that the mark is generic. The present case involves Intersport, a Chicago-based company that, at one time, co-owned the mark with the Illinois High School Association (IHSA). In 1995, however, the IHSA was involved in a dispute with the NCAA over use of the term, at which time Intersport assigned its share of the rights in MARCH MADNESS to IHSA, in return for royalties. In that same arrangement, Intersport was licensed to use the mark in connection with the broadcast of its coaches' shows. Specifically, the license was granted for use (1) "in connection with entertainment services, namely the presentation of athletic and entertainment personalities in a panel forum; and" (2) "to advertise, promote, and sell publications, videos and media broadcasts in connection with" item (1). Eventually, MARCH MADNESS became co-owned by the IHSA and NCAA, through the entity March Madness Athletic Association (MMAA). The license agreement with Intersport was also assigned to the MMAA.

In recent years, Intersport sought to use the mark on mobile phone programming, which would include analysis, scores and highlights related to the NCAA tournament, as well as coaches' shows. The NCAA objected to Intersport's intended use of the mark on mobile programming and asked Intersport to limit its use to television shows, stating that NCAA would consider airing shows on wireless devices to be outside the scope of the licensing agreement. Intersport responded by filing suit and requesting judgment on its right to use the mark on mobile programming, pursuant to the terms of its licensing agreement. (Intersport, Inc. vs. National Collegiate Athletic Association and March Madness Athletic Association, L.L.C.) Intersport's CEO, Charles Besser, has expressed that the intent was to confirm that the license included the right to distribute content using the mark MARCH MADNESS on any platform, not just on shows produced on television networks. The NCAA, in turn, claimed that Intersport actually had a very narrow license extending only to a specific range of broadcast distribution as it would have been defined at the time the agreement was executed in 1995, and not extending to distribution on mobile devices. The Circuit Court ruled for Intersport, finding that the license agreement was unambiguous. Although federal law clearly defines "media broadcasts" as those requiring distribution by television or radio, the wording "video" includes any type of visual production and is not limited to specific platforms of distribution.

On appeal the NCAA argued that Intersport's shows still do not qualify as "selling videos" as defined in the licensing agreement, and that videos should be construed as defined in 1995, which requires "a physical object in the hand of the end user." These arguments were unsuccessful, and the Appellate Court affirmed the Circuit Court's ruling. The test is whether or not the use could "reasonably be said to fall within the medium as described in the license." This test dictates that if the new use is not "completely unknown" at the time the license was executed, the burden is on the licensor to ensure the exclusion. Following this test, the appeals court found that the definition of "video" has evolved since inception and does not mandate storage in a physical device. Furthermore, it was foreseeable in 1995 that video could be distributed on mobile wireless devices and it was incumbent on the licensor to explicitly limit "video" if intended. Furthermore, as the license is "perpetual" but has no clause on future technology, the terms should be interpreted broadly. The decision certainly raises questions on extent of the overlap between video and broadcast programming and mobile phone technology, and whether they are moving toward melding into one and the same.

continue reading »