It's 2014 - Happy New Year!

Thanks for reading my blog and/or following me!  I appreciate it.

Let's get right to it....

Hot off the press from the United States Patent and Trademark Office:
 

On January 1, 2014, the Nice Classification, Tenth Edition, version 2014 (NCL 10-2014), became effective. Changes to the class headings are available at www.uspto.gov/trademarks/notices/NiceClassSchedule2014.jsp.  To see a comprehensive list of all the new or changed entries, on or after January 1, 2014 please use the following search strategy in the USPTO ID Manual: “20140101”. See also the Noteworthy Changes to the Nice Classification System under the Nice Agreement, Tenth Edition, version 2014 at Noteworthy Changes to the Nice Classification System under the Nice Agreement, Tenth Edition, version 2014.

This is important information for trademark practicioners, so check it out at your earliest convenience.

Have a great 2014!  As always, comments welcome.

New Ninth Circuit Law re Irreparable Harm in Trademark & Copyright Cases

Quick update for all my IPeeps! (new term I coined to refer to my IP colleagues... don't steal it).

Ninth Circuit rejects presumption of irreparable harm for trademark owners.  Herb Reed Enterprises, LLC v. Florida Entertainment Management, No. 12-16868 (9^th Cir. Dec. 2, 2013).  See eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) in which the Supreme Court rejected a similar presumption of irreparable harm in patent cases, which “effectively overruled” the Ninth Circuit’s prior decisions re trademark and copyright irreparable harm.

Ninth Circuit rejects presumption of irreparable harm for copyright owners.  Perfect 10, Inc. v. Google, Inc., No. 10-56316 (9th Cir. Aug. 3, 2011).

Links to cases:

Herb Reed case

http://cdn.ca9.uscourts.gov/datastore/opinions/2013/12/02/12-16868.pdf 

Perfect 10 case

http://cdn.ca9.uscourts.gov/datastore/opinions/2011/08/03/10-56316.pdf 

eBay case

http://www.supremecourt.gov/opinions/05pdf/05-130.pdf

See also, Winter case
http://www.c-span.org/pdf/USSC_NavySonar.pdf  

In Winter, the Court held that a party seeking an injunction in a non-patent case must show that irreparable harm is “likely,” not merely “possible.”

Get over it….. ;-)

Happy Holidays!

Trademark Oppositions in the United States - Is The Cost Worth The Benefit?

I found this interesting article about the costs and benefits of US trademark oppositions.  I think you will find it informative.

http://bit.ly/1bsb5Qs

Comments welcome!

Have a great week.

IN RE CITY OF HOUSTON - Local Government Entity Cannot Register a Trademark for its Official Insignia

Another interesting case, more so because it is a case of first impression!  I would have thought this had come up at some point or another before now....  Anyway, the court upheld the decision of the TTAB that Section 2(b) of the Lanham Act prohibits the registration of these insignia.

Houston and Washington, D.C. both were attempting to register their city seals.  Both received final rejections from the TTAB and appealed to the Federal Circuit.

The court stated: "Section 2(b) prohibits registration of an "insignia of the United States, or of any State or municipality." We see nothing in this plain language that suggests a government entity such as Houston should be exempted from the reach of the prohibition."

The case is an interesting read:  http://1.usa.gov/1hi5s7e

Comments welcomed.

Viacom CEO Philippe Dauman Loses UDRP Over Registration of His Name

I thought this was interesting because a famous person's name is often also a source indicator of goods and/or services.  In this case, the WIPO arbitrators acknowledged that is often true while explaining that in Mr. Dauman's case, his name does not serve as a source indicatory.  His name is well known, perhaps famous, but not a source indicator.  That is a requirement under the UDRP and therefore the UDRP complaint was denied.

You can read the decision here:  http://bit.ly/15QKw5D

As always, comments welcome.

Sculptor's Copyright Claims Improperly Dismissed

An author's claims were dismissed by a federal magistrate judge becuase he ruled her copyright submission was not in an orderly form -  as required for copyrighting a collection of unpublished works -  and therefore the copyright was invalid.

The author submitted her application with some photos bound in a booklet and some loose photos.  The scupture at issue was depicted in one of the loose photos.

On appeal, Judge Easterbrook logically pointed out that the Copyright Office found the deposit sufficient to issue a registration.  Judge Easterbrook noted that "The Register found the submission adequate; a district court should not set aside an agency's application of its own regulations without strong reason."

Judge Easterbrook wondered how the magistrate could have determined that the copyright submission was not orderly when it was not in the record.  Oops......

Here's a link to an article from Bloomberg and the case:

http://bit.ly/1d9dnV3

Have a great day!

Groklaw Tech Blog Shuts Down Citing US Government Monitoring

Check out this article from the ABA Journal about the Groklaw shutdown.  It's an interesting article, although I think the shutdown is a kneejerk/emotional reaction rather than a well-reasoned response to this issue.  What is your take?

http://bit.ly/1figW9Q

Comments welcome and have a great day!

Green Day Wins "close and difficult" Copyright Infringement Case in 9th Circuit

Calling the case "close and difficult," the 9th circuit affirmed a district court ruling that Green Day's use of a graphic image in a video was a fair use.  The district court's award of attorney's fees to Green Day was reversed.

Story from the World Intellectual Property Review here: http://bit.ly/152ZI1k

The "fair use" defense is typically problematic, and here it is interesting that the lower court believed that the Plaintiff's case was unreasonable and awarded attorney's fees to Green Day, but the 9th Circuit said not so fast - this was a close and difficult case - and reversed the award of attorney's fees.

Enjoy and have a great day!

HP Fights Lawsuit Over Penis Size App Known as 'Chubby Checker'

I couldn't resist reposting this from the Hollywood Reporter!  I guess Chubby Checker (the singer) has a problem with an phone app that measures penis size....   He claims his name has been tarnished.

http://www.hollywoodreporter.com/thr-esq/hp-fights-lawsuit-penis-size-607372

Have a great weekend!  You, too Chubby!

Obama's IP Czar Steps Down

Victoria Espinel was appointed by President Obama in 2009.  She was responsible for  working with various government agencies and helping develop IP strategies.  Earlier this year she introduced President Obama's IP plan with goals of improving transparency in IP policymaking and international negotiations, improving law enforcement communication with IP stakeholders and educating authors on "fair use."

See story from the Hollywood Reporter here:

http://bit.ly/14HXtQV

And from Corporate Counsel Magazine here:

http://bit.ly/125ATxA

President Obama's IP Plan (light reading, 91 pages):

http://1.usa.gov/11OIqwc

Copyright Green Paper Issued by the Department of Commerce

What? Two blogs in one week?  That's *^&% crazy...

Here's a link to the copyright green paper issued by the Department of Commerce last week.  Evidently this paper is the most thorough and comprehensive analysis of digital copyright policy issued by any administration since 1995.  You might want to read it and see what our government is thinking about digital copyright.  I'm sure there will be a public comment period, so heads up!  I will be back next Wednesday, August 14 (as promised) with more.  In the meantime, dig in to some light weekend reading and let me know what you think.  Have a great weekend!

http://www.uspto.gov/news/publications/copyrightgreenpaper.pdf

I'm back in saddle again!

First blog post in over a year, and my goal is to post once a week - every Wednesday!  Please stay tuned.

Interesting case in Georgia where the state is claiming copyright in annotated state statues and trying to prevent a commercial service from copying and distributing the annotated statutes.  Check out the Techdirt story here:  http://bit.ly/14z4LPI

Beware of solicitations related to your trademark that appear to be from an official government agency

There are a lot of unscrupulous companies trying to get money from trademark owners.  Please take a minute to read this message from the United States Patent and Trademark Office.

Be aware that private companies not associated with the United States Patent and Trademark Office (USPTO) often use trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations. Trademark applicants and registrants continue to submit a significant number of inquiries and complaints to the USPTO about such solicitations, which may include offers: (1) for legal services; (2) for trademark monitoring services; (3) to record trademarks with U.S. Customs and Border Protection; and (4) to “register” trademarks in the company’s own private registry.


These companies may use names that resemble the USPTO name, including, for example, the terms "United States" or “U.S.” Increasingly, some of the more unscrupulous companies attempt to make their solicitations mimic the look of official government documents rather than the look of a typical commercial or legal solicitation by emphasizing official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records. Many refer to other government agencies and sections of the U.S. Code. Most require “fees” to be paid.

Here's a link to the USPTO page:  http://www.uspto.gov/trademarks/solicitation_warnings.jsp

We have had instances where these bogus fees were paid by clients before they checked in with us, so this is a real problem.

Use of Interns In The Workplace

This story from the Hollywood Reporter is very interesting...and scary.  We all know how students and recent college graduates come looking for any chance to get in the door, often willing to intern for no pay. I certainly did, and I did a lot of work and put in a lot of time I didn't get paid for (and it was more like 60 hours a week).  I was happy to do it - it paid off.   Here's the way some interns feel about it.

The entertainment industry has been hit with another challenge on the low-level labor front as a former intern at the Charlie Rose show has filed a class action over alleged violations of New York's wage laws.



Lucy Bickerton lodged the lawsuit in New York Supreme Court, alleging that she wasn't paid despite working 25 hours a week for three months in the summer of 2007. The complaint was filed on behalf of all other unpaid interns who have worked on the show in the past five years. Bickerton says there were 10 other interns working for Rose during the time she spent on the show.


The plaintiff, a 2008 graduate of Wesleyan University, says her duties included assembling background research and press packets, escorting guests, digesting Rose's interviews and cleaning.


She joins others who have brought similar suits in recent months, including a intern suing fashion magazine Harper's Bazaar and former interns suing Fox Searchlight after working on Black Swan.


The Fair Labor Standards Act has typically been interpreted to allow companies to have unpaid interns if there's educational benefit involved, but the Labor Department has also made it clear that interns can't replace regular employees. In the Bickerton lawsuit, it's alleged that "“unpaid interns are becoming the modern-day equivalent of entry-level employees, except that employers are not paying them for the many hours they work.”

Here is a link to the story:  http://tiny.cc/y157aw

Comments welcomed.

Big Trouble in Shanghai China

Interesting story in the LA Times about a trademark dispute in China involoving In-N-Out Burger - who doesn't even have any stores in China - or outside the US at all for that matter.  But when a new restaurant called CaliBurger opened in Shanghai - admittedly modeling itself on In-N-Out, the people at In-N-Out saw red and yellow.  They tracked down the owners of the copycat business in California and brought suit to prevent use of their intellectual property.  The matter settled quickly.  Moral:  policing valuable trademarks around the world is important, and there are always creative solutions.

Here's a link to the full story:  http://articles.latimes.com/2012/feb/10/business/la-fi-china-double-double-20120211

Preclusive Effect of Federal Court Trademark Infringement Action in TTAB Opposition Proceeding

Interesting case, Mayer/Berkshire Corp. v. Berkshire Fashions, 424 F.3d 1229 (C.A.F.C. 2005); 76 USPQ2d 1310, which illustrates that a trademark infringement action in federal district court is not automatically of preclusive effect in an opposition proceeding in the U.S. Patent and Trademark Office. Judge Newman points out that an infringement plaintiff sues for injury caused by the sale or advertising of goods or services bearing the allegedly infringing mark, whereas an opposition is based on the content of the application.  Therefore the actions may involve different transactional facts, different burdens, proofs and public policies.

Important to know.

Buzz Aldrin Tops Trading Card Litigation

What? You didn't know there is a Buzz Aldrin Tops trading card? Trade you 2 Buzz Aldrin's for a Jeff Beck....(There must be a Beck card, or one on the way....)


Topps trading card company released a set called the "Topps American Heritage: American Heroes Edition." This set included images of more than a hundred well-known American politicians, actors, athletes, scientists, organizations, artifacts, and events. The back of each card also contained historical information about the image displayed on the front. Buzz Aldrin is on one of the cards.

Mr. Aldrin sued for use of his name, image and likeness without his permission, and sought a preliminary injunction. The court denied the preliminary injunction motion because it found Topps’ use of Aldrin’s name, image and likeness was protected speech. The court stated that “the cards use[d] Aldrin's name in the course of conveying information about his historically significant achievements” and were not used for purely commercial purposes like advertisements. The denial is on appeal, and even if the denial stands, the court may eventually find that Tops needs to pay Mr. Aldrin for using his name, image and likeness (although much more likely the case will settle quietly).

My take is the court got it wrong and I disagree with the decision. Tops cards are purely a commercial exploitation. They are not encyclopedias, or in the public interest - and they are not necessary to freedom of speech. We don't have to dumb down the world a little bit more by relying on trading cards to educate kids, and it's a BS argument anyway. These cards are bought and traded by collectors and aficionados and have no significant educational value. Obviously, the information on the cards is available elsewhere in legitimate educational publications.

Bottom line - Tops should pay ALL celebrities for using their name, image and likeness on trading cards.

Comments welcome.

Interesting Copyright Case Regarding Public Domain Publicity Materials from Old Films

The case is Warner Bros. Entertainment, Inc., et. al. v. X One X Productions, A.V.E.L.A., Inc., et al., 644 F.3d 584 (8th Cir. 2011).  Defendants obtained old movie publicity materials - posters and lobby cards - took images of famous characters from the materials, and licensed the images for use on apparel and other goods.  The promotional items were not protected by copyright (but the films were, of course) - the court found they were in the public domain.  However, when the images displayed on the licensed merchandise evoked the film character, the court found infringement.  Here's a link to the story.

http://tiny.cc/7q1y2

And Now for Something Completely Different.....

Guitar World magazine has been running a series on female guitarists that I thought was very interesting.  See if you agree:

Part 1:  http://www.guitarworld.com/exposed-10-female-guitarists-you-should-know

Part 2: http://www.guitarworld.com/exposed-10-female-guitarists-you-should-know-part-2

Part 3: http://www.guitarworld.com/exposed-10-female-guitarists-you-should-know-part-3

Let me know what you think.

Happy holidays!

Copyright Registration of Unpublished Collections or Groups of Works

Just a quick note about registering a single copyright for unpublished groups or collections.  While it is very efficient and less costly than registering separate copyrights for each work in the group, the drawback is that you may only be able to collect damages on the single group, not the multiple works within the group.  This is especially true with regard to statutory damages. Something to keep in mind when comtemplating a group registration.