New gTLDs & The Trademark Clearinghouse: Four Tips for Brand Owners

By Ryan Compton & James Stewart

The imminent launch of more than 1,400 new generic top-level domains (gTLDs) poses a major challenge to brand owners seeking to enforce and maintain control over the way their key trademarks appear in domain names. The domain ender “.com” is the most widely used of the current gTLDs, but “.net,” “.org” and “.edu” gTLDs are also prevalent. All of the current gTLDs are managed by the Internet Corporation for Assigned Names and Numbers (ICANN). On June 20, 2011, ICANN approved a plan to expand the universe of gTLDs to include virtually any string of characters, including trademark words (e.g., “.docs,” “.rocks,” “.world,” “.pepsi,” etc.).

To help brand owners exercise greater control over use of their trademarks, ICANN has developed the Trademark Clearinghouse (TMCH), which gives brand owners the first opportunity to obtain domain names incorporating their trademarks upon the launch of a new gTLD. Brand owners registered with the TMCH will receive notice when a third party registers a domain name incorporating their trademark. The third-party registrant is also notified of the brand owner’s rights in the mark.

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Radiance Harris Named One of IMPACT and National Bar Association's 2013 40 Lawyers Under 40

By James Stewart

 

IMPACT and the National Bar Association has named Radiance Harris one of its "Nation’s Best Advocates – 40 Lawyers Under 40."  Radiance is an associate in the Trademark, Copyright, and Media practice group in Washington, D.C., as well as the manager for the firm’s premier intellectual property blog, Re:Marks on Copyright and Trademark.  This honor recognizes talented individuals, ages 40 and under, within the African American legal community who have achieved prominence and distinction, both professionally and philanthropically.  Selected nominees represent a cross-section of legal professionals: solo practitioners, government lawyers, judges, academics, corporate counsel, young elected officials, and lawyers using their juris doctor in innovative ways. 


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It's a bird! It's a plane!: Superman claims victory in the Federal Court of Australia

By Melinda Upton and Danielle Selig

What you need to know

On 22 May 2013, Justice Bennett refused an application in the Federal Court of Australia, by Cheqout Pty Ltd (Cheqout), to register the trade mark "superman workout". Adopting the test relied upon by Justice Dodds-Streeton in Fry Consulting v Sports Warehouse Inc (No 2) (2012) (Fry), her Honour held that Cheqout made the application in bad faith as its "conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons."

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SIGNIFICANT CHANGES INTRODUCED AND PLANNED TO UK IP LEGISLATION

By John Wilks and Charles Harvey

UK IP legislation is changing.

First, the Enterprise and Regulatory Reform Act 2013 (which received Royal Assent on 25 April 2013), has just been published, and modifies UK copyright law (though not as drastically as some would have liked).

Secondly, the Government announced in the Queen's Speech that it will be introducing an Intellectual Property Bill to make changes to the law of design and patents.

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BROOKS BROTHERS OUTFOXED

By Rebecca Kay and Charles Harvey

Fox .jpg

Background

The famous fox and boot logo was first used by Peal & Co, an English bootmaker. In 1964, Peal & Co sold the goodwill of its business and the use of its trademark to Brooks Brothers UK Limited (a subsidiary of the well-known US menswear group) and in 1965 it ceased trading.  Following the demise of the Peal & Co business, W.S Foster & Son Limited (a shoe retailer on London’s Jermyn Street), recruited an employee of Peal & Co and (apparently at the employee’s suggestion) commenced its own use of the fox and boot logo.  In 2005, Brooks Brothers opened a number of UK stores.  Having realized that some of Brooks Brothers’ shoes featured the fox and boot logo, W.S Foster brought proceedings against Brooks Brothers before the UK High Court.

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DLA Piper Hosts INTA Reception

By James Stewart

INTA Reception Poster

On May 6, 2013, DLA Piper’s Trademark, Copyright, and Media Group hosted a private VIP reception during the 135th International Trademark Association Annual Meeting (INTA) in Dallas, Texas. More than 90 attended the global networking event, including lawyers and guests from Africa, Asia, Europe, Australia, and North America. The reception was held at Wolfgang Puck’s acclaimed restaurant Five Sixty, which provided stunning views of the Dallas metropolitan area. The evening was an elegant and unique opportunity for DLA Piper partners to connect with clients, including in-house counsel for some of the world’s best-known brands.

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Special Edition - Law à la Mode - INTA 2013

The DLA Piper Fashion, Retail and Design Group distributed a special edition of its e-magazine, Law à la Mode. The edition coincides with the 135th INTA (International Trademark Association) Annual Meeting in Dallas, Texas. Given the nature of the conference, the special edition focuses exclusively on branding issues such as securitizing trademarks, IP rights in shop formats and brand protection considerations for entrants into emerging markets.  Please click here to read the e-magazine.

DLA Piper Partner Presents on Social Media at INTA Annual Meeting 2013

On May 7, 2013, Gina Durham presented at one of the 2013 INTA Annual Meeting's main educational sessions entitled: "ReTweet, Repost, Repin: How Brands Get Their Message Out and Whose Content is it Anyway?" She spoke on a panel with representatives from Chevron and Goodwill, which addressed the practical aspects of propelling a famous brand through social media and discussed how to take responsible legal risks in the evolving legal landscape. 

DLA Piper's Fashion Law Breakfast at the 2013 INTA Annual Meeting in Dallas

By Ann K. Ford

This morning, DLA Piper's Fashion, Retail and Design Group brought out a commanding group of DLA Piper colleagues from around the world to discuss recent developments in their jurisdictions that affect brand owners of fashion and retail brands. The audience comprised of representatives of luxury and leading retail apparel brands, whom were treated to a breakfast of digestible presentations of useful fashion law and intellectual property news from China, Turkey, Brazil, Australia, Germany and the United States.

At the end of the program, London partner and Fashion, Retail and Design Group founder, Ruth Hoy invited guests to take home the DLA Piper fashion law e-magazine, Law à La Mode, and additional materials on China protection.  It was truly a remarkable event!

Fashion Law Breakfast 1.JPG

© 2013 Karen Campbell

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New York Federal Court Says No to ReDigi's Resale of Digital Used Music

Reposted from Sports, Media, and Entertainment Intelligence, May 2013 

By Scott W. Pink

In a setback for resellers of digital products, a New York federal court issued a decision on March 30, 2013 holding that ReDigi’s online platform for reselling digital used music violated the copyrights owned by record companies in that music. In the case of Capitol Records v. ReDiGi, the court held that the resale of the digital files facilitated by ReDigi’s technology was not protected by the first sale doctrine, which allows one to resell a lawfully acquired copyrighted work, because the sale of the digital used music involves making an unauthorized copy of the digital file. This decision calls into question whether there could be any viable means for legally reselling any form of digital content through the Internet.

It has long been an accepted practice for music lovers to clean out their music collections by selling their used LPs and CDs. Indeed, you will still find retail stores that have used LPs and CDs for sale. With the advent of digital music distribution through such online services as iTunes, these traditional means for reselling music collections are not viable because the music is typically stored on the consumer’s computer or mobile device, and not on a separate medium. 

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