Re:Marks on Copyright and Trademark

More and more frequently, private companies which are not associated with the United States Patent and Trademark Office (USPTO) have been aggressively sending out misleading notices to trademark applicants and registrants seeking substantial fees for trademark-related “services” including but not limited to legal services, trademark monitoring services, recordation of trademarks with the U.S. Customs and Border Protection Agency, and private company registrations. These “notifications” (with invoices usually included) are typically sent via mail or e-mail and display names and official-looking letterhead resembling that of the USPTO. In addition to the confusingly similar names and/or graphics used by the soliciting entities, these come-ons also usually include accurate official USPTO data such as the trademark application serial number, registration number, classifications, filing dates, etc. – all of which is publicly available information.

Continue Reading

Lawmakers appear to be backing away from the PROTECT IP Act (PIPA) and Stop Online Piracy Act (SOPA) in the wake of this week’s widespread Internet protest.

As previously reported, a number of the Web’s highest profile sites were blacked out or otherwise unavailable on Wednesday in opposition to the legislation. The bills, which were designed to combat foreign-based piracy of digital content, but which opponents claim would have wider undesirable consequences for Internet businesses and consumers, now appear to be dead in both the House and Senate.

Senate Majority Leader Harry Reid (D-NV) today canceled the vote on PIPA, which was previously scheduled for January 24. Shortly thereafter, at the urging of Speaker of the House John Boehner (R-OH), House Judiciary Committee Chairman Lamar Smith (R-TX) indicated that SOPA would be moved to the back burner.

With the future of SOPA and PIPA as we know them now in doubt, it remains to be seen whether alternative legislation such as the OPEN Act will gain traction, or whether reworked versions of the bills will resurface in the House and Senate at some future date. Of course, we will be closely monitoring further developments as the occur.

Follow up post to SUPREME COURT WILL DECIDE CONSTITUTIONALITY OF REMOVING WORKS FROM THE PUBLIC DOMAIN

By Tom Zutic and John Nading

In a 6-2 decision today in Golan, et al. v. Holder, et al., the U.S. Supreme Court upheld U.S. Copyright protection for foreign works which had fallen into the public domain prior to the U.S. joining the Berne Convention for the Protection of Literary and Artistic Works in 1989.  See Slip Opinion.  Under the Berne Convention, signatories agree to treat authors from fellow signatory countries as they would treat their own.  

Continue Reading

Today, ICANN began accepting applications for the new generic top-level domains (gTLDs).  That is, as of today, you can apply to run your own "dot com" registry.

Please note that March 29 is the last day applicants can register in the system and April 12 is the last day that applications will be accepted.

While we have previously written about gTLDs and will continue to update our blog as the process unfolds, we wanted to update our counterparts that a new version of the Applicant Guidebook has been released in connection with the opening of the application window.

For more specific information about the gTLD application process and its impact on your brand, or to discuss the possibility of moving forward with an application for a new brand-centric gTLD, please let us know how we can help!

DLA PIPER IPT ALERT

By Ruth Hoy and Claire Bennett

Advocate General Bot delivered his Opinion in SAS Institute Inc. -v- World Programming Ltd on 29 November 2011.  The judgment of the full Chamber of the CJEU is not expected until sometime in 2012, and it is not yet known whether the Court will follow his Opinion.  In the meantime, the Opinion gives some useful insight for programmers who are trying to create computer programs that are interoperable with programs of others and studying and testing the functionality of programs.

Continue Reading

As you may already know, the "dot-xxx" (.XXX) top-level domain is the Internet's new home for adult content.  

Next Tuesday, December 6, the ICM Registry in charge of the .XXX top-level domain will make .XXX domains available for purchase to the public on a first-come, first-serve basis.

Anyone can register a domain for around $100-$150 per year, assuming, of course, it has not already been blocked or registered during one of the sunrise periods.  No trademarks are necessary to participate in this registration.

Clients who wish to block .XXX domains can work with us to set up automated purchases that will begin immediately upon the opening of the December 6th window.  While we can make no guarantees regarding success, we believe this is an important opportunity to proactively protect your brand.

A recent decision of the Wenzhou Intermediate People's Court in China should put Western brand owners on their guard when being sued in China.  It also provides yet another reminder of the importance to Western brand owners of filing first in China.

Continue Reading

INTELLECTUAL PROPERTY AND TECHNOLOGY ALERT

Robert Benson

Today President Barack Obama signed into law the America Invents Act, marking the first time in nearly 60 years that US patent legislation has been reformed.

The US does not often update its patent law. The most recent set of federal patent laws was signed by President Harry Truman in 1952, which itself was the first major revision of US patent law since the Patent Act of 1836.

Continue Reading

By Scott McIntosh and Joe Englert 

Reposted from DLA Piper client alert

A Florida appellate court recently held in Ball v. D’Lites Enterprises, Inc., 2011 WL 3109733 (Fla. 4th DCA July 27, 2011), that a franchisor was not entitled to judicial absolute immunity for allegedly defamatory statements made regarding several franchisees on its corporate website, even though the franchisor and franchisees were currently engaged in litigation and the statements were related to the issues underlying the dispute. In light of this decision, franchisors, franchisees and franchisee associations should be aware that, when posting statements on the Internet related to pending litigation, they will not likely be protected by judicial absolute immunity.

Continue Reading

At a special meeting in Singapore, the board of directors of the Internet Corporation for Assigned Names and Numbers (ICANN) approved a plan that will bring wide-reaching changes to the Internet's generic top-level domain structure. 

The measure, which allows private companies and other organizations to create new website domain name suffixes (such as dot-movie, dot-insurance, dot-brand, or dot-dlapiper, for example), passed by a vote of 13-1, with two members abstaining. With the plan approved, ICANN now launches a six-month Global Communication Campaign designed to raise awareness about the coming changes among consumers and potential applicants. 

Continue Reading

Reposted from DLA Piper's IPT ITALY BLOG

According to rumors coming from the Italian Patent and Trademark Office (UIBM) it is only a matter of weeks before the much awaited activation of a trademark opposition procedure in Italy.

An administrative procedure to oppose to applications for identical or similar trademarks was actually introduced in the Italian system back in 2005, with the enactment of the Industrial Property Code. However, it then remained dead letter, waiting for implementing ministerial decrees. Following the recent adoption, on 11 May 2011, of a decree which also incorporates the draft standard form to be used for filing the opposition, everything seems now ready for the official launch of the new procedure as of July 2011, when the UIBM will also start publishing its monthly online Official Trademarks Bulletin.

The opposition procedure will be open to owners of earlier trademarks registration/application and exclusive licensees. According to the above-mentioned decree of May 2011, the procedure is applicable in respect of (i) any trademark application filed in Italy as of 1 May 2011 and of (ii) the Italian designation of any international trademarks published on the first July issue of the WIPO Gazette of International Marks.

As the timeframe within which the opposition can be filed is rather tight (3 months from the publication of the relevant application), it is highly advisable that trademark owners and exclusive licensees have in place an adequate surveillance system to be able to promptly detect any trademark applications potentially conflicting with their earlier rights. Moreover, whoever intends to file an opposition on account of an earlier trademark must be ready to provide evidence of its use. Lacking evidence of genuine use of the earlier trademark the opposition will be rejected The notice of opposition to registration of a trademark is to be filed in Italian, using a standard form. Once completed, the form needs to be transmitted in 3 copies to the UIBM by hand, registered letter or authenticated e-mail. 

If you are interested in this topic and you want to know more, feel free to contact me, Chiara Garofoli (chiara.garofoli@dlapiper.com)

By Ann K. Ford, Kiran Gore, & Debbie Rosenbaum

Reposted from Law A La Mode's Summer Edition

It is clear that social media is changing the communications landscape. Therefore, forward-thinking companies across the globe are embracing social networking websites and blogs to build brands, cultivate customers, research products, and improve global business management.  However, few have truly considered some of the important social media implications that are relevant to the fashion and retail industries. Because social media is inexpensive, instantaneous and prolific, it presents new and different concepts for the fashion industry, particularly in light of the fact that these concepts are new to these industries which had previously thrived on a perceived air of exclusivity. 

Social media in the business context is content created by people – individuals both inside and outside a company – on web-based platforms intended to facilitate interaction with peers and public audiences. Well-known examples of social media include Facebook, Groupon and Twitter.  But numerous niche fashion-centric communities are also emerging on websites like gotryiton.com and stylemob.com. Thus, while independent designers and large retail chains alike can benefit from a social media presence, these emerging opportunities also pose new problems and challenges.  Therefore, the way to leverage social media and mitigate possible liabilities is to proactively establish clear rules and standards for its use.  

So how does a company manage its social media presence and ensure that employees are clear with respect to goals and limitations?  First, it is paramount that the company develop a policy on employee use of social media. At a minimum, this policy should include:

• A prohibition on the sharing of confidential or proprietary information;
• Standards for whether employees will be allowed to make public comments about the company and which employees may make such comments;
• Consequences for employees who do not adhere to the policy.

A company should also plan to create a meaningful social media presence for its brand. Such a communications strategy should be updated to include:

• A social media “voice” and presence that is personal and genuine – a tone that exists outside of your advertising campaigns and corporate talking points;
• Engagement with customers and followers - today, these individuals are the newest fashion insiders with influence on the Internet.

Please note that this article is the first in an on-going series that will consider various social media platforms, explore legal challenges and ultimately provide guidelines and best practices for the various entities in retail, design and fashion.  We look forward to delving further into these exciting new issues with you. 

By Ann Ford and Ryan Compton

Today, May 11, 2011, marks the opening of the Sunrise period for reservation of the newly-created .ASIA domain names utilizing characters from the Chinese, Japanese and Korean written language. Referred to as "Internationalized Domain Names" or "IDNs," these domains will allow for companies to register their company names in, for example, Chinese Kanji script followed by the .ASIA top-level domain. Today's opening of the sunrise period allows registered businesses, registered trademark owners and existing owners of .ASIA top-level domains to register these new IDNs.

It is important to note that this sunrise period is not a landrush, wherein registration would be first-come-first-served. Rather, applications will be accepted from today until July 20, 2011, after which point any contested domains will be put to auction. Nonetheless, clients are encouraged to apply for their names as soon as possible, as the July 20 deadline will approach quickly. Shortly thereafter, on August 2, 2011, the landrush period will open, at which point registration will be granted first-come-first-served.

As always, please feel free to contact us at DLA Piper with any questions or concerns you might have concerning this or any other domain name registration or enforcement issues.

As always, we are eager to share publications from DLA Piper's Trademark teams across the world. Here is the latest version of France's Trademark and Design February/March newsletter.

------------------------------------------------------------------------------

Continue Reading

Over the last few months, many of our clients have asked us about ICANN’s expansion of generic top-level domains (gTLDs), and we thought it would be beneficial to blog about our garnered knowledge.

In the past, entities have had the opportunity to register second level domain names under existing top level domains such as “dot-com,” “dot-net” and “dot-mobi,” resulting in domain names in the commonly accepted format <dlapiper.com>. However, sometime this year private entities will have the opportunity to apply to create and manage completely new generic Top Level Domains (“gTLDs”).

Obtaining and managing a gTLD is not as simple as registering a second level domain name. Rather, by obtaining a gTLD a company would be entering the business of domain name Registry and a large investment in expertise and technology would likely be necessary. As such, when deciding whether to move forward with a gTLD application, close cooperation will be necessary between the Legal, Marketing and IT departments, at a minimum. We also strongly recommend Executive involvement in the decision-making process given the scope of this undertaking.

It is important to note that no trademark rights are required to apply for a particular gTLD. Therefore, while consideration of brand-centric gTLDs such as “dot-dlapiper” is important, it is also critical to consider the opportunities associated with more generic gTLDs such as “dot-lawfirm” or “dot-law,” for example.

Another important consideration is the intended breadth of Registry activities once the gTLD has been delegated. Specifically, if  the Company successfully acquires a new gTLD, it must decide whether second level domain registrations will be available to the public at large, to a specific subgroup of the public, or only for internal use.

For example, the “dot-com” and “dot-net” gTLDs are public, so any individual or entity can register a second level domain name under those gTLDs. However, the “dot-museum” and “dot-aero” gTLDs have specific requirements that Registrants must meet before becoming eligible to obtain second level domains (i.e. must be an official museum organization, etc…). In the case of new gTLDs, it will be possible to limit second level registrations even further such that only the proprietor of the gTLD could use second level domain names.

In our next post, we will lay out the key aspects of the application procedure, as well as a discussion of the rights protection mechanisms that have been put in place to protect intellectual property from third-party infringement.

Annnndddd we're back from a small hiatus.  Since the last IP Roundup, there have been a ton of great stories and analyses on Trademark and Copyright Law around the Internet.  

• Gripe Websites – still fair use: Sedgwick Claims Management Services v. Delsman, 09-16809 (9th Cir. March 21, 2011). Delsman is a blogging griper about Sedgwick. He made some griping material that included cut-and-pasted headshots of Sedgwick's managers. Delsman got a favorable ruling in the district court, including a fair use ruling on the headshots and an anti-SLAPP ruling on the other claims. Shockingly, rather than quietly licking their wounds, Sedgwick appealed the ruling to the Ninth Circuit, which was rebuffed. Read full post at Eric Goldman at Technology & Marketing Law Blog.
• Steve Baird of DuetsBlog recently moderated a seminar "Trademark Bullies" here.
• Has the original Coca-Cola recipe leaked out?
• Keurig, Inc. v. Strum Foods, Inc., --- F. Supp. 2d ----, 2011 WL 843932 (D. Del.) from Rebecca Tushnet's 43(B)log. Keurig makes single-serve coffee machines and a corresponding line of coffee-filled cartridges. Sturm makes cartridges for use in Keurig machines under the Grove Square brand name. Keurig alleged trademark infringement, trade dress infringement, dilution, and related state and federal claims. Strum Foods succeeds with argument that "“*For use by owners of Keurig® coffee makers" is nominative fair use. Read more here.
• Discussion of Netflix’s reported efforts of the company to become an acquirer of original content: Netflix and Distribution: The Unsung Story of Copyright Content from The IPKat by Neil Wilkof.
• Big, Big Loss For Righthaven: Reposting Full Article Found To Be Fair Use by TechDirt.
• If Parody is Exempt from Dilution, Why isn't It Exempt from Infringement? from Seattle Trademark Lawyer by Michael Atkins
• The first time that an SEO/Web Host or other Internet Intermediary was found liable for contributory infringement without having first received actual notification of the counterfeit sales from a third party: Roger Cleveland Golf Co. v. Prince, 2:09-cv-02119-MBS (D.S.C. jury verdict March 10, 2011 and judgment March 14, 2011).  Read more at Technology & Marketing Law Blog.
• Great presentation by Eric Goldman "Consumer Reviews of Doctors and Copyright Law" -- talk slides.
• AP announced that it has settled its copyright claims against Shepard Fairey by AdWeek.
• Subway seeks to trademark "footlong."
• The Music Industry, Post-Napster by the New York Times.
• Court says you don’t need a person’s permission to tag them in a Facebook photo
• from Internet Cases by Evan Brown (@internetcases): Lalonde v. Lalonde, — S.W.3d —, 2011 WL 832465 (Ky. App., February 25, 2011)
• USPTO Denies Twitter's Trademark Application for 'Tweet', Again
• The Supreme Court agreed to decide whether Congress may take works out of the public domain and grant them copyright status: In what ScotusBlog is calling "a major test of copyright power," the Supreme Court agreed to hear an appeal of the 10th Circuit decision in Golan v. Holder upholding the Uruguay Round Agreements Act, a law that brought the US into compliance with several international treaties and retroactively restores copyright in some expired foreign works.
• Keyword advertising injunction reversed from Rebecca Tushnet's 43(B)log.
• Buying keywords isn't deceptive; deceptive ads are deceptive from Rebecca Tushnet's 43(B)log. Federal Trade Commission v. Cantkier, 2011 WL 742647 (D.D.C)
• Charlie Sheen’s unusual phrases are spurring a race to the U.S. Trademark office by entrepreneurs hoping to cash in by ABA Journal.
• Network Automation, Inc. v. CBM-CW Advanced Systems Concepts, Inc. (9th Cir. Mar. 8, 2011). Also, a very good in-depth analysis by Eric Goldman here.
• Very useful table: State Cyberstalking, Cyberharassment and Cyberbullying Laws

One of our group's newest sector-focus groups is DLA Piper's Fashion, Retail & Design Group. We wanted to share the group's inaugural quarterly e-magazine, Law à la Mode, which brings together the latest industry news, comment and legal updates.  

Our Fashion, Retail & Design Group is made up of lawyers from around the globe, who combine legal expertise with a passion for the fashion, retail and design sectors.

Be sure to check out our group's article about Copyrighting Fashion Design in the United States!

One of the advantages to being an international firm is that our expertise and experience is global. We are delighted and eager to share our European, Asian, and African colleagues' recently published Winter Design and Trademark Newsletter.

Here are just some of the important alerts relevant to our clients worldwide.

Continue Reading

Every quarter our team publishes an Intellectual Property and Technology newsletter, in which we regularly analyze and explore issues related to trademark, copyright and advertising law along with the other areas of IP.  Allyn Taylor, one of our partners, wrote an article for the last edition that we'd like to reshare.

------------------------------------

Protecting your brand on a global scale

By Allyn Taylor

Back when products and services were sold via brick and mortar stores, only large corporations or conglomerates seriously considered seeking global protection for valued brand names. Now, however, in the age of the Internet and Cloud, goods and services can be delivered virtually anywhere. Seeking trademark protection on a global basis is often a logical option for even a small company. Yet the question inevitably arises: “How do I accomplish this in an efficient, cost-effective manner?”

Continue Reading