Top Tips for IP Protection in China

Posted by James Stewart on December 11, 2012

Melinda Upton and Edward Chatterton, two of our international partners, share their expertise and discuss top tips for intellectual property protection in China.

This interview was originally posted at BRRMedia. For a full transcript of the interview, please click here.

 

America's Next Top Model . . . Guidelines

Posted by Eunice R. Chung on July 09, 2012

Reposted from Law à la Mode, Edition 6 - Summer 2012

By Alexander S. Birkhold (New York)

The recent formation of the Model Alliance, an organization seeking to enforce and expand existing legal protections for models in the United States, has prompted increased US scrutiny of employment and image rights issues in the fashion industry.

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Law à la Mode, Edition 6 - Summer 2012

Posted by Eunice R. Chung on June 27, 2012

JUNE 2012

 

Welcome to the Summer edition of DLA Piper’s Law à la Mode, the industry e-magazine which is brought to you by our Fashion, Retail & Design Group.  Please click here to view the e-magazine or here to view as a PDF.

With the world's eyes on London this Summer, this edition has been complied by DLA Piper's London editorial team.  Putting our British fashion-foot forward, we explore DLA Piper's recent collaboration with Central St Martins College of Arts and Design, as well as considering "When is a free handbag considered a bribe?" under the UK's new and pervasive Bribery Act.  Moving further afield, we take a look at the European Commission’s ambitious plans for the European digital marketplace, and our Istanbul colleagues introduce us to the opportunities (and risks) of using Turkey as a manufacturing base.  Our US team explore new guidelines for working with models, while our team in Sydney has some top tips to keep in mind when opening an online store.  This edition also includes all our regular features, including "A Word from the Industry's Mouth" where we meet Victoria Chang, Belgian lawyer turned Fashion blogger. Finally, following on from our special edition of Law à la Mode to mark the 134th INTA Annual Meeting in Washington, DC, we give you an insight into our exciting INTA event: "Around the retail world in sixty minutes: Reflecting on the top branding issues for retailers in 2012".

We do hope that you enjoy this Summer edition of Law à la Mode.  If you have any comments please get in touch with the Fashion, Retail and Design Group via our email: fashion@dlapiper.com.

DLA Piper’s global Fashion, Retail and 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.

Global Developments Regarding the Anti-Counterfeiting Trade Agreement

Posted by Gina Durham on January 02, 2012

Reposted from DLA Piper's Law à la Mode Edition 4 - Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Gina Durham and Erin Wright Lothson (Chicago)

 

Those involved in the fashion and retail industries are well aware of the challenges associated with combating the global proliferation of commercial-scale counterfeiting and piracy.  With legal rights and remedies often varying on a country-by-country basis, enforcement of intellectual property rights on an international scale can often be fraught with unexpected hurdles and inconsistent outcomes.  The Anti-Counterfeiting Trade Agreement (“ACTA”) aims to change that.

On October 1, 2011, eight countries signed ACTA, namely Australia, Canada, Japan, Morocco, New Zealand, Singapore, South Korea and the U.S.  A signing ceremony was held in Tokyo by the Government of Japan.  Representatives of the E.U., Mexico, and Switzerland attended the ceremony and confirmed their continuing support for ACTA.  Those three sovereignties are in the process of finalizing domestic procedures in preparation to sign, and their signatures are expected by May 1, 2013.  Collectively, these eleven countries represent more than half of the world’s trade.

 

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Idiosyncrasies of the Spanish Fashion Market

Posted by Debbie Rosenbaum on December 27, 2011

Reposted from DLA Piper's Law à la Mode Edition 4 - Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Bartolome Martin (Madrid)

Some decades ago, the Spanish Tourism Authority’s advertisements across Europe proudly touted that “Spain is different.”  In reality, this may indeed be true.  Spain is an idiosyncratic country where universality and localism are good friends, crisis and luxury seem to have a passionate relationship, and customs from the past walk hand in hand with the latest trends.  This self-contradicting spirit, cultural individuality and inherent diversity are without a doubt reflected in the Spanish fashion market. 

Some decades ago, the Spanish Tourism Authority’s advertisements across Europe proudly touted that “Spain is different.”  In reality, this may indeed be true.  Spain is an idiosyncratic country where universality and localism are good friends, crisis and luxury seem to have a passionate relationship, and customs from the past walk hand in hand with the latest trends.  This self-contradicting spirit, cultural individuality and inherent diversity are without a doubt reflected in the Spanish fashion market. 

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"Just passing through sir or really stopping off?" - the CJEU rules on counterfeit goods in transit

Posted by Rebecca Kay on December 15, 2011

By Siân Croxon, Partner, DLA Piper UK

The CJEU has provided some clarification of the law on when EU customs officials can seize counterfeit goods that are merely in transit through the EU. 

The story began in 2008 when a consignment of Nokia branded mobile phones arrived in Heathrow in transit from China to Colombia.  The customs officer was suspicious and sent a sample to Nokia for inspection which duly revealed that the phones were indeed counterfeit.

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Fake Olympic goods seized

Posted by Debbie Rosenbaum on August 24, 2011

Reposted from DLA Piper's Media & Sport Group bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Trading Standards Officers of Coventry City Council have discovered cigarette lighters displaying protected Olympic trademarks.

The goods were seized at a car boot sale, as part of a regular inspection by Trading Standards officers. The lighters displayed the Olympic symbol and London 2012, which are protected trade marks, and did so without the authority of the controller of those marks, The London Organising Committee of the Olympic Games. Various Olympic-related words and marks are given elevated protection under the Olympic Symbol (Protection) Act 1995 and the London Olympic Games and Paralympic Games Act 2006.

This seizure provides another example of trading standards officers working in conjunction with the organisers of the 2012 Games to seek to prevent so-called ambush marketing. We understand that steps are now being taken to trace the supply of these lighters.

Trademark Litigation Tactics -- New Study by USPTO

Posted by Gina Durham on May 04, 2011

On March 17, 2010, President Obama signed S. 2968, Trademark Technical and Conforming Amendment Act of 2010, into law as Public Law 111-146. Included in the new law was the requirement for a study and report, due one year later, on the effect of abusive trademark litigation tactics on small businesses. The study and report was to be completed by the Department of Commerce (DOC), in consultation with the Intellectual Property Enforcement Coordinator (IPEC).

Check out the full study and report to Congress here.

On March 17, 2010, President Obama signed S. 2968, Trademark Technical and Conforming 
Amendment Act of 2010, into law as Public Law 111-146.  Included in the new law was the 
requirement for a study and report, due one year later, on the effect of abusive trademark 
litigation tactics on small businesses.  The study and report was to be completed by the 
Department of Commerce (DOC), in consultation with the Intellectual Property Enforcement 
Coordinator (IPEC). 

Influential Cases of 2010

Posted by Debbie Rosenbaum on January 26, 2011

Our group spends a significant amount of time working on issues relating to the transformation of copyright and trademark laws in the 21st century. I am particularly passionate about and interested in how the Internet and other new technologies challenge these dynamic areas of law. For my first blog post, I revisited a few of what I see as the most influential cases of 2010. 

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2010 COPYRIGHT AND TRADEMARK CASE HIGHLIGHTS
Capitol Records Inc. v. Thomas-Rasset, No. 06-1497 
This case had two major impacts on the realm of copyright in 2010.
(D. Minn. Jan. 22, 2010)
Opinion
First, in January U.S. District Court Chief Judge Michael Davis for the District of Minnesota remitted a 2009 jury award of statutory damages totaling $1.92 million by 97% to $54,000 against defendant Jammie Thomas-Rasset for willfully infringing plaintiffs’ copyrights by downloading 24 songs using the Kazaa peer-to-peer network.  Judge Davis held that although Plaintiffs highlight valid reasons that Thomas‐Rasset should pay a statutory damages award, the Judge ruled that these facts simply could not justify a $2 million verdict in this case.  He ruled that although this new award was still three times the statutory minimum, this reduced award remains “significant and harsh” and should sufficiently serves both the deterrent and the compensatory purposes of statutory damages.
JUDGMENT IN A CIVIL CASE: Civil File No. 06‐1497 (MJD/LIB)
Judgement
The plaintiffs rejected the reduced damage award and, instead, asked for a new trial on damages.  On November 4, the jury returned a verdict awarding statutory damages in the amount of $62,500 for each of 24 songs for a total amount of $1.5 million.  These file-sharing cases have a profound impact on the future of copyright in the United States as the damage awards have consistently shocked the public conscience.
Reed Elsevier v. Muchnick, No. 08–103 (U.S. Mar. 2, 2010)
Opinion
In one of the only copyright cases to reach the Supreme Court of the United States this year, the Supreme Court overturned a Second Circuit Court of Appeals decision which held that a Section 411(a)’s registration requirement is a precondition to filing a copyright infringement claim.  The Supreme Court, however, ruled that a copyright holder’s failure to comply with this registration requirement does not restrict a federal court’s subject-matter jurisdiction over infringement claims  involving unregistered works.  
Tiffany Inc. v. eBay Inc., Case No. 08-3947 (2d Cir., Apr. 1, 2010)
Opinion
The Second Circuit for the United States Court of Appeals largely affirmed the holdings of the United States District Court for the Southern District of New York, holding that eBay, the proprietor of a website through which counterfeit Tiffany merchandise was sold -- did not, on the facts presented, engage in trademark infringement, false advertising, or trademark dilution.  The court ruled that for contributory trademark infringement liability to lie, a service provider must  have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods.  For this reason, eBay itself could not be held liable for direct or contributory trademark infringement or for trademark dilution. The Court remanded the case, however, with respect to Tiffany's claim of false advertising. This case begins to pave the legal precedent path with respect to liability of internet-based sales websites and counterfeit goods.
Viacom Int’l Inc. v. YouTube, Inc., No. 07 Civ. 2103 (S.D.N.Y. June 23, 2010)
Opinion
The United States District Court for the Southern District of New York granted summary judgment in favor of video-sharing service YouTube (owned by Google) on all of media company Viacom's claims for direct and secondary copyright infringement. The court held that YouTube was entitled to the protections of the Digital Millennium Copyright Act's ("DMCA") "safe harbor" provisions, 17 U.S.C. 512(c).  The case continues to defend the boundaries of the DMCA safe harbor provision, with the court concluding that "[g]eneral knowledge that infringement is 'ubiquitous' does not impose a duty on the service provider to monitor or search its service for infringements."
Visa Int’l Serv. Ass’n v. JSL Corp., No. 08-15206 (9th Cir. Jun. 28, 2010)
Opinion
The Ninth Circuit for the United States Court of Appeals affirmed the U.S. District Court for the District of Nevada’s summary judgment ruling, holding that JSL Corporation’s (“JSL”) “eVisa” mark diluted Visa International Service Association’s “Visa” mark under the theory of dilution by blurring, which occurs when a mark previously associated with one product also becomes associated with a second.  15 U.S.C. § 1125(c)(2)(B).  The court decided that even though Visa doesn’t own the word “visa” and may not  “deplete the stock of useful words” by asserting otherwise, the injury addressed by anti-dilution law in fact occurs when marks are placed in new and different contexts, thereby weakening the mark’s ability to bring to mind the plaintiff’s goods or services.  This case has deep repercussions for brands that employ generic or common words as part of their trademarks.
Toyota Motor Sales v. Tabari, No. 07-55344 (9th Cir. Jul. 8, 2010)
Opinion
The Ninth Circuit for the United States Court of Appeals vacated and remanded an injunction against auto-brokers Farzad and Lisa Tabari issued by the District Court for the Central District of California in a trademark infringement claim brought by Toyota Motor Sales U.S.A. (“Toyota”), the exclusive distributor of Lexus vehicles in the United States.  The Court of Appeals ruled that Tabaris' use on their website of copyrighted photography of Lexus vehicles and the circular “L Symbol Design mark,” in addition to the use of the string “lexus” in their domain names.  The Ninth Circuit held that the nominative fair use doctrine allows truthful use of a mark, even if the speaker fails to expressly disavow association with the trademark holder, so long as it's unlikely to cause confusion as to sponsorship or endorsement.  This case has great reverberations for domain name use because it extends the notion of nominative fair use to hold that trademarks are part of our common language, and we all have some right to use them to communicate in truthful, non-misleading ways.
MGA Entertainment, Inc. v. Mattel, Inc., No. 09-55673 (9th Cir. July 22, 2010)
Opinion
The Ninth Circuit for the United States Court of Appeals reversed the District Court’s decision to enter equitable relief based on a jury’s findings that Mattel-competitor MGA had committed three state-law violations relating to a former employee’s involvement in creating The Bratz Dolls during the scope of his employment at Mattel.  The court also issued a general verdict finding MGA liable for infringing Mattel’s copyrights in its former employee’s works.  In addition to assignment of ownership of the Bratz brand, the district court also ordered Bratz manufacturer MGA to pay Mattel $10 million in damages.  Instead, the Ninth Circuit ruled that even if Bryant’s employment agreement assigned his ideas to Mattel, the value of the trademarks the company eventually acquired for the entire Bratz line was significantly greater because of MGA’s own development efforts, marketing and investment.  The case is particularly important for companies considering the language in their employment contracts: it’s no longer clear exactly how broadly or narrowly the phrase “at any time during my employment” should be interpreted.
In re Chippendales USA, Inc., Serial No. 78/666,598 (Fed. Cir. Oct. 1, 2010)
Opinion
The United States Court for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s refusal to register Chippendales abbreviated tuxedo costume -- wrist cuffs and a bowtie collar without a shirt -- as inherently distinctive.  The court looked to the use of the Playboy bunny suit, including cuffs and a collar, as substantial evidence supporting the Board’s factual 
determination that Chippendales’ Cuffs & Collar mark is not inherently distinctive.  This case is important in helping define the boundaries for which businesses can apply for trade dress protection for costumes.
Righthaven v. Realty One Group, 2:10-cv-1036-LRH-PAL (D. Nev. Oct. 18, 2010)
Opinion
The District Court of Nevada granted defendant Michael Nelson’s motion to dismiss, ruling that Nelson’s use of copyrighted materials on a blog falls within the Fair Use doctrine. Nelson displayed an unauthorized copy of a news story entitled “Program may level housing sale odds” which was originally published in the Las Vegas Review Journal.  Although Righthaven obtained a transfer of rights for the article from the Review Journal, the court held that when the traditional fair use analysis was applied to the situation, Nelson did not infringe Righthaven’s copyright as a matter of law.  The proliferation of the Righthaven lawsuits is notable because the campaign echoes the attempts by the music industry to aggressively enforce copyrights via the courts.

Capitol Records Inc. v. Thomas-Rasset, No. 06-1497*

680 F.Supp.2d 1045 (D. Minn. Jan. 22, 2010)

Overview: In January, U.S. District Court Chief Judge Michael Davis for the District of Minnesota remitted a 2009 jury award of statutory damages totaling $1.92 million against defendant Jammie Thomas-Rasset by 97% to $54,000.  This damages award arose from claims that Thomas-Rasset willfully infringed plaintiffs’ copyrights by downloading 24 songs using the Kazaa peer-to-peer network.  Judge Davis held that although Plaintiffs highlight valid reasons that Thomas‐Rasset should pay a statutory damages award, the Judge ruled that these facts simply could not justify a $2 million verdict in this case.  He further opined that although this new award was still three times the statutory minimum, this reduced award remains “significant and harsh” and should sufficiently serve both the deterrent and the compensatory purposes of statutory damages.

Judgment in a Civil Case: Civil File No. 06‐1497 (MJD/LIB)

Overview: The plaintiffs rejected the reduced damage award and, instead, asked for a new trial on damages.  On November 4, the jury returned a verdict awarding statutory damages in the amount of $62,500 for each of 24 songs for a total amount of $1.5 million.  

Takeaways: P2P file-sharing cases are having a profound impact on the future of copyright as applied to individual users of online platforms.  Judges in at least two jurisdictions have changed the jury awards -- both citing them unconscionable -- potentially leading to not only a split in future appeals but also calls for legislation from all sides.

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