Re:Marks on Copyright and Trademark

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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By Edward Chatterton and Ann Cheung

After two decades on the basketball court, Michael Jordan, one the greatest basketball players of all time, is currently learning the rules of defence and offence in a different game: the Chinese legal system. Qiaodan Sports Company Limited ("Qiaodan Sports"), a Chinese sportswear company, are throwing their legal dispute with him back into his court.

Michael Jordan's fame in China is long-standing. He was first seen on Chinese television playing for the 1984 gold medal-winning US basketball team at the Los Angeles Olympics. Since then, he has become hugely famous in China, both under his English name but also under his Chinese name "乔丹" which is the Chinese equivalent of the name "Jordan". This Chinese name is shown in pinyin, the official system which is used to transcribe Chinese characters into Latin script, as "Qiaodan". Whilst Michael Jordan registered trademarks for "Jordan" in English in China as far back as 1993, he never applied for any registered trademarks for "乔丹" nor for the pinyin representation "Qiaodan".

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Repost from E-Commerce and Privacy Alert

By Scott W. Pink

On March 12, 2013, the Federal Trade Commission issued its long-awaited update to its 2000 guidance on disclosures in online marketing and advertising.

The guidance, entitled .com Disclosures: How to Make Effective Disclosures in Digital Advertising, not only reaffirms many of the FTC’s longstanding principles for effective online disclosures, but also provides guidance as to how those principles will be applied to new technologies that have emerged since 2000, such as mobile phones and tablets with more limited space, banner ads and multimedia messaging, and social media platforms such as Facebook and Twitter.

The FTC has broad powers under Section 5 of the FTC Act to protect consumers from “unfair and deceptive acts or practices.”i Under the FTC Act, the FTC has long required effective disclosures for claims that would otherwise be deceptive or misleading without them. .com Disclosures is designed to help businesses comply with the FTC Act by providing examples and direction on how to avoid unfair and deceptive practices through appropriate disclosures in their online and mobile marketing.

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By David M. Kramer

The Trademark Clearinghouse, one of the key rights protection mechanisms included in ICANN’s new gTLD program, will be launching on March 26, 2013.  As the name implies, the Trademark Clearinghouse is a centralized database containing trademark data submitted by brand owners.  It is critical that brand owners submit this trademark data prior to the launch of new gTLDs, which may occur as early as April 23, 2013.

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DLA Piper plans to officially launch its new office in Seoul today. With this opening, DLA Piper will expand its strategic presence to 16 of the G20 economies.

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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.

The National Asian Pacific American Bar Association (“NAPABA”) held its 24th Annual NAPABA Convention in Washington, DC from November 15 to November 18, 2012 at the JW Marriott, Washington, DC. Since its inception in 1988, NAPABA has been the national association of Asian Pacific American attorneys, judges, law professors, and law students and also the forefront of activities in the areas of civil rights reform, combating anti-immigrant sentiment and hate crimes, increasing the diversity of the federal and state judiciaries, and professional development of Asian Pacific American lawyers.

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By Kathryn Purcell-Hennessy (Brisbane, Australia)

Introduction

Internet use in Australia is widespread, with the Australian Bureau of Statistics reporting that in 2010-11 (the latest figures available), more than 50% of Australians aged between 15 and 34 created online content and downloaded videos, movies or music. More than 68% of Australians in those age brackets listened to music or watched videos or movies online and over 75% used the Internet for social media and online gaming in the same period. The Internet hosts increasing volumes of user-generated content, and encourages use of copyright materials in emerging ways, which may infringe copyright.

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This past weekend, over 200 DLA Piper attorneys traveled to Schaumburg, Illinois for the Intellectual Property & Technology (IPT) Practice Group Conference (“Conference”). The Conference’s theme was “Celebration and Commitment.” This three-day event focused on networking across offices, celebrating the achievements of the IPT practice, and committing to goals to expand and improve the IPT practice in 2013.

The Conference consisted of sessions on alternative fee arrangements, business development, diversity and pro bono projects, social media brand building, and team building. Of course, the highlights of the Conference were the very humorous group commercials on the DLA Piper IPT brand and the entertaining Karaoke night. We look forward to next year’s Conference!

By Tom Zutic

Members of our DC Trademark Group, Tom Zutic, Eunice Chung, Greg Esau and Maria Updegrove, met with Kosuke Takahashi, a researcher from the Institute of Intellectual Property (IIP) based in Tokyo.  The IIP was commissioned by the Japanese Patent and Trademark Office to conduct research on how to encourage trademark filing into Japan via the Madrid Protocol.  Our team shared feedback, based on its extensive experience using the Madrid Protocol system, as well as the JPO itself, on how to make the system and process more user-friendly.

A bulletin from the Media & Sport Group at DLA Piper

GAMING & BETTING

Betfair files complaint with the EC over newly passed Cypriot laws that ban betting exchanges

This legal action challenges the Cypriot legislature’s unanimous move to prohibit betting exchanges and online casino games.

Betfair, the leading online betting exchange, filed a formal complaint with the European Commission (Commission) on 10 September 2012 in relation to recently passed Cypriot gambling legislation. This new legislation was passed in July of this year, the most fundamental feature of which is the prohibition of online casino (including poker) and betting exchanges. Therefore, only sports betting (other than exchanges) are permitted.

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By Sandra S. Pedersen

The Council for Responsible Nutrition this week released a searchable database of every National Advertising Division decision since 2007 involving advertising for dietary supplements. The database includes the decision date, challenger, advertiser, product, category of supplement, type of claim, examples of the challenged claims, and referral status. There are 140 cases included in the database, 13 of which were referred to a government agency for enforcement. The database does not otherwise include the outcome of the case, which can be obtained through subscription access to the online archive.

This helpful tool is available to the public on the Council for Responsible Nutrition's website.

Companies are becoming increasingly innovative in promoting and conducting contests and sweepstakes via social media sites such as Facebook, Twitter, Pinterest, and Instagram.  However, companies engaging in social media contests or sweepstakes must ensure that their promotions are in compliance with federal and states laws as well as the specific platform guidelines, and be particularly careful not to inadvertently organize their promotions as an illegal lottery.  Avoiding the creation of an illegal lottery is one of the biggest challenges of organizing a social media promotion.

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The Wall Street Journal featured an interesting article on a company which has been asserting trademark rights in the design of Michigan State highway signs.

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Reposted from Intellectual Property Magazine, July 12, 2012

This article discusses the increasingly important role of social media in trademark enforcement efforts, and provides effective tips and strategies for corporate counsel to create a solid, value-driven enforcement strategy and avoid the "trademark bully" label. 

Read here: Social Media and Trademark Bullying

By John Wilks and Damian Herrington, DLA Piper UK

The Internet Corporation for Assigned Names and Numbers (ICANN) has just announced that the target "Reveal Day" for its new generic Top Level Domain ("gTLD") program - the day when the list of gTLDs that have been applied for is announced - will be 13 June 2012. This date will be eagerly awaited by brandowners, both those who have applied to register their brands as gTLDs (and will want to see whether anyone has applied for similar domains which may be in competition with their application), and those who may wish to object to a gTLD application which is confusingly similar to their brand.

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Beijing Friendship Hotel, along with Beijing's Renmin University of China, hosted the United States-China Intellectual Property Adjudication Conference. Ann Ford (Washington, DC), along with other DLA Piper partners including Yan Zhao (Shanghai), Ed Chatterton (Hong Kong), and Beni Surpin (San Diego) attended the Conference. DLA Piper Partner and IPT leader John Allcock moderated a key session on "Enforcement of Patent Judgments."

Reposted from IPT Italy Blog 

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.

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By Kate Hodgkiss, Adam Hartley and Vinita Arora

The use of social media is now common place the corporate world, but are organisations protecting themselves by ensuring the relevant policies and procedures are in place? 

Social media connects millions of people across the world every day and has become an important way for people to communicate. It is now an integral part of the way we live and increasingly affects the way we work and do business. 

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DLA Piper hosted the 2011 Women in IP Law Luncheon on September 22, 2011 at the Four Seasons Hotel in Palo Alto, California.  Over 250 women registered for the event, which drew lawyers practicing throughout Silicon Valley and from many other parts of the country.  The event kicked off with time for in-house and firm attorneys, law students and other guests interested in intellectual property to mingle and compare notes.  After brief introductions, participants were treated to an informative discussion titled "Winds of Change in IP" over lunch.

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Ciao to Chiara Garofoli, our DLA Piper colleague from Milan, Italy who is going off to work for Google, Milan.  Chiara was a founding and active editorial member of our fashion law publication, Law a la Mode, and an editorial member of this Blog.  Best of luck at Google, Chiara!

A well-deserved recognition for our colleague!

Reposted from INTA Bulletin: August 1, 2011  Vol. 66  No. 14 

How many IP attorneys do you know who own a personal registered trademark? Mark Feldman is one. Remaining true to his name and his profession, he owns MARK IS MY NAME AND MARKS ARE MY GAME. Also hitting the mark is the personalized license plate on his car: CIRCLE R. 

Despite the puns and fun, trademarks are serious business for the chair of DLA Piper LLP’s intellectual property practice in Chicago. Being in a large general practice firm, Mark gets queried on the broadest possible range of IP issues, consulting with partners and associates and counseling corporate clients “on their myriad issues du jour.” He also teaches IP basics to general practice lawyers to help them recognize the full scope of issues facing clients. In Mark’s words, “I have the greatest job in the world if you have a short attention span!” 

Active in INTA for nearly 30 years, Mark recognizes important industry trends, including increasing use of trademarks in search engines and throughout cyberspace. “Courts and statutes must deal with what constitutes ‘use’ of a trademark, and they are still in the early stages of wrestling with these concepts.” Mark says that “so far, the court decisions have been very favorable for the Internet industry. It will be interesting to see if the pendulum swings back to give greater respect to the traditional rights of brand owners to control the use of their marks.” 

In Mark’s opinion, while the world seems to be getting smaller, the opposite is true in the trademark realm. “As more countries are formed, trademark owners have additional places to protect their marks.” He advocates simplification, with more countries joining the Madrid Protocol and eliminating such formalities as legalization. 

Very active on INTA’s Saul Lefkowitz Moot Court Committee since 1995—most recently as the coordinator of all regions for the national law student competition— Mark loves introducing the next generation of trademark attorneys to this area of law. 

As for his favorite trademarks, Mark remains sweet on NUTRASWEET because he was “there for its birth and it’s become a casebook study on how to develop and implement a branded ingredient strategy.” 

When not working, Mark spends time with his “most important copyright client”—his wife, who runs a nonprofit that produces films—and his two daughters, his son-in-law and his one-year-old granddaughter.

Posted by Alexander Tsoutsanis, senior associate with DLA Piper in Amsterdam.

On Monday 23rd May, Alexander Tsoutsanis spoke at Stanford during the Stanford Intellectual Property Seminar for IP Judges from the People's Republic of China. Alexander was a panelist speaking about recent developments in Europe on the protection of well-known marks. Apart from explaining the European approach on determining blurring, tarnishment and free-riding associated with well-known marks, Alexander also discussed the general impact of the recent decision of the European Court of Justice in DHL v. Chronopost of 12 april 2011. This decision about Community Trade Marks basically obliges European courts to limit a cross-border injuction to (only) those jurisdictions where the functions of the plaintiff's mark are harmed (and e.g. confusion in the market place occurs). This ruling may therefore require brand owners to revise their litigation strategy in cross-border trade mark injunctions in the European market. The panel session was part of a week-long visit of Chinese IP Judges to Stanford, in which leading scholars and legal counsels explained the current developments and best practices in protecting Intellectual Property.

Alexander is a senior associate with DLA Piper in Amsterdam and also a part-time assistant professor in Intellectual Property Law at Leiden Law School.

When I travel, I often send pictures to my team to keep them updated on what I'm up to.  I thought it would be fun to share my time here at INTA with Re:Marks Blog too.

INTA-attendees: be forewarned! Registration can be dangerous.  Tom cuts finger trying to jam name tag into badge holder - then nearly gets strangled by lanyard.

Gorgeous event here at INTA: Gowlings brunch at another legendary American spot.

The clouds have parted here in San Francisco where we're meeting for the International Trademark Association -- and the sun has come out after several days of rain and cold. Curiously at the top of the hill in Chinatown, there is a building that has the word "Trade Mark" prominently affixed to it. Does anyone know why this is?

Larry Flynt, one of the standard bearers of the First Amendment showed up at a photo shoot at the Four Seasons San Francisco when we were there meeting folks at INTA. 

One of the best annual dinners at INTA is the Indian fete put on by the Indian IP firm of K&S Partners. Here is the formidable Jyoti Sagar. I sat at his table and trademark lawyers from around the world, such as Germany and UK were discussing geographic indications and Darjeeling tea -- which K&S gave out to their guests as parting gifts in fancy gift bags. 

Our legislative subcommittee had an interesting meeting at INTA earlier this week. The group engaged in a lively discussion on the Protect IP Bill that was introduced into the Senate last week. More on this bill later... Here's a picture of key members of our subcommittee.  

Last night, a group of nearly 50 DLA Piper Intellectual Property attorneys from around the world got together.  As a global firm, we never feel far apart, but there is something special about the opportunity we get once a year to meet face-to-face.