SIGNIFICANT CHANGES INTRODUCED AND PLANNED TO UK IP LEGISLATION

Posted by Radiance W. Harris on May 16, 2013

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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DC Bar's "For the Love of Fashion: Protect Yourself" Event

Posted by Radiance W. Harris on February 08, 2013

Last night, we attended a DC Bar fashion law panel discussion, "For the Love of Fashion: Protect Yourself," at Baker Hostetler in Washington DC. It was a very informative and comprehensive discussion from in-house and outside counsel, including DLA Piper's Lisa Norton, who is Of Counsel in the Patent Prosecution group, on trademark, copyright, and patent protection as well as current hot-button developments in fashion law and anti-counterfeiting.

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The United States issues its long awaited opinion on the Wire Act 1961

Posted by Nick Fitzpatrick on February 13, 2012

Reposted from DLA Piper's Media Intelligence Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The Department of Justice has published a landmark legal opinion that could pave the way for internet gambling in the United States.

On 20 September 2011, the Department of Justice's Office of Legal Counsel reached its decision on whether the proposals by the states of Illinois and New York to use the internet and out-of-state transaction processors to sell lottery tickets to in-state citizens would violate the Wire Act 1961 (the "Wire Act"). The Wire Act prohibits wagering over telecommunications systems that cross state or national borders, therefore preventing use of the internet by states to sell lottery tickets even to adults within their own borders.

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Not SO(PA) Fast: Backing Away From PIPA and SOPA?

Posted by David Kramer on January 20, 2012

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.

UK Government publishes consultation on copyright

Posted by Duncan Calow on January 19, 2012

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The consultation following up recommendations in the Hargreaves Review outlines Government plans to improve copyright laws.

The consultation, which will run for 14 weeks and conclude on 21 March 2012, is in line with the Government's "response" to the Hargreaves Review of Intellectual Property and Growth ("Hargreaves Review") (for more information on the Hargreaves Review please refer to our May 2011 client alert here).

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The OPEN Act: Another Legislative Option to SOPA and PIPA

Posted by David Kramer on January 18, 2012

Undoubtedly today’s widespread Internet protest, which has darkened web sites ranging from Wikipedia to reddit to Flickr, has raised public awareness of the looming legislative and public relations battles associated with the Stop Internet Piracy Act (“SOPA”) and the Protect IP Act (“PIPA”), which are currently under consideration in the House and Senate, respectively. While the debate over the merits of these largely similar bills is still heating up (a vote on PIPA is expected as early as January 24), Congressman Darrell Issa (R) of California has announced plans to introduce competing legislation in the form of the Online Protection and Enforcement of Digital Trade Act (“OPEN Act”).

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Sites on Their SOPA-Boxes: Major Sites Close For Business In Protest Against Pending Legislation

Posted by Ryan Compton on January 18, 2012

As you may have noticed, today some of the most-visited websites on the Internet are blacked out, unavailable, or otherwise focusing on protesting currently-pending legislation in the United States that may impact many businesses and how they operate on the Internet. Specifically, popular sites such as Wikipedia, Craigslist, and BoingBoing are wholly unavailable, and others, such as Google, Wordpress, and Amazon, are prominently featuring commentary on the PROTECT IP Act (PIPA) and the Stop Online Piracy Act (SOPA), which are currently pending in the Senate and House, respectively.

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Google Books case: Google files motion to dismiss plaintiffs

Posted by Nick Fitzpatrick on January 16, 2012

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Google has filed a motion to dismiss the Authors Guild and the American Society of Media Photographers as plaintiffs in the Google Books copyright infringement claim.

The long running US Google books case emerged out of two separate law suits: one filed by the American Authors Guild ("the Authors Guild") on behalf of authors and the other by the Association of American Publishers along with five separate publishers (for more details please see the April 2011 and October 2011 editions of Media Intelligence here and here).

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Whose followers are they, and how much are they worth?

Posted by Debbie Rosenbaum on January 11, 2012

INTELLECTUAL PROPERTY AND TECHNOLOGY ALERT

By Joshua Briones and Patrick S. Park

A judge ruled last week that PhoneDog.com, a web-based community of cell phone information, has properly pled a trade secret and conversion claim arising out of Phonedog’s allegations that it is entitled to certain Twitter followers that a former employee had built up during his four years at the company, where he worked as a blogger. 
 
The case raises at least two questions.  First, who owns a company Twitter account?  Second, how much is a Twitter follower worth?  

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New Global Rules for Digital Interactive Marketing

Posted by Debbie Rosenbaum on January 06, 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: Caroline Olstedt Carlström (Stockholm)

The new digital landscape and its embrace by the corporate world create new challenges for all marketing professionals at a pace that has never before been encountered.  In fact, organisational procedures and legal standards are struggling to keep up.  Few jurisdictions have marketing regulations in place that are up-to-date with the latest digital possibilities.  Social media can be an effective tool for marketing and brand awareness, but it also poses great challenges for marketing professionals navigating new issues. 

On September 15th, the International Chamber of Commerce (ICC) presented its new 2011 Consolidated ICC Code of Advertising and Marketing Communication Practice (the “Code”). The Code raises the standards for consumer protection globally and also includes new online rules.  It is recognised as the gold standard for self-regulation and now offers best practice guidance across all sectors, technologies and platforms and guides marketing professionals as they deal with many of the most challenging topics, such as Online Behavioural Advertising (OBA), marketing in digital interactive media, privacy protection, environmental claims and marketing to children.  

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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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U.S. Fashion Copyright Protection Still in a State of Limbo

Posted by Debbie Rosenbaum on December 28, 2011

By: Job Seese (New York)

Our Spring 2011 issue discussed a pending U.S. legislative bill that would expand copyright protection to fashion designs – something that generally is not available under existing U.S. law.  Known as the Innovative Design Protection and Piracy Prevention Act (IDPPPA), the bill was first introduced in the Senate in August 2010.  However, the bill was never taken up by the full Senate and effectively died at the end of that Congressional session.  Currently, a legislative bill of the same name is pending before the U.S. House of Representatives Subcommittee on Intellectual Property, Competition and the Internet.  

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EMEA's December Trademarks and Design Newsletter

Posted by Debbie Rosenbaum on December 19, 2011

This e-newsletter is written by the DLA Piper Trademarks team. For more information about the articles or the trademark services of DLA Piper, please contact trademarkemea@dlapiper.com.

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NEW CONSUMER RIGHTS DIRECTIVE: 10 COMMANDMENTS FOR ONLINE RETAILERS

Posted by Debbie Rosenbaum on December 05, 2011

Reprinted from La A La Mode, DLA Piper's Fashion, Retail and Design E-zine

by Jean-Louis Kerrels and Julie De Bruyn (Brussels)

On June 23, the European Parliament adopted the Consumer Rights Directive.* Among the changes is a 14 day EU-wide right for consumers to change their mind about their online purchases, as well as new information requirements.

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ON TREND: EU POLICY MAKING IN BRUSSELS

Posted by Debbie Rosenbaum on November 30, 2011

Reprinted from La A La Mode, DLA Piper's Fashion, Retail and Design E-zine

by Emma Greenow (Brussels)
http://www.shutterstock.com/pic.mhtml?id=5228836
http://www.shutterstock.com/pic.mhtml?id=80653660
With what can seem to be an overwhelming increase in the quantity and complexity of EU regulation facing the fashion industry, understanding and taking action in this area can seem as if you are navigating a tangled web of issues and stakeholders.
The recent EU regulatory agenda has included policy reviews in relation to the intellectual property framework, the Digital Agenda, Online Behavioural Advertising, Consumer Rights and redress amongst others. Each of these developments has a direct impact on business activities in the fashion industry in Europe and, for this reason, interaction from rightsholders into the creation of the regulatory framework is essential. 
In recognition of this fact, fashion houses and brands are investing heavily in strategic discussions at EU level in order to directly provide input into many of the forthcoming changes. Through enhanced regularised contact with legislators and the provision of timely and helpful advice, all stakeholders are trying to move towards more workable and less cumbersome regulatory obligations for businesses.
An effective example of the need and value of increased dialogue was shown in the drafting of the recent recommendations for Online Behavioural Advertising, where industry, consumer groups and legislators worked together through dialogue to develop a series of best practice principles which all parties supported.  As a result of this process, the contributors may well have diverted a further regulatory burden for all stakeholders.
Following the changes brought about by the Lisbon Treaty, it is vital for all fashion industry participants to engage and input into all 3 key EU institutions, the European Commission, the European Parliament and the Council of the European Union. 
Legislative advocacy by rightsholders can take many forms - from the traditional methods such as meet and greet sessions with key stakeholders, press releases and local media, to the more sophisticated and targeted advocacy including social media campaigns, video messaging and awareness raising. All methods have definite advantages however it is key to know when to link each method into your activities. 
The face of the regulatory framework for the fashion industry is changing rapidly and this trend is likely to continue into 2012 - what is of key importance is your inclusion and input into these forthcoming discussions.

by Emma Greenow (Brussels)

With what can seem to be an overwhelming increase in the quantity and complexity of EU regulation facing the fashion industry, understanding and taking action in this area can seem as if you are navigating a tangled web of issues and stakeholders.

The recent EU regulatory agenda has included policy reviews in relation to the intellectual property framework, the Digital Agenda, Online Behavioural Advertising, Consumer Rights and redress amongst others. Each of these developments has a direct impact on business activities in the fashion industry in Europe and, for this reason, interaction from rightsholders into the creation of the regulatory framework is essential.

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UK signs agreement on intellectual property and growth with Mexico

Posted by Duncan Calow on November 24, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The UK Intellectual Property Office ("IPO") has signed a landmark agreement with the Mexican Institute of Industrial Property ("IMPI") to improve cooperation between the two nations on issues of copyright, patents, trade marks and designs.
 
The agreement aims to support the growth of UK businesses operating in Mexico and follows recommendations made in the Hargreaves Report that the UK should continue to pursue international interests in intellectual property.
UK Minister for Intellectual Property, Baroness Wilcox, said: "in the midst of a globalised era, it is imperative for Governments to jointly collaborate on common understandings such as innovation. We are certain that this partnership will enrich our IP systems, and will benefit IP stakeholders in both economies".

The UK Intellectual Property Office ("IPO") has signed a landmark agreement with the Mexican Institute of Industrial Property ("IMPI") to improve cooperation between the two nations on issues of copyright, patents, trade marks and designs.

The agreement aims to support the growth of UK businesses operating in Mexico and follows recommendations made in the Hargreaves Report that the UK should continue to pursue international interests in intellectual property.

UK Minister for Intellectual Property, Baroness Wilcox, said: "in the midst of a globalised era, it is imperative for Governments to jointly collaborate on common understandings such as innovation. We are certain that this partnership will enrich our IP systems, and will benefit IP stakeholders in both economies".

FTC Settlement Provides Guidance on Substantiation for Product Health and Fitness Claims

Posted by Scott Pink on November 15, 2011

The Federal Trade Commission (FTC) recently entered a settlement order with Reebok International Ltd. to resolve charges that the company deceptively advertised that its "toning shoes" would provide extra tone and strength to leg and buttock muscles. The settlement arises out of an action the FTC brought in the United States District Court for the Northern District of Ohio alleging the Reebok engaged in deceptive acts or practices and false advertisements in violation of Sections 5(a) and 12 of the FTC Act. Among other things, the FTC took issue with a TV ad in which a fit woman explains to the audience the benefits of the toning shoe, pointing to a chart that showing that the shoes are proven to strengthen hamstrings and calves up to 11 percent and tone the buttocks up to "28 more than regular sneakers, just by walking." The FTC also contended that the use of the word "tone" in the product name was deceptive. The FTC's contention was that these claims were deceptive because they not supported by adequate substantiation.

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FTC Settlement Requires Detailed Disclosures Regarding Use of Flash Cookies

Posted by Scott Pink on November 13, 2011

Cookies have long been a key means for online companies to track a consumer's web browsing activities. Most browsers allow the consumer to block conventional cookies from accessing their computer. To get around this obstacle, marketers have increasingly employed "flash cookies" , which use a different approach for storing a consumers online behavior and are not as easily blocked as conventional cookies. The Federal Trade Commission (FTC) has voiced increasing concern about the use of tools by companies to engage in online behavioral advertising without the consumer's knowledge or consent. This has led to the issuance of self-regulatory guidelines as well as increasing scrutiny of the use of online advertising tools by advertisers.

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IPO signs copyright agreement with Nigerian counterparts

Posted by Duncan Calow on October 28, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The Intellectual Property Office has signed a landmark copyright agreement with its counterparts in Nigeria in an attempt to improve international cooperation on copyright issues between the two nations.

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Performing artists to benefit from copyright extension to 70 years

Posted by Nick Fitzpatrick on October 17, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

EU ministers have adopted a Directive extending the term of protection for performers' copyright from 50 to 70 years.

The Directive, adopted at a meeting of the Council of Ministers on 12 September 2011, amends Directive 2006/116/EC on the term of protection of copyright and certain related rights.  It increases performers' rights in sound recordings and the rights of producers of sound recordings from 50 to 70 years from the date of first lawful publication or communication to the public.

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Australia: Government announces media inquiry

Posted by Debbie Rosenbaum on October 10, 2011

By Nicholas Cole, Special Counsel, DLA Piper Australia

On 14th September 2011, the Australian Minister for Broadband, Communications and the Digital Economy, Senator Stephen Conroy announced an independent inquiry into the Australian media (Media Inquiry).
The Media Inquiry significantly expands the scope of the Government's existing review of the policy and regulatory frameworks that apply to the converged media and communications landscape in Australia (Convergence Review).

On 14th September 2011, the Australian Minister for Broadband, Communications and the Digital Economy, Senator Stephen Conroy announced an independent inquiry into the Australian media (Media Inquiry).

The Media Inquiry significantly expands the scope of the Government's existing review of the policy and regulatory frameworks that apply to the converged media and communications landscape in Australia (Convergence Review).

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Digital Agenda: further action required to safeguard children online

Posted by Nick Fitzpatrick on October 10, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The European Commission has issued a report reviewing how Member States are implementing EU Recommendations ensuring that children can enjoy the digital world confidently and safely, finding that measures taken so far have been insufficient overall.

On 13 September 2011 the Commission adopted a Report, 'Protecting Children in the Digital World', analysing the implementation by Member States of the 1998 and 2006 EU Recommendations on the protection of minors in the digital world.

On 13 September 2011 the Commission adopted a Report, 'Protecting Children in the Digital World', analysing the implementation by Member States of the 1998 and 2006 EU Recommendations on the protection of minors in the digital world.

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US PATENT REFORM: THE NEW "FIRST INVENTOR TO FILE" SYSTEM - WITH A TWIST

Posted by Debbie Rosenbaum on September 16, 2011

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.

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Introducing: INTELLECTUAL PROPERTY AND TECHNOLOGY NEWS - ASIA PACIFIC

Posted by Debbie Rosenbaum on August 31, 2011

Excerpts from DLA Piper's INTELLECTUAL PROPERTY AND TECHNOLOGY NEWS - ASIA PACIFIC | Issue 2, Q2 2011 

 

 

 

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Trademarks as Geographical indications

Posted by Debbie Rosenbaum on August 01, 2011

Guest blog post by Megan A. Cosgrove and Carissa L. Bouwer. Megan and Carissa are summer associates in the Sacramento office of DLA Piper. They attend University of the Pacific, McGeorge School of Law and will graduate in 2012.

Last weekend, we decided to host a wine and cheese party for a small group of friends.  We ran down the list of everything we needed.  Small plates?  Check.  Wine glasses?  Check.  Napkins?  Check.  Those little wine glass charms so people can identify their glasses?  Check check.  Brie?  Check.  Parmesan?  Che…wait…we have a hard white pungent cheese, but I’m not sure that it’s from Parma.  Does it need to be?  And that pastry…we can’t just assume it’s Cornish.  What if it’s not? We’d be liars.  All of our closest friends would find out that our Cornish pastries weren’t from the UK and they would never come back for wine, cheese, and delish appetizers again.

Perhaps this isn’t a conversation you’ve had before a party.  But let’s be honest, our tastes, and our conversations, have changed quite a bit since our college days.  I’m pretty sure I never bothered asking where the beer in that keg came from, but it might be time we ask where our wine, cheese, and other food products come from.  And interestingly enough, the birthplace of many foods and beverages we consume are actually revealed in the name.  And a lot of imposters are going to have to change.

In 2000, the California Legislature agreed with Napa Valley wine producers that the term “Napa” signified quality in wine.  They were concerned that novice wine buyers would be duped into paying more for a lower quality wine if the term “Napa” did not designate that the wine was actually from the well-known grape growing region of California.   As a result, the legislature passed Bus. & Prof. Code § 25241, providing that wine made from grapes grown in other regions could not be branded “Napa wines.”

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ICANN TO CHANGE TOP-LEVEL DOMAIN STRUCTURE - APPLICATION WINDOW OPENS JANUARY 12, 2012

Posted by David Kramer on June 20, 2011

dot com.jpgAt 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. 

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Trademarks Opposition to be finally available in July

Posted by Chiara Garofoli on June 10, 2011

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)

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). 

ICANN approves .XXX Top Level Domain Name

Posted by Debbie Rosenbaum on March 25, 2011

My colleague David Kramer has been blogging about the gTLD process announced by the Internet Corporation for Assigned Names and Numbers (ICANN).  But ICANN is making other waves this month with the approval of .xxx as the "progressive new home for adult entertainment online".

The new domain will be administered, managed, and supported by ICM Registry, which says it is a "completely independent entity with no affiliation, current or historic, with the adult entertainment industry."

The .xxx TLD was first proposed in 2000 by ICM Registry and resubmitted in 2004, but it faced strong opposition from politicians and conservative groups. ICANN’s board of directors ultimately rejected .xxx in 2006, concerned that the TLD might make ICANN responsible for enforcing laws and regulations over Internet porn. However, supporters of the domain brought it back for consideration in 2007 and again in 2010. After many years of debate, on March 18 2011, ICANN's board approved the execution of the registry agreement for the .xxx top level domain.

CM Registry has argued that the .xxx domain is beneficial to the public, because it indicates a clear signal that the domain contains pornography.  Others argue that the creation of a top-level domain for adult-themed sites may not have the impact on internet security some hope.

The domains will be limited to the adult industry, and ICM says adult sites that already own .com TLDs will be able to reserve their .xxx domains early so that they can "protect their brand names and intellectual property rights within .xxx."

Copyrighting Fashion in the United States

Posted by Tom Zutic on February 17, 2011

Copyrighting Fashion Design in the United States

Reprinted from La A La Mode,
DLA Piper's Fashion, Retail and Design E-zine

By Ann Ford and Tom ZuticThumbnail image for law a la mode (c)

While design, patent and trade dress laws have long been used to enforce fashion rights, copyright laws in the United States have thus far been unavailable. Last summer, New York Senator Charles E. Schumer introduced legislation that could change this. In December, the Senate Judiciary Committee passed the Innovative Design Protection and Piracy Prevention Act, or Senate Bill S. 3728 (IDPPPA), and the next step is for the full Senate to vote on it.

The IDPPPA calls for the extension of copyright laws to the fashion industry, a commercial sector that has existed without protection in the United States to date. The legislation is supported by the American Apparel & Footwear Association (AAFA) and the Council of Fashion Designers of America (CFDA). The bill covers apparel, footwear, and accessories such as scarves, belts, and handbags.

The IDPPPA takes a very narrow approach to applying copyright law. First, IDPPPA will provide a three-year term of protection to new and original fashion designs commencing from the time the item is displayed publicly. Second, it will protect only “unique” designs that are truly distinguishable. Third, it will only cover designs created after its enactment, leaving earlier designs in the public domain.

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International Trademark Issues: Winter 2011

Posted by Ann Ford on February 15, 2011

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.

Trademark and design 
newsleTTer

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