Re:Marks on Copyright and Trademark

By Carissa Bower

For centuries, the idea that strong intellectual property protection spurs innovation and encourages creativity has been the lynchpin of IP laws, not to mention the mantra of IP lawyers. In The Knockoff Economy, the authors challenge that belief as they explore industries which receive weak, if any, IP protection, yet still manage to innovate and thrive. Authors Kal Raustiala and Christopher Sprigman cover a wide variety of industries including fashion, fonts, cocktails, magic, football, and the financial services industry. Several trends which have allowed creativity to flourish outside the IP framework emerge over the course of the book, including the unique nature of certain industries, trends and fads, social norms, open-source methods, and first-mover advantages. The authors do not argue for a broad change in IP laws, but instead provide a window into how creativity and innovation differ in every industry.

The book begins with the fashion industry, where, the authors argue, copying actually speeds up the creative process. The fashion cycle rewards innovation, and success requires constant reinvention as first-adopters seek out newer designs once a prior design has become mainstream. This same trend can be seen in the culinary world where copying can be an indicator of success. The authors provide the example of the molten chocolate cake which started out in a high-end restaurant and can now be found on the menu of thousands of family restaurants around the world. While the rest of the world is finding ways to prevent copying, the authors show us several industries where imitation truly is the sincerest form of flattery.

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Media outlets have been buzzing over the purported denial of Beyonce and Jay-Z’s BLUE IVY CARTER trademark.  On October 16, 2012, the United States Patent and Trademark Office (“USPTO”) granted a federal registration to Veronica Morales, a Boston-based wedding planner, for the trademark BLUE IVY (U.S. Registration No. 4224833) covering event planning services. Morales, who claims use of the BLUE IVY trademark since 2009, obtained her federal registration before Beyonce and Jay-Z despite filing her federal application one month later.  A number of reporters incorrectly state that Morales’ BLUE IVY registration has derailed any opportunity for Beyonce and Jay-Z to secure rights to, let alone a federal registration for, their BLUE IVY CARTER trademark. Of course, such an assertion demonstrates a clear misunderstanding of the highly specialized and nuanced area of trademark law.

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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

A group of us from our DLA Piper IPT group around the world, including those from Hong Kong, San Diego and Washington, DC are in Beijing, China attending the United States-China Intellectual Property Adjudication Conference. Yesterday, several top Chinese judicial and government leaders joined Gary Locke, U.S. Ambassador to the PRC, Judge Randall Rader, Chief Judge to the U.S. Court of Appeals for the Federal Circuit and David Kappos, Under Secretary of Commerce for IP, Director of the U.S. Patent and Trademark Office to talk about our shared goal of IP enforcement. Key issues will be discussed in the areas of trademark, patent and copyright. The Chinese press came out in force to cover the opening ceremony of the Conference and the judges and commissioners speaking there.

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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Reposted from DLA Piper's Media Intelligence Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

HarperCollins Publishers LLC ("HarperCollins") has filed a law suit against digital publisher Open Road Integrated Media ("Open Road") for copyright infringement in relation to the e-book rights to the children's book, 'Julie of the Wolves' (the "Work").

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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.

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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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.  

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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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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!

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

By: Ann K. Ford, Kiran N. Gore, and Debbie Rosenbaum (New York and Washington DC)

Fashion is an integral part of how consumers construct their personal identities and choose to portray themselves in their everyday lives.  From a societal perspective, we correlate luxury fashion brands with success and exclusiveness.  We notice individuals with red-soled stilettos or LV patterned brown leather purses because we know that while these individuals could have chosen from a variety of options, they chose to identify themselves with expensive emblems of status.  This aura of exclusiveness is the value that luxury brands provide to their consumers: few can have it; the others merely aspire to it.

Social media stands in stark contrast to this image.  Social media platforms are inherently noisy, crowded and easily accessible from a variety of platforms.  This dichotomy begs the question: will using social media tarnish the value of luxury brands by making them too accessible by the masses?

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

By: Michelle Schaefer and Alexandra Marzelli (Washington, DC)

In September,  the U.S. Federal Trade Commission (“FTC”) — the consumer protection agency tasked with regulating U.S. advertising practices for consumer goods — warned companies selling apparel and footwear in the U.S. that all health and fitness claims must be substantiated by competent and reliable scientific evidence.  This warning came from the FTC’s lawsuit against Reebok International Lmtd. (“Reebok”), for alleged deceptive practices related to certain footwear including running sneakers, walking sneakers and flip-flops.  Reebok was charged with making “unsubstantiated claims” that the footwear provides extra tone and strength to key muscle groups (including the buttocks, hamstrings and calves) and strengthens various muscle groups by a certain percentage.  Under the settlement, Reebok agreed to pay $25 million in refunds to consumers.  Reebok has stated that the settlement does not indicate agreement with the FTC’s allegations and it will continue to sell the products at issue, but will market them differently.   

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by Patrick Van Eecke, Cameron Craig and Jim Halpert

Viviane Reding, European Commission Vice-President and Commissioner responsible for justice, fundamental rights and citizenship, has announced the long-awaited Proposal for a new Data Protection Regulation. 

The Proposal, announced December 6, has now entered into inter-service consultation with other Commission Directorates-General, after which the text will be considered by the Parliament and the Council, who may make significant changes. 

The Regulation would repeal the current Data Protection Directive 95/46. It is expected to become law in two to three years. 

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DLA Piper's Fashion Retail Design Group recently published Law a la Mode - Edition 4 Winter 2011, a legal fashion-style magazine that is distributed to clients and friends of the firm worldwide.  Law a la Mode has a revolving editorialship and Edition 4 is the first to be edited by the U.S. offices.

Members of the U.S. editorial board include Ann K. Ford, Gina Durham, Tamar Duvdevani, Kiran N. Gore, Melissa Reinckens, Debbie Rosenbaum, Michelle Schaefer, Radiance A. Walters, and Job Seese (New York, Washington DC, and Chicago).  

The magazine is available here.

We welcome your thoughts and comments on our latest edition.  

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

A coalition led by the BPI, a music industry body representing a coalition of Hollywood film studios, publishers and record companies, has requested that BT and several other UK ISPs block one of the largest illegal filesharing sites in the world.

The request by the BPI represents the first to be made since the landmark Newzbin2 ruling in August 2011 (for details see the August 2011 edition of Media Intelligence here and the November 2011 edition here) which ordered BT to block its internet subscribers' access to the website of Newzbin2, another illegal filesharing service, using BT's "CleanFeed" filtering technology. Along with a written request to BT made earlier this month, the BPI has also requested that Virgin Media, O2, Talk Talk, Orange and Sky voluntarily block access to The Pirate Bay's website. The Pirate Bay has already been subject to blocking actions in several other jurisdictions around the world.

Meanwhile, following the Newzbin2 ruling, the Motion Picture Association (MPA), the organisation responsible for bringing the Newzbin2 case against BT, is now looking for similar blocking action in respect of Newzbin2 to be taken by the UK's other major ISPs. On 9 November, the MPA confirmed that it had written to Virgin Media, Sky and TalkTalk and sparking interest in whether there might be a move towards another formal court order in the coming weeks.

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

by Louis Puts (Brussels)

Online marketplaces such as auction sites are often used as platforms for selling unlawful fashion products. On 12 July, 2011, the CJEU rendered an important decision concerning the unlawful offers of cosmetic products with L'Oréal's trademarks on eBay. For the first time, the decision has clarified the circumstances under which online marketplace operators may be held responsible for unlawful trade-marked products offered for sale on their platform site, under trade-mark law, the E-Commerce and the IP Enforcement Directives.

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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.

The Autumn Edition of Law à la Mode is now available online: click here to view the e-magazine.

With a Belgian editorial team for this edition, we wanted to give a flavour of an up and coming fashion capital in the heart of Europe. With a mix of cultures from Europe and beyond, Belgium is fast becoming a key location for new design and innovation in fashion. More than just moules, frites and beer, we are fortunate enough to have some of the most renowned fashion academies in Antwerp and Brussels generating internationally known designers such as Dries Van Noten, Ann Demeulemeester, Martin Margiela and Olivier Theyskens. 

As Belgium is also the hub of EU policy development and creation, we share with you our thoughts on the trends around policy making - steering you through the agenda and potential activity (page 4).

Sustainability being the buzz word of the moment in relation to product development, we have an insight from our UK team on the interplay between the sustainability debate and the fashion industry (page 5).

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Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Ofcom has cleared Al Jazeera English channel ("Al Jazeera") for its broadcast of "The Palestine Papers" after a complaint of unfair treatment by the Chief Negotiator of the Palestine Liberation Organisation ("PLO").

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Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Internet Service Providers ("ISPs") BT and TalkTalk have been granted permission to appeal against the High Court's April 2011 ruling in their judicial review proceedings in relation to the Digital Economy Act.

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It goes without saying that companies are increasingly using social media to reach new customers and to strengthen relationships with loyal customers.  As you may already know, Google opened its social media platform, Google+, to businesses and brand owners today.  A Google+ profile is similar to a Facebook Fan page, and we want to encourage you to set up an official page to both promote and protect your brand.   You can open your company's Plus page at http://plus.google.com/pages/create.

As always, let us know if you have any questions or if we can be helpful in any way.

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Arsenal have successfully persuaded the Spanish Patent and Trademark Office to force a shop owner in Seville to change the name of her shop from 'Arsenale'.

Arsenal succeeded in demonstrating that the use of the name Arsenale for a hat, shoe and clothes store in Seville constituted a breach of Arsenal's trademark due to the risk of confusion between the two names.

The owner, Alicia Simon, registered the name Arsenale in 2007 and has faced a legal pursuit from the London club ever since. She claims that the name had nothing to do with the club and is in fact a reference to the Italian word given to shipbuilders' yards in medieval Pisa and Venice. Indeed, Ms Simon's assertion of cultural influences are supported by the location of the shop in the Arenal de Sevilla district, where Seville's medieval shipyards were historically located.

Ms Simon has subsequently appealed the decision to a Madrid tribunal.

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

BBC Worldwide's lawyers are suing Berlusconi's Italian television network claiming that broadcaster Mediaset, which is owned by the Italian Prime Minister's family,  has copied the show's format.

The BBC is preparing a joint action with Rai, the Italian public broadcaster, against Mediaset. A BBC-licensed version of Strictly Come Dancing, namely Dancing With The Stars, has been running on Rai for the last six years. However, Mediaset now plan to launch a new, rival show on its Canale 5 channel. The new show, entitled 'Balia!' is said to be based on a South American dance show, 'Bailando Por Un Sueno', which translates as Dancing For A Dream.

Mediaset has denied copying the BBC's format and has put forward key differences between the shows, including the fact that the celebrities in Mediaset's version are partnered with amateur dancers as opposed to professional ones.

Pier Silvio Berlusconi, the Prime Minister's son and deputy chairman of Mediaset, stated, in defence of the show's format, that "the dance talent show is a format that works on commercial television everywhere in the world. We certainly wouldn't claim that the only reality format is Big Brother".

However, a BBC spokesman has expressed the importance of its Dancing With The Stars format: "It has been named as the world's most successful reality TV format and has been licensed to over 35 international broadcasters...it is very important to BBC Worldwide and its international licensees that the format is protected from infringement".

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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Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The UK's Secretary of State for Culture, Media and Sport, has stated that search engines and ISPs should "make life more difficult" for sites breaching copyright laws.

Whilst detailing his vision of a new Communications Act at the Royal Television Society's Cambridge Convention, Culture Secretary Jeremy Hunt, reiterated the Government's support of the Hargreaves proposal to set up a new Digital Copyright Exchange.

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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.

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Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The Advertising Standards Authority's Digital Media Survey 2011 has revealed that the advertising on 95% of websites monitored adhered to the Advertising Code.

As part of the Advertising Standards Authority ("ASA")'s survey, 120 websites were monitored by the ASA Compliance team for a period to 1 March. In addition, the ASA Compliance team contacted the offending website owners and sought an assurance that they would amend their advertising to ensure compliance on a go-forward basis.

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Reposted from Intellectual Property and Technology News, Issue 11, Q3 2011

By Darius C. Gambino and Tiffany Nichols

When companies form legal strategies to protect their IP assets and trade secrets, employment agreements are an essential part of the overall structure. Today’s work force is increasingly specialized, and companies extend across jurisdictions with different laws. In this competitive, potentially litigious environment, companies should consider customizing employment agreements for each position, and in some cases, for each individual employee, especially those in executive and leadership roles.

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From DLA Piper's Media and Sports Group e-newsletter 'Media Intelligence'

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The Competition Commission has given a preliminary ruling that BSkyB's control over subscription pay-TV movie rights is restricting competition.

In a "Provisional findings report" published on 19 August, the Competition Commission has provisionally ruled that Sky's control over the acquisition and distribution of first subscription pay-TV window ("FSPTW", which window typically falls after theatrical release and DVD/EST/TVOD exploitation) movie content on pay TV adversely affects competition between pay-TV retailers.

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Reposted from DLA Piper's Media & Sport Group bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The International Olympic Committee is encouraging athletes competing at the 2012 Games to use social media after issuing guidelines for its use.

The IOC encourages competitors to "post, blog and tweet their experiences" but warns that if rules are broken it can withdraw accreditation, shut down online operations and start legal proceedings for damages. The IOC guidelines also warn against athletes using social media platforms for commercial or advertising purposes and prohibits sharing videos filmed at Olympic venues, although still photographs will be permitted.

The IOC issued the guidelines in order to pre-empt the problems that occurred at the Vancouver Winter Olympics. The IOC said: "Unlike in Vancouver, where the rules were adapted to fit changed circumstances, the rules in force in London have been properly codified."

The IOC recommends that postings, blogs or tweets should be in a first-person, diary-type format and should not be in a journalistic style. Further, all content should "be dignified and in good taste, and not contain vulgar or obscene words or images".

Athletes will not be permitted to use the official Olympic symbol, and any reference to the word "Olympic" must be factual and "not associated with any third party or any third party's products or services".

The guidelines can be viewed on the IOC website here.

By Simon Levine & Catherine Beloff, DLA Piper United Kingdom

Beechwood House Publishing (t/a Binleys) v Guardian Products Limited & another [2011] EWPCC 22 

His Honour Judge Birss QC has handed down a landmark ruling in the Patents County Court, with positive and important implications for the protection and enforcement of sui generis database right. 

The claimant in this case publishes a database called Binleys Database of GP Practices, consisting of the names and addresses of individuals, such as practice nurses and doctors, associated with GP practices.  As is common practice amongst owners of large databases, Binleys 'seeds' the database.  Seeding involves including fictional dummy contacts (in this case, Binley's staff) and unique indicators within a database to enable the owner to monitor whether someone is using its data unlawfully.  Binleys finds out if someone is using data from its database because a letter will be sent to one of its seed addresses.

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Reposted from DLA Piper's Media & Sport Group bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Two advertisements for L'Oreal (UK) Ltd's beauty brands, Lancôme and Maybelline, were ordered to be removed from advertising circulation due to their misleading content (decisions here and here).

The two advertisements, for Lancôme's "Teint Miracle" foundation featuring Julia Roberts and Maybelline's "The Eraser" foundation featuring Christy Turlington, used post-production digital manipulation on the faces of both women.  This was found to heighten the effect both products could actually achieve.

For both advertisements, L'Oreal (UK) Ltd supplied unedited pictures of the women to show that the effect of the digital manipulation was not to mislead but to fulfil the expectations held about the beauty of Roberts and Turlington.  They also provided evidence that supported overall claims for the effects both products would have on the skin.

However, the challenge, brought by the MP Jo Swinson, was upheld. The ASA could "not conclude that the ad image accurately illustrated what effect the product could achieve" and so were misleading and in breach of CAP code 3.1 (Misleading advertising) and 3.11 (Exaggeration). The adverts must not appear again in their current form.

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.

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Reposted from DLA Piper's bulletin from the Media & Sport Group

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Warning logos are to be introduced before songs and music videos on services such as Spotify and YouTube. This follows concerns about the amount of potentially inappropriate music content being too easily available to children online.

The British Phonographic Industry (BPI) is to update its "Parental Advisory" scheme. The scheme, which has been in operation for 15 years, is responsible for its warning symbol on CDs, DVDs and records which feature strong language, sex or violence.

The BPI is to implement a set of guidelines that expand the current scheme and will allow the logo to appear with songs and videos that are available to stream or download on UK digital music services.

According to BPI these sites, which also include Napster and Vevo, do not yet have an acceptably uniform parental guidance system.

The news follows recent Ofcom rulings that various music TV broadcasters have been in breach of the Broadcasting Code rules in relation to pre-watershed broadcasts of certain music videos.