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By Tamar Duvdevani

This past Wednesday, April 29, the Eleventh Circuit reversed and remanded an underlying grant of summary judgment by the Northern District of Georgia that invalidated a copyright in a laminate wood flooring design.  In Home Legend, LLC v. Mannington Mills, Inc., defendant and counterclaimant Mannington Mills, Inc. asserted claims of copyright infringement over its “Glazed Maple” laminate flooring, which is designed, as one might expect, to resemble planks of maple wood.  Home Legend, LLC moved for summary judgment, arguing that the asserted copyright is devoid of copyrightable subject matter in light of the fact that the flooring resembles wood as it appears in nature, and that Mannington’s copyright impermissibly attempts to protect a process or idea, for a useful article.  The district court agreed, holding that “Mannington simply attempted to recreate the look of natural, rustic wood in another medium–artwork. Under those circumstances, the Court concludes that Mannington’s 2-D artwork lacks the originality required for copyright protection.”  The district court further held that the copyright was invalid as a useful article, and because Mannington attempted to protect an idea or a process with its copyright (ideas are not protectable under the Copyright Act; only their original expression will qualify for copyright protection).


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By Melinda Upton and Matthew Evans 

The Federal Court has ordered Coles Supermarkets to pay a $2.5 million AUD penalty for making false and misleading claims regarding its bakery range in contravention of section 18 of the Australian Consumer Law (ACL).

Coles promoted its bread products as ‘Freshly Baked In-Store’, ‘Baked Today, Sold Today’, ‘Baked Fresh’ and ‘Freshly Baked’ (claims), when in actuality they were already partially baked and frozen off site, and then baked to completion at Coles Supermarket. The Court heard evidence that the par-baking occurred as far away as Ireland, Denmark and Germany.


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By James Stewart and David Kramer

Following the publication of the article titled .SUCKS: A Questionable Future?, posted on April 13, 2015, the author received an unsolicited email from John Berard, CEO of Vox Populi Registry, Ltd. (“Vox”), the registry responsible for the controversial .SUCKS gTLD, responding to the article.  In an email, Berard shares his perspective on the launch of the .SUCKS registry and the controversy that has ensued.  In particular, Berard notes:

The mission of the Vox Populi Registry is not to just sell names, but to help create a new destination, one where criticism can be heard and engaged.  And, if they arise, errors corrected.  Right now, companies don’t always get the chance to correct the record.  Heck, a lot of what shows up in search results can’t even be run to ground.

From the beginning I have said there is no need (it is certainly not mandatory) for a company to register its dotSucks domainJust be willing to engage.  In 2015 with 20 years’ experience of the Internet as a business platform, I would not have thought this to be so radical an idea.” (emphasis added)


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By James Stewart 

In response to a veritable deluge of concerns from brand owners over the .SUCKS domain name registry’s pricing structure, the Internet Corporation for Assigned Names and Numbers (“ICANN”) sent a letter to the U.S. Federal Trade Commission (“FTC”) and Canada’s Office of Consumer Affairs (“OCA”) on Thursday, April 9, 2015.  ICANN has requested that the FTC and OCA assess the legality of the .SUCKS registry operator, Vox Populi Registry, Ltd.’s (“Vox”) purportedly ”predatory” premium pricing structure for brands.  


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By Tamar Duvdevani

Couch potatoes everywhere have had a chuckle over DirecTV’s campaign featuring Rob Lowe’s “cool” and creepy/awkward/dorky personas, wherein “cool Rob” is equated to DirecTV, and the less fortunate Rob is equated to a competitor.  One example of the campaign is a commercial wherein beloved heartthrob, well dressed, successful Rob Lowe states that he has DirecTV, while mullet-donning, varsity-jacket-clad, “peaked in high school” Rob Lowe states that he has cable.  The commercial, through these personas, make statements promoting DirecTV over cable, with the conclusion from normal Rob: “Don’t’ be like this me, get rid of cable and upgrade to DirecTV.”

Unfortunately for DirecTV, cable companies thought it no laughing matter that some of the commercials made claims that DirecTV users experience “99% signal reliability” and “The industry’s best picture quality and sound,” and that DirecTV is ranked “#1 in customer satisfaction over all cable TV providers,”  “ranked higher than cable for over 10 years,”  and “the undisputed leader in sports which means you can watch all the games you want to.”  Even the “don’t be like this me” tagline raised the ire of cable company Comcast, who, according to the National Advertising Division (NAD), part of the Council of Better Business Bureaus, challenged these claims. 


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By James Stewart

In 2011, the Internet Corporation for Assigned Names and Numbers (“ICANN”) made waves by approving the first adult entertainment industry-specific top-level domain (“TLD”), “.XXX,” administered by the ICM Registry.  At that time, many brand owners sought to protect their trademarks from cybersquatters on the .XXX registry by obtaining .XXX domain name registrations for one or more of their trademarks before the registry opened to the general public during the sunrise period. 

On December 6, 2014, ICANN delegated two new adult entertainment generic top-level domains (“gTLDs”) to the ICM Registry, “.ADULT” and “.PORN.” Brand owners who have registered their trademarks with the Trademark Clearinghouse (“TMCH”) will have the opportunity to block cybersquatters from registering their trademarks on the “.ADULT” and “.PORN” gTLDs during the sunrise period from March 2, 2015-April 1, 2015.  During this sunrise period, only those entities and individuals who have registered trademarks with the TMCH will be able to register domain names on the new .ADULT and .PORN gTLD registries.  


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November 13, 2014 DLA Piper LLP is proud to announce that the International Trademark Association (INTA) honored Mark Feldman with the Volunteer Service Award (VSA) in the Advancement of Committee Objectives category. INTA is a global member-based organization dedicated to supporting trademarks and related intellectual property in order to protect consumers and to promote fair and effective commerce.


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by Stefania Baldazzi

The recent decision of the CJEU in the
Karen Millen case provides important
guidance to fashion designers and
retailers who rely on unregistered
design rights in their designs according
to the Council Regulation (EC)
No. 6/2002 on Community Design.
The CJEU ruled in favor of Karen Millen
in the proceedings, which concerned
sales made by Irish retailer Dunnes
Stores and which were brought
pursuant to the Community Design
Regulation No. 6/2002 (hereinafter
the Regulation).

The recent decision of the CJEU in the Karen Millen case provides important guidance to fashion designers and retailers who rely on unregistered design rights in their designs according to the Council Regulation (EC) No. 6/2002 on Community Design.  The CJEU ruled in favor of Karen Millen in the proceedings, which concerned sales made by Irish retailer Dunnes Stores and which were brought pursuant to the Community Design Regulation No. 6/2002 (hereinafter the Regulation).

Karen Millen started the proceedings for damages in 2007, claiming that some of Dunnes Stores’ products infringed its unregistered designs in a striped shirt (in a blue and a stone brown version) and a black knit top, which had been produced and sold since 2005. Karen Millen also sought an injunction restraining Dunnes from using the designs.


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