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 1989See Slip Opinion.  Under the Berne Convention, signatories agree to treat authors from fellow signatory countries as they would treat their own.  

Continue Reading Retroactive Copyright Protection for Foreign Works Upheld

Reposted from DLA Piper’s Media & Sport Group Bulletin

Editorial Team: Nick FitzpatrickDuncan 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).

Continue Reading Google Books case: Google files motion to dismiss plaintiffs

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: Radiance A. Walters (Washington, DC)

Red-soled stilettos for only $39.99?  French luxury shoe designer Christian Louboutin continues the fight to protect its iconic “Chinese red” soles.  This past August, a U.S. federal district court denied a preliminary injunction against Yves Saint Laurent (YSL) and issued a decision that questioned the validity of Louboutin’s red-sole trademarkOn October 17, 2011, Louboutin’s lawyers appealed that decision to the U.S. Court of Appeals for the Second Circuit.  Shortly thereafter, premier jeweler Tiffany & Co. filed an amicus brief in support of Louboutin, furthering the fight to protect color as a trademark.  The International Trademark Association (INTA) also filed an amicus brief on November 14, 2011 taking the position that the District Court erred in rejecting the U.S. presumption of validity attendant to Louboutin’s federal trademark registration.  Further, INTA argues that the District Court incorrectly construed the Louboutin’s registration as a broad claim to the color red instead of the narrower claim to “lacquered red sole on footwear,” which is what the registration actually covers.  The Court of Appeals is left with the daunting task of determining whether and when color may function as merely a design element versus a source-identifying trademark.  

Continue Reading For the Love of Red . . . Soles The Louboutin – YSL Shoe Saga Continues

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

By Dennis Wieczorek (Chicago), Philip Zeidman (Washington DC) and Tao Xu (Reston) 

The State of Franchising Industry

The United States is the birthplace of both the business model of modern franchising and the legal framework of franchise regulation.  Over the past 5 decades, American consumers have come to rely on franchised businesses in every aspect of their daily lives, including food, lodging, hair salons, automobile service, home care and children’s and senior services.  Franchised businesses consistently outperform comparable non-franchised businesses, creating jobs and economic activity in local communities across the country.  According to a recent study conducted by PricewaterhouseCoopers for the International Franchise Association Educational Foundation, there are over 825,000 franchised businesses in the United States, representing 300 different business sectors.  These franchises employ nearly 18 million Americans, accounting for 1 out of every 8 jobs.  The franchise industry contributes over $2.1 trillion to the U.S. economy, and has grown by 40% over the past decade. 


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.

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


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.


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

Editorial Team: Nick FitzpatrickDuncan Calow and Patrick Mitchell

A New York District court has ruled that MP3tunes, a website which allows users to store online collections of music, is entitled to rely on safeharbours under the US Digital Millennium Copyright Act in respect of certain activities of its users.

Continue Reading US court rules music site is not responsible for investigating copyright infringement by users

Fashion designers and companies can seek to protect their jewelry and other accessory designs through copyright, trademark and/or design patent registrations. Copyrights, trademarks, and patents are separate and independent forms of law and protection; therefore, protection can be obtained in one or all of the three ways discussed in more detail below. 

First, a trademark registration protects jewelry and other accessory designs (“accessory” meaning handbags, belts, watches, hats, etc.) that are inherently distinctive or have acquired distinctiveness/secondary meaning in the marketplace. In other words, the design must function as a source identifier. For example, Gucci holds a U.S. registration (Reg. No. 3238962) covering wallets, purses, handbags, shoulder bags, clutch bags, tote bags and clothing apparel for its distinctive horse bit design pictured below.
Trademark protection, of course, also extends to the product’s name and appearance. The registration process typically takes about one year. 
Second, a copyright registration protects designs that are sufficiently creative and artistic. Copyrightable works include logos, artwork, or design elements that are stitched, imprinted or embossed onto fabric; and ornamental aspects of jewelry, watches, belts, and handbags. For examples, see Registration Nos. VA000111813 (artwork on handbags), VAu000699898 (belt and buckle collection) and VA0001664539 (Marquis Loop Necklace and Earring Set). Aspects that are not copyrightable include style, shape, cut, pattern or material of clothing articles and basic utilitarian aspects of jewelry, watches, belts, handbags and other accessories. On average, the registration process takes about three months to one year. 
Lastly, a design patent registration protects  the overall aesthetic appearance of a design (i.e., the ornamental aspects of jewelry, watches, belts, hats, handbags, rings, etc.). Specifically, the designs must be new and sufficiently different from all prior designs. For example, Louis Vuitton owns a design patent (Patent No. D466,689) for the “ornamental design for a handbag” and Tag Heuer owns a design patent for the “ornamental design for a watch” (Patent No. D413,815). The registration process takes about one to two years.
As a side note, utility patents, which protect how an object operates or functions (meaning, its functional/utilitarian features), usually cannot be used to protect jewelry or accessory designs unless the design includes some type of mechanical improvement. 

Continue Reading Protecting Jewelry and Other Accessory Designs