This Tuesday, members of DLA Piper's Fashion, Retail and Design Group assembled in Washington with retail clients from around the globe, for a working lunch entitled "Around the retail world in sixty minutes: Reflecting the top branding issues for retailers in 2012". As well as being a fantastic opportunity to catch up with industry peers, the event was a fascinating insight into topical issues and concerns.

Following welcomes from Ann Ford (Chair of the US Trademark, Copyright and Media Practice) and Ruth Hoy (Co-Chair of the Fashion, Retail and Design Group), we were taken on a whistlestop global tour, stopping along the way at: the Ninth Circuit's findings on copyright misuse in Omega v Costco (Gina Durham, Chicago), new advantages for brand owners entering the Italian franchising market (Giangiacomo Olivi, Milan), options for businesses using a designer's name as their brand (Ruth Hoy, London), recent decisions of the French supreme court in the context of proving use of a trade mark (Karine Disdier-Mikus, Paris), the approach of the Federal German Patent Court to the protection of fashion ornamentation (Saskia Lais, Cologne), possibilities for protecting retail store formats (Edward Chatterton, Hong Kong) and anti-counterfeiting strategies in China (Yan Zhao, Shanghai).

The event was hosted by DLA Piper as part of the International Trademark Association (INTA) Annual General Meeting in Washington.  To coincide with INTA, the Fashion, Retail and Design Group has published a special edition of Law à la Mode, our quarterly legal magazine distributed to our industry clients and friends all over the world.  Click here to read the magazine.  If you have thoughts or comments, please contact us on fashion@dlapiper.com. 

The list is based on research from among clients and peers and will be published in The International Who's Who of Trademark Lawyers 2012 in June.

If you receive one of these false notifications, immediately take the following steps:

1. Verify whether it is an official government notice – all official correspondence comes from the “United States Patent and Trademark Office” in Alexandria, Virginia and/or from the domain name “@uspto.gov”. If you have any doubts about the authenticity of the notice, contact your trademark counsel at DLA Piper immediately.

2. Report the false notifications to the USPTO by emailing TMfeedback@uspto.gov, and include: (1) a copy of the notification(s) (along with the envelope, if available); (2) whether you thought the notification was an official U.S. government communication or had to ask a third party such as an attorney or the USPTO to verify; and (3) whether fees were mistakenly paid and the services paid for (if so, include a copy of the cancelled check).

3. File an online consumer compliant with the Federal Trade Commission (“FTC”) at https://www.ftccomplaintassistant.gov/.

DON’T BE FOOLED INTO PAYING UNNECESSARY FEES.

For more information, visit the USPTO website at http://www/uspto.gov/trademarks/solicitation_warnings.jsp or contact Ann Ford at ann.ford@dlapiper.com.

World Intellectual Property Organization (WIPO) Director General Francis Gurry said the day “is an opportunity to celebrate the contribution that intellectual property makes to innovation and cultural creation – and the immense good that these two social phenomena bring to the world.” WIPO posted a number of suggestions for celebrating World IP Day. This year’s theme is “visionary innovators – people whose innovations transform our lives.”

What are you doing to celebrate World IP Day?

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

Copyright 2012 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com

By Amy E. Bivins

The Internet Corporation for Assigned Names and Numbers will not publicize who has applied for new generic top-level domain names until at least April 30, starting the clock on the public comment and objection processes, but legal disputes among rumored applicants are already beginning to surface.

At least one lawsuit has been filed by a new gTLD applicant, who claims that a pair of rivals infringe its “.ECO” mark. The applicant has urged the U.S. District Court for the Central District of California to step in and prevent their applications from moving forward (Planet.Eco LLC v. Big Room Inc., C.D. Cal., No. 12-1812, complaint filed 3/2/12).

The plaintiff, Planet.Eco LLC, a Connecticut company, obtained rights to the “.ECO” mark in November, 2009. It seeks an order requiring the defendants to refrain from filing any further application documentation for their proposed .eco gTLDs, and to withdraw from ICANN's online application interface. It also requested a ruling that its .ECO mark is valid.

Gina L. Durham, a partner with DLA Piper LLP in Chicago, told BNA that lawsuits like this one could throw a wrench into the gTLD application approval process.

“While disputes relating to applications for new gTLDs will be subject to the dispute resolution proceedings set forth in ICANN's Applicant Guidebook, there is an opportunity for a court action to impact the process,” Durham said.

“In the event of a legal proceeding initiated prior to or during an ICANN dispute resolution proceeding, the Panel appointed to decide the domain dispute matter has discretion to decide whether to suspend or terminate the dispute resolution proceeding in light of the court action,” Durham added.

Even if a gTLD dispute resolution proceeding is not formally suspended or terminated in light of a court proceeding, equitable relief ordered by a court could have a practical impact on how the new gTLD applicant might be able to commercialize the extension, Durham said.

“For example, if the court in the .Eco case were to enjoin certain activities, the party subject to the injunction would have to comply with those injunctive terms regardless of whether it is awarded a gTLD.”

As a result, rights holders might consider filing a lawsuit in addition to initiating objection proceedings if a new gTLD application infringes their marks, Durham said.

Can gTLD Strings Gain Trademark Protection?

The U.S. Patent and Trademark Office has rejected trademark applications for gTLD related marks, such as .music, as being merely descriptive of domain name registration services (16 ECLR 1956, 12/7/11).

Nonetheless, in the weeks leading up to the April 12 deadline for new gTLD applications, more .generic trademark applications have been filed that appear to be linked to new gTLDs, including a March 27 application for .SECURITY, a March 23 application for .SHOP, and a February application for .SAFE.

With respect to the possibility of seeking trademark protection for a proposed string, Durham said the issue presents a bit of a “catch-22” for applicants. “If a company's true position is that a term is generic, then, in theory, it cannot be a trademark too,” Durham said.

“In terms of strategy for the gTLD applicant, whether to pursue trademark rights will likely be a case-by-case analysis in terms of whether that .gTLD may actually be appropriate for trademark protection, and what the long term business position will be with respect to the registry operating under the gTLD.”

One of the defendants in the .ECO litigation, Doteco LLC, argued in its March 22 answer and counterclaim that the court should cancel the plaintiff's mark.

ICANN has processes in place to resolve new gTLD application disputes, and as a matter of public policy those processes should be followed, Doteco contended. It also argued that the .eco mark is generic, and that the plaintiff fraudulently registered it.

Plaintiff Planet.Eco LLC is represented by Michael L. Rodenbaugh, Erin Dennis Vivion, Rodenbaugh Law, San Francisco; and Jonathan Matkowsky, Matkowsky Law PC, New York.

Defendant Doteco LLC is represented by Tamany Vinson Bentz (Los Angeles), and Janet F. Satterthwaite (Washington, D.C.), Venable LLP.

Canadian-based defendant Big Room Inc. (which filed a March 26 motion to dismiss for lack of personal jurisdiction), is represented by Samir C. Jain (Washington, D.C.) and Bethany Stevens (Los Angeles), Wilmer Cutler Pickering Hale and Dorr LLP.

Reposted from YouTube

Mark Radcliffe, a partner at DLA Piper, talks with Bloomberg Law's Spencer Mazyck about protecting intellectual property for technology start-ups.

(Source: Bloomberg)

Repost from Reuters

Thu Apr 5, 2012 3:48pm EDT

(Reuters) - A U.S. appeals court dealt Google Inc a major defeat by reviving lawsuits by Viacom Inc, the English Premier League and various other media companies over the use of copyrighted videos on Google's YouTube service without permission.

The 2nd U.S. Circuit Court of Appeals on Thursday reversed a June 2010 lower court ruling in favor of YouTube, which had been considered a landmark in setting guidelines for websites to use content uploaded by users.

"It's hard to characterize this as anything other than a loss for Google, and potentially a significant one," said Eric Goldman, director of the High Tech Law Institute at Santa Clara University School of Law. "It has given new life to a case that Google thought was dead."

The $1 billion lawsuit filed by Viacom in 2007 to stop the posting of clips from "The Daily Show with Jon Stewart," "South Park," "SpongeBob SquarePants" and other programs addressed a crucial issue for media companies: how to win Internet viewers without ceding control of TV shows, movies and music.

It was seen as a test of the Digital Millennium Copyright Act, a 1998 federal law making it illegal to produce technology to circumvent anti-piracy measures, and limiting liability of online service providers for copyright infringement by users.

In his June 2010 ruling, U.S. District Judge Louis Stanton in Manhattan said YouTube could not be liable simply for having a "general awareness" that videos might be posted illegally, and that it need not monitor for such activity.

But writing for a two-judge panel of the 2nd Circuit, Judge Jose Cabranes concluded that "a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website."

The plaintiffs had accused YouTube of broadcasting about 79,000 copyrighted videos on its website between 2005 and 2008.

ADVERSARIES, AND PARTNERS

A YouTube spokeswoman said in an e-mailed statement: "All that is left of the Viacom lawsuit that began as a wholesale attack on YouTube is a dispute over a tiny percentage of videos long ago removed from YouTube. Nothing in this decision impacts the way YouTube is operating."

Viacom, in a statement, said the appeals court "delivered a definitive, common sense message to YouTube: intentionally ignoring theft is not protected by the law."

Other plaintiffs also welcomed the decision.

"Needless to say, my clients are delighted," said Charles Sims, a lawyer for the Premier League, the English soccer league, and several other plaintiffs. "YouTube willfully blinded itself to specific infringement and had ample ability to control infringing activity within the meaning of the copyright law."

Dozens of content providers filed so-called friend-of-the-court briefs supporting the plaintiffs, including the Associated Press, Gannett Co, the National Football League, and the musical acts Garth Brooks, Sting and the Eagles.

Google and YouTube also attracted dozens of supporters in court papers, including eBay Inc, Facebook Inc, Yahoo Inc, Human Rights Watch and Consumers Union.

New York-based Viacom is controlled by Sumner Redstone and owns cable networks such as MTV and Comedy Central as well as the Paramount movie studio.

Google is based in Mountain View, California, and bought YouTube in November 2006 for about $1.65 billion.

Viacom and Google are not always adversaries. On Wednesday, YouTube announced a partnership to offer online rentals of nearly 500 Paramount films, such as "The Godfather.

"WHAT? SOMEONE FROM CNN SEES IT?"

The 2nd Circuit agreed with Stanton that "actual knowledge or awareness of facts or circumstances that indicate specific and identifiable instances of infringement" should keep YouTube from invoking "safe harbor" provisions of the copyright law.

But the appeals court said it was unclear whether YouTube had "red flag awareness" of specific infringement. It said the lower court should consider whether YouTube showed "willful blindness" in letting copyrighted videos remain on its website.

The 2nd Circuit quoted an e-mail exchange on August 9, 2005, six months after YouTube's founding, in which co-founder Chad Hurley urged diligence about removing copyrighted content, but met resistance to taking down a CNN clip of a space shuttle.

"I really don't see what will happen. What? Someone from CNN sees it?" co-founder Steve Chen responded.

"The CNN space shuttle clip, I like," co-founder Jawed Karim added. "We can remove it once we're bigger and better known."

HAIR-TRIGGER

Goldman said the decision could add to the costs of online service providers, even small ones, to keep websites running.

"It is not easy for a well-meaning company to establish it is protected under the safe harbor part of the copyright law, even if its service adds significant social value," he said.

"Even start-up companies will need sophisticated legal counsel from day one," Goldman continued. "It will make start-ups more hair-trigger on taking down news or content, for fear that failure to do so will be held against them by content providers."

The 2nd Circuit normally hears cases in three-judge panels. The third judge on the YouTube case died while the case was pending.

In afternoon trading on the Nasdaq, Google shares fell $2.86 to $632.29, while Viacom rose 81 cents to $47.21.

The cases are Viacom International Inc et al v. YouTube Inc et al, 2nd U.S. Circuit Court of Appeals, No. 10-3270; and The Football Association Premier League Ltd et al v. YouTube Inc in the same court, No. 10-3342.

(Reporting By Jonathan Stempel and Yinka Adegoke in New York; Editing by Gerald E. McCormick, Tim Dobbyn and M.D. Golan)

By Ryan Davis

Law360, New York (March 05, 2012, 10:40 PM ET) -- Law firms that use academic articles in patent applications have little to fear from recent lawsuits alleging the use constitutes copyright infringement, attorneys say.

American Institute of Physics and John Wiley & Sons Inc. sued Schwegman Lundberg & Woessner PA and McDonnell Boehnen Hulbert & Berghoff LLP on Wednesday, alleging that the major patent law firms infringed their copyrights by submitting journal articles to the U.S. Patent and Trademark Office and making copies for internal use.

But the publishers will have an uphill battle in the case, according to Mark Schonfeld of Burns & Levinson LLP, since lawyers are required by the USPTO to submit prior art as part of patent applications, likely making it a legitimate fair use.

“The plaintiffs here will have a tough time making out a case on this claim,” he said.

Whether copies made by the firms for internal use by their attorneys are shielded by the fair use doctrine is not so cut and dry, especially if the firms were making a great number of copies, Schonfeld added. The plaintiffs say in their complaints that the full extent of the firms' copying cannot be known without discovery.

But given that the authors of the academic journal articles in question are not paid for their work, Peter Toren of Weisbrod Matteis & Copley PLLC says the publishers' demands for money for articles used as part of the patent application process are unreasonable.

“It's really kind of a misuse of copyright law to say that someone is entitled to financial gain for something like this. It's just not right,” he said.

The suits were filed weeks after the USPTO issued a memo outlining its position that submissions of copyrighted material as part of the patent application process is protected fair use, although the office said it took no position on whether additional copies of such articles made for clients, other attorneys or the firm's future reference qualifies as fair use.

Bill Dunnegan of Dunnegan & Scileppi LLC, an attorney for the plaintiffs, told Law360 on Thursday that the crux of what the case deals with is the internal copying by the law firms, although the complaints allege that copies submitted to the USPTO infringe as well.

Were the publishers to prevail in this case, it would put a burden on patent lawyers that could be difficult to deal with, according to Andrew Deutsch of DLA Piper.

"It could have a significant impact on what firms do for clients if lawyers were required to stop and get a license for articles in every instance," he said.

Herbert Wamsley, executive director of the Intellectual Property Owners Association, said that if the the suits survive, "we may have to seek a legislative exemption from copyright law for patent prosecutors."

Schonfeld said that the fact that prior art submissions are a required part of the patent application process very much weighs in favor of the law firms, especially given the USPTO's position that such submissions are fair use.

Determining whether an accused infringer engaged in fair use involves consideration of four factors, including the purpose and character of the use and whether it is of a commercial nature.

"If it's prescribed by the government, that seems to be a pretty good defense," Schonfeld said. "The purpose is to comply with a government regulation and the government itself has said it constitutes fair use."

The complaints allege that the copyrighted articles “were used for the commercial benefit of defendants and their clients,” but Toren said he didn't find that position to be very persuasive.

"It could be argued that this is commercial use because you're using it to apply for a patent, but I really think that's a bit of a stretch," he said.

The case seems to present a novel issue in copyright law, according to Deutsch, who said the closest comparison may be to a 1994 Second Circuit decision involving a library of copyrighted scientific articles kept by Texaco for the internal use of its staff scientists. Texaco had subscriptions to the journals, but only a few subscriptions for hundreds of scientists.

The court in that case found that Texaco's use of the article did not constitute fair use because the articles were used for a commercial purpose and hurt the publishers' potential for making money.

The case involving the law firms could play out differently because the copies were made for purposes of USPTO proceedings, which furthers the patent system, not to avoid taking a license, as in the Texaco case, Deutsch says.

The use of copyrighted articles in the course of patent applications could also be considered transformative, one of the factors that weighs in favor of a finding of fair use, he adds. The article is being used to show that an invention was already known, rather than the original purpose of publicizing scientific research.

"Every court is different and fair use is a matter of discretion and balancing," he said. "But I think the courts would consider the submission of a copyrighted article as proof of a fact is transformative and therefore, a fair use."

In addition, the fair use analysis looks at whether the use affects the potential for and value of the copyrighted work, and Schonfeld said it will be difficult for the plaintiffs to show that they've suffered any financial injury by their articles being submitted as part of a patent application.

People have been submitting scientific articles as part of patent applications since the patent system was established by the U.S. Constitution, and it seems unlikely that the publishers will succeed in changing that with their suit, according to Toren.

"This has been going on for hundreds of years," he said. "I can't see that any court is going to give their claims much merit at this point in time."

The plaintiffs are represented in the Schwegman Lundberg suit by Bill Dunnegan of Dunnegan & Scileppi LLC and Timothy J. Pramas and Michelle K. Dove of Manty & Associates PA, and in the McDonnell Boehnen action by Bill Dunnegan of Dunnegan & Scileppi LLC and Annette M. McGarry and Marianne Holzhall of McGarry & McGarry LLC.

Counsel information for the defendants was not immediately available.

The cases are American Institute of Physics et al. v. Schwegman Lundberg & Woessner PA, case number 0:12-cv-00528, in the U.S. District Court for the District of Minnesota, and John Wiley & Sons Ltd. et al. v. McDonnell Boehnen Hulbert & Berghoff LLP, case number 1:12-cv-01446, in the U.S. District Court for the Northern District of Illinois.

--Additional reporting by Zach Winnick. Editing by Andrew Park.

 All Content © 2003-2012, Portfolio Media, Inc.

Reposted from Law360, found at <http://www.law360.com/ip/articles/316139>.

On 20 February 2012 the UK High Court issued a decision relating to the infamous "Pirate Bay" website. The decision provides a useful example to copyright owners of how to combat online piracy, especially where the infringer eludes UK proceedings by operating from abroad. It is the first case where the UK courts have been asked to award injunctions against ISPs in respect of a Peer to Peer network using the popular Bittorrent file sharing protocol (as opposed to other file exchange protocols).

The swashbuckling story to date

The Pirate Bay ("TPB") is a website which originated in Sweden, which enables users to upload, share and download digital content, including music, computer games and software.  The evidence showed that the majority of files shared were copyright-protected. 

TPB has an extremely large number of visitors and registered users, and has been subject to various (civil and criminal) legal proceedings in a number of countries in recent years.

In 2009, the Stockholm district court sentenced each of the four operators of the site to one year in prison and ordered the payment of substantial damages to the claimants.  While their appeals were pending, these four 'pirates' left the country, and are variously rumoured to be now operating the site from Cambodia and the Seychelles. TPB continues to operate, seemingly undeterred by perennial legal action. This case marked the first involvement of the UK courts with TPB.

The skirmish reaches English shores

The Claimants in this action are a number of record companies, including Polymer, Sony, Rough Trade and Warner.

The Defendants are the major UK Internet Service Providers (holding a 94% market share), including BT, Sky, Virgin Media and TalkTalk. No proceedings have been brought against TPB itself or its users in this UK action.

What the claimants seek in this case is an ISP block.  This is a measure under s97A of the Copyright, Designs and Patents Act (“CDPA”), under which ISPs which have actual knowledge of their service being used to infringe copyright may be ordered to block or at least impede access by their customers to sites.

Before considering the case for an ISP block, Mr Justice Arnold was required to determine whether

(1) the users and (2) the operators of TPB were infringing the Claimants' UK copyright in any event.

If not, the question of whether to apply an ISP block would not need to be addressed.

Arnold J concluded that the UK users of TPB were infringing copyright by copying the sound recordings, and by communicating those sound recordings to the public.  As for the operators of TPB, Arnold J held that they had authorised infringements by UK users (authorisation of UK-based infringements amounts to an infringing act in the UK even where the authorising party is located abroad).  Further, the operators were jointly liable for having induced, incited or persuaded TPB users to commit infringements of copyright, acting pursuant to a common design to infringe.

Given the finding of infringement, the next issue for the court is the actual implementation of the ISP block. A trial is due in June 2012 to decide which ISPs will be ordered to block the site, and how such block should be effected. But it is possible that the ISPs (who did not contest this hearing) will agree the form of order with the Claimants.

Further ammunition for copyright holders

This decision is further encouragement to copyright owners in the UK in the wake of the recent Newzbin2 case decided by the same judge, Arnold J (see our previous alert here), in which blocks were obtained against various UK ISPs by the motion picture industry.

While the decision follows existing law, it provides content owners with a useful roadmap for the hurdles that must be cleared to obtain such a block, and of the type and extent of evidence that the UK courts will accept as sufficient to clear those hurdles.

Dramatico Entertainment Ltd & others v British Sky Broadcasting Ltd & others [2012] EWHC 268 (Ch).