Friday, August 31, 2007

Texas v. Georgia

Not that Georgia, this one. If imitation is the sincerest form of flattery, the Houston Texans football team should be pretty flattered right about now. Here's their logo:

And here's the Georgian Republican Party's logo:

The Texans could use some hard-nosed transcontinentals on the squad. How fast can David Usupashvili learn the playbook? (hat tip Matthew Yglesias)


Tuesday, August 28, 2007

Sub Shop Enforces STEAK BOMB Trademark

The steak bomb -- an artery-clogging mess of shaved steak, melted cheese and other fixings -- is well known to New England sandwich shop patrons. It's apparently not so well known to the USPTO, however, as Derry, New Hampshire, sub shop USA Subs recently managed to secure a federal registration for STEAK BOMB for "sandwiches." And now it's enforcing that mark, sending a cease-and-desist letter to a local competitor in an attempt to keep it from claiming itself as the "home of the steak bomb." The mark owner hasn't yet decided if it will send out similar letters to the hundreds of other shops -- including D'Angelo -- selling the steak bomb.

Edited to add: In the interest of full disclosure, we now represent Great America Subs in this matter.


Monday, August 27, 2007

CCIA and fair use redux

Over at CNet today we find a piece restating the CCIA's stance on the copyright warnings attached to DVDs, sport broadcasts, and so on. I covered this ground at length previously, but it's worth a brief review.

The author, Maura Corbett, is a partner at D.C. public relations firm Qorvis, and a spokesperson for Digital Freedom. In the course of arguing that copyright warnings are "at best misleading, and, at worst, flat-out wrong," Ms. Corbett provides this example:
"Warnings attached to movies, sports broadcasts and other media often provide wildly misleading information about consumer rights under copyright law. For example, warnings on many Universal DVDs state, in part, that 'any unauthorized exhibition, distribution or copying of this film or any part thereof (including soundtrack) is an infringement of the relevant copyright and will subject the infringer to severe civil and criminal penalties.' This statement is simply untrue--the federal copyright statutes specifically allow unauthorized reproduction for criticism, commentary and other purposes."

With all due respect to Ms. Corbett, she's overstating the case. It's important to remember that fair use is an affirmative defense to infringement. An affirmative defense is raised by the defendant in response to the plaintiff's infringement complaint. As Professor Patry puts it, "the defendant says, 'yes I copied, but I get off the hook because my use is transformative, etc.'" Successful application of a fair use defense does not negate the fact that the defendant copied without authorization, nor does it negate the fact that unauthorized copying is, barring the defense (fair use or otherwise), infringement. The hook exists regardless.

As an (admittedly imperfect) analogy, consider speeding. I expect there are many circumstances where a court might find the accused speeder had a valid defense to the charge of speeding -- rushing a pregnant wife to the hospital, let's say. For that matter, a jurisdiction might even include language in the relevant statute specifying the affirmative defenses to a charge of speeding (though I'm not aware of any offhand, hence the imperfection). With that in mind, if I say "exceeding the speed limit is a violation of traffic laws", am I being wildly misleading or flat-out wrong? Certainly not. The existence of such defenses does nothing to change the fact that speeding is a violation of the law. We don't expect speed limit signs to include a laundry list of all possible circumstances in which the law might not be enforced (and if we did, I don't think even the new Clearview font would be helpful), and we shouldn't expect the same from copyright warnings.

I'm open to the CCIA's arguments here. Copyright warnings can certainly be more aggressive than necessary. This isn't a surprise given the general stance of content owners and creators these days. I also understand that the CCIA has attorneys who are going to parse the life out of words like "any" and "will". But let's not mislead the consuming public, who are after all the people the CCIA are trying to protect. Speeding is against the law, unless it's not, and unauthorized use of copyrighted content is infringement, unless it's not.

Copyright warnings tell the consumer "here's the hook, it's very sharp". They shouldn't have to tell the consumer what to do if he bites.


Tuesday, August 21, 2007

NYT on Video Game Legislation

Speaking of video games, today's NY Times offers up a review of recent state government attempts to regulate the sale of video games to minors, all of which have been shot own as unconstitutional.


Game Time for Boston

The Globe has the rundown on the Boston area's steady growth into a haven for video game development. Oddly, there's no mention of Red Sox pitcher Curt Schilling's 38 Studios. I suppose, given the outspoken nature of its founder, it doesn't need the promotional help.

I should take a moment to give shout outs to two of my former colleagues at Cakewalk who've gone on to make their way in the video game field: Scott Haraldsen is a sound designer at long running Massachusetts-based Mad Doc, while Ed Lima is audio director at Gearbox Software in Texas. Two of the best in the business for sure.


Wednesday, August 15, 2007

SEM Report Card on Online Trademark/Brand Abuse

SEM Report Card has an absolutely fantastic post detailing the many flavors of trademark/brand "abuse" online. Some of the cited problems are actionable, others are not, but may be preventable by trademark owners proactively strategizing branding and policing their marks.


Michael Froomkin on the Red Cross/Johnson & Johnson Trademark Suit

Prof. Michael Froomkin has a nice distillation of the Johnson & Johnson trademark infringement action against the Red Cross, including a handy timeline dating back more than a hundred years.

One thing that caught my eye was this quote:

Ironically, J&J’s original claim on the red cross design mark probably stems from a quirk in trademark law: at least before the most recent amendments, trademark law was strictly national. In other words, just because someone held rights to a mark abroad gave them no advantage in claiming rights over that mark here unless they actually used it here. As a result, it was pretty common for Americans to go abroad, see a nice trademark, come home and start an unrelated business using the mark, then win a lawsuit when the original foreign company tried to come into the US market.

Notwithstanding some exceptions, including the Benelux registration and the Community Trade Mark, trademark law is still very much national.

Article 4 of the Paris Convention allows for claims of priority based on foreign trademark filings, so long as the subsequent filings occur within six months of the original filing. But, generally, registering a mark in one country gives the owner no substantive rights in another country.

There are a few court decisions out there where an owner of a foreign trademark has been able to assert those rights in the United States, but this is by no means a settled area. There really is nothing stopping an American from going abroad and poaching a mark as Froomkin describes.

The lesson: Register early and often.


Tuesday, August 14, 2007

An argument against fashion copyright

In The New Republic, Professors Raustiala and Sprigman lay out the case against Senator Schumer's "Design Piracy Prohibition Act." I have no opinion yet on the matter, though I will say this: if passing the Act means we'll know exactly who is responsible for the next horrible trend (shoulder pads are back!), I'm all for it.


Monday, August 13, 2007

ICANN Makes Public Comment Process Easier

ICANN has recently simplified the process for public comment on its proposals. (via Domain Name News)


Foreign Trademark Registration

Unlike in the United States, in most countries the only way to gain trademark rights is to have a registration. During the initial intake for our trademark clients we always ask what their plans are for using their mark on goods, or in connection with services, in foreign countries. Even if there is no plan to expand into these markets right away, it is likely that a registration may still be obtained. This conversation always includes a discussion about priority under the Paris Convention, which allows an applicant to claim a priority date in foreign countries based on the date the original application is filed, provided that the subsequent filing are done within six months of the original filing. I cannot emphasize enough the importance of filing for foreign registrations.

Michael Atkins has a great post regarding a PTO program on anti-counterfeiting and piracy. Michael quotes Susan Anthony, an attorney-advisor in the PTO’s Office of International Relations, whose presentation was included on a CD with handouts for the event. I believe that the quote Michael pulled out is so important that I am reproducing it below.

If you take nothing else away from this presentation, take this away: trademark rights are territorial. That is, trademarks must be protected on a country-by-country basis. We’re spoiled in the United States. We put on our American cap and we think that the world thinks like Americans. We’re spoiled by the fact that registration is not required in the United States. Many of us perhaps are not aware of registration, but we have rights – we are protected in our unregistered marks pursuant to the common law. But that is not so in most of the countries of the world, where a mark must be registered in order to have any rights in that country. Most countries follow a first-to-file rule, which means that protection is granted to the first party who files an application and receives a registration. Again, that is different from the United States, which is a first-to-use country, and there are several other countries – just a handful – that also are first-to-use. … [Y]ou must search and file in each country in which you want trademark protection, in which you wish to sell your goods and services.


Wednesday, August 08, 2007

New Copyright Office Search System

If all goes as planned, the Copyright Office will be introducing a new online search system this month. The Copyright Office is also providing downloadable tutorials for searching. You can find the tutorials on the page linked above.


Electronic Filing Of Copyright Applications Has Arrived (at least for beta testers)

I recently became a beta tester for the Copyright Office's electronic filing program. Yesterday I had the opportunity to file my first online application. First, I would like to thank Cynthia Hutchins at the Copyright Office for providing such fantastic service. Cynthia is my contact for the beta testing program and has been extremely helpful.

I admit I'm spoiled. Doing quite a bit of trademark prosecution I have become very comfortable with the electronic filing systems at the USPTO. The Copyright Office system is not as user friendly as the USPTO system. Although I only had a few problems, the new system is somewhat clunky. Don't get me wrong, this is a very exciting development for anybody who regularly files applications.

The application that I filed was for an unpublished collection of jewelry designs (in the near future there will be a charge for each contents title). It went fairly smoothly, but I'm very glad that I spoke with Cynthia regarding some of the details prior to filing.

I only have two significant complaints.

At the end of the application I was asked if I was going to be uploading the works, or mailing them to the Copyright Office. I selected the upload option. The next page asked if I was ready to check out. No mention of uploading. I thought I missed a page where I should have uploaded the works. I did not want to pay the filing fee only to discover that no works were included with the application. Here's where a call to Cynthia came in. It turns out you have to pay first, and then you are taken back to the form to upload the works. Unfortunately there is no indication of this anywhere in the interface. Very confusing.

I also had a problem printing the "Claim Detail" page after filing. This page contains all the information that was filled out in the application. I did receive two email receipts, one for the application and one for payment, but neither contained a summary of all fields that were filled in. When printing the Claim Detail page, either to hard copy or pdf, the field from the last half of the application all overlapped. I am not ruling out a problem on my end, and I will experiment more.

Overall, I was very pleased. Hopefully the system will receive a full public release in the very near future.

Follow up:

I do want to mention one other interesting part of the online form. An applicant is now able, though not required, to include information regarding a contact for rights and permissions. The goal is clearly to facilitate licensing. We'll have to wait and see to gauge its effectiveness.


Friday, August 03, 2007

CCIA's fair use push

The blog world was all aflutter earlier this week when the Computer and Communications Industry Association - members include Microsoft and Google - announced it had filed a complaint with the FTC alleging that the NFL, MLB, Dreamworks, Harcourt and Penguin are overstating copyright law in the warning notices included in their various properties. For example, the CCIA takes exception to this language from the MLB:
"This copyrighted telecast is presented by authority of the Office of the Commissioner of Baseball. It may not be reproduced or retransmitted in any form, and the accounts and descriptions of this game may not be disseminated, without express written consent."
By contrast, the CCIA praises publisher John Wiley & Sons for its warning:
"No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording, scanning, or otherwise, except as permitted under Section 107 or 108 of the United States Copyright Act, without either the prior written permission of the Publisher, or authorization through payment of the appropriate per-copy fee to the Copyright Clearance Center"
Also cited positively is the warning included in Nimmer On Copyright, which includes the phrase "Permission to copy material exceeding fair use, 17 U.S.C. ß 107, may be licensed for a fee."

In short, the CCIA wants these warnings to include language that tempers the strict prohibitions on unauthorized use by the consumer, preferably by inclusion of some reference to fair use. An admirable goal, I suppose, but how much of a difference would this really make? I expect your average consumer doesn't know what Section 107 or 108 are, or where they are, and even were they to find and read the text of those sections, I imagine they won't be any better informed.

In fact, here's the copyright statement as posted on the CCIA's Defend Fair Use website:
"We recognize that copyright law guarantees that you, as a member of the public, have certain legal rights. You may copy, distribute, prepare derivative works, reproduce, introduce into an electronic retrieval system, perform, and transmit portions of this publication provided that such use constitutes "fair use" under copyright law, or is otherwise permitted by applicable law."

Permission to use our copyrighted works in a manner that exceeds fair use or other uses permitted by law may be obtained or licensed from the Computer & Communications Industry Association, 900 Seventeenth Street NW, Eleventh Floor, Washington DC, 20006."

I like it. It focuses on the positive. But what if I don't know what fair use is? I guess I follow that "fair use" link. And where does that link take me? To a plain text version of Section 107, including historical revision notes. Well heck, now it's perfectly clear!

Fair use is a complicated, fact specific matter. You can break it down into helpful categories - criticism! commentary! education! - but each requires an explanation all its own. And ultimately, it's up to the courts, not the consumer, to decide whether a use falls into one of those categories. Furthermore, as Joe Gratz notes, consumers probably glaze up when they hear or see those warnings and go ahead and do what they want to do anyway.

I would certainly agree that some of the cited warnings overstate their case. But if successful, all this effort will achieve is getting the content owners to admit fair use exists. Without more, the warning might as well say "you can't use this material without our permission, except when you can." Or better yet...
"This copyrighted telecast is presented by authority of the Office of the Commissioner of Baseball. It may not be reproduced or retransmitted in any form, and the accounts and descriptions of this game may not be disseminated, without express written consent, unless such reproduction, retransmission or dissemination is a fair use. We can't define fair use for you here because this warning would then take longer than the game, which already takes long enough thank you very much. Go read Section 107 of the Copyright Act, it explains it all... go ahead, we'll wait... Got it? Okay, so that's what you can do without our permission. Good luck!"
See also Patrick Ross' comments at IPcentral.


Wednesday, August 01, 2007

New Trademark Trial and Appeal Board Rules Published Today

The new TTAB Rules are available here. (via The TTABlog)


Miami Fashion Week Trademark Dispute

There seems to be a battle going on in Florida over use of the mark MIAMI FASHION WEEK.

Beth Sobol, founder of Fashion Week of the Americas, filed a lawsuit last week in U.S. District Court alleging she registered trademarks for the terms ''Miami Fashion Week'' and ''Fashion Week Miami,'' and that two other events, Funkshion Fashion Week Miami and Funkshion Fashion Week Miami Beach, infringe on her trademarks.

It's true that Sobol Fashion Productions, Inc. owns a registration for MIAMI FASHION WEEK. Although the mark is registered, it should be noted that the registration is on the Supplemental Register, and it contains a disclaimer for the words FASHION WEEK. Registrations on the Supplemental Register are afforded almost none of the legal presumtions that registrations on the Principal Register are given.

The article states that Sobol also registered the mark FASHION WEEK MIAMI. But it appears that her company only has a pending application for federal registration. That being said, Sobol's company may have state registrations.

Ms. Sobol's nemesis is also trying to get his foot in the door at the PTO.