On Tuesday, April 2, 2013, Fulbright will be hosting its 62nd presentation in the Fulbright Forum Monthly Web Seminar Series.
This month, the topic is “International Brand Management—How to Protect Your Company's Most Important Asset Worldwide.”
Fulbright IP partner Patrick Gallagher and 3 very experienced and highly regarded in-house trademark lawyers will discuss establishing and maintaining brand value through strong trademark protection.
Also joining the panel will be a highly-esteemed trademark lawyer from the global law firm Norton Rose.
Learn more about the Fulbright Forum: International Brand Management—How to Protect Your Company's Most Important Asset Worldwide.
Register for this one-hour program which will begin at 1:00 pm EDT on April 2, 2013.
Monday, March 25, 2013
Thursday, March 21, 2013
Anonymous Yelp! Reviews Used as Proof of Actual Confusion
by Justin Haddock
In any trademark infringement lawsuit, evidence of actual consumer confusion between two marks can play a key role in a court’s “likelihood of confusion” analysis. This evidence frequently takes the form of a consumer survey demonstrating that certain individuals were in the marketplace, saw the two marks, and believed that they were somehow related.
In You Fit Inc. v. Pleasanton Fitness LLC, the defendant—a former franchisee of the plaintiff’s You Fit fitness clubs—began operating its own line of gyms under the name “FIT U.” You Fit sued for trademark infringement, among other claims, and at trial You Fit provided the following Yelp! review as proof that consumers were actually confused:
I am soo confused. I was a member at Youfit in [Arizona] and when I moved back to [California] I saw this place by my house and thought great my gym is here! When I went into the gym, I realized it was called Fit U. They use the same basic color scheme on their sign and the motto seemed the same. When I asked the girl at the desk, … [she] said her owner created this brand. I said what are you [sic] rates? Seemed very similar to me as when I was a member at Youfit. Very confusing and a big let down.
Overruling the defendant’s hearsay objection, the court noted that “[w]hile these anonymous posts are not conclusive evidence of actual confusion, they are indicative of potential consumer confusion,” and found that the “actual confusion” factor in its “likelihood of confusion” analysis weighed in favor of You Fit. Pleasanton has filed a Notice of Appeal.
This article was prepared by Justin Haddock (jhaddock@fulbright.com and 512 536 3024) of Fulbright’s Intellectual Property and Technology Practice.
Wednesday, March 20, 2013
Supreme Court Holds “First Sale” Doctrine Applies to Grey Market Goods - Resale of Copyrighted Items Made Overseas Not Copyright Infringement
By Laura J. Borst, Rita Weeks and Shelby Knutson
By holding that the first sale doctrine applies to goods manufactured abroad as well as those manufactured in the United States, the Court reversed a Second Circuit decision upholding a jury determination that Petitioner Supap Kirtsaeng was liable for willful copyright infringement and owed publisher John Wiley & Sons $600,000 in damages. See Mar. 19, 2013 Slip Op.
The Story Begins in Thailand
Supap Kirtsaeng, a Thai citizen who attended graduate school in the U.S., asked his friends and family in Thailand to purchase and ship him copies of foreign edition, English-language textbooks, that were less expensive than the U.S. editions. Kirtsaeng subsequently resold the textbooks to students in the U.S. for profit.
U.S. book publisher Wiley assigned the right to publish, print and sell its foreign versions of English-language textbooks abroad to its wholly-owned Asian subsidiary. Each of Wiley’s Asia-manufactured textbooks state that absent permission, the textbooks may not be taken into the United States. In 2008, Wiley sued Kirtsaeng in United States District Court for the Southern District of New York, alleging that Kirtsaeng’s unauthorized importation and resale of the textbooks constituted copyright infringement.
The “first sale” doctrine in copyright law allows the owner of a “lawfully made” copy of a copyrighted work to sell or otherwise dispose of that copy without limitations imposed by the copyright owner. 17 U.S.C. §109(a). For example, once a copy of a copyrighted novel has been lawfully sold or transferred, the buyer has the right to sell or otherwise distribute that particular copy. Section 603(a)(1) of the Copyright Act, however, provides that importation, without the owner’s permission, of a copyrighted work acquired abroad is an act of infringement.
“First Sale” Defense Prohibited
In the district court, Kirtsaeng was prohibited from asserting the “first sale” defense. After the trial, the jury found that Kirtsaeng willfully infringed Wiley’s copyrights and assessed statutory damages of $600,000. The United States Court of Appeals for the Second Circuit affirmed, holding that the “first sale” doctrine only applies to copies of copyrighted works that are “lawfully made under this title,” which it interpreted to mean only copyrighted works manufactured in “territories in which the Copyright Act is law,” i.e., not to works manufactured abroad.
The Supreme Court granted certiorari to resolve the conflict between the Copyright Act’s first sale defense and Section 602(a)(1) of the Copyright Act, which prohibits the importation of a copyrighted work “without the authority of the owner,” as applied to a copy of a copyrighted work that was made and legally acquired abroad and then imported into the United States.
6-3 Opinion Finds No Geographical Limitation
In the 6-3 opinion authored by Justice Breyer, the Court focused on the geographical limitation arguments made by both parties.
Wiley argued that the “first sale” doctrine did not apply because copies can only be “lawfully made under this title” if the copies were made in the United States. Therefore, it argued, the “first sale” doctrine only limits the publisher’s rights to control distribution of copies if the copies are made in the United States.
The textbooks at issue were manufactured in accordance with United States law, Kirtsaeng argued, because Wiley had authorized its subsidiary to manufacture the textbooks, and therefore the “first sale” doctrine permitted him to import and resell the textbooks without Wiley’s permission.
The Court found that Section 109(a) made no mention of geography. See id. at 9. (“neither ‘under’ nor any other word in the phrase means ‘where’”).
Additionally, the Court determined that because the definition of “under” can mean “in accordance with,” Section 109(a)’s “lawfully made under this title” language, when read literally, meant “made in accordance with” or “in compliance with” the Copyright Act. Id.
Moreover, the Court found that that historical and contemporary statutory context indicated that Congress “did not have geography in mind” when writing Section 109(a). Id.
The Court also discussed the “first sale” doctrine’s common law history and the effect of a geographical limitation on specific entities in holding that the “first sale” doctrine applies to goods lawfully manufactured abroad. Specifically, the Court found that the common-law “first sale” doctrine, with its “impeccable historic pedigree” made no geographical distinctions and had played an important role in American copyright law. Id. It also considered examples of how entities, such as libraries, book dealers, technology companies and museums, would be affected by a geographical limitation on the “first sale” doctrine because these entities had long-relied on the “first sale” doctrine when operating their businesses. The Court found that a geographical interpretation of Section 109(a) would “fail to further basic constitutional copyright objectives, in particular ‘promot[ing] the Progress of Science and useful Arts.’” Id. citing U.S. Const., Art. I, §8, cl. 8.
Dissent Warns of Consequences to Publishers
Justice Ginsburg (joined by Justice Kennedy and partially joined by Justice Scalia) authored a forceful dissent, warning of the serious consequences the decision would have for publishers. Ginsburg rejected the Court’s adoption of an “international exhaustion” regime, under which the authorized distribution of a particular copy anywhere in the world exhausts the copyright owner’s distribution right everywhere with respect to that copy. Justice Ginsburg explained in detail that the legislative history of the Copyright Act shows that Congress intended
to provide copyright owners with a remedy against the unauthorized importation of foreign-made copies of their works, even if those copies were made and sold abroad with the copyright owner’s authorization.
Therefore, Justice Ginsburg concluded, the United States should adhere to a national-exhaustion regime, under which a copyright owner’s right to control distribution of a particular copy is exhausted only within the country in which the copy is sold. In that scenario, Kirtsaeng’s unauthorized importation of foreign-made textbooks would have infringed Wiley’s copyrights, Justice Ginsburg explained, and thus she would have affirmed the Second Circuit’s judgment.
Justice Kagan concurred, joined by Justice Alito, and indicated full support for the Court’s application of the first sale doctrine to works manufactured abroad. Justice Kagan also noted that, “[i]f Congress thinks copyright owners need greater power to restrict importation and thus divide markets,” Congress can alter the impact of the decision by legislating to establish a broader importation right.
Sources: Kirtsaeng v. John Wiley & Sons, Inc., Case No. 11-697 (Sup.Ct.)
This article was prepared by Laura J. Borst (lborst@fulbright.com / 612 321 2206), Rita Weeks (rweeks@fulbright.com / 212 318 3213) and Shelby Knutson (sknutson@fulbright.com / 612 321 2207) of Fulbright’s Intellectual Property and Technology Practice.
Monday, March 18, 2013
The Battle For the iPhone Trademark in Brazil
by Mariano De Alba
Apple is battling to obtain the iPhone trademark registration in Brazil, one of the world’s largest economies.
The National Institute of Industrial Property—known as “INPI” in Portugal—recently announced its denial of Apple’s application to register the “iPhone” since a Brazilian company Gradiente Electronica (“GE”), already owns a registration for the mark.
In 2000, seven years before the worldwide launch of Apple’s iPhone, GE applied for registration of the trademark “iphone g gradiente”.
Although the INPI formally granted registration in 2008, GE did not effectively use the trademark until December 2012, when it finally announced the release of the “gradiente iphone,” ensuring registration for itself. Apple appealed the INPI’s decision seeking cancellation of GE’s registration since it did not use the name within a five-year limit.
INPI’s decision, once issued, should not affect iPhone sales in Brazil, since only a court ruling could prohibit Apple’s use of the name.
Even though GE is seeking such court judgment, its chairman, Eugenio Emilio Staub recently declared to Bloomberg: “We’re open to dialogue for anything, anytime…we’re not radicals.” Bloomberg Feb. 5, 2013.
It is noteworthy that Apple had branding problems when it released the first iPhone in 2007, prompting it to sign a deal with Cisco Systems, Inc. Apple also recently paid $60 million to a Taiwanese company to end litigation in China over the iPad trademark.
This article was prepared by Mariano T. De Alba Uribe (Mariano.DeAlba@nortonrose.com and 58 212.276.0764) of Norton Rose’s Antitrust, Competition and Regulatory Practice.
Wednesday, March 6, 2013
Canada Gets Real: Serious Action on Counterfeits and Trade-mark Amendments
Fulbright & Jaworski L.L.P. will join forces with Norton Rose on June 1, 2013, offering significant depth of experience across Africa, Asia, Australia, Canada, Central Asia, Europe, Latin America, the Middle East, and the United States.
By Brian W. Gray
On March 4, the Canadian Government announced the introduction of a bill to amend the Trade-marks and Copyright Act to combat counterfeiting. However, in addition Bill C-56 (Combating Counterfeit Products Act) makes substantial amendments to the Trade-marks Act which will take some time to consider fully.
Bill C-56 – Combating Counterfeit Products
Lax Canadian laws (particularly with respect to border enforcement) had frequently been a subject of criticism among Canada’s trading partners and a number of parliamentary standing committee reports recommended increased power for border officials . In addition, the lack of effective border enforcement had been one reason why Canada had continued to be on the U.S. Trade Representative’s 301 Watch List.According to the Canadian Government’s Press Release, Bill C-56 will:
“. . . reduce trade in counterfeit goods by providing new enforcement tools to strengthen Canada’s existing enforcement regime for counterfeit goods, as well as bolster our existing protections against commercial counterfeiting activities.”
New Combat Powers
Specifically, Bill C-56 will:- give border officers the authority to detain suspected commercial shipments and contact the rights holders;
- allow Canadian businesses to file a request for assistance, with the Canada Border Services Agency (CBSA), in turn, enabling border officers to share information with rights holders regarding suspect shipments;
- provide new criminal offences for the commercial possession, manufacture or trafficking of counterfeit trademark goods;
- provide legitimate owners with new tools to protect their rights and take civil action against infringers;
- create new offences for trademark counterfeiting; and
- provide better tools to investigate commercial counterfeiting.
Bill C-56 Cloudy on Grey Goods
The Bill is somewhat confused about the question of “grey goods.” Certain portions of the Bill seem to allow importation of so-called grey market goods (i.e., where the work was made outside Canada with the consent of the owner of the copyright in the country where the copy was made). These provisions do not seem entirely consistent with other portions of the Bill and further analysis and study is required.
Trade-mark Amendments
Many of the proposed Trade-mark Act amendments do not specifically deal with anti-counterfeiting enforcement. For example, Bill C-56 amends the definition of trade-mark to specifically refer to packaging, colour, shape, sound, scent, hologram or moving images. The Bill proposes amendments to limit the registration of such marks that have not been proven distinctive, or which are dictated “primarily by a utilitarian function.” In addition the definitions of “distinguishing guise” and “wares” have been removed, the definition of certification mark changed and the concept of a “proposed certification mark” introduced for the first time. See Bill C-56.Canadian Trade-mark Expansions
The Canada Government has taken the opportunity to expand significantly the types of trade-marks that can be registered. This follows upon the Trade-marks Office’s own initiative last year to interpret the Act to allow such marks. However, along with the expansion of the types of trade-marks that may be registered, Canada has taken steps to limit more explicitly the registration of trade-marks that are utilitarian or are not distinctive in fact. Many of the amendments make explicit that marks which are “dictated by a utilitarian function” are not registrable and that such registration does not prevent a person from “using any utilitarian feature embodied in the trade-mark.” Such limitations had previously only applied with respect to the now soon to be defunct “distinguishing guise.” In addition, the Federal Court is given explicit power to expunge (cancel) any registration that is “likely to unreasonably limit the development of any art or industry.”Concurrent with this, the Registar will be given expanded powers to require evidence that any trade-mark is distinctive if the trade-mark consists exclusively of a single color or combination of colors without delineated contours or the trade-mark consists exclusively or primarily of a shape, packaging, sound, scent, taste or texture.
In respect of oppositions, the Canada Trade-marks Opposition Board is given power to strike all or part of a statement of opposition and opponents will be required to serve the written representations on each other rather than to file with the Board as was the previous practice.
Finally for the first time, Canadian applicants will be able to file a divisional trade-mark application limiting the original application to some of the goods or services and filing a divisional for the remainder.
This article was prepared by Brian W. Gray (brian.gray@nortonrose.com and 416.216.1905) of Norton Rose’s Trade-mark and Branding Practice and Intellectual Property Practice.
Tuesday, March 5, 2013
Comment Period Deadline Approaching On Closed Generic TLDS
By Sheri M. Hunter
Generic top-level domains include the familiar .com, .net, .info, .org, etc. domain extensions, while country codes are those extensions specific to a particular country, such as .us, .ca., .fr, etc.
In June 2011, ICANN authorized the launch of a new gTLD program, whereby applicants can apply to register and operate gTLD extensions that include brand names, acronyms, geographical names, industry terms, generic words, etc.
As a result of ICANN’s expansion of the number of available gTLDs, over 1900 applications have been filed for new gTLDs. Many of these applications are for brand gTLDs or open generic gTLDs, but there are also a number of applications for closed generic gTLDs, whereby the applicants have filed for gTLD strings that are generic terms in the industries in which they compete and the applicants propose to maintain and control the registries exclusively for their own benefit.
The governments of Australia and Germany, as well as registrars and brand owners, have espoused warnings that closed generics will allow their owners to compete unfairly by using generic, common words associated with an entire industry for their own specific corporate goals.
Arguments have been presented that the companies owning closed generic gTLDs will have an unfair advantage in search engine results, will become associated with the market sector they fall within, and will be able to prevent competitors perpetually from registering substantially similar gTLDS.
In light of the concerns voiced by the community regarding closed generic gTLDS, ICANN has opened a 30-day comment period seeking public comment on whether requirements should be adopted with respect to applications for closed generic registries.
Specifically, ICANN requests comments addressing:
- how to determine whether a string is generic, and
- the circumstances under which a particular TLD operator should be permitted to adopt open or closed registration policies.
» The comment period is set to close on March 7, 2013. «
For more information or to submit a comment, visit the ICANN web site.
This article was prepared by Sheri Hunter (shunter@fulbright.com and 512 536 3092) of Fulbright’s Intellectual Property and Technology Practice.
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