Modicum of Creativity

Publication: First Circuit Prescribes eBay Injunction Treatment For Trademark Cases

2011-08-02T20:47:00.000-04:00

Another work published in the World Trademark Review Daily.

James L. Bikoff, David K. Heasley, Phillip V. Marano and Liubov Ebralidze, First Circuit Prescribes eBay Injunction Treatment For Trademark Cases, WORLD TRADEMARK REVIEW DAILY, June 17, 2011.

Comment:

This article briefs a ruling of the United States Court of Appeals for the First Circuit re a motion to preliminarily enjoin alleged trademark infringement in Voice of the Arab World v. MDTV Medical News Now, Inc., Case No. 10-1396 (May 27, 2011).

My original idea for a title was, "First Circuit Asks: Injunction Presumption, What's Your Function?" However, my attempt at a rare Schoolhouse Rock reference to the song Conjunction Junction, What's Your Function? was lost my co-authors.

Publication: Contributory Cybersquatting and Trademark Dilution Are Valid Causes of Action

2011-04-14T18:14:00.001-04:00

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Another work published in the World Trademark Review Daily.

James L. Bikoff, David K. Heasley and Phillip V. Marano, Contributory Cybersquatting and Trademark Dilution Are Valid Causes of Action, WORLD TRADEMARK REVIEW DAILY, February 3, 2011.

Comment:

This article discusses a recent ruling by the United States District Court for the Western District of Washington recognizing two "novel cause[s] of action" for contributory cybersquatting and contributory trademark dilution. Microsoft Corp. v. Shah, Slip. Op. Case No. C10-0653 RSM (January 12, 2011).

Publication: Credit For Counterfeiting Where Credit Is Due

2011-01-19T15:59:00.001-05:00

My first co-authored work in the European Communities Trade Mark Association ("ECTA") Gazette:

James L. Bikoff, David K. Heasley and Phillip V. Marano, Credit For Counterfeiting Where Credit Is Due, EUROPEAN COMMUNITIES TRADE MARK ASSOCIATION GAZETTE (November 23, 2010).

Comment

I am still waiting to hear on publication permissions regarding links to this article. It covers the facts and settlement of Gucci v. Frontline Processing Corp., Slip op., No. 09 Civ. 6925 (H.B.), 2010 WL 2541367 (S.D.N.Y., June 23, 2010).

Tiffany (NJ) Inc., and Tiffany & Co. v. eBay, Inc.

2010-09-24T14:35:00.000-04:00

On August 27, 2010, Tiffany (NJ) Inc., and Tiffany & Co. filed a Petition for a Writ of Certiorari appealing the ruling of the United States Court of Appeals for the Second Circuit. Tiffany v. eBay, 600 F.3d 93 (2nd Cir. 2010).

Here is Tiffany's Petition:

Petition for a Writ of Certiorari.

Comments:

In addition to an interesting legal argument analyzing Inwood Labs as derrived from Snow Crest Beverages, Inc. and in light of Fonovisa, the Petition also sets forth several pursuaive arguments on public policy:

"The need for th[e Supreme] Court's guidance on the scope of contributory trademark infringement is particularly intense because, as the Second Circuit recognized, the Court most recently addressed the issue in 1982. The allocation of liability in this context ultimately determines who bears the burden of policing against trademark infringement, yet when the Court last considered the issue, the Internet was pratically nonexistent. The Internet has since become an effective and widely used tool for counterfeiters to ply their trade, and the magnitude of that infringement on valuable trademark rights could scarcely have been imagined in 1982." Petition at *12.

"Trafficking in counterfeit goods has become a global economic problem, and the Internet now provides unprecedented opportunities for counterfeiters to market their illegitimate wares. Courts around the globe have struggled to define the proper scope of contributory liability in this changed world. This Court's review is likewise warranted to ensure that federal trademark law is adequately calibrated to modern economic and technological reality." Petition at *22.

Quotation: "Cash Cow" or Valuable Credential?

2010-09-22T17:22:00.000-04:00

A quotation in the National Law Journal.

Karen Sloan, "Cash Cow" or Valuable Credential; Law Schools Add LL.M Programs, But Their Value May Be Limited, THE NATIONAL LAW JOURNAL, September 20, 2010.

Comments:

On balance, the article offers more critiques than praises for U.S. LL.M programs. They are "cash cows" for law schools; they are "viewed by graduates of lower-ranked law schools as a way to boost their resumes"; "they don't guarantee entry into a major firm"; etc. These are the same criticisms I encountered when I began looking at LL.M programs in intellectual property a few years ago.

Accordingly, I made sure to explain that "[t]he value of an LL.M degree is whatever you decide to make it." I agree that earning an LL.M to merely "boost [your] resume" or impress "a major firm" is ill advised. However in my case, an LL.M allowed me to pursue my interest in a niche practice area; garner relevant knowledge and work experience; and network with established professionals in the field. As I explained in a brief narrative provided for the article:

Despite my demonstrated interest and academic achievements, employment opportunities in this intellectual property niche were practically nonexistent given my lack of related work experience.

Faced with the prospect of shelving my passion and accepting offers to work in personal injury litigation or the like, I began looking at LL.M programs in intellectual property as a means to get my proverbial foot in the door.

Despite the article's criticisms, which were reiterated by the Wall Street Journal and explored further by Above the Law, I was pleased to see a smattering of success stories from fellow U.S. LL.M graduates who seem equally dedicated to the various fields of law they have chosen.

I am a firm believer that a genuine passion for one's profession and practice area goes a long way toward establishing a successful career. It drives perserverance in the face adversity and instills confidence in both employers and clients. Accordingly, I am proud to hold an LL.M in intellectual property as indicia of my perserverance and confidence.

Publication: From The Gridiron To Gold Medals: Enforcing Sports Trademarks

2010-07-21T17:20:00.002-04:00

Another joint-authored work published in the World Trademark Review.

James L. Bikoff, David K. Heasley, Michael T. Delaney, Phillip V. Marano and Taro Konoshima, From The Gridiron To Gold Medals: Enforcing Sports Trademarks, WORLD TRADEMARK REVIEW, Issue 26 (August / September 2010).

Comment

I enjoyed authoring the sections on "Counterfeiting Goes Virtual" and "Going After Cyber-Counterfeiters." I thought the original title I came up with, Playing Offense and Defense; Trademark Enforcement for Sports Federations, better summed up the article.

Publication: Louis Vuitton Holds ISP Accountable for Combined $21.6 Million

2010-06-16T10:52:00.002-04:00

Another publication in the Oxford University Press, Journal of Intellectual Property Law & Practice.

James L. Bikoff, David K. Heasley and Phillip V. Marano, Louis Vuitton Holds ISP Accountable for Combined $21.6 Million, JOURNAL OF INTELLECTUAL PROPERTY LAW & PRACTICE, Advance Access Version (June 15, 2010).

Comment

This is a current intelligence article on Louis Vuitton Malletier S.A. v. Akanoc Solutions, Inc. et al., No. 07-03952 JW, slip op. (N.D.Cal., 19 March 2010); see also 591 F. Supp. 2d 1098 (N.D.Cal. 2008). It follows a string of publications on secondary liability for trademark infringement, although I happily briefed the Northern District of California's rulings on secondary liability for copyright infringement as well.

LL.M Graduation Honors

2010-05-19T22:36:00.001-04:00

The George Washington University Law School held its Commencement and Diploma Ceremony this past Sunday, May 16, 2010. Although I graduated from the Master of Laws (LL.M) program in Intellectual Property back in January, all 2010 graduates were invited to participate.

I was eager to hear from First Lady Michelle Obama (law students had a front row seat) and SEC Chairman Mary L. Schapiro (who had some inspiring words on the economy and the profession of law). I was also eager to gain a better understanding of my graduation honors.

The degree of LL.M "With Highest Honors" is awarded to those students who have obtained a cumulative average of at least 3.67. As indicated on my resume, I earned a 3.73.

The George Washington University Law School class of 2010 included 236 LL.M students specializing in a variety of subjects, including environmental law, government procurement law, intellectual property law, international and comparative law, litigation and dispute resolution, and national security and foreign relations law.

Of those 236 graduates, a total of 53 earned an LL.M in intellectual property. Of those 53 intellectual property students, only 3 (i.e. the top 5%) graduated "With Highest Honors."

It is gratifying to have my passion for intellectual property law manifest itself in such an exclusive distinction. The accomplishment is also particularly gratifying given the little known fact that LL.M students compete for marks against Juris Doctor candidates at The George Washington School of Law, which is currently ranked 20th in the nation overall and 3rd in the nation for intellectual property studies.

Publication: Hauling In The Middleman: Contributory Trade Mark Infringement In North America

2010-04-25T16:36:00.002-04:00

A first publication in the Oxford University Press, Journal of Intellectual Property Law & Practice.

James L. Bikoff; Keri A.F. Johnston; David K. Heasley; Phillip V. Marano; Andrea Long, Hauling In The Middleman: Contributory Trade Mark Infringement In North America, JOURNAL OF INTELLECTUAL PROPERTY LAW & PRACTICE, 2010 5: 332-343.

Comment

Oxford University Press will distribute copies of this article - as well as an update re recent activity in Akanoc Solutions and eBay - at the upcoming International Trademark Association ("INTA") annual meeting in Boston.

Publication: Contributory Trademark Infringement In The United States, Contrasting Akanoc Solutions With eBay.

2010-04-25T16:18:00.001-04:00

My first joint-authored work in NameSmash.

James L. Bikoff, David K. Heasley and Phillip V. Marano, Contributory Trademark Infringement In the United States: Contrasting Akanoc Solutions With eBay, NAMESMASH, April 20, 2010.

Comment

"NAMESMASH is a forum for providing accurate, unbiased, current information about the domain business showcasing regular articles, profiles, interviews, reviews and contributor columns from professionals throughout the domain community." It is published by the friendly folks at MARKSMEN, "a worldwide leader in intellectual property investigations, buying domain names and other brand monitoring and protection services."

Bleistein v. Donaldson Lithographic Co., 188 U.S. 239 (1903)

2010-03-10T01:22:00.004-05:00

CASE BRIEF

George Bleistein, and several of his partners in the Courier Litho. Co., sued the Donaldson Litho. Co. for copyright infringement when Donaldson made approximately 23,800 unauthorized copies of three chromolithograph posters advertising the "Great Wallace Shows" traveling circus.

Before pressing forward, some may be interested to learn that lithography is a method for making prints from a flat surface, such as a stone, by pressing ink or wax into paper or fabric. Chromolithography is merely the same method applied to colored lithograph prints.

In any event, Courier had originally designed and registered copyrights in the posters in 1898. Courier printed the posters for the circus, and when the circus ran out of copies, it hired Donaldson to print more using Courier's designs.

The primary issue addressed by the Supreme Court was whether Courier's chromolithograph designs, which were used strictly for advertising, fell "within the protection of the copyright law." The issue may seem trite to contemporary readers, especially considering that even the Copyright Act of 1874 explicitly protected "any engraving, cut, print ... [or] chromo." 18 Stat. 78, 79. However, Supreme Court precedent at the time arguably denied copyright protection for works such as advertising copy, sales catalogs, and product labels. See e.g. Higgins v. Keuffel, 140 U.S. 428 (1891) (denying copyright protection for labels on bottles of disappearing ink for want of "some purpose other than as a mere advertisement or designation of the subject to which it was attached").

Donaldson sought to leverage such authority by arguing that the advertising posters in question were not "connected with the fine arts" and were thus excluded from the Copyright Act.

Justice Holmes, in drafting the majority opinion of the Court, expressed what some have dubbed "profound skepticism" of this view. In an oft-quoted passage of the decision, Justice Holmes warned that:

It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke . . . At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge. Yet if they command the interest of any public, they have a commercial value - it would be bold to say that they have not an aesthetic or educational value - and the taste of any public is not to be treated with contempt.

Indeed, "[a] picture is none the less a picture and none the less a subject of copyright that it is used for an advertisement." Accordingly, the Supreme Court held that Courier's chromolithograph posters fell within the protection of the copyright law.

To reach this result, Justice Holmes painted a subtle judicial gloss on the sine qua non of copyright law, the originality requirement. He suggested that every work which is "drawn from life" is a "personal reaction of an individual upon nature," and thus, can be inherently original. He also suggested that the originality requirement might be satisfied simply by the "amount of training required" to create a work.

The point to take away in light of Justice Holmes' judicial gloss, is that the degree of originality requisite for copyright protection was, and continues to be, purposefully minimal.

Full Text Available Here.

COMMENTARY

The Great Wallace Shows: Colossal 3 Ring Circus, 2 Elevated Stages, was first created / published by the Courier Lithographic Company c1898. See Library of Congress, Prints and Photographs Online Catalog (Control No. 2007684720). The work is in the public domain because its copyright duration has expired. The initial copyright term of the work lasted twenty-eight (28) years from publication, until 1926. If renewed, registration lasted another twenty-eight (28) years, until 1954.

For a great insight into the history and ramifications of Bleistein, see Dianne Leenheer Zimmerman, The Story of Bleistein v. Donaldson Lithographing Company: Originality As A Vehicle For Copyright Inclusivity, in Jane C. Ginsburg and Rochelle Cooper Dreyfus, eds., INTELLECTUAL PROPERTY STORIES at p. 77 (2006). The article develops a very useful progression of the originality requirement from the Trade-Mark Cases to Feist Publications Inc. v. Rural Telephone Services.

Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884)

2010-03-03T01:29:00.004-05:00

CASE BRIEF

Napolean Sarony, a photographer, sued Burrow-Giles Lithographic Co., a printing company, for copyright infringement under the Copyright Act of 1874 (18 Stat. 78) when it attempted to sell 85,000 unauthorized copies of Sarony's Oscar Wilde No. 18 photograph.

The 1790 Copyright Act explicitly protected any "map, [nautical] chart or book." In 1802, "prints" were added (2 Stat. 171); in 1831 "musical compositions" were added (4 Stat. 436); in 1856 "dramatic compositions" were added (11 Stat. 138); and in 1856 "photographs" were added (13 Stat. 540).

The primary issue addressed by the United States Supreme Court in 1884 was whether "Congress had the constitutional right to protect photographs and negatives thereof by copyright." Burrow-Giles Lithograph Co. argued that photographs generally, and certainly Sarony's photograph, lacked originality necessary for copyright protection - "the photograph is the mere mechanical reproduction of the physical features or outlines of some object animate or inanimate, and involves no originality of thought or any novelty in the intellectual operation connected with its visible reproduction in the shape of a picture."

The Supreme Court explained that the appropriate inquiry for copyright protection is "the existence of those facts of originality, of intellectual production, of thought, and conception on the part of the author ...." - the constitutional requirement originally recognized by the Supreme Court in the Trade-Mark Cases.

Accordingly, the Supreme Court focused on the trial court's factual finding that Sarony made Oscar Wilde No. 18 "entirely from his own original mental conception, to which he gave visible form by posing the said Oscar Wilde in the front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and form such disposition, arrangement, or representation, made entirely by [Sarony] ...."

In other words, photography is not merely the unoriginal manual operation of a camera. Rather, originality requisite for copyright protection is found in a photographer's selection of any number of artistic choices including angle, lighting, and arrangement of the subject.

Ultimately, the Supreme Court affirmed the Second Circuit's holding that Sarony's photo was an "original work of art" and "the product of [Sarony's] intellectual invention."

Full Text Available Here.

COMMENTARY

The Oscar Wilde No. 18 derivative work above is based on the circa 1882 photograph taken by Napolean Sarony (1821 - 1896). See Library of Congress, Prints and Photographs Online Catalog (Control No. 98519710). The photograph is most definitely in the public domain as the duration of copyright protection has expired. The quick and dirty explanation is as follows:

As the Supreme Court indicates, Sarony took "all steps required ... to obtain copyright of this photograph" including notice formalities. However, the Copyright Act of 1831 granted authors an initial term of protection for twenty-eight (28) years and a renewal term of protection for another fourteen (14) years. Thereafter, the Copyright Act of 1909 extended the renewal term another fourteen (14) years, granting authors like Sarony the possibility for a total of fifty-six (56) years of copyright protection. At best, Sarony's Oscar Wilde No. 18 would have enjoyed its initial term of protection until 1910 and, if renewed, a renewal term until 1938.

Publication: Vodka and Wine Are Unrelated, Says TTAB

2010-01-09T21:47:00.004-05:00

Another publication in World Trademark Review Daily:

James L. Bikoff, David K. Heasley and Phillip V. Marano, Vodka and Wine Are Unrelated, Says TTAB, WORLD TRADEMARK REVIEW DAILY, November 17, 2009.

Comment

The original title was "Energy Vodka" and Wine Are Not Related Goods.

Publication: Impact of PRO IP Act on Evidentiary Value of Copyright Registration Certificate

2010-01-09T21:34:00.005-05:00

My first publication for the the American Bar Association, Section of Intellectual Property Law:

Phillip V. Marano, Impact of PRO IP Act on Evidentiary Value of Copyright Registration Certificate, ANNUAL REVIEW OF INTELLECTUAL PROPERTY LAW DEVELOPMENTS 2009, 304 (2010).

Comment

ABA advertisements point out that "[t]he 2009 edition is an essential reerence for anyone who handles, or is interested in, intellectual property law matters" and "provides a thoughtful and balanced treatment of more than 100 top legal developments in all areas of IP law ..."

Available for purchase at www.ababooks.org (800.285.2221).

Quotation: Trademark Owners Urged To Beware Of Phoneword Disputes

2009-07-31T19:22:00.004-04:00

A quotation in the World Trademark Review Daily.

Adam Smith, Trademark Owners Urged To Beware Of Phoneword Disputes, WORLD TRADEMARK REVIEW DAILY, July 31, 2009.

Comments:

Analysis and comments made for the above news article were ultimately published as part of a larger work.

James L. Bikoff and Phillip V. Marano, The U.S. Experience, WORLD TRADEMARK REVIEW, Issue 21, 50 (October/November 2009) (Appearing in Julian Gyngell, Smart Thinking on Phonewords, WORLD TRADEMARK REVIEW, Issue 21, 47 (October/November 2009)).

Publication: Proposal for eUDRP Released for Public Comment

2009-07-29T15:00:00.004-04:00

Another publication in World Trademark Review Daily:

James L. Bikoff and Phillip V. Marano, Proposal for eUDRP Released for Public Comment, WORLD TRADEMARK REVIEW DAILY, July 23, 2009.

Comment

The original title was "The War On Cyberpiracy Goes Green."

Publication: Test for Descriptiveness Clarified in URBANHOUZING Case

2009-07-15T21:21:00.007-04:00

A publication in World Trademark Review Daily:

James L. Bikoff and Phillip V. Marano, Test for Descriptiveness Clarified in URBANHOUZING Case, WORLD TRADEMARK REVIEW DAILY, June 26, 2009.

Comment

The original title was "Test for Descriptiveness Causes Actual Confusion at the TTAB."

Publication: The UDRP Turns 10

2009-07-15T21:11:00.009-04:00

My first joint-authored work published in World Trademark Review:

James L. Bikoff, David K. Heasley, Phillip V. Marano and Michael Delaney, The UDRP Turns 10, WORLD TRADEMARK REVIEW, Issue 20 (August/September 2009).

Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995).

2009-03-31T22:42:00.016-04:00

CASE BRIEF

The plaintiff, Sunmark, uses its incontestable - 15 U.S.C. Section 1065 - mark "Swee TARTS" on candy and the defendant, Ocean Spray had sporadically advertised its cranberry juices with various permutations of the phrase "Sweet-Tart". After Ocean Spray launched a new line of candy advertised as "sweet and tart" and stepped up its "sweet-tart" cranberry juice campaign in 1991, Sunmark sued under the Lanham Act.

Ocean Spray argued that it only used the words "Sweet-Tart" to describe the taste of its cranberry juice under 15 U.S.C. Section 1115(b)(4):

[C]onclusive evidence of the right to use a mark [under 15 U.S.C. Section 1065] shall be subject to . . . the following defenses or defects: . . . (4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.

In other words, "[t]he use of a similar name by another to truthfully describe his own product does not constitute a legal or moral wrong, even if its effect be to cause the public to mistake the origin of the product." William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 528 (1928) Cf. Zatarian's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983)(Analyzing "FISH-FRI" and "Fish Fry" for related products and implying that confusion is inconsistent with a fair use defense insomuch as it shows the words are being used as a trademark).

The trial court found that the words "sweet" and "tart" as well as the conjunction of the two were descriptive under these facts and denied a preliminary injunction against Ocean Spray. However, "in passing" the trial court also remarked that Ocean Spray had used the words as a trademark. On appeal of the ruling, and faced with such inconsistent statements, Hon. Judge Easterbrook stepped in to clarify the doctrine of descriptive fair use.

As a threshold matter, "[u]nder the Lanham Act it is irrelevant whether [Sunmark's] 'Swee TARTS' mark is itself descriptive," rather, the real issue is "whether 'Sweet-Tart' is descriptive as Ocean Spray uses it." Notably on this point, just because a word such as "Sweet-Tart" is not found in the dictionary, does not mean that it cannot be used descriptively. Indeed, a slew of news articles using such a word in a descriptive fashion demonstrate that "language often outpaces dictionaries."

Additionally, "although descriptiveness does not make status as a trademark impossible," if Ocean Spray did indeed use the words as a trademark, it "cannot invoke the fair use defense."

In any event, Easterbrook agreed that the term "Sweet-Tart" was being used by Ocean Spray in a descriptive fashion, e.g. "sweet-tart of a deal" is a play on words that works because the phrase "sweet-tart" describes the product. Even Ocean Spray's use of the phrase "sweet and tart" on its new line of candy (Fruit Spray Waves) did not rise beyond the level of descriptive fair use. The evidence proffered was simply too paltry to support a preliminary injunction (referring to a marketing survey where only three out of two-hundred, fifty-seven individuals interviewed actually associated Ocean Spray's "Sweet-Tart" use with candy).

Full text available here.

COMMENTARY

Yes. The cranberries used for the photo above are actually Ocean Spray Brand Craisins. It is worth noting that the combination of the words "sweet" and "tart" did not appear on the product packaging because the word "tart" is not used at all. The next closest thing was the phrase "Surprisingly Sweet and Tangy!"

Blawging 101

2009-03-27T11:46:00.007-04:00

17 U.S.C. Section 102, the U.S. Copyright Act on general copyrightable subject matter specifically includes architectural works under the Architectural Works Copyright Protection Act (AWCPA). Title VII of Pub.L. 101-650, 104 Stat. 5089 (1990), enacted Dec. 1, 1990. (emphasis added). 17 U.S.C. Section 101 defines architectural works as:

[T]he design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.

Oh no! Does this mean every time I take a picture of a building that I have created an infringing derivative work of the architect's original copyright? Most likely not. This provision covers (1) any architectural work created on or after December 1, 1990; and (2) any unconstructed architectural work that was embodied in unpublished plans or drawings as of December 1, 1990, provided construction occurred prior to December 31, 2002. AWCPA Section 706. Moreover, 17 U.S.C. Section 120(a) limits the scope of exclusive rights in architectural works:

Pictorial Representations Permitted - The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.

COMMENTARY

The above photo depicts, among other things, one of the tallest buildings in Arlington, Virginia, the Rosslyn Twin Tower II, a/k/a the WJLA-TV building. It's construction was completed in 1982. The firms of Hellmuth, Obata & Kassabaum and KCF-SHG, Inc. are credited with its architecture. The Rosslyn Twin Tower II, as well as the other buildings in the photograph are both located in and visible from a public place.

Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., 86 USPQ2d 1572 (TTAB 2008).

2009-01-28T19:09:00.020-05:00

OVERTURNED BY: In Re Bose Corp., Opp. No. 91/157,315 (August 31, 2009).

CASE BRIEF

HCI, the opposer, sought to cancel six registrations owned by Xel, the registrant, for various permutations of the mark "XEL HERBACEUTICALS" on the basis of (1) fraud/nonuse and (2) likelihood of confusion with its own mark "HCI HERBACEUTICALS, INC." The Board, in considering HCI's motion for summary judgment on fraud, noted that in response to requests for admissions, Xel had admitted that it was not using in commerce four of its marks in connection with several goods listed in their respective Statements of Use. The Board summarily found that fraud existed as to those four registrations and partially granted HCI's motion for summary judgment (see below for the legal standards applied) thus canceling those registrations. The remaining two registrations survived summary judgment on the basis of Xel's affirmation of use.

The interesting aspect of this case was Xel's argument that statements of use are divisible into "sworn" declaration portions attesting to "use on the goods/services" and "unsworn" portions attesting to "use on all goods/services" on "information and belief." The Board corrected the assertion:

A declaration relates to all statements in the document of which the declarant is a part. Treating statements of use as divided sworn and unsworn sections would encourage applicants to conclude that they could make misrepresentations willfully and without penalty. We reject Xel's contention that use of the wording "all goods and/or services" in the body of the statements of use and "the goods/services" in the supporting declaration gives the respective phrases different meanings. In the declaration for each statement of use, Xel's attorney averred that Xel was "using the mark in commerce or in connection with the goods/services identified above." The goods identified above in the body of the statements of use are "all goods and/or services listed in the application or Notice of Allowance." Accordingly, the wording at issue is synonymous.

Full text available here.

COMMENTARY

You can always count on the TTAB to provide a useful rehashing of case law on the matter at hand. By assembling a few such "rehashings", you can create a great legal road-map regarding fraud against the U.S. Trademark Office:

Fraud in procuring a trademark registration occurs when an applicant for registration (1) knowingly makes (2) false, (3) material representations of fact in connection with an application to register. (numbered elements added) See Torres v. Cantine Torresella S.r.l., 808 F.2d 46 (Fed. Cir. 1986). A party making a fraud claim is under a heavy burden because fraud must be proved by clear and convincing evidence, leaving nothing to speculation, conjecture, or surmise. Any doubt must be resolved against the party making the claim. See Smith International, Inc. v. Olin Corporation, 209 USPQ 1033 (TTAB 1981).

If fraud can be shown in the procurement of a registration, the registration is void in the international class or classes in which fraud based on nonuse has been committed. See General Car and Truck Leasing Systems, Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398, 1401 (S.D. Fla. 1990), affig General Rent-A-car Inc. v. General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1998).

(1) As to the knowledge of the applicant/registrant:

In Board inter partes proceedings, proof of specific intent to commit fraud is not required, rather, fraud occurs when an applicant or registrant makes a false material representation that the applicant or registrant knew or should have known was false. General Car and Truck Leasing Sys., Inc. v. General Rent-A-Car Inc., supra. The appropriate inquiry is not into the registrant's subjective intent, but rather into the objective manifestations of that intent. See Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003)[finding that "neither the identification of goods nor the statement of use itself was lengthy, highly technical or otherwise confusing, and the applicant who signed the document was clearly in a position to know (or inquire) as to the truth of the statements therein."]

Statements under oath [e.g. Statements of Use] are made with a degree of solemnity requiring through investigation prior to signature and submission to the USPTO. Id.; Patent and Trademark Office Rule 10.18(b)(2).

(2) As to the falsity of a representation made to the Trademark Office: Where the applicant/registrant admits nonuse or another type of material representation (generally through Requests for Admissions, Interrogatories, Depositions, or some other discovery mechanism), the TTAB will analogize Medinol and generally grant a Motion for Summary Judgement on fraud. (finding no genuine issue of material fact on fraud where applicant admitted nonuse in its response to a petition for cancellation).

(3) As to the materiality of a representation made to the Trademark Office:

Statements regarding the use of [a] mark on identified goods and/or services are certainly material to issuance to registration. See Hachette Fillipacchi Presse v. Elle Belle, LLC, 85 USPQ2d 1090 (TTAB 2007) (use alleged for a wide variety of clothing items for men, women and children when mark had not actually been used for any identified items for men or children); Sinclair Oil Corporation v. Kendrick, 85 USPQ2d 1032 (TTAB 2007) (use alleged for retail store services when mark had only been used on small number of product samples, which were given away four years before application); Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007) (use alleged for various entertainment and production services, when mark had not been used anywhere in the world for some services); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) (misrepresentation regarding use of the mark on most of the goods identified in filed applications); First Int'l Serv. Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988) (use alleged on range of personal care products when mark only actually used on shampoo and hair setting lotion).

As long as the general product terminology encompasses the specific product terminology in an identification of goods, and there is use on the specific product, there can be no fraud ... the converse situation, however, is not true. See Tri-Star Marketing, LLC v. Nino Franco Spumanti S.r.l, 84 USPQ2d 1912 (TTAB 2007) (finding "wine" to be a general classification for the more specific "sparkling wine").

Blawging 101

2009-01-26T23:15:00.009-05:00

17 U.S.C. Section 105, the U.S. Copyright Act on Government Works, provides that:

Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.

(emphasis added). Generally, this means there is no copyright protection for "original works of authorship fixed in any tangible medium of expression" which are prepared by an officer or employee of the United States Government as part of that person's official duties. See 17 U.S.C. Section 101. Some common examples include judicial opinions, administrative agency circulars, and congressional reports. The rationale for this rule is simple: the public should not have to bear a double burden in first subsidizing the creation of government works through payment of tax dollars and again in suffering the costs of copyright monopolies over those works.

But why preface the rule with "generally"? Works prepared under contracts or grants with/from U.S. Government may be subject to the work for hire doctrine and validly transferred through assignment, bequest or otherwise. Under such circumstances the U.S. Government could indeed own and enforce a valid copyright.

COMMENTARY

My"Uncle Sam" derivative work above is based on a 1917 publication of "I Want You", by James Montgomery Flagg (1877-1960). See Library of Congress, The Most Famous Poster. But is the original "I Want You" graphic work free from copyright restrictions and essentially in the Public Domain?

Definitely YES. Based solely on the above facts, any scenario ends with the same conclusion, "I Want You" is in the public domain. The quick and dirty explanation is as follows:

(1) Publication Without Notice.

Careful examination of the original "I Want You" graphic work reveals that copyright notice consists of only the author's name, "James Montgomery Flagg." The 1909 Copyright Act contained strict formality requirements, specifically it required (i) notice consisting of the word "copyright", or the copyright symbol, (ii) the name of the copyright owner and (iii) the year of publication. Notice on "I Want You" is clearly deficient on two of these requirements. Such deficiencies were fatal to copyright ownership and generally works published without proper notice were dedicated to the public domain.

(2) Expiration of Copyright Term.

Any conceivable duration of a copyright for "I Want You" has expired. Works published under the 1909 Copyright Act had an initial term of 28 years and a renewal term of 28 years. A work published in 1917 would enjoy its initial term until 1945, and if renewed would enjoy a renewal term until 1973. However, various interim copyright bills preserved existing copyrights around this time until the 1976 Copyright Act took effect in 1978. The 1976 Copyright Act extended such renewal terms to 75 years after the initial publication of the work. Thus, any copyright protection over "I Want You" could at best only extend to 1992.

Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938)

2009-01-20T20:45:00.007-05:00

CASE BRIEF

National Biscuit Co. ("Nabisco") sought to enjoin Kellogg from manufacturing and selling shredded wheat both under the term "Shredded Wheat" and embodied in a pillow-shape.

The Federal District Court of Delaware held for Kellogg because (a) the name merely described the product (b) no evidence of "passing off" had been proffered and (c) the method patent for creating "shredded wheat" and the design patent for its "pillow shape" expired in 1912. The Third Circuit Court of Appeals reversed and effectuated an injunction against Kellogg which prevented their use of both the term "Shredded Wheat" and the pillow-shape.

The U.S. Supreme Court began by noting that "the name 'Shredded Wheat,' as well as the product, the process and the machinery employed in making it, has been dedicated to the public [as an expired patent]."

As to the term, the Court held that inventors may not retain the generic designation of their inventions. The term "Shredded Wheat" had degraded beyond being merely descriptive and had become generic. Thus, there was no basis for engaging in an analysis of secondary meaning. Applying common law Unfair Competition, Kellogg's only burden was to take reasonable care to inform the public of the source of its product and distinguish its shredded wheat from that of Nabisco. This burden was generally met because Kellogg prominently displayed their company trademark on all packaging.

As to the pillow shape, the Court noted that the original, expired design patent covered the shape as well; when that patent expired, the shape was dedicated to the public. Moreover, the "evidence [was] persuasive that [the pillow-shape] form [was] functional" because the manufacturing costs would increase and the quality would decrease if any other form were substituted.

Full Text Available Here.

COMMENTARY

Notably, this case does not stand for the proposition that all expired patents preclude trademark protection for features of goods or services. The TMEP § 1202.02(a)(iii)(A) provides that:

Functional matter cannot be protected as trade dress or a trademark. 15 U.S.C. §§1052(e)(5) and (f), 1091(c), 1064(3), and 1115(b). A feature is functional as a matter of law if it is “essential to the use or purpose of the product or if it affects the cost or quality of the product.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995).

Moreover, TMEP § 1202.02(a)(v)(A) provides that:

Design patents cover the invention of a new, original, and ornamental design for an article of manufacture. 35 U.S.C. §171. A design patent is a factor that weighs against a finding of functionality, because design patents by definition protect only ornamental and nonfunctional features. However, ownership of a design patent does not in itself establish that a product feature is nonfunctional, and can be outweighed by other evidence supporting the functionality determination. In re R.M. Smith, Inc., 734 F.2d 1482 (Fed. Cir. 1984); Caterpillar Inc., 43 USPQ2d at 1339; American National Can Co., 41 USPQ2d at 1843; In re Witco Corp., 14 USPQ2d 1557, 1559 (TTAB 1989)

Thus, it is entirely possible for an ornamental feature of an invention/good to enjoy both design patent and trademark protection concurrently. Indeed, trademark protection may be sought and achieved well after the expiration of a design patent.

Trade-Mark Cases, 100 U.S. 82 (1879)

2009-01-20T13:02:00.007-05:00

CASE BRIEF:

The U.S. Supreme Court held that Congress's first attempt at trademark legislation was unconstitutional. The 1870 "Trade-Mark" Act: (1) provided for federal registration of marks, and (2) created a federal infringement cause of action for wrongful use of another's mark without permission.

At the outset the Court noted that the common law of the states had long recognized trademarks, thus their validity was not dependent upon Congress's new act. The Court reasoned that Article I, Section 8, Clause 8 of the U.S. Constitution (the Intellectual Property Clause -- ". . . to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries. . .") does not apply to trademarks because trademark rights grow from use in commerce, rather than invention of something novel or creation of something "original ... and founded in the creative powers of the mind." Instead, it is Article I, Section 8, Clause 3 (the Commerce Clause) which grants Congress the power to regulate trademarks.

Thus, the 1870 "Trade-Mark" Act was unconstitutional because it failed to make any reference to commerce with foreign nations, among the several states, or with Indian tribes. Moreover, the Act made no mention of "the character of the trade to which it was to be applied or the residence of the [trademark] owner."

Full Text Available Here.

Online Resume

2008-07-22T12:34:00.020-04:00

VIEW A .PDF VERSION HERE.
______________________________________

BAR ADMISSIONS

New Jersey (December 2007)
New York (January 2008)
District of Columbia (May 2009)

EDUCATION

THE GEORGE WASHINGTON UNIVERSITY LAW SCHOOL, Wash., DC
Master of Laws in Intellectual Property, With Highest Honors, December 2009

GPA 3.73 (Top 5%)
Visiting Student, The Georgetown University Law Center: GPA 4.00
Member, Cyberlaw Students Association and Student Intellectual Property Organization

VILLANOVA UNIVERSITY SCHOOL OF LAW, Villanova, PA
Juris Doctor, May 2007

GPA 3.36
Associate Editor, Villanova Environmental Law Journal
Participant, Reimel Moot Court Competition
Volunteer Legal Aid, The Innocence Project, New Orleans, LA
President, Villanova Justinian Society; Member, Intellectual Property and Pro Bono Societies

THE COLLEGE OF NEW JERSEY, Ewing, NJ
Bachelor of Science in Law and Justice, Magna Cum Laude, May 2004

GPA 3.69; Transferred from Drew University, Madison, NJ: GPA 3.83
Member, Dean’s List, Golden Key and Alpha Phi Sigma National Honor Societies
Intern, Mercer County Prosecutor’s Office, Trenton, NJ; Megan’s Law and Economic Crimes Units

EXPERIENCE

SILVERBERG, GOLDMAN & BIKOFF LLP, Wash., DC
Staff Attorney, December 2008 - Present

Research and synthesize legal authority to draft complaints, notices, motions, and memoranda of law on matters involving copyrights, trademarks, domain names, professional responsibility and the Federal Rules of Civil Procedure and Evidence.
Manage global domain name portfolios; counsel brand owners in trademark-based domain name dispute resolution; research, prepare and review official filings and position papers with the Internet Corporation for Assigned Names and Numbers.
Assist in preparing, filing and prosecuting federal trademark applications at the USPTO.
Research and evaluate developments in international intellectual property law, reporting on the same to the International Trademark Association and European Communities Trade Mark Association.

THE UNITED STATES PATENT AND TRADEMARK OFFICE, Alexandria, VA
Trademark Legal Intern, August 2008 - December 2008

Assisted attorneys in trademark application examination by researching legal authority and collecting evidence in support of office actions relating to descriptiveness and likelihood of confusion.

CASHA & CASHA, Montville, NJ
Associate, January 2008 – August 2008

Counseled clients on a variety of matters including trademark infringement and prosecution, cyberpiracy, copyrightable subject matter, commercial fraud, estate administration and real estate transactions.

NJ VOLUNTEER LAWYERS FOR THE ARTS, Laurel Springs, NJ
Volunteer Attorney, January 2008 – August 2008

Counseled pro bono clients on arts-related legal issues including copyright work for hire agreements, rights to publicity and fair use of copyrights and trademarks.

FISHMAN & CALLAHAN, PC, East Hanover, NJ/ Suffern, NY
Summer Associate, May 2006 - August 2006, Offer Extended

Conducted research on legal authority and conferred with clients to draft motions, supporting affidavits and memoranda of law for firm's personal injury defense practice.

NEW JERSEY SUPERIOR COURT, CHANCERY DIVISION, Toms River, NJ
Judicial Intern for the Hon. James M. Blaney, May 2005 - August 2005

Conducted research on legal authority and provided mediation for litigants in drafting bench briefs and preliminary rulings for the family division of the court.

PUBLICATIONS

Phillip V. Marano, MODICUM OF CREATIVITY, available from www.modicumofcreativity.com (2007-2010).
Co-Author, Hauling In The Middleman: Contributory Trade Mark Infringement In North America, JOURNAL OF INTELLECTUAL PROPERTY LAW & PRACTICE, 2010 5: 332-343.
Co-Author, Contributory Trademark Infringement In the United States: Contrasting Akanoc Solutions With eBay, NAMESMASH, April 20, 2010.
Phillip V. Marano, Impact of PRO IP Act on Evidentiary Value of Copyright Registration Certificate, ABA ANNUAL REVIEW OF INTELLECTUAL PROPERTY DEVELOPMENTS 2009, 304 (2010).
Co-Author, The UDRP Turns 10, WORLD TRADEMARK REVIEW, Issue 20 August/September 2009.
Co-Author, The U.S. Experience, WORLD TRADEMARK REVIEW, Issue 21, 50 (October/November 2009) (Appearing in Julian Gyngell, Smart Thinking on Phonewords, WORLD TRADEMARK REVIEW, Issue 21, 47 (October/November 2009)).
Phillip V. Marano, WORLD TRADEMARK REVIEW DAILY, regular co-author / contributor:

Vodka and Wine Are Unrelated, Says TTAB (November 17, 2009).
Trademark Owners Urged to Beware of Phoneword Disputes (July 31, 2009).
Proposal for eUDRP Released for Public Comment (July 23, 2009).
Test for Descriptiveness Clarified in URBANHOUZING Case (June 26, 2009).

PROFESSIONAL MEMBERSHIPS

International Trademark Association (INTA)
American Intellectual Property Law Association (AIPLA)
American Bar Association (ABA), Intellectual Property Law Section.
New York State Bar Association (NYSBA), Intellectual Property Law Section.
District of Columbia Bar Association (DCBAR), Intellectual Property Law Section.

LANGUAGE SKILLS & INTERESTS

Intermediate French in speaking, reading and writing French.
Proficiency with WestLaw, LexisNexis Legal, PACER, LexisNexis Time Matters, CT Coresearch, Thompson CompuMark SAEGIS, Microsoft Office and several Open Source platforms.
Played NCAA Division III Basketball.

Masters of Law in Intellectual Property Admission Statement

2008-01-15T21:52:00.003-05:00

I decided to post my Intellectual Property LL.M admission statement because I am proud of both the work I have put into it and the way it encapsulates my enthusiasm for these areas. Most law schools requested that I detail (1) Who I am, (2) Why I am interested in Intellectual Property and (3) What I plan to do with an LL.M degree. I tried to hit the high points of all three.

_______________________________

There is a school of thought which believes, "work is not meant to be enjoyed, if people enjoyed their jobs, it would not be called work." I have always found this statement to be suspect, especially as it pertains to the work of an attorney. Simply put, I love both the practice of law and the acquisition of legal knowledge. The ability to protect and provide for both the people and things one truly loves, through application of the law, has always been an important pursuit of mine. Thus, I was happy when I first got my feet wet in Law & Justice studies as an undergraduate at the College of New Jersey. I was also happy in attending Villanova School of Law, finding myself entirely immersed in the law.

It was not until my third and final year at Villanova that the Honorable Judge Renee Cohn-Jubelirer, of the Commonwealth Court of Pennsylvania, greatly influenced my understandings of the law and happiness. She stated: “No matter what you end up doing after law school, the most important thing is that you are truly happy in the area you have chosen. I sincerely love and enjoy my work, and I wish the same for all of you in the future.” Her words inspired me to scour the legal landscape for the areas which truly gave me an inner glow. It was that same year in which I discovered Intellectual Property and Internet Law.

My adoration of these areas was almost immediate. My attraction to Intellectual Property derives my own innate creativity as well as my love and respect for the creative works of others. As long as I can remember, I have dedicated much effort towards cultivating skills in art, music, and literature; I was selling self authored and illustrated “comic books” at the age of 10, I play the soprano and alto saxophones, and I currently author a blog on Intellectual Property and Internet Law topics in my spare time. Moreover, I am and forever will be a lifelong fan of popular culture. I am a wealth of knowledge on the topics of television, consumer brands, movies, music, sports, video games, literature, and fashion. Allegories from creative works such as Aesop's Fables or Machiavelli's The Prince have helped shape the way that I live my life. And learning about creative innovations, such as the evolution of rock and roll and rockabillly from blues and country, has taught me to “think outside of the box.”

Likewise, my love of Internet Law derives from the boundless opportunities it holds for creative young attorneys who have grown up with and have a strong passion for the Internet. I am inspired by the insightful analogies being used to impact this area of the law, e.g. whether Domain Names are more like street addresses to bricks and mortar storefronts or like billboard advertisements on a highway. It is the development and advocacy of these creative analogies which is shaping the future of Internet Law, and I sincerely wish to help influence that future.

In law school it was the thrill of a lifetime to have my perpetual enthusiasm for creative works and technology collide with a practical application of Intellectual Property and Internet law. However, I am ready and yearning to learn and experience more. I have been introduced to the tip of an Intellectual Property Law iceberg and I am ecstatic at the opportunity to explore further under the mentorship of leaders in the field. With an LL.M degree in Intellectual Property I will have gained a set of highly specialized tools with which I can better navigate a course towards becoming an Intellectual Property and Internet guru. In other words, I will be fully equipped to succeed in and contribute to the future of the areas of law where I am truly happy.