Imagine 25 seconds of fairness

And million dollars in chairty? Ha!

But then there is always good 'ol Fair use which saves the day by emphasizing that it's really not about who or what, but simply how and why.

Yoko Ono sued Premise Media Corp for having used the song "Imagine" without the proper license in their movie Expelled: No Intelligence Allowed. EMI's motion claims harm to its inability to license the song and filed the motion in the NY State Court. Premise's reply claims protection under Fair Use and First Amendment safeguards.

Professor Tim Wu from Columbia Law referred to the disallowance of a 30 seconds clip as fair use being an evidence of copyright law becoming a "censorship law". WSJ. com also stated that Judge Lowe seemed a bit skeptical with Falzone's response of "a specific emotional response" being a better trigger as opposed to lyrics being sung or 'flashed' on the screen.

The reply states that "It was not necessary for Jeff Koons to use the legs and feet from Andrea Blanch's photograph. He could have simply drawn a pair of women's legs and feet from scratch. "

I have to say I agree.

For any form of Art to be appreciated, the threshold is usually dependant on the effect it has on the viewers mind. Take for instance movies or books. A good movie transports you into another world, making you but a mere pair of eyes who at the expense of the director experieneces moments of joy, laughter or pain. Books are a step further. One is not even limited by what the eyes sees, but only one's imagination. Effect.

If effect is integral for an artist to render his expression, shouldn't the use of that particular effect be necessary to have the adequate parodying effect?

The Topps Company Inc v Cadbury Stani

At the heart of the appeal, was a judgement given in November 2006 by Senior US District Judge Charles S. Haight, JR. The plaintiff claimed misappropriation of trade secrets on the ground that the defendant continued to manufacture and sell the Bazooka bubble gum after the license ran out in 1996. Judge Haight granted a summary judgment in favor of the defendant.

The Court of Appeals in The Topps Co. Inc v Cadbury Stani determined that the case at the time of the granting of a summary judgement was not ripe for such an outcome.

A summary judgment is granted where there is no genuine issue of material fact that may be tried.

The trademark analysis taken by the District Court corresponded to licenses, the territoriality principle and the intent of parties for assignment in gross.

Addressing assignment "in gross", the Court of Appeals highlighted the fact that an assignment in gross means a "transfer of trademark divorced from the goodwill" and that such trasnfer is invalid in the U.S. However, the fact that the Agreement dealt with trademarks rights in Argentina and not in the U.S., Argentinian Law would apply.

Further, applying the principle of territoriality which states that the "trademark rights exist in each country solely according to that nations laws" (See ITC Ltd. v. Punchgini, Inc., 482 F.3d 135 (2d Cir. 2007)), the choice of law question turns to the "effect in Argentina" for determination. Thus, the question of whether Stani had rights transferred to it in the license agreement would depend on Argentinian Law.

A significant point made by the Court stating that under U.S. law the goodwill requirement is that assignees product be "substantially similar" and not identical to the assignor's product. The defendant's pleading showed that the product could be made without using the plaintiff's formulas. Thus here was a triable fact, and the case was not ripe for summary judgment.

Lastly, given that the trend in 1970 for taking business risk was essentially to push the limits to attain a "flexible definition of goodwill necessary to avoid prohibition against assignments in gross", the parties intent in this case would be sufficient to disallow summary judgement.

Bombay Stock Exchange -The SENSEX heavy weight Championship

"SENSEX". This is the term commonly associated with the Bombay Stock Exchange (BSE) "to represent its benchmark 30-share Sensitive Index." See. The Hindu. The trouble brewing is approximately 2 hours from Mumbai, in Pune, where Mr. Deepak Madhukar Mohoni, a stock analyst has laid claim to the coinage of the term dated as far back as 1989. He claims that the BSE did not begin to use this term till 1992-93. He further emphasizes that he has a claim of ownership in the term SENSEX. (Note: the news reports are slightly inconsistent on this). Further, there is the allegation that the unprecedented use by others shows that BSE's cannot claim distinctiveness of the term SENSEX. Thus, BSE should not be permitted to register it. Navi.org has laid down amongnst aother, three significant reasons for refusal of registration of this mark by BSE. Firstly, it contends that the mark is not registrable in India because: (a) the SENSEX is not associated with a product or service, (b) SENSEX is not an indicator of any quality and (c) that the continuous use by BSE is not unique. Further, it claims the the SENSEX is subject to the principle of a "genericized trademark." Section 9(1)(c) of the Trade Mark Act, 1999 of India states that there will be absolute grounds for refusal of a mark "Which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade. Shall not be registered." Clearly, one issue will be that of whether the term acquired distinctiveness or simply became part of normal parlance. BSE counter-argued by laying priority by its registration in the USPTO under classes 16 and 36. Navi.org alleges that BSE used BSE-SENSEX instead of SENSEX itself, the latter of which is associated with the general health of the financial market in India. As to ownership, given that the term was registered in the name of the Bombay Stock Exchange, a transfer of ownership warranted by Section 2.171 of the U.S Trademark Law Rules of Practice & Federal Statutes, USPTO, was not complied with and thus BSE cannot claim to be the rightful registrant of the US Trademark of the term SENSEX. According to the India Trade Mark Act of 1999 ("Act"), goods and services shall be classified based on the Nice Classification i.e. international classification which is mirrored by the Indian classification of goods and services. The term could fall into the services category. The SENSEX is often used to describe a sensetive index of 30 largest and the most actively traded stocks on the Bombay Stock Exchange. It is clear that the term is coined. Who can claim prior usage, if at all? Will Mohoni prudently stake no claim and stress more on the fact that BSE has no right to use what is customarily attached to mean the Indian Financial market. Will BSE claim its right through the presentation of satisfactory proof of having "acquired distinctiveness". From statements such as "Patents will mean nobody can use the names without the BSE's permission and it will be able to charge a fee or royalty for such usage." (SeeRediff News) to full fledged 'intellectual property asset realization' wars - it's a great pleasure to see a changing paradigm. Other Reports: Hindu IBN Live Daily News Analysis Rediff News

J&J's turn to be Red (&) Cross; OR NOT?!?

The controversy surrounds the use of the Red Cross or the Geneva Cross against a white background. The Geneva Convention was a result of Henry Dunant's efforts to supply humanitarian assistance to the wounded on the battlefield and the distinctive Red Cross was a product of the Convention for the Amelioration of the Wounded in Armies in the Field. More recently, under the Federal Criminal Code, Section 706, the Red Cross may not be used or displayed by anyone other than the American Red Cross ("ARC") itself. Johnson & Johnson ("J&J") unhappy with ARC having licensed such use to four other parties, pursued litigation.

Judge Rakoff noted that "on the face of it Section 706 does not prohibit ARC from making any use whatever of the Red Cross emblem and words." His interpretation is based primarily on one, the Charter Act of 1910 which emphasizes this "breath of use" and second, the lack of prohibition in Section 706 for ARC's use of emblem and words.

The Charter Act of 1910 states that the use of the logo is prohibited by any one other than those already mentioned "for the purpose of trade or as an advertisement to induce the sale of any article whatsoever or for any business or charitable purpose”. The licensing agreement which ARC entered into was "for the purposes of trade" and to "induce the sale of an article." The licensing agreements also do "not contravene Section 706" as the purpose of such agreement is charitable, thereby legitimizing the entire use. Further, licensing to third parties, who under agreement such as "cause marketing" used the logo for similar purposes, is not prohibited. For the cases where the third parties make use of the logo for profit, there is still no violation of Section 706 because ARC expressly permitted such use. The opinion states specifically "In both cases, ARC itself is engaging in a use the statute permits, and the subsequent uses of the Red Cross emblem and words by the parties with whom ARC contracts, not to mention those still further down the usage chain, cannot be held to violate 706 without thereby rendering nugatory the permission granted ARC for the initial use."

Significantlym, J&J claimed that ARC's trademark should be invalidated which was subsequently counterclaimed. Premised on the violation of Section 706, a claim for invalidating the trademark, the exclusive use of which was granted by Congress to ARC 100 years ago, failed. The Court found that since Section 706 was not violated, the question of invalidating the trademark rights owned by ARC is moot.

The saving grace for J&J was that, it remained in legitimate use of the logo and was not indulging in commercial uses inconsistent with the purpose originally determined. J&J falls into the excepted "grandfathered" user, it's use will be protected if the use of the "the emblem “for the same purpose and for the same class of goods” as it was before 1905." (See fn 13. in Opinion: "The grandfather clause of 18 U.S.C. § 706 reads: “This 13 section shall not make unlawful the use of any such emblem, sign, insignia or words which was lawful on the date of enactment of this title.”). The Court finding that J&J's commercial uses were consistent with the pre-1905 uses, declined to grant ARC's allegation that J&J's current use exceeded those granted by the "grandfathered" clauses.

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Other Comments:

(1)New Jersey Business News:

"In his opinion, Judge Rakoff noted the Red Cross had an agreement dating as far back as 1904 to use its logo on first-aid kits sold by a New Jersey company called First Aid Supply of the Red Cross, in exchange for a small sales commission."

Thus, Judge Rakoff lays stress on the existence of licensing agreements as far back as 1904. Steering his interpretation towards the "purpose" being consistent with the Charter Act and the lack of prohibition on licensing if the purpose was "charitable, business oriented" and "authorized" by ARC, Judge Rakoff implied that ARC had a free hold on deciding the use of the logo.

"The judge also said there could be little confusion in consumers' minds about the difference between a J&J product and one merely endorsed by the Red Cross."

That's self explanatory really!

Dr.iPod

A regular Sunday evening usually surrounds sushi, glass doors and people watching. It was a particularly boring evening, so I began drifting off into thought. All of a sudden, my senses were yanked to rapt attention by the blaring and brightly colored automobile that whizzed part. Dr.iPod! Aha! Instantly, the question posed to me was - can they do that?

The two greatest words in the IP arena are -FAIR USE!

Under the US Trademark Law, there are two forms of permitted trademark fair use - Classic and Nominative fair Use. These are the two "get me out of jail free" cards from the trademark infringers lot.

Classic Fair use is usually permitted when the trademark is descriptive enough to not allow easy alternatives. For example: a trademark called "Bright bulbs". If a defendant wanted to describe his bulbs as bright bulbs, the plaintiff would have a difficult time arguing against the defendant's fair use defense.

Nominative fair use, on the other hand, is permitted when the use of a trademark is necessitated by its simple uniqueness. Eg: Chanel No. 5. In New Kids on The Block v News American Publishing, the test laid down for determining whether or not the use is nominative is:

a. The product or services must not be readily identifiable without the use of the trademark
b. The use of the mark must be as much as is reasonably necessary to identify the product or service
c. The user must not do anything that suggests sponsorship or endorsement by the trademark holder

Professor McCarthy has stated that, "nominative fair use" is "a term to denote one situation in which a mark is used in a manner that does not cause confusion and is therefore non-infringing." So, at the end of the day nominative fair use essentially begs the question - is there going to be confusion?

Apple Inc., as stated in an article on msnbc, is known not to "accept exchanges on iPods under warranty if their screens have been cracked or if it’s clear they’ve been dropped". So what would Dr. iPod do? Call himself exactly that, the use is restricted to identification of the product and certainly, no one can be confused into wondering "is Apple sponsoring this service?".

Ah well, it is in strange ways that one is reminded of the basic principles and doctrines of law. Sometimes a welcome reminiscing of old school days.

Harry Potter: Findings and Conclusion of law submitted by

Defedants RDR
&
Plaintiff's Warner Bros. and JKR

Getting Spank(d) is no fun for this Brit

The Atlanta based creators of SPANX have sued Sexy Panties And Naughty Knickers of London with a lawsuit alleging trademark infringement. The allegation is that the phonetic and visual similarity between SPANX and the abbreviation of the British Company's name i.e. SPANK, consumer confusion is inevitable.

The US TMEP in section 1207.01 discusses the factors considered to determine similarity between marks. When considering a word mark, a comparison between appearance, sound, meaning and commercial expression is done. The other important considerations would be the similarity in appearance, phonetic equivalents and meaning. The marks SPANX and SPANK have only the last letter which is dissimilar. SPANX goods include - "Clothing, namely hosiery, tights, socks, body shapers, bodysuits, camisoles, bras, panties, slips, shirts, pants, dresses, and skirts" and SPANK makes lingerie. Given that the marks are similar in appearance and sound, and the meaning in relation to the goods creates a commercial impression which is likely to cause consumer confusion - SPANX seems to have all the odds in its favor.

Three Stri(p)es and You're Out!

In 2001 Collective Brand's Inc. was sued by Adidas, claiming that Collective's shoe sporting two or four stripes infringed their distinctive three stripe-mark shoes. Out of 262 pairs of shoes, Adidas won it's claim of trademark infringement as against all but one Lot No. 9055. The jury found that Collective Inc. was guilty to an amount of $76.5 million. With simple check marks answering "yes" to trademark infringement, trade dress infringement, trademark and trade dress dilution, federal and state, deceptive trade practices, Collective's fate was sealed. Martin Schwimmer links to an interesting blog by Rebecca Tushnet's 43(B)log who addresses the issues of the value here of surveyed goods v. 'accused goods', bad faith, confusion, dilution and aesthetic functionality.