PRO-IP Bill - UPDATE

The Pro-IP Bill , devoid of its provision permitting DoJ to file civil suits, has now been passed by the House and the Senate.

WordScraper scrapes through on Scrabulous matter

The Agarwalla brothers, as the decision of the Delhi High Court states, may not use the word "Scrabulous" as it amounts to trademark infringement. The Trademark Act of India, 1999, under Section 2(h) defines "deceptively similar" as "A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion." The word Scrabulous ofcourse was found to be so.

The Scrabble board itself does not however meet the threshold of originality to enable copyright protection. With that matter settled, the Scrabulous now WordScraper board, with a few tweaks, has set sail. In a sheer display of ingenuity, squares have been replaced with circles.

Microsoft scoffs at the existence of G.ho.st ('s TM)

A trademark dispute has arisen over the term "No Walls."G.ho.st claims that they have a pending trademark registration of their tagline "No Walls" and has been using it for the past eighteen months. (See Kara Swisher, Yahoo) Microsoft, "to their knowledge", denies it's existence. However, G.ho.st. has applied for the mark "No Walls", serial no. 77576419, under Int'l Class 009 on September 23, 2008.

Claiming that "No Walls" is the tenet of their business model which facilitates free, personal computing through an online presence, as opposed to being tied down by "physical devices", the CEO of G.ho.st. has claimed "unfair competition, palming off and dilution of our trademarks."

Microsoft, fires back stating that:
"Even if they did [own a trademark], they cannot prevent others from using the words ‘no walls’ together in a sentence or in a descriptive manner in ad copy. Nor can they claim ownership in word ‘wall’ or the idea of a wall. The tagline for Microsoft’s new ad campaign is ‘Life Without Walls’–a slogan that, taken in its entirety, is not confusingly similar to Ghost’s purported ‘motto.’”

The retort touches on some basic principles of trademark law. These are generic terms set up as a combination mark - so what? I can use it as a descriptive term. That is a Classic Fair Use defense. Descriptive marks often suffer from this vulnerability. Interestingly, however, in Zvi Schreiber's letter, the companies represented benefits attempts to form an association with "No Walls" and the lack of physical devices.

E.g:

* A personal computing environment (desktop, file system, apps) which is not “walled” into - or installed on–a physical devices–but is hosted and available from any browser

* A personal computing environment which is free of charge and not only for the well off

* A personal computing environment that does not require administration–no need to install or update software, no need for the user to perform backups or fight viruses

* A personal computing environment which is online and allows all users globally to share with each other directly.

A statement that an "Idea of a wall" cannot fall under ownership claims, attacks exactly these benefits. Though trademark law or any form of intellectual property right does not protect ideas, per se, trademark law certainly does applaud "association". This is the very basis of acquired distinctiveness. What do you associate "No Walls" with - the company. Why? The concept of being free of physical barries i.e. walls.

Well, let's see how this proceeds.

Facebook & Privacy Issues

Ever tried this?When your birthday is listed on facebook, everybody you know, knows it’s your birthday. (Urgh!)But what happens when you send out a minimum of 5 birthday messages to one of your friends and post it on their wall. You hit a jackpot. The "Facebook Team" sends that person a birthday message, which by the way disappears the next day. Hmm….interesting. Privacy issues?

Privacy Policy, Facebook:

"Facebook may also collect information about you from other sources... in order to provide you with more useful information and a more personalized experience."

Very personalized.

LV v City Chain

LV sued City Chain for trademark infringement of its Flower Quatrefoil and Flower Quatrefoil Diamond. Quatrefoil means "a representation of a flower with four petals or a leaf with four leaflets, especially in heraldry." In other words, a representation that we distinctly recognize as being associated with LV.

LV uses this pattern on many of its products. It claims that the quatrefoil pattern is distinctive to LV and City Chain's usage of the same pattern will confuse consumers. The existence of a similar product in the market lessens consumer appeal for a LV watch with the LV pattern. As a result, no distinctiveness remains.

A claim for trademark infringement looks at factors such as strength of mark, degree of similarity, proximity of products or services, quality of defendant’s products or services, sophistication of the buyer, etc.

City Chain defended itself by stating that there is no similarity in the quatrefoil designs and that the consumer bases for LV and City Chain are dissimilar. Claiming use of the quatrefoil as a decorative mark, it emphasied non-resemblance to the LV trademark. Additionally, to bolster its defence against consumer confusion, City Chain points to the presence of the word "Solvil" on the watch.

Having the word "Solvil" on the watch, albiet as Mr. Wong (from LV) says is in a small typeface, is a factor that will be considered as evidence of dissipating consumer confusion. Another significant factor considered will be the difference in the consuming public for the two products.

Now to see what evidence is presented in support of or against existent or potential consumer confusion.

Links:

Todayonline

Quatrefoil

Straits Times

Yahoo Yodel Registered in India

While we are riding the wave of registration issues with non-traditional trademarks, a recent development in India is noteworthy. For the very first time a sound mark has been registered. Under the Indian Trademark Act, to be registrable a mark must be capable of graphical representation. The Yahoo Yodel, consisting of “the sound of a human voice yodeling the word YAHOO!” was registered in August 2008.

Strategy to register a non-traditional trademark

I know this comes a bit late given that Apple registered its "non-traditional" trademark for the 3-D shape of the iPod [or even Yamaha Motor Craft for its arcing water spray!]. Yet, I wanted to link up to this article on WSJ because it gives a great 5 step stratergy on how to successfully register a non-traditional trademark.

1. Give the product a unique name (See Marketing Dept.)
2. Make sure you get the utility and design patents i.e. make the design unique (See Product-Development Dept.)
3. Advertise it heavily (Marketing), but isolate product shape and company name to get the intended effect.
4. Apply for traditional trademarks that are a step towards the registration of the non-traditional trademark. Get the 2-D registration and one for co-branding use.
5. Finally, having covered every possible base, apply for the non-traditional. The classfication should not be too broad. Keep it simple and with a distingushing feature.

Good to know.

Enforcemant of the IPR Act, 2008

The Enforcement of the Intellectual Property Rights Act, 2008 is causing substantial unrest. The Enforcement of IPR Act gives the government authority to enforce civil suits against copyright infringers. This Act takes its roots for language and identity from Senator Leahy's PRO-IP/PIRATE ACT. His justification for Government Authority in instituting civil suits for copyright infringement is the necessity to avoid the severe consequences that result from criminal sanctions. In essense, it's highlights are:

"Title I -This title gives the Attorney General authority to bring civil actions against anyone whose conduct constitutes criminal copyright infringement.

Title II- Enhancements to Civil Intellectual Property Laws - More specifically, it amends the Copyright Act so that registration of a copyrighted work is a requirement before bringing a civil infringement suit, but not a criminal one. This title also allows seizing documents and records in civil infringement actions concerning the manufacture, sale, or receipt of things involved in those violations.

Title III - Enhancements to Criminal Intellectual Property Laws. The general forfeiture provision is also improved in two ways: it does not permit forfeiting property used in an offense unless it is owned or predominantly controlled by the violator or a conspirator, and it requires the government to establish a substantial connection between the property and the violation."

The opposers have requested revisiting this Act so that certain issues may be addressed in a more fair manner. The details are enumerated in the letter and the significant highlights are as follows:

1. DOJ does not require a right to pursue copyright infringers because "Movie and television producers, software publishers, music publishers, and print publishers all have their own enforcement programs."
2. This Act deposses a defendant from protections he has in a criminal action.
3. The burden of proof for the government is "preponderance of evidence"- a standard too low.
4. The defendant is not eligible to receive free legal representation
5. S.3325, Title III exposes property of "unaffiliated, non-infringing thrid parties" to forfeiture (read online service providers). This expands the normal criteria i.e. forfeture of property requires ownership of infringing property or predominant control.
6. What is the limit on forfeiture on such third party sites. Does it expose a "virtual bystander's" material to such forfeiture?
7. Forfeiture is also imposed for technological circumvention. This adds fuel to the fire for an existent controvery on imposition of potential liability for technological circumvention in cases of fair-use.

Opposers include the EFF, American Association of Law Libraries, Consumer Union, IP Justice, Medical Library Assocition, to name a few.

It is a bit frightening. Substantial contentions have been raised. A tax payer's money being used to "confer "an enormous gift of federal resources to large copyright owners" (See letter) is scary, but it has been correctly said that it might also be a real deterrent in promoting the free-wheeling spirit of innovation. One's brainstorming and experimentation could land you in a gladiator style scenario. You have your hopes and dreams and they have the big bucks to hound you down to submission. Try winning against that!

However, what concerns me more is the broadness of the forfeiture provisions. Hmm....

Rowling v. RDR, The Decision

The verdict is in.

"Mr. Ark may not attempt to sell a plum-cake,

the plums of which were not his for the taking!"

I'm joking. Rowling in her testimony during the trail had dramatically analogized her work to a plum cake and Mr. Ark's work being a product of stolen plums.(See here) So in other words, claims of fair use were thrown out and Ms. Rowling succeded in proving copyright infringement and irreperable harm.

Quantitative and qualitative copying go towards demonstrating copyright infringement. This is the basis of the substantial similarity test in Ringgold. Rowling established successfully that the Lexicon had copied a quantity sufficient to demonstrate a "finding of substantial similarity between the Lexicon and Rowling novels." As for qualitative taking, Rowling's character's and work is decidedly fictional. Judge Patterson also added that "even though it's expression can be used in a "factual capacity"," the expression is still fiction and not reduced to facts. Similarly, re-arrangement of fictional facts does not "re-alter" Rowling's work enough to allow the Lexicon to escape the existence of substantial similarity in their works. Further, though the Lexicon's "plot summaries" were not extensively detailed and comprehensive, they were sufficient to warrant the establishment of a prima facie case of copyright infringement.

Fair use consider four factors which I have detailed before.

The first factor requires, and as I stated, an identification of how transformative the Lexicon was. The Court found that though the transformativeness of the Lexicon was inconsistent, it nevertheless served as a useful reference guide for the public. The commercial nature of the work weighed only "slightly against finding of fair use." The Court also pointed out that a finding of bad faith is not central to a fair use analysis. Thus, Vander Ark's genuine belief that his work was "ultimately fair" did not give the plaintiff's a win in this subfactor.

As for the second factor of fair use, the outcome of this may be summed up in the following quote: "The Lexicon's verbatim copying of such highly asthetic expression raises a significant question as to whether it was reasonably necessary for the purpose of creating a useful and complete reference guide." Needless to say, this factor hugely disfavored the defendant.

Distinguishing the purposes a child would read the Lexicon for from the Harry Potter novels, Judge Patterson categorically stated that it was highly unlikely that the Lexicon would usurp a market for the novels. However, the Lexicon most certainly can substitute the market for companion books and derivative works based on the songs and poems in the Harry Potter novels.

Significantly, Judge Patterson, in support of striking a balance between ownership rights and freedom of expressions, encouraged production of reference guides, as long as they did not, in the words of Rowling, "plunder the works of original authors".

Rowling prevails; The Lexicon must retreat

Judge Patterson has determined the Harry Potter/RDR matter in favor of J.K. Rowling. The Lexicon failed to qualify for fair use; Ms. Rowling successfully proved irreperable harm from it's existence.

Links:
New York Times

Warner unhappy with the discovery of Harry Potter's Indian brother - Hari Puttar

Warner Bros. sued Mirchi Movies in India in an attempt to stop the release of the latter's movie called "Hari Puttar". The basis for the lawsuit is the uncomfortable similarity in the title with Harry Potter. The etymological significane of "Hari" is that it is another name for the Indian God, Vishnu. 'Puttar' simply means son in hindi. Trademark registrations are also often contested on phonetic similarity because it can lead to consumer confusion. As for claims of copyright, since titles are not protected under copyright law, it shall be hard to sustain that claim. Warner Bros. is notoriously famous for leaving no stone unturned in their effort to protect their IP rights. And just as much for not divulging details of their pending litogation. Once disclosed, I shall post more on this interesting matter soon.

LINKS:

Yahoo
Reuters

UPDATE:

Suit dismissed. Reason : No consumer commonality to facilitate consumer confusion

Veoh: iO you nothing because V-oh! are always SAFE

It's been a long summer break and am glad to transition back on a strong pulse. With a good concrete ruiling.
The looming issue was whether DMCA's safe habor provisions protect websites surviving on user generated content, when such content is copyrighted. Yes. As long as such websites aggresively disallow infringers to operate in their cyber-realm, they are protected by the safe harbor provisions.
In a iO Group v Veoh, stringent compliance with DMCA provisions and a proactive approach to reporting repeat infringers to Copyright Agents played hugely in Veoh's favor. Veoh actively enforced its user policy and acted "expeditiously" in its notification and take down procedure.
A lesson well executed by Veoh and an important business MUST-Do for those who are lagging. Dedicate personnel to guarding against potential and huge copyright liability by complying with DMCA and taking that extra lap for serious enforcement.