Law & Entrepreneurship News

Archives: Copyright & Trademark

Family Entertainment and Copyright Act Passes House

The Family Entertainment and Copyright Act, passed last year by the Senate, has passed the House and is now in President Bush's hands.

The Washington Post reports:

The bill would protect technology that lets people automatically skip or mute sections of commercial movies that contain foul language, violence or nudity. The bill would assure manufacturers of DVD players and other devices that use the technology that they would not be violating Hollywood copyrights. The bill also would make it a federal crime to use video cameras to record films in movie theaters, and it would set penalties of up to 10 years in prison for anyone caught distributing a movie or song before its commercial release.

SCOTUS Hears Arguments in Grokster

As scheduled, the Supreme Court heard oral arguments for the Grokster case yesterday.  So far, it looks as though at least some Justices are uncomfortable with tightening the copyright laws.  Justice Souter remarked, "I know perfectly well that I can buy a CD and put it on my iPod.  But I also know if I can get music without buying it, I'm going to do so."  The problem comes when you consider what Souter reffered to as "the guy in the garage."  "The question is: how do we know in advance that we can give the inventor -- that is, the developer -- the confidence to go ahead?" asked Souter.  "How do we avoid the foregone conclusion that the iPod developer is going to lose his shirt?"

Justice Ginsburg addressed an alternate concern that SCOTUSblog reports troubles a number of the Justices: how does one judge secondary infringement in the digital age?  Under the Betamax standard, secondary infrigement claims will fail against a product with substantial non-infringing uses.  So the question becomes: is the Betamax standard somehow inadequate for digital technology?

More as this develops...

Tractor Giant Wants Square-Dancers to Relinquish Trademark

Case New Holland ("CNH") has filed a petition with the USPTO to cancel a trademark owned by Iowa farmers who use CNH tractors for a touring square-dance show.

Since 1998, 11 farmers from Nemaha, Iowa have been touring their square-dancing tractors under the trademarked name Farmall Promenade.  Now CNH, which currently owns a trademark for tractors under the Farmall name, wants the farmers' trademark cancelled.

CNH maintains that it has no desire to shut down the square-dancing machines; it simply wants to protect the Farmall name on apparel.  But the farmers believe their trademark allows them to sell T-shirts and similar merchandise bearing the Farmall Promenade name.

Says one farmer, "We're fighting it because we don't think we've done anything wrong."

Hatch to Head IP Subcommittee

A new Senate subcommittee on intellectual property was created last week, with Senator Orrin G. Hatch (R-Utah) named as its head.  Hatch has been a vocal proponent of expanding copyright protections; some readers may recall that Hatch once suggested that those who download copyrighted materials from the Internet should have their computers automatically destroyed.  Although Hatch has not mentioned plans to pursue this response, he has said that the subcommittee will have an an "aggressive agenda."

USPTO Goes on Hiring Spree

The USPTO announces plans to hire close to 1,800 patent examiners over the next two years, a staff increase of nearly 50 percent. The hiring spree is in response to an expected year-end backlog of 580,000 applications.

Marvel Claims Dismissed as Sham

Comic book giant Marvel hit a major roadblock in its trademark infringement case against the developers of the video game City of Heroes.  Last week, a district court judge dismissed more than half of Marvel's claims.

The controversy centers around the core concept of the game: players create superheros— customizing everything from costume to special powers— and do battle in a massive online world.  The problem, according to Marvel, is that the game allows players to create characters to similar to its own trademarked heros.

Late last year, Marvel sued the game's creators, NCSoft and Cryptic Studios, seeking an injunction against the companies to stop using its characters.  Last week, more than half of their claims were dismissed.  A district court judge found, among other things, that several allegedly infringing characters being offered as evidence were actually created by Marvel.  The claims, which the judge called a sham, were dismissed without leave to amend.

The defendants now have 10 days to dispute remaining claims.

WIPO Reports Rise in Cybersquatting

The World Intellectual Property Organization (WIPO) reported 1,117 cases of cybersquatting in 2004, a 6.6% increase from the previous year.  In the late 1990s it became apparent to both squatters and trademark owners alike that the territorial nature of trademark law, and the global nature of the Internet would conflict when it came to domain names.  A "cybersquatter" is someone who uses the registered trademark of another entity and registers it as a domain name.  The domain registered under the name is usually left blank while the cybersquatter waits for the trademark owner's best offer.   An entrepreneurial cybersquatter would have registered an exact tradename, plus several confusingly similar others.   WIPO created the Uniform Domain-Name Dispute Resolution Policy (UDRP) in response to an international cry for alignment of national and international IP rights on the Internet.

Although most disputes originate with companies in the United State, in 2004 WIPO also handled claims of cybersquatting from more than 20 countries around the world.  There are four approved Domain-Name Dispute Resolution Providers, WIPO, The National Arbitration Forum, CPR Institute for Dispute Resolution, and the Asian Domain Name Dispute Resolution Center.  All organizations operate under UPRP Although disputes can be brought to court or arbitration either before or after the determination of the dispute by an approved organization, decisions of UDRP have equivalent effect of a binding international arbitration and as such are likely to be upheld in court. 

80% of WIPO domain name disputes are resolved in favor of the trademark holder. And, WIPO Deputy Director General Francis Gurry feels that, "UDRP has been highly successful in creating a deterrent effect as well as providing trademark holders with an effective international remedy against cybersquatting."

Big Apple World's Second Home?

Perhaps as part of its bid to host the 2012 Olympic Games, the Big Apple is hoping to give itself a new nickname. The City of New York recently applied for the trademark "The World's Second Home." If approved, the city would have exclusive use of the slogan on a staggering variety of products: sunglasses, mousepads, fanny packs, neckties, T-shirts, bedroom furniture and disposable paper baby bibs, to name just a few.

Task Force Arrests 12 Infringers

Don't get me wrong: I take issue with the RIAA as much as the next guy. After all, they did sue a dead woman. But take note of the activities of the National Anti-Piracy Task Force in Ghana. In a three-day exercise, 12 suspects were arrested for possession of a combined 7,632 pirated CDs. Granted, that is quite the cache of pirated music; one suspect alone had 3,726 copies. But one arrestee had only 24 discs! 24! I know, I know. Breaking the law is an issue of quality, not quantity, and even one illegal CD exposes one to criminal sanction. But 24? You have 24 illegal copies right now, don't you? I thought so.

SCOTUS Set to Hear Grokster

On March 29, the Supreme Court will hear arguments in a case that could become a landmark in copyright law: MGM Studios, Inc. v. Grokster, Ltd.

The Grokster saga began when nearly every significant name in the entertainment industry teamed up to bring suit against the makers of peer-to-peer (P2P) file-sharing software such as Morpheus, Grokster and KaZaA.  The plaintiffs alleged that these P2P networks are used primarily for exchanging copyrighted materials by people without rights to distribute those materials.

Grokster's liability could be established my two alternate theories.  Contributory copyright infringement occurs when a defendant, with knowledge of the infringing activity, materially contributes to the infringing conduct of another.  Vicarious liability on the other hand requires that the defendant has the right and ability to control the infringer's acts and receives a direct financial benefit from the infringement. 

Will either theory prove successfull?  Previous attempts have failed.  Relying primarily on the Supreme Court's landmark decision in Sony Corporation of America v. Universal City Studios, Inc. (a.k.a. "Betamax"), the Ninth Circuit found [PDF] that P2P file-sharing software is capable of noninfringing uses.  Thus, the distributors of Grokster and Morpheus software could not held liable for users' copyright violations. 

But will the Supreme Court follow the Betamax ruling? Soon, that question will be settled once and for all.

More on this as it develops...

SciAm: Copyright Law Unbalanced

From an article by the editors of Scientific American:

Congress, sometimes at the behest of media companies, has erected immense barriers to derivative works by extending repeatedly both the length and the scope of copyright protection... Copyright in its current form fails to strike a balance between the extremes of allowing total control over every work--"all rights reserved"--and an anarchic system in which pirates steal wantonly without recompense to owners. Overly strong property rights can threaten the Internet as a medium capable of fostering dynamic interchange of ideas... The Internet, as a universal publisher of sorts, needs to be more than an outlet for commercial interests. Nascent communities of artists, scientists and nonprofits want some way to share and rework one another's intellectual output without the enormous legal burdens that come with increasingly draconian rights management.

Tabasco sues Tabasco's

Louisiana-based McIlhenny Co. is suing Tabasco's Mexican Restaurant and Patio in Marion, Iowa. McIlhenny Co., which has produced its pepper sauce under the name Tabasco since 1868, claims the Iowa restaurant infringes its copyright.

"[This] use of the Tabasco mark to identify [the] restaurant and restaurant services is improper," wrote J. Rodgers Lunsford, a lawyer for McIlhenny. But Tabasco's Mexican plans to fight the suit, claiming that their name does not infringe; they even added an apostrophe to avoid any confusion.

The peppers used to make Tabasco sauce are Capsicum frutescens, more commonly called cayenne peppers. The McIlhenny Co. first found these pepper growing in the Tabasco region of Mexico and borrowed the name for their spicy sauce. Tabasco's Mexican claims it is this region, and not the popular hot sauce, from which their name is taken.

But the pervasive association of the Tabasco name with McIlhenny Co. is well-founded. The Capsicum variety used by the company are routinely referred to as Tabasco peppers, as the company is the primary cultivator of the pepper.

The lawsuit seeks to force the restaurant to get a new name, as well as pay damages to McIlhenny Co.

Wisconsin Tourism Jingle: Infringment?

Wisconsin Governor Jim Doyle unveiled a new tourism campaign for the state last week, which includes the adoption of a new slogan: Wisconsin — Life's So Good.  As part of the $3.8M initiative, a Milwaukee man was commissioned to pen a song to accompany television, radio and internet ad campaigns.  The resulting jingle, "Life's So Good," was incorporated into ads played throughout the region, whereupon many listeners found themselves asking, "Where have I heard that before?"  If the listeners happened to be fans of the British group Supergrass, they may have been hearing similarities between "Life's So Good" and "Alright," a single from the 1995 Supergrass release "I Should Coco."

The Department of Tourism is apparently unconcerned, citing a difference in the lyrics as enough to distinguish the tunes.  Unfortunately, this could prove insufficient for the state to prevail should a copyright infringement lawsuit be brought.

“It's a common misconception that you can change a work of art a certain percentage, and avoid infringement,” said Nick Kees, an intellectual property lawyer. “The problem is starting out with something that exists before and changing it, that whole process will only result in copyright infringement."  Essentially, the question of similarity would come down to a jury issue and at least some people see that similarity.  “I had never heard either song before but they seem very, very similar,” said Meg Ingram after hearing them both.

Trademark Application Files Available Online

The U.S. Patent and Trademark Office is making full files for trademark applications— including decisions made by examining attorneys— available online.

The Trademark Document Retrieval (TDR) system makes available, as downloadable and printable PDF files, over eight million document pages.  This represents the approximately 400,000 trademark files created since USPTO moved to the paper-free First Action System for Trademarks (FAST).  The remaining 1.2 million  pre-FAST trademark registrations will be converted and moved to TDR over the next five years.

USPTO's Jon Dudas explains, "The TDR system improves our ability to provide timely and useful information to business owners as they develop their marks and prepare to file trademark applications.”

Madonna Sues Mary

Pop singer Madonna has filed a copyright infringement suit against singer Mary J. Blige and Blige's producer Dr. Dre. The claim alleges that Blige's song "Not Today" resembles Madonna's 1983 release "Holiday." One musicologist claims the songs are similar but just not similar enough. "Madonna's song is in what we call 'major key' and Mary J Blige's song is in a ‘minor key.’"

The publishers of Madonna's song stand to gain $15 million if victorious in the case.

Pirate Jailed

A Maryland man as been convicted for software piracy and sentenced to 18 months in jail. Through his pay-for-access site, Kishan Singh offered pirated copies of business software. Thousands of pirated versions of the programs were downloaded from Singh's site, valued between $70,000 and $120,000.

Barnes & Noble May Lose Right to Sell "Half Price Books"

Two years ago, Half Price Books filed suit against BarnesandNoble.com alleging infringement of its trademark "Half Price Books." Half Price Books claims its competitor uses the trademark as an "attention-getting symbol" on its Web site. The original complaint requested a preliminary injunction, which was denied. But BarnesandNoble.com's motion for summary judgment was recently dismissed as well.

According to the opinion, "While BN.com's name is displayed on each and every page (of its Web site), a reasonable jury may find that the usage of 'Half-Price Books' on the webpage is sufficiently prominent to suggest that there is an affiliation between HPB and BN.com."

Family Entertainment and Copyright Act Passes Senate

As expected, the Senate did not include the Induce Act when it passed the Family Entertainment and Copyright Act of 2004 [PDF].  The Act, a revision of the Intellectual Property Protection Act, also removed a provision that would have allowed the attorney general to file civil lawsuits against copyright infringers.  Remaining in the act were provisions from the Artists' Rights and Theft Prevention Act, including those creating stiff penalties for bringing audiovisual recording devices to movie theaters.

The bill comes before the House of Representatives early next month.

Entertainment Industry Losing Clout?

There's an interesting piece over at CNET about the entertainment industry's flagging clout with legislators. Of note is that the controversial Induce Act will not be passed by the current Congress.

Microsoft Trademarks Excel

Nearly twenty years after introducing the spreadsheet program Excel, Microsoft registered Excel as a trademark earlier this year.  Though the name is already protected under common law trademark, Microsoft spokeswoman Stacy Drake says, "It doesn't hurt to take it one step further."

The move may have been the first step in the software giant going after infringers.  Microsoft recently sent a letter to TurboExcel developers Savvysoft, demanding the name of their product be changed.  One of TurboExcel's  features allows Excel spreadsheets to be converted to run on the Linux operating system, the open-source rival to Microsoft's  Windows.

LeeAnn Chen, marketing director with Savvysoft, said, "We don't think they're really upset about the trademark.  We suspect the reason Microsoft is picking on us is that they don't like what our product does."

Drake disagreed, saying, "It is always about the trademark... it's about the name."

"The Copyright Funnel"

p2pnet is carrying an interesting rant against the current copyright system.  The author, allegedly the son of a renowned and now-deceased composer, believes the current system is designed not to protect authors, but to sustain a large and profitable copyright industry.

"The theoretical concern of the law, it is claimed, is about the input (wide) side of the funnel as an incentive for the producers of the works, the creators," writes the author. "The copyright and contract laws act to make the output side of the funnel as small as possible. The correct thing is to have incentives so more creations are made available to the public. The concern should be for the output side of the funnel to be as wide as possible."

The author's proposed solution to what he calls the Copyright Funnel: eliminate copyright law and pay authors for their works via taxes. "Whatever income is lost by the copyright industry," he explains, "if the output end... is reduced, it is money saved by the consumers, who will spend the savings in such a manner that more taxable wealth is created, so no jobs are lost and with the taxes the creators can be paid."

Wolverine v. Mouse: Marvel Sues Disney over Character Licensing

Marvel Enterprises Inc., owner of copyrights in characters such as Spider-Man, the Incredible Hulk and X-Men, has sued to strip Walt Disney Co. of licensing deals in those characters.

The original licensee to the characters, Fox Family Worldwide, was purchased by Disney in 2001. Marvel is now asking for a declaration that Disney never legally assumed copyrights to the Marvel characters through the purchase.

This lawsuit stems from a suit earlier this year in which Marvel sought some $55 million in royalty payments from Disney for animated series featuring Marvel characters. "As we got further into the analysis of the underlying agreements with respect to first lawsuit, the more apparent it became that Disney never properly got the rights in the first place," said Carole Handler, attorney for Marvel.

A Disney spokesman said the company had not seen the lawsuit and had no comment.

Bush Cans "Still the One"

The members of Orleans weren't happy when they heard President Bush was using their 1976 hit "Still the One" at campaign events. John Hall, co-writer of the song and a Kerry supporter, sent a formal letter of complaint to the Bush Campaign.

The Campaign does have a blanket license through BMI, which gives the Campaign access to millions of song, including "Still the One." Nonetheless, the Campaign has stopped using the song, out of respect for Hall's concerns.

In an open letter on the band's website, the band says it appreciates the move by the Bush Campaign. "This is about intellectual property rights and proper licensing procedure," Hall said. "I'm not just some guy that's stoned out and happened to write a song."

Trademark Infringement Threat to Domestic Security?

The Oregon-based Pufferbelly Toys was visited by agents for the Department of Homeland Security (DHS) and ordered to remove a toy called the Magic Cube from shelves. According to DHS agents, the toy infringes on the trademark and patent of the popular Rubik's Cube.

AvantIQuick Offers Free Trademark Search

A quick search with AvantIQuick, provided by Markenbusiness, checks 18 international trademark databases, accounting for over 14 million registrations.

Lexmark Loses Printer Cartridge Appeal

Lexmark International lost its appeal attempting to prevent third-party manufacturers from competing with the company in production of printer ink cartidges.

Lexmark printers will only work with the company's proprietary print cartridges. To work around this, Static Control Components (SCC) manufactured the Smartek chip, which could be added to a third-party cartridge and would then fool the Lexmark printer in functioning normally. Lexmark sued SCC under the DMCA, an approach that was successful and earned Lexmark a preliminary injunction against SCC. However, in reversing the lower court's judgment, the 6th Circuit Court of Appeals held, "companies like Lexmark cannot use the DMCA in conjunction with copyright law to create monopolies of manufactured goods."

Read the full opinion [PDF].

California Mall "Ultimate Shopping Resort"

Orange County's South Coast Plaza, a mall featuring five department stores and numerous luxury boutiques, is more than a mall. ''If you look at the travel destination we've become, we're more than just a mall,'' said Werner Escher, South Coast Plaza's executive director of international and domestic markets. To reflect this notion, South Coast Plaza sought to trademark the slogan ''The Ultimate Shopping Resort.'' The USPTO recently approved their application.

ASCAP Enters $1.7B Licensing Deal

The American Society of Composers, Authors and Publishers (ASCAP) has licensed the work of its artists to the Radio Music License Committee (RMLC) for 1.7 billion dollars. ASCAP represents over 190,000 artists and boasts a catalog of more than 7.5 million musical works. RMLC represents nearly 12,000 commercial radio stations in the U.S. The licensing deal between the two marks the largest single licensing deal in the history of American radio. The settlement provides stations the right to perform ASCAP music on-air as well as in streaming webcasts.

The new license replaces an old revenue-based system which many felt was too complicated and provided insufficient compensation to ACSAP artists.

ASCAP's Director of Licensing Vincent Candilora said, "We were pleased to have reached an agreement that establishes significant income increases for our members that they can count on well into the future, and provides the radio industry with the planning information and simplified administration it views as critical for business success."

"We are very pleased with this agreement," said Keith Meehan, executive director of the RMLC. "Separating royalty fees payable from radio station revenues has been a goal of the RMLC for many years."

The new license will be in place until 2009.

Diebold Copyright Abuse Case Ends in Settlement

The copyright abuse suit between the Electronic Frontier Foundation (EFF) and Diebold has ended in a $125,000 settlement. A California district court found that Diebold knowingly misrepresented that online commentators infringed the company's copyrights. Under the Digital Millennium Copyright Act (DMCA) it is unlawful to use the Act's takedown threats against users that the copyright holder knows is not infringing.

The controversy started when public debate erupted over leaked internal documents revealing flaws in Diebold's voting machines. Diebold sent cease-and-desist letters to ISPs hosting the documents and invoked the DMCA to force their removal. EFF filed suit on behalf of the threatened ISPs, saying, “Diebold’s blanket cease-and-desist notices are a blatant abuse of copyright law.”

In addition to damages, Diebold will pay full court costs.

Creative Commons Offers Copyright Alternative

"Balance, compromise, and moderation — once the driving forces of a copyright system that valued innovation and protection equally — have become endangered species." So reads the mission statement of Creative Commons, a non-profit corporation that is advocating a less restrictive alternative to copyright law.

The core of the Creative Commons plan is to offer the public copyright licenses where the author selects the conditions for the copying and distribution of their work. Authors that do not wish to reserve all the exclusive rights under law can let others know which rights they waive, as well as which they keep. For instance, an author can offer his work to be freely distributed, so long as the work is not changed and the author is credited for the work. Another option is to dedicate the work to the public domain so that it may be used by all immediately. The hope is that access to useful materials will foster creativity in a way that copyright law does not.

Founded in 2001 by intellectual property experts including James Boyle, Michael Carroll and Lawrence Lessig, Creative Commons is now based at Stanford Law School.

Court of Appeals for the Federal Circuit Rejects "Access" Right and Protects the Universal Remote

The case of Chamberlain v. Skylink pushed the limits of §1201(a) of the Digital Millennium Copyright Act (DMCA) claiming that copyright infringement should be found where the defendants universal garage door remote control “accessed” Chamberlains copyrighted garage door opener technology without any other allegation of copyright infringement. The Court of Appeals for the Federal Circuit responded, “The broad policy implications of considering ‘access’ in a vacuum are both absurd and disastrous.”

As advancements in digital technologies enable consumers to easily and inexpensively make more and more perfect copies of digital works, copyright owners are increasingly turning to technical protections to guard against unauthorized copying and distribution. Encryption technologies that scramble the contents of digital works to prevent unauthorized viewing come standard in DVDs and CDs. And, the FCC is debating the parameters of the Broadcast Flag which will prevent unauthorized copying and redistribution of television programs. But where there’s an encryption code, a decryption code is sure to follow. If DeCSS is any example, it won’t be hard to get either. This is why Congress enacted §1201(a) of the DMCA.

17 U.S.C. §1201(a)(2) prohibits trafficking in devices whose primary purpose is to circumvent technological protections where the device has little commercially significant purpose other than to circumvent and is marketed as a circumvention device. This section has prompted significant concern as to whether congress has inserted into the copyright act protection for technological measures alone, making circumvention in itself infringement of copyright, and creating a separate “access” right in copyright.

Chamberlain claimed that Skylink had violated an exclusive “access” right to the copyrighted computer programs embedded in it’s garage door opener through trafficking in a universal garage door remote control. Chamberlain asserted that,

“By prohibiting the trafficking and use of circumvention technology the DMCA fundamentally altered the legal landscape. The DMCA overrode all pre-existing consumer expectations about the legitimate uses of products containing copyrighted embedded software. And, Congress empowered manufacturers to prohibit consumers from using embedded software products in conjunction with competing products.”

Naturally, the court raised the point that nothing in the copyright act preempts antitrust laws prohibiting companies from leveraging sales in aftermarket monopolies. But, has the court also laid to rest the proposition that an access right, separate and distinct from the exclusive rights of copyright is developing in U.S. copyright law?

The existing rights of copyright owners, enumerated in 17 U.S.C §106 all relate to the reproduction, distribution and performance of works. Congress has made exceptions to these rights in sections §107-§121 of the act to preserve public rights. In order for Chamberlains claimed exemption from antitrust and copyright misuse to exist, the court would have to determine that congress had created a new property right in copyright. This right would be termed the “access” right, granting copyright owners of digital works the right to control not only copying and distribution of their works, but also the exclusive right to hold circumventors liable for accessing the work even if the uses made are lawful.

In Chamberlain, the Court made it clear that no such access right exists. Recognizing that congress has granted the copyright owner of a digital work a right of action against direct circumvention (§1201(a)(1)) and trafficking in circumvention devices (§1201(a)(2)) and for facilitation of infringement (§1201(b)), the court looked to the legislative intent of congress. “Congress could not have intended such a broad reading of the DMCA,…,to conclude that no necessary connection exists between access and copyrights.” The court referred to the recent Supreme Court holding in Eldred v. Ashcroft that, “Congress’ exercise of it’s copyright authority must be rational,” and, “congress is assigned the task of defining the scope of the limited monopoly that should be granted to authors… in order to give the public appropriate access to their work product.” A finding of an “access right” would eliminate any public right of access to copyrighted works. The DMCA exempts the exercise of public rights from liability under §1201(a) in §1201(c)(1). And as for universal remote controls, circumvention for the purposes of achieving interoperability is explicitly exempted in §1201(f).

Pabst Brewing Sues PabstCity Developers for Trademark Infringement

Pabst Brewing Company has filed a lawsuit against the developers of the proposed PabstCity complex in downtown Milwaukee in federal court for trademark infringement. Pabst brewing seeks $250,000 for the right to use the name for 25 years. The brewer also seeks up to 5% of sales of items bearing the PabstCity name. PabstCity is a proposed $395 million transformation of the former brewery in Milwaukee into a shopping and entertainment complex. Pabst Brewing sold the former brewery to Juneau Partners LLC for $10.3 million in 2002. The brewery closed in 1996 and Pabst now contracts out with other brewers such as Miller to make their brands, which include Pabst Blue Ribbon, Old Style, Schlitz and Old Milwaukee. The full story appears in the Milwaukee Journal Sentinel.

Recording Films in Theaters a Felony in Proposed Bill

A bill passed yesterday in the House aims to make a federal crime of using video cameras to record films in movie theaters. The Piracy Deterrence and Education Act could be considered in Senate as early as next week.

Costello Album Carries Statement Against FBI Warning

Earlier this year, CDs and DVDs began carrying a new FBI warning. The warning is a clear attempt to thwart would-be pirates, a move that some artists no doubt support. But at least one musician disagrees with the label. Elvis Costello's new album "The Delivery Man" carries the FBI warning, along with a note from Costello: "This artist does not endorse the following warning. The FBI doesn't have his home phone number, and he hopes that they don't have yours."

German Court Refuses to Hear Trademark Claim Against Google

As Google prepares to defend a trademark infringement claim brought by GEICO, a German court has refused to hear a similar case. German company Metaspinner Media filed suit alleging that Google's practice of selling text advertisements related to specific keyword search terms infringes Metaspinner's trademark in their Preispiraten software. Metaspinner has not yet decided if it will appeal the decision.

Apple After Apple, Again

Apple Corps, the company that acts as the sole administrator of the interests of the Beatles, is once again in court with Apple Computer.

Apple Computer and Apple Corps first met in court in the 1980s, with Apple Corps alleging trademark infringement. The result was a 1991 settlement involving a $26.5 million payout and, perhaps more importantly, an agreement that Apple Computer would not enter the music business. Of course, Apple Computer has since entered the music business with the introduction of its iTunes program and its portable digital music player, the iPod.

There are murmurs within the legal community that the dispute, as with its 1991 counterpart, will end in settlement. However, the settlement is expected to be massive. One lawyer anticipates "the biggest settlement anywhere in legal history, outside of a class action suit." The figure, he speculates, "could be mind boggling." Some even suggest that the settlement could result in Apple Corps becoming a major shareholder in Apple Computer.

Update: Justice Edward Mann, the judge hearing the Apple battle, expressed concerns of being disqualified from the case after he confessed to being an iPod user. Neither party asked him to pass on the case, however.

Induce Act Met with Heavy Criticism

The U.S. Copyright Office has delivered recommendations to the Senate Judiciary Committee regarding the proposed Inducing Infringement of Copyrights Act. The bill would hold companies liable if they made products that encouraged people to infringe copyrights. Officials from the Copyright Office believe this to be the best solution to deal with P2P services. But those who oppose the bill argue that it stands in contrast to existing rulings protecting devices capable of infringement.

In Sony Corp. of America v. Universal City Studios, Inc., the Supreme Court upheld the legality of Sony Betamax recorders because they were capable of substantial non-infringing uses. The Court of Appeals for the Ninth Circuit cited this very argument when it upheld the validity of de-centralized P2P services. MGM Studios, Inc. v. Grokster, Ltd. [PDF].

The Electronic Frontier Foundation, which defended StreamCast Networks in the Grokster case, said the bill will do nothing to stop peer-to-peer file sharing. "With over 130 applications already available, you're never going to shut them all down," said Jason Schultz, an attorney with the EFF. "It's still going to wreak havoc on all kinds of industries that have nothing to do with peer to peer."

Radio Stations Cry Infringement Over MSN Music

As part of its new Windows Media Player 10, Microsoft has released a preview of its MSN Music service. Like Apple's popular iTunes program, MSN Music features a catalogue of songs available for download, as well as internet radio stations, playable within WMP 10. To create its stations, Microsoft is using playlists from local radio stations around the country and, in some cases, even using station call letters and slogans to advertise those stations. This has drawn criticism from some in the radio industry who see the practice as nothing more than trademark infringement.

To create its MSN stations, Microsoft takes the playlists and generates random playlists of its own. The stations are then promoted as "like [local station], but with fewer ads, no DJ chatter and less repetition.'' Many see this as blatant co-opting of brand identiy. "Radio stations will see this as piggybacking on their hard-earned brand awareness and potentially cannibalizing their success,'' said Tom Taylor, editor of the industry trade magazine Inside Radio. But Microsoft maintains that the use of the station names is "simply a factual statement about the radio station, similar to many other public radio charts on the Web."

Microsoft has encouraged any station with concerns to contact Microsoft directly.

Pirate Claims Benefits, Is Awarded Jail Term

Lee Gerrard, an Englishman who makes his living counterfeiting CDs and DVDs, has been jailed but not for his bootlegging. Gerrard is charged with receiving unemployment benefits despite earning a substantial income, albeit from illegal business.

Gerrard's lawyer, Geoff Whelan, said, "The defendant is before the court today because he failed to tell the Department for Work and Pensions that he was running an illegal business, which is a Catch-22 situation for the defendant as it would certainly incriminate himself further if he did say." Gerrard has referred to his business as "a cottage industry," but authorities have made it clear that his business violates copyright law and is completely illegal. He was previously sentenced to 24 months of community rehabilitation for his pirating activities.

Gerrard will serve six months in jail for benefits fraud.

USPTO Creates E-Filing Subcommittee

The US Patent and Trademark Office's new subcommittee is charged with advancing the Office's technology and process automation to improve its electronic filing process. Currently, e-filing accounts for only two percent of the USPTO's total filings, a number the Office would like to see dramatically increase. “If the PTO is going to succeed in increasing patent office efficiency and decreasing pendency," said Andy Gibbs, CEO of PatentCafe.com and Chairman of the new Subcommittee, "it will start with e-filing."

Court to Hear GEICO's Trademark Claim Against Google

Earlier this year, insurance company GEICO sued Google for trademark infringement. Against Google's objections, the U.S. District Court for the Eastern District of Virginia said today it will hear the case.

GEICO's claim revolves around Google's practice of selling text advertisements related to specific keyword search terms. This effectively allows businesses that do not own a specific trademark to nonetheless guarantee that their advertisement will be returned when a search for the trademark is performed. In its complaint, GEICO explained that the sale of its trademarks as keywords results in confusion for its consumers.

Google maintains that "the suit is without merit and will continue to defend against it vigorously."

Global Genomics Trademarks Tangerine

Global Genomics has received a registered trademark for Tangerine [PDF], the company's proprietary gene expression profiling technology. Dr. Ulf Boberg, CEO of the Swedish molecular bio-tech company, sees the trademark as a positive step for his company and the field itself. “This designation is another confirmation of the positive acceptance of our brand in the field of functional genomics."

AOL fights icq.com.cn

America Online (AOL), owner of the instant messaging service ICQ, is challenging a Chinese company's use of the domain www.icq.com.cn.

AOL claims the domain is a violation of its trademark, which was registered in China in 2000. But the challenged domain, owned by web solutions company HiChina, was registered in 1998, three months prior to the registration of www.icq.com and nearly two years before the registration of the trademark. Nonetheless, AOL asserts that ICQ is a brand, famous with hundreds of millions of users worldwide and that its registered trademark prevents ICQ from appearing in new domains. However, that claim proved unsuccessful during arbitration. The China International Economic and Trade Arbitration Commission (CIETAC) found that AOL did not provide sufficient support of its claims of possession rights. CIETAC further ruled that HiChina's use of ICQ was in accordance with the law and ruled that the use of the challenged domain was permissible.

AOL has the right to bring the dispute before the courts but has not yet indicated the intention to do so.

Update: AOL's troubles with the ICQ trademark are nothing new. A similar case involving AOL and a California-based company was dismissed for lack of jurisdiction. AOL v. Chih-Hsien Huang. (via Prof. Desai)