Archive for July, 2006

« Older Entries

But What About Words Like “Dinsey”?

Monday, July 31st, 2006

Last Tuesday, the U.S. House of Representatives approved a bill that would make it a federal felony for Webmasters to use innocent words like “Barbie” or “Furby” but actually feature sexual content on their sites. 

Anyone who includes misleading “words” or “images” intended to confuse a minor into viewing a possibly harmful Web site could be imprisoned for up to 20 years and fined, the bill says.

Because the U.S. Senate already approved the measure in a voice vote last week, it now goes to President Bush for his signature. Bush, who previously endorsed the bill, has scheduled a signing ceremony for Thursday afternoon on the White House grounds.

“America’s children will be better protected from every parent’s worst nightmare–sexual predators–thanks to passage” of the legislation, Attorney General Alberto Gonzales said in a statement on Tuesday.

In principle, it’s a good idea.  However, see below for the glitch:

If the bill becomes law, it’s not clear which Webmasters would become federal felons. Sites like Kontraband.com, which show Barbie and Ken dolls having simulated sex, could be in trouble, depending on how prosecutors and juries interpret the language. (Kontraband offers video clips and photographs, some of which are racy.)

Kontraband.com representative Dylan Close said in an e-mail message to CNET News.com that he was familiar with the congressional legislation and that the site already rates the pages using a system borrowed from the British Board of Film Classification. For instance, a page showing topless images was marked as not safe for work. Close also said that the site’s Barbie and Ken clip was intended for adults and older teenagers, not children.

Also, what if you are a porn star and your name is Ken or Barbie?  Shouldn’t you be entitled to use your name?  Don’t free speech concerns override parents who fail to supervise their children’s activities – online or otherwise?

In addition, the Child Protection and Safety Act, or Walsh Act (named for Adam Walsh, who was abducted and murdered in 1981 at 6 years old), would:

• Punish the intentional Internet sale or distribution of “date rape drugs” by making the act a new federal crime with up to 20 years in prison. The list of offending drugs would include gamma hydroxybutyric acid (sometimes called liquid ecstasy), ketamine, and flunitrazepam (better-known under the trade name Rohypnol).

• Force sex offenders to provide a DNA sample, a requirement that many states already have adopted.

• Create a national sex offender registry to be run by the FBI, with “relevant information” on each person. It’s supposed to permit geographical lookups based on ZIP code.

• Fund a series of pilot programs, lasting up to three years, to tag sex offenders with tracking devices that would let them be monitored in real time. The devices would include a GPS downlink (to provide exact coordinates), a cellular uplink (to transmit the coordinates to police), and two-way voice communications.

This will be a tough battle and, undoubtedly, the constitutionality of the legislation will be challenged in court.

Posted in Free Speech, Government Action, Internet | No Comments »

Authorized Generics

Monday, July 31st, 2006

This post will be of interest to several of our clients.  Last Thursday, three U.S. senators launched an effort to ban a practice that they say could lead to higher drug prices for consumers by undermining competition in the country’s $250-billion pharmaceutical market.

The lawmakers introduced a bill to limit the marketing of “authorized generics,” which are cheaper versions of branded prescription drugs that are licensed or manufactured by the brand owners. They are essentially the same medicine with a different label, usually introduced as the branded drug loses its patent protection.

Sen. Charles E. Schumer (D-N.Y.), who introduced the bill along with Sens. John D. Rockefeller IV (D-W.V.) and Patrick J. Leahy (D-Vt.), said in a written statement announcing the bill, ”Authorized generics are wolves in sheep’s clothing.”

Brand makers defend the practice, saying they are simply competing with generics at their own game and helping drive prices down.

Critics say authorized generics are designed to undermine true generic drug makers, whose sole business is to copy drugs cheaply, not to invent them.

It is expected that Pharmaceutical Research and Manufacturers of America (“PhRMA”) will lobby aggressively against the bill. 

Most recently, Merck & Co. launched an authorized generic for its blockbuster cholesterol drug Zocor, whose patent expired in June.

Under federal law, a generic maker that successfully contests a brand’s patent in court gains 180 days to exclusively market its generic version, during which it can make a larger profit in the absence of competition from other generic makers.

I anticipate that this will be a long, drawn out battle between generic companies, R&D pharmaceutical companies, Congress and the White House.  It should make for good sound bytes going forward.

Posted in Business of TMs, Government Action, Litigation, Patents | No Comments »

A Tough Claim to Make?

Monday, July 31st, 2006

According to this article, the owner a the publication The Greater Baton Rouge Business Report has filed a lawsuit in federal court against the group that is publishing a competing or related publication called The Livingston Parish Business Report.

Insofar as the publications are distributed in the same area, there is perhaps a chance that readers could be confused as to the source of the publications.  However, when reading the article, this doesn’t seem like a strong argument:

The lawsuit claims that by using the name “Business Report,” the defendant is creating the false impression that the two publications are affiliated. 

The lawsuit also says use of the “Business Report” name creates confusion in the marketplace and that The Livingston Parish Business Report is unfairly trading on the name and reputation established by The Greater Baton Rouge Business Report, and could also unfairly harm the publication’s reputation.

The lawsuit asks the Denham Springs Publishing Co. to stop using “Business Report” in its name and to pay unspecified damages based on profits gained by the trademark infringement. It also asks that the defendant be ordered to destroy all products, labels, promotional items or any written material containing “Business Report” marks.

Posted in Business of TMs, Free Speech, Litigation, Trademarks | No Comments »

CCTV Condoms?

Monday, July 31st, 2006

No, I don’t mean “closed circuit tv.”  I mean “China Central Television,” China’s state television company.

Li Zhenyong, from Fujian Province in the southeast, applied for the trademark registration [CCTV] on January 6, Monday’s Chongqing Economic Times reported.

The application covers ten products, including a cervical cap, condom and non-chemical contraceptives, that would sport the brand name CCTV Channel 1. In Chinese, the fourth character of the name is a homophone for condoms.

Li said he hoped CCTV’s fame would attract investment from big companies for production. A Shenzhen-based contraceptive company had already offered 400,000 yuan (US$50,000) to buy the trademark off him if he succeeded.

A CCTV official who refused to be named said he was aghast that the name of CCTV had been chosen as a condom trademark.

The official said he would consult with senior officials at the station to decide whether to take legal action to stop the registration.

Posted in Business of TMs, Government Action, International, Trademarks | No Comments »

Pride Goes Corporate :: Update

Monday, July 31st, 2006

By way of update of this post, here is another article about Pride as a trademark/service mark.

Posted in Business of TMs, Certification Marks, Free Speech, Trademarks, Uncategorized, Updates | No Comments »

Tom Cruise Wins tomcruise.com

Tuesday, July 25th, 2006

According to this article, Tom Cruise has been awared the domain name tomcruise.com by a WIPO UDRP panel. In a three-member WIPO panel, the domain name was taken from notorious domain name registrant Jeff Burgar and “returned” to Cruise.

Jeff Burgar owns and operates the fan website Celebrity1000.com, which in addition to featuring many third party advertisements, also includes information about celebrities, including Cruise. Burgar has also been involved in domain name disputes with the domain names CelineDion.com, MichaelCrichton.com, KevinSpacey.com, JeffreyArcher.com and others.

Cruise’s legal team made the following arguments: 1) the actor has “common law trademark and service mark rights” in the term Tom Cruise, 2) Burgar was making money from the domain through third-party ads on the Celebrity1000 website, and 3) and that internet users were likely to be confused and think that TomCruise.com was affiliated personally with the website.

Burgar, in this case, did not contest the fact that Cruise has trademark rights in his name. Instead, he argued that no likelihood of confusion exists because people who enter tomcruise.com are not expecting to get in touch with the actor or even “purchase” his services, such that they are alleged to be.  They are looking for information about the actor.  For my part, this is a valid argument.

Moreover, Burgar argued that he has owned the domain name for ten (10) years and, essentially, that laches should prevent Criuse from coming forward now to try to secure the domain name that he has lived without for ten (10) years.  I also think this is a valid argument.  It would certainly hold a lot of weight in a basic Trademark A vs. Trademark B lawsuit.  I therefore do no see how the WIPO panel so quickly dismissed this argument insofar as WIPO arbiters are supposed to consider the relevant law – including laches.

It is cases like these that cause me concern about the future and validity of the UDRP system.  All told, it is a weak, relatively ill-reasoned decision.

related materials >>  WIPO Decision

Posted in Business of TMs, Domain Names, Free Speech, Internet, Non-Traditional Marks, Trademarks | No Comments »

YouTube.com Gets Slapped With © Suit

Friday, July 21st, 2006

Fad du jour, YouTube.com, is being sued by a journalist who owns the Los Angeles News Service claiming copyright infringement. The lawsuit claims that the video-sharing site encourages copyright infringement by hosting footage from users who have failed to secure the necessary clearances from the videos’ owners. 

It’s the first-ever copyright lawsuit filed against YouTube, and, if successful, it could open the floodgates for similar suits against the site.

At the heart of the matter is footage Tur shot during the L.A. riots in April 1992 — specifically the now-famous images of trucker Reginald Denny being beaten by several men. Tur shot the footage from a helicopter, and although it was seen across the world, it was broadcast by news agencies that obtained rights from his L.A. News Service.
YouTube’s policy is to prohibit the uploading of copyrighted material that hasn’t been granted the proper permission, and the site vigorously removes videos that violate that rule (see ‘Such A Pity’: YouTube Pulls Homemade Weezer Video). The site has maintained in the past that it is not responsible for material that violates copyright law.
A spokesperson for YouTube had no comment on the suit, but did send a statement to MTV News that reads, in part:”Mr. Tur’s lawsuit is without merit. YouTube is a service provider that complies with all the provisions of the Digital Millennium Copyright Act, and therefore is entitled to the full protections of the safe-harbor provisions of the Act. … Immediately upon receiving notice of [Tur's] complaint, we removed all of the plaintiff’s video clips that we were able to locate, and it is our intention to work with Mr. Tur … to remove any unauthorized works from our site.”

As of Wednesday morning (July 19), a search for the terms “Reginald Denny,” “Reginald” or “Denny” resulted in no videos. But a search for “L.A. riot” turned up several videos, including the footage Tur shot of Denny. And according to Pizzulli, that’s where the problem lies — something he refers to in the suit as “a murky moving target.”

“It’s interesting that [YouTube] emphasize that they removed all the videos that they could find. Because Mr. Tur — and several other journalists — have still been able to locate other copies of it,” Pizzulli said. “Depending on what tags you enter in the search function, you can still uncover versions of the Reginald Denny video. And while YouTube removing all the videos they could find does answer the ‘now’ issue, it does not answer how they plan on compensating him for past violations, and how they plan on preventing this from happening in the future.”

Tur is seeking compensation to the tune of $150,000 for each uploaded submission, though Pizzulli said that Tur does not plan to go after the individuals who posted the video. No date has yet been set for the hearing.

 

Posted in Copyrights, Free Speech, Litigation | No Comments »

Pride Goes Corporate

Thursday, July 20th, 2006

In Canada, gay Pride has gone corporate.  Or so it would seem.  Here’s the background:

Jamie Lee Hamilton is alarmed.

The transsexual activist says the Vancouver Pride Society (VPS) is hassling her for using the word “Pride” on two events she’s got planned for this year’s celebrations.

The events in question–Man Pride and Tranny Pride–were scheduled to take place at Coxx Club on Aug 5 and 6, respectively.

But on Jul 8, VPS vice-president Aviva Lazar sent Hamilton an e-mail informing her that she must buy a membership in the Pride Society if she wants to use the now-trademarked word Pride.

“Please be advised that the word PRIDE(r) is a registered trademark held by Fierté Canada Pride in which the Vancouver Pride Society is a member and licensed user of this trademark,” Lazar wrote. “The VPS may, at our discretion, permit the use of the word PRIDE(r) and all its forms associated with advertising and promotions within the district and surrounding promotional areas of Vancouver, British Columbia, Canada.”

VPS is trying to require that all parties that want to term their events a “Pride” event join the VPS for CAD$20.00 per year.

People are not in agreement.  VPS’s position is the following:  “We’re talking about individuals who all of a sudden decide they want to do something to make a few bucks.  They know the tourists are coming to town, that the gay community is looking for something to spend money on and they say, ‘I’m going to be gay for a day and I’m going to take the money and run.’”

Others disagree.  “What the Pride board is forgetting here is that Pride is symbolic of queer freedom. It was a way for us to get together, share and celebrate our love and honour our lives.”

Attempting to trademark that is “ridiculous,” she continues. “I don’t think you can trademark something like that.”
No one can own the word Pride, agrees long-time Pride Society member Jim Deva.
Hamilton is “opening a can of worms,” says Penny, that could allow others to use the word Pride in ways that are detrimental to the VPS. “For somebody else to start using the Pride name is completely wrong,” he says. “I don’t know what Jamie Lee’s up to but she’s dead wrong. It isn’t much to affiliate with Pride and have it sanctioned.”
It should be interesting to see how this works its way through the system.

Posted in Business of TMs, Free Speech, General, International, Trademarks | 1 Comment »

Google-ACS Settle Scholar Lawsuit

Thursday, July 20th, 2006

Search giant Google has settled a lawsuit with academic publisher the American Chemical Society (“ACS”).

In 2004, ACS filed a lawsuit against Google claiming that the free “Google Scholar” journal-search service unfairly competes with ACS’ “SciFinder Scholar,” which appears to be more comprehensive but charges a fee.

“SciFinder Scholar is well-known and long has been well-received throughout the academic community, and we must protect our name and the good will the tool has already achieved,” an ACS representative said in 2004.

My how things can change.  The case was quietly settled out of court in Washington, D.C., earlier this month, with Google and ACS submitting a joint two-page document that says each side will pay its own attorney fees.

As of yesterday, Google Scholar still exists in beta form and does not appear to have been altered in response to the lawsuit. Google says the service indexes “peer-reviewed papers, theses, books, abstracts and articles” from professional societies and other scholarly organizations.

Note:  In April, Microsoft launched a rival to Google Scholar called Windows Live Academic.

Posted in Business of TMs, Copyrights, Litigation | No Comments »

Trademarks in the Drink Field

Friday, July 14th, 2006

The link below is a summary of…interesting…trademark matters in the energy drink field:

http://www.foodingredientsfirst.com/newsmaker_article.asp?idNewsMaker=11481&fSite=AO545&next=4

Here’s a taste:

The media is reporting that Jose Canseco is coming out with an energy drink called “Juiced”….Perhaps there is a part of this story that hasn’t become public yet, but “Juiced” is a name that is already being used in this category for Rockstar’s Juiced energy-juice hybrid product. You’d think that Canseco’s legal team — which must be pretty large given the accusations that he’s slinging around — would have figured this out. Just because you have a book doesn’t mean you have rights to the name in the beverage industry.

Posted in Business of TMs, General Legal, Litigation, Trademarks | No Comments »

« Older Entries