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Obama administration proposes stricter IP laws

April 7, 2011 by · Comments Off
Filed under: Internet 

by Justine A. di Giovanni

In a March, 2011 white paper, the Obama Administration proposed changes to existing law that would enact harsher penalties for copyright infringement, as well as for pharmaceutical drug counterfeiting.  Though the regulations increase the penalties for copyright infringement across the board, the most interesting and controversial aspects of the recommendations are those which apply to internet intellectual property law and the methods law enforcement may use to unearth intellectual property crimes.

The Administration recommends that the law be clarified to state that, “in appropriate circumstances,” unauthorized live streaming of intellectual property should be recognized as a felony.  In addition, the Administration suggests that law enforcement should be given the authority to request a wire tap in cases of suspected criminal trademark and copyright infringements.  These new regulations strongly tighten the existing noose of the law around the necks of intellectual property criminals.  The serious tone struck by the administration is emphasized by the wire tapping recommendation, which, before this point, was a procedure only deemed appropriate in the investigation of a specific set of serious crimes.  Many individuals are concerned that such regulations have a high potential for governmental abuse, but intellectual property right-holders see the recommendations as increasing protection for their valuable assets.

Other recommendations outlined in the paper relating to intellectual property law include:

  • increasing  the statutory maximum for “economic espionage” from 15 years in prison to at least 20.  Numerous other property offenses have higher statutory maximums: mail fraud is punishable by up to 20 years in prison, bank fraud 30, smuggling goods 20 and counterfeiting currency 20.  These are all tangible property crimes, however, not intellectual.  Upping the maximum to 20 will make “economic espionage” via intellectual property crime a more serious offense (base offense level 7 versus level 6).
    • increasing the U.S. Sentencing Guideline range to include harsher punishments for:
      • the theft of trade secrets, including those transferred or attempted to be transferred outside of the U.S.
      • trademark and copyright offenses when infringing products are knowingly sold for use in national defense, national security, critical infrastructure, or by law enforcement
      • intellectual property offenses committed by organized criminal enterprises/gangs or that risk death or serious bodily injury
      • those offenses involving counterfeit drugs (even when those offenses do not present risk of bodily harm)
      • repeat intellectual property offenders
  • authorizing the Department of Homeland Security (DHS) and its component U.S. Customs and Border Protection to share pre-seizure information about products and devices with right holders to help DHS to determine whether the products are infringing or the devices are circumvention devices; and
  • creating a right of public performance for copyright owners for sound recordings transmitted by over-the-air broadcast stations which will allow copyright owners to obtain overseas royalties that are currently denied to them.

You can find the PDF text of the full white paper here: http://www.whitehouse.gov/sites/default/files/ip_white_paper.pdf

Rosetta Stone Gears up for a Battle Against Google and the Future of Adwords

November 5, 2010 by · Comments Off
Filed under: law, trademark, Trademark Articles 

By Caroline Kotila

Google has been the target of a tremendous amount of litigation in regards to intellectual property, as would be expected for such an industry giant.  The most recent target has been their tool AdWords, which generates ads based on keywords that users input into Google’s search engine.  The problem occurs when a company has trademarked a term, and a competitor uses that term to have their product show up as an ad next to the relevant links .  For example, if Lexus were to buy the keyword “BMW” through AdWords, anyone who searched for the BMW X5 could expect to see an advertisement for the Lexus RX350.  This method of advertising leads many companies to argue that Google has infringed their trademark.

In 2007, Rosetta Stone filed a lawsuit against Google, claiming that their trademark had been infringed by the use of AdWords to advertise competing language software. The company lost its case this August and has sought appeal by the 4th Circuit Court of Appeals.  Rosetta Stone argues that Google’s use of AdWords to generate revenue by selling these trademarked competitors, who ultimately piggy-back off the success of the larger companies, is unlawful.  Additionally, Rosetta Stone alleges that the use of AdWord has caused widespread “consumer confusion” due to conflicting ads.  The company is hoping that the Circuit Court will overturn the Virginia Federal District Court’s decision in favor of Google.

Rosetta Stone has many supporters in their case, as many companies disapprove of Google’s AdWords policy.  Numerous large companies have stated that they will file Amicus Briefs supporting Rosetta Stone, including Ford Motor Company, Carfax, PetMed Express,  1-800 Contacts, and many others. As the market for web advertising is growing this case will have a major impact on how search engines can generate their revenue and the power of registered marks in the context of internet technology.

A Thin Line Between Artistry and Architecture

September 21, 2010 by · Comments Off
Filed under: Business, Copyright Articles, law, Uncategorized 

The line between artistry and architecture is just as thin as the copyright protection given to architectural drawings according to an opinion denying summary judgment in the case of The Harvester, Inc. v. Rule Joy Trammell + Rubio, LLC, Civil Action No. 3:09cv358 (E.D. Virginia).  The technical elements of architectural drawings can sometimes overshadow the artistic and creative elements.  Nonetheless, architectural works are a protectable subject matter under The Copyright Act.

The Copyright Act grants exclusive rights to use and to authorize the use of a creative work for (1) reproduction of the work, (2) preparation for derivative works, (3) distribution of copies of the work to the public, (4) performance of the work publicly, and (5) displaying the work publicly.  Under Section 102(a)(8) of The Copyright Act, an “architectural work” is the “design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings.”  Protection will cover the overall form as well as the arrangement and layout of the various unprotected ‘common elements,’ such as doors, windows, rooms, and other standard features.

The John Marshall Law School in Chicago, Illinois is well known in the intellectual property community for its patent, trademark, and copyright curriculum.  Having a similar namesake, The Hotel John Marshall in Richmond, Virginia had its share of copyright issues as the subject of copyright dispute in the Harvestor Case.

The Harvestor Case involved the copyright in architectural drawings for the renovation of The Hotel John Marshall, originally opened in 1929.  The architectural firm originally assigned to renovate the hotel obtained copyright in their drawings.  Another architectural firm was later assigned to the project and used the previous drawings to make their own architectural plans.  The Fourth Circuit determined that copyright protection for architectural works is thin because the overall creative expression reflects a compilation of unprotected common elements uniquely arranged.  However, a thin copyright is still a copyright deserving of protection.

One complicated feature of architectural works is that all building designs prior to December 1, 1990 are not subject to protection.  Therefore, anyone may incorporate building designs constructed or published before this date into their derivative architectural designs.  The problem arises when different individuals claim exclusive rights in derivative works, but appear similar because the works originated from the same pre-December 1, 1990 building design.

A derivative work is a work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship.  The standard of originality of a derivative work is low.  In Harvestor, the defendant claimed that the plaintiff’s drawings were undeserving of copyright protection because they lacked the requisite level of creativity to separate the drawings from the original work.  The court held that the plaintiff did make design choices that were worthy of protection.

The line between artistry and architecture may be thin, but it isn’t so thin that technical drawings and architectural works are viewed as one.  Claiming copyright in an architectural work will not also include a claim of copyright in the technical drawings of the work.  Therefore, separate applications will need to be filed to protect both of these features.

It is easy to take the art of architecture for granted because we engage in these creative structures on a daily basis. The choice of stone, the shape of the windows, and the arrangement of other features are all specifically coordinated for some intended purpose.  If you would like further insight on the art of architecture, visit the Muscarelle Museum of Art at The College of William & Mary between September 18 – October 24, 2010 to see two great exhibitions: Architexture: Photographs by David Brashear and Envelopes: Architects’ Unfinished Experiments with Building “Skins.”

Trademark Abbreviations & The Public Use Doctrine

August 18, 2010 by · Comments Off
Filed under: Business, law, trademark, Trademark Articles 

Does trademark registration protect the nickname of the registered mark?  For example, if someone owned the mark PEANUT BUTTER & JELLY would the abbreviation PBJ or PB&J be protected?  Under the public use doctrine, abbreviations or nicknames used by the public can give rise to protectable trademark rights.  Nat’l Cable Television Ass’n, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 1577 (Fed. Cir. 1991). That is, the terms “Coke”, “BUD, and “MAC” are protected under the respective registrations for Coca-Cola, Budweiser, and Macintosh Computers.

Under certain conditions, the public use doctrine will extend trademark rights to abbreviated or shortened version of a registered mark.  In the 2009 case of George & Co. v. Imagination Entertainment Ltd. et al., the Plaintiff sought to apply the public use doctrine in the reverse and use the doctrine to extend rights to the elongated word based on the registered abbreviation. 575 F.3d 383 (4th Cir. 2009).  The Plaintiff owned a trademark registration for the abbreviation LCR for a dice game, which stands for “Left Center Right.”  Id. at 390.  The Plaintiff filed suit claiming that the Defendant’s mark, LEFT CENTER RIGHT, was infringing upon its LCR mark. Id. at 392.

The Plaintiff claimed that the public use doctrine expanded trademark protection of the registered LCR mark to cover the mark’s elongated form, namely “LEFT CENTER RIGHT.” Id. at 403.

The Fourth Circuit disagreed with the Plaintiff, ruling that the public use doctrine should be narrowly construed to apply only where: (1) the formal mark that is the object the public nickname is well-known; and (2) the nickname “adds distinctiveness” to the formal mark.  And, that ruling is interpreted as finding that the public use doctrine only applies when the public abbreviates or nicknames a mark, not the other way around.  Id.

Using abbreviations, nicknames, and acronyms as trademarks may be appealing from a marketing perspective, however, the public use doctrine will not expand the scope of protection of these shorter forms to encompass their elongated counterparts.  At the same time, introducing a new product into the market with both an elongated name and an abbreviated name may cause confusion and interfere with the consumer identifying one brand with the product.  And, here is the ah-ha moment to recognize that branding is not always about strategic marketing, but also about how the public processes and associates nicknames or abbreviations. 

DISCLAIMER: This article is NOT intended to provide legal advice and is for informational purposes only.

Blog: Veoh v. Universal Music Case

October 22, 2009 by · Comments Off
Filed under: Business, Copyright Articles, Online Privacy 

 In September, a federal district court ruled that Veoh, a Web video online service provider, was under safe harbor from copyright lawsuits filed by numerous entertainment companies over the past several years.  U.S. District Judge A. Howard Matz ruled that Veoh was not liable for the copyright infringements of its users because of the automated process of uploading the videos to the internet and due to the measures that Veoh undertook to ensure that infringing material was removed from the website as quickly as possible.

Universal Music Group filed the suit against Veoh in 2007 for copyright infringement; however the judge ruled that Veoh was granted protection under the Digital Millennium Copyright Act (DMCA). Enacted in 1998, DMCA legislation made it a criminal activity to produce and distribute technology with copyrighted labels. However, within this act there was a safe harbor clause that could be applied to cases such as the one that Veoh represented in the District Courts. This safe harbor clause claims that if online service providers follow certain guidelines, such as immediately taking down infringing material, the online service provider will be safe from copyright liability. Judge Matz ruled that Veoh was immune from liability because they quickly removed infringing material when the owners sent a takedown notice to the online video provider.

While the recession has greatly impacted the success of Veoh’s business, the Veoh court decision has larger ramifications because it can be used as a precedent for YouTube in the $1 billion copyright suit filed by Viacom. YouTube chief counsel Zahavah Levine has stated, “This decision reaffirms the judicial consensus and what we’ve known all along: the DMCA protects services like YouTube.”[i] The suit against YouTube presented by Viacom is not expected to reach trial until next year; however it seems that the precedent for the case has been established by the Veoh case landmark ruling.  That is, Judge Matz’ ruling moves in the direction of boiling them all down to a single test of whether the service provider has immediately and expeditiously complied with the takedown rules.


[i] Sandoval, Greg. “Veoh wins copyright case; YouTube wins, too?” Cnet News. CBS Interactive, 14 Sept. 2009. Web. <http://news.cnet.com/8301-1023_3-10352183-93.html>.