IN THIS ISSUE

TEAM MEMBERS

Intellectual
Property Team:
Reber M. Boult
Micol Cecchi
Warner J. Delaune
Joel T. Galanter
A. Kirk Gasperecz
Linda Edell Howard
Mark L. Jones
Melissa S. LaBauve
Lynn Morrow
Ashley Mule
David Martin Ostfeld
Chris P. Perque
Andrew A. Pidgirsky
Haverly A. Rauen
Morris Wade Richardson
Daniel P. Smith

 

Entertainment &
New Media Team:
Reber M. Boult
Micol Cecchi
Linda Edell Howard
William J. Kelly III
Joseph W. Looney
Lynn Morrow
David Martin Ostfeld
Haverly A. Rauen
Tammy Tate
Robert A. Vosbein

Automatic Injunctions in Patent Cases?

The U.S. Supreme Court threatens to shake up the patent laws relating to permanent injunctions.  In eBay v. MercExchange, the Federal Circuit recently held that, absent exceptional circumstances, a district court should issue a permanent injunction after a finding of infringement.  The Supreme Court has granted certiorari and will decide whether the Federal Circuit erred in setting forth this general rule.  Surprisingly, the Supreme Court further directed the parties to brief the issue of whether it should reconsider its precedents, going back to case law established in 1908.  Accused infringers beware; the laws relating to permanent injunctions are apt to change quickly.

As for eBay, it is seeking to avoid a permanent injunction against its buy-it-now technology that was held to infringe MercExchange’s patent.  Although, its head appears to be on the block, eBay has officially stated that it is confident in its position and believes that the current litigation will not impact its business.

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In Metabolite Labs v. LabCorp, the U.S. Supreme Court has granted certiorari to resolve the question of whether a patent instructing a party to “correlate test results” can validly claim a monopoly over a basic scientific relationship used in medical treatment such that a doctor infringes the patent by looking at a test result and considering that relationship.  Under review is the Federal Circuit’s affirmation that a jury correctly found the patent at issue in Metabolite to be valid and enforceable.  The patent claims a method of detecting a vitamin deficiency in a human body by using a device to determine whether there is an elevated amino acid level.  Validity of such a patent remains suspect because “laws of nature, natural phenomena, and abstract ideas” are not patentable.  Ultimately, however, the Supreme Court will decide.

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Domain Name News

Fourth Circuit upholds Third-Party’s Use of fallwell.com to direct to Website Critical of Televangelist Jerry Falwell

The Fourth Circuit Court of Appeals reversed a decision by the U.S. District Court for the Eastern District of Virginia in favor of televangelist Jerry Falwell against Christopher Lamparello – registrant of the domain name fallwell.com.

Lamparello has been using the domain name since 1999 in connection with a non-commercial website containing criticism of Jerry Falwell’s views on homosexuality. Falwell filed a complaint against Lamparello under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), arguing fallwell.com was confusingly similar with Falwell’s FALWELL and JERRY FALWELL trademarks. Despite the fact that Lamparello challenged Falwell’s arguments, asserting that he registered the domain name to use with a legitimate criticism website, the UDRP panel ruled in favor of Falwell, granting him transfer of the domain name.

Lamparello then filed a declaratory action in federal court against Falwell under the Anti-Cybersquatting Consumer Protection Act in an effort to overturn the panel’s decision. When the federal court likewise ruled in Falwell’s favor, Laparello appealed to the Fourth Circuit.

The Fourth Circuit reversed the lower court’s decision and ruled in Lamparello’s favor on all counts. In doing so, it found that, although fallwell.com did closely resemble the FALWELL mark, Lamparello did not try to imitate Falwell’s own website; rather, Lamparello’s purpose in creating the website was clearly to provide a forum to criticize ideas, and no one would be misled into thinking that Falwell had authorized the content of Lamparello’s website.

Finally, the Fourth Circuit found that Falwell was unable to show that Lamparello had registered the domain name in an attempt to profit from the FALWELL mark. As the court found, “This critical element – use of another firm’s mark to capture the mark holder’s customers and profits – simply does not exist when the alleged infringer establishes a gripe site that criticizes the mark holder.”

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Bill Cosby joins other Celebrities in use of WIPO Arbitration Proceedings to obtain Domain Names

A World Intellectual Property Organization (“WIPO”) panel recently ordered the transfer of fatalbert.org to comedian Bill Cosby. Mr. Cosby created the FAT ALBERT cartoon character in the late 1960s, and since then the character has been incorporated into an animated children’s television series and a major live action motion picture, and it is licensed to third parties to use in connection with toys, comic books, clothing, DVDs and other products. Mr. Cosby owns trademark registrations for FAT ALBERT in the U.S. and in many countries worldwide.

The WIPO panel found that the registrant, Sterling Davenport, did not have a legitimate interest or right in the domain name consisting of Cosby’s well-known trademark. Davenport was also found to be using the domain name in bad faith because he used it to direct Internet traffic to pornographic websites.

In addition to Bill Cosby, other celebrities such as Nicole Kidman, Madonna, Pamela Anderson, Julia Roberts, and Senator Hilary Clinton have used the WIPO dispute resolution system to successfully obtain transfer of domain names.

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On the International Front

No Confusion due to Picasso’s Widespread Fame

The European Court of Justice (“ECJ”) recently found that confusion was not likely between PICASSO and PICARO for motor cars because of the fame of the name PICASSO and the fact that such fame was not acquired in relation to motor cars.

The heirs of Pablo Picasso filed an opposition against DaimlerChrysler AG’s application to register PICARO as a Community Trademark for motor cars. It continued to lose and further appeal its case up to the ECJ, where it argued that the fame of the PICASSO name was not sufficient enough to prevent a likelihood of confusion because of the visual and phonetic similarities between the two marks, and that the application for PICARO should be rejected because famous marks should receive a higher degree of protection than other, less famous marks.

The ECJ rejected the estate’s arguments, instead finding in favor of DaimlerChrysler.  Some view this decision as frustrating the fact that the law provides well-known marks with a broader scope of protection, while the logic in this case appears to provide less protection for well-known marks.

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World Intellectual Property Organization Panel dismisses complaint filed by Jazeera, the broadcaster behind the well-known and controversial Arabic News Channel

A three-member World Intellectual Property Organization (WIPO) panel dismissed a complaint filed by the broadcaster of the Arabic television channel Aljazeera against the registration of aljazeera.com by AJ Publishing (also known as Aljazeera Publishing). In its decision, the WIPO panel also found the broadcaster, Jazeera Space Channel TV Station (“Jazeera”), to be guilty of reverse domain name hijacking.

AJ Publishing registered the aljazeera.com domain name back in 1996, and has since used it to publish an online magazine called Aljazeera, which provides information on events that occur in the Arabian Peninsula. This area is known in Arabic as Aljazeera.

Despite its acknowledgment that Jazeera’s television channel has achieved international recognition, the WIPO panel unanimously agreed that AJ Publishing’s registration of the domain name clearly preceded the use of the Aljazeera name by Jazeera and that its complaint should be dismissed. It is well-established that when a domain name is registered before trademark rights are established, then the registration of the domain name is not considered in bad faith.

The WIPO panel then reviewed whether Jazeera was guilty of reverse domain name hijacking. The Uniform Dispute Resolution Policy rules define this activity as “using the . . . [Rules] in bad faith to attempt to deprive a registered domain name holder of a domain name.” The Panel found Jazeera to be guilty of reverse domain name hijacking based on a number of factors. First, Jazeera knew when it filed the complaint that it would have to show that AJ Publishing had registered the domain name in bad faith, and based on the evidence it presented, it should have known it could not do so and it made no attempt to obtain evidence to the contrary. In addition, Jazeera had made repeated references to the domain name on its own website, seemingly in an effort to create confusion. In several instances, Jazeera wrongly claimed that its reporters’ email addresses included the domain name root “@aljazeera.com.” Finally, the majority of the panel opined that Jazeera must have known about AJ Publishing’s website at the domain name for many years before bringing its complaint.

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Trademark News

2005 Increase in the Number of Cybersquatting Cases filed Signals Need for Continued Vigilance in Monitoring Intellectual Property Rights

1,456 cybersquatting cases were filed with the World Intellectual Property Organization (“WIPO”) in 2005, representing an increase of 20% when compared to the number of cases filed in 2004. Since the Uniform Domain Name Dispute Resolution Policy’s (“UDRP”) inception in December 1999, WIPO, which implements the UDRP, has processed over 8,350 domain name disputes involving parties from 127 countries and 16,000 domain names.   

The UDRP has quickly become an international standard for resolving domain name disputes. Its widespread popularity turns in large part on the fact that it is a less expensive and much quicker way to resolve domain name disputes than traditional litigation. Its popularity may also be attributed to the fact that WIPO is a multinational and multilingual organization and can handle cases in many different languages. Thus far, it has handled cases in over 12 languages, including Japanese, German, Korean, Norwegian, Russian, and Spanish.

Of all the UDRP proceedings filed with WIPO, approximately 96% have been resolved. About 83% of the 6,349 decisions that have been issued by WIPO panels have been favorable to the Complainant.

The significant increase in cases in 2005 signals the need for persistent and continued vigilance by owners of intellectual property to protect their rights with regard to domain names and the Internet.

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Second Circuit finds Pop-Up Ads do not violate the Lanham Act

In 1-800 Contacts, Inc. v. WhenU.com, Inc., a federal appeals court found that an Internet marketer’s use of the plaintiff’s Web address and trademark to track user activities and thereby target its pop-up ads was not trademark infringement.

The plaintiff, 1-800 Contacts, Inc., sued the defendant after it learned that WhenU.com, Inc. was causing pop-up ads from the plaintiff’s competitors to appear when the plaintiff’s site was accessed. Although the district court found that WhenU.com, Inc.’s use of the plaintiff’s Web address was trademark infringement, the Second Circuit vacated the ruling, finding it was not trademark infringement because the defendant’s use of the plaintiff’s Web address / trademark was done “behind the scenes” and was invisible to the general public and computer users, thereby not causing confusion. This decision has been supported as being in line with the fundamental rationale behind trademark infringement laws – to protect consumers from confusion.

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Trademark Trial and Appeal Board cancels entire Trademark Registration due to Fraudulent Statement of Use

In J.E.M. Int’l, Inc. v. Happy Rompers Creations Corp., Happy Rompers Creations Corp. (“Happy Rompers”) petitioned to cancel J.E.M. Int’l. Inc.’s (“J.E.M.”) registration, claiming that J.E.M. fraudulently obtained its registration of IT’S A GIRL THING by stating it was using the mark on all 150 items of clothing listed in its application – despite the fact that it was not using and had never used the mark in connection with over 100 of the items.

Although the Trademark Trial and Appeal Board (“TTAB”) seemingly accepted J.E.M.’s assertion that it mistakenly and inadvertently made the misrepresentation, it found that J.E.M. knew or should have known that the mark was not in use on all of the goods listed in its Statement of Use at the time it was submitted. Given the relative simplicity of the Statement of Use form, the TTAB held that J.E.M.’s material misrepresentations warranted granting Happy Rompers’ petition to cancel J.E.M.’s entire registration. This case underscores the importance of the accuracy of goods and services listings in trademark applications.

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DC Comics, owner of KRYPTONITE, the Superman-related trademark, successfully opposes trademark application for KRIPTONIA for alcoholic beverages

In DC Comics v. Pan American Grain Mfg. Co. Inc., DC Comics opposed Pan American’s application for KRIPTONIA for “prepared alcoholic fruit cocktail,” alleging it would likely cause confusion with DC Comics’ KRYPTONITE trademark. DC Comics’ petition was granted despite the fact that it did not license any of its Superman-related marks for alcoholic products.

In reaching its decision, the Trademark Trial and Appeal Board (“TTAB”) first found that KRIPTONIA is the Spanish translation of the word KRYPTONITE, which is the coined name of the green crystal substance found in Superman comics. Therefore, under the doctrine of foreign equivalents, the TTAB considered the marks identical in its analysis.  The TTAB also found the fact that DC Comics licenses use of its Superman-related marks to promote a variety of goods and services – including some food and beverage products – to be in DC Comics’ favor despite the fact that DC Comics’ 2 registrations for KRYPTONITE are for goods and services quite different from alcoholic beverages.   

The TTAB not only granted DC Comics’ petition – it also found that Pan American’s adoption of the mark was in bad faith. Pan American admitted that, at the time it applied for the mark, it knew that KRYPTONIA was KRYPTONITE in Spanish, it knew that it was the name of the substance found in the Superman comics, and the label for Pan American’s proposed products clearly showed a green “kryptonite” crystal.

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