Naked Cowboy V. Naked M&M
Filed Under General | Posted on June 27, 2008
By: Ruvin Levavi
The past couple of years have seen the Cowboy image reinvented numerous times. Clint Eastwood has been pushed aside by the academy award winning Brokeback Mountain. Yet, before Hollywood decided to give the American West a makeover there was Robert Burck. Burck, better known as, The Naked Cowboy has become a staple New York tourist attraction. Burck created, The Naked Cowboy by spending years singing and playing his guitar in Times Square.
There are numerous street singers in New York but what makes Burck different and noticeable, is the image he created. Burck, entertains the throngs in Times Square while wearing only a cowboy hat, cowboy boots, and briefs. It took a little blue M&M man to challenge his position.
As part of an advertisement video the little M&M man is pictured wearing a cowboy hat, cowboy boots, and briefs. Further the setting of the billboard video evokes New York as it includes the Statue of Liberty. In response Robert Burck chose to sue Mars Inc., the owner of the M&M brand, for approximately four million dollars.
Although public figures have a curtailed right of privacy they still maintain a right to their own trademark. At common law the “right of publicity” protects celebrities, who hold a proprietary interest in their persona from being commercially exploited. Brinkley v. Casablancas, 438 N.Y.S.2d 1004, 1009-10 (App. Div. 1st Dept. 1981). According to such logic Burck has a strong case, as his entire proprietary interest is the outfit which he wears in New York. It is that outfit that separates him form the myriad of street singers and entertainers.
Burck may further find protection from the Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). The statute essentially prohibits an advertiser from making a misleading representation that a person is affiliated or sponsors the product. Woody Allen used the statute to protect his trademark when similar circumstance befell him, Allen v. National Video, Inc., 610 F. Supp. 612. Allen brought the claim when a video store advertisement used an unknown Allen look-alike in a pose characteristic of Allen, and visible in the background were movies associated with him. The court found for Allen.
Federal Court Judge Denny Chin stripped Burck of most parts of his trademark infringement lawsuit. However left intact is the allegation that the advertisement video left the impression that Burck himself endorsed the product. The Naked Cowboy may soon find that his image is worth four million dollars.
So You’re an Attorney; Tell Me: Can I Backup My CDs Without Being Sued?
Filed Under General | Posted on May 14, 2008
By: Eliyahu R. Babad
A questioner (himself an attorney) recently posed this query to the copyright panel of the Fordham Intellectual Property Symposium. The distinguished panel of three law professors and the principal legal advisor from the Copyright Office i at best offered a qualified “perhaps”. So what is the real deal?
The crux of this issue lies possibly with the Recording Industry of America (RIAA) and how they view it; as they have been at the forefront of these suits and are the most vocal voice in the cacophony calling for copyright enforcement. Perhaps the most notorious, though not the only, verdict in such a suit was the jury award of $222,000 against a woman from Montana.ii This has, for better or worse, scared even veteran copyright attorneys as well as the average American who are unsure of what penalties they may face for using their music in the wrong way.
The RIAA used to say that that any copying of copyrighted music onto your personal computer was infringement.iii It did not matter why or for what purposes you were making the copy. They felt that if you bought a CD, you bought the rights to just that and no backups. Somewhere along the way they changed their position.
The RIAA now states on their website that the record companied have “never” objected to copies for personal use.iv While this might seem a bold-faced lie in light of their prior position, this claim seems sometimes adjusted to reflect reality. In oral argument in front of the Supreme Court in the Grokster casev plaintiff’s counsel stated it differently. He said only that “for some time now” the RIAA’s position has been that a copy for personal use is “perfectly lawful.vi
So the case would seem to be settled that it is permitted to make a backup of your personal CD collection. But the RIAA started singing, once again, a conflicting tune. While their website might make it clear that they have no problem with personal backups of music, a link on the same page where they make that proclamation seems to advise otherwise. On the linked page, by Music United called The Law, it states that if a person makes unauthorized copies, it’s stealing.vii
Further confusing the situation is the RIAA brief in Atlantic Recording Corp. v. Howell.viii The RIAA’s position there seems directly contrary to its counsel’s statements in Grokster. The brief states that “[o]nce Defendant converted Plaintiffs’ recording into the compressed .mp3 format and they are in his shared folder, they are no longer the authorized copies distributed by Plaintiffs.”ix There has been much controversy surrounding the true meaning of this statement and whether the RIAA was only referring to files specifically placed in the shared folder. Either way, it has only added to the controversy and uncertainty. A column in the Washington Post stated that, based on this statement, that the RIAA felt that it was illegal to make backups of CDs.x The Post, however, subsequently corrected it when urged by the RIAA that the language was specifically referring to files uploaded in the “shared folder”.
In reply comments to proposed rules from the U.S. Copyright Office, the RIAA as one of the authors stated “creating a back-up copy of a music CD is not a non-infringing use”.xi Once again, the recording industry is fairly clearly stating that the RIAA takes the position that it is illegal to make these back-ups of your own CDs.
Despite all these conflicting signals, when speaking specifically on this topic (and when the RIAA is pressed on it they seem to agree) it is safe to say that the real answer to the question posed is a qualified yes—which is at least a step better than “perhaps”. Basically if you copy your own CDs for your personal use then the RIAA will not sue you for now. The caveats are that this does not account for suits by other parties and this answer works only for the time being. As we have seen before, the RIAA is liable to change its position in a music beat, and if you own copied CDs at that point then you might be playing the jailhouse rock.
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iThe panel consisted of Diane Zimmerman - Professor, New York University School of Law; Robert Kasunic - Principal Legal Advisor, United States Copyright Office; and Brett Frischmann - Professor, Loyola University–Chicago School of Law and Visiting Associate Professor, Fordham University School of Law. The moderator was Hugh C. Hansen – Professor, Fordham University School of Law.
ii See Jeff Leeds, Labels Win Suit Against Song Sharer, N.Y. TIMES, Oct. 5, 2007, at C1.
iii Robert A. Starrett, Copying Music to CD: The Right, the Wrong, and the Law, EMEDIA PROF., Feb. 1998 (available at http://findarticles.com/p/articles/mi_m0FXG/is_n2_v11/ai_20179371) (last visited Mar. 2, 2008) (“According to Cary Sherman, the senior executive vice president and general counsel, the RIAA takes the position that any copying of music to CD that you perform on your computer is copyright infringement.”).
iv RIAA, For Students Doing Reports, http://riaa.com/faq.php (last visited Feb. 28, 2008) (“Record companies have never objected to someone making a copy of a CD for their own personal use.”).
v Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005).
vi Oral Argument at 14, Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (“The record companies, my clients, have said, for some time now, and it’s been on their Website for some time now, that it’s perfectly lawful to take a CD that you’ve purchased, [and] upload it onto your computer”) (No. 04-480), 2005 WL 832356
vii MusicUnited.org, The Law (“If you make unauthorized copies of copyrighted music recordings, you’re stealing.” (link followed from RIAA website http://riaa.com/faq.php (last visited Feb. 28, 2008)) (last visited Feb. 28 2008).
viii Atl. Recording Corp. v. Howell, No. CV06-02076-PHX-NVW (Aug. 20, 2007, D.Ariz.), 2007 WL 2409549.
ix Id. Plaintiffs’ Supplemental Brief In Support Of Their Motion For Summary Judgment Pursuant To Court’s Order Of October 3, 2007, at 15.
x Marc Fisher, Download Uproar: Record Industry Goes After Personal Use, WASH. POST, Dec. 30, 2007 at M05.
xi AAP et al, JOINT REPLY COMMENTS, Exemption to Prohibition on Circumvention of Copyright Protection Systems for Access Control Technologies, Docket No. RM 2005-11 at 22 (2006) (the RIAA was one of the named authors of these comments submitted to the Untied States Copyright Office).
No Summary Judgement on Filesharing, Copyright Infringement Still Illegal
Filed Under General | Posted on April 30, 2008
The RIAA was handed a small blow today as a District Court judge in Arizona denied Summary Judgment on the question of whether leaving files on a shared directory is Copyright Infringement as a matter of law. While this does not really lend any saving grace to the p2p community at large, it does give the RIAA the heavier burden of a trial to show that actual copyright infringement had occurred (for which they get $150,000 per instance of infringement). This also puts the hurt on RIAA’s “making available” and “offer to distribute” theories.
- Maxim Price
How Far Does “The Big Apple” Have to Fall From the Tree?
Filed Under General | Posted on April 17, 2008
By: Eric Mouchette
How many ways can you draw an apple? More specifically, how many ways can you draw an apple without infringing on Apple Inc.’s ubiquitous logo? This is a question that New York City Hall may eventually have to ask itself. Apple renewed its federal challenge to the trademark application that New York filed in May 2007. Apple alleges that the GreeNYC logo, an infinity apple design, is likely to cause “consumer confusion resulting in damage and injury”i to Apple, and will cause the “dilution of the distinctiveness”ii of Apple’s trademark in violation of the Lanham Act.iii
According to an assessment made by the Interbrand Corporation, the Apple brand is the 33rd most valuable brand in the world, with an estimated worth of $11.037 billion.iv Apple’s logo, which it has held since 1979,v has become a world famous emblem for the company’s broad array of goods and services. The Apple logo was originally intended for Apple’s computers and computer software, but its use expanded to publications, provisions of information through various forms of media, advertising, clothing, glassware, and dishes.vi Additionally, Apple has opened three retail locations in Manhattan, which the company asserts have become an “iconic” tourist attraction.vii
The idea for the GreeNYC logo came from a nickname that New York has had since the 1920’s.viii Although New York has been known as “The Big Apple” for a longtime, the city does not own any trademarks related to the phrase.ix The GreeNYC logo will be used in brochures, booklets, and teaching materials to promote the campaign’s efforts to implement “environmentally friendly policies” and “economic development.”x The logo has started to appear on bus shelters, hybrid gasoline-electric taxi cabs, and cotton shopping bags.xi The city also plans to place the logo on goods such as publications, sweat shirts, t-shirts, caps, glassware, dishes, and plates.xii
Apple is specifically concerned about the similarity of the two logos. Apple claims consumers familiar with Apple’s trademarks will purchase the GreeNYC goods and services as and for goods and services associated with Apple. Additionally, Apple contends that any defect found with GreeNYC’s goods and services would “reflect upon and seriously injure” Apple’s reputation.xiii
The city responded by submitting a request to the Trademark office, asking the appeals board to reject Apple’s challenge. Furthermore, the city asked the board to cancel one of the Apple’s trademarks, alleging that one of the 12 Apple trademarks listed in the challenge was fraudulently acquired. The city argued that Apple has failed to use the trademark on “mugs, dishes, drinking glasses, and wine glasses”, although the company stated it would in a 1985 trademark application.xiv
The Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office will analyze all of the facts in evidence to determine the likelihood of confusion between the two trademarks. The two key considerations in this analysis will be the similarities or dissimilarities between the marks. Common factors include (1) the similarities or dissimilarities of the sight, sound, and meaning of the trademarks, (2) the similarity or dissimilarity in channels of distribution and marketing of the goods and services, (3) the sophistication and degree of care likely to be exercised by prospective consumers, and (4) the degree of distinctiveness of the subject mark.xv
While a number of dissimilarities exist, the only apparent similarity between the two logos is the depiction of an apple with a leaf. Apple’s logo is a simple outline of an apple with one leaf pointing to the right. The Apple logo also has a bite mark on the right side of the apple and is within the black/white spectrum, but was previously rainbow colored. The GreeNYC logo is reminiscent of a green infinity symbol in the shape of an apple. The GreeNYC logo has a stem pointing to the right beside a leaf pointing to the left, and does not have a bite mark. Furthermore, although both logos will be distributed in New York’s market, the logos will be used to promote entirely distinct goals.
Apple will likely commission independent surveys to determine if consumers are actually confused by the two logos. The dispute may continue over the next few months until the Trademark Trial and Appeal Board of the Patent Office makes a final decision.
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i Wired.com, Consolidated Notice of Opposition, http://www.wired.com/images/pdf/apple_opposition.pdf, 11.
ii Id.
iii 15 U.S.C § 1052(d); 15 U.S.C § 1125(c)(1)
iv Interbrand, Best Global Brands 2007, http://www.ourfishbowl.com/images/surveys/Interbrand_BGB_2007.pdf, 14.
v Wired.com, Consolidated Notice of Opposition, Wikipedia, Big Apple, http://en.wikipedia.org/wiki/Big_Apple (Last visited April 14, 2008).
ix Amanda Fehd, Apple Inc. Opposes Big Apple’s Logo, BusinessWeek, http://www.businessweek.com/ap/financialnews/D8VR97N80.htm (Last visited April 14, 2008).
x Wired.com, Consolidated Notice of Opposition, http://www.wired.com/images/pdf/apple_opposition.pdf, 9.
xi Larry McShane, Apple Computer Says Something’s Rotten With GreeNYC Logo, Daily News, http://www.nydailynews.com/news/2008/04/03/2008-04-03_apple_computer_says_somethings_rotten_wi.html (Last visited April 14, 2008).
xii Wired.com, Consolidated Notice of Opposition, http://www.wired.com/images/pdf/apple_opposition.pdf, 10.
xiii Id. at 12.
xiv Id. at 4.
xv Paul Reidl, Understanding Basic Trademark: A Primer on Basic Trademark Protection, 904 PLI/Pat 171, 203 (2007)
J.K. Rowling Testifies
Filed Under General | Posted on April 15, 2008
J.K. Rowling is suing RDR Books for publishing a Harry Potter lexicon dictionary of sorts. Their website with the same content has been free, but now that this book is going to bring in revenue, J.K. has brought out the guns. And those guns include tears at a press conference.
The questions at trial will be how much of the original work was copied, and it’s potential impact on J.K.’s market. It will be easy to show that RDR had access to the Harry Potter series. If she can show that she previously planned to release a dictionary of her terminology, RDR may not stand a chance.
There does not seem to be a fair use defense for RDR since this is not a commentary on the book or it’s terms. It will also be hard for RDR to argue that they are copying only ideas rather than the expression itself since J.K.’s “lexicon” is filled with words created by J.K. The copyright in J.K. seems to be strong. Whether these made-up words have entered the general lexicon a la Chaucer will be up to the court, but it’s highly unlikely.
- Maxim Price
Legal Battles in a Bowl of Milk
Filed Under General | Posted on April 8, 2008
By: S.S.
Who would have thought that the most important meal of the day could turn into such a debate over economic regulation and ownership rights? The expansion of the cereal café market has created an intellectual property war over trademarks and patents, and the ability of one company to control the market.
Upon entering Cereality Cereal Bar & Café, one is immediately transported back to a simpler time, when the only question is what cereal to eat for breakfast. The walls of the café are covered in cupboards filled with colorful boxes of cereal from the traditional oat to the newest craze, from the healthy bran to the sugary corn delights. A poster board spotlights the Cereality Signature Blends such as “Three’s A Charm”i or “Frost Bites,”ii as well as the option to design your own combination from over thirty cereals, an assortment of fruit, nuts, granola, and candy toppings, and one of seven milk options. Pajama clad Cereologists ask “What’s in your bowl?” and portion heaps of cereal and toppings into Chinese-food takeout containers. To protect the uniqueness of this experience, co-founders David Roth and Rick Bacher applied for, and were issued trademarks for the name Cereality,iii for slogans used on signs and advertisements such as “Cereality Cereal Bar & Café,”iv and “What’s in Your Bowl?”v as well as for the titles of the Signature Blends.vi Additionally, Cereality has applied for several business method patents for the processes utilized by Cereality ranging from the in-store cereal-storage methods to the process of selecting and mixing the cereals and toppings.
Cereality has taken a tough stance against “copycat” cereal cafes such as Cereology in Iowa, the Cereal Bowl in Miami, and A Cereal Joint in Gainesville, FL, sending warning letters against the use of similar-sounding café names and slogans.vii Roth has been quoted as saying that “We’re happy to see competitors show up to serve cereal away from home,” as long as they do not imitate Cereality’s slogans or serving buckets.viii In March 2006, Cereality sued Cereals LLC, an Ohio company which operated Cerealicious, claiming that Cerealicious had infringed on Cereality’s trademarks in violation of Sections 32 and 43(a) of the Lanham Act,ix and had engaged in unfair competition under Ohio State law.x The suit was settled in August 2006, and Cereality hailed the settlement as proof that “the trademark protection system in this country works.”xi Roth explained that “This lawsuit should also send a signal to any company that bends the rules or takes short-cuts, especially when it comes to the franchise process . . . We are prepared to take this kind of legal action again should the need arise.”xii
Cereality currently has three full-service cafes in Pennsylvania and Arizona, all of which are on or near college campuses.xiii Ironically, the group that has taken the strongest stance against Cereality and its perceived strong arming of competitor cereal cafes is Cereality’s target market—college students. A group from the University of Florida launched a “Cereal Solidarity” campaign in September 2005, criticizing Cereality for engaging in “patent bullying—using lawyers and exclusive rights on common ideas to beat smaller innovators and entrepreneurs into submission.”xiv The group takes a strong stance against business method patents generally, as a legal mechanism which stifles innovations which in turn means “less competition, and less entrepreneurship.”xv The group suggests that Cereality should not be permitted to “claim an exclusive right on mundane ideas that any eight-year-old could think of.”xvi
In order to obtain a business method patent, an applicant must prove a need for a patent to defend novelty in the business process, without overly inhibiting competition or innovation.xvii Cereality’s patents have yet to be ruled on by the U.S. Trademark and Patent Office, and will likely not be granted because of the lack of innovation in the business process. The Supreme Court in Funk Bros. Seed Co. v. Kalo Inoculant Co. ruled that although combining various soils was a new and useful agricultural technique, the process lacked invention so as to warrant a patent.xviii Instead of focusing on current competitors and how best to monopolize the market, Cereality should focus on improving its products and on advancing the cereal café industry. The patent process should be used to defend true discoveries and business processes which are so unique as to warrant protection from copycats, not to stifle creativity and innovation. Cereality has become far too comfortable milking its trademarks and patent applications for all they are worth.
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i General Mills Cocoa Puffs and Nature’s Path Panda Puffs with Cereality Charms and chocolate chips. See Cereality, All Day Catering Menu, http://www.cereality.com/press/ONLINE_Catering0906.pdf (last visited Apr. 2, 2008).
ii Kellogg’s Frosted Mini Wheats and Kellogg’s Frosted Flakes with malted milk balls and coconut. Id.
iii U.S. Reg. No. 2,836,818 (registered Apr. 27, 2004).
iv U.S. Reg. No. 2,961,861 (registered June 14, 2005).
v U.S. Reg. No. 2,951,202 (registered Mar. 17, 2006).
vi Complaint at 9, Cereality Corp., Inc., v. Cereals, LLC, 2:06-cv-00202 (GLF) (S.D. Ohio Mar. 17, 2006).
vii Jeremy Caplan, In a Real Crunch, TIME, May 28, 2006, available at http://www.time.com/time/magazine/article/0,9171,1198902,00.html.
viii Id.
ix 15 U.S.C. §§ 1114, 1125(a) (1947).
x Cereality at 21–38.
xi Cereality Cereal Bar & Café Settles Ohio Lawsuit Against Copycat, Aug. 2, 2006, available at http://www.cereality.com/press/CerealitySettlesLawsuit.pdf (last visited Apr. 2, 2008).
xii Id.
xiii Cereality, Café Locations, http://www.cereality.com/exp_stores.php (last visited Apr. 2, 2008).
xiv Freeculture.org, Cereal Solidarity, http://freeculture.org/cereal (last visited Mar. 31, 2008).
xv Id.
xvi Id.
xvii See generally State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998).
xviii 333 U.S. 127 (1948).
Google Sued by Viacom—Can YouTube Survive?
Filed Under General | Posted on April 5, 2008
By Eric Bitzegaio
Viacom has slammed YouTube’s parent company, Google, with a suit seeking over $1 billion in damage and injunctive relief the copyright infringement provisions of the Copyright Act.i Viacom claims Google directly infringed on their copyrights by publicly displaying, publicly performing, and reproducing copyrighted works without authorization. Furthermore, Viacom alleges that Google is liable for inducing infringement, contributory infringement, and vicarious infringement as a consequence of its behavior and business model with respect to user-uploaded content.ii
Relying largely on the $1.65 billion acquisition price paid by Google to acquire YouTube as an indicator of the site’s value, Viacom has argued that Google is profiting on the backs of media companies who create copyrighted content, which is then uploaded to YouTube royalty-free by individual users. Further raising Viacom’s ire was the recent addition of a feature which displays YouTube video thumbnails to users of Google’s web search engine, which, “thereby participating in, inducing, contributing to, and profiting from” copyright infringement perpetuated by YouTube users.iii In addition, it is YouTube “publicly performing” the copyrighted works when it streams them over the internet to users’ home computers for viewing.
Users attracted hence to the YouTube website are then subjected to advertisements, from which Google nets revenue. Google thusly profits from infringement of Viacom’s copyrights. Furthermore, according to Viacom, Google has clear notice of the massive infringement that takes place on YouTube. To wit, a search of Viacom’s trademarks will turn up many infringing hits.
However, the realities of running a website as large and complicated as YouTube are more complex than Viacom suggests. Although it may be easy to find infringing content on YouTube, even to a casual user, what Google might do about the problem, short of drastically altering their business model (e.g. not allowing users to upload videos). Although certain clips may obviously be infringing to a person looking at the site, it is simply not feasible to review each and every video uploaded: there are nearly 80 million videos, with new content being uploaded every day. In short, while it may be readily apparent that there is some copyright infringement occurring on YouTube, it may not be readily apparent that any particular video on the site is infringing—the information Google would need to effectively police the site for infringement.
However, Viacom protests that Google manages to police its videos for pornographic content, but does not do the same for copyrighted content. Google’s defends that while pornographic content is both immediately apparent and unacceptable in any case, all content posted to YouTube is necessarily copyrighted—the issue is whether such use of copyrighted material is infringing, or was it uploaded by the copyright owner herself, or covered by fair use doctrine, etc.
Google has offered a number of defenses,iv notably among them that they are protected by safe harbors within the Digital Millennium Copyright Act,v fair use, failure to mitigate on the part of the plaintiffs, and that licenses were granted barring the action. Most interesting may be the application of the DMCA safe harbor provisions, considering that Google responds to DMCA takedown notices and removes material alleged to be infringing. 512(c) will likely be the primary section on which Google relies, as it creates liability exceptions with respect to user-directed storage of material on a system or network. For this exception to apply, Google must have no actual knowledge of infringing material, be unaware of facts or circumstances from which infringing activity is apparent, and promptly remove material if served by a takedown notice. Furthermore, Google may not receive a financial benefit directly attributable to the infringing activity, if it has the right and ability to control that activity.
The primary battlefield in this case, if previous file-sharing cases are to be any guide (e.g. Grokstervi ), will be Google’s “apparent” if not “actual” knowledge of infringing activity and Google’s ability to control such activity. Hanging in the background will no doubt be the question of whether Google made a good faith effort to limit infringing activity. While Google certainly has not encouraged infringement as brazenly as Grokster did, there is no doubt that there is substantial infringing material on YouTube. Perhaps the most important result that will likely come from this case is whether a business model based on massive reserves of user-generated content is viable, or whether the policing costs necessary to avoid liability are too severe to make such a venture worthwhile.
Although discovery is expected to go on for some time, Google appears to have won the first battle: the Southern District of New York has denied Viacom the right to seek punitive damages. Following Second Circuit precedent, the court held that punitive damages are not available under any action predicated on the Copyright Act, regardless of whatever other damages are being sought.vii
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i Miguel Helft & Geraldine Fabrikant, Viacom Sues Google Over Video Clips on Its Sharing Web Site, N.Y. TIMES, March 14, 2007, at C1.
ii See Complaint for Declaratory and Injunctive Relief and Damages, Viacom Int’l Inc. v. YouTube, Inc., No. 1:07CV02103 (S.D.N.Y. March 13, 2007).
iii Id.A
iv See Defendants’ Answer and Demand for Jury Trial, Viacom Int’l Inc. v. YouTube, Inc., No. 1:07-cv-02103 (S.D.N.Y. April 30, 2007).
v Digital Millennium Copyright Act, 17 U.S.C. § 512 (1998).
vi 545 U.S. 913 (2005).
vii See Viacom Int’l Inc. v. YouTube, Inc., No. 07 civ. 2103, 2008 WL 629951, at *3 (S.D.N.Y. March 7, 2008).
Apple Fights City Hall
Filed Under News | Posted on April 3, 2008
New York City Hall to be precise. Apple is challenging NYC’s new greeNYC apple shaped logo as a trademark violation. Apple has filed a formal opposition to NYC’s trademark application. Read more here.
- Maxim Price
YouTube Hit With Massive Lawsuit by Viacom
Filed Under News | Posted on March 28, 2008
Viacom, which owns MTV and Nickelodeon, is bringing the hammer down on Google’s YouTube service alleging over 160,000 instances of intentional copyright infringement. The maximum statutory remedy for this could theoretically be as high as 24 billion dollars. Viacom only seems to be seeking about 1 billion dollars. Check back soon for a fuller discussion by an IPLJ staff member.
- Maxim Price
Why are relatively few non-Japanese applications filed in Japan?
Filed Under General | Posted on March 26, 2008
By: Court Heinle
Last September, the Organization for Economic Cooperation and Development (OECD) published statistics on the share of countries in patent applications at the USPTO and the JPO.i While roughly half of the patent applications to the USPTO list a foreigner as first-named inventor, only 28.1% of applications to the JPO are by foreigners.ii Consequently, Dennis Crouch on www.patentlyo.com raised the question, “Why are relatively few non-Japanese applications filed in Japan?”iii
There are several important legal differences between the U.S. and Japanese patent systems. Most notably, Japanese patent law (like most jurisdictions around the world) is based on the first-to-file principle.iv Under this system, the person who is the first to file a patent application for a particular invention may obtain the patent. By contrast, the U.S. operates under the first-to-invent principle whereby priority is given to the person who is first to conceive of and reduce to practice the invention, regardless as to who files first.v While seemingly more equitable to the inventor, a major disadvantage of a first-to-invent system is the litigation that results from when an inventor who was not first to file claims priority.
Both the USPTO and the JPO publish patent applications within 18 months of filing.vi While this “laying open” of applications enables a competitor to use the technology before a patent issues, both systems grant patentees a provisional right to recover reasonable royalties for that use.vii However, if a competitor is able to improve upon an invention during this period, then it may qualify for its own separate patent on the improvement. In Japan, this outcome could be especially costly, as the competitor could then force the original inventor into a compulsory cross-licensing agreement for the original invention in exchange for the improvement.viii Moreover, firms operating in Japan may have ample time to use published technology, as pendency periods there tend to be relatively long; one study has shown that, on average, pendency periods at the JPO are longer than at the USPTO.ix By contrast, there is no similar compulsory cross-licensing statute in the U.S.
Another key difference between the U.S. and Japanese patent systems may lie in the realm of enforcement. As compared to U.S. courts, Japanese courts tend to narrowly interpret the scope of patent claims.x While a U.S. court will often apply the doctrine of equivalents, Japanese courts frequently decline to do so.xi Instead, courts in Japan will limit their analysis to the specific examples given in the “embodiments” part of the patent application, and even if only slight variations or modifications exist between the examples and the alleged infringing product, the court will find no infringement.xii Also, while courts in the U.S. will look to the “”overall object of the invention” to interpret the ideas expressed in the specification, the courts in Japan prefer a more narrow element-by-element comparison of the patented specification with that of the alleged infringing product, and only slight differences will trigger a finding of no infringement, even if the overall object of the invention is the same.xiii Essentially, U.S. courts interpret patent claims broadly, while Japanese courts focus on specific language in the specification to interpret patents narrowly.
One might argue that all these so-called weaknesses of the Japanese patent system afflict foreign and domestic firms alike, and therefore can not be used to explain why foreign firms file relatively fewer applications as compared to their domestic counterparts. Yet these weaknesses may feed into another consideration that is outside the comparative legal framework of these patent systems: the economic ‘miracle’ of post-war Japan has, to an extent, been marked by economic nationalism.xiv With the exception of raw materials, foreign firms have historically struggled to establish a foothold in the Japanese national, blaming cultural barriers against imports.xv This factor, when considered along with weaker intellectual property protection, may tip the balance against the costly proposition of prosecuting a patent in Japan, except in less the frequent instances of prosecuting a patent which promises to be sufficiently profitable as to wash out these considerations.
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i Compendium of Patent Statistics 2007, ORGANIZATION FOR ECONOMIC COOPERATION AND DEVELOPMENT, available at http://www.oecd.org/dataoecd/5/19/37569377.pdf.
ii Id.
iii Posting of Dennis Crouch to Patently-O Blog, http://www.patentlyo.com/patent/2007/11/mercantilism-an.html.
iv Japanese Patent Law, Article 39.
v 35 U.S.C. § 102.
vi 35 U.S.C. § 122; Japanese Patent Law, Article 64.
vii 35 U.S.C. § 154; Japanese Patent Law, Article 65.
viii Masaaki Kotabe, A Comparative Study of U.S. and Japanese Patent Systems, 23 Journal of International Business Studies 147 (1991).
ix Id.
x Ames Gross, Japanese Patent Law: An Introduction for Medical Companies, Pacific Bridge Medical (1998).
xi Id.
xii Id.
xiii Takenaka, Toshiko, Interpreting Patent Claims: The United States, Germany and Japan, 199-200 (VCH Publishers 1995).
xiv See generally, Y. Miyazaki, Rapid Economic Growth in Postwar Japan, in The Japanese Economy 133 (Routledge Publishers 1998).
xv Id.