What Language to File a UDRP Complaint In?

The UDRP applies to domain name disputes concerning all the most common gTLDS as well as several ccTLDs. With such widespread international applicability, the choice of language may certainly become an issue in a UDRP proceeding.

Rule 11(a) of the Rules for Uniform Domain Name Dispute Resolution Policy states: “the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” A recent UDRP ruling from WIPO touches on this rule, as well as explains the underlying justifications for the rule.

In a recent case initiated by Lego A/S and ruled on by WIPO, Lego contested the registration of <mindstormslego.com> by a Korean entity, accomplished through a Korean registrar. Lego filed the UDRP complaint to WIPO in English, despite the fact that the registration agreement was in Korean. In support of its request that English be the language of the proceedings, Lego argued that

• the respondent had the ability to understand English as the domain name contained “mindstorms”, an English word construction
• the content of the website connected to the disputed domain name was in English

Despite the fact that no response was submitted, the panel made a decision on the language issue, and in doing so identified three factors which capture the “spirit” of Rule 11:

•  ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language;
• the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required; and
• other relevant factors

In this case, the Panel reasoned that Lego  “is not able to communicate in Korean”, and for this reason, Lego would be delayed in filing the action and incur substantial expenses for translation. On the basis of these arguments and the spirit of Rule 11, the panel ruled in favor of English as the language of proceedings.

It is notable that a WIPO panel found a multi-national company with resources such as Lego is “not able” to communicate in a particular language. Surely, a company such as Lego is more able to communicate in Korean than the average Korean respondent is able to communicate in English. Another WIPO decision involving a similar factual situation held that a Korean respondent had “no difficulties” in communicating in English, based solely on the fact that the respondent previously wrote letters in English to the German complainant in negotiations. The panel in that case ultimately accepted submissions in English and Korean “in the interest of fairness”.

It seems that despite the language requirements of the UDRP, English complaints are accepted despite the fact that they may be different from the language of the registration agreement.  All that needs to be shown is some hardship in filing a UDRP complaint in the language of the registration agreement,  or delay in filing caused by it. And if a multinational company such as Lego can be found to have a hardship in filing a complaint in a non-English language, it seems companies smaller and possessing less resources should also be found to have a hardship in filing a UDRP complaint in a non-English language.

– ck

The "Originality" Requirement for Copyright Protection in Western Societies

One requirement for copyright protection in many Western jurisdictions is that a work is “original”. This requirement is explored here at a general level, providing basic philosophical and legal standpoints of this requirement as it exists in modern Western jurisdictions.

The Originality Requirement

“Originality” is a key concept in copyright law in the Western world, and yet its practical implications can be unclear, as well as fleeting with respect to technological developments affecting the arts. Several sources of law can be consulted to begin the building of a understanding on the demands of the “originality” requirement.

The Berne Convention, first signed in 1886 and which establishes a “Union for the protection of the rights of authors in their literary and artistic works”, is one of the oldest treaties on copyright protection. While it establishes basic minimum requirements for copyright protections in the jurisdictions of the signatories, there is little content in the treaty regarding originality, other than that a copyright holder generally maintains rights in his original work. The WIPO Copyright Treaty (WCT) provides slightly more guidance, in that it specifically addresses the fact that the term “original”, as used in the treaty, refers ‘exclusively to fixed copies that can be put into circulation as tangible objects,’ which removes some ambiguity as to how the term is used.

With EU Council Directive 93/98/EEC, signed in 1993, we have an early sign of international agreement as to the term “original” in the context of a prerequisite for copyright protection: a “photographic work within the meaning of the Berne Convention is to be considered original if it is the author’s own intellectual creation reflecting his personality, no other criteria such as merit or purpose being taken into account.”  This meaning seems to remain consistent throughout other pieces of EU legislation on copyright.

A sharper understanding of the term can be gained by looking to case law. The Court of Justice of the European Union (CJEU) has held that a photograph is “original” if the photographer “was able to express his creative abilities in the production of the work by making free and creative choices.”  The Painer court further explained that when a photographer engages in portrait photography, he has many choices to make, such as the background, the pose, the framing, angle of the view, and editing techniques, and thus, “by making those various choices, the author of a portrait photograph can stamp the work created with his ‘personal touch’”. This is at least in part due to the “freedom available to the author to exercise his creative abilities will not necessarily be minor or even non-existent”.

The U.S. Copyright Act (17 U.S.C.§102) states that copyright protection exists for “original works of authorship fixed in any tangible medium of expression”. The U.S. Supreme Court in 1991 clarified “originality” in the case of Feist Publications, Inc. v. Rural Telephone Service Company. It stated that the “requirement is not particularly stringent” and that the “vast majority of works make the grade easily, as they possess some creative spark, no matter how crude, humble or obvious it might be”. The Feist court then decided that the telephone book in question did not meet the originality standard, as the alphabetization of names into a book was a “time-honored tradition [which did] not possess the minimal creative spark required” by law.

Aesthetic Functionality and Trade Dress

In the United States, one can register the look of a product or product packaging if it is distinctive as a trademark. This is called trade dress, and famous examples of this include the shape of the Coca-Cola bottle and the signature baby blue color of Tiffany’s brand jewelry boxes (see related blog on trade dress in the adult entertainment industry). In a leading case regarding trade dress and the look and feel of Mexican restaurants, the U.S. Supreme Court has held that trade dress “involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics,” among others. Two Pesos, Inc.  v. Taco Cabana, Inc., 505 U.S. 763 (1992).

One way registrability of trade dress is limited is through the concept of “functionality”. U.S. law will not grant trademark protection to the design of a product or product packaging if that design was primarily motivated with functional considerations. Because patent and copyright law already protect novel inventions and aesthetic creations, one is not permitted to gain additional protection through acquiring trademark protection. “Functionality” in this sense includes not only usefulness by the end user and product designs which decrease production costs, but also aesthetic functionality. 

Qualitex Dry Cleaning Pad

In a leading case involving the registration of and litigation based on color as trade dress, the U.S. Supreme Court supported the notion that the “ultimate test of aesthetic functionality…is whether the recognition of trademark rights would significantly hinder competition.” Qualitex Company v. Jacobson Products Company, Inc., 514 U.S. 159 (1995). The case involved a gold-greenish color, applied to dry cleaning pads and typically sold to professional laundry cleaners, and pictured in this blog post. The Court  distinguished practical functionality (use of color to distinguish different types of medication) from the functionality of satisfying the “noble instinct for giving the right touch of beauty to common and necessary things.” The Court then held that if either functionality was found, courts must then examine whether use of that trade dress would hinder competition. This is assessed by examining whether the trade dress would allow one competitor  “to interfere with legitimate (non-trademark related) competition through actual or potential exclusive use of an important product ingredient.”

The Qualitex case seems to provide a framework for the analysis of aesthetic functionality, however, a look at subsequent opinions issued by lower courts shows a different story. Since the 1992 Qualitex opinion, several Federal Circuit Courts (courts of second instance) have issued varying interpretations of aesthetic functionality. On one end of the spectrum, the Second Circuit has denied trade dress protection in a design where the primary purpose of the plaintiff’s design “was aesthetic rather than source-identifying”. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995). On the other end of the spectrum, the Fourth Circuit refused to accept the doctrine altogether: “[T]his court has no reason to think that the Fourth Circuit would be inclined to adopt such a policy.” Devan Designs, Inc. v. Palliser Furniture Corp., 27 U.S.P.Q.2d 1399 (4^th Cir. 1993).

While it is clear that aesthetic functionality is a bar to trade dress protection in the U.S., guidance provided by case law as to the determination of aesthetic functionality is ambiguous. In fact, a leading U.S. trade mark authority has even characterised aesthetic functionality as a “fading theory”. McCarthy on Trademarks and Unfair Competition, § 7:80.

– ck

Proper "Use" and Your Trademark Portfolio

I think it is good practice that, from time to time, brand owners audit their trademark portfolio to analyse their current practices, look at their future brand strategy, and compare those two in order to see where shortfalls exist and where current practices may need to be adjusted moving forward.

One part of a trademark audit should include a look into the use of the trademarks currently registered. Improper use of a trademark can lead to trademarks losing their distinctiveness, shrinking of the scope of protection, and loss of clarity in brand identity amongst consumers. Proper notice of trademark rights, such as properly adding the ® symbol to trademarks, can have a deterrent effect on likely infringers. In a similar vein, improper use of the ® symbol varies from country to country (no rules in Brazil; only with registered trademark marks in India, punishable by fines and even imprisonment), and thus having an accurate grasp of one’s trademark use and the relevant legal authority will help avoid unnecessary surprises.

Proper use is also important with respect to use requirements in different jurisdictions. In the United States, the standard of “a bona fide use of the mark in the ordinary course of trade” is necessary before a trademark registration will issue. In the European Union, Community Trade Mark (CTM) applicants receive a trademark registration first, and only after five years could the proprietor be required to demonstrate “genuine use”, and with different standards than in the U.S.

It is important to have an accurate perception of the use of existing registered trademarks and potential marks for which registration may be sought at a later date. By conducting an audit of the portfolio, which includes an assessment of use, trademark usage guidelines can be created for all the relevant parties in a company which is related to use of the brand. This will help to ensure that marketing managers, social media teams, and business groups will all use the brand in a unified and clear manner, and thus protect and increase the value of the brand.

– ck

Jay-Z and Beyoncé's Daughter "Blue Ivy"…and Her Clothing Line?

Proud parents of Blue Ivy Carter.

She might not have 99 problems, but Jay-Z and Beyoncé’s newborn daughter, named Blue Ivy Carter, has already got at least 1 intellectual property problem.

A New Yorker filed a trademark application to the USPTO for “BLUE IVY CARTER NYC” for “infant, toddler, and junior clothing.” Included in the application are photos of the clothes with the BLUE IVY CARTER NYC mark attached. The application claims the date the mark was first used was January 9, 2012. Blue Ivy was born January 7, 2012.

On a side note, I really hope the applicant did not claim that he used the mark as pictured, with the “®” symbol. The “®” symbol in the United States is reserved only for registered trademarks, and misuse is viewed as a type of fraud on the public and punishable by law.

Right of Publicity and False Endorsement

The “right of publicity” is a relative of trademark law, and protects the economic value of one’s name. It stands for the notion that one has the right to control the use of their name for commercial purposes, a notion based in the protection of one’s identity.

“False Endorsement” is a type of false advertising, and U.S. trademark law makes liable “Any person who…uses in commerce any [name], which is likely to cause confusion…to the origin, sponsorship, or approval of his or her goods”.

BLUE IVY CARTER NYC

Ultimately, I highly doubt that the applicant for the “BLUE IVY CARTER NYC” mark will succeed, if it is true that Jay-Z and his legal team are going after those who are capitalizing from his daughter’s name. Even if the application makes it through the USPTO vetting process and a fierce opposition filed by Blue Ivy’s parents, a civil suit could really discourage the applicant in other ways.

Based on the current facts, the case against the applicant is quite strong. Jay-Z, as guardian at litem (I’d be interested in hearing from a family law attorney how this would work in this context), needs only to show that a “likelihood of deception” exists through the use of the BLUE IVY CARTER NYC trademark. Assuming that the applicant’s target market overlap’s Jay-Z’s market, this should not be hard to demonstrate when one considers 1) the uniqueness of the name, 2) the proximity of the date of first use to Blue Ivy’s birth, 3) the inherited fame of Blue Ivy, and 4) the existence of “NYC” in the mark as another link to Blue Ivy herself. I can also see a cause of action for appropriation of name or likeness, usually a state tort law, which makes liable those whose use another’s name for commercial gain.

After Jay-Z is done dealing with this problem, then perhaps he can deal with the recent proliferation of a strain of medical marijuana in California, dubbed “Ivy Blue OG”. Perhaps he would smoke some out of his own curiosity.

– ck

:     :     :     :     :     UPDATE 3.1.2012     :     :     :     :     :

 

The above blog post was published on January 23, 2012. On January 25, 2012, the applicant mysteriously abandoned his trademark application. On January 26, 2012, Beyoncé’s holding company BGK Trademark Holdings filed a trademark application for BLUE IVY CARTER in 15 international classes (read $4000 in USPTO fees, and since Reed Smith did the filing, tens of thousands of dollars in attorney’s fees). The applications were filed as “intent-to-use” applications, which essentially reserves an applied-for mark until it is ready to be used. However, there is a maximum number of time extensions that may be filed, which means, in this case, the proud parents will have to use BLUE IVY CARTER within three and a half years (approximately the maximum time they can buy if they exhaust all their time extensions).

The Madrid Protocol for International Trademark Registrations. Part 1 – What it is.

Picture of WIPO Headquarters

The ever-growing amount of business that can be and is being done online is one factor driving the ever-growing need for global protection of trademark rights. The Madrid Protocol is an international treaty which provides one method of registering a trademark in several international jurisdictions through one simplified process. The Protocol is an alternative to the traditional method for a global expansion of trademark rights: filing individual trademark applications in each desired country using local counsel.

The Madrid Protocol allows the holder of a trademark registration in a Protocol country to extend the “home” registration to other Protocol countries. Trademark holders do this by essentially checking off the desired countries and paying a fee. There are currently 84 Protocol countries, and new countries are always joining (New Zealand, India, and Tunisia have all passed legislation in their respective countries to join the Protocol). Filing Protocol applications in foreign jurisdictions does not require foreign counsel.

Procedure and Cost Summary

Using the Protocol to acquire international registrations is effectually extending the trademark rights in the “country of origin”. While any Protocol country can be the country of origin for a Protocol “extension of protection,” the United States will be used as the example.

A trademark applicant to the United States Patent and Trademark Office (USPTO) may choose to extend that application or registration anytime after an application has been made (before and/or after a registration certificate has been issued). A fee is paid to the USPTO, which certifies the application, and send it to the International Bureau, an office maintained by the World Intellectual Property Office (WIPO) in Switzerland. After selecting the countries in which the applicant seeks trademark protection, a fee is paid to the International Bureau. Here are links to the current fee schedule and fee calculator.

The International Bureau then forwards the application to the selected countries’ trademark offices, which then assess the application on more-or-less the same basis they would a domestic application. If the application meets the foreign trademark offices’ requirements, an “extension of protection” is granted in that country. It is important to note that this is not the equivalent of a registration in that country. This will be explained in the next post.

Initial filing costs are based on the number of international classes (listed here with brief descriptions), as well as costs charged by the trademark office of the country of origin. This fee is $100 per class for the USPTO. Keep in mind these are only initial costs, covering only the cost of filing the application.

 

– ck

Satisfy the “Use in Commerce” Requirement with Your Webpage

That a mark has been “used in commerce” is one of the primary requirements that a mark must fulfill before becoming a registered trademark with the U.S. Patent and Trademark Office (USPTO). While there is a significantly developed body of law regarding traditional “use in commerce” with regards to brick-and-mortar shops and radio and television advertising, the same is not as true with regards to the internet. In any case, some useful guidelines have emerged in recent years from the Trademark Trial and Appeal Board (TTAB).

Regarding the sale of goods (as opposed to services, which have an easier requirement), a mark is considered to be “used in commerce” if “it is placed in any manner on the goods or their containers or the displays associated [with the products, or if this is not possible,] then on documents associated with goods or their sale….”

When submitting evidence to the USPTO to demonstrate “use in commerce” on a website, the specimen must:

(1) include a picture of the products;

(2) show the mark sufficiently near the picture of the goods to associate the mark with the goods; and

(3) contain the information necessary to order the products.

Remember that “mere advertising” of one’s product with the mark is typically insufficient, whereas “a display associated with the goods” is sufficient. Not only must the mark connect with the product in the minds of consumers, but the consumers must also be provided with enough information so that they can place an order.

In a 2007 case,  In re Valentine Inc., the TTAB considered the fact that a trademark applicant’s website, in addition to pictures of the goods, provided “an on-line catalog, technical information intended to further the prospective purchaser’s determination of which particular product to consider, an online calculator and both a link to, and phone number for, customer service [to place an order]”.

Taking these things into consideration when designing and building your website can help avoid a problem later down the line when you apply for your trademark, especially if you are strictly an online-based business. Make your trademark obvious on your page, with the goal of leaving an impression upon visitors of your mark as they click “add to shopping cart” or pick up the phone to order.

–   ck

The Silver Lining for the Little Guy in Threatened Trademark Litigation

 

We have another case of the “big bad company versus little guy” again, making me think about the amusing South Butt trademark case a few years back when I was in law school (which ended in a confidential settlement, and now the <thesouthbutt.com> website is no longer accessible). I imagine the 18 year old kid’s South Butt clothing company was bought out for a nice sum.

Here, we have Vermont t-shirt company (little guy) “Eat More Kale” against “Chick-fil-A” ($3.5 billion revenue). Chick-fil-A has been sending cease and desist letters to Eat More Kale owner Bo Muller-Moore, citing infringement of Chick-fil-A’s “Eat Mor Chikin” trademark, registered for clothing items, including tshirts. The cease and desist letters are claiming that Eat More Kale activities are likely to confuse the public and dilutes the distinctiveness of Chick-fil-A’s trademark. All the while, this has become huge news, and driving major amounts of traffic to <eatmorekale.com>.

Chick-fil-A is basically claiming that the public which is seeking out “Eat Mor Chikin” apparel is likely to be confused with “Eat More Kale” shirts, the crux behind a likelihood of confusion claim. (also see, the typical likelihood of confusion test). Trademark serve the purpose of letting consumers know the origin or source of a certain product. If a part of the public thinks that Eat More Kole shirts are produced by Chick-fil-A, Chick-fil-A may have a valid claim.

Chick-fil-A is also making a trademark “dilution” claim. The premise of a dilution claim is not that consumers are necessarily confused by the trademark, but rather that the infringer is slowly whittling away the ability of the trademark to be a clear indicator of one source; that the more companies with marks like Eat More Kale are allowed to exist, the weaker Eat Mor Chikin becomes as a trademark.

Here are some of the t-shirts in question:

Eat Mor Chikin

Eat More Kale

Eat Your Kale by Eat Mor Chikin (interesting site, using “Eat Mor Chikin” banner but selling “Eat Your Kale” tshirts. Perhaps this is a parody of the whole situation itself?)

While the artistic design of these shirts are obviously different, a likelihood of confusion case is not based only on the artistic similarities. The effect of the shirts will be analyzed against the “relevant” consuming public.

Regardless of what happens with the case, one thing is for sure: Eat More Kale is selling a lot of t-shirts right now. I think Chick-fil-A didn’t read my blog post on how social media can be the ultimate equalizer against a large legal war chest.

 

– ck

Counterfeit Domain Name Seizures on Cyber Monday

In the early hours of Cyber Monday, the largest single day of online shopping in the United States, the federal government seized control of approximately 150 domain names which were deemed to be selling counterfeit goods. This adds to a total of 350 domain name seizures since “Operation In Our Sites”  was launched by the U.S.  Justice Department and the National Intellectual Property Rights Coordination Center, among other U.S. agencies. Visitors to the seized domain names were greeted by a banner, explaining the seizure and basic violations of intellectual property rights. The seizure banners have been viewed 77 million times since the operation’s launch in June 2010.

Some have viewed this as a pointless exercise, citing the fact that these internet IP infringers will simply bounce back with another top-level domain name based somewhere else in the world. While this may be true, I think there is certain value in executing these seizures on the dawn of the largest internet  purchasing frenzy of the year. I bet a lot of people were spared from purchasing faulty and/or counterfeit products, the people who were seeking cheap and fake products still found them on another site anyway, and many infringing internet dealers were pushed back. As with law enforcement in general, it is a war of attrition, and just because they did not win the battle completely, it does not mean it was fruitless.

– ck

Protect Your Brand, #2: Policing Your Trademarks

Receiving that beautifully sealed trademark registration is not the last step in protecting your brand; it is one of the first. You now have a relatively solid ground from which to protect your mark, but it does not mean you will get to sit back and let your castle to all the protecting – you will have to keep your castle wells well maintained and fight off attackers when they come.

A U.S. trademark registration gives one a nationwide right to use their registered mark, and legally prohibits others from using a confusingly similar mark in the States. However, trademark registrants are responsible for policing their registration, not the USPTO or any other government agency.

As a trademark owner, you will want to patrol both the digital world, and the real world, for potentially infringing use of your mark. You do a great service to your brand by regularly making searches of your trademark using the major search engines. Remember to also check for typical misspellings of your trademark as well. If you find anything that concerns you, you should address the problem as soon as possible. In the real world, it is a good idea to subscribe to the major publications in your industry, and to occasionally spend some time looking through the advertisement sections in those publications. At the very least, this keeps you updated on your competition, and you will be able to address trademark problems as they rise.

Of course, these are only two of many do-it-yourself techniques for policing your trademarks. This is an important part of protecting your brand, because if you do not expend effort to protect your brand, the law will see less of a need to protect your brand as well. Avoid the situation where you are suing an unfriendly competitor for clearly stealing your business, and then showing up in court empty-handed when your competitor’s lawyer asks what you have done to enforce your trademark rights (except for filing a lawsuit after two years of infringing use). To find out about a full range of solutions for monitoring your trademarks, contact a lawyer experienced in trademark law and brand management.

As a trademark owner, you have to maintain your rights by regularly checking for unauthorized use of your mark. If you are aware of possible infringement, you have an obligation to address it, sooner rather than later. “Sleeping on your rights” can lead to losing your rights.

– ck