Copyright Cleanup Bill Clears Congress for Signature by Pres. Obama

The Copyright Cleanup, Clarification, and Corrections Act of 2010 (S. 3689), proposed by Sen. Leahy to make certain technical amendments to both copyright and trademark law, cleared both chambers of Congress and was sent to the White House on November 19, 2010 for review and signature. The final bill, as enrolled, can be found here.

Easily missed in this Bill is a provision modifying the Trademark Technical Amendments Act ("TTAA," now Pub. L. No. 111-146), and in particular, the study that the Department of Commerce is obligated to perform relating to trademark misuse. The TTAA currently requires the Department to study:

1."the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner;" and

2."the best use of Federal Government services to protect trademarks and prevent counterfeiting."

Pub. L. No. 111-146 § 4(a). The modification in S. 3689 states, "(h) TRADEMARK TECHNICAL AMENDMENTS ACT.—Section 4(a)(1) of Public Law 111–146 is amended by striking ''by corporations attempting'' and inserting ''the purpose of which is''."

In my initial blog posting about this Bill, I had posited that Congress would not reach S. 3689 because it had been proposed so late in the session. Pundits have argued that the remaining term of this Congress would be spent drafting and passing a budget, since one had not been proposed to date. However, it appears that this amendment may be enacted before the new year. The impact of this amendment, in fact, may be minimal because the mandated study has already begun, with comments due to the USTPO before January 7, 2011.

USPTO Seeks Comments on Potential Trademark Misuse

The US Patent and Trademark Office (USPTO) has posted a request for public comment "regarding their experiences with litigation tactics, especially those involving an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner. The USPTO also is eliciting suggestions to address any allegedly problematic litigation tactics." Comments are due by January 7, 2011 and the details of what to address in the comments can be found in the USPTO's request.

This study is mandated by the Trademark Technical and Conforming Amendment Act of 2010 (see below).

Statutory Background

The Trademark Technical and Conforming Amendment Act of 2010 (Pub. L. No. 111-146) was signed into law on March 17, 2010, and generally addresses technical amendments to the Trademark Act. However, buried at the end of the law (initially proposed as HR 4515 and S 2968), is a provision requiring that the Secretary of Commerce should undertake a study to determine:

1. "the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner;" and
2. "the best use of Federal Government services to protect trademarks and prevent counterfeiting."

Pub. L. No. 111-146 § 4(a). The study is due within one year after the enactment of the Bill – thus placing the deadline no later than March 17, 2011.

During the debates in the Senate in early March, both Senators Coble and Johnson conceded that Section 4 (where this "study" language appears) needed work, but that the remainder of the Bill was so important that it should pass without amendment to avoid the delay of returning an amended Bill to the House for approval. (For background on legislative procedure and how Bills get enacted, see What Does the House Do? and How Does a Senate Bill Become Law?.)

Senators Coble and Johnson also explained that Senator Leahy (who had proposed S. 2968) had agreed to "improve the language" in a subsequent bill.

SEN. JOHNSON:  "However, the bill is not perfect. It includes a study provision regarding alleged trademark lawsuit abuse and small businesses. While we don't want to delay the necessary relief to the trademark owner that this bill will provide by immediate passage of S. 2968, the ranking member and I are committed to working with Senator Leahy to refine the text of this study provision at our soonest opportunity." 111 Cong. Rec. at H1081 (Mar. 3, 2010).

SEN. COBLE: "[T]he legislation includes a study provision that was inserted at the behest of the other body. It directs the Intellectual Property Enforcement Coordinator and the Department of Commerce to evaluate and report on treatment of smaller businesses involved in litigation. Along with Chairman Conyers and the chairman of the subcommittee, the distinguished gentleman from Georgia, I believe the study text could be clarified further.  I'm happy to report that Senator Leahy has agreed to work with us on making the necessary minor revisions to improve the language.  We intend to move this language at a later date on a different vehicle.  We just don't want to delay further consideration of S. 2968 by requiring the other body to pass the bill for a second time."  111 Cong. Rec. at H1081 (Mar. 3, 2010).

Indeed, Senator Leahy introduced an amendment contained within a separate bill, the "Copyright Cleanup, Clarification and Corrections Act of 2010" (S. 3689, proposed on August 2, 2010). This Bill passed the Senate and was referred to the House Budget Committee and the House Judiciary Committee before Congress when on recess. This Bill changes the focuses to "the extent to which small businesses may be harmed by litigation tactics by corporations attempting the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner." (Former language crossed out; new language in bold and italics).

While the Congress may return from its current recess after the elections in order to pass a budget or appropriations measure, this Bill may not progress further before the end of the Congressional term. If that is the case, then it would need to be re-proposed in January before it can be adopted.

Comments Requested by the USPTO

In the meantime, in the absence of "improved language," the Department of Commerce (and in particular, the USPTO) is now undertaking this study and has requested public comment, due by January 7, 2011. In particular, the USPTO has requested comment about the following topics:

. . . Although the USPTO would find it most beneficial to receive responses to every item, you may answer all or any portion of the following questions.

1.  Please identify whether you are a trademark owner or practitioner, and the general size and nature of your business or trademark practice, including the number of trademark applications and registrations your business has, or your practice handles.  Please note that the USPTO will fully consider any comments you submit, even if you choose not to identify yourself in a particular manner.

2.  In approximately the last 5 years, please describe any instances of which you have first-hand knowledge where a small business may have been the target of litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.

3.  Please describe situations where you have been involved in receiving a cease-and-desist letter.  Anecdotal information might include, but is not limited to, a description of whether the letter resulted in the small business ceasing its use of one or more marks, or whether the sender of the cease-and-desist letter withdrew or abandoned its demands against the small business owner.

4.  Please describe situations where you have been involved in trademark litigation in state or federal courts.   Anecdotal information might include, but is not limited to, a description of whether the lawsuit settled on the basis of the small business agreeing to cease its use of one or more marks, or on the basis of the plaintiff withdrawing or abandoning its trademark-related allegation(s).  Alternatively, relevant information might include whether such lawsuits resulted in a court judgment and the nature of the judgment (such as requiring the small business to cease its use of one or more marks, assessing monetary liability (damages, lost profits, or attorneys' fees) against the small business, requiring the plaintiff to pay the defendant's attorneys' fees, or imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure).

5.  Please describe situations where you have been involved in opposition/cancellation proceedings instituted at the USPTO against small business owners.  Anecdotal information might include, but is not limited to, a description of whether the proceedings settled on the basis of the small business agreeing to abandon its application(s) for one or more marks, or whether the proceedings settled on the basis of the plaintiff withdrawing or abandoning its notice of opposition or cancellation petition.  Alternatively, relevant information might include a description of whether such proceedings resulted in a decision by the USPTO Trademark Trial and Appeal Board ("TTAB") refusing to register/canceling one or more marks owned by the small business, or whether such proceedings resulted in the TTAB imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure.

6.  Do you think trademark "bullies"[1] are currently a problem for trademark owners, and if so, how significant is the problem?

7.  Do you think aggressive litigation tactics are more pervasive in the trademark area than in other areas of the law?

8.  Do you think the USPTO has a responsibility to do something to discourage or prevent trademark bullying?   If yes, what should the USPTO do?

9.  Do you think the U.S. courts have a responsibility to do something to discourage trademark bullies?  If yes, what should the U.S. courts do?

10.  What other U.S. agencies may have a responsibility to do something about the problem?

11.  Do you think Congress has a responsibility to do something to discourage or prevent trademark bullying?   If yes, what should Congress do?

12.  Please provide any other comments you may have.

*****
[1] A trademark "bully" could be described as a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.

Note that this study still contemplates a focus on small businesses and promises to examine whether they are disproportionately affected by trademark owners' enforcement activities. If the USPTO posts any of the comments it receives, I'll try to post updates here for anything of particular interest.

Have We Lawyers Genericized “Bates” Numbers?

We lawyers are enamored with the phrase "Bates numbers" – however, even if "enamored" is too exaggerated, you must agree that lawyers use that phrase a lot, especially when talking about documents produced during litigation. It generally refers to the sequential numbering applied to documents exchanged between parties during a lawsuit. See generally, "Bates numbering" on Wikipedia; see also Masters, "Acrobat, The Solo and Small Firm Litigation Tool," ABA's GP Solo Magazine, June 2010, ¶¶ 10-13.

So, if one party produces documents to another during litigation, every page of those documents probably bears a unique, sequential number to enable consistent and uniform identification of a particular document referenced during the lawsuit. For instance, if Defendant produces a five-page memo bearing a 2005 date, the lawyers for both parties would argue about whether it should be characterized as the "2005 memo" or the "2005 admission that Defendant was negligent." A far less argumentative way to identify that document accurately is by its sequential page number (a.k.a. the "Bates" number). Thus, both parties can agree that the document is D1234-D1239 and then move on to their substantive arguments.

How did these page numbers start being referred to as "Bates" numbers – and why do lawyers still call them that? I don't claim to have all of the answers on this point, but after some digging, here's what I've found:

In the late 1890s, the US Patent Office issued several patents to an individual inventor who later assigned them to the Bates Manufacturing Company for various devices that enabled the sequential numbering of paper. For example, you can find the following patent files through the U.S. Patent & Trademark Office:

• U.S. Patent No. 484,389 for a consecutive-numbering machine, issued in 1892 to Edwin G. Bates
• U.S. Patent No. 676,084 for an automatic numbering machine, issued in 1900 to Edwin G. Bates
• U.S. Patent No. 676,082 for an automatic numbering machine, issued in 1901 to Edwin G. Bates

Note however, that some more recent patents refer to methods of assigning "Bates numbers" in a specific way and were issued to others:

• U.S. Patent No. 5,960,448 issued in 1999 and assigned to Legal Video Services Inc.
• U.S. Patent No. 7,103,602 issued in 2006 and assigned to Kroll Ontrack

Even though the patents have long since expired (patents are not valid forever), the trademarks remain valid, at least in connection with numbering machines.

The Bates Manufacturing Company also applied for – and was issued – registration of its trademark BATES (stylized) claiming a date of first use since 1891 for "numbering machines" in Class 09 (Reg. No. 158,174, renewed in 2002) and in Class 07 (Reg. No. 269,975, renewed in 2010). In fact, you can order one of these devices, which still bears this trademark, from sites like Amazon.com. (Note that Class 09 is also the class in which marks associated with software programs tend to be registered.) The company also owned trademark registrations in BATES for other products like ink pads and stapling supplies.

However, it appears that these trademarks may be of limited value because in undertaking the research for this article, I found many sites marketing software versions of "bates numbering" programs (e.g., http://www.bates-stamp.com/), or offering to sell their services to manage the "bates numbering" process for litigants (e.g., http://lsilegal.com/web/Solutions/TraditionalSvcs.aspx). It appears that the mark "Bates" as applied to automatic numbering systems may have become generic for a system of automatically applying sequential numbers to documents.

In this case, the trademark owner consistently applied its graphic label (which seems to be branded onto a metal plate) to the stampers themselves, by affixing it mechanically. Even today, the stampers seem to bear this label. (See e.g., the image of a stamping machine bearing the mark – click on "specimen" after reaching the Case File – as submitted to the U.S. Trademark Office in 2010 in support of an affidavit of continuing use). But, it apparently did not protect the mark (or the mark has lost its trademark value) in connection with sequential numbering systems or services to apply these types of numbers to documents, either in hard-copy or electronic form.

The lesson to be drawn from this – when you create a unique name for a product (or service) and begin to use it in commerce in connection with that product (or service), plan ahead for the possibility that the technology in which you began using the mark will evolve into something new. At the very least, recognize that as your industry matures, your trademarks may change, even if the products or services themselves remain the same as they were when they were first introduced. While it may be wonderful when your brand name becomes a household (or lawfirm-wide) word, mark owners need to police the use of their marks to keep the their value from being undermined.

Being vigilant means a mark can last forever. History is replete with examples of brand names that were not protected adequately by their owners and now are generic to identify products of that type. For example, Bayer failed to protect the name "aspirin" in the U.S., so anyone can use the mark "aspirin" in connection with their own brand of that medication in the U.S. without violating Bayer's trademark rights. Bayer has successfully protected "ASPIRIN" worldwide (e.g., Canada, Reg. No. NFLD761, where the mark was registered in 1919) and it remains the exclusive property of Bayer.

Awards of Attorney Fees in Copyright Infringement Cases Are Justified for “Vexatious Conduct” by Attorney

In FM Industries, Inc. v. Citicorp Credit Services, Inc., the U.S. Court of Appeals for the Seventh Circuit ("Seventh Circuit") affirmed an award of attorneys' fees to a prevailing defendant in a copyright infringement action, explaining that plaintiff's attorney's conduct was "vexatious," "amateurish and absurd". FM Indus., Inc. v. Citicorp Credit Svcs., Inc., No. 08-3184, 2010 U.S. App. LEXIS 15057 at *4, *13 (7th Cir. July 22, 2010). Written by Chief Judge Easterbrook, this is a colorful opinion that richly deserves reading (as his opinions usually are).

Prevailing parties (whether plaintiffs or defendants) in copyright infringement actions can be awarded attorneys' fees pursuant to 17 U.S.C. § 505 ("the court may also award a reasonable attorney's fee to the prevailing party as part of the costs"). The Seventh Circuit explained that this provision "vindicates the public's interest in the use of intellectual property" and that in the absence of such a provision, prevailing defendants would have "only losses to show for the litigation." FM Indus., 2010 U.S. App. LEXIS 15057 at *12.

In this case, after the district court dismissed all of plaintiff's claims for failure to prosecute, the court ordered plaintiff to pay attorneys' fees of $750,000 to defendant pursuant to 17 U.S.C. § 505. The court also ruled that plaintiff's counsel (Wayne D. Rhine) "vexatiously multiplied the proceedings and is liable for attorneys' fees under 28 U.S.C. § 1927." The court concluded that another lawyer, William T. McGrath ("a copyright specialist who Rhine engaged to assist him") was jointly and severally liable for the attorneys' fees awarded under § 1927. The total award, for which the two attorneys were jointly and severally liable, was $35,000 ("because the district judge deemed only a subset of the filings sanctionable under § 1927). The court made a separate award against Rhine for $2,694 (although the Seventh Circuit did not explain why).

The Seventh Circuit affirmed all of the attorney's fee awards except for one: the joint and several liability award against McGrath, concluding that McGrath's only sanctionable conduct was "making the mistake of agreeing to help a careless lawyer (Rhine) who put his name to frivolous and malicious documents drafted by a self-interested layman [the client], and then not reviewing all of the documents that [the client] prepared for Rhine's signature." Id. at *15.

The Seventh Circuit explained that liability under § 1927 is direct, not vicarious (Id.), and nothing required one attorney to take responsibility for another attorney's filings in the same case. "Section 1927 does not require every lawyer who files an appearance to review and vet every paper filed by every other lawyer. Neither the text of § 1927, nor any decision of which we are aware, imposes on any lawyer a duty to supervise or correct another lawyer's work." Id. at *15-*16. As a result, the Seventh Circuit reversed the district court's award of sanctions against McGrath.  Id. ("We appreciate that the judge was disgusted by the behavior of FM Industries and its counsel, but personal responsibility remains essential to an award of sanctions under § 1927.").

Summarized below is the conduct that the Seventh Circuit cited in its opinion as supporting the various awards of attorneys' fees in this case ("There is more, but extending this recitation would not serve much purpose" Id. at *12.):

Problems with the Complaint

• The client's (plaintiff's) repeated demands for $15 billion in statutory damages (notwithstanding the statute's limitation of $150,000 in statutory damages per copyrighted work (not per use of a copy). Rhine argued that the figure $15 billion never appeared in plaintiff's papers. Labeling these arguments as "quibbles," the Seventh Circuit noted that "A complaint that demands $150,000 (the statutory cap) times 100,000 (the complaint's estimate of the number of times computers copied the software into random access memory) is demanding $15 billion. Even lawyers can multiply two numbers." Id. at *13 (emphasis added). It seems the Seventh Circuit has a sense of humor.
• Plaintiff also sought a separate item of damage of $7.2 million ("$150,000 times 48, the number of outside law firms that used the software" at issue in this case), which was "no more tenable than $15 billion." Id.
• Plaintiff also sought $ 235 million in actual damages – which plaintiff never attempted to prove. Id.

Problems with Litigation Conduct

• The Seventh Circuit called plaintiff's litigation tactics "extortionate" – including the subpoenaing of several law firms who were not parties to the suit, but completely ignoring the requirements of Fed. R. Civ. P. 45 (regulating the manner and extent of discovery to be sought from non-parties), and thus causing the recipients to engage in expensive efforts to respond to improperly served subpoenas. On top of that, plaintiff failed to serve proper subpoenas after being informed of the deficiencies. The Seventh Circuit labeled these efforts as "extortionate discovery, the kind a litigant undertakes when it hopes to be paid to go away." Id. at *12.
• Filing motions for sanctions against defendants when they missed one discovery deadline, by a single day, seeking sanctions in the amount of $ 815 million. "The defendants and district judge were not amused, but defendants had to devote substantial time (and thus expense) to responding, because if the judge were prepared to award even a tiny fraction of the request the outlay would be considerable." Id. at *10.
• Attempting to "force" the current and former chairs of Citigroup's board of directors to appear for deposition "even though they had nothing to do with Citigroup's use of [the software at issue], is further evidence that FM Industries and its lawyers were engaged in the abuse of legal process.

One of the particularly notable points the Seventh Circuit made was that Rhine had only recently returned to private practice (in 2006) after 24 years as a judge of the Circuit Court of Cook County, Illinois (which I understand to be the trial level in Illinois state court). With regard to his handling of this case, the Seventh Circuit admonished, "The problem here, and in much else that went wrong with this case, is that Rhine allowed Friedman [the client], a non-lawyer, to draft many of the papers that were filed over Rhine's name. Rhine insists that he did not simply rent out his law license but instead reviewed and edited the documents before filing them. We accept that representation, but it also means that Rhine, who resumed legal practice in 2006 after 24 years as a judge . . . bears the responsibility for amateurish and absurd filings." Id. at *4.

The take away? If you permit your clients to prepare the first draft of any pleading – especially where they may be inspired to vent their spleens on their opponents – be sure to really edit the result to ensure that what is ultimately filed is professional, meritorious, respectful and complies with the applicable rules of civil procedure. Ultimately, the attorney must take full responsibility for the accuracy and propriety of any filing that bears his or her signature. Such responsibility cannot be abdicated to the client, even though the client may ultimately have to pay the sanctions.

ISPs Are Not Required to Search Independently for Potential Infringement

Recently, the Southern District of New York confirmed that a copyright owner bears the sole responsibility for searching the marketplace for evidence of piracy or infringement of its works. In Viacom Int'l v. YouTube, Inc., the court explained that as long as an Internet Service Provider ("ISP") such as YouTube complied with the notice and take down requirements of the Copyright Act (specifically the Digital Millennium Copyright Act, or "DMCA"), it could not be held liable for failing to proactively search for content on its site that might infringe copyrights owned by others. Viacom Int'l v. YouTube, Inc., No. 07 Civ. 2103, 2010 U.S. Dist. LEXIS 62829 (S.D.N.Y. June 23, 2010) (available on Justia.com).

Both parties moved for summary judgment. YouTube argued that the safe harbor of 17 U.S.C. § 512(c) protected it from liability for others' infringing acts. Id. at *8-*9. In turn, Viacom argued that YouTube was liable for intentional infringement of thousands of Viacom's copyrighted works and was not protected by the DMCA's safe harbor rules because 1) it had actual knowledge of the infringement and failed to stop it, 2) YouTube benefited financially from the infringement because of the increased traffic to YouTube's site; and 3) the safe harbor protected those ISPs that only provided storage at the direction of the user. Id.

The court was persuaded that the safe harbor applied and found that the phrases "actual knowledge that the material or an activity using the material on the system or network is infringing" and "facts or circumstances from which infringing activity is apparent" as used in § 512(c) meant "actual or constructive knowledge of specific and identifiable infringements of individual items" and not "general awareness that there are infringements (here, claimed to be widespread and common)." Id. at *15-*16. Ultimately, the court granted YouTube's motion for summary judgment on the basis of the § 512(c) safe harbor and denied all of Viacom's claims that YouTube was liable for direct and secondary copyright infringement. Id. at *45.

In this case, Viacom collected approximately 100,000 videos from YouTube that it claimed to be infringing and sent a single "mass take-down notice" listing each one. Id. at *30-*31. By the following business day, YouTube had removed "nearly all" of the videos identified in the notice. Id. at *31. YouTube's prompt response was apparently key to the court's holding. Id. at *37-*38. (YouTube's current copyright policy (which relies on the § 512(c) safe harbor) can be found here.) Perhaps the court was also persuaded by the potentially daunting task facing an ISP that had "over 24 hours of new video-viewing time . . . uploaded to the YouTube website every minute" if it were required to search proactively for content that potentially infringed others' rights. Id. at *14.

The court evaluated the legislative history of the DMCA and focused on its articulation of a "red-flag" test: "[A] service provider need not monitor its service or affirmatively seek facts indicating infringing activity (except to the extent consistent with a standard technical measure complying with subsection (h)), in order to claim this limitation on liability (or, indeed any other limitation provided by the legislation). However, if the service provider becomes aware of a 'red flag' from which infringing activity is apparent, it will lose the limitation of liability if it takes no action." Id. at *20 (quoting Senate Judiciary Comm. Report, S. Rep. No. 105-190 at 44-45 (1998); House Comm. on Commerce Report, H.R. Rep. No. 105-551, pt. 2, at 53-54 (1998)).

The legislative history further clarified that "a service provider conducting a legitimate business would not be considered to receive a financial benefit directly attributable to the infringing activity' where the infringer makes the same kind of payment as non-infringing users of the provider's service." Id. at *22 (quoting Senate Report at 44-45; House Rep. at 53-54). As a result, the court in the Viacom v. YouTube case concluded that any financial benefit YouTube received did not disqualify it from the safe harbor provisions because even those benefits must be tied to item-specific knowledge. Id. at *40-*41.

Congress similarly provided that the failure to recognize and act on "red flags" would preclude the application of the safe harbor. Id. at *25 ("a service provider would have no obligation to seek out copyright infringement, but it would not qualify for the safe harbor if it had turned a blind eye to 'red flags' of obvious infringement."). Specifically, the ISP is not required to evaluate or reach any conclusion about the potential for infringement of someone else's works. Id. at *26.

Ultimately, the court held that "[m]ere knowledge of prevalence of such activity in general is not enough" to justify imposing liability for indirect copyright infringement on an ISP. Id. at *29. Particularly, imposing liability on the ISP based solely on "knowledge of a generalized practice of infringement in the industry, or of a proclivity of users to post infringing materials . . . would contravene the structure and operation of the DMCA."

The court also rejected Viacom's argument that the take down list (identifying approximately 100,000 claimed infringing videos) was merely "representative" of a larger number of infringing videos to be found on YouTube, and that the take down notice required YouTube to search for other similar works and remove them in order for the safe harbor to apply. Id. at *44-*45. The court opined that "This 'representative list' reference would eviscerate the required specificity of notice . . . if it were construed to mean a merely generic description ("all works by Gershwin") without also giving the works' locations at the site, and would put the provider to the factual search forbidden by § 512(m)." Id. at *44. Instead, take down notices must provide specific locations to the infringing works, whether by providing the precise URL (uniform resource locator, or website address), in order to permit the ISP to react appropriately to the notice and remove the infringing work.

The upshot is this: copyright owners still bear the burden to police the market to find instances of infringement, and cannot abdicate this duty to any of the various ISPs that host "user generated content."

Statutory Language:

The relevant DMCA safe harbor rules that the court considered are contained in 17 U.S.C. § 512(c), reprinted below. There are several other safe harbors that the court did not analyze that can also be found in § 512. They are not reprinted here in the interest of space.

17 U.S.C. § 512(c) Information residing on systems or networks at direction of users.
(1) In general. A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider--
     (A) (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;
          (ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
          (iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
     (B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
     (C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

(2) Designated agent. The limitations on liability established in this subsection apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by making available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office, substantially the following information:
     (A) the name, address, phone number, and electronic mail address of the agent.
     (B) other contact information which the Register of Copyrights may deem appropriate.
The Register of Copyrights shall maintain a current directory of agents available to the public for inspection, including through the Internet, in both electronic and hard copy formats, and may require payment of a fee by service providers to cover the costs of maintaining the directory.

(3) Elements of notification.
     (A) To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:
          (i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
          (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
          (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.
          (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
          (v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.
          (vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
     (B) (i) Subject to clause (ii), a notification from a copyright owner or from a person authorized to act on behalf of the copyright owner that fails to comply substantially with the provisions of subparagraph (A) shall not be considered under paragraph (1)(A) in determining whether a service provider has actual knowledge or is aware of facts or circumstances from which infringing activity is apparent.
          (ii) In a case in which the notification that is provided to the service provider's designated agent fails to comply substantially with all the provisions of subparagraph (A) but substantially complies with clauses (ii), (iii), and (iv) of subparagraph (A), clause (i) of this subparagraph applies only if the service provider promptly attempts to contact the person making the notification or takes other reasonable steps to assist in the receipt of notification that substantially complies with all the provisions of subparagraph (A).

17 U.S.C. § 512(c) (emphasis added).

Supreme Court Issues Opinion in Bilski v. Kappos Case

Patent law is beyond my expertise, but even I am aware that the Supreme Court's June 28 decision relating to the patentability of certain business methods is an important development that should be acknowledged here. However, I defer to my colleague Clark Jablon's summary of the case and its impact on the patent community, which can be found on my firm's website. I encourage you to read it and contact him if you have any questions or concerns about this area of patent law.

IPEC Releases Joint Strategic Plan on Intellectual Property Enforcement

Last week (on June 22), the Intellectual Property Enforcement Coordinator (IPEC) Victoria Espinel published the Joint Strategic Plan mandated by the PRO-IP Act. (For prior posts about the IPEC's duties and responsibilities, see my June 1, 2010 post.) A full copy of the Plan can be found on the IPEC's site and remarks about the program can be found on the White House's Blog, (IPEC's announcement of the Plan's availability and some general remarks about the program).
This report outlines 33 "enforcement strategy action items", divided into six categories: 1) leading by example; 2) increasing transparency; 3) ensuring efficiency and coordination; 4) enforcing our rights internationally; 5) securing our supply chain; and 6) building a data-driven government. Listed below are just some of the highlights – not a full list or explanation of each of the 33 action items.

• A "government-wide working group" will be established to determine how best to ensure that the U.S. government does not obtain counterfeit parts in connection with its government contracts. This group would be required to submit a formal report within 180 days after its first meeting that details its findings and issues remaining for determination. (Page 7)
• The U.S. government "will review its practices and policies" to ensure that it is not purchasing pirated software so that it can "set an example to our trading partners." In this regard, the IPEC will propose legislative amendments necessary to implement a 1998 Executive Order. (Page 7)
• Enhance communications with rightsholders and victims of IP infringement/crimes/piracy, to inform them about how to report IP crime, which types of cases are generally accepted by the U.S. government for prosecution, and the types of information victims could provide to support an enforcement action. (Page 8-9)
• The U.S. Trade Representative is currently responsible – through its Special 301 process – for providing a Notorious Markets list (defined in the Plan as "a combination of examples of Internet and physical markets that have been the subject of enforcement action or that may merit further investigation for possible intellectual property infringements.") (Page 9)
• The U.S. government will create a database (or combination of databases that function as a unitary whole) that contains information about IP cases, case-specific information about pending investigations. The database "need not" include sensitive IP information such as national security information, trade secrets or grand jury investigation that cannot be disclosed under the Federal Rules of Criminal Procedure (Rule 6(e)). (Page 11)
• The U.S. Customs and Border Protection will provide samples of allegedly infringing products to rightsholders for testing, provided that a bond is posted for each sample "to cover the potential loss or damage to the sample if the products are ultimately found to be non-infringing." In this Plan, the IPEC described a streamlined bond option that allows the posting of a single bond to cover multiple samples released by CBP. (Page 17).
• The U.S. government broadly encourages cooperation in the private sector to police infringing activity and to enforce existing IP rights: "the Administration encourages actions by the private sector to effectively address repeated acts of infringement, while preserving the norms of legitimate competition, free speech, fair process and the privacy of users." (Page 17)
• Google, Yahoo and Bing were lauded specifically for their development of "voluntary protocols to prevent the sale of sponsored results for unlawful businesses selling counterfeit medications on-line." Their list of so-called "unlawful businesses" is based, in part, on verification by the National Association of Boards of Pharmacy's Verified Internet Pharmacy Practice Sites and/or certifications from the original manufacturers of legitimate and FDA-approved pharmaceuticals. (Page 18) – See also Pharmaceutical Security Institute (PSI) and the Partnership for Safe Medicines. (Page 53).
• The IPEC will initiate and coordinate a process of reviewing existing IP laws and their penalties (whether civil or criminal) to determine whether their reach is far enough, or whether there are modifications required to "enhance enforcement efforts." (Page 19).

The Plan also summarizes various Federal Agencies' enforcement activities in 2010 (to date) (Page 35).
Please comment below about other portions of the Plan if there are other points that should not be overlooked here.

New Design

As you can see, the design of this blog has changed, mostly so that more of the screen is useable. If you have comments or concerns about the new layout, or find that any part of it is not user-friendly, please comment below so that I can try to address it.

Thanks!

Summary of IPEC’s Responsibilities

On October 13, 2008, President Bush signed into law the Prioritizing Resources and Organization for Intellectual Property Act of 2008 ("PRO-IP Act of 2008"). Pub. L. No. 110-403, 122 Stat. 4256 (2008). While the Act principally targets copyright issues, it also increases civil penalties for trademark counterfeiting (including for direct as well as for certain types of contributory infringement), enhances criminal penalties for trafficking in counterfeit goods bearing others' trademarks and provides additional anti-piracy tools at the executive branch level in the form of an Intellectual Property Enforcement Coordinator (IPEC). It took a full year before someone was appointed to fill the IPEC role (see my October 2009 post describing Ms. Victoria Espinel, the current IPEC).

Since Ms. Espinel's appointment, however, a number of projects have been assigned to her office. The purpose of this blog post is to summarize briefly those projects and provide links for more information. I also commend to you an article published on CNET shortly after the PRO-IP Act was enacted by Congress (but before the President signed it into law) that provides a basic outline of the position.

As Assigned by the PRO-IP Act

From the outset, the IPEC was tasked with coordinating the development and implementation of a Joint Strategic Plan against counterfeiting and infringement and to facilitate the issuance of policy guidance to other U.S. government agencies and departments relating to domestic and international intellectual property enforcement programs. Pub. L. No. 110-403 § 301. This position appears to be directed to correct a flaw in the "lack of permanent and effective leadership in coordinating" IP enforcement efforts. Prioritizing Resources and Organization for Intellectual Property Act of 2008, House Report 110-617, May 5, 2008 ("House Report"), at 26. As enacted, however, this position does not have any independent prosecutorial or other law enforcement authority, and appears to only have "advisory" duties. Pub. L. No. 110-403
§ 301(b)(2).

Among the IPEC's initial advisory responsibilities were the following:

1) chair an "interagency intellectual property enforcement advisory committee";

2) coordinate the Joint Strategic Plan (the "Plan");

3) assist, when requested, in the implementation of the Plan;

4) facilitate the issuance of policy guidance on "basic issues of policy and interpretation, to the extent necessary to assure the coordination of intellectual property enforcement policy and consistency with other law;"

5) report to the President and to Congress about IP enforcement programs;

6) report to Congress about the implementation of the Plan; and

7) "carry out such other functions as the President may direct." Id. § 301(b)(1).

So, where is this Joint Strategic Plan? On February 23, 2010, the IPEC requested public comment about the proposed content of a Joint Strategic Plan. Coordination and Strategic Planning of the Federal Effort Against Intellectual Property Infringement: Request of the Intellectual Property Enforcement Coordinator for Public Comments Regarding the Joint Strategic Plan, 75 Fed. Reg. 8137 (Feb. 23, 2010). Comments were due by March 24, 2010, and can be found on the IPEC's web site.

As Assigned by the Trademark Technical and Conforming Amendment Act of 2010

On January 26, 2010, Representatives John Conyers, Jr. (MI) and Lamar Smith (TX) co-sponsored a bill (H.R. 4515) intended to "make certain technical and conforming amendments to the Lanham Act." Similarly, on January 28, 2010, Senators Patrick Leahy (VT) and Jeff Sessions (AL) co-sponsored an identical bill in the Senate (S. 2968) which was passed without amendment by Unanimous Consent the same day. These bills have now been enacted. See Pub. L. No. 111-146 (enacted Mar. 17, 2010).

In addition, the Act requires the IPEC to conduct a one-year study and prepare a substantive report on two subjects: 1) "the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner;" and 2) "the best use of Federal Government services to protect trademarks and prevent counterfeiting." The IPEC's report would be due within one year after the enactment of the Bill, or no later than March 17, 2011.

For More Information

The Official Site for the IPEC's Office is http://www.whitehouse.gov/omb/intellectualproperty/. Should you wish to contact the IPEC, the official e-mail address is mailto:intellectualproperty@omb.eop.gov?subject=Contact%20IPEC.

Reassignment of Judge for Google Book Settlement?

On April 22, 2010, the U.S. Senate unanimously confirmed The Honorable Denny Chin (currently sitting in the U.S. District Court for the Southern District of New York) to fill a vacancy on the U.S. Court of Appeals for the Second Circuit. Below is the summary of the legislative action related to his nomination and confirmation:

Nomination: PN1O6O-111

Date Received: October 06, 2009 (111th Congress)
Nominee: Denny Chin, of New York, to be United States Circuit Judge for the Second Circuit, vice Robert D. Sack, retired.
Referred to: Senate Judiciary
Reported by: Senate Judiciary

Legislative Actions
Floor Action: October 06, 2009 - Received in the Senate and referred to the Committee on the Judiciary.
Committee Action: November 18, 2009 - Committee on the Judiciary. Hearings held.
Committee Action: December 10, 2009 - Committee on the Judiciary. Ordered to be reported favorably.
Floor Action: December 10, 2009 - Reported by Senator Leahy, Committee on the Judiciary, without printed report.
Floor Action: December 10, 2009 - Placed on Senate Executive Calendar. Calendar No. 607.
Floor Action: April 15, 2010 - By unanimous consent agreement, the Senate proceed to executive session to consider nomination.
Floor Action: April 15, 2010 - Cloture motion presented In Senate.
Floor Action: April 20, 2010 - Cloture motion withdrawn by unanimous consent In Senate.
Floor Action: April 20, 2010 - By unanimous consent agreement, debate and vote 4-20-10.
Floor Action: April 22, 2010 - Considered by Senate pursuant to an order of April 20, 1010.
Floor Action: April 22, 2010 - By unanimous consent agreement, vote at 12 noon.
Floor Action: April 22, 2010 - Confirmed by the Senate by Yea-Nay Vote. 98 - 0. Record vote Number: 123.

Organization: The Judiciary
Control Number: 111PN0106000

Source: THOMAS (Library of Congress) (Screen clipping taken: 5/7/2010, 3:44 PM)

(Many times, links to the URL for the search results in the Library of Congress's Thomas site end up not working, so I copied the text and provide it above.) The Congressional Record shows a report of the confirmation here (bottom right of the page).

The Wall Street Journal published a brief bio of Judge Chin when he was nominated in the Fall of 2009, noting that he is best known for "sentencing convicted Ponzi-scheme operator Bernard Madoff to 150 years in prison" earlier in 2009. See also, Benjamin Weiser, "Senate Confirms Federal District Judge for Appeals Court," The New York Times, City Room (Apr. 22, 2010).

This confirmation is particularly interesting because Judge Chin currently presides over the Google Book Settlement case (Author's Guild v. Google), which I've blogged about in the past. (Prior blog posts can be found archived together.) I have not found any information about when Judge Chin's term begins on the Second Circuit, but note that he is currently listed as an active judge on the Second Circuit, effective 4/23/2010.

It remains to be seen who will be assigned to the Google Book Settlement once Judge Chin formally takes up his position as a judge of the Second Circuit, but the change will undoubtedly prove to be very interesting and may have a noticeable impact on the proceedings.

New Law in Utah Prohibits Certain Internet Crimes

On March 26, 2010, the governor of Utah signed into law the Utah E-Commerce Integrity Act (S.B. 26), which prohibits certain Internet-related conduct, including phishing, pharming, spyware and cybersquatting that involves "a computer, software, or an advertisement located in, sent to, or displayed in" Utah. (Legislative history of the bill, and alternate text versions can be found here.)

Essentially, the bill provides the following:

• Prohibits the facilitation of "certain types of fraud and injury through use of electronic communications;"
  
• "Allows for the removal of domain names and online content by an Internet registrar or [ISP] under certain circumstances;"
  
• "Forbids the use of various types of software, commonly called spyware, if used for certain purposes;"
  
• "Provides exceptions from spyware provisions for various types of communications and interactions, including authorized diagnostics;"
  
• "Prohibits the registration of domain names under certain circumstances, commonly referred to as cybersquatting;" and
  
• "Provides civil penalties for a violation of cybersquatting provisions".

It also prohibits the passage of contrary laws by subdivisions of the state and makes other technical changes.

Key among the provisions are definitions of what activities constitute phishing, pharming, spyware and cybersquatting. Notably, the statute only applies to activities that occur after July 1, 2010 (although for cybersquatting and infringement, the effective date is May 11, 2010).

Any ISP that is "adversely affected by the violation"; "an owner of a web page, computer server or trademark that is used without authorization by the violation;" or 3) the attorney general may file suit to recover damages for phishing or pharming activities. Either actual damages or "a civil penalty not to exceed $150,000" per violation can be awarded.

In the case of spyware, not only are the ISP, attorney general and trademark owner whose mark was used to deceive others able to file suit, but the owner of "a software company that expends resources in good faith assisting authorized users harmed by a violation" of this provision can also sue. The damages awarded in these instances can be actual and liquidated damages of between $1,000 and $1,00,000 as well as attorneys fees and costs. There are certain exceptions to the damages thresholds, depending on the circumstances.

The cybersquatting provisions are structured similarly to the AntiCybersquatting Consumer Protection Act (15 USC § 1125(d)), and permit the transfer of an affected domain name in the case of a successful judgment against the defendant, but also differ in certain ways from the federal provisions. Specifically, they allow personal names to be included in the scope of protection under the act and exempt domain name registrars from legal action except in cases of bad faith or reckless disregard. There are other differences as well, but these were the most obvious.

Top 10 Ways to Preserve Your Trademarks

On Friday (April 16), during the Pennsylvania Bar Institute's Fourth Annual IP Institute, I delivered a presentation on Top 10 Ways to Preserve Your Trademark, co-presented with Rex A. Donnelly of RatnerPrestia in its Wilmington, DE office.

I will be uploading both the article and PowerPoint presentation that we co-developed to my firm's web site as quickly as feasible, and you are welcome to review them there. In sum, however, the topics we covered were:

1. Choose a Mark You Can Protect
   
2. Register Your Mark
   
3. Be Truthful with the Trademark Office
   
4. Keep Using Your Mark
   
5. Maintain Your Registration
   
6. Update Your Protection
   
7. Use Your Mark Correctly
   
8. Make Sure Others Use Your Mark Correctly
   
9. Police for Infringement and Dilution
   
10. License Your Mark Wisely
    

(I had responsibility for topics 3,4,5,7 and 9 – and wrote the sections for topics 3,4,6,7 and 9 in the article (Mr. Donnelly and I swapped topics 5 and 6 the morning of our presentation)). I also attended many of the presentations by my colleagues, and was particularly impressed with the "Mock" hearings (Mock Markman Hearing, Mock Preliminary Injunction Argument, Mock TTAB Cancellation Hearing), which were all presided over by judges currently sitting on the bench. I hope the course planners expand those sessions to additional topics next year.

I welcome your comments.

UPDATE on 5/7/10: The published article and the accompanying slides are now available on my firm's web site. The direct links are here: "Top 10 Ways to Preserve Your Trademark," Pennsylvania Bar Institute's Fourth Annual IP Institute (April 16, 2010), co-written with Rex A. Donnelly of RatnerPrestia – (with presentation slides).

Fraud on the PTO – A Trademark Perspective

Last Friday (April 9), during the American Bar Association Intellectual Property Law Section conference, I delivered a presentation on Trademark Prosecution Ethics, and in particular, the history and current status of the fraud in the procurement theory used to cancel registrations (or oppose applications) when material misrepresentations have been made to the Patent & Trademark Office during the application or renewal process.

I plan to upload both my article and my PowerPoint presentation to my firm's web site as quickly as feasible, and you are welcome to review them there. In sum, however, my conclusions were as follows:

"While the test for determining that an applicant's or registrant's conduct in filing an application or maintaining trademark registrations was fraudulent has become more stringent, applicants, registrants and their counsel still face some pitfalls in the process. Indeed, although certain amendments of an inaccurate filing may be accepted (provided that no challenge to the validity of the application or registration has yet been filed), it is clear that both the TTAB and the Federal Circuit discourage carelessness in preparing these filings.

Accordingly, applicants and registrants are strongly encouraged to do at least the following to avoid increasing the risk of claims or counterclaims of fraud on the USPTO, and thus, loss of a pending application or a particular registration:

• Conduct appropriate due diligence to ensure that the marks sought to be registered (or renewed) qualify as "in use" or validly subject to the "intent to use" process;
  
• Ensure that the intended signatory for the declaration has the appropriate level of personal knowledge to support the allegations of use or intent to use, exclusive right to use the mark and other averments of fact;
  
• Ensure that any licensees upon whose use the applicant/registrant will rely to maintain the registration properly use the mark in commerce and provide sufficient evidence to the applicant/registrant to support the maintenance filing; and
  
• Undertake proper due diligence before filing an Opposition or Cancellation proceeding to ensure that the trademark or service mark forming the basis of a challenge to another application or registration does not have any exposure to a counterclaim for fraud on the USPTO and thus at risk for cancellation during the pendency of the proceeding.
  

Note that undertaking these preparations cannot completely moot claims of fraud on the USPTO, but they lend support and reasonableness to a potential response that no "intent to deceive" can be demonstrated by clear and convincing evidence. Finally, this entire line of cases confirms that the USPTO, TTAB and Federal Circuit Court of Appeals have strong interests in ensuring that the trademark Register be kept current and accurate, and demonstrates a disfavor of carelessly filed and unreliable factual statements about the use or non-use of trademarks and services marks in active use in U.S. commerce.

I welcome your comments.

UPDATE on 4/20/10: The slides from the presentation can be found on the ABA's IPL Section site.

UPDATE on 5/7/10: The published article and the accompanying slides are now available on my firm's web site. The direct links are here: "Ethics in Trademark Application Prosecution: Alleging 'Fraud in the PTO' After In re Bose," ABA Intellectual Property Law Section 25th Annual Conference (April 9, 2010) – (with presentation slides).

SDNY Orders TAVERN ON THE GREEN Service Mark Cancelled for Fraud

In a recent decision, the United States District Court for the Southern District of New York granted the City of New York's motion for summary judgment, thus cancelling the City's former licensee's service mark registration for the mark TAVERN ON THE GREEN in connection with restaurant services on the ground that the registration was fraudulently procured. City of New York v. Tavern on the Green, L.P. et al., Nos. 09 Civ. 9224, 09 Civ. 9254, slip op. at 3 (S.D.N.Y. Mar. 10, 2010) (ECF Document No. 40). Access to a valid PACER account may be required to access the court filings cited in this blog entry. Alternatively, see Justia's docket report – sometimes they make public filings available on their site.

Case Background

In 1934, the City of New York opened a restaurant in Central Park called "Tavern on the Green" and hired various vendors over time to run the restaurant pursuant to operating agreements. Id. at 4. The restaurant closed periodically for renovation and "improvements," and the City paid substantial portions of the renovation costs. Id. For instance, in 1956, the restaurant closed for a $400,000 renovation project, which enabled the restaurant to expand its inside seating capacity from 300 to 720 and for which the City covered approximately 80% of the cost. Id.

In 1973, the City entered into a license agreement with Warner LeRoy (and thereafter Tavern on the Green, L.P. to whom LeRoy's interest in the agreement was transferred) to operate "Tavern on the Green" as a restaurant and cabaret. Id. at 5. Several key terms in this first license agreement between these parties were: 1) the licensee's ability to change the name of the restaurant upon written approval from the City's representative; 2) the City's ability to approve (or reject) any manager that the licensee hired to run the restaurant; 3) the requirement that the licensee hire "a sufficient number of trained attendants" (presumably waiters/servers) and 4) the requirement for the attendants to wear "a City-approved uniform." Id. at 5-6. The parties also agreed that certain renovations were to be completed before the defendant could open the restaurant for business. Id. at 5. The agreement was renewed in 1976 and the restaurant re-opened for business 1978. Id. & n.2.

In 1985, the parties re-negotiated the terms of their agreement to add the following new provisions: 1) that the City could regulate the times and manner of operation; 2) that the City could inspect the facility at any time; 3) that City approval was required for all signs and solicitations for business; and 4) that the food served by LeRoy would be "pure and of good quality." Id. at 7. Removed from this revised agreement was LeRoy's ability to change the name of the restaurant, even if he obtained written approval from the City. Id. at 6. After this agreement was executed, the City exercised its rights to govern the hours of operation and the types of events the occurred on the premises several times. Id. at 7.

LeRoy's Service Mark Application

In 1978, LeRoy filed a trademark application for the mark TAVERN ON THE GREEN in connection with restaurant services on behalf of a joint venture that had been formed to operate the restaurant ("the joint venture") and claimed a date of first use of August 31, 1976, which corresponded to the date on which the restaurant was re-opened after the 1973 renovations were completed. Id. As part of his application package, he signed a declaration that confirmed that the joint venture had the right to use this mark and "to the best of his knowledge and belief, no other person, firm, corporation or association has the right to use said mark in commerce, either in the identical form or in such near resemblance thereto as to be likely . . . to cause confusion, to cause mistake, or to deceive. . . ." Id. at 8. However, LeRoy did not disclose the 1973 agreement to the USPTO, nor did he inform the City of New York that he had applied for registration of this mark. Id. The application was ultimately approved and registered in 1981 (Reg. No. 1,154,270) without a single opposition. Id.

In 1986, the joint venture filed a Section 15 affidavit, claiming incontestability of the mark based on continued use throughout the preceding five years. The USPTO acknowledged that the affidavit had been filed, and the record was updated to reflect the joint venture's claim of incontestability pursuant to 15 U.S.C. § 1065. (Once a registrant can demonstrate incontestability of its mark, third parties will be limited in the grounds that they can allege in a petition to cancel the registration.) The City apparently did not become aware of the registration until 2006, and immediately thereafter requested that LeRoy and the joint venture assign all rights in the mark to the City. Id. at 8. LeRoy declined.

In 2007, the joint venture filed a second application for registration of the mark TAVERN ON THE GREEN in connection with "cooking oils, salad dressings and dipping oils." Although the City requested two extensions of time to oppose this application, registration ultimately issued in September 2008 unopposed (Reg. No. 3,494,658).

The Dispute at Bar

Neither LeRoy nor his estate is individually named as a defendant in this case, but both of his companies are. (Mr. LeRoy apparently passed away in 2001, but his rights in the mark passed to the companies.) The companies (collectively referred to as "Debtors") sought protection of the bankruptcy court under Section 11 in September 2009, and thereafter initiated an adversary proceeding to obtain a declaration of their exclusive right to use the mark for restaurant services, and to prevent the City from using the name for itself. Id. at 10. In November 2009, the City filed a motion to withdraw the bankruptcy reference, which motion the U.S. District Court for the Southern District of New York granted on December 3, 2009. (ECF Document No. 9).

Both parties filed cross motions for summary judgment. The Debtors sought a declaration that they had the exclusive right to use the mark in connection with restaurant services, and an injunction against the City's continued use of the mark in commerce. City of New York v. Tavern on the Green, L.P. et al., Nos. 09 Civ. 9224, 09 Civ. 9254, slip op. at 3 (ECF Document No. 40). For its part, the City's motion for summary judgment sought: 1) a declaration of its prior rights in the mark under New York state law; 2) cancellation of Debtors' registration based on a "fraud in the procurement" theory; and 3) cancellation of the Debtors' registration for use of the mark in connection with the various oils. Id.

Cancellation of LeRoy's Registration in TAVERN ON THE GREEN (Restaurant Services)

Ultimately, the Court granted the City's motion for summary judgment with respect to the TAVERN ON THE GREEN registration in connection with restaurant services, and ordered that the registration be cancelled based on LeRoy's commission of fraud in procuring the registration without disclosing the City's prior rights or the limitations on LeRoy's own rights as a result of the license agreement. As to the second registration, in connection with various oils, the Court concluded that evidence was not presented sufficient to justify cancellation of this registration, and determined that the motion for summary judgment on this point was "premature."

In reaching its decision, the Court evaluated the City's claim of a prior right to the mark TAVERN ON THE GREEN in connection with restaurant services based on New York common law of unfair competition. It explained that "in order to establish a protectable right to a trade name under New York law, the City must proffer undisputed facts that show that the defendants are unfairly attempting to exploit the efforts of another to create goodwill in that trade name." Id. at 11. The Court concluded that the City indeed had prior rights – predating those of the registrant by 35 years – such that the mark, "'Tavern on the Green' was closely associated in the public mind with a building owned by the City and located in New York's Central Park." Id. at 13, 14.

The Debtors argued that the repeated closures of the facility for renovation and improvement – particularly the closure in 1973 that coincided with the awarding of the concession lease to LeRoy – constituted a break in the City's use of the mark, such that it should not be able to claim continuous use since 1934. Id. at 15. The Court disagreed, noting that "[r]enovations usually signify an intention to continue operations, which the 1973 Agreement makes clear by contemplating renovations in the transition from the prior licensee to the Debtors." Id. Thus, the Debtor's claim to "incontestibilty" as a result of its 1985 filing with the USPTO was not valid as against the City – because of the City's prior rights. Id. at 16.

The Court also considered the City's claim that LeRoy had procured the registration fraudulently when he applied in 1978 for registration of the service mark. After finding that the failure to disclose the license agreement demonstrating that LeRoy's rights in the mark were limited was a material fact, the Court concluded that "the deliberate omission in a trademark application of information regarding another's right to use the mark applied for is a material omission justifying cancellation of the mark." Important to the Court's consideration was its expectation that trademark applicants owed "uncompromising candor" to the USTPO when they file their applications. Id.

Court's Dismissal of Debtor's Laches Defense

In addition to denying the City's claim for prior rights in the trademark, the Debtors raised a defense of laches, claiming that the City had waited too long to file its claim for cancellation. In dismissing the Debtor's argument rather summarily, the Court confirmed that the Lanham Act clearly provided for cancellation at any time when the claimant can demonstrate fraudulent procurement. Id. at 20; see 15 U.S.C. § 1064.

Impact on Other Decisions

This opinion serves as a reminder that the declarations required to be signed in connection with trademark applications need to be reviewed carefully before applicants sign them. Not only must an applicant confirm that the descriptions of goods or services associated with the application are accurate (see Medinol and Bose lines of cases, covered in prior blog entries here), but also must confirm that no one else has the right to use the mark in connection with the goods or services identified in the application. Failure to read carefully and affirm the accuracy of the statements made in the application can result in a loss of registration or in a determination that another entity has more senior rights that may override any investment (no matter how significant) the applicant has made in the mark.

Welcome Back

As reported in my prior blog entry, I have been involved in writing two fairly comprehensive articles on recent developments in trademark law. Both articles have now been submitted and I am getting back on schedule with posting new articles on Privacy and IP Law.

The articles will ultimately be published as part of course materials in connection with the following conferences: 1) the American Bar Association's 25th Annual Intellectual Property Law Section Meeting in Washington, D.C. (detailed schedule of events is here); and 2) the Pennsylvania Bar Institute's Fourth Annual Intellectual Property Institute in Philadelphia (faculty list is here). The links provided here will access to the registration forms for the meetings, as well as brief summaries/listings of the expected presentations.

If you plan to attend these events, please submit a comment below so that I can know to look for you.

Temporary Hiatus

Dear Readers:

Over the next few weeks, I will be limited in what I can publish to this blog, but the interruption will only be temporary. I am in the process of writing two articles relating to trademark practice, which are both due at the end of February.

The first (with a working title of “Intent to Defraud: The New Standard for Finding Fraud on the PTO in a Trademark Prosecution Practice”) will be presented during the American Bar Association’s Intellectual Property Law Section Meeting in April, within a larger presentation about ethics in trademark and patent prosecution practices. My co-presenter will focus on the patent prosecution aspects of this analysis. The papers are due, however, in four weeks.

The second (with a working title of “Top 10 Ways to Preserve Your Trademark”) will be prepared jointly with my co-presenter during the Pennsylvania Bar Institute’s 4th Annual IP Institute, also in April. Again, the papers are due at the end of February.

As much as possible, I will try to post about relevant developments in these areas during the coming weeks. If I am silent, however, be sure to check back at least at the end of February, when I should be back to a more active posting schedule.

Best,
Christina Frangiosa
Privacy and IP Law Blog

Netflix Sued for Alleged Privacy Violations

Part 2 of the “Two New Privacy Lawsuits Filed” Topic

Also on December 17, 2009, (see prior post about Facebook complaint), a Jane Doe plaintiff and three other individual plaintiffs filed a Class Action Complaint in the Northern District of California against Netflix and John Doe defendants 1-50, alleging violations of the Video Privacy Protection Act (18 U.S.C. § 2710), various California consumer protection statutes and common law claims for unjust enrichment and public disclosure of private facts in connection with Netflix’s “Prize” offered to the computer developer who succeeded in creating computer algorithms that improve Netflix’s recommendations tool by the largest margin. Valdez-Marquez et al. v. Netflix, Inc., et al., Case No. C 09-05903 (N.D. Cal.); see also WSJ Law Blog, “Did Netflix Violate Subscribers’ Privacy? Lawsuit Says Yes,” posted Dec. 18, 2009.

As the company’s web site explained, “The Netflix Prize sought to substantially improve the accuracy of predictions about how much someone is going to enjoy a movie based on their movie preferences.” Netflix Prize (last visited Jan. 14, 2010). The best algorithm would win the $1 million grand prize, and indeed was awarded on September 21, 2009.

A copy of the complaint can be found on the Wall Street Journal’s site, and an article about the complaint (with a separate link to the complaint) was also published on Wired.com’s Threat Level Blog: Ryan Singel, “Netflix Spilled Your Brokeback Mountain Secret, Lawsuit Claims,” Wired.com, Dec. 17, 2009.

Interestingly, a university professor identified a problem with the anonymizing tools Netflix used in 2006 and argued that Netflix should not move forward with its newest contest, “Netflix Prize 2”, which would again release “anonymous” data on which the new algorithms would be based. See Paul Ohm, “Netflix's Impending (But Still Avoidable) Multi-Million Dollar Privacy Blunder,” posted on Freedom to Tinker (hosted by Princeton University's Center for Information Technology Policy) on Sept. 21, 2009.

Professor Ohm’s analysis identifying potential risks of data breach was further discussed in an article on Network World. Ian Paul, “Netflix Prize 2: What You Need to Know,” Network World, Sept. 23, 2009.

Apparently, Netflix has not yet rolled out the data associated with Netflix Prize 2 – at least, according to its web site, the details of the contest would be announced “shortly,” and prizes would be awarded for the “best results at 6 months and 18 months” instead of the 3 years associated with the original contest.

Two New Privacy Lawsuits Filed -- Part One, Facebook

Within the last few weeks, two major companies have been sued for alleged violations of privacy laws – one filed before the Federal Trade Commission seeking an investigation into Facebook’s privacy settings and the other filed in federal court, styled as a class action against Netflix. (The Netflix suit will be analyzed separately, in Part 2 of this topic.)

Facebook Complaint

On December 17, 2009, privacy advocates filed a complaint with the Federal Trade Commission, requesting that “the FTC open an investigation into Facebook’s revised privacy settings.” In the Matter of Facebook, Inc., Docket Number ---- (FTC); see also EPIC’s Press Release, “EPIC Defends Privacy of Facebook Users: Files Complaint with the Federal Trade Commission,” Dec. 17, 2009.

Facebook announced its privacy policy revisions in a December 9 Press Release, “Facebook Asks More Than 350 Million Users Around the World To Personalize Their Privacy; Service Gives Users New Tools to Control Their Information” – which suggested that the changes would actually benefit users, and help them protect their information. In fact, however, these changes potentially undo the restrictive settings that users may have applied to keep their profiles closely guarded and viewable only by “friends.”

A copy of the Complaint, Request for Investigation, Injunction and Other Relief can be found on EPIC’s site, but EPIC is not the only plaintiff. Nine other consumer protection organizations have joined, namely the American Library Association (see also their privacy resources), The Center for Digital Democracy (see also a Dec. 17 blog post that explains CDD’s reasons for joining the complaint), Consumer Federation of America, FoolProof Financial Education, Patient Privacy Rights (see also their Dec. 11 criticism of Facebook’s privacy policy changes and their Feb. 18 analysis of the Complaint Almost Filed Against Facebook), Privacy Activism, Privacy Rights Now Coalition, The Privacy Rights Clearinghouse and the U.S. Bill of Rights Foundation. (If the organization name is not hyperlinked, it’s because I could not find an updated web site for the organization. If you find one, please post it in the Comments section below.)

Other Information about Facebook’s Privacy Policies

* EPIC has also developed an “In Re Facebook” page, on which it summarizes all of the actions it has taken to date relating to privacy issues faced by Facebook participants, provides a background to the debate, and chronicles various articles that have been written about the complaint. (Last updated on Dec. 30, although it appears to be kept current, so keep checking back.)

* The Electronic Frontier Foundation (EFF) has also posted (Dec. 21) an interesting article on its Deep Links Blog entitled, “Who Knows Who Your Facebook Friends Are?”, discussing how Facebook’s changes to its privacy policies have exposed users’ list of friends – thus causing real problems for political activists operating under oppressive regimes. Another EFF article worth reviewing in detail is “Facebook's New Privacy Changes: The Good, The Bad, and The Ugly” (Dec. 9).

* The New York Times’s Brad Stone blogged about the lawsuit in an article entitled “Privacy Group Files Complaint on Facebook Changes,” (Dec. 17) which has been updated to include Facebook’s response to the Complaint. The response notes that Facebook “discussed” the revisions to its privacy policies with regulators, including the FTC.

FTC Releases its Staff Report on its 2/09 Fraud Forum

On December 29, 2009, the Federal Trade Commission's Division of Marketing Practices released its “Staff Report on the [FTC]’s Fraud Forum.” See Report. The report analyzes the recommendations and conclusions made during the FTC’s February 2009 meeting on the topic of preventing consumer fraud. See 12/29/09 Press Release.

The report analyzes the types of scam artists, some of the common scams that have been (at least marginally) successful, the types of victims, reasons why these crimes might be unreported or underreported, and upcoming challenges such as payment system frauds or phishing, spoofing and keystroke logging. The report also makes several proposals for improving the FTC’s anti-fraud program.