12
Oct/10

Contesting The Incontestable (2d Cir on STOLI)


A US federal trademark registration for which a Section 15 affidavit has been accepted after 5 years of continuous use, is said to be ‘incontestable.’ That is to say that ‘title has been quieted,’ with regard to prior users.  There is a laundry list of exceptions to incontestability in Section 33 of the Lanham Act.  Two common attacks on an incontestable registration that are never time-barred from being argued, are ‘genericide’ and ‘fraud on the PTO.”

The Second Circuit just head a more unusual attack on registrant’s ownership of an incontestable registration. 

It is an understatement to say that various entities in Russia have fought over ownership of the STOLICHNAYA trademark for a while.  The US registration for STOLICHNAYA became incontestable in 1974. Ordinarily, when the registration is assigned, the assignee steps into the shoes of the registrant. The reg was assigned from Pepsi to Allied Domecq and Allied assigned it to SPI.  FTE and SPI fight over ownership and FTE  alleges that the assignment to Allied Domecq wasn’t proper.  SPI argues that FTE can’t challenge its or Allied Domcq’s ownership of the registration because the registration is incontestable. The District Court agrees.

The Second Circuit:  Nope.  The assignee only steps into the shoes of the incontestable registrant if the assignment was proper. The Court must evaluate whether the assignment was proper before awarding the ‘assignee’ the cloak of incontestability.

Decision Stoli



8
Oct/10

Report re Use of DMCA In Political Campaigns


Center For Democracy & Technology: “Campaign Takedown Troubles“:

This report documents the extent to which overly aggressive copyright claims under the Digital Millennium Copyright Act have inappropriately stifled political speech on the Internet during recent campaign cycles.Broadcasters, concerned about the reuse of their news and public affairs footage in political advocacy, sometimes turn to the mechanisms created by the DMCA to force the removal of online political ads that contain such footage.Yet the incorporation of brief clips of news footage into campaign ads is highly likely to be fair use and thus non- infringing under copyright law.This report, drawing on publicly reported incidents and private interviews with campaign professionals, examines the problem of broadcasters and other news organizations abusing copyright enforcement tools in ways that impair lawful online speech by political candidates.  It is CDTʼ s hope that greater public exposure of and attention to this problem will discourage such abuse in the future

Copyright Takedowns



8
Oct/10

Motion For Expedited Discovery re Google's Potential Use of SPEEDBOOK


Plaintiff owns rights in SPEEDBOOK, seeks expedited discovery to determine if published reports are true that Google will use SPEEDBOOK for a tablet computer.

Motion Expedite Discovery Goo



6
Oct/10

Electronics Arts Defeats Prelim Re MIRROR'S EDGE Alleging Fraud On The PTO


Read the whole decision. You do not see the successful undermining of incontestable registrations all that often. HT JW.

decision edge v ea



6
Oct/10

Text of Draft Anti-Counterfeiting Trade Agreement


The Tokyo Round has reportedly produced this draft of the Anti-Counterfeiting Trade Agreement (ACTA).

acta oct 2010



30
Sep/10

Text of 7th Cir. Decision on Stayart v Yahoo – Personal Name As Trademark


Prior coverage from Prof Goldman here.

Decision 7th Cir Stayart v Yahoo



29
Sep/10

PLAYDOM v PLAYDOM


Defendant is a successful publisher of social games on FaceBook, recently acquired by Disney.

Complaint Playdom v Playdom



28
Sep/10

Righthaven Filed Another Five Suits Yesterday


According to Justia, Righthaven filed another five copyright suits yesterday.  Here’s one complaint.  Summary of Righthaven lawsuits here.

Complaint Right Haven



25
Sep/10

How Can Use of MITZVAH Be Wrong?


Defendant sold its funeral home to plaintiff, now use the name LLOYD MANDEL MITZVAH MEMORIAL, which, plaintiff alleges, infringes the name it bought.

Complaint Sci v Mitzvah



25
Sep/10

Smart Blocks Files DJ Against Legos


Complaint Dj Smart Blocks Lego