Sometimes decisions are interesting because the issue in contention is so apparently uninteresting (by this point). The Berne Convention pretty much (but not exactly) says that it is not self-executing. There are many U.S. decisions that say that it is not self-executing (and every SDNY decision holds that it is not). Congress, when it implemented Berne, concluded that it was not self-executing, and considered whether it needed to amend Section 412 of the Copyright Act (which requires plaintiff to have registered its work in order to be eligible for statutory damages), in view of Berne’s provision that ‘the exercise of rights not be subject to any formality [such as US registration].” It then consciously decided not to amend Section 412. Courts have held that the 412 requirement doesn’t contradict Berne, as statutory damages are the enhancement of a right, not a right in and of itself.
Here, plaintiff seeks statutory damages for unregistered foreign copyrights, arguing that Berne preempts Section 412, which argument the Court quickly dispatches. All I’ll say is: that’s interesting.
Decision Reed Elsevier Berne

Not really an unusual decision but a reminder about the need for speed when bringing preliminary injunction motions. Plaintiff learned of complained-of behavior in June, didn’t file the proposed order to show cause until November. It’s three reasons for delay: (1) waiting for the expedited copyright reg’ns; (2) it granted an extension to the defendant to answer; and (3) defendant behaved in dilatory fashion; were held to be insufficient reasons to dispel the point that plaintiff’s delay belies its argument that the harm is irreparable.
Decision EDNY Unreasonable Delay PI Motion

The Internet Committee of the International Trademark Association started its work for the year yesterday by asking us to introduce ourselves and outline what we wanted to work on. I got carried away with mine, so I’ve decided to expand my remarks into a treatise.
I have been involved in domain name disputes since 1994 (when I stupidly didn’t register google.com). I have been following domain name politics since the 1998-2001 era that saw the creation of ACPA, ICANN and the UDRP. I have represented famous mark owners policing their marks in various fora (and have also assisted some famous mark owners in becoming registrars). I was actually the GC of a registrar for about a day.
While I concur in my fellow trademark lawyers’ desire that there be a voice for the TM lobby before ICANN, it is my view that ICANN has resembled a captured regulatory agency in its first ten years, and, as the tether to DoC is weakened, it is my fear, rightly or wrongly, that ICANN will devolve into a little more than a trade association for domain interests.
The negotiating team on behalf of TM interests (INTA and IPC) are very able and I think that to the extent that that TM interests can accomplish goals working within the ICANN process, this group will achieve the best possible result (within that limited context).
Having said that, I think there are two other courses of action that the TM world should explore, if it wants to actually change the status quo of brands within the domain name system. One is litigation (which discussion can be held another day depending on how badly the new gTLD process goes).
The more interesting (and difficult) approach is a lobbying and educational effort as to the role of new TLDs in creation of a safe space for e-Commerce. I have preached on this before and my view is:
Because of (legitimate) free speech and privacy concerns (and the exploitation thereof), DNS-wide acquisition and WHOIS standards will never be adequate from a consumer protection/brand protection point of view. Therefore it seems to me that there has to be a commercial ‘confort’ zone within the DNS that does have adequate standards – for example, standards as to how domains are distributed and to the identification and verification of the people who register the domains.
The ‘High Security Zone’ paper that ICANN commissioned is a useful starting point for this conversation. It says ‘this is one view of what a safe and secure TLD looks like.’ Frustratingly, ICANN, being ICANN, neuters the concept by saying in effect: ‘well, we won’t make HSZ concepts mandatory and we won’t give anyone an incentive to adopt this.’
I should mention that when I attended a meeting at the Seoul ICANN, and the question arose as to possibly making HSZ practices standard, one ICANN official said that it would harm ICANN’s initial contact with its ‘clients’ (Client was the word used to describe new gTLD applicants) if it imposed such costs of doing business on them.
That’s one ICANN official’s mindset, for what it’s worth.
So ICANN is not going to impose ‘commercial zoning’ on the entire DNS (nor should it) and won’t itself create a secure commercial zone within it, so I think that it’s up to the legitimate business community to create one (and urge that ICANN does as much as it can in assisting this). While this task is going to require the efforts and resources of much more than the brand protection commmunity, folks like the TM lobby can advance the effort greatly by thinking about the development of the structures of a working HSZ:
What are the elements of a HSZ? How do you get brand owners to do business in the HSZ, given their prior investment in non-HSZ TLDs? How do you get customers to patronize the HSZ sites? Hard questions, but a successful HSZ would make a significant dent in counterfeits, cybersquatting, phishing and spoofing. A worthwhile goal.
That’s what I want to work on.

There is a website named Upstate Belle Empire and it advertises that it’s ‘spent years searching the marketplace for True (sic) designer brands at huge discounts.” It displays logos such as these:
ubc brands.jpg
One item advertised today are these Coach Rainboots:
coach rain boots ubc.jpg
. . .which Coach says is a counterfeit.
This last bit on the UBE home page struck me as somewhat unusual:
correctional facilities.jpg
This is the first website I’ve seen carrying Prada that provides this service.
Complaint Coach Belle Epoque

Plaintiff sues its licensee. Licsensee prevails, brings motions for fees and costs, alleging that plaintiff had brought this litigation as a ploy to re-negotiate the license. It alleged that plaintiff had brought similar litigation against another licensee in order to ‘re-negotiate’ license, brought mertiless discovery, brought meritless dilution claim, abandoned ADR process, made meritless defense of venue trasnfer motion and never produced evidence on material elements of its claims. Also, defendant established that plaintiff acted in bad faith with regard to its unfair competition claim. Held:

The fact that the jury did not find that [plaintiff] had proven those claims by a prepondernece of evidence does not lead to the conclusion that they were necessarily brought in bad faith. Further, the jury’s finding of bad faith on the unfair competition claims is irrelevant here, as the relevant inquiry is whether [plainitff]’s litigation tactics were premised on bad faith, and not whether its pre-Complaint conduct in preventing [defendant] from using the [Marks] in certain ways was done in bad faith.

Motion for fees was denied (however costs were awarded).
Decision Farberware Costs Exceptional