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|GRR Client Successfully Appeals From Copyright
Office's Denial of Registration
and Lesley Matty
represented Chilewich Sultan
LLC in its successful appeal of a Copyright Office decision
refusing to register Chilewich's copyright rights in one of
its woven placemats. Chilewich regularly applies to
register its copyright rights in the designs incorporated into
its products with the Copyright Office. Virtually all of
these applications are accepted by the Copyright Office, which
then issues a Certificate of Registration.
case, Chilewich filed an application with the Copyright Office
to register its rights in the design shown below.
Office refused to register this work on the ground that it was
not sufficiently original and lacked the authorship necessary
to support a copyright claim.
GRR then appealed
within the Copyright Office, arguing that the combination of
the textured variations, the alternating widths of dense weave
and sheer material, and unique relationship between positive
and negative space in the "sheer stripes" of the design,
results in a work of copyrightable authorship created by
artistic decision. After considering the arguments put
forth by GRR, the Copyright Office reversed its rejection and
issued a Copyright Certificate to Chilewich.
events reveal that if, after the submission of a relatively
simple design, the Copyright Office issues a denial of
registration, it is possible to submit substantive arguments
to the Copyright Office to convince them that what they think
is a "simple" design is in fact quite artistic and deserving
of copyright protection. It pays to
|GRR Attorney Presentations
On May 18, 2009, Amy B. Goldsmith
and Jeffrey M. Kaden
will speak at the Surtex
Licensing Show, to be held at the Jacob K. Javits
Center. The topics they will cover include basic
intellectual property rights (patents, copyrights and
trademarks) and the mechanics of licensing from the
perspectives of both the owner/ licensor and the
licensee/manufacturer. More information is available here
, and registration information can be
was a speaker and panelist
at a town hall meeting held at the School of Art & Design
of the Fashion Institute of Technology (FIT) on March 10,
2009. The town hall meeting addressed the problems
faced in Intellectual Property...In An Age When Practically
Anything Can Be Copied, Pasted, Downloaded, Sampled And
Remixed, and was moderated by FIT's Assistant Dean of Art
|New Domains For Sale
|The Internet Corporation For Assigned Names and Numbers
(ICANN) has announced that it will begin accepting
applications for new top level domains (TLDs). Applicants will
be able to create the portion of a domain name to the right of
the "dot". ICANN will thus permit the registration of domain
names such as .moon and .home. Although there is no guarantee
that applicants will be awarded the top level domain (TLD) for
which they apply, applicants are free to apply for any TLD not
currently in use. It does not take much imagination to
envision the potential for conflicts with trademark rights
presented by the application process, with applicants able to
apply for .nike or .coke. ICANN has not stated when it will
begin accepting applications. |
At its March meeting in
Mexico City, ICANN approved the establishment of a
recommendation team to develop and propose solutions to the
trademark protection issues raised by the introduction of new
TLDs. The recommendation team is to prepare a draft
report by April 24 and to produce a final report by May 24 so
it can be considered at ICANN's next meeting, in June.
No matter what safeguards are recommended, trademark owners
and their representatives will likely need to monitor the
application process to make sure that applicants are not
awarded TLDs that conflict with trademark rights.
According to a draft guidebook for applicants
prepared by ICANN and posted on its website, applicants for
new TLDs will have to submit an application, including copies
of audited financial statements, along with an application fee
of $185,000 (the high application fee might prevent the filing
of frivolous applications by applicants intending to register
someone else's trademark as a TLD).
regarding applying for new TLDs can be found on ICANN's website.
information, contact Marc P.
|All Eyes Are On...You!
|Today, almost everyone has surfed the internet. Many
people do not know that every click is monitored by private
companies, which use the data they collect to create targeted
advertising. A class action lawsuit recently filed
against NebuAd and other Internet Service Providers in a
federal district court in California, Valentine v. NebuAd, et
al, No. CV 08 5113 (ND Cal. 2008), may determine
whether such "behavioral advertising" is legal.|
lawsuit claims that the defendants intentionally intercepted
online communications, without notice or consent, and used the
data to create targeted advertising, in violation of federal
and state law. The case is in its early stages so no decision
has been rendered yet.
In view of the uncertainty
surrounding the legality of "behavioral advertising,"
businesses gathering data on Internet users should consider
following the Federal Trade Commission's recently issued
guidelines. Those guidelines (which can be found here) state that businesses collecting data
over time should (1) explain the policy and provide an opt-out
feature; (2) keep the data safe and for a limited time; (3)
gain consumers' consent for use of data collected before the
new policy was implemented; and (4) gain consumers' explicit
consent for use of data for behavioral advertising. The FTC
Commissioner warned that if businesses don't comply and
attempt to protect consumers' privacy, a new federal law
implementing the policy may not be far off.
consumers and businesses need to be careful-consumers need to
be careful about what information they permit to be collected,
and businesses need to be careful about what they do with the
information they collect.
information, contact Amy B.
|Lower Fees for European Community
|If you have been thinking about filing a European
Community Trademark ("CTM") application covering the 27 Member
States of the EU, do so before May 1, 2009 to decease
your overall costs. On May 1, there will
be an increase in the application filing fee but the
final registration fee will be eliminated entirely. As a
result, you can file before May 1 at the lower
application filing fee and nevertheless reap the benefit
of not paying a registration fee when the mark
registers. This results in more than a 40% savings
on CTM filing fees, making the CTM the best bargain
around. Use of the trademark is not required to secure
the registration. The registration lasts ten years from
the date of filing. Also, bona fide use on a reasonable
scale in a single Member State is normally sufficient to
maintain the validity of the CTM registration throughout the
EU. We encourage you to take advantage of this special
time to file. |
For further information, contact
|Sounds Registrable as Trademarks Only with
Proof of Acquired Distinctiveness
|In re Vertex Group LLC, Serial Nos. 76/601,697 and 78/940,163 (TTAB
To be registrable, a sound must function as a trademark,
be non-functional and have acquired distinctiveness.
Vertex Group LLC ("Vertex") markets and sells personal
security devices, such as bracelets, which emit a loud alert
signal. Vertex applied to register its alert sound as a
trademark, but after reviewing Vertex's application, the
Trademark Office refused to register the alert sound.
Vertex appealed the refusal to the Trademark Office's Appeal
Board, which affirmed the refusal. The Appeal Board
explained that while sounds may be registered as trademarks
(examples of sounds that have been registered as trademarks
can be found here
), they can only be registered when an
applicant proves that the public associates the sound with a
single source. Since Vertex had not sought to prove that
the public associated the alert sound with a single source,
the alert sound was not entitled to registration.
Further, the Appeal Board explained that since the sound is
essential to the use of Vertex's products, the alert sound was
unregistrable because it is functional. Additionally,
the Appeal Board explained that the alert sound is commonplace
and did not indicate a particular source, and therefore could
not function as a trademark. Thus, even if Vertex had
shown that the public associated the alert sound with a
particular source, it would not have been entitled to
For further information, contact Marc P.
|Another Blow to Business Method
|In re Ferguson, No. 2007-1232 (Fed. Cir. March 6, 2009).
The Federal Circuit Court of Appeals continued to erode patent
rights in the business method patent arena in its recent
decision, In re
Ferguson. In re Ferguson
involved an appeal from the U.S. Patent Office in an
application with claims directed to both a method of marketing
and a marketing paradigm for bringing products to
market. The court held that Ferguson's method claims did
not meet the "machine-or-transformation" test. The test
provides that a claimed process is eligible for a patent if it
is tied to a particular machine or apparatus or if it
transforms a particular article into a different state or
thing. The Court held that the process claims met
neither test because they were not tied to a machine and
because transformations of public or private legal obligations
or relationships are not transformations of physical objects
or substances as required by the transformation test. As
to the paradigm claims, the court held that these claims also
did not fall within any of the four classes of patent-eligible
statutory subject matter - process, machine, manufacture, or
composition of matter - finding in particular that they did
not recite a "concrete thing consisting of parts" and were an
"abstract idea - a business model for an intangible marketing
|Court Asked to Decide if "Pull My Finger" is a
In a dispute between two distributors of Apple iPhone
applications, a Federal District Court in Colorado has been
asked to decide whether the phrase "Pull My Finger" is
protectable under trademark law. The dispute started
when InfoMedia, Inc. began using the phrase "Pull My Finger"
to advertise its "iFartMobile" iPhone application, which
allows users to select a variety of flatulence sounds for
their iPhone. Air-O-Matic, Inc., which sells its own
flatulence IPhone application under the name "Pull My Finger"
took offense, and threatened to sue InfoMedia for trademark
infringement. InfoMedia then decided to bring a
declaratory judgment lawsuit arguing that the phrase "Pull My
Finger" was not protectable as a trademark. A copy of
the complaint can be found here
The court has yet to rule
in this important
case, which was filed last month. We will follow this
case, from a safe distance, and let you know how it turns out
in future editions of this newsletter.
information, contact Richard S.
|Voo-Doo Dolls Depicting French President are OK
to Sell Only if Seller Gives Notice that Dolls
"Constitute an Attack on President's
A French appellate court recently held that the sale of a
voo-doo doll in the image of French President Nicolas Sarkozy,
complete with needles, came within the "right to humor" as
recognized under French law. However, the court ruled
that such dolls could only be sold if the package carried a
bright red sticker stating that the doll "constitutes an
attack on Mr. Sarkozy's dignity."
K&B Editions, the
seller of the doll, was happy with the result. It gained
valuable publicity, and the doll, with the sticker attached,
has become a collector's item.
voo-doo dolls in the image of, for example, Wall Street
executives, would be permissible in the United States has not
yet been decided.
For further information,
contact Richard S.
Intellectual Property News Editorial Board: Richard S.
), Marc P. Misthal
), Steven Stern
) and Yuval H. Marcus
) of Gottlieb, Rackman
& Reisman, P.C.
Suggestions, questions and
comments should be directed to the Editorial Board by email or
telephone (212) 684-3900.
For over thirty-five years,
Gottlieb, Rackman & Reisman, P.C. has provided legal
advice and guidance on all aspects of patent, trademark,
copyright, and unfair competition law, tailoring its counsel
to the specific needs of its clients.
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