Quiz 10: Intellectual Property Rights and the Internet

Business

China is a signatory country to the Madrid Protocol on the international registration of trademarks. Starbucks opened its first cafe´ in China in 1999 and has added outlets in numerous locations including Shanghai and at the Great Wall and the imperial palace in Beijing. Xingbake Cafe´ Corp. Ltd. has imitated the designs of Starbuck's cafe´s in its business coffee cafe´ locations in Shanghai. Xing (pronounced "Shing") means star, and bake, or "bak kuh" is pronounced like "bucks." Does the Seattle, Washington, Starbucks Corporation have standing to bring suit in China against Xingbake Cafe´ Corp. Ltd? If so, on what theory? Decide. (Boston Globe, January 3, 2006, 1)

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As per the stated case, XC Corp. Ltd. was found to be imitating the designs of S café locations in city S. In light of the case, three parties, that is, S, W, S Corporation have a clear standing to bring suit in country C against XC Corp. Ltd. since the company violated the US Trademark law. As per the US Trademark Law, a person, company or institution that is found imitating the trademark (symbols, designs, color, shape, size) of other company would face serious legal actions and in extreme cases may face strict imprisonment. Moreover, the plaintiff has to prove that his/her company has a valid design and they were the first one who created the designs. Hence, another's use of the same design would likely to cause confusion to consumers. In such a scenario, parties like S, W and S Corporation would be liable to bring suit against the XC Corp.

Q 2

Cable News Network with its principal place of business in Atlanta, Georgia, is the owner of the trademark CNN in connection with providing news and information services to people worldwide through cable and satellite television networks, Web sites, and news services. Its services are also available worldwide on the Internet at the domain name CNN.com. Maya Online Broadband Network (Maya HK) is a Chinese company. It registered the domain name CNNEWS.com with Network Solutions, Inc. The CNNews.com Web site was designed to provide news and information to Chinese-speaking individuals worldwide, making significant use of the terms CNNews and CNNews.com as brand names and logos that the Atlanta company contends resembles its logos. Maya HK has admitted that CNNews in fact stands for China Network News abbreviated as CNN. The Atlanta company had notified Maya HK of its legal right to the CNN mark before the Chinese company registered the CNNews.com domain name. Does the federal Anticybersquatting Consumer Protection Act apply to this case? If so, does a "safe harbor" exist under the ACPA for Maya HK in that most people who access its Web site in China have never heard of CNN? Decide. [Cable News Network v CNN News.com, 177 F Supp 2d 506 (ED Va)]

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Refer to the case Cable News Network v CNNews.com (177 FSupp2d 506) Facts of case: CNN (plaintiff) broadcasts news around the world and is known in Chinese market. It has registered trademark CNN, logos, and domain names CNN.com Maya HK (a Chinese company) is owner of CNNews.com which stands for Chinese Network News, news targeted to the Chinese market. CNN sued CNNews.com for trademark infringement and dilution. The suit fell under the Anti-Cybersquatting Consumer Protection Act (ACPA) , which prevented trademarks used in online domain names by unauthorized parties. Summary judgment for plaintiff. The district court claimed jurisdiction over the case as the domain CNNews.com was registered by Verisign an American company. Opinion: The defendant argued that CNNews.com is targeted towards Chinese market with purchases made with Chinese currency (RMB), hence, the domain has no effect on the American market. However, the court contend that American commerce is affected as the internet is global, the ".com" usually denotes American sites, and there are Chinese readers globally and living in the US as well. The court also found a strong likelihood of confusion as both CNN is a world known news brand and CNNews.com offered news as well, hence users may believe that CNNews.com as offered by CNN. The ACPA have safe harbors if the use of domain was not in "bad faith". The court decided that the use was in bad faith , while conceding that CNNews.com may not had an intention to sell the brand to CNN, the use of the CNNews.com likely dilute the brand and cause consumer confusion. Furthermore, the use of CNNews.com is for commercial use, not noncommercial educational purposes, hence, unprotected by fair use.

Q 3

Bostwick hired Christian Oth, Inc., to be her wedding photographer. The parties' written contract granted ownership of the copyright in all images created to Oth. Oth posted the wedding photos on its Web site. Bostwick e-mailed Oth to remove the photos from the Web site. Oth failed to do so and Bostwick sued, claiming that she had the sole and exclusive right to control her own wedding photos. Is she correct? [ Bostwick v. Christian Oth, Inc. 936 N.Y.S.2d 176 (A.D.)]

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Case summary: Ms. SB hired Mr. CO to be her wedding photographer. The parties written contract granted ownership of the copyright in all images to Mr. CO. SB's wedding photographs were posted online in his website by CO. Over which SB objected and asked the removal of those photographs but CO failed to do so and was sued by SB. She stated that she had exclusive rights over these photographs. Conclusion: As per my opinion, as described in this written contract in the case between SB and CO, CO holds the copyright of the wedding images of SB and thus it is his prerogative to use these photographs in a constructive manner for the promotion of his business of photography. Thus Ms. SB has to right or control over the photographs posted by CO unless these photos have been used positively and not for any illegal or illicit way. Thus Ms. SB is incorrect when she sues CO.

Q 4

Sullivan sold t-shirts with the name Boston Marathon and the year of the race imprinted on them. The Boston Athletic Association (BAA) sponsors and administers the Boston Marathon and has used the name Boston Marathon since 1917. The BAA registered the name Boston Marathon on the Principal Register. In 1986, the BAA entered into an exclusive license with Image, Inc., to use its service mark on shirts and other apparel. Thereafter, when Sullivan continued to sell shirts imprinted with the name Boston Marathon, the BAA sought an injunction. Sullivan's defense was that the general public was not being misled into thinking that his shirts were officially sponsored by the BAA. Without this confusion of source, he contended, no injunction should be issued. Decide. [Boston Athletic Ass'n v Sullivan, 867 F2d 22 (1st Cir)]

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Q 5

University of Georgia Athletic Association (UGAA) brought suit against beer wholesaler Bill Laite for marketing Battlin' Bulldog Beer. The UGAA claimed that the cans infringed its symbol for its athletic teams. The symbol, which depicted an English Bulldog wearing a sweater with a G and the word BULLDOGS on it, had been registered as a service mark. Soon after the beer appeared on the market, the university received telephone calls from friends of the university who were concerned that Battlin' Bulldog Beer was not the sort of product that should in any way be related to the University of Georgia. The university's suit was based on the theory of false designation of origin in violation of the Lanham Act. Laite contended that there was no likelihood of confusion because his bulldog was different from the university's and his cans bore the disclaimer "Not associated with the University of Georgia." Decide. [University of Georgia Athletic Ass'n v Laite, 756 F2d 1535 (11th Cir)]

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Q 6

Twentieth Century Fox (Fox) owned and distributed the successful motion picture The Commitments. The film tells the story of a group of young Irish men and women who form a soul music band. In the film, the leader of the band, Jimmy, tries to teach the band members what it takes to be successful soul music performers. Toward that end, Jimmy shows the band members a videotape of James Brown's energetic performance of the song "Please, Please, Please." This performance came from Brown's appearance in 1965 on a television program called the TAMI Show. Portions of the 1965 performance are shown in The Commitments in seven separate "cuts" for a total of 27 seconds. Sometimes the cuts are in the background of a scene, and sometimes they occupy the entire screen. Brown's name is not mentioned at all during these relatively brief cuts. His name is mentioned only once later in the film, when Jimmy urges the band members to abandon their current musical interests and tune in to the great soul performers, including James Brown: "Listen, from now on I don't want you listening to Guns Roses and The Soup Dragons. I want you on a strict diet of soul. James Brown for the growls, Otis Redding for the moans, Smokey Robinson for the whines, and Aretha for the whole lot put together." Would it be fair use under U.S. copyright law for Fox to use just 27 seconds of James Brown cuts in the film without formally obtaining permission to use the cuts? Advise Fox as to what, if anything, would be necessary to protect it from a lawsuit. [See Brown v Twentieth Century Fox Film Corp., 799 F Supp 166 (DDC)]

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Q 7

Greenwich Bank Trust Co. (GB T) opened in 1998 and by 2008 had expanded to a total of four branches in the Greenwich, Connecticut, community of 62,000 residents. A competitor using the name Bank of Greenwich (BOG) opened in December 2006. GB T's parent entity sued BOG for trademark violation under the Lanham Act. BOG argued that GB T's service mark is generic and is simply not entitled to Lanham Act protection because it combines the generic term "bank" and the geographic term "Greenwich." GB T asserted that it had been the only bank in Greenwich using the word Greenwich in its name and had done so exclusively for nine years. It asserted that a geographic term is entitled to protection if it acquires secondary meaning. GB T introduced evidence regarding its advertising expenditures, sales success, and length of exclusivity of use along with evidence of actual consumer confusion. Decide. [Connecticut Community Bank v The Bank of Greenwich, 578 F Supp 2d 405 (D Conn 2008)].

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Q 8

U.S. Polo Association (USPA) is a not-forprofit corporation that is the governing body of the sport of polo in the United States. It has been in existence since 1890 and derives the majority of its revenue from royalties obtained from licensing its trademarks. It owns more than 900 trademarks worldwide, including marks bearing the words "U.S. Polo Assn." with the depiction of two polo players for licensees on products sold in the apparel category. In 2009 it produced 10,000 units of a men's fragrance using packaging featuring its logo as used on apparel. Since 1978 PRL (Polo Ralph Lauren) and its licensee of PRL trademarks, L'Oreal, have used the mark known as the "Polo Player" logo on men's fragrances with its logo containing one player. The fragrance has been sold for 32 years and it was voted into the industry's Hall of Fame. PRL sued USPA. What must PRL establish to prevail in an action for trademark infringement? How would you decide this case? [ United States Polo Assn. v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515 (S.D.N.Y.)]

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Q 9

Diehr devised a computerized process for curing rubber that was based on a well-known mathematical formula related to the cure time, and he devised numerous other steps in his synthetic rubber-curing process. The patent examiner determined that because abstract ideas, the laws of nature, and mathematical formulas are not patentable subject matter, the process in this case (based on a known mathematical formula) was also not patentable. Diehr contended that all of the steps in his rubber-curing process were new and not obvious to the art of rubber curing. He contended also that he did not seek an exclusive patent on the mathematical formula, except for its use in the rubber-curing process. Decide. [Diamond v Diehr, 450 US 175]

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Q 10

Aries Information Systems, Inc., develops and markets computer software specifically designed to meet the financial accounting and reporting requirements of such public bodies as school districts and county governments. One of Aries's principal products is the POBAS III accounting program. Pacific Management Systems Corporation was organized by Scott Dahmer, John Laugan, and Roman Rowan for marketing a financial accounting and budgeting system known as FAMIS. Dahmer, Laugan, and Rowan were Aries employees before, during, and shortly after they organized Pacific. As employees, they each gained access to Aries's software materials (including the POBAS III system) and had information about Aries's existing and prospective clients. Proprietary notices appeared on every client contract, source code list, and magnetic tape. Dahmer, Laugan, and Rowan signed an Employee Confidential Information Agreement after beginning employment with Aries. While still employees of Aries, they submitted a bid on behalf of Pacific to Rock County and were awarded the contract. Pacific's FAMIS software system is substantially identical to Aries's proprietary POBAS III system. Aries sued Pacific to recover damages for misappropriation of its trade secrets. Pacific's defense was that no "secrets" were misappropriated because many employees knew the information in question. Decide. [Aries Information Systems, Inc. v Pacific Management Systems Corp.,366 NW2d 366 (Minn App)]

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Q 11

plaintiff, Herbert Rosenthal Jewelry Corporation, and the defendant, Kalpakian, manufactured jewelry. The plaintiff obtained a copyright registration of a jeweled pin in the shape of a bee. Kalpakian made a similar pin. Rosenthal sued Kalpakian for infringement of copyright registration. Kalpakian raised the defense that he was only copying the idea, not the way the idea was expressed. Was he liable for infringement of the plaintiff's copyright? [Herbert Rosenthal Jewelry Corp. v Kalpakian, 446 F2d 738 (9th Cir)]

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Q 12

Mineral Deposits, Ltd. (MD, Ltd.), an Australian company, manufactures the Reichert Spiral, a device used for recovering gold particles from sand and gravel. The spiral was patented in Australia, and MD, Ltd., had applied for a patent in the United States. Theodore Zigan contacted MD, Ltd., stating he was interested in purchasing up to 200 devices for use in his gravel pit.MD, Ltd., agreed to lend Zigan a spiral for testing its efficiency. Zigan made molds of the spiral's components and proceeded to manufacture 170 copies of the device. When MD, Ltd., found out that copies were being made, it demanded the return of the spiral. MD, Ltd., also sought lost profits for the 170 spirals manufactured by Zigan. Recovery was sought on a theory of misappropriation of trade secrets. Zigan offered to pay for the spiral lent him by MD, Ltd. He argued that trade secret protection was lost by the public sale of the spiral. What ethical values are involved? Was Zigan's conduct a violation of trade secret law? [Mineral Deposits, Ltd. v Zigan, 773 P2d 609 (Colo App)]

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Q 13

Village Voice Media, owners of the famous Village Voice newspaper in New York City, sent a letter to The Cape Cod Voice, a year-old publication located in Orleans, Massachusetts, objecting to the use of the word Voice in the title of its publication. It warned that the Cape Cod publication could cause "confusion as to the source affiliation with the famous Village Voice marks." The publisher of The Cape Cod Voice responded that "small places have a right to their own voices." The use of the word Voice was thus in dispute between these parties. Would you classify it as generic, descriptive, suggestive, arbitrary, or fanciful? How would you resolve this controversy? [Cape Cod Times Business Section, Amy Zipkin, The New York Times, October 16, 2004, G-1].

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