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U.S. Intellectual Property and New Media Law Update MONEY, MONEY, MONEY International Star Class Yacht Racing Ass’n. v. Tommy Hilfiger U.S.A., Inc. (Second Cir. - Decided-May 29, 1998) INTEL WON’T TELL In the matter of Intel Corp. (FTC Docket No. 9288 -Released- June 8, 1998) WHO’S ON FIRST Allard Enterprises, Inc. v. Advanced Programming Resources, Inc. et al. (Sixth Cir. -Decided- June 4, 1998) POLICY STATEMENT ON THE INTERNET DOMAIN NAME SYSTEM Department of Commerce (Released- June 5, 1998) MONEY, MONEY, MONEY International Star Class Yacht Racing Ass’n. v. Tommy Hilfiger U.S.A., Inc. (Second Cir. - Decided-May 29, 1998) As you may remember, we already reported on this case on its first trip to the Second Circuit in ohttp://www.ipcounselors.com/19970602.htm). In that case, the Second Circuit indicated, among other things, that Defendant Hilfiger's decision to only do a knock-out search rather than a full search of the trademark might be considered bad faith. It was remanded on this and other issues to the District Court. This case is the appeal and cross-appeal from the District Court's decision on remand. Plaintiff is a racing association dedicated to Star Class yachts and markets assorted goods such as hats, clothing and pins with Star Class on it. It has never registered STAR CLASS. Hilfiger, in all due modesty, appropriated STAR CLASS in connection with its clothing. Defendant did a knock-out search of just federal registrations and Plaintiff's unregistered mark didn't show up. Of course, someone at Hilfiger's had been down to the sea, or at least the Long Island Sound, and was aware of the very popular Star Class boats. In doing a search, Hilfiger did not identify the intended use of the mark, nor did it reveal it had taken the term from the sport of competitive sailing to its attorney. The search was of federally registered trademarks with particular emphasis on trademarks in Class 25, for clothing. The attorney indicated that "at this point, he would not necessarily allow the use and registration of the mark, subject to our usual disclaimers regarding the need to first obtain a review of a full trademark search." On the first go around, the Second Circuit all but said that failure to perform a full search was bad faith. The Second Circuit remanded to the District Court to make the decision as to bad faith in view of its comments on the lack of a full search. On remand, the District Court again determined that there was insufficient evidence to show that Hilfiger had used the STAR CLASS mark in bad faith. In doing so, the District Court pointed to an anti-trust decision in 1991 concerning trademark search firms, which indicated that the normal process was to merely use knock-out searches and found the attorney language as to the need for a full search merely boiler-plate. The Second Circuit noted that while a Judge could take judicial notice of facts "not subject to reasonable dispute" it could not adopt findings of another court through the judicial notice process. Since the District Court did not independently evaluate the significance of evidence submitted, the Court remanded for another determination as to whether there is bad faith. Some judges just don't take the hint. The decision can be viewed at: http://www.tourolaw.edu/2ndCircuit/May98/97-7761.html INTEL WON’T TELL In the matter of Intel Corp. (FTC Docket No. 9288 -Released- June 8, 1998) And we thought anti-trust was dead. First Microsoft, then Intel makes it clear that the FTC wishes to make its presence felt in both software and hardware. As you have probably heard from every known media, the FTC has alleged that Intel denied three of its customers continued access to technical information needed to develop computer systems based on the Intel microprocessor, to punish them for refusing to license key patents to Intel on Intel terms. From the buzz and from the facts, it appears that Intel did withhold information but felt it had the right to do so since these companies had threatened patent litigation. It should be an interesting couple of years for Intel. Due to the nature of such a litigation, by the time it is decided, Intel may no longer have a dominant position given the growth of low-priced chips by other manufacturers for the under $1,000 computers. The FTC's press release can be seen at: http://www.ftc.gov/opa/9806/intelc.htm The complaint can be viewed at: http://www.ftc.gov/os/9806/intelfin.cmp.htm WHO’S ON FIRST Allard Enterprises, Inc. v. Advanced Programming Resources, Inc. et al. (Sixth Cir. -Decided- June 4, 1998) The Plaintiff obtained a Federal registration for the mark APR for temporary employment services. Defendant began use of the same mark for permanent placement of employees. Plaintiff's application for registration was filed after the Defendant had commenced use. The parties essentially stipulate the infringement and the question becomes only who owns the mark. This, in turn, becomes a question of who used the mark first. Defendant began use of the mark before Plaintiff, but its initial use was quite small and Plaintiff maintained that it was thus not sufficient to establish its rights, since it considered the use to be a token use. The Sixth Circuit disagreed since it determined that all that is required is a good faith attempt to use the mark in commerce other than simply reserving a mark. The Court then went on to review the nation-wide injunction granted by the District Court. Plaintiff maintained, for the first time on appeal, that the injunction granted by the Court should be restricted to only those states where the Defendant did business, i.e., concurrent use. The Sixth Circuit found the form of the injunction was correct and the Order was clear on its face, but found that there was no underlying finding which would support the District Court's broad injunction and remanded for the purpose of the District Court to make further findings, either as to the reason why a nation-wide injunction was proper or to restrict the injunction, as the case may be. The decision can be viewed at: http://www.law.emory.edu/6circuit/june98/98a0175p.06.html POLICY STATEMENT ON THE INTERNET DOMAIN NAME SYSTEM Department of Commerce (Released- June 5, 1998) The Commerce Department has released a policy statement on the Internet domain name system. Since these are not rules, the policy was adopted immediately upon publication. When the policy is itself integrated into the Commerce Department Rules, it will be subject to the normal delay to allow comment and proposed changes. The policy indicates that the Commerce Department wishes for the creation of a new entity to take on various DNS functions now performed directly or indirectly by the Federal Government, including the delegation of the trademark dispute system to such an entity. The press release for the policy statement http://www.ntia.doc.gov/ntiahome/press/dnsburr.htm The statementhttp://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm |
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