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U.S. Intellectual Property and New Media Law Update WHO OWNS DR. KING’S DREAM Estate of Martin Luther King, Jr., Inc. v. CBS, Inc. (N. D. Georgia - July 22, 1998) EVERYTHING YOU EVER WANTED TO KNOW BUT WERE AFRAID TO ASK ABOUT APPEALING A TTAB DECISION TO THE DISTRICT COURT Material Supply Int’l v. Sunmatch Industrial Co., Ltd. (D.C. Cir. - July 10, 1998) NAME LESS PRECIOUS THAN PLATINUM Platinum Home Mortgage Corp. v. Platinum Financial Group, Inc. (Seventh Cir. - July 24, 1998) TRADEMARK - DOMAIN NAME CONFLICT IS, AS ALWAYS, A QUESTION OF FACT Data Concepts, Inc. v. Digital Consulting, Inc. (Sixth Cir. - August 5, 1998) WHO OWNS DR. KING’S DREAM Estate of Martin Luther King, Jr., Inc. v. CBS, Inc. (N. D. Georgia - July 22, 1998) This is a copyright infringement action brought by the Estate of Martin Luther King, Jr. against CBS. At issue is, perhaps, the most famous speech of the last half of the Twentieth Century, Martin Luther King, Jr.'s "I Have A Dream" speech. The speech was heard by some 200,000 people and was broadcast live by CBS and other major television networks and radio stations, pursuant to an express invitation of the march organizers. An advanced text of the King speech was available in the Press Tent, without copyright notice appearing on the text concurrent with the giving of the speech. At the time, a copyright notice was required unless the publication was a limited one. In 1994, CBS entered into an agreement with the Arts & Entertainment Network to produce a historical documentary series entitled "The Twentieth Century with Mike Wallace." One segment was dedicated to Martin Luther King, Jr. and the march on Washington containing 60% of the footage of Dr. King's speech. Dr. King's words are heard while a photo-video montage shows scenes of the crowd. Dr. King's estate sued. There were cross motions for summary judgment. The issue became whether the delivery of the speech by Dr. King along with the copies of the advanced text to the press constituted a general publication of the speech as to place it in the public domain or a limited publication which did not. The District Court found that while the limited dissemination of a work by performance did not normally constitute a publication of the work sufficient to deprive the owner of his common law copyright, at some point the nature of the dissemination by performance is so great as to deprive the owner of his common law copyright in the underlying work and constitutes an abandonment of the right to reproduce the performance. It is not a question of the size of the audience. It is the actions and corresponding failures to act by owners and proprietors which divests the work of its common law copyright protection. If the facts surrounding the speech indicated a dedication without reservation of rights, the Court would so treat it. Here, it was offered to as large a public as possible without any limitation as to use and the Court found it was a general publication. The Court granted CBS's motion for summary judgment. The decision can be viewed at: http://www.ljx.com/LJXfiles/king/mlk.html EVERYTHING YOU EVER WANTED TO KNOW BUT WERE AFRAID TO ASK ABOUT APPEALING A TTAB DECISION TO THE DISTRICT COURT Material Supply Int’l v. Sunmatch Industrial Co., Ltd. (D.C. Cir. - July 10, 1998) This case is a dispute between a foreign manufacturer and a company which, at least for a time, distributed its products in the United States. Both claimed ownership of the SUNTECH trademark for pneumatic tools in a cancellation proceeding. The TTAB ruled in favor of the manufacturer. The District Court simultaneously held a bench trial of the challenge to the decision of the TTAB and the jury trial on claims of federal and state trademark infringement and unfair competition, breach of contract, breach of fiduciary duty, and fraud upon the TTAB. After the close of evidence, but before charging the jury, the Court upheld the decision of the TTAB by determining that the manufacturer owned the SUNTECH mark principally because it was the first to use it and dismissed pursuant to Rule 58 the distributor's claim for trademark infringement and unfair competition. The Court informed the jury that the manufacturer owned the mark and submitted the remaining claims for jury consideration. On appeal, the distributor argued that the District Court violated its Seventh Amendment right as to a jury trial when the Court itself decided that the manufacturer owns the SUNTECH mark and so informed the jury. While the parties acknowledge that it was proper for the judge to decide the challenge to the decision of the TTAB and submit the remaining issues to the jury, the dispute is over the sequence in which the Court and the jury should have proceeded. The Court of Appeals for the District of Columbia found that the proper sequence was for the jury to first decide the initial question, "Which party owns the SUNTECH trademark?" The District Court can then decide the TTAB appeal based on the jury's resolution of that question. The case goes on to discuss the procedural and evidentiary question involved in challenging a decision of the TTAB. A large number of procedural issues such as statute of limitation, challenge to the damages, etc. are extensively discussed. The decision can be viewed at: http://www.ll.georgetown.edu/Fed-Ct/Circuit/dc/opinions/97-7092a.html NAME LESS PRECIOUS THAN PLATINUM Platinum Home Mortgage Corp. v. Platinum Financial Group, Inc. (Seventh Cir. - July 24, 1998) Plaintiff and Defendant are involved in supplying mortgages, under the marks "Platinum Mortgage" and "Platinum Financial," respectively. The District Court refused to grant a preliminary injunction and the Seventh Circuit affirmed. The District Court found, and the Seventh Circuit affirmed, that the term "platinum" indicates either the precious metal or quality and excellence and that, accordingly, in this context, it was descriptive of both side's mortgage services. In order for this self-laudatory term to be enforceable as a trademark, secondary meaning needed to be established by the Plaintiff. Both the District Court and the Seventh Circuit found that Plaintiff had failed to establish such secondary meaning. There was neither consumer testimony or consumer surveys to support a finding of secondary meaning. The absence of such evidence weighed against the Plaintiff having acquired such meaning. The mark had only been in use by Plaintiff for three years, with most of its advertising and publicity not beginning until 1996. The District Court concluded that there is no indication that the public has come to associate Plaintiff's name with its business or reputation. Evidence of advertising and sales is entirely circumstantial and, by itself, does not necessarily indicate that consumers associate a mark with a particular source. Accordingly, the Seventh Circuit affirmed the District Court decision not to grant a preliminary injunction. The decision can be viewed at: http://www.kentlaw.edu/7circuit/1998/jul/97-3336.html TRADEMARK - DOMAIN NAME CONFLICT IS, AS ALWAYS, A QUESTION OF FACT Data Concepts, Inc. v. Digital Consulting, Inc. (Sixth Cir. - August 5, 1998) The initials of Plaintiff and Defendant are DCI. Plaintiff obtained a Federal registration for the mark DCI in 1987. The registration is incontestible. It conducts business on the Internet at the Internet address DCIEXPO.COM. Defendant began using a highly stylized mark which it alleges comprises the letters DCI in lower case. When the Defendant began transacting business over the Internet in 1993, it registered the Internet address with NSI as DCI.COM. Plaintiff sued. The two users of DCI cross-moved for summary judgment. The Defendant's motion was based on the concept of tacking its earlier use in highly stylized form to its later use over the Internet. The District Court and the Court of Appeals found that the mark could not be tacked since it did not make the same commercial impression. However, the Court of Appeals went on to review the District Court's finding that there was a likelihood of confusion between Plaintiff's and Defendant's mark as a matter of law. It went through the various indicia of confusion, concluding that the District Court's (in actuality the Magistrate's) findings were inadequate and remanded for trial. There is an interesting concurrence by Circuit Court Judge Merritt arguing that, at least at the preliminary stage, there was insufficient proof to find that the Defendant's use as a domain name was trademark use, i.e., Defendant's use may have been only that of an address. Judge Merritt requested this question be investigated on remand. The decision can be seen at: http://www.law.emory.edu/6circuit/aug98/98a0241p.06.html |
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