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U.S. Intellectual Property and New Media Law Update NO TRADEMARK RIGHTS IN A GOLF “TARGET”? Disc Golf Assoc., Inc. v. Champion Discs, Inc. (Ninth Cir. - September 15, 1998) FIGHTING OVER A COPYRIGHT IN A TRAGEDY Oklahoma Natural Gas Co. et al. v. Larue (Tenth Cir. - September 1, 1998) WILL NSI EVER GET IT RIGHT? Network Solutions, Inc. - September 23, 1998) WOW-THOSE EMPLOYEE CONFIDENTIALITY AGREEMENTS WORK Photonics Industries International v. Bierber (New York Supreme Ct. - 9/98) NO TRADEMARK RIGHTS IN A GOLF “TARGET”? Disc Golf Assoc., Inc. v. Champion Discs, Inc. (Ninth Cir. - September 15, 1998) Plaintiff and Defendant are manufacturers of disc entrapment devices that are used in the game of disc golf. Disc golf is played like "ball" golf but with frisbees. Instead of throwing the frisbee into a hole it is thrown at a target which catches the frisbee and drops the frisbee into a basket below. In the mid-1970's, the Plaintiff's president obtained a patent for a parabolic chain configuration which has became the standard target used in a majority of the disc golf courses in the United States. Upon expiration of the patent in 1994, Defendant began to market a target with a similar parabolic chain design. Plaintiff brought this action alleging claims of trademark and trade dress infringement of its target. The District Court granted summary judgment in favor of Defendant on the ground that Plaintiff's target was functional as a matter of law. Plaintiff appealed. The Ninth Circuit affirmed the functionality finding in a careful review of the facts as they related to the functionality test. The Court found the existence of the utility patent and the limited evidence of alternative designs, important factors in support of its holding. Having trouble getting a tee-off time on a "ball" golf course, why not try disc golf? Check out the Professional Disc Golf Association home page: http://pdga.com/ FIGHTING OVER A COPYRIGHT IN A TRAGEDY Oklahoma Natural Gas Co. et al. v. Larue (Tenth Cir. - September 1, 1998) The copyright claim in this case arises from the bombing that destroyed the Alfred P. Murrah Building in Oklahoma City on April 15, 1995. On that day, Lester LaRue, a safety coordinator employed by Oklahoma Natural Gas Company went to the scene of the explosion to investigate whether there were natural gas leaks at the scene of the crime. Once on the scene, Mr. LaRue took a number of photographs of the scene including a now famous photograph of a firefighter cradling an injured infant. The day after the explosion, Newsweek contacted Mr. LaRue regarding the possible publication of several of his photographs including the "firefighter and baby" photo. Mr. LaRue notified his superior officer of the offer by Newsweek and contracted with Newsweek the next day. The photograph appeared on the cover of the May 1, 1995 issue of Newsweek magazine. Mr. LaRue later entered into an agreement with a clearinghouse for photographs, granting it worldwide syndication rights to the photos. Mr. LaRue also contracted for the manufacture and sale of t-shirts with the "firefighter and baby" photo depicted on the front. Plaintiff did not originally object to Mr. LaRue's sale of the photographs. However, on May 1, 1995 a letter was sent by Plaintiff to Defendant claiming ownership rights in the photos and on September 6, 1995 informed Mr. LaRue that if he did not transfer any rights he may have to the photos and any profits to the families of the victims within two days he would be fired. Mr. LaRue refused this demand and was fired on September 8, 1995. Both plaintiff and defendant filed copyright applications for the photos claiming ownership rights. On October 5, 1995, Plaintiff sued Defendant claiming copyright ownership of the photos from the bombing scene, and seeking an injunction and damages. After full briefing, the District Court granted Plaintiff summary judgment holding that it was the copyright owner and was entitled to statutory damages in the sum of $34,623.50. Defendant appealed this part of the case on the grounds that material issues of fact still existed as to the question of ownership. Defendant claimed that his copyright registration constituted prima facie evidence of ownership of the photos, and as such the registration created a genuine issue of material fact which precluded resolution of the ownership issue on summary judgment. While the Circuit Court agreed that there was a presumption of ownership, it did not agree that such a presumption precludes resolution of the ownership issue on summary judgment. Here the Court believed that the evidence of ownership by Plaintiff was overwhelming in that Mr. LaRue was an employee of Plaintiff acting within the scope of his employment when he took the photographs since the photos were taken during work hours, Mr. LaRue regularly took photographs in similar situations, he used a company camera and film, and the photos were developed by the Plaintiff. Accordingly, the Circuit Court affirmed the lower court decision of copyright ownership and the award of statutory damages in the sum of $34,623.50. A CNN article on the LaRue firing can be viewed at: This decision can be seen at: http://lawlib.wuacc.edu/ca10/cases/1998/09/97-6087.htm WILL NSI EVER GET IT RIGHT? Network Solutions, Inc. - September 23, 1998) Network Solutions, Inc. ("NSI") has posted a FAQ sheet with answers to common questions regarding its Domain Name Dispute Policy. There are two interesting and detrimental policy position changes by NSI. The first is with regard to its definition of "effective date of trademark." Under the Policy, if the effective date of a trademark registration is earlier than the date of registration of the domain name with NSI, the owner of the trademark registration will be entitled to have the domain name placed "on hold" if it follows the Dispute Policy procedure. With regard to US trademark registrations, NSI previously took the position that the "effective date" was the date of registration, not the date of first use. Now, NSI's position is that the "effective date" is the earlier of the date of registration or the date of first use (date of first use anywhere or in commerce is a new unresolved issue). This means that a domain name owner is subject to attack at any time by a U.S. trademark registrant, even if it files a U.S. trademark application well after the domain name owner obtained the domain name, and claiming an earlier date of first use. The second change of policy by NSI is with regard to what mark in a trademark registration is acceptable to rebut a claim under the Domain Name Dispute Policy by a trademark owner. While NSI previously accepted trademark registrations for either PLANET.COM or PLANET, it no longer will do so. It will now only accept a registration for PLANET. Accordingly, many domain name owners efforts to protect their domain names in the United States, Tunisia and elsewhere for the complete domain name IPCOUNSELORS.COM, in most cases, for no other reason than to protect their domain name from trademark owners, will be for naught. NOT GOOD!!!!! The FAQ sheet can be viewed at: http://www.internic.net/faq/dispute.html WOW-THOSE EMPLOYEE CONFIDENTIALITY AGREEMENTS WORK Photonics Industries International v. Bierber (New York Supreme Ct. - 9/98) Plaintiff, a laser manufacturer, hired Defendant in December 1997 to work on laser design and development. At the time she joined the company she signed a confidentiality agreement in which she promised to protect and keep secret, trade secret and confidential proprietary business information. There was no restrictive covenant not to compete. Four months later in March 1998, Defendant left Plaintiff and went to work for a competitor. By this action, Plaintiff seeks to enjoin Defendant from revealing any confidential information about specific lasers which she had access to and maintained in a notebook that she did not return to Plaintiff until 14 days after she left Plaintiff. Both parties admit that the materials in the notebook are confidential materials. Defendant claims she did not copy any part of the notebook. Some of the information in the notebook was related to a laser that Plaintiff was marketing and Defendant's new employer was developing. The court believed that while the Defendant was not a pivotal or long standing employee of Plaintiff, her use of information relating to the new laser in her new job would result in unfair competition. Accordingly, the Court enjoined Defendant's new employer from employing her in the capacity of research and development of the new laser during the course of the action and Defendant from using any of the information contained in the notebook should it be determined that it was copied before being returned to Plaintiff. Plaintiff was required to file a $20,000 bond. The decision can be viewed at: http://www.ljx.com/cgi-bin/f_cat?test/ht-docs/ny.archive.html/98/09/092498d1.htm |
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