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U.S. Intellectual Property and New Media Law Update NEW RULES FOR THE MILLENNIUM U.S. Copyright Office - December 7, 1998 THE $900,000 REBATE FTC v. IOMEGA Corporation (December 9, 1998) NUNC PRO TUNC. ASSIGNMENT FROM A DEFUNCT CORPORATION Redmond Products, Inc. v. ETS, Inc. (TTAB - September 18, 1998) CUBITA WITH AFFECTION In re Sheehan (TTAB - September 10, 1998) NEW RULES FOR THE MILLENNIUM U.S. Copyright Office - December 7, 1998 The Digital Millennium Copyright Act was signed into law on October 28, 1998 amending the copyright law to provide limitations for on-line service providers. New subsection 512(c) gives service providers limited protection for information residing on their system at the direction of a client user. For such protection, the service provider must designate an agent for notification of a claim of infringement by providing contact information to the Copyright Office and through the service provider's publicly accessible website. As the rules governing designation of such an agent are interim rules, an opportunity will be provided for comment after promulgation of proposed final regulations The Library of Congress now has operational a web page to aid filing of agent information. While there is no requirement to use a particular form as long as all the information is required under Section 201.38(c) of the interim rules is provided, suggested formats are available on the web page in PDF format. You may either fill in the information on-line and print out the completed document or print just the form and then complete it off-line. In either case, the executed form must be sent to the Copyright Office, accompanied by a $ 20 fee. The information from the completed forms are then posted ohttp://lcweb.loc.gov/copyright/onlinesp/list/. If extraneous information is included on the form, such extraneous information will be posted on the website. The Copyright Office does not review statements for accuracy or for compliance with the law or with its regulations. The complete information is available at the Copyright Office website: http://lcweb.loc.gov/copyright/onlinesp/ THE $900,000 REBATE FTC v. IOMEGA Corporation (December 9, 1998) If you back up your hard drive at all, you probably back up on a "Zip", "Jaz" or "Ditto" drive. If you bought one of those drives you are probably aware of the rebate and free goods programs offered by IOMEGA, their manufacturer. You may also be aware of delays in delivery of the drives or the rebates. The FTC recently complained that OMEGA's direct sales programs violated its mail order rule by: 1) failing to offer consumers the option to consent to a delay or to receive a refund; 2) failing to provide prompt automatic refunds or rebates when it was unable to fulfil orders on time and customers had not been given the option to agree to a delay or receive a refund; 3) failure to offer buyers a cost-free means of canceling orders; 4) failing to have a reasonable basis for many of its shipping representations. The FTC's complaint also alleges that IOMEGA violated the FTC Act in its handling of its rebate and premium promotions when it failed to send promised rebates in a timely manner. Also, the company's arbitrary cancellation of a promotion and its failure to make its advertised premiums and rebates reasonablely obtainable also constituted a violation of Section 5 of the FTC Act. IOMEGA has agreed to enter into a consent decree in which it will pay $ 900,000 in civil penalties and injunctive relief that would address IOMEGA's violations of the Mail Order Rule and the FTC Act. This is believed to be the largest penalty ever obtained for non-fraudulent violation of the Mail Order Rule. The complaint and proposed consent decree may be viewed at: http://www.ftc.gov/os/1998/9812/9723023cns.htm NUNC PRO TUNC. ASSIGNMENT FROM A DEFUNCT CORPORATION Redmond Products, Inc. v. ETS, Inc. (TTAB - September 18, 1998) This decision of the Board is based on a petition to cancel two registrations owned by ETS for the mark "AUSTRALIAN GOLD" for suntan moisturizing creams and lotions. To obtain Registration 1,637,325, ETS had to overcome a refusal based on Registration 1,046,627 for AUSTRALIAN GOLD. It accomplished this by acquiring the referenced registration. First, Petitioner claims that registration 1,637,325 was invalid since, as discussed below it considers the transfer invalid. The Board found that since there is no indication that the transfer was fraudulent, the question of whether the assignment was valid or whether the mark had become abandoned were not relevant to the proceedings as pertained to registration 1,637,325 and accordingly the petition was denied. With regard to Registration 1,046,627, the Board looked at the transfer and surrounding circumstances. The primary grounds of interest in overturning the registration was the nunc pro tunc nature of an intermediate transfer. Registration 1,046,627 originally issued to Dagar Products Inc. This company eventually was dissolved. Five years after the dissolution, the former President of the dissolved corporation signed a nunc pro tunc assignment to himself, followed by an assignment of the registration by him to the Respondent, ETS. A nunc pro tunc agreement merely memorializes an act which has already taken place and the facts indicate that there was a de facto transfer from the company in dissolution to Mr. Davies. The Board found that a nunc pro tunc assignment was valid even though the corporation was long gone. The Board noted that there is no requirement for a formal assignment to be made to transfer a trademark and when the business with which the mark is associated is transferred, the presumption is that the rights of the mark and name were transferred with the business. The Board also discussed whether the assignment was an "assignment in gross" since customer lists and product bearing the mark were not transferred. Since the assignee used and continued to use the assigned mark for essentially the same goods coupled with the agreement not to compete, the public was properly protected against being misled from an established association with the mark, this represented a valid transfer of goodwill. It was a nice try by the Petitioner, but no cigar. The case can be viewed at: http://www.oblon.com/Uspto/Ttab/22285.html CUBITA WITH AFFECTION In re Sheehan (TTAB - September 10, 1998) Although not precedent of the TTAB, this case is interesting to show the boards thinking. The mark CUBITA is a combination of CUBA and ITA. CUBA is the place we love to embargo. ITA is a diminutive ending in Spanish which denotes smallness, youth, familiarity or affection. The goods are coffee and they appear in bags and include statements such as "El Sabor de Cuba" and an outline of the island of Cuba. The coffee itself indicates that the beans are Ecuadoran roasted in a traditional Cuban manner. The examining attorney refused registration as primarily geographically deceptively misdescriptive of the goods on which Applicant's use it. The Board noted that the primary question is the meaning of CUBITA to coffee buyers in the United States, i.e. whether it is another name for Cuba. The Board found that the suffix "ita" indicated affection rather than smallness within the context of its association with a place name and thus thereby created an unusual resulting term. Accordingly, CUBITA would not merely be understood as a place name. The decision can be viewed at: http://www.oblon.com/Uspto/Ttab/74-490595.html |
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