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U.S. Intellectual Property and New Media Law Update NEW ACT - NEW RULES Public Law 105-330 105th Congress, S. 2193, signed into law by President Clinton October 30, 1998) DOMAIN NAME AS DEFENDANTS Porsche Cars North America, Inc. et al. v. porsch.com, an Internet domain name, et al. (E.D Va. - December, 1998) BALLY MAY OR MAY NOT SUCK, BUT YOU HAVE A RIGHT TO YOUR OPINIONS Bally Total Fitness Holding Corp. v. Andrew S. Faber (C.D. Cal - December 28, 1998) A HOG IS NOT ONLY A MALE PIG Harley-Davidson, Inc. v. Grottanelli (Second Cir. - January 15, 1999) NEW ACT - NEW RULES Public Law 105-330 105th Congress, S. 2193, signed into law by President Clinton October 30, 1998) On October 30th, 1998, President Clinton signed the Trademark Law Treaty Information Implementation Act amending the Lanham Act in accordance with the June 1998 ratification of the Trademark Law Treaty. The end result may save a number of attorneys from a red face and possibly a malpractice suit. No later than October 30th, 1999 (or earlier if the Trademark Office Rules so decree), it looks like most every failure in the original application can be cured if the Commissioner wishes it. There will not be any statutory requirements for receipt of a filing date that the Commissioner does not have authority to change or waive. For example, the statute provides that in an application solely under Section 44(e), a certified copy of the foreign registration is no longer required with a Section 44(e) application to obtain a filing date. What will be required, what may be filed later as part of the prosecution and what will require a petition will be set by the Commissioner by amending the rules of practice. Presently, a trademark application is verified in the entirety by the applicant. Now the applicant only has to verify either its use or intention to use the mark. Thus, the attorney can sign the application and the applicant can sign a separate specific verification. The requirement for a statement of the method or manner of use or intended use of the mark is no longer required. The Act also loosens up the requirement to revive an abandoned application, requiring only that such failure be unintentional. The elimination of the requirement of the use requirement as part of a renewal application is an interesting change in form over substance. Instead, in addition to a Section 8 Affidavit in the fifth year, there now must be a Section 8 affidavit of use or excusable non-use together with a specimen in the year preceding the 10th anniversary of the registration and every 10 years thereafter. There are a number of other changes. We will have further information as to what this all means, particularly with regard to obtaining a filing date, when the proposed rules are published for comment. It is our understanding that the Office is aiming for a March 1st publication. We will be publishing an extensive revision to our Guide to Registering http://www.ipcouselors.com/page1.htm which will issue before the new rules go into effect. The proposed amendment to the Lanham Act can be reviewed at the following URL, and searching for Public Law 105-330: http://thomas.loc.gov/bss/d105/d105laws.html DOMAIN NAME AS DEFENDANTS Porsche Cars North America, Inc. et al. v. porsch.com, an Internet domain name, et al. (E.D Va. - December, 1998) Tired of ferreting out individual domain name holders, when you want to sue. Porsche has discovered the lazy-man's way. It sued the domain names rather than their owners in an in rem action. It sued in Virginia where the NSI offices and, thus, the certificates of domain name ownership are stored. The certificates and their attendant rights are the res, which are allegedly guilty of wrong doing since they allegedly dilute Porsche's federally registered trademarks. The action seeks an order transferring or forfeiting the res. Of course, the owners of the res can show up and defend their rights. Under the NSI domain name dispute policy, NSI would deposit the Defendant domain name registry certificates to the Court, only if the owners of the domain names were sued. NSI, however, in an unusual level of cooperation and in contradiction of its own rules, turned over the res without the owners being sued. Maybe they are just car enthusiasts. The listed domain names fall into various categories including parts and service organizations which service Porsche cars, pornographic sites (which, inter alia, I suppose incidentally service Porsche owners) and cybersquatters. These are very different categories when asserting dilution. Some are quite a bit more defensible than others. Nine-tenths of the Complaint seems to be spent describing the Defendant domain names with a single, short claim of dilution. All in all, an interesting application of the common law, or is it the uncommon law. In any case, we look forward to seeing how the Court will deal with the various problems raised. The complaint can be reviewed at: http://www.mama-tech.com/pc.html BALLY MAY OR MAY NOT SUCK, BUT YOU HAVE A RIGHT TO YOUR OPINIONS Bally Total Fitness Holding Corp. v. Andrew S. Faber (C.D. Cal - December 28, 1998) Bally Total Fitness brought this action for trademark infringement, unfair competition and dilution against Defendant in connection with Bally's federally registered trademarks for "Bally Total Fitness." Faber's web site was "Bally sucks," having the word "sucks" appear over Bally's "Total Fitness" mark. The web site is dedicated to complaints about Bally's health club business and clearly indicates that it is an un-authorized site. The two primary counts were trademark infringement and trademark dilution. Plaintiff moved for Preliminary Injunction and Summary Judgment and lost. Defendant moved for Summary Judgment after the Court ordered it to do so. The Court did find that Bally had a valid trademark but went on to find that there was no likelihood of confusion. "Sucks" across "Bally Total Fitness" does much to destroy any similarity in appearance. You couldn't see "Bally" without seeing "sucks." The goods are not in close proximity, while both sites provide information about "Bally" they serve fundamentally different purposes. They are not proximately competitive. Given this and that it is used only for consumer criticism, the Court found no likelihood of confusion. In this case, "Bally sucks" was not even the secondary domain name, but was only a page designation whttp://www.compupix.com. Accordingly, there was no trademark infringement. With regard to dilution, the Court pointed out that the Defendant's use was not in a commercial context and that clearly the dilution statute was not intended to prohibit or threaten non-commercial expression indicating parody, satire and other forms of expression. The anti-dilution statute is to prohibit the unauthorized use of another's trademark in order to market incompatible products or services. Finally, the Constitution does not permit the range of anti-dilution statutes to encompass the unauthorized use of a trademark in a non-commercial setting such as an editorial or artistic context. There is no tarnishment since this was a case of consumer commentary. The fact that the Defendant may also offer homophilic matter on other pages does not in any way affect the free speech protection. Accordingly, assertion of dilution must fall before the First Amendment. The Court only refused attorneys' fees because this was not raised in the original motion for Summary Judgment and, thus, Bally did not have an opportunity to respond. The decision can be reviewed at: http://www.cacd.uscourts.gov/cacd/CourtInformation.nsf/04023f04c914e7338825656900691c26/48ba5787903d0fcd882566e900628de6?OpenDocument A HOG IS NOT ONLY A MALE PIG Harley-Davidson, Inc. v. Grottanelli (Second Cir. - January 15, 1999) Defendant sold motorcycles under the name "The Hog Farm" and used a logo modeled on the Harley-Davidson bar-and-shield design mark. The District Court looked to dictionary definitions, magazines, and similar evidence in the record. The Second Circuit found that in the late 1960's and the early 70's, the word HOG was used by motorcycle enthusiasts to refer to motorcycles generally and to large motorcycles in particular. Articles in the press used this definition starting in 1965, long prior to the 1980's when Harley first attempted to make trademark use of the term. Starting in the 1970's, motorcyclists increasingly came to use the word "hog" when referring to Harley-Davidson motorcycles. While initially trying to disassociate themselves from Hell's Angels, and the like, who loved their hogs, in 1981, Harley-Davidson began using the term in connection with its merchandise, accessories, advertising and promotion. Plaintiff formed Harley Owners Group, otherwise known as H.O.G. Plaintiff eventually registered the mark HOG for motorcycles with an alleged first use in 1990. Defendant first opened THE HOG FARM in 1969. He then sponsored events known as "The Hog Holiday" and "Hog Farm Holidays," and sold products such as "Hog Wash" engine degreaser and a "Hog Trivia" board game. The District Court, applying New York's anti-dilution statute enjoined the Defendant from using the word HOG other than its previously used trade name THE HOG FARM. The Second Circuit found that HOG is generic, as applied to large motorcycles. The Court noted that no manufacturer could take out of the language a word, even a slang term, that has generic meaning as to the category of products and appropriate it for its own use as a trademark. In doing so, they did not fully follow previous cases in the Trademark Office or in the Northern District of California, noting that they are not only bound by the decision, but that there was no indication that in these cases the ruling had the extensive record of early generic usage that was produced in the Second Circuit. The Court went on to distinguish several possible theories which might allow protection and is worth reading on this basis alone. With regard to the logo, the Defendant made variations on the Harley-Davidson bar-and-shield logo, including my favorite, a 1986 version, which included a pig wearing sunglasses. The Court found that it was not acceptable parodic commentary of a trademark or a trademarked product. It noted that it had never hesitated to grant the manufacturer an injunction from using an alleged parody of a competitor's mark to sell a competing product. With regard to service, t-shirts, etc., Defendant was in direct competition with Harley. Also, the alleged parody lacked a critical bearing on the substance or style of the original and, therefore, failed to be a true parody. The decision can be reviewed at: http://www.law.pace.edu/lawlib/legal/us-legal/judiciary/second-circuit/test3/97-9446.opn.html |
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