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U.S. Intellectual Property and New Media Law Update THE MUSIC OF RIO Recording Industry Association of America et al. v. Diamond Multimedia System Inc. (Ninth Cir. - June 15, 1999) FUNCTIONALITY OF INCONTESTABLE MARKS Wilhelm Pudenz, GmbH v. Littlefuse, Inc. (Eleventh Cir. - June 7, 1999) WHO OWNS GOD'S TRADEMARKS Maktab Tarighe Oveyssi Shah Maghsoudi, Inc. et al. v. Kianfar et al. (Ninth Cir. - June 17, 1999) SAMPLING OF FUNKY SOUL Batiste, et al. v. Island Records Inc., et al. (Fifth Cir. - June 21, 1999) THE GREATEST SNOW ON EARTH? Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Division of Travel Development (Fourth Cir. - March 16, 1999) DOMAIN NAME DILEMMA Brookfield Communications Inc. v. West Coast Entertainment Corp. (Ninth Cir. - April 22, 1999) THE MUSIC OF RIO Recording Industry Association of America et al. v. Diamond Multimedia System Inc. (Ninth Cir. - June 15, 1999) This is an effort by the Recording Industry Association of America and the Alliance of Artists and Recording Companies to enjoin the manufacture and distribution of the Rio portable music player. The Rio is a hand-held device approximately the size of an audio cassette with headphones that allows the user to download from the internet and listen to MP3 audio files. The most prominent use of MP3 is trafficking in elicit audio recordings. Various pirate web sites offer free downloads of thousands of copyrighted audio material. However, the Internet also supports traffic in legitimate audio computer files. Whether legitimate or not, the Rio renders these files truly portable. The suit alleged that Rio does not meet the requirements for the digital audio recording device under the Audio Home Recording Act of 1992, 17 U.S.C. Sec. 1001, et seq., because it does not employ a Serial Copyright Management System ("SCMS") that sends, receives and acts upon information about the generation and copyright status of the files that it plays. Under the Ninth Circuit's analysis, the Act does not broadly prohibit digital serial copying of copyright protected audio recordings. To be under the Act, the Rio must be able to reproduce either directly or from a transmission, a digital music recording. Since the Rio downloads from a hard drive, it would not make copies from a digital music recording as required by the Act. We can expect the industry to be talking to their friendly Congresspersons again. The decision can be reviewed at: http://caselaw.findlaw.com/cgi_bin/getcase.pl?court=9th&navby=case&no=9856727 FUNCTIONALITY OF INCONTESTABLE MARKS Wilhelm Pudenz, GmbH v. Littlefuse, Inc. (Eleventh Cir. - June 7, 1999) This is one of those cases that would have been really interesting if decided a year or two ago, but its relevance has just been legislated away. Without going into details, the Eleventh Circuit faced the problem of whether functionality was a defense to a trademark action for infringement of an incontestable registration. As you may know, Section 1115(b) was amended by Congress to specifically add functionality as such a defense, effective as of October 30, 1999. In this case, the action arose prior to this amendment. With the amendment the question became, was the addition of functionality as a defense, a departure in the law or merely a certification of the case law into the Lanham Act.. The Court noted, among other things, that Congress has designated the amendment as a "technical correction" implying that it was codifying existing law and added functionality throughout the Act. The Court summarily reviewed prior case law and found that the changes in the Act were a codification of existing law. The decision can be reviewed at: http://caselaw.findlaw.com/cgi_bin/getcase.pl?court=11th&navby=case&no=988097MAN WHO OWNS GOD'S TRADEMARKS Maktab Tarighe Oveyssi Shah Maghsoudi, Inc. et al. v. Kianfar et al. (Ninth Cir. - June 17, 1999) This case weighs to what extent a civil court can decide a dispute over the rights to intellectual property of a religious order without violating the First Amendment. The Plaintiff is the corporate embodiment of an ancient Sufi Order. Two former members of the order formed their own competing organization after their expulsion. This new competing order sells Plaintiff's trademarked publications as its own and employs trademarks which are colorable imitations of Plaintiff's registered trademarks. Plaintiff sued under the Lanham Act for trademark infringement and false designation of origin pursuant to 15 U.S.C. Sec. 1125(a). The Sufi Order basis its origins to the Teacher Oveys Gharani, a contemporary of the Prophet Muhammad. The Order passed its traditions down through a succession of 41 individual teachers, who, accordingly to the religion are the embodiment of wisdom of the Order and, incidentally, inherit certain property rights from the former teacher, including intellectual property rights. To defendant, the dispute here is who is the 42nd teacher and, thus, the owner of the trademarks in question. The District Court threw up its hands at the case, but not in prayer. It felt it could not resolve the property dispute without first resolving the succession of the Order's leadership and such resolution would conflict with the First Amendment prohibition against civil courts resolving disputes of religious doctrine. The Ninth Circuit agreed that it was clear the First Amendment not only precludes a civil court from determining who was entitled to hold religious office but also precludes from determining whether the religious organization followed its own ecclesiastical rules in anointing one of its leaders. However, there is a limit on this prohibition. The First Amendment only requires the courts decide church or property disputes without resolving the underlying controversy over religious doctrine. Thus, the Court may defer to the decision making authority of the hierarchical church. Alternatively, the civil court can use neutral legal principles and avoid deciding religious doctrine. Here, the court simply looked at the PTO's assignment records for ownership of the trademark. Defendant, in turn, can raise religious neutral defenses, such as prior use of the marks. The District Court erred in dismissing the case since it could be decided without reference to the religious issue. The decision can be seen at: http://caselaw.findlaw.com/cgi_bin/getcase.pl?court=9th&navby=case&no=9615002 SAMPLING OF FUNKY SOUL Batiste, et al. v. Island Records Inc., et al. (Fifth Cir. - June 21, 1999) David Batiste wrote a musical composition called "Funky Soul" in 1968 which he and his brothers recorded in 1970. David Batiste entered into two written agreements with defendant Bolden, a songwriter's contract governing rights to "Funky Soul" musical composition and an artist's contract governing rights to the "Funky Soul" physical master tape and sound recording. Batiste gave an exclusive, unlimited and perpetual right to manufacture, advertise, sell, lease, license or otherwise use or dispose of, in any or all fields of use, by any method now or hereafter known, throughout the world, records embodying the performances. "P.M. Dawn" is a highly successful musical group who decided to repeatedly sample a 6.5 second portion of "Funky Soul" as part of one of their own recordings. They entered into a license with Bolden to do so. Davit Batiste and his two brothers sued for copyright infringement and on summary judgment motion, the Court found that any copyright and any interest that David Batiste had in "Funky Soul" had been transferred to Bolden. On appeal the Court rather summarily dismissed Batiste's claim that the contracts were invalid because David Batiste did not remember signing them. Plaintiffs also argued that the contract could not apply to Batiste's two brother's performance since they were minors at the time and did not authorize him to negotiate on their behalf. After review of the contracts, the Court found that there was no evidence supporting the allegation that the contracts were invalid. With regard to the rights of his brothers, even if they were joint authors, any one of the joint authors could assign his rights which would be sufficient to allow its use. The decision can be viewed at: http://caselaw.findlaw.com/cgi_bin/getcase.pl?court=5th&navby=case&no=9830046CV0V3 THE GREATEST SNOW ON EARTH? Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Division of Travel Development (Fourth Cir. - March 16, 1999) In this case, the Fourth Circuit interprets "the dauntingly exclusive concept" of federal trademark dilution. Ringling Bros. sued the State of Utah's slogan THE GREATEST SNOW ON EARTH based on its famous trademark THE GREATEST SHOW ON EARTH. The District Court found that the Ringling Bros. had failed to prove dilution under the act and gave judgment for the State of Utah. In this opinion, the Fourth Circuit affirms. The history is a long one on both sides, with Utah gaining a registration in THE GREATEST SNOW ON EARTH even though opposed by Ringling Bros. To make its case, the Ringling Bros. burden was to show that the mark was a famous one, that Utah adopted its mark after Ringling Bros. had become famous and that Utah's mark diluted Ringling by blurring it. From the evidence educed, it was clear that Ringling Bros.' mark was famous and it that it had been adopted before Utah's mark, leaving the question only of blurring. Ringling Bros. took the position that blurring occurs when a junior mark is either identical to or sufficiently similar to a famous mark that persons viewing the two instinctively will make a mental association between the two. The Court rejected that mental association alone was sufficient to show blurring. Beyond that the junior mark must cause actual harm to the senior's mark's economic value as a product identifying an advertising agent. Arriving at this conclusion, the Fourth Circuit admitted that it was not within the four walls of the statute and looked to the history of this dilution. The history reviewed was a long one going back to previous attempts to have a dilution statute. It is an interesting read if you are a student of the law as well as a practitioner at law. hey found that there has to be sufficient similarity between the junior and senior mark to invoke a distinctive mental association of the two by a relevant universe of consumers which is the effective cause of an actual lessening of the senior mark's selling power, expressed as "its capacity to identify and distinguish goods and services." Decision can be viewed at: http://www.law.emory.edu/4circuit/mar99/971399.p.html DOMAIN NAME DILEMMA Brookfield Communications Inc. v. West Coast Entertainment Corp. (Ninth Cir. - April 22, 1999) This case is a cyberspace shoot-out between an entertainment industry information provider and a video rental store chain. The Plaintiff gathers and sells information about the entertainment industry and it obtained federal registration of its mark MOVIEBUFF for software. Thereafter, it learned that one of the nation's largest video rental store chains intended to launch a web site as MOVIEBUFF.COM containing, inter alia, a searchable entertainment base similar to Plaintiff's. The Defendant had registered MOVIEBUFF.COM with NSI before Plaintiff had filed for its trademark registration and was part of its service mark THE MOVIE BUFF'S MOVIE STORE which had been registered in 1991. The Plaintiff sued and its preliminary injunction was denied. The denial was appealed and the Ninth Circuit entered an order enjoining the Defendant from using or facilitating the use in any manner, including advertising promotion, the mark MOVIEBUFF or any other term or terms likely to cause confusion therewith, including MOVIEBUFF.COM. Skirmishes continued in the Court of Appeals with the Defendant seeking a reconsideration and then raising of the bond requirement, all denied. This opinion is the full elucidation of the order enjoining the Defendant by the Ninth Circuit. The Court noted that the .com marks were usually used with the company's name and were normally used in metatags which are used by search engines to locate the company. In both cases here, Plaintiff's mark MOVIEBUFF was used by Defendant both as a domain name and as a metatag. The Ninth Circuit found that the earlier use of MOVIE BUFF as part of a larger mark did not give an earlier priority since such would have been limited to the legal equivalent of the mark in question or indistinguishable from it which certainly did not exist with regard to the slogan. The Court noted that the Plaintiff first used its MOVIE BUFF on Internet based products and services in August 1997. In order for Defendant to prevail as a first user, it must establish its first use earlier than that date. While Defendant registered the domain name MOVIEBUFF.COM in February 1996, it did not use the mark until after Plaintiff's use. The mere intent to use the mark creates no right a competitor is bound to respect. |
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