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U.S. Intellectual Property and New Media Law Update BOTH CREST AND COLGATE CAN PROTECT EGG SHELLS The Procter & Gamble Co. v. Colgate-Palmolive Co., et al. DOMAIN NAME PROTECTION - THE NSI FRONT Uniform Domain Name Dispute Resolution Policy DOMAIN WARS - LANHAM ACT FRONT DOMAIN WARS - LANHAM ACT FRONT COPYRIGHT CHARACTERIZATIONS DO MAKE A DIFFERENCE Raquel v. Education Management Corporation, et al. BOTH CREST AND COLGATE CAN PROTECT EGG SHELLS The Procter & Gamble Co. v. Colgate-Palmolive Co., et al. Since 1989, Proctor & Gamble has been demonstrating the protective quality of its CREST toothpaste with commercials showing eggs brushed with CREST on one half and then dipped in a week acid. The unprotected half breaks when tapped with a rod while the CREST protected half survives. In 1995, Colgate introduced an advertisement in China performing a similar test with two sea shells. Proctor & Gamble sued for copyright infringement. The trial court found against the Plaintiff on every conceivable basis from the commercial being uncopyrightable since it was not original and creative, through no evidence of copying and, even of substantial similarity. Procter & Gamble appealed the question of independent creation. In this decision, the Second Circuit affirmed the finding of the trial judge that, in fact, the COLGATE advertisement was based on public domain demonstrations which Defendant COLGATE had, since the 1970s, also used as a basis for demonstration. The Second Circuit upheld the trial judge's finding of fact that any similarity was attributable to both being derived from public domain experiments and by the advertising industry's conventions. The Second Circuit went on to point out the fact that the elements or the combinations of a work display the minimum creativity necessary to void the Scenes A Faire label (i.e., unprotected elements that follow naturally from the work's theme rather than from the author's creativity), does not eliminate the fact that the elements may be readily susceptible to independent creation. The less creative the choice, the stronger the inference that the same choice or group of choices may be in other words made independently. The decision can be reviewed at: http://law.touro.edu/2ndCircuit/December99/99-7196.html DOMAIN NAME PROTECTION - THE NSI FRONT Uniform Domain Name Dispute Resolution Policy NSI has adopted a new dispute resolution policy, effective as of January 1, 2000. In the interim, NSI is no longer placing domain names "on hold" and will release all the domains currently "on hold." Under the new policy, domain name dispute resolution is more difficult, but at the end of the process, NSI will cancel, transfer or otherwise make changes to domain name registrations. It will do so under one of three circumstances: (1) by written authorization of the domain name holder; (2) on the receipt of an order from a Court or arbitration tribunal of competent jurisdiction requiring action; and/or (3) upon receipt of a decision of an administrative panel which panel has conducted a hearing under the new policy. An administrative panel is selected from a list of attorneys sanctioned by ICANN, the international parent body which will control domain name policy. The administrative panel determines disputes where the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and the domain name is being used in bad faith. What constitutes bad faith is enumerated and includes: (1) obtaining the domain name primarily for the purposes of selling, renting or otherwise transferring a domain name registered to the complainant, who is the owner of a trademark or service mark or to a competitor of the complainant; (2) registering the domain name in order to prevent the owner of the trademark or service mark from protecting the mark in a corresponding domain name; (3) adopting the domain name primarily for the purpose of disrupting the business of a competitor; or (4) intentionally attempting to attract for commercial gain Internet users to the web site or other on-line location by creating a likelihood of confusion. Nothing will happen in such a situation until there is a decision of the administrative panel. The administrative panel charges a minimum of $1000 for its services or more depending on the number of domain names involved. Briefs and supporting evidence are submitted to the panel without oral arguments or witnesses. ICANN has indicated that it is aiming for a decision by its administrative panel within 45 days of each filing. The new NSI policy can be seen at: http://www.netsol.com/rs/dispute-policyb.html A discussion of the charges and procedures can be seen at: http://www.icann.org/ DOMAIN WARS - LANHAM ACT FRONT DOMAIN WARS - LANHAM ACT FRONT While NSI/ICANN has made it much more difficult to affect a change in a domain name by essentially eliminating the "hold" procedure, the trademark laws of the United States have been modified to make it far easier to sue for registration or use of an improper domain name and to obtain damages as a result of such suit. In such an action, the person using the domain name must be using it in bad faith with intent to profit from the mark. Registration, trafficking or use of the domain name is barred if it is identical or is confusingly similar to a mark which is distinctive at the time of the registration of the domain name. Where the mark is famous, you can also sue if the domain name dilutes the value of the mark, such as by a pornographic site. While no Court has yet to make a decision, it appears likely that the mark in question must be a mark used in the United States. This does not mean that the mark has to be registered in the United States, but it does mean that the mark has to be used in commerce between the states or between the United States and a foreign country. It is likely that a foreign registration would not be a basis for bringing an action under the Cyberpiracy Act. The Act also allows for an in rem proceeding against the domain name itself, rather than against the individual owning the domain name. As a result of such litigation, not only is there a possibility of injunction and actual damages, but there is a provision for statutory damages, that is a payment of not less than $1,000 and not more than $100,000 per domain name, as the Court, in its discretion, considers just. The new Act may be seen at: http://www.haleanddorr.com/internet_law/titleIII.html COPYRIGHT CHARACTERIZATIONS DO MAKE A DIFFERENCE Raquel v. Education Management Corporation, et al. This is an appeal from a District Court dismissal of an action for lack subject matter jurisdiction. The Plaintiff was a partnership comprising musicians and song writers who authored the music, lyrics and arrangements for an original song entitled "Pop Goes The Music." Plaintiff granted Defendants a license to use the song developed by them and Plaintiff's performance for three years in a television commercial produced by one of the Defendants. In July 1995, Plaintiff filed a federal copyright registration form identifying its ownership in an audio-visual work entitled "Pop Goes the Music" and indicated that nature of its authorship as all music and lyrics and arrangement. The deposit was a video tape containing both the commercial and the full length music video. The Defendants continued to use the commercial after the license ended (i.e., after the end of three years). Plaintiff, sued. The U.S. District Court then dismissed the complaint against all Defendants for lack of subject matter jurisdiction. The audio-visual musical video as available belonged to the Defendants who made the commercial, not the Plaintiff who only owned rights in the song and the song's performance. Thereafter Plaintiff's attorney filed a supplemental registration adding performance of the song "Pop Goes the Music" as to the description of the nature of the authorship and made no other changes. The District Court again tossed out the case since the Court still considered that there was no valid copyright in the song, Plaintiff's only right. The Third Circuit reviewed the matter and decided that mischaracterization of the work as an audio-visual work was neither immaterial or innocent in the current context and, therefore, the registration was not curable. Accordingly, the Third Circuit found there was no copyright registration in the song, as compared to the audio-visual work, and absent a copyright in the song, there was no basis for the present action. The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=3rd&navby-case&no=992318P |
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