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U.S. Intellectual Property and New Media Law Update THE NSI TRUST Name.Space, Inc. v. Network Solutions, Inc. and National Science Foundation (Second Cir. - TWO HOT TAMALES Anita's New Mexico Style Mexican Food, Inc. v. Anita's Mexican Foods Corp. (Fourth Cir. - January 7, 2000) YO HO HO AND A BOTTLE OF RUM Havana Club Holding, S.A. et al. v. Galleon S.A., et al. (Second Cir. - February 4, 2000) THE WANG PATENT Wang Laboratories, Inc. v. America Online, Inc. (Federal Cir. - December 17, 1999) BAZERMAN FAMILY NEPOTISM BAZERMAN FAMILY NEPOTISM THE NSI TRUST Name.Space, Inc. v. Network Solutions, Inc. and National Science Foundation (Second Cir. - Name.Space, Inc. sued Network Solutions, Inc. (NSI), at the time the sole provider of internet domain name registration services, and the National Science Foundation (NSF) who chartered NSI for antitrust violations. Basically, the Plaintiff was contesting NSI's control of the master route zone server and file. Unless NSI amends the master route zone file to include Name.Space's new designation gTLD (the equivalent of ".com" in a domain name), domain names registered with the Plaintiff could not be located by all internet users. Name.Space requested NSI to allow its gTLDs be added to the route zone. In fall 1998, the Internet Corporation for Assigned Names and Numbers (ICANN) was incorporated as a non-profit public benefit corporation in order to assume the management of domain names. Accordingly, NSI responded that it no longer had the authority but that it would pass it on to the appropriate ICANN agency, the Internet Assigned Numbers Authority (IANA). IANA, in turn, indicated that it had no authority to create new names on its own and a bureaucratic circle dance ensued. Without going through the Kafkaesk trials and tribulations of the Internet bureaucracy, Name.Space remained upset and its gTLDs were not listed in the master route zone file. Plaintiff brought suit against NSI and NSF under the antitrust laws. The District Court dismissed Plaintiff's antitrust claim against NSI on the grounds that NSI was entitled to antitrust immunity under the federal instrumentality doctrine and specifically found that domain names did not constitute expression of speech entitled to Constitutional protection under the First Amendment on the analogy with telephone pneumonics such as 1-800-MATTRES. Accordingly, the District Court granted summary judgment for Defendants and the Plaintiff appealed. Rather than applying the status-based federal instrumentality doctrine, the Second Circuit applied the state action immunity doctrine. NSI did not have the status of a government contractor, but it carried forward a government scheme, which activity was granted antitrust immunity. NSI's implied immunity is limited in scope to its refusal to add new gTLDs to the route zone file. The acts under attack were required by the government and therefore immune as the government's act was immune. While upholding the ultimate finding that NSI did not violate the First Amendment, it disagreed with the District Court's reasoning. The Second Circuit rejected the District Court's analogy that the internet domain name was equivalent to the alphanumeric address telephone message. The Second Circuit found the existent gTLDs are not protected speech only because the current DNS are limited to three letter afterthoughts, such as ".com" and ".net" which are lacking expressive content. In other words, with the longer gTLDs, they may have sufficient content to be protectable. The decision can be reviewed at: http://www.law.pace.edu/lawlib/legal/us-legal/judiciary/second-circuit/test3/99-6080.opn.html TWO HOT TAMALES Anita's New Mexico Style Mexican Food, Inc. v. Anita's Mexican Foods Corp. (Fourth Cir. - January 7, 2000) We have two Mexican Anitas in this case, one in Virginia and one in California. The fighting Mexican-Americans go back a long way. In 1987 the PTO decided that Anita's California had superior rights to the trademark ANITA'S. Anita's Virginia appealed the decision in the U.S. District Court in the Central District of California pursuant to 15 U.S.C. 1071(b). The parties settled by entering a detailed stipulated judgment, which was so ordered by the California District Court in 1988. Among other things, the stipulated judgment prohibited Anita's California from selling prepared Mexican food products under the trademark ANITA'S outside of California. When goods licensed by Anita's California started showing up in Virginia, Anita's Virginia did not like those enchiladas and claimed Anita's California terminated the license and so advised Anita's Virginia. Thereafter, Anita's Virginia filed a civil action against both Anita's California and its former licensee in the District Court for the Eastern District of Virginia. The Fourth Circuit found that the District Court had subject matter jurisdiction. The Central District of California did not have exclusive jurisdiction to remedy any violation of the stipulated judgment. Institution of a second action on the judgment is a valid method of enforcing the judgment and such action could be in a different district than that rendering the judgment. Since there was diversity here, the Court did not have to go into the question of whether there would be jurisdiction based on the original underlying federal question. With regard to personal jurisdiction, this question was answered by the Virginia Long-Arm Statute and the U.S. Constitution. Here, the licensee was acting as an agent of the Defendant in selling the goods in Virginia and, accordingly, Anita's California was transacting business in the Commonwealth. There is also no violation of due process clause, since the action arose from the sale of its licensed products in Virginia. Finally, the Court noted that Anita's Virginia correctly pled its enforcement action as a breach of contract in so far as the Courts normally treat consent judgments as contractual in nature. The decision can be viewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=4th&navby=case&no=971942P YO HO HO AND A BOTTLE OF RUM Havana Club Holding, S.A. et al. v. Galleon S.A., et al. (Second Cir. - February 4, 2000) Trademarks and the Cuban Embargo are again here to plague us. Before the Cuban revolution, HAVANA CLUB belonged to a Cuban corporation held principally by one family. Castro seized the company, the rum and the trademark, without compensating the original owning family and gave it to one of the two Plaintiffs, the Cuban company. The other Plaintiff, a related Luxembourg company, owned the HAVANA CLUB trademark in certain countries outside the United States. Thereafter the U.S. imposed the embargo on Cuba. Because of the embargo, HAVANA CLUB rum has not been sold in the United States. Cuban citizens and tourists visiting Cuba have brought to the U.S. a certain amount of Cuban origin goods, including HAVANA CLUB rum. To avoid the embargo the Cuban company attempted to transfer the trademark right to its foreign related company. Bacardi-Martini USA, Inc., purchased the original family's rights in the HAVANA CLUB trademark and the related good-will of the business and any rum business assets still owned by that family. Since 1995, Bacardi or a related company, Bacardi's predecessor, has been distributing rum under the HAVANA CLUB name in the United States. The Cuban and Luxembourg companies have filed this action to enjoin Bacardi from using the HAVANA CLUB trademark alleging violations of Section 32 and 43(a) of the Trademark Act. Without going into the never never land intricacies of the Embargo Act, both the District Court and the Second Circuit found that the Cuban company did not have a right in the HAVANA CLUB mark since it could not be successfully assigned absent a license required by U.S. law under the Embargo Act. While there was, for a brief period, the required license, it was revoked. The Cuban company could not rely on 31 CFR Sec. 515.527 which allows maintenance of trademark registrations in the US PTO by Cuban companies. This section was enacted after the purported license and is, thus, not applicable. Even if Sec. 515.527(a)(1) had been enacted prior to the transfer, that section relates solely to the registration and renewal in the United States Trademark Office, not assignments. In fact, only the original owner of the trademark, as recorded in the Trademark Office records, would have the right for renewal and, thus, the transfer of the registration to Bacardi would be proper. The Cuban company also alleged violation of Article 11 of the Inter American Convention (IAC), which provides for recognition of assignments provided that reliable sources can prove that the transfer was in accordance with the internal laws of the State in which the transfer took place. The argument runs since the HAVANA CLUB mark registered in the United States was originally registered in Cuba and was transferred in accordance with the Cuban law, Article 11 would act to assign that transfer to the Cuban company and such must be recognized by the United States. However, the embargo was specifically intended to modify this treaty and, thus, override it. The Cuban company also raised another section the Inter-American Convention which provides that any manufacturer domiciled or established in a signatory country which used a particular trade name or commercial name, could enjoin the use of the name in another signatory country. However, Section 211 of the Omnibus Act of October 21, 1998, specifically exempted confiscated companies. Thus, the IAC was not applicable under this provision. Finally, the Court of Appeals found that the Cuban company, indeed, did not have standing to assert a claim under Section 43(a) of the Lanham Act since it could have no commercial activity in the United States because of the embargo. Only Bacardi HAVANA CLUB rum can be used in Cuba Libres in Miami. The decision can be viewed at: http://www.law.pace.edu/lawlib/legal/us-legal/judiciary/second-circuit/test3/99-7582.opn.html THE WANG PATENT Wang Laboratories, Inc. v. America Online, Inc. (Federal Cir. - December 17, 1999) Wang's patent, U.S. Patent No. 4,751,669, relates to videotex frame processing. The claimed invention provides users with textual and graphic information from computer controlled databases through an interactive two-way communication over a telephone network. By using the videotex system, it is possible to review, retrieve and store pages off frames of data from any information supplier. Claim 20 of the patent is directed to a key word feature that allows the user to assign a name to a particular page or frame for ease in retrieval and is said by Wang to read on AOL's "Favorite Places" and Netscape's "Bookmark" features. The appeal was from a summary judgment decision that AOL and Netscape did not infringe literally or under the Doctrine of Equivalents. Both below and here, the summary judgment hinged on whether the asserted claims are limited to the specific technology by which the frames of information are processed and displayed. At the time of the invention, there were several protocols for processing and displaying computer generated data, character based protocols and bit map protocols. In a character based system, a screen display is divided into a grid where a character, such as a letter or a number, is placed in each cell of the grid. On the other hand, a bit map protocol encodes an image with reference to the individual pixels of the display monitor. AOL and Netscape use the latter. The District Court and the Federal Circuit found that the claims in suit were limited to character based systems since the term "frame" which appeared throughout the claims was restricted to character based protocol. While normally the term frame can be used either with regard to bit map display systems or character based systems, analysis of the application and its prosecution indicates a more limited interpretation. The text is specific to characters throughout the specification. Interestingly, this was reinforced by the failure of Wang to implement a bit map protocol using the claimed system. The decision can be reviewed at: http://www.ll.georgetown.edu/Fed-Ct/Circuit/fed/opinions/98-1363.html BAZERMAN FAMILY NEPOTISM BAZERMAN FAMILY NEPOTISM Everyone has a family, even the author of these brief briefs. Brother Charles Bazerman is an academic at the University of California, Santa Barbara, who, writes on scientific English, i.e., the use of English as an aspect of scientific endeavors. This leads him to same strange areas including, occasionally, some that might be considered in his older brother's bailiwick. A case in point is his most recent book entitled The Languages of Edison's Light, published by the MIT Press. The book just won the prestigious award for 1999 Best Book in History of Science and Technology, American Association of Publishers, Division of Professional and Scholarly Publishing. Among other things, it contains a number of interesting chapters relating to patent law including, Chapter 5, Patents as Speech Acts and Legal Objects and Chapter 12, Patent Realities: Legal Stabilization of Indeterminate Texts. Among other things, the book contains examples of Edison's notebook pages, discussions of his relationship with the press, and discussions of some of Edison's light bulb patents. For those who may wish to look through another's eyes at the patent system, you can see a table of contents and Chapter 5 at the following address: http://www.ipcounselors.com/chapter5.htm |
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