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U.S. Intellectual Property and New Media Law Update DESIGNERS, DESPAIR - THERE AIN'T NO SUCH THING AS AN INHERENTLY DISTINCTIVE DRESS Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (U.S. Supreme Court - March 22, 2000) A TICKET TO SUCCESS Ticketmaster Corp., et al. v. Tickets.Com, Inc. (C. D. Cal. - March 27, 2000) IN REM IS RIGHT Caesars World, Inc. v. Caesars-Palace.Com, et al. (E. D. Va. - March 3, 2000) ANYONE CAN USE AN ALE HOUSE Ale House Management, Inc. v. Raleigh Ale House, Inc. (Fourth Cir. - March 1, 2000) ANOTHER DAY, ANOTHER ARTICLE On the US Anticybersquatting Consumer Protection Act PLEASE NOTE: SERVICE INTERRUPTUS: We are sorry for the six week interruption in the newsletter, but we have happily suffered an uninterrupted stream of new matters. Hopefully, we have the flood under control. As long as we are saying I'm sorry, we are in the process of having the back issues of the newsletter updated and hopefully, within the next month, you wihttp://www.ipcounselors.com.Now on to the not so late breaking news. DESIGNERS, DESPAIR - THERE AIN'T NO SUCH THING AS AN INHERENTLY DISTINCTIVE DRESS Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (U.S. Supreme Court - March 22, 2000) We all know Justice Scalia is conservative, but it is interesting to see the same principles applied to trademark law. In this case, the Supreme Court has set the limits on when a product design is distinctive and, therefore, protectable under Section 43(a) of the Lanham Act. As you may recall, in the Vol. III, Issue II Newsletter (January 18, 1999), we discussed the alleged Wal-Mart trade dress infringement claim whereby Wal-Mart was alleged to have copied a line of children's clothing produced by Samara Bros. The line was variations on the theme of one-piece seersucker outfits decorated with appliques or hearts, flowers, fruits, etc. The decision facing the Supreme Court was whether trade dress in product design (as contrasted to packaging design) could be inherently distinctive or whether protection would require proof of secondary meaning in order to fall under the Lanham Act umbrella. The Court first noted it already found that color marks (i.e., marks consisting solely of coloring an object a particular shade) could never be inherently distinctive. The Court went on to find that product designs, like color, could not be inherently distinctive. The Court noted that consumers are predisposed to regard word marks or packaging as product identification since by their nature they tell a customer that they refer to a brand. The Court noted "the fact that product design almost invariably serves purposes other than source identification, not only renders inherent distinctiveness problematical; it also renders applications of an inherent distinctiveness principle more harmful to other consumer interests." Along the way, the Supreme Court has raised some interesting speculations. First, of aesthetic functionality, it specifically noted a showing of non-functionality "may involve considerations of its aesthetic appeal." The Court distinguishes Two Pesos since to Justice Scalia and the majority of the Court, the decor of a restaurant does not constitute product design. Justice Scalia finds the Mexican restaurant theme of Two Pesos to be either product packaging or a tertium quid akin to product packaging. Those of us who went to Jesuit law schools have a leg up here, for the remainder, this means a third way or something new and different. The decision can be viewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=US&navby=case&vol=000&invol=99-150 A TICKET TO SUCCESS Ticketmaster Corp., et al. v. Tickets.Com, Inc. (C. D. Cal. - March 27, 2000) For those of you who have never attempted to get tickets to a baseball game, Wagner or rock concert, Ticketmaster sells tickets over the Internet. Each event has its own web page accessible through the Ticketmaster home page. The home page lists all the available events, a description of how to order tickets and the terms and conditions which prescribe, among other things, linking for commercial purposes. Ticketmaster has an exclusive with most of the listed events. Defendant also operates a web site. It does not sell the tickets per se, it provides information as to where and how tickets may be purchased from others and provides a link to a purchase location on the web. These links are deep links, i.e., one click does not bring you to Ticketmaster's home page, but rather the page for the specific event. It does tell its customers that these tickets are being sold by another ticketing company and the Ticketmaster's interior pages do contain its logo. There is some copying of information insofar as Ticketmaster's description of the event is used to formulate the listing on the Defendant's page as an enticement to link. In other words, the list of possible events on the Defendant's home page is derived from the Ticketmaster's web page. The first claim was for copyright infringement. The Court found that the use of the Plaintiff's information as to events on the Defendant's web page is not copyright infringement since it was only the reporting of facts, not its expression and the presentation of the underlying data was different between the two sites. The Court also found that hyperlinking does not itself involve a violation of the Copyright Act since no copying is involved, it is merely a transfer to Plaintiff's web page. The only reason the first claim was not dismissed on motion was the Complaint itself stated that there was copying and the Court was under an obligation to read it in the best possible light for Plaintiff. The second claim is for breach of the terms and conditions set forth in the home page of the Ticketmasters site which bans deep linking. Since the terms and conditions do not have to be read, nor did the user have to agree to the terms by clicking on them, the Court found that putting the terms on the web site did not create a contract. Equally, the Court found that the third, fourth and fifth claims (passing off, reverse passing off and false advertising) are unsupported by the exhibits attached to the original Complaint. While the Complaint also alleges deep linking as an example of unfair competition, the Court concludes that deep linking, by itself does not necessarily involve unfair competition. Finally, the Court found preemption by the copyright laws in the state misappropriation, trespass, unfair business practices and unjust enrichment. Not much of a suit was left. The decision can be viewed at: http://gigalaw.com/library/ticketmaster-tickets-2000-03-27.html IN REM IS RIGHT Caesars World, Inc. v. Caesars-Palace.Com, et al. (E. D. Va. - March 3, 2000) This is a first case regarding the constitutionality of in rem proceedings under the new Anti- Cyberpiracy Consumer Protection Act, 15 U.S.C. 1125(d). Plaintiff Caesars World brought an omnibus in rem proceeding against a large number of defendants by amending an original Complaint after passage of the Cybersquatting Act. Two of the multitudes stayed to defend. Casares.com motioned for dismissal of the second amended Complaint arguing that the Complaint should be dismissed for lack of in rem jurisdiction since the provisions of the Anti-Cybersquatting Consumer Protection Act were purportedly unconstitutional both on their face and as applied. Defendant Caesarcasino.com further added to the stew that the in rem proceeding violates due process in exercising jurisdiction. Here, the Court found that the Anti-Cybersquatting Consumer Protection Act was a classic example of in rem proceedings since the remedy related solely to the res, that is the domain name registration. The Court found that the state created the property and later decided where the domain name registry was and there was no prohibition in a legislative body making something property quoting that "even if a domain name is no more than data, Congress can make data property and assign its place of registration as its situs." The Court also dismissed the argument that they would first have to sue and lose on the issue of jurisdiction before the in rem proceeding is available. The Court found that pleading the lack of personal jurisdiction was sufficient. The decision can be reviewed at: http://www.ferencelaw.com/lawbytes/caesars.html ANYONE CAN USE AN ALE HOUSE Ale House Management, Inc. v. Raleigh Ale House, Inc. (Fourth Cir. - March 1, 2000) Plaintiff is the operator of a small chain of restaurants supplying food and beer in Florida. It sued to stop Raleigh Ale House from opening similar types of facilities in Raleigh, North Carolina, claiming a property interest in the words "ale house," the exterior and interior appearance of the facility and a copyright of its floor plan drawing. Both the District Court and, in this case, the Fourth Circuit, found little in the claim for "ale house" proprietorship. Plaintiff operated twelve facilities throughout Florida, each one having been named after its geographic location plus the words "ale house" (e.g., Orlando Ale House). Each such ale house looked similar, a rectangular building with a simulated tower or two on its roof and a sign at the side designating the facility's name in red block letters. Other than that, however, they did not share a common color scheme, size or shape. The building's reflect different architectural styles and are constructed of dissimilar materials. The interiors convey the image of wood and brass decorated pub or pub-style restaurants. It essentially has a rectangular bar and a varying number of seats around the bar. There are numerous variations between locations. The Defendant wanted to construct an ale house in what had previously been a Chinese restaurant. Their architects came up with something with a tower on the outside and vaguely pub-like on the inside, with a central island. The issue of copying was far from proved. The Courts noted that even if such had occurred, in and of itself this would not establish a violation of the Trademark Act. Some proprietary interest is necessary before trademark protection applies. Plaintiff argued that while "ale house" may be generic in some applications, such as in reference to a neighborhood English pub, it was not generic when it referred to an establishment that served both food and beer. Defendant produced an array of evidence from newspapers, dictionaries, books and other publications to determine the term "ale house" is generic and refers to several types of facilities. As one who has eaten many a pork pie, ale houses traditionally sell food. The Plaintiff's answer was that all this evidence was inadmissible hearsay. After the Fourth Circuit stopped laughing, it noted that the evidence was not presented for its truth but for the fact of the public perception and went on to say that an ale house was no more than an equivalent of a "bar," "lounge," "pub," "saloon," or "tavern." Given the broad variation in the exterior appearances of Defendant's "ale houses," the trade dress argument centered on the interior design. The Court noted, however, that as with generic trade names, the trademark law does not protect generic trade dress. Here, it found the trade dress couldn't be considered because it was well known, common and a mere refinement of commonly adopted and well known forms of ornamentation. The Court was equally dismissive of the copyright claim in the architectural drawings of the floor plan. The Court found that a comparison between Plaintiff's various architectural floor plans and Defendant's floor plan shows at most a copying of an idea or concept, but not a copying of the plans themselves. This decision may be viewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=4th&navby=case&no=991175P ANOTHER DAY, ANOTHER ARTICLE On the US Anticybersquatting Consumer Protection Act The latest article by Bazerman & Drangel attorneys is on the US Anticybersquatting Consumer Protection Act and just appeared in Sweet & Maxwell's Entertainment Law Review Vol 11 Issue 4, April 2000. The article can be viewed at: http://www.ipcounselors.com/acpa.htm |
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