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U.S. Intellectual Property and New Media Law Update SIGN DESIGN BLOWN AWAY TrafFix Devices, Inc. v. Marketing Display, Inc. (Supreme Court - March 20, 2001) THE CHILDREN'S PLACE IS TO BE SEEN AND HEARD TCPIP Holding Company, Inc. v. Haar Communications Inc. et al. (Second Circuit - February 28, 2001) YOU CAN STILL HAVE MAIL America Online, Inc. v. AT&T Corp. (Fourth Circuit - February 28, 2001) IMPERFECT NOTICE OF THE DIGITAL MILLENNIUM ALS Scan Inc. v. Remarq Communities (Fourth Circuit - February 6, 2001) DIAL-A-MATTRESS GETS THE RIGHT NUMBER In re Dial-A-Mattress (Federal Circuit - February 13, 2001) PLEASE NOTE: NOTE: Jason M. Drangel and Ramsaran Maharahj, Jr. will be attending this year's INTA conference in San Francisco. If anyone is interested in meeting with them, please do not hesitate to contact us at: bdpc@ipcounselors.com. SIGN DESIGN BLOWN AWAY TrafFix Devices, Inc. v. Marketing Display, Inc. (Supreme Court - March 20, 2001) In this case, the Supreme Court continues to set the parameters of trade dress in product shapes. The products here are those temporary road signs you see with such gems of English as "road work ahead." The Plaintiff obtained two utility patents for a sign support mechanism with two springs to keep outdoor signs upright despite adverse wind conditions. When the patent expired, a company copied the design and the Plaintiff sued for, among other things, infringement of its trade dress in the appearance of the sign. The Seventh Circuit found the design non-functional despite the patents since it would not be impossible for other companies to devise acceptable alternatives to the Plaintiff's design, such as the use of four springs. The Supreme Court reminded all concerned that proving non-functionality lay with the person asserting the trade dress right and that the existence of a patent directed to the feature which was claimed as trade dress is very strong evidence of its functionality. Great weight should be given to the presumption that claimed features are functional until proven otherwise by the party seeking trade dress protection. The Court distinguished this from the case where purely arbitrary, incidental ornamental aspects of a feature incidentally found in the patent claims. The Supreme Court also indicated that to be considered functional, it is not necessary that the particular product configuration be a competitive necessity, all that is required is that either it be essential to the use or for the purpose of the article or it effects the cost or quality of the article. This decision can be viewed at: http://supct.law.cornell.edu/supct/html/99-1571.ZO.html THE CHILDREN'S PLACE IS TO BE SEEN AND HEARD TCPIP Holding Company, Inc. v. Haar Communications Inc. et al. (Second Circuit - February 28, 2001) Here, the Second Circuit reviewed the preliminary injunction barring use of 81 Internet domain names consisting of the variations of the words "The Children's Place." Plaintiff has used the mark for 30 years for stores selling children 's clothing and accessories. It has grown from 87 stores in 1994 to 228 in 1998 and sales volume has increased during the same period from approximately $100M to approximately $280M. Plaintiff owns two Internet domain names "tcpkids.com" and "childrensplace.com." The Defendant desired to create a portal on the Internet for children that would facilitate surfing the web for materials concerning children by providing links to a broad array of products, services and information. It obtained "thechildrensplace.com" domain name. After Plaintiff sent a letter demanding that Defendant cease and desist from using Plaintiff's mark, Defendant purchased at least 66 more domain names containing variations of the words "children" and "place." Defendant tried to sell Plaintiff a package of these domain names for half a million dollars. Plaintiff sued both for dilution and trademark infringement. A preliminary injunction was granted barring Defendant from using, as part of its domain name or otherwise, The Children's Place or any colorable imitation thereof including the 81 names which had been obtained by Defendant. The Second Circuit found that the Dilution Act accords its special broad protection only to marks that have a significant degree of distinctiveness. It concluded that The Children's Place was not distinctive despite its established secondary meaning. The Second Circuit also found that the mark was not famous, since it was only well known in one area of the country. On the other hand, it found trademark infringement by some, but not all, of the 81 domain names. It, thus, continued the injunction for those closest to Plaintiff's marks and eliminated the injunction with regard to others. The decision can be viewed at: http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=2nd&navby=case&no=997744 YOU CAN STILL HAVE MAIL America Online, Inc. v. AT&T Corp. (Fourth Circuit - February 28, 2001) AOL sued AT&T for infringement of three trademarks that AOL claimed with regard to its Internet services "Buddy List," "You Have Mail" and "IM." The District Court entered summary judgment in favor of AT&T finding each was generic. Plaintiff appealed to the Fourth Circuit. The appeal is based on two facts: "Buddy List" is a registered trademark and, secondly, the Court did not look to AOL's market surveys regarding the public's understanding. The Federal Circuit held that the PTO's decision to register "Buddy List" should be treated as prima facie evidence that the mark was suggestive, not generic. By the registration's existence, the question of whether it was generic, a material fact was put in issue, which fact should not be resolved by summary judgment. With regard to "You Have Mail," the Court reviewed the long history of that phrase even before AOL first used it. From the generic use by Plaintiff and the rest of the industry, there was no question that the mark was generic and, thus, surveys were not relevant. The District Court's decision upheld. The decision can be viewed at: http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=4th&navby=case&no=992138P IMPERFECT NOTICE OF THE DIGITAL MILLENNIUM ALS Scan Inc. v. Remarq Communities (Fourth Circuit - February 6, 2001) This case presented an issue of first impression to the Fourth Circuit. The question was "whether an Internet service provider enjoys a safe harbor from copyright infringement liability under Title II of the Digital Millennium Copyright Act ("DMCA") when it is put on notice of the infringing activity on its system by an imperfect notice." The final answer is, substantial compliance with the DMCA is sufficient. While the Internet case law is loaded with pornographers as Defendants, here we have one as a Plaintiff. ALS Scan was engaged in the business of creating and marketing "adult" photographs which it displayed on the Internet to paying subscribers. The Defendant was an on-line Internet service having 24,000 subscribers to its news group base with access to over 30,000 news groups which cover thousands of subjects. Defendant does not monitor the news groups, nor censor the content of the articles posted on the news group by subscribing members. Two of the news groups use ALS Scan's name in the news group title and contain hundreds of postings that infringe ALS Scan's copyrights. Plaintiff sent notice indicating that both of the news groups were created for the sole purpose of violating ALS Scan's copyrights and trade names, and demanding that Defendant cease and desist from carrying these news groups within 24 hours. Defendant refused, but advised Plaintiff that it would eliminate individual infringing items from the news group if ALS Scan identified them with sufficient specificity. ALS Scan pointed out that there were over 10,000 copyrighted images that appeared in the news groups over a period of several months, and the only purpose of these news groups was to air these images. Plaintiff sued for copyright infringement and violation of Title II of the DMCA. The primary question was whether such generalized notice was sufficient with regard to individual pictures. The Court found that DMCA's protection of Internet service providers disappears the moment the service provider loses its innocence, i.e., the moment it becomes aware that the third party is using its system to infringe. While there are specific requirements as to the required notice, substantial compliance rather than perfection is all that is required. The Act itself uses the term "substantially" in connection with its notice requirements. Accordingly, the Fourth Circuit reversed the District Court granting of summary judgment in favor of the ISP by removing the safe harbor defense and remanded the case for trial. The decision can be viewed at: http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=4th&navby=case&no=00351P DIAL-A-MATTRESS GETS THE RIGHT NUMBER In re Dial-A-Mattress (Federal Circuit - February 13, 2001) This is an appeal to the Federal Circuit of a refusal to register "1-888-M-A-T-R-E-S-S" as a service mark either as generic for the relevant services and, therefore, unregistrable or merely descriptive without sufficient proof of secondary meaning. The TTAB found that the mark was the legal equivalent of the word "mattress" which standing alone is generic for retail services in the field of mattresses. In order to invalidate the mark, the PTO must produce evidence that the meaning to the relevant purchasing public accords to the proposed mnemonic mark as a whole. Here, the Federal Circuit took the amazing leap of finding that there was no segment of the relevant public which refers to the class of shop at home mattress retailers as 1-888-M-A-T-R-E-S-S. With regard to descriptiveness, the application was an intent-to-use application. In such application the applicant can only established acquired distinctiveness where it showed that the "same mark" acquired distinctiveness for related goods or services which would transfer to the new goods and services. The question becomes are "marks such as applicant's "(212) M-A-T-T-R-E-S" the legal equivalent of 1-888-M-A-T-R-E-S-S. The Federal Circuit found it was and reversed the decision of the Board. The decision can be viewed at: http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=Fed&navby=case&no=001197 |
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