|
|
|
|
|
|
||||
|
|
|
|
|
|
» Home Page » Members » Practice Areas » Clients   » Publications Articles VIP Newsletter Guide to Registering Read Excerpts  » Events & Speaking » Contact Us » 1-800-343-IDEA |
|
U.S. Intellectual Property and New Media Law Update YES, VIRGINIA, THERE IS STATUTORY DAMAGES UNDER THE ACPA Ford Motor Company v. Peter Catalanotte, (Sixth Circuit, August 2003) LESS THAN FULL JUDICATA, SO NO RES JUDICATA Storey v. Cello Holdings, LLC, 2003 U.S. App. LEXIS 20611 (Second Cir. Oct. 2003) ADVERTISING YOUR TRADEMARK AWAY Talking Rain Beverage Co., Inc. v. South Beach Beverage Company, 2003 U.S. App. LEXIS 22633 (Ninth Cir. November, 2003) YES, VIRGINIA, THERE IS STATUTORY DAMAGES UNDER THE ACPA Ford Motor Company v. Peter Catalanotte, (Sixth Circuit, August 2003) Peter Catalanotte registered the Internet domain name FORDWORLD.COM knowing Ford published a newspaper for its employees called Ford World. He never operated the Internet website. Ford only became aware that Catalanotte had the domain name when he sent an e-mail message indicating he had received offers from other interested parties and extending an opportunity to Ford to purchase the domain name. This was, of course, a little oversell since there were no other offers outstanding. Being an enterprising fellow, Catalanotte had already registered A&E.COM which it sold to Art & Entertainment Network and MRSPAULS.COM which it sold to Mrs. Paul's Kitchens, Inc. Ford sued under the ACPA and not only obtained its injunction, but $5,000 in statutory damages. Here the 6th Circuit Court affirms. The defendant argued that damage could not be awarded because he registered the domain name before the enactment of the ACPA. The 6th Circuit found that registration, trafficking, and use of domain name are separate acts upon which liability may be based. Thus, while statutory damages may not be awarded for pre-enactment registrations, trafficking which occurred after the Act could still be the basis of a statutory award. Catalanotte also argued that trafficking required an actual transaction, such as a sale or a purchase to have occurred, not merely the offer for sale or purchase. The Court of Appeal's indicated that such offering for sale was the very thing that Congress intended to stop. In the end, his collection of legal theories, did not relieve Catalanotte from paying his $5,000 statutory damages to Ford. The decision can be viewed at: http://laws.lp.findlaw.com/6th/03a0310p.html LESS THAN FULL JUDICATA, SO NO RES JUDICATA Storey v. Cello Holdings, LLC, 2003 U.S. App. LEXIS 20611 (Second Cir. Oct. 2003) This is a tangled web of suit, counter arbitration and counter-counter suit. Originally the trademark owner sued the defendant under the Anti-Cybersquatting Consumer Protection Act. The action was dismissed with prejudice. The original dismissal was based on what the court understood was a settlement. In reality there had not been a true settlement reached. The trademark owner then went to UDRP where it won a transfer of the registration for CELLO.COM to it. The losing original registrant then went to the courts for a finding to overturn the UDRP decision. The trial court found there was res judicata and actually sanctioned the trademark registrant for bringing the action. Here, the Court of Appeals reversed. The Court of Appeals found no res judicata because the basis for the UDRP action was for a later occurring event. The original suit by the plaintiff was based on trademark dilution and cybersquatting. The UDRP proceeding was based upon a letter sent by the then registrant of the domain name after the first suit was dismissed, whose intent was to allegedly profit from the registration. This was an event that occurred after the original determination and therefore was not subject of the originated judication and not bared. Accordingly, the court reversed and sent it down for a decision on the merits striking the sanctions imposed on the trademark owner. The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/2nd/027281p.pdf ADVERTISING YOUR TRADEMARK AWAY Talking Rain Beverage Co., Inc. v. South Beach Beverage Company, 2003 U.S. App. LEXIS 22633 (Ninth Cir. November, 2003) Plaintiff had obtained a trademark registration for its beverage bottle and accordingly the presumption of validity. Given that this has trade dress in a product shape, there was a presumption of non-functionality. However, as the 9th Circuit found by, that presumption was successfully rebutted and the mere registration did not enable the trademark holders to survive summary judgment. Citing TrafFix, the court noted that functionality is "when it is essential to the use or purpose of the device or when it affects the cost or quality of the device." The plaintiff's own advertisement touts the bottle's utilitarian features calling the bottle the "Grip Bottle" and using the slogan "Get A Grip!" Equally, it was acknowledged that the manufacturing considerations explained why the bottle looked the way it did. In particular, the grip features aside from making the bottle easier to hold offered structural support. Finally the bottles design fit easily into a bicycle bottle holder and that the grip area helps the bottle to retain its shape for reuse. Given all these factors, the bottle was utilitarian and could not function in a trademark despite the existence of a registration. Plaintiff's primary argument was there were a number of other possible designs for bike bottles. However, the 9th Circuit noted that in TrafFix the Supreme Court indicated that once functionality has been established "there is no need...to engage...in speculation about other design possibilities..." The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/9th/0235845p.pdf |
|
|
|
|
|
|
||||
|
|
Call for a free consultation:
|
|