|
|
|
|
|
|
||||
|
|
|
|
|
|
» 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 SHORT SHELF LIFE FOR SARA LEE’S EXTENSION OF TIME TO OPPOSE! In re Brlind Gesellschaft fr kosmetische Erzeugnisse mbH (TTAB 2005) SOMETIMES ITS NOT ALL FUN AND GAMES Incredible Technologies, Inc. v. Virtual Technologies, Inc., (Seventh Cir., March 2005) “IF WE’RE GOING TO BE EXCLUSIVE...” Watec Co., Ltd., v. Chia C. Liu and Watec Company America (9th Cir. - March, 2005) PLAINTIFF ENTITLED TO LEARN IF LONG ARM IS LONG ENOUGH Commissariat a L'energie Atomique v. Chi Mei Optoelectronics Corporation, et al., (Federal Cir. - January, 2005) SHORT SHELF LIFE FOR SARA LEE’S EXTENSION OF TIME TO OPPOSE! In re Brlind Gesellschaft fr kosmetische Erzeugnisse mbH (TTAB 2005) Böörlind Gesellschaft füür; kosmetische Erzeugnisse mbH GmbH filed a request for extension of protection under Section 66(a) of the Trademark Act for the trademark S (Stylized) in respect of cosmetics and related goods in Class 3. The application was published for opposition and Sara Lee Direct, LLC and Sara Lee Corporation ("Sara Lee") filed, by mail, a ninety day extension of time to oppose. By order dated December 29, 2004, the Board granted Sara Lee's extension. However, upon further review of Sara Lee's filing, the Board, in a citable decision, vacated its order and denied the potential opposer's extension request. The Board held that extensions of time to oppose applications based on Section 66(a) must be filed electronically, as set forth in the Madrid Protocol Implementation Act. Although, the Board acknowledged that denying Sara Lee's extension request was a harsh result, it nevertheless determined that such a finding was necessary to ensure the Board's compliance with the notification requirements under the Madrid Protocol and the Madrid Protocol Implementation Act. The decision can be viewed at:http://ttabvue.uspto.gov/ttabvue/ttabvue-79000042-EXT-3.pdf SOMETIMES ITS NOT ALL FUN AND GAMES Incredible Technologies, Inc. v. Virtual Technologies, Inc., (Seventh Cir., March 2005) Plaintiff contends that Defendant's video golf game infringed its video golf game in the video display screen and on the instruction guides provided on the control panels. Plaintiff also alleged trade dress infringement of the control panel. In an entertaining opinion from what appears to be a golf enthusiast Judge, the Seventh Circuit affirmed the lower court opinion denying a preliminary injunction. Plaintiff sells a very successful video golf game called Golden Tee, one of the best selling video arcade games of all times. Plaintiff has sold the game since 1989 and has several copyrights on various versions of the game. I'm sure many have seen this game, it appears in a standard arcade cabinet in bars and arcades throughout the world. Defendant set out to develop its own "Golden Tee." To do so it purchased a Golden Tee unit and sent it to its design firm to develop a similar game. The design firm was instructed by Defendant to develop a golf game that would allow players of Golden Tee to easily switch to playing the Defendant's golf game. The design firm worked from an existing golf game ––Tiger Woods Golf –– which was designed for play on a personal computer using a mouse and altered it to be used in an arcade cabinet using a track ball and buttons similar to those used in the Golden Tee game. No one doubts there are major similarities. However, only the expression of a golf game could be copyrightable. The Appeals court relied on the scenes a faire doctrine (common incidents, characters and settings to a given topic are not copyrightable), and the premises that methods of operation and useful and functional elements are not copyrightable to affirm the lower court opinion of non-infringement. The decision can be viewed at:http://caselaw.lp.findlaw.com/data2/circs/7th/033785p.pdf “IF WE’RE GOING TO BE EXCLUSIVE...” Watec Co., Ltd., v. Chia C. Liu and Watec Company America (9th Cir. - March, 2005) This case is yet another example of those messy situations where an 'exclusive distributorship' arrangement is suddenly not so exclusive, and where a manufacturer's trademarks are used and registered by the exclusive distributor. The plaintiff Japanese corporation ('Watec Japan') began manufacturing and selling miniature hi-tech surveillance cameras in 1987, using the WAT and WATEC marks on their products. First sales in the U.S. commenced in 1989. In 1990 plaintiffs orally agreed with the first named defendant, Liu, that he would set up and head the second-named defendant corporation ('Watec America') to act as Watec Japan's exclusive distributor for its products in North America. Watec America then registered the WAT and WATEC trademarks before the USPTO in 1992 and 1993 respectively, which registrations subsequently became 'incontestable' under 15 U.S.C. § 1065. In 1995 Watec Japan sold its 51% stake in Watec America. The problem arose in 1998 when Watec America began selling cameras, other than those supplied by Watec Japan, under the WAT and WATEC trademarks. Watec Japan sued Liu and Watec America for, inter alia, trademark infringement based on its earlier common law rights in the marks. Watec America countersued for trademark infringement on the basis of its incontestable registrations. At trial the jury found in favor of Watec Japan, and awarded the plaintiffs damages of over $5 million. The judge also found the case 'exceptional' under 15 U.S.C. §1117(a) due to defendant's intentional conduct, therefore justifying an award of attorney's fees to the plaintiffs in the amount of $300,000. On appeal to the Ninth Circuit Court of Appeals the defendants argued, inter alia, that (i) the plaintiffs had not made the requisite showing to the jury to overcome Watec America's incontestable federal trademark rights, and (ii) that the district court erred in awarding Watec Japan $300,000 in attorney's fees. (i) The Court of Appeals rejected defendant's claim that the plaintiffs had not made the requisite showing to the jury to overcome Watec America's federal trademark rights. The Court found that, despite some conflicting evidence on the matter, the jury had sufficient evidence to conclude that Watec Japan had used the WAT and WATEC marks in the U.S. before Watec America registered the marks, and that such use was ongoing. There also existed substantial evidence that Watec America used the marks under a licensing agreement with Watec Japan, since many advertisements placed by Watec America bearing the trademarks specifically stated that "WATEC is a registered trademark of Watec Co. (Tokyo, Japan)." (ii) The Court vacated the district court award of attorney's fees in favor of the plaintiff and remanded. The Court held that the determination whether a case was exceptional under 15 U.S.C. §1117(a) is a matter for the judge, not the jury, to decide whether the losing party has engaged in the sort of malicious, fraudulent, deliberate or willful conduct normally required for a case to be deemed exceptional. In this case the judge had deemed the case exceptional apparently because the jury had found that the defendants' infringing conduct was intentional. The decision can be viewed at:http://caselaw.lp.findlaw.com/data2/circs/9th/0355823p.pdf PLAINTIFF ENTITLED TO LEARN IF LONG ARM IS LONG ENOUGH Commissariat a L'energie Atomique v. Chi Mei Optoelectronics Corporation, et al., (Federal Cir. - January, 2005) Plaintiff CEA sued Taiwanese corporation "Chi Mei", et al. for infringement of patents for LCD displays (computer screens). The District Court dismissed the suit for lack of personal jurisdiction, and Plaintiff CEA appealed. Plaintiff had submitted evidence that foreign defendant had "substantial revenue from services or things used or consumed within" Delaware, and that Defendant's products, incorporated by OEMs into computer products, were likely to reach Delaware. Plaintiff also sought additional "jurisdictional discovery" to flesh out its understanding of Defendant's contacts in and to the forum state. In response, Defendant did not dispute Plaintiff's assertions, but (perhaps somewhat disingenuously) countered that it had no direct involvement in Delaware [unsurprisingly, since it was selling components to OEMS –– ed.] and that the mere introduction of Defendant's products into the "stream of commerce" was not sufficient to establish personal jurisdiction under the Delaware long arm statute. Court of Appeals for the Federal Circuit reversed, holding in pertinent part that (1) Plaintiff had shown that the defendant, though a foreign corporation, had used Delaware distribution channels that likely resulted in substantial sales of its products in Delaware; (2) "jurisdictional discovery" was required to determine whether any additional conduct by defendant was required to meet demands of due process under the "stream of commerce" theory of personal jurisdiction. Thus, the case should not have been dismissed for lack of personal jurisdiction; the CAFC vacated the lower court ruling and remanded the case to the District Court. The decision can be viewed at: http://www.fedcir.gov/opinions/04-1139.pdf |
|
|
|
|
|
|
||||
|
|
Call for a free consultation:
|
|