US TRADE MARK PROTECTION EXTENDED TO FOREIGN MARKS EVEN WHERE THESE MARKS ARE NOT REGISTERED IN THE USA
Artists , Internet , Record Labels , Trade Mark / September 2003

TRADE MARK Record Companies, Artists, Merchandisers, Internet International Bancorp LLC et all -v- Societe des Bains et du Cercle des Etrangers A Monaco (May 19, 2003) In a split decision a United States Court of Appeal (Fourth Circuit) held that a non-US Company’s use of a non-US trademark in advertising in the United States was enough to give that company trade mark protection under US law despite the fact that the mark was not registered in the US. In US law an unregistered mark can be protectible if it is (a) distinctive and it is (b) “used in commerce”. In this case, concerning the company (SBM) which owns the Casino de Monte Carlo, the court held that extensive advertising in the US and sale of services to US citizens in the USA was sufficient to satisfy the second requirement – that mark was used in commerce – even though the actual business was based in Monte Carlo and the services provided outside of the USA. SBM spent more than $1 million annually on trade fairs, mail shots, telephone marketing and sponsorship. SBM Company maintained a small office in New York. SBM had a valid trade mark registration for ‘Casino de Monte Carlo’ in Monaco….

LEGO BLOCK NOT PROTECTED AS A TRADE MARK IN CANADA
Artists , Internet , Patents , Record Labels , Trade Mark / September 2003

TRADE MARK, PATENTS Record Labels, Artists, Merchandisers, Internet Kirkbi AG & Lego Canada Inc. -v- Ritvik Holdings Inc. In this case the Federal Court of Appeal held that the design of a lego block was not protected by Trade Mark in Canada and that functional features of a toy design are properly the subject of patent law and not subject to trade-mark protection. The facts of the case where that the Canadian company Megabloks made a building brick very similar to those produced and distributed for decades by the Danish manufacturer, Lego. In an attempt to halt the sale of the Mega Bloks bricks, Lego brought a passing off action on the basis that the Mega Bloks bricks infringed the (unregistered) trade-mark rights of Lego in the distinguishing guise of the bricks particularly the protruding knobs by which the bricks interlocked. The Court of Appeal upheld the decision of the Federal Court, Trial Division who dismissed Lego’s claim and held that due to the doctrine of functionality, the look of the Lego bricks could not be the subject of a valid trade-mark. Functionality is the proper subject matter of patents, not Trade Marks. The Federal Court of Appeal commented that Lego, through…

CANADIAN GOVERNMENT WINS BACK DOMAIN NAMES
Internet , Trade Mark / September 2003

TRADE MARK Internet The governments of Canada and Alberta have won disputes over registration of several official-sounding .ca domain names. In each case, the arbitrators ruled that the government has rights to the name and that the domains were registered in bad faith. The federal government won the rights to the domains www.governmentofcanada.ca, www.governementducanada.ca, www.canadiancustoms.ca and www.statscanada.ca among others. The government of Alberta won the rights to the domain www.albertagovernment.ca. In the case relating to the federal government claims, the arbitrators found that many of the domain names wereconfusingly similar to the names of government departments, even though they were not quite the same. The arbitrators found that the test is resemblance based on first impression and imperfect recollection. The registrant’s defence was that he had a legitimate interest in the domain names because he planned to use them to criticize the government and specific departments was rejected by the arbitrators, who noted that the domains had been used for different purposes and had been offered for sale by the registrant. In addition, the federal government had previously won similar disputes with the same registrant over .com and .org domain names. See: http://www.cira.ca/en/dpr-decisions/00011govt-of-canada-En.pdf or http://www.cira.ca/en/dpr-decisions/00012-albertagovernment-en.pdf For comments on US and Canadian IP law, see E-TIPS: e-tips@dww.com

WIPO RESOLVES EURAIL DOMAIN NAME DISPUTE
Artists , Internet , Record Labels , Trade Mark / September 2003

TRADE MARK Record Companies, Artists, Mechandisers, Internet An administrative panel of the World Intellectual Property Organization (WIPO) has recently decided a case under the Uniform Domain Name Dispute Resolution Policy (UDRP) between Eurail (the European joint venture supplying tickets and passes for rail and ship travel in Europe) as Complainant and Epasses of San Francisco as Respondent. Eurail uses the names “Eurailticket” and “Eurail Pass” for its tickets and passes. It has registered “EURAIL” and “EURAILPASS” as trade-marks in the US and other countries. Epasses has a web site offering Eurail Passes and other tickets for use on railways in Europe. The dispute concerned the domain names www.eurail.biz, www.eurailpass.biz and www.eurailpasses.biz. which the Respondent registered. The Panel applied the three-part test set out under paragraph 4 of the UDRP. (1) It ruled that the disputed domain names are confusingly similar to the Complainant’s registered trade-marks. (2) However, a distinction for the purpose of the second part of the test was made between eurailpass.biz and eurailpasses.biz on the one hand and eurail.biz on the other. In the former case, there was no evidence that Epasses use of the domain names and sites had been illegitimate, especially in view of its legitimate…

US SENATOR VOICES CONCERN OVER RIAA TACTICS
Copyright , Internet , Record Labels / September 2003

COPYRIGHT Record Labels, Internet US Senator Norm Coleman, chairman of the Senate Permanent Subcommittee of Investigations, is concerned that the recording industry is taking an extreme approach in its attempt to quash online file trading and may hurt innocent people in the process and has asked the Recording Industry Association of America (RIAA), to provide detailed information about the more than 900 subpoenas it has issued so far. As previously detailed in Law Updates, the RIAA has issued the subpoenas to universities and Internet service providers in order to obtain the names of file traders it suspects are violating copyrights. At the end of the month, the music trade group plans to file lawsuits against those caught offering “substantial” amounts of music for others to share. The Senator has asked for five pieces of information from the RIAA: Copies of all the subpoenas, a description of the standard the RIAA uses to file an application for a subpoena, and an explanation of how the group is collecting evidence against alleged file sharers. Coleman also wants to know how the RIAA is protecting computer users’ privacy and how the trade lobby is protecting people from erroneous subpoenas. The RIAA issued a…

THE COPYRIGHT CAGE

COPYRIGHT Record Companies, Internet, Music Publishers, Artists, Merchandisers, Radio, Television INTRODUCTION : This article, by Professor Jonathan Zittrain, suggests a new approach to copyright law in the digital age. The article was first published on www.legalaffairs.org in their July/August edition. Bars can’t have TVs bigger than 55 inches. Teddy bears can’t include tape decks. Girl Scouts who sing “Puff, the Magic Dragon” owe royalties. Copyright law needs to change. By Jonathan Zittrain. A couple of years ago I was talking with a law school colleague about cyberlaw and the people who study it. “I’ve always wondered,” he said, “why all the cyberprofs hate copyright.” I don’t actually hate copyright, and yet I knew just what he meant. Almost all of us who study and write about the law of cyberspace agree that copyright law is a big mess. As far as I can tell, federal courts experts don’t reject our system of federal courts, and criminal law experts split every which way on the overall virtue of the criminal justice system. So what’s with our uniform discontent about copyright? I think an answer can be gleaned from tax scholars. Without decrying the concept of taxation, every tax professor I’ve met regards the U.S. tax…

PAYMENT TO CONVICTED FARMER SPARKS NEW PRESS ROW
Internet , Regulation / September 2003

PRESS REGULATION Television, Radio, Internet, Print The UK Government is to review the law after convicted murderer Tony Martin sold his story to the Daily Mirror for £125,000. Martin was convicted of murder after shooting a 16 year old burglar in the back and wounding his accomplice as they tried to burgle his remote and rundown farm, Bleak House. Martin’s original sentence was reduced from life to five years on the grounds of diminished responsibility and he served three years of this. Martin also signed an exclusive deal with the ITV programme Tonight With Trevor MacDonald, also for a fee, to give his first interview on UK television. At one point the murdered burglar’s accomplice was going to sue Martin for his own injuries on legal aid. The accomplice, Brendan Fearon, has just been released from prison on drugs related offences. The Press Complaints Commission Code states that: Payments or offers of payments for stories, pictures or information must not be made directly or through agents of convicted or confessed criminals ÿ…. except where the material concerned ought to be published in the public interest and payment is necessary. The public interest includes (i) detecting or exposing crime or serious misdemeanour…

R -v- Hunt Sentencing for lower level piracy
Copyright , Record Labels / September 2003

COPYRIGHT Record Labels A 42 year old plumber who turned his hand to selling counterfeit and bootleg CDs from a stall at a Record Fair was sentenced to a 120 hours community penalty and ordered to pay £250.00 costs after Trading Standards Officers seized pirated and bootlegged CDs worth approximately £9,000 in a raid organised by the British Phonographic Industry (BPI) and EMI Records. Hunt admitted 5 offences under the Copyright Designs & Patents Act 1988 and the Trade Marks Act 1994. The 900 CDs and 300 videos found at the Fair in Norwich included bootleg copies of recordings by Bob Dylan, U2 and Elvis.

RINGTONES SET TO OUTSELL CD SINGLES IN THE UK
Copyright , Internet , Record Labels / September 2003

COPYRIGHT Record labels, Telecommunications, Internet  Sales of downloadable ringtones for mobile phones look likely to outstrip CD singles in the UK in 2004. The ringtone market, estimated to be worth more than £70 million in the UK, is increasing rapidly. Sale of ringtones in 2002 were £40 million. CD singles are heading the other way, with sales currently at about ÿ£150 million (2002) but with an estimated 37% drop in 2003 on last year’s figures. August ’03 favourites include Flying on the Wings Of Love by XTN and Crazy in Love by Beyonce & Jay-Z. COMMENT : With ringtones costing between £1.50 and £3 to download in the UK, the mobile phone operators, labels and music publishers have found a lucrative new maket. Another new growth area is the ‘spoken word’ – a voice rather than a ringtone which announces an incoming call or text. This might prove a new area of legal dispute – where imitators provide the voice of well known celebritiy for a download – for example, as Sir Michael Caine or Arnie as the Terminator alongside that star’s well known catch phrase or parody of that phrase. It will be interesting to see if artists seek to assert character rights over…

Article: DON’T SHOOT THE MESSENGER
Articles / September 2003

Click here to download this article as a PDF file (.pdf) “Don’t Shoot The Messenger: Copyright Infringement in the Digital Age” by Ben Challis Music Industry Lawyer and Senior Lecturer in Law, Buckinghamshire Chilterns University College High Wycombe, Buckinghamshire, England, UK September, 2003 – with subsequent addenda From the humble VHS machine to Internet file swapping, the issue of hardware and software – which has both infringing and non-infringing uses – has long troubled the courts on a global basis. Recently, different technologies have faced their scrutiny: since 2000 a number of cases have been focused on peer-2-peer file swapping on the Internet, but manufacturers and others who provide, produce, write and manufacture software and/or hardware capable of copyright infringement, have also found themselves at the receiving end of lawsuits.   In 2003 the Motion Picture Association of America (MPAA) launched an action in the High Court of England & Wales against 321 Studios – which produces software which allows the copying of DVDs by consumers. The MPAA has already filed an action in the US (December 2002) seeking to prohibit the sale of 321 Studios’ software titles DVD X Copy and DVD Copy Plus. The MPAA also wants any profits from sales as recovery…