Trademark Blog Entries

On Monday, Judge Richard Sullivan of the Southern District of New York ruled resoundingly for eBay in its defense against Tiffany’s various claims of trademark infringement. Coming as it does in the wake of eBay’s $63 million loss to Louis Vuitton in France, this decision stands as an unambiguous breath of sanity. It’s great to see that France’s nakedly protectionist, moral rights-influenced, lack-of-first-sale-doctrine decision has been quarantined to France for the time being. As Judge Sullivan affirmed, “The law clearly protects secondary markets in authentic goods.”

The Court detailed the myriad ways in which eBay extended itself in trying to accommodate Tiffany by removing listings featuring counterfeit Tiffany merchandise.

The first Senate hearing I attended struck me as a “dog and pony show” since the witnesses were presented for display purposes, merely echoing the pre-determined opinions of the presiding Senators. I’m beginning to see the animals in a less benign light.

Today, Senator Baucus (D-MT), Chairman of the Senate Finance Committee, held a hearing on “International Enforcement of Intellectual Property Rights and American Competitiveness,” with Ranking Member, Senator Grassley (R-IA), in the wings and with Senators Kyl (R-AZ) and Roberts (R-KS) making cameo appearances towards the end. As for the witnesses, the deck was stacked, as appears to be more the norm than the exception.

In its “Declaration on the World Economy”, the G-8 included an endorsement of ACTA and ongoing efforts to “standardize” IP enforcement through customs organizations. “We encourage the acceleration of negotiations to establish a new international legal framework, the Anti-Counterfeiting Trade Agreement (ACTA), and seek to complete the negotiation by the end of this year,” the statement says.

So we have a major endorsement of ACTA from the leadership of Canada, France, Germany, Italy, Japan, Russia, the United Kingdom, and the United States. And pressure to have this international legal agreement ready to roll at the end of the year. So what’s going to be in this critically important, possibly binding international agreement, to be completed in less than six months?

We have no idea.

We recently scanned all of the documents filed in response to the USTR’s request for public comments regarding the Anti-Counterfeiting Trade Agreement (ACTA). They are presented below, if sometimes angularly, as well as on our issue summary page here.

Last week, a French court found eBay liable for allowing “counterfeit” Louis Vuitton and Dior Couture merchandise to be auctioned on its site. The price tag: almost $65 million. This comes on top of the $30k fine eBay was handed a few weeks ago for allowing fake Hermes bags to be sold on its site. Other than confirming that France seems compelled to be idiosyncratic—even if it involves idiocy—and that it is hyper-protectionist with its home-grown brands, these cases serve as a bracing warning to be careful who you proverbially sleep with in international agreements.

There are several types of hearings. Some bring together various thinkers with various points of view to raise issues and begin hashing out solutions. Others start with a predetermined conclusion and present “witnesses” for the sole purpose of validating that predetermined conclusion. This hearing was of the latter variety. If you weren’t reading Alex’s play by play tweets, here’s a full rundown.

The Opening Statements

Representatives from the US, EC, Japan, Switzerland, Australia, New Zealand, S. Korea, Canada, and Mexico have been holding close-to clandestine meetings over the past year to construct a trade agreement that tightens the level of regulations on IP-related goods and services. This proposed pact is called ACTA, the Anti-Counterfeiting Trade Agreement. No official agendas or results of the talks have been released, though a “discussion paper” was leaked to Wikileaks in late May. This discussion paper is the basic extent of the world’s knowledge on ACTA, yet some version of ACTA will apparently be up for adoption at the G8 Summit in July.

In a post from last week, I mentioned the warning letters the NFL has been sending to churches, claiming that they were infringing copyright by hosting Super Bowl parties. Something else that struck me as odd about the letters was the fairly arbitrary designation of 55 inches as the cutoff for an allowable TV size.

Yes, there’s a 55-inch specification in the Copyright Act, but that applies to non-dramatic musical works—something that, while it might apply to the halftime show (some years, there’s more drama than others, I suppose), doesn’t characterize a football game. The relevant part of the law (17 U.S.C. § 110(A)) says:

(A) except as provided in subparagraph (B), communication of a transmission embodying a performance or display of a work by the public reception of the transmission on a single receiving apparatus of a kind commonly used in private homes, unless—

There’s a lot that’s interesting in the recent controversy over Hasbro and Mattel, joint owners of the Scrabble trademark, asking Facebook to remove the third-party application, Scrabulous. On the academic side of things, it’s fascinating to think about to what extent various aspects of board games are protectable by different areas of intellectual property law.

We’ve decided to get aggressive about social platforms here at PK. For a while, we’ve had a facebook group, and now we’ve started a Ning Public Knowledge group. Each offers something a little different. At facebook, you’ve got the large communities of people who are already invested in the platform. I’m hoping that they allow for group administrators to embed applications into group pages (until they do, we’ll keep manually inputting our content). That’s actually what I think the Ning group offers more of, is the ability to syndicate content.