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The Internet Corporation for Assigned Names and Numbers (“ICANN”) is looking to effectively end domain tasting. Domain tasting is the use of the Add Grace Period (“AGP”) to test the profitably of a domain name registration by tracking traffic to a newly registered domain name. The AGP is a five-day grace period that allows the registration of the domain name to be deleted and a refund to be issued to a registrar for the annual ICANN fee. Cybersquatters and typosquatters will sometimes register a domain name, that is a misspelling of a trademark or service mark, and monitor traffic from visitors that misspell the proper domain name or trademark. The cyber-squatters and typo-squatters will then park the domain name and place advertisements, such as pay per click advertisements, and monitor the income for up to five days, cancelling the lower traffic domain names.

ICANN proposes to eliminate the AGP and charge a non-refundable ICANN fee upon registration of the domain. “Domain tasting has been an issue for the Internet community and ICANN is offering this proposal as a way to stop tasting,” said Dr Paul Twomey, ICANN’s President and CEO. “Charging the ICANN fee as soon as a domain name is registered would close the loophole used by tasters to test a domain name’s profitability for free.”

The original purpose of the AGP was logical because it allowed registrars to avoid costs if a domain name was mistyped or misspelled during the registration process. It is part of the .com, .net, .org, .info, .name, .pro, and .biz registry contracts.

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An intellectual property lawsuit was filed on January 30, 2008 in Los Angeles Federal District Court, by Paige Premium Denim against Mervyn’s department store over the sale of allegedly infringing jeans which incorporated the plaintiff’s designs. Plaintiff was founded by Paige Adams-Geller, a former Miss California and a jeans industry model. Paige’s jeans bear original and distinctive stitched rear pocket designs, some of which have received copyright registrations and function as Paige’s trade dress. Paige’s jeans have been featured on nationally televised shows such as The Tyra Banks Show, Daily 10, and Inside Edition.

Paige%20Jeans%20Pic.jpgThe complaint alleges that in disregard of Paige’s exclusive rights in the designs, Mervyn’s is copying the copyrighted stitching designs and confusingly similar designs. Paige also contends that Mervyn’s conduct was willful and intentional and that Mervyn’s products are of inferior quality. The lawsuit sets forth five causes of action and seeks a preliminary injunction and a permanent injunction of Defendants’ alleged conduct:

First, copyright infringement under 17 U.S.C. § 501, where Defendant’s access and copying is alleged based on the voluminous sales of Paige’s jeans and the stitch designs, and seeking full costs of suit pursuant to 17 U.S.C. § 505;

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WIPO domain name arbitration under the UDRP provides a thorough analysis of a domain name registrant’s rights and those of trademark owners. In HSBC Finance Corporation v. Clear Blue Sky, Inc., Case No. D2007-0062, Complainant HSBC had registered the trademarks CREDITKEEPER and CREDIT KEEPER (plus design) with the USPTO on July 13, 2004 and November 22, 2005, respectively. The domain name in dispute was initially registered by Peter Bradford on January 24, 2001 – prior to HSBC’s trademark registrations. On December 15, 2004, after HSBC’s trademark had already registered, Respondent Clear Blue Sky acquired the disputed domain name from Bradford for the sum of $48,000.

creditkeeper.gifClear Blue Sky argued that it should benefit from Bradford’s earlier domain name registration because it acquired all rights and interests through a written assignment and denied bad faith registration and use of the domain name. Paragraph 4(a) of the Policy requires that the Complainant prove three elements to obtain a decision that a domain name should be either cancelled or transferred, one of which includes that “the domain name has been registered and is being used in bad faith.” In rejecting Respondent’s “relation back” theory, the Panel found that:

The consensus view of WIPO Panelists is that, while a renewal of a domain name does not amount to registration for purposes of determining bad faith, the transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.

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In my previous post, I discussed the Patriot’s trademark application filing for “19-0 The Perfect Season,” and the New York Post’s retaliatory, and possibly clairvoyant, “18-1” trademark application. I was interviewed by New York Post reporter, Charles Bennet, regarding the trademark issues surrounding the now more relevant “18-1” trademark and was quoted in his newspaper article. Click HERE to read the NY Post article.nypmasthead2.gif

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February 1, 2008. The Los Angeles, California district court issued summary judgment of invalidity of plaintiff David Sitrick’s asserted claims from his two U.S. patents (5,553,864 and 6,425,825) against DreamWorks and Warner Brothers. The patents claim the replacement of images and voices into pre-existing movies and video games. The District Court held that the asserted claims were invalid for lack of enablement for integration of voice or images into DVDs (i.e. the specification did not teach a person of ordinary skill in the art how to practice the invention – without undue experimentation – as claimed for movies). Even though the patents enabled practicing the invention for video games, the district court held that the full scope of the claimed invention – including integration into movies – must be enabled.

The Court of Appeals For the Federal Circuit (“CAFC”) affirmed the lower court’s ruling and the invalidity of the asserted claims for lack of enablement:

Defendants showed with clear and convincing evidence that one skilled in the art could not take the disclosure in the specification with respect to substitution or integration of user images in video games and substitute a user image for a pre-existing character image in movies without undue experimentation. Defendants supported their motion for summary judgment of invalidity by reference to the teachings of the specifications and the opinions of their two experts. Read the CAFC opinion.

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Palantir.net began using the “palantir” trademark in 1996 for providing website design and development services nationally and registered the domain name in 1997. Palantir.net also filed a trademark application in 2002 with the USPTO, which registration issued in 2006. In early 2007, Palantir.net discovered Palantir Technologies, Inc. (“PTI”) was using the “palantir” trademark for designing database software for others and hiring interaction designers and software engineers, similar to Palantir.net. Palantir.net also learned that PTI was using the “palantir” trademark for Google’s AdWords service to pay for sponsored search results for the word “palantir” on Google.

palantir_logo.gif Palantir.net moved for a preliminary injunction to stop PTI’s use of the trademark “palantir” in advertising its services. The California Northern District Court granted the preliminary injunction and found that: “Palantir.net has easily proven the existence of serious questions going to the merits; indeed, the Court finds that it has also demonstrated a probable success on the merits given (1) the virtual identity of the marks, (2) the strength of the mark, (3) the relatedness of the goods, and (4) both parties’ use of the Internet.”

The Court also found that the balance of hardships also tips sharply in Palantir.net’s favor because of PTI’s recklessness in adopting the “palantir” trademark without first searching for any similar trademarks, Palantir.net’s long-time use of the mark, and the importance of the trademark to word-of-mouth referrals. The Court ordered that PTI not use “palantir” in any Google ads and to place prominent disclaimers on its website disclaiming any affiliation with Palantir.net and advising visitors how to access Palantir.net. Click To Read Order.

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Former World Wrestling Entertainment (“WWE”) wrestler the “Ultimate Warrior” (he has legally changed his name to Warrior) filed a trademark infringement lawsuit against video game maker THQ, Inc. for infringing on Warrior’s USPTO registered trademarks, service marks and common law trademarks. Warrior has registered trademarks and service marks for “Ultimate Warrior,” “Generation Warrior,” and “Warrior” with the U.S. Patent & Trademark Office. Warrior also owns a design trademark registration for his logo, which includes his wrestling costume and face paint design. In 2003, the parties entered into negotiations to license intellectual property rights associated with Warrior, but the negotiations terminated without finalizing an agreement.

Ultimate%20Warrior%20pic.jpgTHQ later produced a wrestling video game that allowed players to create their own character or select from real-life wrestlers. The create-a-wrestler feature allows a player to select the wrestler’s appearance, select a name (“Warrior” was an option), assign signature wrestling moves, including entrance moves into the ring, and entrance music. Plaintiff argued that the video game allowed players to create a wrestler that “has a similar build, face paint, and logo symbol as Warrior, that uses the entrance and finishing moves” and the same name “The Warrior” or “Warrior.” Defendant conceded that players exchange information on the internet on how to build “The Warrior” character and that it issued “a preliminary marketing document stating that Warrior would be in Defendant’s ‘Day of Reckoning’ video game was released on April 1, 2005, but was then retracted.”

Plaintiff filed a complaint against THQ alleging infringement of a registered trademark, false designation of origin of an unregistered trademark or trade dress, and infringement of common law trademark. THQ basically argues that it was fair use and it did not take any affirmative actions that would make it liable for trademark infringement. Defendant moved for summary judgment of non-infringement, or in the alternative, partial summary judgment. Click To Read The Order.

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Defendant Palliser Furniture’s manufacture and sale of a theater chair under the trademark “The Eastwood” did not make the Dirty Harry star’s day and a trademark infringement suit was filed in the U.S. District Court in Los Angeles, California. The trademark lawsuit probably didn’t make the Canadian defendant’s day either, especially because Palliser had only recently also been sued by the estate of the late Marlon Brando for a theater chair which it sold under the trademark “The Brando.”

eastwood%20chair.jpg The complaint explains that Clint Eastwood is very selective in the use of his name, image, and likeness and did not authorize Palliser’s use of “The Eastwood” designation. In addition to the federal Lanham Act (15 U.S.C. § 1125) claim, the complaint adds a cause of action for misappropriation of name in violation of California Civil Code § 3344, where the use of the “Eastwood” name for commercial gain and profit was not authorized or licensed by the plaintiff. To round up the good, the bad, and the ugly, the complaint adds a common law claim for misappropriation of name or likeness.

In addition to a preliminary and permanent injunction, Eastwood seeks statutory damages under 15 U.S.C. § 1117(a) for the defendant’s profits and for costs of the litigation. And to make the case a million dollar baby, Eastwood asserts that Palliser’s knowing and willful conduct makes the case exceptional, thereby entitling Eastwood to treble damages and attorneys’ fees.

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Patents, trademarks and copyrights and counterfeiting will be at the forefront at the WIPO’s Fourth Global Congress on Combating Counterfeiting and Piracy that meets in Dubai from February 3-5, 2008. The meeting is to focus on the following key themes:

  • Health and Safety Risks Counterfeit Products Pose to Consumers;
  • Raising Awareness of the Full Economic and Social Costs of Counterfeiting and Piracy;
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Every year as the Super Bowl approaches, the National Football League begins to use trademark law and copyright law to enforce its trademarks for the words “Super Bowl” and its copyrights of the broadcast. In years past, the NFL has prevented hotels from using its trademark “Super Bowl” in association with viewing parties. This year, the NFL has sent cease and desist letters to churches that intend to host “Super Bowl” viewing parties. The NFL has asserted that showing the game on television screens larger than 55 inches violates the NFL’s copyrights. Copyright Statute: 17 U.S.C. § 110(5)(B). The NFL argues that viewing parties slant its Nielsen Ratings downward, which are used to determine viewership and, in turn, the amount the NFL can charge advertisers, thereby decreasing advertising revenue. Click To Read Christian Post Article.