Five bad Apples -- and look what's in store for IKEA ...

Recently this Kat wrote about a number fake Apple stores in Kunming in China. Since posting, Chinese officials have found five fake Apple stores in Kunming. However, only two of the five stores have been shut down. Somewhat surprisingly, the two stores were closed because they did not possess a business licence required for all commercial retail operations, not because they had infringed Apple's IP rights.

Apple has now taken matters into its own hands and filed a lawsuit for infringement of its trade marks in the US District Court in the Eastern District of New York against three companies and approximately 52 named and John Doe defendants. Exact details of the lawsuit are unknown at this stage because the documents are sealed to all except for legal counsel and the parties involved. However, CNET reports that Apple has filed a motion seeking a temporary restraining order as well as a preliminary injunction on the named defendants.

It would appear that Apple is not the only target in Kunming: last week, a number of outlets reported that Kunming also has a fake IKEA, a store is called '11 Furniture'. The first thing to note is that 11 Furniture's Chinese name 'Shi Yi Jia Ju' sounds very much like IKEA's Chinese name 'Yi Jia Jia Ju'. The second is that, inside, the look and feel of the store is virtually identical to expected in an authorised IKEA outlet. For instance, there is the similar blue-and-yellow colour scheme, signage, mock-up rooms, rocking chairs, miniature pencils and mininalist wooden tables in the cafeteria.

In a statement to the Daily Mail, IKEA stated:

Inter IKEA Systems B.V, the worldwide franchisor and owner of the IKEA Concept, sees it as very important to protect the intellectual property rights. We have reported it to Inter IKEA Systems B.V and they are dealing with this matter together with their legal counsel. The best thing we can do to prevent such stores from opening up in the future is to open more stores and make the IKEA products available to more people.

Chinese law prohibits firms from copying the 'look and feel' of other brands' stores. However, Chinese businesses frequently take advantage of problems in enforcing the law (such as low awards of damages and difficulty in enforcing judgments), unfortunately resulting in situations such as those with Apple and IKEA.

"I'm sure this wasn't the way in",
muttered Merpel ...

The IPKat, a simple soul, is wondering whether someone was teasing him about that US application filed by a Chinese inventor for a business method patent that related to a means of attracting goodwill by replicating a target company’s store fittings, trade dress and other indicia of reputation. Merpel is of course far too brave to confess to such thing as a phobia of entering an IKEA store, legitimate or otherwise, for fear that she is going to get stuck in the middle of a furniture maze and will have to scratch, scratch, scratch all the way out ...

Letter from AmeriKat: Happy Thanksgiving!

Although the AmeriKat was miles away from her computer last week as she was instead kicking up the leaves in Clifton Village (picture, left) while venturing around her old Bristol alma mater, she is back this week in time to spread the Thanksgiving cheer. Thanksgiving is this Thursday, and for those who have followed the AmeriKat will know that it is her most favorite of holidays; copious amounts of roast birds (meow!), mashed potatoes, and pumpkin pie together with very little activity except changing the TV channels between football games - what is not to love?! The joy of Thanksgiving, because it is a non-denominational holiday, is that all Americans can and will celebrate it. Besides the Fourth of July, Thanksgiving is the most participatory and democratic of holidays.

Happy Thanksgiving!

Lone senator stalls the controversial Combating Online Infringement and Counterfeits Act

A reminder of the importance of democracy in the US came late last Friday when a single senator, Senator Ron Wyden (D-Oregon, picture, right) stalled the Combating Online Infringement and Counterfeits Act (COICA) at a committee hearing. The Bill, which would have given the federal government power to shut down or block websites that participate in copyright infringement, had been unanimously approved by the Senate Judiciary Committee on Thursday. Wyden's objection may have the effect of postponing the Bill until the next Congress convenes. Wyden stated that:

"Deploying this statute to combat online copyright infringement seems almost like using a bunker-busting cluster bomb, when what you need is a precision-guided missile."

The Bill provides for the creation of a blacklist of websites that the US Government can seize if based in the US or require an ISP to block if they are located abroad. The Bill, which amends Chapter 113 of Title 18 of the US Code (which deals with stolen property) has the effect of targeting websites which are "dedicated to" and are "primarily designed" for copyright infringing activities or have no other "demonstrable commercially significant purpose or use" - which is one of those lofty definitions which makes the AmeriKat grimace. The actions are brought by a state's Attorney General who will apply to the court for an injunctive order to be served on the website domain registrant directly (if located in the jurisdiction) or on an ISP (if located outside the jurisdiction) with the effect of removing or blocking the website from the Domain Name System. There is no provision in the Bill requiring a hearing, trial or defence from the party served with one of these orders. The Bill also provides powers to stop credit card companies from authorizing transactions that occur on these websites. All court orders will be alerted to the Intellectual Property Enforcement Coordinator, Victoria Espinel (picture, top left), who will post the domain names on a publicly available website with relevant information on the order.

Mr IP Senator himself, Senator Patrick Leahy (D-Vermont) who co-sponsored the Bill said:

"Few things are more important to the future of the American economy and job creation than protecting our intellectual property. That is why legislation is supported by both labor and industry, and Democrats and republications are standing together."

However, critics have blasted the legislation as being overly severe and too broadly worded which would have the effect in practice of censoring websites that the government just doesn't like. The Electronic Frontiers Foundation, who have posted a list of websites that that they believe will be the first targeted if COICA is passed, stated that

"Blacklisting entire sites out of the domain name system is a reckless scheme that will undermine global Internet infrastructure and censor legitimate online speech."

It has been suggested that Senator Wyden will now attempt to put as many procedural roadblocks in the way of the Bill until the new Congress takes session in 2011, at which point the Bill will have to be resubmitted. At the end of September the man credited with technology central to the Internet, Sir Tim Berners-Lee, called the recent spate of bills threatening to block and cut off access to the Internet as a "blight".

The AmeriKat will be watching to see how Senator Wyden's roadblocking progresses.

Supreme Court hears gray goods arguments in Omega v Costco

The US Supreme Court heard arguments last week in the case of Omega v Costco (see previous AmeriKat reports here for detailed analysis of the case and arguments), a case appealed from the Ninth Circuit (California) which has the power to impact the future of the multibillion dollar "gray goods market". The "gray goods market" is where companies sell their products at a cheaper price to distributors based in countries other than where the product is ultimately retailed. Retailers, like Costco, will then buy the products from these overseas distributors and import them into the US to sell at a discount - a third off in the case of Costco's sale of the Omega Seamaster line.

The argument centers on whether Omega can use a copyrighted logo on one of their lines of watches as a mechanism for stopping Costco from selling them at a discount in their US stores. Costco is arguing that the Supreme Court extend their 1998 ruling of Quality King Distributors v L'Anza Research International (1998) which held that copyright owners do not have a right to control the market of their goods that have been imported and re-sold in the US. However, the Quality King ruling was about domestically made goods sold overseas and then imported back into the US. Here the goods are manufactured overseas, sold to overseas distributors and then imported into the US. The question to the Supreme Court is whether the 1998 ruling should be extended to these cases and also to determine the exact scope of the first-sale doctrine.

Although reported that the Justices did not give a clear indication of which way the ruling would go, they did seem concerned that there appears to be a statutory interpretation and a 9th circuit ruling that gives incentive to companies to manufacture goods overseas. Justice Ginsburg (picture, left) stated

"What earthly sense would it make to prefer goods that are manufactured abroad over those manufactured in the United States?"

The Supreme Court's decision will have a substantial impact on what goods retailers, especially those on-line retailers such as eBay or Amazon, can sell and import into the U.S. eBay, Intel, Amazon and Target have all voiced support for Costco. Omega, on the other hand, has support of the Obama administration, the ABA, and of course the music and film industries. The Supreme Court decision is expected in July 2011.

Between a Rock and a Hard place - Hard Rock trade marks hit the courts

Hard Rock Hotel Holdings LLC, which runs the Las Vegas Hard Rock Hotel & Casino, was sued in the Second Circuit for the Southern District of New York (Manhattan) in September by Hard Rock Cafe International Inc, the Florida-based owner of the Hard Rock trade marks. The trade mark owner alleged, amongst other things, that the reality show authorized by the Las Vegas company, "Rehab: Party at the Hard Rock Hotel", was tarnishing the Hard Rock brand. The lawsuit sought cancellation of the Las Vegas hotel's licence to use the marks. The casino has now fired back in a court filing two weeks ago which has claimed that it has done nothing wrong and is only a victim of "systematic legal and business harassment" by the Florida owner. The casino is also counterclaiming for breach of contract and tortious interference with business relations. The casino's filing also says that:

"The Cafe complains about a range of alleged trademark abuses that in many cases it has long known about, tolerated or even approved. Most notably, the Cafe claims to be shocked and disturbed by the popular reality television show 'Rehab: Party at the Hard Rock Hotel,' filmed at the Hard Rock Hotel and Casino Las Vegas – despite the fact that this show and the lively behavior it portrays have already been on the air for two years; depicts an event similar to the 'Detox' party held at one of the Cafe's properties (Biloxi, Miss); and has brought enormous positive publicity to the Hard Rock brand."

For more information see this article in the Las Vegas Sun and Los Angeles Times.

USPTO to make ex parte patent appeals easier and Tweet about it

Last week the USPTO issued a proposal to change the rules for ex parte patent appeals before the Board of Patent Appeals and Interferences and requests for public comment on the changes. The changes will include rescinding the stayed 2008 Final Rule and simplifying the petitions practice in appeals. For more information see this Press Release from the USPTO. Last week also saw the USPTO launch their Twitter account. To follow the USPTO click here, the AmeriKat click here, and the IPKat click here.

Fake report stuns EU shoppers

The Telegraph, among other online news services, leads today with a report -- "Fake goods are fine, says EU study".

Right: the EU has authorised the importation of a large consignment of fake Santas to help distribute this year's counterfeit gifts to European consumers.

The piece runs along these lines:

"They are an impulse holiday purchase that many buyers later have second thoughts about – the fake Louis Vuitton bags and Rolex watches picked up for a song abroad.
While shoppers are happy with the price, there are often nagging doubts about the items' quality, their legality and who ends up profiting.

However, such worries are, it seems, over. A new EU-funded report has declared that it is OK to buy fake designer goods. The study, co-written by a Home Office adviser [And therefore at the expense of the taxpayer. Naturally, all traders in fakes pay all their taxes], says consumers benefit from the market for knock-off designer clothes at knock-down prices. It also rejects the complaints of designer companies, claiming that losses to the industry as a result of counterfeiting are vastly exaggerated – because most of those who buy fakes would never pay for the real thing [does no-one buy bags believed to be genuine on eBay and other online sales sites, assuming they're getting the real thing at a bargain?]– and finding that the rip-off goods can actually promote their brands [Sure. "If you like the fake, you'll just love the real thing ..."]. The report adds that the police should not waste their time trying to stop the bootleggers [They won't save much wasted time, since they don't try very hard to stop them anyway].

It disputes claims that the counterfeiting of luxury brands is funding terrorism and organised crime, and argues there is little public appetite for tough law enforcement measures as consumers enjoy the bargains offered by the illegal trade, which has been estimated to be worth £1.3 billion in the UK [If victims are complicit, it's not surprising they have no appetite for tough enforcement. Do people who buy stolen goods or smuggled cigarettes and alcoholic drinks have much of a stomach for tough measures against their suppliers?].

Professor David Wall, who co-authored the report and advises the government on crime, said the real cost to the industry from counterfeiting could be one-fifth of previously calculated figures [there might be a genuine methodological issue here: many have questioned the basis of self-assessment of damage, especially based on the assumption that each fake sold equals one full-price retail sale lost].

"It's probably even less," he said. "There is also evidence that it actually helps the brands, by quickening the fashion cycle and raising brand awareness." [Of course it quickens the fashion cycle -- just as hares have to learn to run faster if they are to escape from the foxes]

He added: "We should be focusing on the trade in counterfeit drugs, dodgy aircraft parts and other stuff that really causes public harm. At a time when there is no more public resources for police, and they are being asked to do more, law enforcement should be focusing on other things." [Is the Kat dreaming, or is much -- if not most -- of the cost of bringing counterfeit traders to book borne by the IP rights owners themselves, since the police are reluctant to put together a case ab initio?]

While the UK authorities target those who trade in fake goods, the government has decided against criminalising consumers who buy them. But tourists purchasing counterfeits in other countries can face prosecution. In France, the maximum fine for buying fake goods is 300,000 euros (£246,000) or three years in jail. During a crackdown in Italy earlier this summer, a tourist was fined 1,000 euros (£825) for buying a fake Louis Vuitton bag for seven euros (£6) from a vendor at the resort of Jesolo, near Venice. [Poor old designer companies: this must do dreadful damage to their brands and their competitiveness, if today's report is to be believed].

Holidaymakers also face having counterfeit purchases seized at ports and airports as they return to Britain, if they are detected by the UK Border Agency.

...

But police and leading designer brands last night rejected the study's findings. A spokesman for Louis Vuitton said: "The sale of counterfeit goods is a serious offence whose revenue funds criminal organisations at the expense of consumers, companies and governments." A representative from Burberry added: "Counterfeiting is taken extremely seriously. Where a case is proved, Burberry will always push for the maximum penalty."

The Association of Chief Police Officers said faking fashion goods was "not a victimless crime". "Businesses, individuals, and the public purse all suffer as a result of such activities," said a spokesman ..."

Merpel says, you silly Kat: can't you tell that this is actually a fake report? The genuine report says that counterfeits aren't actually the best thing in the world and that we should all be responsible shoppers and stamp them out.

By a remarkable coincidence, a forthcoming article in the Journal of Intellectual Property Law & Practice, "Who's deceiving whom? The curious case of the ‘counterfeitee’" by Matthew J. Elsmore, discusses the issue of culpability of the consumer for feeding and stimulating the market for counterfeit products. The abstract of his article reads as follows:

"Legal context: This article seeks to investigate whether consumers ‘getting away with it’? As far as anti-counterfeit rules are concerned, whether the consumer purchases the real trade mark or the fake trade mark on a consumer-facing item, there is no meaningful distinction.

Key points: Consumers consume genuine and counterfeit goods; more and more of the latter it seems. That certain consumers are somehow persuaded to buy fake trademarked goods is a hotly debated and politicized topic as global trade and IP meet. All the subsequent regulatory emphasis and political focus is on the counterfeiter; a target that remains far from grasp. Civil and criminal trade mark liability for the counterfeiter and the obligations for state actors are apparently not deterring professional infringers.

Practical significance: Is a reconfiguration needed? It is clear that the overwhelming majority of counterfeits do not mislead or even confuse consumers as to trade mark authenticity. Is this why the consumer, an important actor in IP law, and especially trade mark law, disappears altogether from the anti-counterfeit radar? Yet trade mark regimes are partly about aligning legal standards with the consumer's perceived level of attentiveness; there appears to be a puzzle here. By first asking whether consumer liability should be addressed, this article airs views for and against a legal status as ‘counterfeitee’. The article seeks open up this aspect of the discussion surrounding counterfeiting with enough gusto for all of us (as IP specialists and consumers) to reconsider our role in the global trade of counterfeit goods".

This article is not yet published in paper format, but subscribers can already access it and read it in full on JIPLP's website here. Non-subscribers who want to purchase short term access to it can click here and scroll down to "Purchase short-term access".

Many thanks, Mark Summerfield (Watermark), for drawing this issue to the Kat's attention.

Letter from AmeriKat: No Trade Mark Infringement, No Defendant , No Problem!

Due to technical difficulties experienced earlier in the week the Letter from AmeriKat has been unduly delayed. The AmeriKat's laptop is on holiday at the moment and will hopefully be back in time for Sunday's usual letter.

After a period of chaotic and busy days that had defined the first part of the AmeriKat's year the legal seas have thankfully been pacified. For the next few weeks the AmeriKat has a happy reprieve for the world of law firms. No longer part of the school of suits swimming throughout the Underground and Central London in the daily commute, she is now playing the role of the American tourist (minus the cargo shorts and "I heart London" sweatshirt). The American accent (albeit in "meowing" form) and her tabby stripes allow the AmeriKat to transform herself into an anonymous tourist in a city that she already calls home. Being virtually unidentifiable as a "Londoner" has its perks. (picture, left - the AmeriKat blending into her background this week) The AmeriKat can, without a great risk of liability, partake in those annoying tourists habits that Londoners (myself included) despise; inexplicably stopping in the middle of the sidewalk, talking really loudly on the Tube, and taking photographs of everything in her sight. Such are the luxuries anonymity can afford one...

No Claim, No Defendant, No Evidence - No Problem!

Such luxuries no longer appear to be afforded to potential trade mark defendants in Colorado. As any lawyer knows, before you march off to court to issue a complaint on the behalf of your client you generally need four things: A claimant, at least one defendant, a cause of action and evidence is also quite nice. But strange things have been going on in Colorado's District Court when two weeks ago a complaint was filed on 9 August 2010 that only identified the complainant and little else. The AmeriKat is sure, like herself, you are scratching your head right now asking : "Who would file such a complaint?"

The plaintiff, AEG Live - Rocky Mountain, promotes a music festival known as the Mile High Music Festival. The Mile High Music Festival, so called because it takes place in Denver, Colorado which is a mile above sea-level, is in its third year and attracts around 90,000 people each year. This year's line up includes the Dave Matthews Band, Keane, Phoenix, and the AmeriKat's personal favorite - My Morning Jacket. AEG is also the proprietor of a US registered trade mark for MILE HIGH MUSIC FESTIVAL in connection with merchandise and entertainment services. AEG manufactures and has the exclusive right to sell trade marked merchandise at the festival, including T-shirts, posters, sweatshirts and other apparel. This merchandise is also sold through other sources in the U.S. The complaint claims that the sale of such merchandise is in the hundreds of thousands, but in keeping with the complaint's theme of "unidentifiability" - no specific number is given in the complaint.

That is the Claimant, but who are the Defendants? The AmeriKat generally paraphrases the description of a defendant in a complaint, but on this occasion it is best that it comes out of the horse's (i.e., the complaint's) mouth:

"3. Defendants John Does 1-100, Jane Does 1-100 and XYZ Company who are sued herein under fictitious names because their true names and capacities are unknown at this time. This complaint will be amended when their true names and capacities are ascertained."

Yes, you did read that correctly. But it continues:

"4. Upon information and belief, the individual defendants will be present in and about the District of Colorado, Denver in connection with the claims asserted below and are or will be subject to the jurisdiction of this Court.

5. On information and belief, defendant XYZ Company through its agents, servants and employees, is or will be present in and about the District of Colorado, Denver and is or will be subject to the jurisdiction of this Court. "

So, to recap, the complainant does not know who the defendants are, nor are they certain whether the defendants are actually in the jurisdiction at the time, just that they will be at some point when they figure out who they are. Right....

The AmeriKat asks you to just keep that at the back of your mind while she serves you the next platter of complaint absurdity relating to the unlawful conduct complained of:

"15. On information and belief, Defendants will sell and distribute unauthorized T-shirts, jerseys and other merchandise bearing any or all of the Festival Trademarks in the vicinity of the Festival before, during and after the performances.

16. The Unauthorized Merchandise is of the same general appearance as Plantiff's Festival Merchandise and is likely to cause confusion among prospective purchasers...

17. The Unauthorized Merchandise sold by Defendants is generally of inferior quality. The sale of such merchandise has injured and is likely to injure the reputation of the Plaintiff which has developed by virtue of their reputation for high quality associated with the Plaintiff."

The unlawful action complained of, namely the trade mark infringement, has not even occurred. None of these mythical defendants have actually sold or distributed anything. And since no action has occurred, and assuming no infringing product has thus been obtained, one wonders how the complaint can then even speak to the quality and characteristics of the merchandise. Further, the relief sought not only includes the standard damages and injunction, but also an order for the seizure of the goods within the vicinity of the festival by law enforcement officials under Section 1116 (d) of the Lanham Act . [Someone please define "vicinity" for the AmeriKat]

A further memorandum was filed by AEG relating to the reasons why the injunction should be granted. The reasons being that "there is no defense to the claims brought" and that "it has demonstrated a substantial likelihood that it will succeed on the merits." ["What merits!", hisses the Amerikat, "how are there merits when you don't even have a case?!"]

But the complaint, which emanates from the law firm of Hicks, Mims, Kaplan & Burns based in Santa Monica, California, is not the first of its kind. As reported by the Hollywood Reporter, such pre-infringement complaints are part of a growing trend by rights owners and in fact have been used for many years for one-of events such as concerts.

Earlier this summer, the marketing division of Universal Music Group (UMG) - Bravado International Group - filed a similar lawsuit prior to a series of concerts to be held at Madison Square Garden by Lady Gaga. This complaint emanated from the New York law offices of Wolf & Samson and is in similar form to that of the AEG complaint. This time it was the LADY GAGA mark, her image, likeness and merchandise that was the subject matter of the complaint.(picture, left - USTPO certificate of the Lady Gaga trade mark) The complaint states that the identity of the defendants "are not presently known" and also requests the authorization of the US Court Marshall and other law enforcement agents for seizure of counterfeit products.

It seems that off the back of the Bravado lawsuit other concert promoters, like AEG and LiveNation, are getting into the mix this summer. But how can one's lawsuit not be successful if no one shows up to contest the complaint? And how can anyone show up if they don't even know who they are or indeed have yet to do anything wrong?

Some trade mark lawyers may be thinking that there is nothing wrong with with this. Criminal law in fact empowers the seizure of counterfeit goods and other similar remedies as temporary measures. And in reality who is really prejudiced - the counterfeit bootleggers whose goods are seized are in fact infringing and are often without a realistic defence and the claimant's objective is immediately achieved without the hassle of having to later track the "nomadic" bootleggers after the event of infringement. Such anticipatory trade mark infringement claims may even save the Court's time, it is argued.

The AmeriKat can see the attractiveness of these arguments and complaints as being in the interests of the claimant but there is something very unattractive about this trend. Not only does she have issues with the fact that no cause of action has actually occurred, but she is unsettled by the nature of the remedies sought. Of course there are several instances where a court allows injunctions prior to the occurrence of a cause of action, but interim injunctions and search orders (like the Anton Piller order in the UK) demand that the claimant show that there is an extremely strong prima facie case against the defendant. Further, will the seizure remedy sought only ever be limited to the vicinity of the concert ground or stadium? Could a wider seizure area be granted in the future? What are the restraints placed on such complaints?

Practice it may be for now, but this is a practice that is far from perfect and seemingly prone to abuse.

If any of our readers have experience with these types of complaints and can share their thoughts on the practice please let the IPKat know. The AmeriKat would like to thank Mark Summerfield of Watermark for bringing this story to her attention.

Letter from AmeriKat I: Bits 'n Bobs

Last week while the AmeriKat was finishing her final LPC exams and looking forward to escaping the six years of law school shackles, the rest of the world was gearing up for summer World Cup madness (no comments about England's performance from the AmeriKat - ahem). Having had her whiskers to the books for the past couple of weeks, she assumed that once she returned to the world of US IP there would be a multitude of goings-on to catch up with. Not so....Time appears to have stopped in the world of major IP litigation and legal brief generation because after a week away everything was pretty much how she left it: No Bilski decision yet, everyone still up in arms about ACTA, mobile wars still progressing, etc. (picture, left - the AmeriKat pawing at her IP clock that appears to have stopped in her absence) So to that end, the AmeriKat has collected some interesting bits and bobs to hopefully strike your fancy until the big daddies of IP news roll out in the next couple of weeks

Is Jailbreaking about to become legal? : Something else that is waiting to escape the shackles of legal restraints (ableit non-exam orientated) is what is know as jailbreaking. Jailbreaking is the ability to hack into a mobile phone's operating system to enable the user to run any application from the phone, even those applications not authorized by the phone's manufacturer. Such activities obviously do not make companies like Apple happy. Apple of course says that it is illegal to jailbreak, but the copyright position is not so clear. Apple's reasons that jailbreaking is illegal (found here) are that jailbreaking breaches the licence agreement between iPhone users and Apple and that it constitutes copyright infringement because it

"involves unauthorized modifications to Apple's copyrighted bootloader and OS programs, it is a violation of 17 USC

§ 106(1) & (2), unless such modifications are either within the scope of the license

granted under the [licence] (which they are not), or are covered by the statutory rights under 17

USC § 117 or by the fair use doctrine (again, which they are not... [T]he

agreement flatly prohibits the modification of, or

creation of derivative works based upon, the iPhone Software. Nor is the initial act of

jailbreaking the only act of copyright infringement that users of jailbroken iPhones may need to

engage in. Further modifications (hacking) of the OS are often necessary to enable certain kinds

of applications to run even after the basic jailbreaking is accomplished.

"

Every three years the Copyright Office and other copyright regulators entertain suggestions of activities that should be excluded from the Digital Millennium Copyright Act's (DMCA's) lists of exceptions to its anti-circumvention rule (for background into the Copyright Office's DMCA rule-making procedures click here). The anti-circumvention rule makes it an offence for a person to circumvent technological measures (DRM) that are used to control access to a copyright work, such as those technologies that attempt to block access to the iPhone's operating system, so that the user cannot modify or copy material. However, the DMCA anti-circumvention rule was passed by Congress to protect DVDs and other media, but not mobile phone software. Fred Von Lohmann from the Electronic Frontier Foundation (EFF) states this is why it is appropriate that jailbreaking be exempted from the DMCA as this activity was not in the contemplation of Congress when this rule was passed.

Because the legal position in respect of copyright law to jailbreaking is ambiguous, over a year and a half ago the EFF asked the US Copyright Office to consider adding jailbreaking to the DMCA's list of exceptions - a request supported by Skype and Mozilla. Six years ago such now everyday activities such as unlocking your phone so as to switch cell phone providers were officially exempted.

A ruling has been expected from the Copyright Office since last fall (But as IP lawyers, we are now becoming accustomed to such long waits from our judiciary and regulators). For more information see this excellent post from Wired.

Vogue after charity: Lawyers for Vogue have threatened a Canadian city's charity fashion show alleging that the show infringed the magazine's trade mark in "Fashion's Night Out" and demanding a change of name. Victoria's business were planning to showcase their fashions last week, but after receiving a letter from Vogue's lawyers they are allegedly attempting to change the name to Victoria's Fashion Night. According to the Vancouver Sun the legal letter from law firm Sim Lowman Ashton and McKay stated that:

"Our client did not consent to use of its Fashion's Night Out trademark by your organization or its members and is extremely concerned by this unauthorized use of its intellectual property."

Vogue staged the first Fashion's Night Out last year in New York and London (see event here). The event will be staged again this year in multiple locations. The AmeriKat muses that the motivating factor behind the letter is perhaps the tarnishing factor of a Fashion's Night Out event taking place in a Victoria and not a New York of London?

The South Butt prevails over The North Face: Yes, you did read that correctly. The North Face, the iconic sporting brand touted around by sailors, climbers and preppy soccer moms alike, sued The South Butt last year alleging that they were infringing their trade mark and taking unfair advantage of their brand. South Butt was started in 2007 by a University of Missouri-Columbia student to help pay his tuition fees. South Butt retails similar sportswear only however encompassing the logo "The South Butt". However, according to The San Francisco Gate the two parties have now settled the dispute on undisclosed terms. From South Butt's website, it seems to appear that they are still permitted to use their name and their strikingly similar arched mark.

Coach sues Chicago: The AmeriKat's favorite leather goods retailer, Coach, has filed a multi-million dollar lawsuit in Illinois federal court against the city of Chicago alleging that the City's failure to go after vendors of counterfeit Coach goods amounts to a violation of the Lanham Act. In August 2009 a Coach investigator attended a local market in Chicago's Maxwell Street where according to the complaint around 300 vendors were selling counterfeit Coach goods, as well as fake Chanel products. Coach then demanded the city to take measures to stop the counterfeit activity at the market, but without any joy. The importance of this case is because it is against a municipal city. The argument goes that because these counterfeit vendors pay the city for a licence to operate and the city was then put on notice by Coach of the vendors' activities by way of cease and desist letters and did nothing about the problem, Chicago facilitated the trade mark infringement. The AmeriKat cannot lie, she loves everything about this argument. Why should ISPs be possibly held liable for similar activities and cities not be? ISPs are essentially on-line cities, are they not?

And Finally: This time last year the AmeriKat commenced her foray into the world of "Letter from AmeriKat". Looking back at her first letter, she is reminded of how much the IP and legal world has progressed in such a short time. This time last year we were reading about Obama's new Supreme Court nomination of Sonia Sotomayor (now Justice Sotomayor) and David Kappos's appointment to the USPTO bringing with him the winds of patent reform. Few had heard of ACTA and Bilski had only just recently submitted their writ of certiorari to the Supreme Court! The AmeriKat is looking forward to the coming years of Letter from AmeriKat and is very fortunate and proud to be part of the wonderful IPKat team and its wonderful readers. Meow!