Letter from AmeriKat: Happy Halloween!

The AmeriKat adores the fall holidays. For those who know her Thanksgiving is by far the AmeriKat's favorite holiday, but running a close second is Halloween. Although she has begun noticing a growth in Halloween parties and events in the UK, no one does Halloween like the US. Costumes are plastered on our infants from the womb and grocery store aisles are devoted to crates of candy and ghoulish masks. Unlike the UK where one generally has to dress up 'scary' for the event, our costumes span the gambit of fancy dress; a mermaid, a flight attendant, a pumpkin are all acceptable attire. This Halloween, the AmeriKat had planned to go as a Savannah flapper vampire (complete with accent and all) to one of her friend's Halloween parties and so she laid her head down to take a 15 minute power nap before the preparation would begin. However, when she later awoke it was 1 AM and her Halloween fun had sadly vanquished - a lesson that there is no such thing as a Kat nap. (picture, top left - look closely and you will see the AmeriKat asleep in her jack o'lantern)

Happy Halloween from the AmeriKat!

Court squeezes all the juice from the LimeWire: Something else that has been vanquished this week is LimeWire, the music file-sharing service that is a favorite of old and young alike. Last Tuesday Manhattan federal judge Kimba Wood ordered that LimeWire be permanently shut down by disabling the "searching, downloading, uploading, file trading and/or file distribution functionality" of their file-sharing software. This injunction follows a ruling six months ago that found the company and its founder, Mark Gorton, liable for copyright infringement on a "massive scale". LimeWire is still in the process of negotiating licence deals with major record labels to legally provide music for sale with a subscription service. Following the ruling Gorton issued a statement declaring that:

"While this is not our ideal path, we hope to work with the music industry in moving forward. We look forward to embracing necessary changes and collaborating with the entire music industry in the future."

Meanwhile the RIAA (Recording Industry Association of America) who handled the lawsuit issued the following following statement:

"For the better part of the last decade, LimeWire and Gorton have violated the law. The court has now signed an injunction that will start to unwind the massive piracy machine that LimeWire and Gorton used to enrich themselves immensely"

Now with the issues of liability and the injunction determined, the court will now be tasked with the quantification of damages early next year that the company and Gorton will have to pay. The LimeWire injunction came shortly after the former head of Warners Music in the UK, Rob Dickins, suggested that albums should go for as little as £1, which would enable the purchase to be an impulse purchase. Others, such as Paul Quirk the head of Entertainment Retailers Association, suggested that Dickins had already benefited from the heyday of $14 albums and was too casual with his statement (see this report in Ars Technica). From courtrooms to industry meetings, everyone is struggling to put a price on music. But is a music track worth a bottle of water, or a hardback novel? Regardless of the correct answer, the court's assessment of damages in the LimeWire case next year will be far greater than either of those values.

Hell's Angels take on Alexander McQueen: What does couture house Alexander McQueen and the Hells Angels Motorcycle Club have in common? Nothing, unless you count the recent lawsuit brought by the Hells Angels in California federal court Monday against Alexander McQueen Trading Company, owned by PPR, for use of their trade mark name and mascot winged death head symbol (picture, left). The famous motorcycle group has reportedly used their name and symbol since at least 1948 and are also proprietors of a USPTO registered trade marks in classes for jewellery and clothing. For those who are unfamiliar with the Hells Angels, the gang is comprised of motorcycle enthusiasts that are admitted once strict requirements are met. The FBI classifies the Hells Angels as one of the big four motorcycle gangs with links to violence and organized crime(although the group denies this). Not exactly a group of people that you would want to rip-off....

The complaint lists a $495 four finger duster ring called the "Hell's Knuckle Duster" which includes the protected winged death head design, a $2,329 clutch (picture, right) with a similar symbol, as well as a $1,595 dress and $560 silk scarf. These garments and accessories which include similar marks of the Hells Angels would, when worn, represent membership insignia and, according to the Hells Angels' attorney, Fritz Clapp ,"anyone wearing them would be considered an imposter by club members”. Eeeek! This invokes a somewhat funny image of a woman with an incredibly expensive designer handbag being chased by the Hells Angels for trade mark infringement.

This complaint against Alexander McQueen comes at the same time costume designer Jany Temime was accused of knocking off a McQueen dress in the upcoming Harry Potter film. Temime designed a wedding dress for the marriage of Bill Weasley and Fleur Delacour which incorporated a phoenix bird and feather motif, which is reminiscent of McQueen's peacock dress of A/W (Autumn/Winter) 2008. The dresses both include the heads of two birds at the bodice line with their body and feathers cascading down through the skirt. It seems incredible to the AmeriKat that a cosutme designer for a prominent film would skate so close to the edge of design protection. Some investigation by the AmeriKat has come up with a question that the dress was actually authorized by Alexander McQueen, but the official story has yet to be forthcoming.

USPTO and EPO unite to develop join patent classification system: Last Monday the USPTO announced that it will be working with the EPO to establish the formulation of a joint patent classification system. Because the USPTO pre-deates the International Patent Classification (IPC) system, the US system is not alligned with many other countries. The joint classification system will be more detailed than the current IPC system to improve patent searches, which will also aim to eliminate the duplication of work between the USPTO and EPO. David Kappos, Director of the USPTO, and Benoît Battistelli, head of the EPO, issued a joint statement stating that:

"In view of the significant benefit to stakeholders of developing a transparent and harmonized approach to global classification system for patent documents; in order to make the search process more effective; and in the belief that cooperation between the two offices will facilitate progress in undertaking classification harmonization projects under the IP5 Common Hybrid Classification initiative, the USPTO and the EPO have agreed together to work toward the formation of a partnership to explore the development of a joint classification system based on the European Classification system (ECLA) that will incorporate the best classification practices of the two offices. This system would be aligned with the WIPO classification on standards and IPC structure. Accordingly, they have initiated discussions on governance and operational aspects of such a partnership"

Earlier this month the USPTO launched its second pilot of their Peer to Patent system which commenced on 24 October 2010. With the stated goal of "enhancing government effectiveness through openness and collaboration", Peer to Patent is a system whereby the patent examination process is open to the public who can submit information, such as evidence of prior art to assist USPTO patent examiners during their examination. In the first Peer to Patent pilot over 600 items of prior art were submitted for 189 applications. The AmeriKat wonders if this could be a nice and easy way for current patent holders to 'pre-litigate' and knock patents of potential competitors out of the system. If so, is that a good or bad thing?

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.

More on the European copyright licence

John Enser from Olswang has written to the IPKat with more on the pan-European copyright licence which the Kat noted earlier in the week. He wrote:

At a conference on Tuesday, Jean-Eric de Cockborne, Head of Audiovisual & Media Policy, denied that there was any truth at all in the New York Times report. The Commission is undertaking a study to consider whether there should be some changes to the present copyright licensing regime (and in particular the Coditel 2 principle that permits absolute territorial protection in "performance" licences) and the resulting country-by-country distribution structure with a view, in particular, to making it easier for nationals outside their home member states to receive programmes broadcast in their home member state, but at present no legislative proposal has been made and any decision will be a matter for the new Commission and Parliament once in place later in the year. Of course the same issue is also at stake in the case currently before the ECJ concerning the legality of the reception in pubs of foreign satellite transmissions.

Mysterious, says the IPKat. We'll have to wait to see how things pan out.

More term extension wrangles

The copyright term extension debate is getting even murkier. The BBC reports:

• The Featured Artists Coalition, a new pressure group with members including a number of prominent musicians has said that the current 95 year proposal will be bad for performers and fans. They back a term extension, but call for the copyright to revert to the artist after 50 years
• The UK voted against the European Commission's 95 year proposal on Friday in Brussels. The UK wants to see the extension limited to 70 years.
  

The IPKat is curious about this. He notes that many of the voices in the debate are prominent musicians who aren't the people who the extension is meant to protect. Sir Cliff isn't holding out the begging bowl, nor are the members of Radiohead. What is the view of the session musicians who are said by the Commission to be in need of the extension, the IPKat wonders?

Digital Britain Interim Report

Today BERR and the Department for Culture, Media and Sport published Lord Carter's Digital Britain Interim Report (the final report is in the late spring).

Not surprisingly, one of the issues on the agenda was illegal downloading and use of peer-to-peer services.

The IPKat thought that the background commentary was pretty well balanced. Copyright on the internet is a problem, the commentary acknowledged, but the 'blame' (if that's the right word) wasn't just placed on those pesky downloaders. Instead, it was acknowledged that things happen quicker in the digital world, and that content providers have to meet the expectations of their consumers that content should be available quickly and easily through the development of new business models. To take one quote:

Copyright is vital for our content and communications industries. It is the framework through which people can protect their creations and seek reward. Our aim, in the rapidly changing digital world is a framework that is effective and enforceable, both nationally and across borders. But it must be one which also allows for innovation in platforms, devices and applications that make use of content and that respond to consumers’ desire to access content in the time and manner they want, allowing them to use it how they want, and at a price they are willing to pay.

However, the IPKat wasn't so happy about all of the report's 3 planned actions in this area:

ACTION 11 By the time the final Digital Britain report is published the Government will have explored with interested parties the potential for a Rights Agency to bring industry together to agree how to provide incentives for legal use of copyright material; work together to prevent unlawful use by consumers which infringes civil copyright law; and enable technical copyright-support solutions that work for both consumers and content creators. The Government also welcomes other suggestions on how these objectives should be achieved.

[IPKat comment: providing incentives for legal use seems to be code for innovative new business models. What are these innovative new business models the Kat would like to know.?The only things which are mentioned are iTunes and DRM (but then, the Kat supposes that working out the new models is the job of this agency).]

ACTION 12 Before the full Digital Britain Report is published we will explore with both distributors and rights-holders their willingness to fund, through a modest and proportionate contribution, such a new approach to civil enforcement of copyright within the legal frameworks applying to electronic commerce, copyright, data protection and privacy to facilitate and co-ordinate an industry response to this challenge. It will be important to ensure that this approach covers the need for innovative legitimate services to meet consumer demand, and education and information activity to educate consumers in fair and appropriate uses of copyrighted material as well as enforcement and prevention work.

[IPKat comment: this is very bad news. Developing innovative new business models may not be the job of Government, but civil enforcement most definitely IS.]

ACTION 13 Our response to the consultation on peer-to-peer file sharing [available from BERR] sets out our intention to legislate, requiring ISPs to notify alleged infringers of rights (subject to reasonable levels of proof from rights- holders) that their conduct is unlawful. We also intend to require ISPs to collect anonymised information on serious repeat infringers (derived from their notification activities), to be made available to rights-holders together with personal details on receipt of a court order. We intend to consult on this approach shortly, setting out our proposals in detail.

[IPKat comment: this sounds like it will place a significant burden on ISPs, for relatively little reward in terms of respect for copyright the IPKat suspects].

What do David Lammy, ISPs and a bar of soap have in common?

The IPKat read with interest a Times interview with David Lammy, Minister for Intellectual Property, Higher Education and Skills (though it’s not too clear where the interview stops and the commentary starts).

It appears that the interview as timed to coincide with Lord Carter’s Digital Britain report, though that’s not coming out now until later in the week. However, at risk of giving at least part of the game away, Mr Lammy suggested that plans to force ISPs to cut the internet access of serial downloaders may have stalled. He pointed instead to the memorandum of understanding signed last July by ISPs and the music industry, which included ISPs sending out letters to those caught illegally downloading.

Mr Lammy noted:

“[Y]ounger people not quite buying into the system…We can't have a system where we're talking about arresting teenagers in their bedrooms. People can rent a room in an hotel and leave with a bar of soap - there's a big difference between leaving with a bar of soap and leaving with the television.”

An unnamed 'senior figure’ from the music industry noted:

“The relative cost of stealing a bar of soap from an hotel might be small, but if it came to seven million people nicking the soap each year, which is what we have in the music industry, I'm sure that hotel chain would do something about it.”

The IPKat is having trouble getting his head round Mr Lammy’s analogy. Surely it is theft to take bars of soap from hotel rooms, unless of course it’s one that you’ve started to use, but hotels turn a blind eye. Or perhaps the Kat is wrong, and there’s some sort of implied consent to the soap being taken – after all, the hotels have put it there in the knowledge that it is likely to be taken. Can some kind criminal lawyer help the IPKat’s poor brain?

What the IPKat is sure about though is that the music industry response just doesn’t work. The IPKat is sure that 7 million people do take soap from hotel rooms across the industry every year. The respondent is skewing the analogy by treating the music industry as one collective entity but dividing hotels into individual chains.

The Kat also notes the suggest in the article that Lord Carter may call from a levy on internet access to be paid to the music industry. The IPKat’s not too happy about this – what about the millions of people who don’t use the internet for downloading music and films, or those who already pay the music industry by sourcing legal downloads? Why should they pay?

Out of Doors - Supreme Court Rejects 21st Century Doors

How many Doors does it take to make a band. Earlier this month, the Calilfornia Supreme Court decided at least more than two.

In the great frenzy of re-makes and come-backs that seem to characterise the pop culture market at present (is this as good as it gets for recycling?), Raymond Manzarek And Robert Krieger, two surviving members of the 70s group, The Doors, wanted to continue to perform under that name. If it can work for Gary Barlow, then why not?

(At right, the original line-up: from left John Densmore, Ray Manzarek, Jim Morrison and Robert Krieger)

So they set out and toured as The Doors of the 21st Century (I had no idea) and apparently grossed more than US$8 million, using images of the original Doors in their promotional material. Some have suggested that the problem was that the pair dumped the third original member from the line-up, John Densmore, who then joined forces with the families of Jim Morrison and Pamela Courson to prevent Manzarek and Krieger from using the name.

In other reports Densmore states he is simply fulfilling the wishes of Jim Morrison, having refused other lucrative offers for commercials and other use. This is possible due to a "veto power" common in music contracts of the 1960s which requires all members of The Doors to be unanimous in any business agreements. As a result, each band member has a vote and the Morrison estate the fourth. The partnership has had disputes in the past and, although it is reported that Densmore was alone in refusing advertising deals, apparently the Morrison and Courson families joined him in his outrage over The Doors of the 21st Century, particularly the diversion of profits from their tours.

Densmore and the families claimed that if the pair continued to use the name, The Doors of the 21st Century, it would compromise the band's legacy. The Los Angeles Superior Court agreed and the Court of Appeal upheld this decision, 29 May. The pair were subsequently prevented from performing, touring, promoting or otherwise holding themselves out to be The Doors, The Doors of the 21st Century, or any other name that includes the words The Doors without prior written consent of all partners of the Doors partnership (I did however notice they are continuing to use the very 21st-century D21C ...).

The pair went on to petition the California Supreme Court but review was denied 13 August. The Supreme Court agreed (and all puns will be resisted). General counsel for the Morrison family, Lou Reisman, is reported as stating "We are particularly gratified that the court recognized Jim Morrison's iconic stature as a performer, songwriter and poet whose body of work continues to influence musicians and rock groups worldwide."

The pair have been ordered to pay damages and costs estimated at US$5 million. Instead of passing the hat around, they will now be touring as Riders on the Storm (circa 2005).




Merpel is pleased obstacles like band integrity did not persist into the 90s, with no such arrangement in place between Robbie and Gary. Otherwise there might have been a far inferior soundtrack to the Morrisons supermarkets commercials (just a coincidence ...)



(At left: the original legend)