Tuesday, March 27, 2007

Supreme Court Agrees to Review Child Pornography Law [US]

The US Supreme Court agreed Monday to decide the constitutionality of a child pornography law that a lower court criticized as criminalizing merely talking about illegal images.

The issue arose in the case of Michael Williams, whose conviction in Florida for promoting, or pandering, child porn on the Internet was reversed by the 11th U.S. Circuit Court of Appeals.
The justices took the case at the Bush administration's request. It will be argued in the fall.
The appeals court panel found that the promoting, or pandering, provision of the PROTECT Act of 2003 was overbroad and impermissibly vague. "Non-commercial, non-inciteful promotion of illegal child pornography, even if repugnant, is protected speech under the First Amendment," the Atlanta-based court said.
The law also unreasonably criminalizes the speech of someone who touts material as child pornography when in fact it is clean or nonexistent, the court said.
In the appeals court's view, the pandering provision could even apply to an innocent e-mail sent by a grandparent and entitled "Good pics of kids in bed," showing grandchildren dressed in pajamas.
One sender might be a proud grandparent while another might be a convicted child molester who hopes to trade for more graphic photos with like-minded recipients, the appeals court said.
In asking the Court to take the case, the administration said the appeals court read the law's language more broadly than is warranted.
Congress made clear that "efforts to stimulate, feed or capitalize on a market for what purports to be child pornography deserve no sanctuary," Solicitor General Paul Clement, the administration's lawyer before the justices, said in court papers.
Authorities arrested Williams in an undercover operation aimed at combating child exploitation on the Internet. A Secret Service agent engaged Williams in an Internet chat room where they swapped nonpornographic photographs. Williams advertised himself as "Dad of toddler has 'good' pics of her an me for swap of your toddler pics, or live cam."
After the initial photo exchange, Williams allegedly posted seven images of actual minors engaging in sexually explicit conduct. Agents who executed a search warrant found 22 child porn images on Williams' home computer.
Williams also was convicted of possession of child pornography. That conviction, and the resulting five-year prison term, is not being challenged.

Monday, March 26, 2007

Federal Judge Rules Cablevision's Remote Storage DVR System Violates Copyright Laws [US]

A federal judge in New York has sided with entertainment producers who claimed that Cablevision's network-based remote-storage digital video recorder (DVR) system violated copyright infringement laws.

"I conclude that Cablevision, and not just its customers, would be engaging in unauthorized reproductions and transmissions of plaintiffs' copyrighted programs," Southern District of New York Judge Denny Chin held in Twentieth Century Fox v. Cablevision Systems 06 Civ. 3990, and The Cartoon Network V. CSC Holdings, 06 Civ. 4092.
Chin granted requests by Twentieth Century Fox, CNN, Universal, Paramount Pictures and other networks, and permanently enjoined Cablevision from proceeding with technology that would have allowed its customers who do not have digital video recorders in their homes to record and play back programs stored on central servers at Cablevision's facilities.
Cablevision spokesman James Maiella said in a statement that the company was disappointed in the decision and was considering an appeal.
The Bethpage, N.Y.-based cable company had argued that it was not required to receive a license from the networks because its customers, not Cablevision, choose content and record programs for personal viewing. It cited to Sony Corp. v. Universal Studios, Inc., 464 U.S. 417 (1984), in which the U.S. Supreme Court held that Sony could not be held liable for infringement because it supplied Betamax recorders, video cassette recorders or DVRs to consumers for recording TV programs for in-home personal viewing.
Cablevision said its RS-DVR was no different from those devices, and argued it could not be held liable for copyright infringement for merely providing customers with the machinery to make copies.
"The RS-DVR is clearly a service, and I hold that, in providing this service, it is Cablevision that does the copying," Chin wrote.
He noted that, at most, Cablevision contended that "its role with respect to the RS-DVR establishes indirect infringement, but plaintiffs have waived such a claim."
But the entertainment companies argued the RS-DVR technology was unique and unauthorized because a complete copy of a program selected for recording would be stored indefinitely on a customer's allotted hard drive space on the company's facility. It also said the fact that portions of the programs are stored temporarily in "buffer memory" on the company's servers was problematic.
The networks also said Cablevision was directly infringing on their copyright because it was the one "doing" the copying. Chin accepted the plaintiffs' arguments.
He said Cablevision's ongoing participation in the recording process set the RS-DVR system apart from "set-stop storage DVRs" (STS-DVRs), like TiVo, which are currently on the market.
"Cablevision claims that with both, the customer is 'doing' the copying, and it points to the fact that no programer ... has ever sued Cablevision or any other cable operator in connection with its providing STS-DVRs to its customers," he said. "By extension, the RS-DVR, it argues, presents no copyright infringement."
Chin held that the fact that plaintiffs and other programming owners have not sued cable operators over the legality of set-stop storage DVRs does not insulate the RS-DVR from such a challenge.
He said the RS-DVR may have the look and feel of an STS-DVR, but "under the hood" the two types are vastly different. The judge said the RS-DVR is more akin to video-on-demand (VOD) than to a VCR, STS-DVR, or other time-shifting devices.
"In fact, the RS-DVR is based on a modified VOD platform," the judge concluded. "In its architecture and delivery method, the RS-DVR bears striking resemblance to VOD."
Cable companies have been eager to experiment with network DVRs because the technology could greatly increase their ability to add DVR customers, who pay a monthly fee, without having to provide new set-top boxes for each one.
These boxes can cost up to several hundred dollars each, a cost usually borne by the cable company.
The Twentieth Century Fox plaintiffs were represented by Arnold & Porter attorneys Peter L. Zimroth, Eleanor M. Lackman, Robert A. Garrett and Hadrian R. Katz.
Gregory Paul Goeckner and Simon Barsky, in-house attorneys at the Motion Picture Association of America, also represented Twentieth Century Fox.
Goeckner said on Friday he was not yet able to comment.
The Cartoon Network and CNN were represented by Cravath, Swaine & Moore attorneys Katherine B. Forrest, Anthony L. Ryan and Chelsea Teachout.
Cablevision was represented by Benjamin Hershkowitz, John C. Englander, J. Anthony Downs, R. David Hosp, Timothy A. Macht and Robert D. Carroll of Goodwin Proctor.

Saturday, March 24, 2007

LegalForce Launches Online Marketplace for Intellectual Property [International]

The Online Marketplace Where Owners of Intellectual Property Can Buy, Sell and Build Interest for Their Inventions and Patents PALO ALTO, Calif.--LAWFUEL - Law News, Law Jobs --LegalForce (www.legalforce.com), a Palo Alto based startup, today launched the web’s largest IP marketplace. The user-friendly site showcases a powerful set of features, offering a single online destination for the selling, buying and licensing of intellectual property rights; a free searchable directory of US patents linked directly to attorney and inventor profiles; and a professional network where people interested in intellectual property can join groups, share ideas and collaborate with videos and forums.
The market for patents is valued at over $100 billion and now plays a central role in the economy, yet patents continue to promise unrealized value for owners. The LegalForce marketplace delivers a powerful way for inventors, entrepreneurs, small businesses, large enterprises and universities to monetize and capture the hidden value of their intangible assets. All can now use the LegalForce marketplace to license patents to third parties, avoiding many of the expensive legal and marketing costs traditionally associated with such transactions. “The IP legal profession is increasingly falling behind the changing pace of innovation in corporate America,” says Raj Abhyanker, patent attorney and co-founder of LegalForce.
“Entrepreneurial startups are able to generate innovations with tremendous market potential, but often fail to monetize their IP. Large enterprise programs lose visibility at the lowest levels, and miss out on opportunities to strengthen their IP portfolios and stay on the cutting edge. LegalForce delivers a trusted and secure marketplace where licensing executives, in-house counsels, patent attorneys and inventors can negotiate, complete and evaluate these increasingly important transactions.” LegalForce features a proprietary search engine which delivers contact information for all patent attorneys in the US and many others internationally. The LegalForce search engine also allows users to find and download all U.S. patents, and link to profiles of associated inventors, owners and attorneys. “LegalForce is committed to building the first online marketplace that empowers owners and prospective buyers of intellectual property with an easy-to-use and cost effective means of negotiating transactions.” said Babar Rana, CEO of LegalForce. “The e-commerce and social computing technologies powering the marketplace minimize the requirement of middlemen for the commercial exchange of intellectual property, and allow buyers and sellers to agree upon prices in a more transparent environment.” LegalForce also provides the tools and resources for inventors, attorneys, entrepreneurs, investors and IP professionals to express their ideas, search and access IP intelligence, collaborate with one another and expand their networks. Members can share ideas in forums, create distinct communities and express themselves with videos.

The UK Intellectual Property Office is created

The UK Patent Office has announced that it plans to change its name to the UK Intellectual Property Office, in line with the recommendation of the Government's Gowers Review of Intellectual Property.

The new name is designed to reflect the Office's wider role, encompassing copyright and trademarks as well as patents.
'The [Gowers] report's main recommendations will help us to enforce intellectual property rights, and support British businesses both at home and abroad,' said Ron Marchant, the Office's chief executive.
The Gowers Review, set up by Chancellor Gordon Brown and chaired by former Financial Times journalist Andrew Gowers had considered whether to recommend the setting up of a separate copyright office, but instead concluded that all intellectual property issues should be overseen by a single organisation.

From Edison to iPod [New Text]

Fross Zelnick Lehrman & Zissu, a leading firm in the field of trademark, copyright, design and unfair competition law, has announced that firm partner, Larry Apolzon has co-authored with Fred Mostert “From Edison to iPod: Protect Your Ideas and Make Money,” a guide to demystifying intellectual property.

The book provides entrepreneurs, writers, artists, designers, musicians, inventors and other business professionals and creative people with practical information and tips to enable them to protect their creations. In everyday language, “From Edison to iPod” explains intellectual property including trademarks, copyrights, design patents, trade secrets and utility patents. In its review, Publishers Weekly noted, “The authors have boiled down their message so well that a single two-page chart serves as a terrific crib sheet for the entire resource.”
The publisher, DK Publishing, worked closely with the authors to present a varied and colorful display of creations that have become established icons accompanied by informative captions to inspire and guide the reader.
“One of the ‘golden rules’ that we set forth in the book is that ideas don’t put money in the bank and that creative entrepreneurs need to lay out their ideas and get them into action,” said Apolzon. “New products, content and brands are being introduced to the global marketplace overnight and making informed business decisions to efficiently and effectively safeguard such new creations is essential.”
Apolzon was elected to the partnership at Fross Zelnick in 1992. He counsels a broad spectrum of clients on the adoption, protection, use and enforcement of brands and new product and package designs. His clients range from major and independent record labels, celebrities and other media and entertainment ventures to luxury brand owners and manufacturers of an array of consumer products.
Co-author, Fred Mostert, is Chief Intellectual Property Counsel of the Richemont Group of Companies in London. The two authors have been colleagues for over 20 years and first worked together as associates at Fross Zelnick.
"From Edison to iPod: Protect Your Ideas and Make Money" [ISBN: 978-0-7566-2602-0] was released this month by DK Publishing.

Friday, March 23, 2007

Ideas behind computer games can be copied [Court of Appeal - United Kingdom]

General ideas and structures behind computer games and programs can be copied as long as the source code and graphics are not, the Court of Appeal has ruled.

The judgment upholds an earlier High Court ruling in a case involving three computer games simulating pool. Under UK copyright law and EU Directives, the court ruled that the ideas behind the games cannot be protected by copyright, because copyright does not protect general ideas.
"Merely making a program which will emulate another but which in no way involves copying the program code or any of the program's graphics is legitimate," said Lord Justice Jacob, who gave the Court's ruling.
Nova Productions produced Pocket Money, a game based on pool. Mazooma Games produced a game called Jackpot Pool and Bell-Fruit one called Trick Shot. Nova claimed that the other two developers had infringed its copyright by using similar elements in their games to those it used in Pocket Money.
Nova did not claim, though, that the source code of its game had been copied or that the graphics had been copied. Those actions would have been clear infringements of copyright.
The company did claim that there was an extra right in the imagery used in its game, something beyond the copyright attaching to individual images and related to its use of a power bar used to judge the strength of a pool shot and of a cue control mechanism.
"Mr Howe invited us to find that there was in effect a further kind of artistic work, something beyond individual freeze-frame graphics," said Jacob in his ruling. "This was said to be because there is a series of graphics which show the 'in-time' movement of cue and meter. So, it was said, that what the defendants had done was to create a dynamic 're-posing' of the Claimant's version – one in which the detail of the subjects had changed, but an essential artistic element of the original was carried through to the Defendants."
The Court found, though, that for copyright purposes the moving images must be taken as simply a series of still images, each of which has its own copyright protection.
"A series of drawings is a series of graphic works, not a single graphic work in itself," said Jacob. "No-one would say that the copyright in a single drawing of Felix the Cat is infringed by a drawing of Donald Duck. A series of cartoon frames showing Felix running over a cliff edge into space, looking down and only then falling would not be infringed by a similar set of frames depicting Donald doing the same thing. That is in effect what is alleged here."
On that count alone the Nova case would fail, said the judge, but he went on to rule on the other issues in the case.
He said that some copying of another person's work is permitted, and that to infringe copyright it must be 'substantial'.
Jacob also said that there are some parts of the creative process which are not protected by copyright law, which only gives legal protection to very specific things. "Not all of the skill which goes into a copyright work is protected – the obvious example being the skill involved in creating an invention which is then described in a literary work," he said. "An idea consisting of a combination of ideas is still just an idea. That is as true for ideas in a computer program as for any other copyright work."
On the protection of ideas, Jacob quoted an opinion he gave himself in an earlier case. "The true position is that where an 'idea' is sufficiently general, then even if an original work embodies it, the mere taking of that idea will not infringe," he said in that ruling in 1994. "But if the 'idea' is detailed, then there may be infringement. It is a question of degree."
The taking of a plot (i.e. the 'idea') of a novel or play can certainly infringe if that plot is a substantial part of the copyright work, he said in that dispute between Ibcos Computers and Barclays Mercantile.
The general nature of the ideas which Nova was seeking to protect was the downfall of its argument on the basis of literary copyright. "The appeal on literary copyright fails on the simple ground that what was found to have inspired some aspects of the defendants' game is just too general to amount to a substantial part of the claimants' game," said Jacobs. "The Judge's evaluation, far from being wrong in principle, was right when he said 'they are ideas which have little to do with the skill and effort expended by the programmer and do not constitute the form of expression of the literary works relied upon'."
The protection of such general ideas is not only not a part of copyright law or the relevant European directives, it is something that could be damaging to businesses, the Court of Appeal found.
"If protection for such general ideas as are relied on here were conferred by the law, copyright would become an instrument of oppression rather than the incentive for creation which it is intended to be," said Jacobs. "Protection would have moved to cover works merely inspired by others, to ideas themselves."
The decision backs a 2004 ruling in easyJet's favour after it was accused of infringing copyright in an airline booking system. The budget airline had commissioned a system that emulate the look and feel of another system built by a company called Navitaire. This was achieved without copying source code and the court rejected the main claim of infringement.

Tuesday, March 20, 2007

IP Hall of Fame [Intellectual Asset Management]

Two US Presidents, a Japanese Prime Minister and one of France's greatest authors were among the first inductees into the IP Hall of Fame, announced last night at a gala dinner in London. Thomas Jefferson, James Madison, Korekiyo Takahashi and Victor Hugo were joined by 19 other individuals, all of whom were judged by the nominating panel of experts to have made an outstanding contribution to the development of intellectual property law and practice.
Devised and developed by leading IP publication Intellectual Asset Management (IAM) magazine, in association with IP management specialist Computer Patent Annuities Limited Partnership (CPA), the IP Hall of Fame is designed to identify those who have helped establish intellectual property as one of the key business assets of the 21st century. A team of 18 internationally acknowledged IP experts recruited from industry, the law and academia was assembled to make the selections.
Commenting after the induction ceremony, IAM editor Joff Wild said: "For many organisations now, patent, trademark and copyright rights are the most important assets they own. By creating the IP Hall of Fame we hope to publicise the hugely valuable work all the inductees have done in developing this vital asset class, which not only helps to drive the global economy but also makes a significant contribution to the wellbeing of people around the world."
Both Jefferson and Madison were honoured for their insistence that intellectual property rights be specifically safeguarded by the US Constitution, while Takahashi was recognised as the founding father of Japan's patent system. Victor Hugo, meanwhile, was nominated because he was a prime mover behind the creation of the Berne Convention on Copyright, which to this day helps safeguard the rights of authors and other copyright owners in over 150 countries. Other inductees included the great American inventor Thomas Edison and Sir Edward Coke, a 17th century English courtier who played a pivotal role in the foundation of modern patent rights.
Inductees from the present day included Microsoft's IP chief Marshall Phelps and Bruce Lehman, a former Commissioner of the US Patent and Trademark Office (USPTO) and Under-secretary of Commerce during the Clinton presidency. Commenting on his induction, Lehman said: "I am deeply honoured to be included in the IP Hall of Fame. I especially want to thank IAM magazine, and its partner CPA, for establishing an institution that will educate the public about the importance of intellectual property to the wellbeing of society in general. More public attention needs to be paid to the importance of intellectual property rights in promoting human creativity and the benefits that flow from the creations of the human mind."
European representatives included Klaus-Dieter Langfinger, head of IP at BASF and a prime advocate for IP rights in Europe. "Being one of the first inductees into the IP Hall of Fame is a tremendous honour, which with great pleasure I would also like to accept in the name of those colleagues and friends who have worked hard with me over the years in trying to give to intellectual property in Europe the political and societal support it rightfully deserves but which it does not currently enjoy," said Langfinger. "Intellectual property drives innovation and should not be regarded as a monopoly of the few but as a tool leading to economic welfare, and societal and cultural progress for all."
The IP Hall of Fame will continue to welcome new inductees on an annual basis. An online IP museum and resource centre, designed to make intellectual property issues more accessible to the general population, is to be launched later this year.
First inductees into the IP Hall of Fame
Don Banner: Recently deceased partner of law firm Banner & Witcoff LLP and a former Commissioner of the USPTO. Played a key role in the development of the modern international IP system.
Heinz Bardehle: Partner of German law firm Bardehle Pagenberg with a long involvement in international patent harmonisation issues, as well as being an adviser to the German government on IP.
Senator Birch Bayh: Former US Senator, now with Venable LLP. A co-sponsor of the pivotal Bayh-Dole Act 1980 that gave US universities much greater freedom to exploit the IP they created.
Friedrich Karl Beier: A founder of Germany's Max Planck Institute and a strong influence on the development of IP law and practice in Germany and Europe.
Johann van Benthem: One of the founding fathers of the European Patent Office, as well as its first President.
Arpad Bogsch: Director General of the World Intellectual Property Organisation from 1963 to 1997.
Sir Edward Coke: Author of the English Statute of Monopolies of 1624, the basis for the distinction between patents of invention and patents given at the caprice of the sovereign.
Thomas Edison: One of the greatest inventors and industrial leaders in history. He obtained 1,093 United States patents, the most issued to any individual.
Kurt Härtel: One of the prime movers behind the establishment of the European Patent Convention and a former president of the German Patent Office.
Victor Hugo: Author, and the Honorary President and founder of the Association Litteraire et Artistique Internationale. He was a prime mover behind the creation of the Berne Convention on Copyright.
Lord Justice Robin Jacob: The senior patent judge in the UK. His judgments are highly influential in the European arena.
Thomas Jefferson: Third President of the United States, author of the first US patent law and first head of the US Patent Office.
Klaus-Dieter Langfinger: Head of Patents, Trademarks and Licences at BASF and a prime advocate for IP rights in Europe.
Bruce Lehman: Former Commissioner of the USPTO, an architect of the Digital Millennium Copyright Act, helped negotiate the TRIPS agreement. Founded the International Intellectual Property Institute in 1999.
James Madison: Fourth US President and credited with including Article III, Section 8 - the Patent and Copyright Clause - in the US Constitution, providing the basis for IP in the basic US constitutional system.
Howard T Markey: A driving force for the creation of the Federal Circuit Court of Appeal in the United States and its first chief justice.
Alexander von Mühlendahl: Served three terms as Vice President of the Office for Harmonisation in the Internal Market (Trade Marks & Designs) in Alicante. A pivotal figure in the creation of the Community trademark system.
Melville Nimmer: Author of a four-volume treatise on copyright written in 1963, and continuously updated since then, which remains the "gold standard" scholarly resource on copyright in the US and around the world.
Marshall Phelps: The man who took IBM from generating a few million dollars in IP-related annual revenues in 1985 to over one billion dollars in a little over a decade. Now in charge of IP at Microsoft.
Judge Giles Rich: An author of the US Patent Act of 1952. Then a highly influential judge at the US Court of Customs and Patent Appeals and subsequently the Court of Appeals for the Federal Circuit.
Frank Isaac Schechter: His 1927 article "The Rational Basis of Trademark Protection" was the birth of trademark dilution as a recognised theory.
Dudley Smith: The prime mover behind the formation of the Licensing Executives Society.
Korekiyo Takahashi: The first commissioner of the Japanese Patent Office and later Prime Minister of Japan. In 1885 he introduced Japan's first patent system by promulgating the Patent Monopoly Act.
Nominating Panel:
Ciaran McGinley - Head of the President's Office, European Patent Office, Munich
Bruce Berman - An author and IP consultant based in New York
Jerome Chauvin - Director of the Legal Affairs Department at UNICE (Union des Industries de la Communauté européenne (Union of European Business Federations)), Brussels
David Tatham - Trade mark Attorney, consultant and former Head of Trademarks for Imperial Chemical Industries plc (ICI)
Chris Mercer - President of the European Patent Institute and a partner of Carpmaels & Ransford, London
Karen Hersey - retired Senior Counsel for Intellectual Property at the Massachusetts Institute of Technology, Adjunct Professor of Law, Franklin Pierce Law Center, and former president of the Association of University Technology Managers (AUTM)
Bo Heiden - Deputy Director, Center for Intellectual Property Studies (CIP), Chalmers University of Technology, Gothenburg
Allen Baum - President Elect of LES USA and Canada and a partner of Hutchinson & Mason in Raleigh, NC
Ian Harvey - Chairman, Intellectual Property Institute, London
Ron Myrick - a partner with Finnegan Henderson, vice-president of the AIPPI and a former president of the AIPLA
Anne Gundelfinger - President of the INTA and Vice President & Associate General Counsel, Intel Corporation
Melvin Garner - President of the AIPLA and a partner of Darby & Darby in New York
James Sobieraj - Past president of LES USA and Canada and a partner with Brinks Hofer in Chicago
Peter Chrocziel - President of LES International and a partner with Freshfields in Germany.
Malte Koellner - a partner in German VC firm Triangle Ventures and an adviser on IP to the European Venture Capital Association.
Todd Dickinson - former Commissioner of the USPTO and now VP of IP at General Electric
Steven James - President of the Institute of Trade Mark Attorneys and a partner of RGC Jenkins & Co, London
John Tarpey - World Intellectual Property Organisation

Thursday, March 15, 2007

Cybersquatting on the Rise! [WIPO Report]

The number of cybersquatting disputes filed with the World Intellectual Property Organization (WIPO) in 2006 increased by 25% as compared to 2005. In a related development, the evolution of the domain name registration system is causing growing concern for trademark owners, in particular some of the effects of the use of computer software to automatically register expired domain names and their ‘parking’ on pay-per-click portal sites, the option to register names free-of-charge for a five-day ‘tasting’ period, the proliferation of new registrars, and the establishment of new generic Top Level Domains (gTLDs). The combined result of these developments is to create greater opportunities for the mass, often anonymous, registration of domain names without specific consideration of third-party intellectual property rights.

“While electronic commerce has flourished with the expansion of the Internet, recent developments in the domain name registration system have fostered practices which threaten the interests of trademark owners and cause consumer confusion. Practices such as ‘domain name tasting’ risk turning the domain name system into a mostly speculative market. Domain names used to be primarily specific identifiers of businesses and other Internet users, but many names nowadays are mere commodities for speculative gain,” noted Mr. Francis Gurry, WIPO Deputy Director General, who oversees WIPO’s dispute resolution work. “The rate at which domain names change hands and the difficulty to track such mass automated registrations challenge trademark owners in their pursuit of cybersquatters,” he said. “With domain names becoming moving targets for rights holders, due consideration should be given to concrete policy responses,” he added.
In 2006, a total of 1,823 (gTLDs and country code Top Level Domains (ccTLDs)) complaints alleging cybersquatting – the abusive registration as domain names of trademarks – were filed with WIPO’s Arbitration and Mediation Center (Center), representing the highest number of cybersquatting cases handled by WIPO since the year 2000.
Since commencement in December 1999 of the Uniform Domain Name Dispute Resolution Policy (UDRP) – a quick and cost effective dispute resolution procedure – through December 2006, 10,177 UDRP or UDRP-based cases (gTLD and ccTLD) have been filed with the Center, covering 18,760 separate domain names.
When .info Sunrise, .biz STOP, .name ERDRP and .mobi Sunrise and Premium Name cases are added to these UDRP figures, the total number of cases comes to 25,815 (Annex 1). Due to the temporary applicability of these policies, the non-UDRP cases are received on a one-off basis. All of the .info and .biz cases were completed in 2006; of the .mobi cases, five Sunrise cases have been completed and 74 Premium Name cases were completed in 2006.
A total of 9,389 (97% of total cases) UDRP cases received by the Center have so far been resolved. Of the gTLD cases resolved, decisions have been rendered in 7,328 cases with some 84% of those cases ending with the transfer of the domain name to the complainant and approximately 16% being denied. 2,061 cases have terminated on other grounds, primarily on the basis of settlement agreements between parties transferring the domain name to the complainant (Annex 2).
Another development in 2006 was the filing of the 10,000th WIPO UDRP complaint. An American party (Sam Ash Music Corporation) filed a complaint against an individual from China who had registered the domain name . The language of the proceeding was Chinese and a WIPO panel decision transferring the name was notified in early February of 2007. In addition, the 25,000th WIPO domain name case under all policies (UDRP and ‘Sunrise’) was filed on August 19, 2006. The WIPO panelist ordered the transfer of the domain name to the trademark owner, the Red Lion Hotels chain.
The WIPO dispute resolution procedure served a wide range of users, ranging from well-known brands, to smaller enterprises and organizations, as well as individuals. They covered categories including luxury items, famous persons, entertainment, hospitality, sports, gambling, and pharmaceuticals. In addition, charitable organizations and educational institutions were involved.
A number of disputes relating to newly merged or collaborating corporations were also filed. Such merger cases suggest that cybersquatters tend to follow newsworthy events. This is also evident from the spate of cases involving the Tamiflu trademark filed at the height of international concern about an avian flu pandemic in 2006 in relation to such domain names as , , and . The complainants were Swiss company F. Hoffmann-La Roche AG and its American subsidiary, the manufacturers of Tamiflu, an antiviral pharmaceutical preparation for the treatment and prevention of influenza. A total of 34 cases covering 64 domain names were filed with WIPO in 2006 which were related in some form to the Tamiflu trademark.
Hoffmann-La Roche have also filed UDRP complaints based on other trademarked products, such as Valium. Other pharmaceutical companies that have filed WIPO cases in the past include Pharmacia & Upjohn (in relation to Rogaine), American Home Products, McNeil Consumer Brands (Tylenol), Pfizer (Viagra), Merck, Sanofi-Aventis (Ambien), CVS Pharmacy, Lilly ICOS, Valeant, and Bayer.
Since registration of domain names in non-Roman scripts such as Arabic, Chinese, Cyrillic or Korean (“internationalized” domain names) became available a few years ago, the Center has received a total of 60 cases involving such names, of which eight were received in 2006. With the spreading of Internet connections and online commerce, the proportion of domain name disputes of this type is expected to increase in coming years.
Geographical Distribution of Parties
Though the geographical spread of named parties to WIPO UDRP cases (gTLD and ccTLD) reached 137 countries at the end of December 2006, the most frequently named party country both for complainants and for respondents continued to be the United States of America (USA). The most frequently named complainant countries in gTLD cases after the USA were France, United Kingdom, Germany, Spain, Switzerland, Italy, Canada, Australia, and Netherlands. The most named respondent countries after the USA were the UK, China, Republic of Korea, Canada, Spain, France, Australia, Italy, and Russia. A full overview of all countries involved is available at http://www.wipo.int/amc/en/domains/statistics/cumulative/countries.html.
Country-Code Top Level Domain Cases
The number of ccTLD registries which have designated WIPO to provide domain name dispute resolution services is 47. The full list of these countries is available at http://www.wipo.int/amc/en/domains/cctld. A new addition in 2006 was the .es (Spain) domain. Under the applicable regulations, established in consultation with the WIPO Center, a claimant must prove to a WIPO-appointed Spanish panelist that the registration or use of a .es name constitutes an infringement of intellectual property rights protected in Spain.
By December 2006, the Center had received 496 cases involving domain names registered in ccTLDs. Of these, 446 have been resolved, with 273 decisions in favor of the complainant, 52 decisions in favor of the respondent, 121 settlements between the parties, and 39 cases pending on December 31. (These ccTLD case statistics are limited to administrative procedures and do not include ccTLD cases that are administered under arbitration and mediation rules, such as those for the .nl ccTLD (Netherlands) and the .pl ccTLD (Poland)).
On January 17, 2006, international investment bank Morgan Stanley filed the first complaint under the WIPO-administered dispute resolution policy for .ae (United Arab Emirates). This case involved the domain name , held by an individual residing in Australia, and was settled between the parties.
.MOBI and Other New gTLDs
The new ‘sponsored’ gTLD <.mobi> was launched in May 2006 by the registry, Mobile Top Level Domain Ltd. (mTLD), as a domain “dedicated to delivering the Internet to mobile devices.” As with all gTLDs, the UDRP applies to .mobi. In addition, two separate domain-specific procedures were created and administered by the WIPO Center at the request of and in collaboration with the registry.
The first special procedure applicable to .mobi consisted of the unprecedented Premium Name Trademark Application Rules for .MOBI. This mechanism enabled trademark owners to reclaim so-called Premium Names, the generic value of which had led the registry to reserve these for auction or other commercial allocation. During the Premium Name application period, which lasted from September 15 to October 13, 2006, the Center received 105 applications. In 2006, the Center completed the processing of 74 of these applications which were decided by WIPO panelists under special conditions relating to the registration and use of corresponding trademarks.
The second special procedure applicable to .mobi consisted of the .mobi Sunrise Challenge Policy, which allowed interested parties to challenge .mobi names inappropriately registered during a special registration period that had been reserved for trademark owners under the .MOBI Sunrise Registration Policy. During the challenge period, which lasted from August 28 to December 15, 2006, the Center received 18 challenges, five of which were processed in 2006.
On October 10, 2006, WIPO received the first UDRP complaint involving a name in the .mobi gTLD. The parties, both from the UK, disputed the name screwfix.mobi.
A WIPO panel issued a transfer decision on December 12 (http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-1309.html).
WIPO received its first UDRP case involving a name registered in the .travel gTLD on March 17, 2006, in relation to the name . A WIPO Panel denied the complaint (http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0344.html).
Due to the opportunities for cybersquatting in new domains and the profusion of registration and dispute resolution processes that have been offered in respect of such domains so far, the 2005 WIPO report ‘New Generic Top-Level Domains: Intellectual Property Considerations’ (available at http://www.wipo.int/amc/en/domains/reports/newgtld-ip/index.html) has noted the need for a uniform preventive process in the introductory phase of gTLDs; a standard Sunrise process would reduce confusion and offer time and cost benefits.
Developments in the Domain Name Registration System
The combined effect of developments such as: the use of ‘Whois’ privacy services for registrations; the growth in the number of professional domain name dealers and the volume of their activity; the use of computer software to automatically register expired domain names and their ‘parking’ on pay-per-click portal sites; the option to register names for free for a five-day ‘tasting’ period; the growth in the number of accredited registrars; and the establishment of new gTLDs, is to create greater opportunities for mass registration of domain names. Such registrations are often anonymously undertaken on a serial basis without particular attention to third-party intellectual property rights. Traditionally, cybersquatting involved the registration of domain names by individuals seeking to sell the ‘squatted’domain name. Nowadays, ‘domainers’ derive income from the large-scale automated registration of domain names. They acquire domain name portfolios, buy and sell domain names, and park domain names, claiming a significant share of the well over 100 million domain names that are now registered.
There is a rapid growth of domain parking sites, on which links to other sites are organized and indexed. These links usually operate on a ‘pay-per-click’ basis with registrants and parking services sharing revenue generated by web traffic. This is fueling rapid growth in ‘domaining’ and registrar activities.
Domain name tasting is a practice in which a person or entity (who may be affiliated with a registrar) registers a domain name for a five-day grace period without payment of the registration fee, and parks it on a pay-per-click website monitored for revenue, whereupon the name is dropped or re-registered by a new registrant, thereby starting a new grace period. Only those domain names generating significant traffic are permanently registered. As a result of computer applications, tens of millions of domain names are temporarily registered on this basis each month.
Increasingly, service providers are offering Whois privacy services allowing domain name registrations to be made through a proxy registrant, which is often a registrar-related entity. One reason for such identity-shield developments is to avoid registrants receiving ‘spam’ as a result of their contact details being made publicly available on the Whois database. WIPO panel decisions are beginning to explore the practical implications for the UDRP of these developments, for example in terms of whether or not the privacy service discloses the identity of its client once the service has been alerted to concerns of trademark infringement. The fundamental assumption of the UDRP is that the formal respondent for case purposes is to be found in the applicable Whois database.
WIPO panels have generally held that for a domain name to be transferred under the UDRP, there needs to be some indication that the registration was made with the intention of taking advantage of the complainant-trademark owner’s rights in that name. With regard to bulk buyers of domain names using automated registration processes, a WIPO panel decision issued in February 2006 found that failure to conduct prior checks for third-party rights in certain circumstances would represent ‘willful blindness,’ representing bad faith under the UDRP (Mobile Communications Services Inc. v. WebReg RN, WIPO Case No. D2005-1304, http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-1304.html; see also, Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964, http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0964.html). This is an example of how the application of the UDRP decision criteria must accommodate changing circumstances and new developments.
Background on UDRP
The UDRP, which was proposed by WIPO in 1999 and has become accepted as an international standard for resolving domain name disputes, is designed specifically to discourage and resolve the abusive registration of trademarks as domain names. Under the UDRP, a complainant must demonstrate that the disputed domain name is identical or confusingly similar to its trademark, that the respondent does not have a right or legitimate interest in the domain name and that the respondent registered and used the domain name in bad faith.
Disputes are decided by independent panelists drawn from the Center’s list of 400 trademark specialists from over 50 countries. The domain name registration in question is frozen (suspended) during the proceedings. After carefully reviewing each case, panelists submit their decisions within a period of 14 days. If a panelist’s decision to transfer a domain name is not challenged in court within a period of ten days, the registrar is legally bound to implement the panelist’s decision.
All panel decisions are posted on the Center’s web site. To facilitate access to the decisions, the Center also offers a unique online legal Index, which is proving a popular resource for WIPO parties and panelists in undertaking detailed jurisprudential research. The Center also offers an overview of broad decision trends, via the WIPO Overview of WIPO Panel Views on Selected UDRP Questions which distils thousands of UDRP cases handled by the Center. The Overview is an important instrument to help maintain the consistency of WIPO UDRP jurisprudence. It identifies common and important substantive and procedural questions and the views expressed in WIPO panel decisions on those questions, with reference to decisions that are considered representative of those views. The Overview is available at http://www.wipo.int/amc/en/domains/search/overview/index.html.
In addition to processing domain name disputes, the Center administers the WIPO Arbitration and WIPO Mediation Rules, which contract parties can designate for disputes that may arise out of any type of intellectual property transaction which they conclude. The Center’s growing caseload includes licensing disputes in the area of patents (e.g. in biotech or medical technology), disputes concerning information technology, research and development issues, and cases in the area of entertainment. More information about this area of the Center’s work is available at http://www.wipo.int/amc/en/center/background.html and at http://www.wipo.int/amc/en/center/caseload.html.
For further information please contact the Media Relations and Public Affairs Section at:
Tel: (+41 22) - 338 81 61 or 338 95 47 Fax: (+41 22) - 338 82 80 Email: publicinf@wipo.int.

Wednesday, March 14, 2007

Viacom v. Google [Has Internet Freedom been put to the test?]

The notion of the Internet as a free ride, a place in cyberspace where almost anything is available for nothing, might at last be put to a real test.

After weeks of fruitless negotiations, the media conglomerate Viacom - owner of MTV, Nickelodeon, Comedy Central and Paramount Pictures - sued Google and its wildly popular video-sharing site YouTube yesterday for what it claims is copyright infringement.
Viacom, which is seeking $1 billion in damages, said in its suit that YouTube has benefited from what it called "massive intentional" violations of copyrights of Viacom-owned videos.
The lawsuit represents the biggest face-off between old and new media since the Recording Industry Association of America forced Napster to shut down its song-trading system in 2001. And it could force changes in the delivery of the Internet's biggest draw, its free content, analysts say.
Or it could be a negotiating tactic: Media companies have watched with both fascination and fear as YouTube, which was purchased by search-engine giant Google in November for $1.76 billion, has exploded into a hugely popular online destination, where millions of people view and post videos and short films ranging from the mundane to the bizarre.
The lawsuit likely is one of many to come, said Bruce Sunstein, co-founder of the intellectual property law firm Bromberg & Sunstein in Boston.
"Finding a way of peaceful coexistence is quite a struggle," Sunstein said. "Google's motto is 'Don't be evil,' and you could argue that with YouTube that motto is wearing a little thin."
In a statement, Viacom said YouTube "is a significant, for-profit organization that has built a lucrative business out of exploiting the devotion of fans to others' creative works in order to enrich itself," adding that YouTube and Google "actively engage in, promote and induce this infringement."
Viacom, which last month demanded that Google take down more than 100,000 of its videos from YouTube, is asking the U.S. District Court for the Southern District of New York for an injunction that would bar Google and YouTube from persisting in what it says are the infringing activities.
Google issued a statement saying it had not been served with the lawsuit but was "confident that YouTube has respected the legal rights of copyright holders."
In its own statement, YouTube pointed out that its video-sharing system actually benefits copyright owners because it exposes their material to a huge audience:
"YouTube is great for users and offers real opportunities to rights holders: the opportunity to interact with users; to promote their content to a young and growing audience; and to tap into the online-advertising market."
Many Internet aficionados sided with YouTube, and said Viacom's lawsuit would probably not have a revolutionary impact on the Internet as a whole.
Jeff Jarvis, who blogs about media at Buzzmachine.com and is director of the interactive journalism program the City University of New York's Graduate School of Journalism, yesterday posted an entry in which he called the Viacom lawsuit "boneheaded." But he wrote in an e-mail later that he did not think it meant "the beginning of the end of the free Internet."
"There are too many smart media companies that realize the value of your fans recommending you," Jarvis wrote. He compared Viacom's move to the RIAA's legal efforts against Napster, which agreed to pay more than $26 million to settle its disputes with music publishers and songwriters.
"This is very much like the music industry except that this time, the companies are not marching in lockstep over the cliff," Jarvis wrote. "This time, there are a lot of smart companies that are trying to take advantage of the fact that their fans are recommending and distributing them to more fans. Viacom is standing pretty much alone."
But Jonathan Dube, vice president of the Online News Association and editorial director of the Canadian Broadcasting Corp.'s Web site, CBC.ca, said Viacom is "simply trying to protect its content and control its ability to profit from it."
Viacom, which also owns BET, VH1, Nick at Nite, CMT: Country Music Television, Spike TV, TV Land and about 120 other networks around the world, is still making its content available to users who visit those Web sites, Dube said, but on its own terms.
"Users can watch clips on Viacom's sites - such as from Comedy Central's The Daily Show with
Jon Stewart - and even take the code and embed it on their own sites, similar to YouTube," Dube said. "It's still too early to tell exactly what content people will be willing to pay for and what content will end up purely free."
John K. Hartman, a journalism professor at Central Michigan University, said the Viacom/YouTube imbroglio could be a harbinger of other developments
"We are not far away from Google, Yahoo buying newspaper chains to control content and ads and eliminate suits," said Hartman.
"The Internet," he said, "wants to be free."
W. Joseph Campbell, an associate professor in the School of Communication at American University in Washington, said he was having trouble believing that Viacom's suit against YouTube "will prove to be a major impediment for a resource as dynamic and swiftly changing as the Internet."
However, he said, "It does seem as if we're becoming farther removed all the time from the prospect of 'Googlezon' dominance."

Tuesday, March 13, 2007

Viacom sues Google’s You Tube for Copyright Infringement [International]

Media conglomerate Viacom Inc. (VIAb.N: Quote, Profile, Research) sued Google Inc. (GOOG.O: Quote, Profile, Research) and its Internet video-sharing site YouTube for more than $1 billion on Tuesday in the biggest challenge yet to the Web search leader's strategy to dominate the online video market.

The lawsuit accuses Google and its popular online video unit of "massive intentional copyright infringement" for allowing users to upload popular shows, threatening ambitions to make YouTube a major entertainment and advertising outlet.
The legal challenge from Viacom, home to the MTV and Comedy Central channels, also suggested a wider battle between traditional and Internet media companies that now compete for audiences and advertising dollars.

"This is a seminal event in Media-Internet relations ... and how the value of content will be clarified in the online medium," wrote UBS analyst Aryeh Bourkoff in a client note.

Shares in Viacom slipped 9 cents to close at $39.48 on the New York Stock Exchange and Google shares fell $11.72, or 2.6 percent, to $443.03 on Nasdaq.

Viacom has been the most vocal critic of YouTube during months of negotiating over payment for use of its programming. The Sumner Redstone-controlled company last month demanded YouTube pull over 100,000 video clips uploaded by users
"YouTube's strategy has been to avoid taking proactive steps to curtail the infringement on its site, thus generating significant traffic and revenues for itself while shifting the entire burden -- and high cost -- of monitoring YouTube on to the victims of its infringement," Viacom said.

YouTube does not prevent copyrighted content from being uploaded onto its site, but will take material down at the request of copyright owners.

Google said it was confident that YouTube respects the copyrights at issue in the Viacom case.
"We will certainly not let this suit become a distraction to the continuing growth and strong performance of YouTube," Google said in a statement.
General Electric Co.'s (GE.N: Quote, Profile, Research) majority-owned NBC Universal and News Corp. (NWSa.N: Quote, Profile, Research) have also criticized YouTube's policies on copyright protection but stopped short of legal action, testimony to the dilemma of media companies forced to choose between embracing a fast-growing outlet for younger audiences and trying to build competing Web vehicles themselves.

"We've dealt with YouTube on a case by case basis to have content taken down," a News Corp. (NWSa.N: Quote, Profile, Research) spokesman said, adding that the company supported Viacom's right "to protect its own content in whatever way it needs to."

Viacom found another ally in Time Warner Inc. (TWX.N: Quote, Profile, Research)
"It is clear from this lawsuit that it is time for YouTube to remove unauthorized material from its site," a Time Warner spokesman said. "We are in talks and hopeful we can work together toward a solution that would effectively identify and filter out unauthorized material and license copyrighted works for an appropriate revenue share."

Viacom contends that almost 160,000 unauthorized clips -- from excerpts of comedy talk show "The Daily Show with Jon Stewart" to pieces of children's programs like "SpongeBob SquarePants" -- have been uploaded on to YouTube's site and viewed more than 1.5 billion times.

The decision to sue Google followed "a great deal of unproductive negotiation," the company said.
Viacom filed the suit in the U.S. District Court for the Southern District of New York, seeking an injunction against further violations and damages.
Google bought YouTube last November for $1.65 billion, aiming to capitalize on its explosive audience growth built from sharing both homemade and professionally produced videos.

YouTube has reached licensing deals with major record labels, but still faces the ire of major media companies. Google has promised new technology to help identify pirated videos, but has not given a timetable for its introduction.

Any progress Viacom makes in its lawsuit could spur other companies to consider legal action against YouTube and raise new questions about the laws governing digital distribution.
"If there's anything central to Google's business model, it is being at the center of everything," said Forrester Research analyst James McQuivey. "This has the potential to put them on the periphery."

Viacom and peers like NBC Universal, in which France's Vivendi (VIV.PA: Quote, Profile, Research) owns a minority interest, are also investing heavily in their own Internet video sites to benefit from the migration of television audiences to the Web.
"There is certainly an opportunity for YouTube to do a deal with Viacom, but Viacom does not have to have a YouTube deal," said analyst Richard Greenfield of Pali Capital.

Google's dominance in Web search has made it a magnet for lawsuits by copyright and trademark holders.
The Silicon Valley company faces outstanding lawsuits in the United States and Europe by major book, magazine and online news publishers as well as small-time Web site operators.
Google has prevailed in high-profile suits against it by auto insurer GEICO -- owned by billionaire investor Warren Buffett's holding company Berkshire Hathaway Inc. (BRKb.N: Quote, Profile, Research) -- over trademark infringement, and in a demand by the U.S. Justice Department for consumer Web search data.

Thursday, March 08, 2007

Bloggers accuse Yahoo of plagiarism [India]

The Indian blogging community comes together to fight alleged copyright violation by Internet companies, observes March 5 as ''Remove Plagiarism'' day

BANGALORE: More than one hundred Indian blogs have joined hands to protest alleged instances of plagiarism by Yahoo India.

Surya Gayathri, a blogger, alleged that the beta version of Yahoo Malayalam had lifted six recipes from her blog without her knowledge.
Her page displayed screen shots of Yahoo Malayalam, the content of which she alleged was lifted from her page.

The plagiarized content was later removed after bloggers contacted Yahoo.
Irked by Yahoo’s attitude, the blogging community came out in full support of Gayathri and observed March 5 as the “Remove Plagiarism” day. Bloggers demanded an apology from Yahoo.

“It is a little amusing, amazing and agonizing to see how the corporate world looks at the blogs and bloggers as silly little creatures, which they can play with, manipulate and crush at their will,” a blog called Copyright Violations said.

Many bloggers expressed shock at the incident. “Recently Yahoo! India launched a Malayalam Language Portal (along with other Indian languages), but they copied content from many Malayalam bloggers, which were protected under Creative Common Licensing. None of the bloggers were contacted and it was a rude shock to us that giants like Yahoo! would do this,” Santhosh Pillai, a blogger wrote.

Some blogs displayed comments in support of Gayathri, and even came up with anti-Yahoo icons and cartoons.

“Why is this is dear to me? Just because we write and take pictures due to our passion for food and writing and give the content for free for others to cook and create, that doesn’t mean someone can take us for a ride and copy our content, especially a giant corporation like Yahoo!” said a blogger who writes under the nickname Inji Pennu.
“The content in this page was provided by WebDunia,” the Yahoo Malayalam page said.
Another blogger wrote: “We all make mistakes, we apologize later. Don’t we all? To live in a society we have to follow such norms. We bloggers complained to Yahoo! and Yahoo! India. How did they respond? They simply refused to apologize. Yahoo! India office even had the audacity to claim copying contents is not copyright violation. The subcontractor (WebDunia) for Yahoo! India claims all was done on ‘good faith’. Contents were removed from Yahoo’s domain silently. If this was done on good faith and there was no copyright violation? Isn’t this a shame? Imagine if it was between two corporations instead of corporate vs blog? It would have been any lawyers’ dream.”
Yahoo could not be contacted on Tuesday despite repeated attempts.

Many bloggers had earlier alleged of other prominent India Web sites taking content from their pages without permission.

© CyberMedia News

C-DAC develops Software tools to combat Cyber Crimes [India]

Resource Centre for Cyber Forensics, set up by the Department of Information Technology (DIT) at C-DAC, Thiruvananthapuram has developed "CyberCheck Suite Version 3.0" tools for cyber forensics. The indigenously developed software product was released by Shri Dayanidhi Maran, Minister of Communications & Information Technology, here today in the presence of Shri P.C. Haldar, Director Intelligence Bureau and senior officers of the Central Bureau of Investigation & Delhi Police besides the officers from DIT.
With this development, self-reliance in the technologies utilized for combating cyber crimes has been achieved. The tools developed by C-DAC have been very exhaustively evaluated by leading Law Enforcement Agencies in India like Directorate of Forensic Science Laboratories, Central Bureau of Investigation, National Police Academy and Intelligence Bureau. They have all certified that the indigenously developed tools of C-DAC are most appropriate for carrying out cyber forensics by all Law Enforcement Agencies in India.
Speaking on the occasion Shri Maran said that combating cyber crimes was very challenging and demanding with new technologies and new modus operandi keep cropping up. Therefore it has become imperative to keep the momentum going, he said. The Government is committed to eradicating cyber crimes and would do utmost to support new initiatives and developments for preventing the crimes. In order to deal with the cyber crime matters, the Minister said that a major training programme is proposed for training the law enforcement agencies, forensic labs and judiciary on the procedures and methodologies of collecting, analyzing and presenting the digital devices.

Source: Press Information Bureau

Ethiopian Coffee Trademark Dispute With Starbucks Runs Hot and Cold [International]

Robert Winter, a senior partner at Arnold & Porter, probably never thought he'd be pushing his client's point of view on YouTube when he agreed to help the government of Ethiopia protect the intellectual property associated with the names of three of its most famous coffee-growing regions.
But last week he defended the country's initiative to trademark and license the coffee names in a video posted on the site. It was a response to a widely viewed video posted in December by Dub Hay, Starbucks Coffee Co. senior vice president, claiming the trademark and licensing scheme was illegal.
"It's plain silly -- there's nothing illegal at all," Winter says in a grainy video of him in his office, responding to questions that flash on the screen. The video's format and typical low-budget YouTube aesthetic mimics Starbucks' offering, but at 5 1/2 minutes comes in at nearly three times the length.
So what prompted this volley of videos expounding on the finer points of U.S. trademark law on a site better known for clips of Britney Spears shaving her head and home-grown karaoke videos? The answer is that basic human staple: coffee. More explicitly, it's a conflict between the ubiquitous Starbucks and Ethiopia over the country's efforts to protect its intellectual property rights, thus obtaining a better price for a commodity that accounts for about half of its export income.
The idea is that producers in developing countries can increase the revenues they derive from the sale of their commodities by asserting control over the intangible value of their exports.
"This is much broader than Ethiopia or coffee," says Ron Layton, the chief executive of Light Years IP, a Washington, D.C.-based nonprofit that is advising Ethiopia on the trademarking and licensing initiative.
Last month the Seattle-based coffee giant's opposition to Ethiopia's initiative seemed to have softened somewhat in the wake of an Oxfam-led campaign, launched last October, questioning the company's commitment to corporate social responsibility. The public-relations push galvanized 90,000 people, including many Starbucks consumers, to call on the company to sign a licensing agreement recognizing the Ethiopian government's rights to the names, says Seth Petchers, who leads the anti-poverty organization's international Make Trade Fair campaign on coffee issues.
In late November, after a meeting with Ethiopian Prime Minister Meles Zenawi, Starbucks chief executive Jim Donald promised to work with the government to help Ethiopian coffee farmers. And in late February, Starbucks issued a press release stating it "respects the right and choice of the Government of Ethiopia to trademark its coffee brands and create a network of licensed distributors ... [and] will not oppose Ethiopia's efforts to obtain trademarks for its specialty coffees." The press release was prompted by a Feb. 14 meeting between Starbucks' Hay and Getachew Mengistie, the director of the Ethiopian Intellectual Property Office.
The meeting took place at the annual Eastern African Fine Coffees Association meeting in the Ethiopian capital city of Addis Ababa. The company also pledged to double its purchases of East African coffee by 2009 and to provide more technical assistance and microcredit facilities to support Ethiopian farmers.
Meanwhile, what exactly Starbucks meant by its pledge to respect Ethiopia's right and choice to trademark its coffee names is murky.
Starbucks has recanted its claim that the intellectual property program was illegal. "When we posted that video, we felt the information was correct, and since, we've learned a lot and realized the information about the legality of the trademark was not accurate," a Starbucks spokesman said last week in response to Winter's video.
The company continues, however, to argue that the coffee names would be better protected by a certification mark -- another form of intellectual-property protection.
Certification guarantees that names can only be used on products originating from that region but doesn't grant anyone ownership in the names. Examples include Florida oranges and Idaho potatoes.
"We believe that certification is the best way to provide economic benefit to coffee farmers while protecting the quality of the coffee," a Starbucks spokesman said in an e-mail last week. "Certification has been recognized globally as the preferred way to protect geographic names of quality agricultural products."
But a certification scheme would not give the Ethiopian government the control over its coffee brands that it is seeking, leaving it with less leverage to try to extract higher prices for its coffee.
The company spokesman also said Starbucks has no plans to sign the licensing agreement the Ethiopian government has been asking it to sign.
The issue is far from settled, Layton says, noting that Starbucks has been "twisting and turning" in response to bad publicity. "They've achieved their goal," he says. "They have confused the press."
The dispute began brewing in March 2005, when the government of Ethiopia, represented pro bono by Arnold & Porter's Winter along with partner Roberta Horton and counsel Anna Manville, filed an application with the U.S. Patent and Trademark Office to register the names of Yirgacheffe, Harrar, and Sidamo, three of the country's best-known coffee-growing regions.
The trademark applications were part of a broader initiative devised by the Ethiopian Intellectual Property Office, working with Light Years IP, to build the value of the brands, to enable coffee farmers to capture a greater share of the retail price of Ethiopian coffees in foreign markets, and to gradually increase export revenues from coffee. Currently, coffee shops such as Starbucks sell Sidamo coffee for approximately $26 a pound because of the coffee's reputation as a high-end specialty coffee, while coffee farmers receive about $1.35 per pound for their beans, Layton says.
Coffee is critical to the Ethiopian economy and accounts for about half of the country's export income. But in 2001, global coffee prices plummeted to 100-year lows due to oversupply, according to the London-based International Coffee Organization. Ethiopia is among one of the world's poorest countries, with an average gross domestic product per capita of less than $1,000.
In addition to its applications in the United States, the government has applied to register its trademarks in 30 other countries. So far, registrations have been approved in the European Union, Japan, and Canada, among others, says Arnold & Porter's Horton, who notes that the firm's London office coordinated the international applications.
The second part of Ethiopia's plan involves licensing the use of the names to individual coffee companies. Although Ethiopia is not asking licensees to pay a royalty, the license agreements would give the government leverage over its distributors and eventually allow it to gain a larger share of the retail price of the coffee.
Eleven companies in the United States, including Waterbury, Vt.-based Green Mountain Coffee Roasters Inc., have agreed to the licensing agreement, Horton says.
Ethiopian coffee exports currently account for about $400 million in export income, Layton says. If successful, the IP initiative could eventually boost the government's export revenues by about $100 million, he adds.
And the project may have ramifications beyond Ethiopia's borders, Winter and Layton say. Intellectual property has contributed greatly to wealth creation in the developed world, and Winter and Layton see no reason it can't be harnessed to spur the development of Third World countries' economies.
In the United States, the applications to register each of the three names went to different examiners. Under U.S. trademark law, terms that are primarily geographically descriptive -- such as Yirgacheffe, Harrar, and Sidamo -- can be registered if they are shown to have acquired distinctiveness in the marketplace.
Yirgacheffe sailed through, but the applications to register Harrar and Sidamo lingered. The first roadblock to the Sidamo application came from the fact that Starbucks had applied to register the name Shirkina Sun-Dried Sidamo in June 2004. The efforts of Ethiopia's then-Ambassador Kassahun Ayele to discuss the problem with Starbucks management were rebuffed for more than a year, says Oxfam's Petchers, who tried to facilitate the discussions. Starbucks did withdraw its application in early July 2006, after Ethiopia filed an action opposing it.
By then, another obstacle to the applications had surfaced. In June, the National Coffee Association, a group that represents coffee roasters, retailers, and importers, among others, had filed a letter of protest with the PTO arguing that the registration of Sidamo and Harrar should be refused and submitting hundreds of pages of Web site printouts it argued showed that the names were used generically. Oxfam claimed that the NCA filed its protest at the behest of Starbucks, which is one of the trade association's leading members, but both Starbucks and the NCA have denied this allegation.
On July 17, 2006, the PTO refused registration for the Sidamo and Harrar applications on the grounds that they were generic. A generic term is one that the relevant purchasing public understands primarily as a common name for goods or services. A prime example in the coffee context is java. Java is a term used for coffee so widely that it has come to refer to all coffee rather than just to coffee from Java, an Indonesian island.
But the office didn't make its decision final, leaving the door open for Ethiopia to submit further arguments as to why the trademarks should be registered.
In documents Ethiopia filed with the PTO on Jan. 17 urging the agency to reconsider its refusal to register the trademarks, it argued that Sidamo wasn't synonymous with a broad category of coffee and proffered its licensing agreements -- which acknowledge that Sidamo is owned and controlled by Ethiopia -- as evidence that the public recognizes it as a mark. "Unlike terms like 'fontina' or 'swiss cheese' that identify cheese that may come from anywhere in the world, SIDAMO coffee is associated with coffee grown exclusively in the Sidamo region of Ethiopia," Arnold & Porter's Manville wrote.
The back-and-forth on the trademark registration between the PTO and the Ethiopian government could go on for some time, says Horton.
Starbucks and Ethiopia have a long way to go to find some kind of mutually acceptable solution. "We have no plans to sign the licensing agreement that was put in front of us," the Starbucks spokesman said. "We will need to find other options."
Alexia Garamfalvi
Legal Times
Courtesy: www.law.com

Wednesday, March 07, 2007

Microsoft on Google's 'copyright violation' [International]

Copyright experts scoffed Tuesday at attempts by a top Microsoft lawyer to discredit Google's approach to copyrighted material.
Most believed Associate General Counsel Thomas Rubin's speech before a book conference -- as well as his opinion piece in the Financial Times -- had a lot more to do with Microsoft's vicious competition with Google than about solid legal arguments.
"Clearly they're in a pitched battle," said Mark Flagel, a partner with Latham & Watkins in Los Angeles. "Microsoft is doing everything it can to pick its fights. This is a popular one."
In a speech before the Association of American Publishers, Rubin accused Google of systematically violating copyright law. Google's Book Search and YouTube video sites are the perpetrators of these injustices, according to Rubin.
"Concocting a novel 'fair use' theory, Google bestowed upon itself the unilateral right to make entire copies of copyrighted books not covered by these publisher agreements without first obtaining the copyright holder's permission," Rubin's speech read. "Anyone who visits YouTube ... will immediately recognize that it follows a similar cavalier approach to copyright."
Google disputes that it violates any copyright laws. Its book search site allows people to search texts of many copyrighted books, the company maintains, but if a copyright owner has not consented, the searcher will only see a snippet of the copyrighted book.
That's a critical distinction for legal analysts. It's one thing, they say, to offer a search of a book's text and quite another to make an entire copyrighted book available, without permission, for copying -- which Google maintains it does not do. Google also claims it removes copyrighted songs and video from YouTube any time it is notified of infringement.
"The goal of search engines, and of products like Google Book Search and YouTube, is to help users find information from content producers of every size," David Drummond, Google's chief legal officer, said in a statement in response to Rubin's speech. "We do this by complying with international copyright laws, and the result has been more exposure and in many cases more revenue for authors, publishers and producers of content."
Rubin cast Microsoft's own book search as superior on copyright treatment. Experts didn't find this a surprising move given that Google, with its recent online word processing and spreadsheet offerings, has begun to encroach on Microsoft's core software businesses.
Microsoft has reacted to Google's success in recent years by beefing up its search capabilities, but may wind up harming itself with Rubin's arguments. After all, a lot of the law is unsettled when it comes to copyright protection in the digital age, said Eric Goldman, director of Santa Clara University School of Law's High Tech Law Institute.
"It's a very dangerous game for Microsoft to go out and push a major player in this space on copyright issues," Goldman said. "It's entirely possible that if they succeed in painting Google into a box, they may have inflicted a wound on themselves."
Courts are still grappling with whether Google's approach to books constitutes "fair use" under copyright law, Flagel said. Judges are also weighing whether Google should be held responsible for providing information, in search results for instance, about businesses that infringe on other people's copyrights.
The 9th Circuit U.S. Court of Appeals is expected to rule on three related cases on that subject by the end of the summer, said Fred Von Lohmann, a staff attorney for the Electronic Frontier Foundation in San Francisco.
Von Lohmann said Rubin's speech, which played up the fact that Microsoft asks copyright holders' permission before using their works, highlighted a way of thinking that he finds highly disturbing. Seeking permission from movie studios and publishing houses before using their material for a new innovation might be something Microsoft -- with its resources -- can do easily, but small-time innovators can't, Von Lohmann said.
"If you're a startup in a garage, is Hollywood going to return your calls if you're trying to develop something like YouTube?" he said. "Do you think they would have been able to launch a company if they had to negotiate permission?"
He continued: "The question here is not about do you like Google better or Microsoft. The question is, do you want a world where you can innovate first, or you have to hire lawyers and ask Hollywood's permission."

Monday, March 05, 2007

Patents do not hinder research [AAAS Survey Report]

A report on a survey conducted by the American Association for the Advancement of Science details how international intellectual property rights are affecting scientists' ability to conduct research. AAAS_IP_Survey_Report.pdf (477 KB)

According to the report, patents do not hinder research: 32% of the 2,117 U.S. respondents had acquired rights to use a patented technology, method, or material and of this group, only 32% reported having had difficulty accessing the technology.
See also AAAS’ slides from its 2006 IP Workshop.