Friday, March 27, 2009

Advocacy group: UK databases illegal

An advocacy group says almost a quarter of British government databases are illegal under human rights or data privacy laws. The Joseph Rowntree Reform Trust said on Monday that 11 out of 46 major government databases breach laws intended to protect personal details of British citizens.

Britain uses databases to store information including DNA profiles, biographical details of all children, hospital records and details of welfare payments. The country's justice ministry says the trust's report offers no evidence that laws have been breached, or that the government's policy is flawed.
The trust says it has identified problems with a further 29 British databases. It says only 6 databases are both necessary and legal.

Facebook Aims for Privacy Compliance with New Public Policy Hire [International]

Facebook has hired former American Civil Liberties Union lawyer Timothy Sparapani as its new director of public policy. The move could score points for the social networking site in the eyes of online privacy advocates that have expressed concern over its data privacy policies. It also will help Facebook fill a gap if its Chief Privacy Officer Chris Kelly runs for California Attorney General, as is anticipated.

Sparapani will start work with Facebook in late April, and will be based in Washington, D.C., reporting to Kelly. The company would not provide additional details about Sparapani or his role.
As a senior legislative counsel with the ACLU, Sparapani testified before U.S. Congress regarding issues such as The Real ID Act, arguing the proposed federal identification program represented a threat to privacy and constitutional rights. In a 2007 ACLU press release, he contended that government data mining "will turn us all into suspects."
Though it is unclear how Sparapani stands when it comes to data mining for advertising purposes, there are indications he could be sympathetic toward privacy advocates and other detractors of unregulated online data gathering and storage for ad purposes.
Center for Digital Democracy Executive Director Jeff Chester said his organization, which has argued that Facebook's privacy policies are not stringent enough, has been working with Sparapani recently on privacy and online advertising issues. However, Chester expressed only cautious optimism regarding Sparapani's new role. "Does the announcement of the principles and the hiring of Tim indicate a kind of next generation Facebook?" asked Chester rhetorically. "I think it's too early."
He continued, "If Facebook thinks it can trade on [Sparapani's] relationship with [privacy groups]...then they're incredibly naive... Tim knows this community is willing to bite the hand that it just shook ten minutes ago."
The company came under fire last month after altering its terms of service, spurring an uproar among users and privacy protectionists regarding the amount of time Facebook could store user data. The firm quickly did an about-face, reverting to its original policy and presenting a new set of Facebook Principles and a Statement of Rights and Responsibilities for public comment. The firm has received thousands of comments and will close the commenting period March 29.
Chester's organization sent a letter to Facebook this week suggesting that the company needs to rewrite its proposed principles. For instance, the group stated the principles do not "discuss the gathering, mining, and sharing of user data. Users need to know how third-party developers use the data accessed or collected, including how the data is used for advertising and marketing."

Thursday, March 19, 2009

ITC evicts squatter from Indian Domain Name

ITC Ltd has won the case against a cybersquatter who had registered the domain name of its flagship brand Wills. Under the provisions of the .IN Domain Name Dispute Resolution Policy (INDRP), ITC alleged and proved that the domain name registered by UK-based cybersquatter Mark Segal of, was identical to its trademark and misleading as to its origin.

Says Rodney D Ryder, Partner and Head of the Technology Practice at Law Firm Kochhar & Co, which represented the Kolkata-headquartered company, “The domain name is the virtual address of a company, a web mark so to speak. Allowing this domain name registration would be harmful to the ITC/Wills brand as this could also have serious consequences for the company under the Amended Information Technology Act of 2000.” Under the provisions of this act, if a corporate body does not take reasonable security measures to safeguard its data, it could be held liable for any lapse in its data security. The company will be liable to pay compensation up to Rs 5 crore to the parties who has been caused wrongful loss due to deficiency in the security measures adopted by the company.

Registrations under the .in domain have been open since February 2005. Till now, 5 lakh Indian top level domain name extensions have been registered. It is expected in 2 years to cross to 10 lakh registrations. There have been 79 domain name disputes been resolved so far by through The National Internet Exchange of India (NIXI) under the INDRP. Under the Trademarks Act and the Indian Arbitration & Conciliation Act of 1996 cybersquatting disputes are required to be resolved within 45 days up to two months.

Cybersquatting does not only lead to the dilution and/or tarnishment of the brand; if brand owners continue to ignore these sites, such acquiesce could act as a limitation to infringement/cybersquatting actions in the future. Also, this could morph into a phishing or vishing scam or some other dangerous instance of cyber fraud. The domain names should rightfully belong to the brand owner.

In addition, with the enactment of the Information Technology Amendment Act, 2008, the organisation under various provisions has the responsibility to ensure that ‘...reasonable security measures’ are put in place. The organisation could be liable in the event that it ‘acquiesces’ or ‘allows’ its intellectual property or corporate identity to be misused.

Tuesday, March 17, 2009

Facebook sues Cayman Islands firm, alleges intellectual property infringements [International]

US-based social networking company Facebook has sued a Cayman Islands corporation and related parties for allegedly violating its intellectual property rights. According to Miami-based financial newsletter OffshoreAlert, details are contained in a civil complaint filed by Facebook, Inc., a Delaware corporation, at the United States District Court for the Northern District of California.
Defendants in the complaint are Power Ventures, Inc., a Cayman Islands corporation; Power Ventures, Inc., d.b.a., a California corporation; Steven Vachani, who "purports to be the CEO of"; and John Does, OffshoreAlert reported. "This action arises from Defendants' infringement of Facebook's trademarks and copyrights, their unauthorized solicitation, storage and use of Facebook users' login information to gain unauthorized access to Facebook's protected computer network and the unauthorized use of Facebook user accounts to send unsolicited commercial messages to other Facebook users,” the complaint stated Facebook is one of the most popular social networking sites on the Internet and now has more than 132 million active users worldwide.
Facebook tightly controls access to its network, and implements a variety of features in order to protect the privacy and security of its users' personal information. One such security measure is the prohibition of soliciting or sharing user login information (i.e. username and password). OffshoreAlert reported that the defendants operate a website that offers to integrate multiple social networking accounts. “They have knowingly and willfully disregarded Facebook's protocols and procedures for accessing information stored on Facebook computers, and are offering a product that solicits, stores, and uses Facebook login information to access information stored on Facebook computers without authorization, and to display Facebook copyrighted material without permission.
The defendants are also inducing Facebook users to provide them with email addresses of their Facebook contacts ("Friends") for the purpose of sending unsolicited commercial messages that purposefully and falsely state that they come from "The Facebook Team" the complaint stated. The defendants have reportedly ignored repeated requests from Facebook to respect its intellectual property rights. They have also refused to cease their unauthorized access of Facebook's computer system, and to stop interfering with its relationships with its users. They have essentially admitted that their business violates Facebook's rights, but they informed Facebook that they made a "business decision" to continue on with the activities.

Microsoft, Lexmark in cross-licensing deal [International]

Microsoft Corp. and Lexmark International Inc., which makes printers and imagining equipment, have struck a cross-licensing deal, the companies said on March 17 [2009]. The agreement covers a range of Lexmark printers and Microsoft software, but the companies did not disclose specific products or financial details.

"Because both Microsoft and Lexmark have access to an extensive range of technologies, this agreement will allow each company to shorten its development cycle and increase its focus on customer-related innovation," said David Kaefer, Microsoft's general manager of intellectual property licensing, in a statement.

Microsoft shares rose 45 cents, or 3 percent, to $16.73 in afternoon trading, while Lexmark, based in Lexington, Ky., saw its stock jump 55 cents, or 3.4 percent, to $16.90.

37 patents filed for Nano by Tata Motors [India]

In its bid to protect from imitations world-over, Tata Motors has apparently applied for 37 patents for its Nano, as per a report carried in The Economic Times. Furthermore, it is in the process of filing Intellectual Property Rights (IPRs) claims for Nano in overseas markets, as quoted by a company official, adding that most of the patent applications filed before 2007 have already been granted.

It may be recalled that Nano has been developed to cater to the demands from developing as well as developed markets equivocally and there have been numerous innovations and inventions incorporated in the car that make the car unique.According to The Economic Times, the company has used a number of new concepts and ideas to develop this vehicle and patents will help in protecting some of its innovative ideas, as claimed by well-informed sources.. The move is also expected to help Tata Motors to sell the car in markets such as Africa, Southeast Asia, Eastern Europe and Latin America.

Amazon sued by cable TV giant over Kindle ebooks [United States - Patent Infringement]

Life-science-obsessed cable TV giant Discovery Communications has sued over its Kindle ebook devices, claiming patent infringement.

Discovery filed suit today in the US District Court for the District of Delaware, alleging infringement of a patent filed by the company in September of 1999. Describing an "Electronic Book Security and Copyright Protection System," the patent was awarded in 2007, with Discovery founder John S. Hendricks listed among the inventors.

"The Kindle and Kindle 2 are important and popular content delivery systems," reads a canned statement from Discovery general counsel Joseph A. LaSala Jr. "We believe they infringe our intellectual property rights, and that we are entitled to fair compensation. "Legal action is not something Discovery takes lightly. Our tradition as an inventive company has produced considerable intellectual property assets for our shareholders, and today’s infringement litigation is part of our effort to protect and defend those assets."

Discovery and the law firm representing the company did not immediately respond to a request for comment. Amazon declined to comment.

Discovery - known for the Discovery Channel, TLC, Animal Planet, and other cable networks - is objecting not only to the Kindle and its recently-announced sequel, the Kindle 2, but also to Amazon's online delivery system. Amazon delivers ebooks over something it calls WhisperNet, which runs over Sprint's EVDO wireless network.
"Amazon's infringing activities...include the operation of the website and the provision of services related to the Kindle and Kindle 2 through and by the website, including but not limited to the sale of electronic books," the suit reads.
The suit demands a jury trial and damages for direct, induced, and/or contributory infringement of Discovery's patent.
The patent describes a system that "provides for secure distribution of electronic text and graphics to subscribers and secure storage." This covers distribution to bookstores, public libraries, and schools as well as consumers equipped with a "home subsystem." As described, delivery may involve everything from television, telephone, and radio networks to the internet.
"The home subsystem connects to a secure video distribution system or variety of alternative secure distribution systems, generates menus and stores text, and transacts through communicating mechanisms," the patent abstract reads. "A portable book-shaped viewer is used for secure viewing of the text. A billing system performs the transaction, management, authorization, collection and payments utilizing the telephone system or a variety of alternative communication systems using secure techniques."
In February, the US Author's Guild complained that the Kindle 2's new text-to-speech feature violated copyright law because it "reads" books aloud without paying author's extra royalties. "They don't have the right to read a book out loud," Paul Aiken, executive director of the Authors Guild, told the Wall Street Journal. "That's an audio right, which is derivative under copyright law."
But the publishing industry has yet to actually file suit. Amazon has now said that it will allow publishers to opt-out of the new text-to-speech feature.

Cybersquatting up by 8 per cent in 2008: WIPO

Cybersquatting -- holding web domain names hostage for profit -- rose to record levels in 2008, the UN agency for intellectual property rights said.

According to the World Intellectual Property Organisation (WIPO), a record of 2,329 complaints of cybersquatting an 8 per cent increase over 2007 were filed last year, mostly by trademark holders whose names were reserved on the web by other parties.

The increasing number of cases filed with its Arbitration and Mediation Center is occurring at a time when many more domain slots are about to be launched by the Internet Corporation for Assigned Names and Numbers (ICANN), it said adding it expects an in crease in number of such cases.

Global trademark activities grew 5.3% in 2008 [International]

Activities related to filing international trademarks have recorded a growth of 5.3% in 2008, with 42,075 applications filed during the year, UN agency World Intellectual Property Organisation (WIPO) said on Tuesday.
However, trademark filing activity has been affected by the economic slowdown and grew a mere 3.9% in the second half of 2008, compared with 6.9% in the first half of 2008, the Geneva-based WIPO said in a statement. “The continued growth in the use of the international trademark system underlines the pivotal importance of trademarks to business, particularly within challenging economic times,” WIPO director general Francis Gurry said. The member countries, under WIPO’s Madrid system for the international registration of trademarks, had filed a total of 39,945 trademark applications in 2007. “Even in economically difficult times, businesses continue to recognise that a trademark is a smart investment in a company’s reputation and long-term sustainability,” Gurry added. “Trademarks play a key role in engendering consumer confidence, an important factor for businesses facing the challenges of the current economic slowdown,” he added. Applicants from Germany topped the list of filers in 2008 for the 16th consecutive year, followed by users in France and the US, WIPO said.
India is not a member of the Madrid system, which offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office. Lidl, a discount supermarket chain from Germany, was the largest filer in 2008, WIPO said. Nestle (Switzerland), Henkel (Germany), Boehringer Ingelheim (Germany), Novartis (Switzerland), Janssen Pharmaceutica (Belgium) and BSH Bosch und Siemens (Germany), were other top applicants.

Tuesday, March 10, 2009

Pre-1923 Publication not in Copyright Public Domain [United States]

In Societe Civile Succession Richard Guino v. Renoir, (9th Cir., December 2008), the court held that works first published in France no later than 1917 without a U.S.-style copyright notice were never subject to U.S. copyright under the 1909 Copyright Act, and therefore could not have fallen into the public domain in the U.S.

This holding is particularly interesting because, as the Ninth Circuit noted, "[t]he year 1923 is significant because the 1976 Act . . . and the 1998 Copyright Extension Act operate together to create a bright line rule for which works are now in the public domain: works published before January 1, 1923 are generally in the public domain." This rule is even noted in Copyright Office Circular 22 which states

. . . the U.S. copyright in any work published or copyrighted prior to January 1, 1923, has expired by operation of law, and the work has permanently fallen into the public domain in the United States. For example, on January 1, 1997, copyrights in works first published or copyrighted before January 1, 1922, have expired; on January 1, 1998, copyrights in works first published or copyrighted before January 1, 1923, have expired. Unless the copyright law is changed again, no works under protection on January 1, 1999, will fall into the public domain in the United States until January 1, 2019.

The works at issue were sculptures by the famed artist Renior and one of his assistants Richard Guino.

Trade Secrets: WIPO Handbook [International]

From the WIPO SMEs NEWSLETTER for October 2008:

"Protecting your Trade Secrets: A Brief Guide to Preserving Intellectual Capital"

This basic guide by FISH & RICHARDSON P.C. provides useful information on building up a trade secret protection program and in preventing unauthorized use of the trade secrets of others. More

Monday, March 09, 2009

Bills Creating Performance Right for Recording Artists Are Reintroduced in Congress [United States]

Senators Patrick Leahy (D-VT) and Orin Hatch (R-UT) and Representatives John Conyers (D-MI) and Darrell Issa (R-CA) introduced bills -- S. 379 and H.R. 848, each referred to as the "Performance Rights Act" - that, for the first time, would require United States broadcast radio stations to pay licensing fees to performers of music. If passed, the bills would constitute a long-awaited change to the current broadcast licensing regime, in which broadcasters make payments to the owners of copyrights in musical compositions, but not to the performers (and record labels) that own copyrights in and/or contribute to sound recordings. The current bills are an attempt to bring the United States into conformity with the rest of the world. Nearly every industrialized nation other than the United States already requires radio broadcasters to compensate performers. However, because the United States does not provide compensation for foreign performers, many foreign broadcasters do not pay for publicly performing songs recorded by U.S. performers.
Upon introducing H.R. 848, Representative Issa remarked that "we have a opportunity to show the rest of the world that the United States practices what it preaches in protecting intellectual property.... Our ignorance of intellectual property rights on this issue is a worldwide embarrassment and it must end now." The absence of a public performance right in sound recordings has inspired a long string of failed attempts to create parity among songwriters and performers. Ironically, in 1995, these attempts to obtain parity resulted in a more fragmented legal regime. At that time, Congress passed the Digital Performance Right in Sound Recordings Act, which requires digital "webcasters," but not radio broadcasters, to compensate performers. As a result, performers currently are compensated when their songs are played online but not over the radio, while songwriters are compensated in both instances. In their current form, S. 379 and H.R. 848 would amend sections 106(6) and 114 of the Copyright Act, which grant limited public performance rights to sound recordings and establish statutory licensing schemes to determine rates applicable to public performance of sound recordings, respectively. In order to curb criticism and opposition, the House and Senate versions of the Performance Rights Act contain provisions limiting the scope of the new right provided to performers.
These limitations include:
Available statutory (i.e., "compulsory") licensing with rates set by the Copyright Royalty Judges, who also currently set rates for online digital public performances of sound recordings, among other things.
Exemptions for nonsubscription transmissions of services at places of worship or other religious assembly, as well as "incidental" use of sound recordings.
An annual $1,000 blanket statutory license for noncommercial (i.e., public, educational, or religious) radio stations.
An annual $5,000 blanket statutory license for commercial radio stations that generate less than $1.25 million in annual revenue (which the bills' sponsors believe will cover over 75% of the commercial radio stations in the U.S.).
Available "per program" statutory license rates for broadcast radio stations that make "limited feature uses" of sound recordings.
Provisions to ensure that songwriters and composers continue to receive fair compensation for public performances of their works despite the increased costs to broadcasters associated with paying performers.
Retention of a distinction between musical works and sound recordings such that venues that play recorded music (such as clubs and bars) would continue to pay songwriters but not performers.
Provisions requiring 50% of the royalties paid through statutory licensing of sound recordings to go to "featured" performers and "non-featured" musicians and vocalists rather than solely to copyright owners of the sound recordings. (The House bill would also require 50% of royalties earned through voluntary licensing of sound recordings for public performances on broadcast radio to be paid to "featured" performers and "non-featured" musicians and vocalists, whereas the Senate bill would not.)The bills face some opposition, especially from radio broadcasters. The National Association of Broadcasters ("NAB"), an opponent of the bills, maintains that requiring radio stations to compensate performers "will harm your local radio stations [and] threaten new artists trying to break into the business." NAB also claims that the bills will undo the promotional "symbiotic relationship" that currently exists between radio stations, record labels, and performers. In the last Congress, such arguments inspired 227 members of the House of Representatives and 14 Senators to support Congressional resolutions (H. Con. Res. 244 and S. Con. Res. 82) opposing radio royalties for performers. However, organizations that speak for musicians contend that the promotional value of free radio play does not justify the absence of protection for sound recordings. For example, Ann Chaitovitz, the Executive Director of Future of Music Coalition, has argued that "the promotional claim is irrelevant. Authors often see sales spikes when their books are made into movies, but no one would suggest that the writer shouldn't be paid when their work is translated to the screen because the film is 'promotional'."
The bills' sponsors have publicly stated that they are willing to work with all interested parties to see these bills through to law even if that requires amendments. So the final form of the bills may differ significantly from their current form. In the meantime, the bills have a strong base of support, and many believe that the bills have a strong chance of becoming law.

Sunday, March 08, 2009

Design Day 2009 to Be Held at the USPTO Conference [United States/International]

The United States Patent and Trademark Office (USPTO) announced in a press release that it will host its third annual Design Day at the agency’s headquarters in Alexandria, Virginia next month.

The event will be co-sponsored by the American Intellectual Property Law Association, the Intellectual Property Owners Association and the American Bar Association Section of Intellectual Property Law.

The Design Day is being organized by Technology Center 2900 and is open to design patent practitioners and USPTO examiners.

This program will provide an opportunity for design managers, examiners, independent inventors and the design patent bar to exchange ideas and to educate each other on important topics affecting design patent practice.
Program topics will include:
- Adequately Disclosing Multiple Embodiments - Application Processing: Allowance to Issue- A presentation and discussion of the recent CAFC en banc decision in Egyptian Goddess v. Swisa Inc.- A keynote address by Randall Rader, United States Court of Appeals for the Federal Circuit on the future of design patent law.

Trademark fee cut in the United Kingdom: Could price wars loom? [United Kingdom]

A price war looked set to break out on Monday over trademark fees, as the UK’s Intellectual Property Office proposes its first cuts in charges for more than a decade. The move comes just days after European Union countries agreed to let the European trademark office – formally known as the Office of Harmonisation for the Internal Market – cut its fees by 40 per cent.

The cuts by the IPO are expected in particular to benefit small and medium-sized companies that often find the costs of protecting their intellectual property onerous. The IPO will unveil on Monday proposals to reduce its fees for trademark applications made electronically by 15 per cent, and offer additional price reductions for companies that want to oppose applications.

It will also give companies more ability to pay only part of the application fee up-front, meaning that less money should lost when applications are abandoned. The proposed reductions will be subject to consultation before coming into force in October.

The Alicante-based OHIM issues the “community trademark”, an intellectual property right that applies across the 27-country EU bloc, while the IPO – like other national offices in Europe – administers lower-cost trademarks that give domestic protection only. Some EU countries were concerned that the OHIM’s move, which was prompted by unexpected popularity of the community trademark and subsequent financial surpluses at the office, might undercut business at their national offices. The UK move comes after a decline in domestic applications for patent and trademark applications, which fell 12 per cent last year.