Over the years I have run across trademark licenses and trademark infringement settlement agreements where one party or the other wants the ability to donate counterfeit goods that may have been confiscated to a charity.  Rights holders often refuse because of the concern that the counterfeit goods may not actually go to a charity, but be placed back into the stream of commerce and resold in the marketplace.  A bigger concern for trademark holders is the quality and safety of the counterfeit/infringing items.  Could someone be hurt by a dye in fabric or paint on a toy?

This December, the homeless in LA benefitted from recently passed Senate Bill 324.  The Los Angeles Police Department piracy unit donated 10,000 pairs of confiscated counterfeit athletic shoes.  Under the California Penal Code section 350, the police may donate, with consent of the trademark owner, confiscated counterfeit goods to organizations serving the homeless.

The New York Times reported this week that in 2009 the City of New York shredded and incinerated tons of “knock-off” clothing collected in police raids.  In the past the City donated these garments to charity organizations that removed the counterfeit trademark markings.  In 2009 the City reports there were no requests for the goods to go to charities.

The US Customs and Border Protection are involved as well.  The New York/New Jersey US Customs and Border Protection field office is the fourth US Customs office to develop a counterfeit donation program.  Los Angeles, Detroit and San Francisco US Customs and Border Protection field offices already have such programs in place.  Most of the items included in the donations are clothing, but there have been some donations of televisions. 

Article 46 of the TRIPS agreement governs what the US Customs and Border Protection may do with confiscated items.  This link is a law review note that gives lots of details on the pros and cons of donating items to charity.   The article looks at the situation that occurred where over $20 million dollars in seized infringing items were provided to hurricane survivors after Hurricane Katrina.

Yesterday in Phoenix federal court, Matthew Purse was sentenced to 21 months in federal prison, 3 years probation and $12,000 in fines and restitution. Purse had pled guilty to conspiracy, mail fraud and criminal copyright infringement when he and his accomplice, Chris Walters (who remains a fugitive), were caught engaing inseveral massive software piracy schemes through various eBay accounts and various websites, such as SoftwareDiner.com and Fivedollarsoftwarehouse.com.

SIIA initially discovered several massive software piracy schemes and began an investigation that eventually led to the indictment and conviction of Purse. SIIA forwarded the results of its investigation to the U.S. Department of Justice and other government agencies, and then worked closely with them to pursue Purse and others involved in the piracy schemes. On February 26, 2009, Purse pled guilty to conspiracy, mail fraud and criminal copyright infringement.  Purse and Walters duped nearly 8,000 unsuspecting consumers out of hundreds of thousands of dollars and cheated software companies such as Adobe, Symantec, Apple, Corel, Intuit and many others out of millions of dollars in revenue.  For more on this check out SIIA's press release.

Tareq Salahi, one half of the couple that crashed the White House state dinner a few weeks ago, paid-off his landscaper by a court’s order to turn over a “Patek Philipe” watch valued at more than $15,000.00.  Oops, it was a fake valued at around $100.00.

The Washington Post reports the timepiece was evaluated by a jeweler to determine it was a counterfeit watch. 

My question…. Did Mr. Salahi know he was wearing a fake?  I am assuming the brand on the watch was not misspelled and there were no obvious signs of it being counterfeit.  This article from the New York Times gives some great insight on how every day is “Black Friday” in the counterfeit market.  One vendor on Canal Street in New York was offering deals on “Patek Phillipe” (notice the two “l’s” in Philipe) watches. 

How do you spot a fake a watch? After you confirm the name is spelled correctly, attorney Donald J. Valdez, who specializes in luxury product brand enforcement, says “if you see the second hand going tick, tick, tick … you have a fake.” Valdez continues, “The sweep hand on luxury brand watch will be perpetual motion.  Some fakes have been developed where it is difficult to spot the tick.”

Two other tail-tail signs are the color of the watch casing surrounding the face of the watch varying from an original and the stretch or elasticity in the band. “If you purchase a watch with an expansion band and it expands like a baby gate and doesn’t slide back into place, it is a fake,” says Valdez.

On December 3rd, Victoria Espinel was confirmed by the Senate as the first U.S. Intellectual Property Enforcement Coordinator (IPEC).  The position, which is often referred to as the IP Czar, was created last year as part of the “Enforcement of Intellectual Property Rights Act of 2008” (Public Law 110-403; S. 3325).  SIIA applauds President Obama for his appointment of Espinel. She brings a deep experience in negotiations with other governments, as well as a strong record of working with all the key agencies that are on the front lines of enforcing IP laws.

By law, the position was to be located in the Executive Office of the President, but it took some time for the Administration to determine exactly where the position would reside.  Ultimately, it was decided that the IPEC would reside in the Office of Management and Budget.  In her new position, Espinel will chair an interagency intellectual property enforcement advisory committee, comprised of representatives from the Office of the U.S. Trade Representative (where Espinel previously worked as an Assistant USTR for Intellectual Property and Innovation, as well as Deputy Assistant USTR for Intellectual Property and as Associate General Counsel at USTR), the Patent and Trademark Office, the Copyright Office, and others, that will develop a Joint Strategic Plan.  The plan was supposed to be submitted to Congress no later than October 13, 2009 (12 months after the law’s enactment), but because Espinel was not confirmed until recently this deadline was delayed. 

Espinel has advised the Senate Judiciary Committee, Senate Finance Committee, House Judiciary Committee and House Ways and Means Committee on intellectual property issues and is a member of the Brain Trust of the Global Innovation Forum.  Most recently, Espinel served on the faculty of George Mason University School of Law.  She has also worked at the law firms of Covington & Burling and Sidley, Austin, Brown & Wood.  She has an LLM from the London School of Economics, a JD from Georgetown University Law School, and a BS in Foreign Service from Georgetown University's School of Foreign Service. 

David Kappos is the newly minted Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.  As if that title wasn't already a mouthful, it looks like Kappos' title just grew a bit longer.  You can now add "blogger" to his title.  Yes, that's right a few days ago Kappos began a PTO blog.  The blog can be found at:  http://www.uspto.gov/blog/.   I commend the PTO and Kappos, in particular, for providing this new forum, and for jumping right into  his new position and attempting to promptly address many of the issues confront the PTO and other stakeholders in the patent system.

Visual artist Daniel Moore won at the trial level against the University of Alabama's lawsuit alleging Moore's original fine art violated the University's trade dress rights in the school’s football uniform and crimson color.

Moore, a visual artist who attended the University of Alabama, and has sent his children to the University as well, is well-known for his real-life paintings of “great moments” in University of Alabama football history. 

The litigation began in 2005 after numerous years of an amicable relationship between the parties.   In a very large nut shell, from 1991 to 2000 there was a licensing agreement in place allowing Moore to reproduce and offer for sale certain visual works that included “indicia” of the University/Football team.   “Indicia” was defined to include logos, seals, symbols and “Colors: Crimson PMS 201 Gray PMS 429.”  “Uniforms” were never included as “Indicia.”

After the agreement ended, Moore continued to create fine art visual works that included the football team, and uniforms --- but not “Indicia.”  Moore’s defense, “if I am not including ‘Indicia’ there is no reason to pay a royalty.”  The University claimed common law trade dress rights in the team’s uniforms and crimson color and that Moore’s paintings infringed upon such trade dress rights. 

The Opinion is long but does a good job of setting out the arguments.  The case in my mind really turns on the decision in ETW Corp. v. JIREH Publishing, Inc., 332 F.3d 915 (6th Cir. 2003). ETW is the Tiger Wood’s case where the publisher distributed limited edition fine art prints of Tiger Woods. The court in ETW made it clear that First Amendment freedom of expression trumps publicity rights when the work is an original or true limited edition fine art.  If they were talking about coffee mugs and t-shirts, a different decision would have been rendered.

The case style is University of Ala. Bd. of Trustees v. New Life Art, Inc., Civ. No. 7:05-cv-00585-UNAS-RBP (N.D. Ala. 2009).

Billboard Magazine is reporting that the copyright lawsuit filed by Joe Satriani against Coldplay was dismissed.  Satriani sued based on the similarities between his song “If I Could Fly” and Coldplay’s “Viva La Vida”.  Details of the settlement are under wraps but industry insiders say that a financial settlement was likely reached and that Coldplay does not have to admit any wrongdoing.  Both parties will bear their own legal costs.  The case was dismissed with prejudice which means that the case cannot be reinstated.

Neither Satriani nor Coldplay has made any public comment about the settlement.  Satriani is currently on tour with “supergroup” Chickenfoot while Coldplay is in the studio recording new material.  The settlement was finalized on September 14, 2009, but was kept under the radar as news of Kanye West’s outburst on the MTV Video Music Awards took over the airwaves.

What remains to be seen is whether Cat Stevens will file a similar lawsuit based on his belief that Coldplay’s “Viva La Vida” infringed his song “Foreigner Suite”.  Stevens has publicly said that he may file suit depending on how Satriani’s lawsuit turns out. But what about the Latin band Enanitos Verdes whose song “Frances Limon” sounds similar and predates both Coldplay & Satriani’s versions?  Are they contemplating getting in on the legal action?  Is the Satriani settlement just the first in a long line of potential lawsuits?

It will be interesting to see whether this settlement affects Coldplay’s habit of publicly bragging about the similarities between their songs and other artists’.  Hopefully, their legal counsel has advised them that this habit is not endearing to fans and could come back to bite them in the butt.

Yesterday, Gregory Fair, a 46-year-old man from Falls Church, Virginia, was sentenced to three years and five months in federal prison and was ordered to pay $743,098 in restitution to Adobe for selling at least $1.4 million in pirated Adobe software on eBay.  This past April Fair pled guilty to charges of criminal copyright infringement and mail fraud for selling the pirated software since 2001.  In addition to restitution and jail time, Fair also had to forfeit a BMW, a Hummer, a Mercedes, a 1969 Pontiac GTO and $144,000 in cash seized from a safe deposit box, all of which were obtained from his sale of the pirated software. 

The case was originally brought to the attention of federal authorities by SIIA-member Adobe in 2007.  Once alerted to the problem, undercover U.S. postal inspectors made several "test" purchases of the pirated software from Fair.  After verifying the illegal nature of the software, they then raided Fair's home where they found a CD burner and label printer that Fair was using to make copies of the illegal software.  The case was prosecuted by federal prosecutors Marc Miller and Glenn Leon.  Miller has been at the forefront of many of these eBay software piracy cases, including the case of Jeremiah Mondello, who comtinues to serve his four year prison term for selling pirated software on eBay.

About ten days prior to Fair's sentencing, another Gregory, Gregory Bambo, a 47 year-old-man from Richmond, California was also sentenced to prison for engaging in software piracy.  Bambo pled guilty to selling pirated software online during a three-year period beginning in 2004 and was sentenced to prison for one year and one day.  During the three years he engaged in the piracy, Bambo sold at least 1,400 cracked software programs having a combined retail value of just over a half million dollars. 

Sometimes life only gives us time for a quick coffee break and snippet of information that we lawyers tuck in the back of our mind to pull out for later use (either a moment of great insight for a client or a cocktail party story that only other intellectual property attorneys appreciate).

Take your coffee break and enjoy:

Professor Susan Scafidi at the Counterfeit Chic blog takes a quick coffee break and sounds off on Nescafe and Starbucks “Via.”

Trademark lawyer Marty Schwimmer tells us about “stuff he’s gotten free” by blogging and how the FTC will be regulating those “freebies” to bloggers and other social networkers. 

The Hollywood Reporter, ESQ blog reports a lawsuit for theft of an idea against the William Morris Agency for the television show “Shaq vs.”

The Copyright Litigation Blog advises statutory mergers trigger copyright infringement.

Las Vegas Trademark Attorney Ryan Gile tells us “Rat Pack” is generic in connection with Rat Pack tribute shows. 

If you have a little longer coffee break, treat yourself to this week’s Blawg Review #232 from Solo Practice University.  Not IP related, but an interesting read. 

The case of Bilski v. Doll, set for oral argument in the U.S. Supreme Court on November 9, may be one of the more significant patent cases in recent memory.  At issue is the scope of subject matter that is eligible for patent protection, governed by section 101 of the Patent Act.  The petitioner Bilski is seeking to patent a “business method,” an allegedly novel process for hedging risk in commodities trading.  His claims were rejected as unpatentable by the Patent and Trademark Office, and by the Federal Circuit appellate court.  The Federal Circuit held that a process must (1) be tied to a machine, or (2) transform matter to a different state or thing, in order to be patentable.  Bilski challenges that ruling and asserts that pure methods can be patentable.

Friday, October 2 saw the latest round of amicus (non-party, “friend of court”) briefs filed in the case, among them a brief by the Software & Information Industry Association.  The SIIA agreed with the results in the lower court, arguing that Bilski’s method is unpatentable.  The SIIA, however, urged the Court not to go “too far” and call into question the patentability of computer software.  The SIIA explained that software inventions have long been treated as patentable by the courts and the Patent and Trademark Office, and that the software and information industries have thrived with the availability of patents.  The promise of patent exclusivity is one factor that leads to investment in the industry.

Over 30 amicus briefs have been filed in the case, with many more still pouring in.  Further updates will follow after oral argument in the case.