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.

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.

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. 

Last Friday, August 28th, a jury in the Northern District of California, awarded French luxury goods maker, Louis Vuitton Malletier (part of LVMH), $32.4 million in statutory damages for its claims of contributory copyright and trademark infringement.   The amount awarded -- $31.5 million for contributory trademark infringement and $900,000 for contributory copyright infringement -- was certainly newsworthy standing alone.  But really what pushes this case to the top of the IP headlines is that the defendants held liable here -- Akanoc Solutions and Managed Solutions Group, Inc -- are Internet Service Providers (ISP) (and their primary -- Stephen Chen). 

Many a case has been brought against an ISP by a plaintiff trying to hold that ISP liable for the acts of its users.  I could be wrong, but I believe this is the first case where an ISP was held liable for the acts of its users.  For one reason or another these other ISPs and hosting sites have been able to escape liability.  But that was not to be the case here.  Through internal emails, Plaintiff LV was able to demostrate that the ISPs knew of the counterfieting taking place on the sites they hosted but took no action.  The jury agreed with LV that the ISP defendants should be liable because they knew of the large amounts of counterfeiting of LVMH product taking place on their sites and failed to take proper action to stop it.

The case began with a complaint filed back in 2007 in which LV claimed that "most if not all" of the sites hosted by Akanoc were trafficking in counterfeit goods.  About two years later, the jury awarded almost all of $1 million in damages requested for each of LV's fifteen trademark infringement claims against each of the three defendants. The copyright award was $150,000 for each of two copyrights against three defendants for a total of $900,000.

Although motions are still pending in the case, the amount of damages ordered by the jury should send a strong signal that ISPs must actively enforce their terms of use and effectively disable or remove content the subject of abuse notices from rights owners.  This case proives that an ISP that knows of an infringement and fails to take quick and effectuve action to remove the infringement from its site runs the risk of incurring a large damage award and serious damage to its business reputation as a result.

Yesterday, President Obama nominated Second Circuit Judge Sonia Sotomayor to replace retiring Justice David Souter.  To no one’s surprise, newspapers, blogs and TV news programs across the country immediately began scrutinizing Judge Sotomayor’s personal and professional background, including her judicial record.  This blog is no different of course, except that it focuses on intellectual property issues and therefore will examine Sotomayor’s experience exclusively from an IP standpoint.

In looking at Judge Satomayor’s background and experience in IP cases, there’s really not many cases to look back on.  While sitting on the bench on the U.S. Court of Appeals for the Second Circuit she did issue decisions in numerous trademark disputes.  But none of these cases seems particularly noteworthy.  Nor did there seem to be any overarching viewpoint that can be gleamed from a quick review of these cases.   

However, Sotomayor has issued decision in a few very significant IP cases.  In 2002, she issued a decision in one of the first rulings involving the Anti-Cybersquatting Consumer Protection Act.  Her decision helped establish the parameters of how and where claims under the ACPA could be brought by trademark owners.  The Act, which was enacted in 1999, makes it illegal for someone to register a domain name that is either a trademarked term or an individual’s name with the sole intent of selling the rights to that domain name for a profit.  One important provision in the law allows trademark owners to bring an in rem suit (which is a suit against the domain name itself, instead of against the registrant of the domain name).  The 2002 ruling in Mattel Inc. v.Barbie-Club.com (which was discussed in a prior blog issued by Sotomayor clarified that such in rem jurisdiction only applied in the judicial district where the domain name register, registry or other authority is located.More...

Last week an appellate court in Malaysia brought to an end an ongoing legal battle that began in 2001.  McDonald’s corporation sued the owners of the McCurry restaurant in Kuala Lumpur claiming likelihood of consumer confusion between the McCurry name and the McDonald’s trademark.

The menu at McCurry is traditional Indian food and the name supposedly stands for Malaysian Chicken Curry.  There was no use of the Golden Arches in the McCurry trademark.  The Appeals Court ruled there was no proof that the owner of the McCurry mark misrepresented the business to the public or confused consumers.  The court examined the differences in food sold as well as the differences in the consumers.

During the pending legal battle, the owner of the McCurry restaurant removed the “c” from Mc on its signage.   The “c” was replaced last week after the ruling. 

Trademark/Unfair Competition:
Walter v. Mattel, Inc., 210 F.3d 1108 (9th Cir. 2000)

Plaintiff Walter sued Mattel for misappropriation of her trade name, Pearl Beach, when Mattel released the Pearl Beach Barbie.  Walters was clearly the senior user of the name in her commercial illustration business.  Walter claims there was a likelihood of consumer confusion that consumers would believe her services and the Mattel products were associated.  The Court held Ms. Walters was unable to show a likelihood of reverse confusion between her business and Barbie because the products were not complementary, were not sold to the same class of purchasers, and were not similar in function.

In anticipation of Barbie® turning 50 in March this year, I thought we could take a look at some of Barbie’s legal adventures over the years.  Because so much has been written on the Bratz dispute we will be focusing on other legal battles.   Jump in the Barbie Camper and let’s get the show on the road. First, a little history.  Barbie was actually born in 1958, at least according to her driver’s license, I mean trademark registration, which states Barbie was first used on dolls May 9, 1958.  I guess Barbie wanted to be a year younger so all the press states she’s turning 50 this year, I think she is really 51.  I stopped counting the number of copyright registrations that are in place for “molded dolls” with Barbie in the name; along with the “accessory” Barbie items that are registered. Mattel has covered the bases to protect the Barbie brand intellectual property.  Mattel seems to be the defendant as often as it is the plaintiff in varied legal actions from parody to copyright infringement to reverse likelihood of confusion actions. 

• PARODY

Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir.2002)
In 1997, Aqua, a Danish band, produced the song “Barbie Girl” on the album Aquarium. In the song, one band member impersonates Barbie, singing in a high-pitched, doll-like voice; another band member, calling himself Ken, entices Barbie to "go party."  Mattel sued MCA Records for trademark infringement and lost.  The court held this was a true parody protected by First Amendment and the song was a commentary "about Barbie and the values . . . she [supposedly] represents." Because the song was about Barbie, "the use of Barbie in the song title clearly is relevant to the underlying work.” More...

The news is out that beloved sailor Popeye became part of the public domain in the EU on January 1, 2009.  Before folks start scrambling to start reproducing Popeye t-shirts, posters, films and cartoon strips, we need to take a look at exactly what has become public domain.

January 1 of each year more creative works become part of the public domain because copyright protection for the work expired. 

In the EU copyright protection extends for the life of the author plus 70 years.  The Popeye character first appeared in comic strips in 1929 and in film in 1933.  Elzie Segar, the Illinois artist who created Popeye, died in 1938.  With Mr. Segar’s death in 1938, the term of copyright for his Popeye, Olive Oil and other characters expired December 31, 2008 in the EU.

Because of extension of the copyright term in the United States, Mr. Segar’s work is still protected.  In the United States the copyright term is generally life of the author plus 70 years for works created, registered or published on or after January 1, 1978.   If the work was created and published or registered prior to January 1, 1978 (such as Segar’s Popeye) and any necessary renewals were filed, the copyright term is for a total of 95 years from the year in which copyright was secured for the work.  The US Copyright law will protect Popeye until 2024. More...

I thought it would be fun to do an “IP Blog Round-Up” featuring some interesting legal issues with a bit of twist when it comes to the subject matter.  Click out to each blog for more details.  Enjoy!

Counterfeit Chic Blog:  Take a look at the legal disclaimers Neiman Marcus included in their holiday gift book regarding the life-size figures constructed out of Lego’s.

Likelihood of Confusion Blog:  You can’t leave your hat on … But make sure you have those cuffs and bowtie if you want to secure a trademark for the Chippendale’s dancer classic look.

Above The Law Blog:  Are Dr. Seuss’ lawyers really the Grinch that Stole Christmas or are they doing their job of protecting their client’s intellectual property? More...