What's New and Interesting in Intellectual Property
This is a collection of news bulletins about intellectual property and links to current stories and sites. We will post new information about intellectual property at this site. In addition, you may wish to go to the following news sites for recent developments.
The 105th Congress passes two (2) new copyright acts. The Copyright Extension Act (S. 505) was passed adding 20 years to most copyright expiration dates. The Digital Millennium Copyright Act (S. 2037) has also passed setting the new standards for copyright protection in the information age. Please look up the full texts of the bills here.
Discounting Patents - H.R. 3723 has been passed by the 105th Congress and will be signed by the President before the end of 1998. This bill will reduce USPTO patent fees by 6%. Look up the text of the bill here and visit the USPTO's web site to look for the announcement of the enactment new fee structure. When enacted, this will update the fees quoted in Table 3 of the book.
 Out of Nothing You Can Really Get Something - That is what Warner Brothers recently found out as it prepared to release the movie "The Devil's Advocate" to video. Artist Frederick Hart sued Warner Brothers over its unauthorized use of his sculpture called "Ex Nihilo" (meaning "out of nothing") which appears in the National Cathedral in Washington, D.C. The artwork is a bas-relief sculpture above the cathedral's west door, presenting an artistic vision of the Creation. The cathedral had joined Mr. Hart in legal action against Warner Brothers. In addition to alleging copyright infringement, the suit alleged that the film had given a "perverse depiction" of Mr. Hart's work that was "deeply offensive" and constituted a "gross misrepresentation." The matter, however, was amicably resolved. Details can be found here and here.
Just can't stop those dancin' feet - Robyn Astaire, widow of the late Fred Astaire, sued Best Film and Video Corporation over Best Film's use of film clips of Fred Astaire in several dance instruction videos without the consent of his estate, namely her. However, the appeals court upheld the lower court's ruling that Best Film's use of the Astaire film clips was not a use for "advertising, selling, or soliciting" in violation rights of the Astaire estate.
What's fair about a pregnant Leslie Nielsen? - Apparently everything. Photographer Annie Leibowitz sued Paramount Pictures over the misappropriation of her copyright in her photo of a pregnant Demi Moore for the magazine Vanity Fair. Paramount was about to promote its upcoming film "Naked Gun 33: The Final Insult" by putting Leslie Nielsen's head on Demi's body. The court ruled that the picture was a fair use of the copyright since it was "highly transformative" parody of the original photograph. If you don't believe me, read it for yourself.
"I Have a Dream" is in the Public Domain - The estate of slain civil rights leader Dr. Martin Luther King Jr. sued CBS for violation of the estate's copyright on the historic 'I Have A Dream' speech Dr. King delivered in August 1963. King's estate registered three (3) different versions of the speech with the U.S. Copyright Office. The King estate alleged that a videotape on the civil rights movement produced and distributed by CBS, which includes footage of most of Dr. King's speech, violates their copyright.
However, On Novmeber 5, 1999 the U.S. Court of of Appeals for the 11th Circuit held that the speech was not a "general publication" under the 1909 Copyright Act which was in force in 1963. The decision is published at "52 USPQ2nd 1656."
It was held that the Dr. King's delivery of the speech on the steps of the Lincoln Memorial in Washington D.C. constituted a public performace. This along with the lack of restrictions on copying and reproduction of the speech over the past 30 years has placed it in the public domain.
Angels can dance on the head of a pin - But they can't own a copyright in the United States. The 9th Circuit court of appeals in California held that angels cannot hold a copyright. Rather, the copyright belongs to the "first human being who compiled, coordinated and arranged" the material.
The Game of Names - Click here to read about current trends and cases in the area of domain name disputes.
Going Public - The United States Patent and Trademark Office has made its databases available to the public.
The following databases are now fully open to the public:
1 - Trademark Database;
2 - Trademark Applications and Registrations Status Database (TARR);
3 - Patent Database; and
4 - Expired Patent Database.
Going Down with the Ship - Titanic's director James Cameron has taken credit for the drawings shown in the movie as being created by Leonardo DiCaprio's character. In fact, they are the work of Gilberte Brassai, Sally Mann and Alfred Stieglitz.
What do Ira Gershwin and Mickey Mouse Have in Common? - Fear of the public domain. Current law says copyrights to music written before 1978 expire 75 years after publication. An author's copyright lasts for 50 years after death, and a "work made for hire" - as in a movie or cartoon - has a copyright of 75 years. Therefore, the cartoon "Steamboat Willie" will pass into the public domain in the year 2003 since it was created in 1928. In fact, by 2011 over 50 original Disney cartoon will pass into the public domain so that someone could do to Steamboat Willie what Disney did to Victor Hugo's novel The Hunchback of Notre Dame, namely create a derivative work without the author's permission. The existence of H.R. 2589, the House version of copyright term extension and now named "The Sonny Bono Copyright Term Extension Act," has caused and continues to cause quite a stir in the world of copyright ownership. See the controversy for yourself here, here, and here.
Breaking the Not-So-Secret Code - In a nearly unprecedented move, Netscape Communications released the source code to its Netscape Communicator 5.0 to the public under a "public license." In this way, Netscape gives its technology to the masses while retaining the copyright as the release is under "license."
No trademark rights for a Princess. The United Kingdom trademark office has refused registration of the face of Princess Diana as a trademark. Essentially, the U.K. Trademark Office believes that a star's image does not indicate anything about the origin or quality of the services and therefore does not function as a trademark. Interestingly enough, ALTHORP, the name of the Spencer family home, has recently been accepted for registration.
Half a world away, the princess is fighting another battle. Earlier in 1998 the Franklin Mint issued the Diana Princess of Wales Porcelain Portrait Doll. Since then, the Franklin Mint has issued coins and plates with Diana's image. The estate of the princess holds that these are unauthorized pieces of memorabilia and on May 18, 1998 sued the Franklin Mint in Los Angeles, California. The suit alleges that the Franklin Mint has violated the princess' right to publicity. No equivalent right exists in the United Kingdom. The Franklin Mint does not seem to have taken too much notice and the Estate lawyers have gone on the offensive.
Those Times They Are a Changin'. On October 30, 1999, the Trademark Law Implementation Treaty became effective and the United States has now become a member of the Trademark Law Treaty (TLT). Enacted on October 30, 1998, the TLT streamlines and unifies trademark laws around the world for the benefit of trademark applicants and owners. Please visit the "Updates" section for the revision to the text of the book.
Information on the implementation of the treaty by the U.S. Trademark Office can be found at http://www.uspto.gov/web/offices/com/sol/tmlwtrty/index.html. The following is a list index of USPTO forms which comply with the TLT implementation act which can be found at http://www.uspto.gov/web/forms/index.html.
| Form Number
| Name
|
| PTO/TM/1478
| Trademark/Service Mark Application, Principal Register
|
| PTO/TM/1553
| Allegation of Use for Intent-to-Use Application
|
| PTO/TM/1581
| Request for Extension of Time to File a Statement of Use
|
| PTO/TM/1583
| Declaration of Use of a Mark under Section 8
|
| PTO/TM/4.13a
| Application for Renewal of Registration of a Mark under Section 9
|
| PTO/TM/4.16
| Declaration of Incontestability of a Mark under Section 15
|
| PTO Form 1963
| Combined declaration of use in commerce/application for renewal of registration of mark under Sections 8 & 9
|
| PTO Form 1583
| Combined declaration of use & incontestability under Sections 8 & 15
|
More Changes from the 106th Congress. On November 30, 1999 President Clinton signed into law an omnibus appropriations which contained in that bill were two smaller pieces of legislation relating directly to trademarks.
First was the "Trademark Cyberpiracy Prevention Act" which included as Title III of S.1948. The section provides remedies for trademark owners against cybersquatters and takes effect immediately.
Secondly, the Act included the "Patent and Trademark Office Efficiency Act," a part of the "American Inventors Protection Act" (Title IV of S.1948). The section allows the PTO to operate in a more efficient and businesslike manner.This Act shall take effect 4 months after the date of the enactment. For further information on these bills, please visit the Thomas Web site at http://thomas.loc.gov. Also, you can view an Adode Acrobat® ".pdf" version of the full "Intellectual Property and Communications Omnibus Reform Act of 1999" by clicking here.
It's a Jungle Out There. Famed online bookseller Amazon.Com has found itself tangled in several intellectual property disputes recently including:
- "The oldest independent feminist bookstore in North America." In April of 1999, Minneapolis-based Amazon Bookstore Inc. is suing Amazon.com Inc. for alleged unauthorized use of its trademark and eroding its corporate identity. In addition to books, both companies sell music, videos and gifts. Founded in 1970, Amazon Bookstore, Inc, focuses on woman-orientated titles. Amazon.com, opened its virtual doors in 1995.
- Amazon.com has sued the operator of a Greek Web site. The lawsuit alleges that Smith and his affiliated companies operate the domains amazon.gr" and "amazon.com.gr," which is advertised as "Amazon.gr, Greece's Biggest Bookstore."
The online company named both Smith and his wife, Aikaterini Theochari, who live in Greece. They accuse the couple of approaching them on May 3 and offering to sell the Seattle based online retailer a controlling interest in their company, CITI Services Inc., for $1.63 million. These sites have now come down and the domains are on hold.
This One's NOT for You. The Federal Circuit has confirmed the U.S. Trademark Office's refusal of Boston Beer Company Limited Partnership's application to register "The Best Beer in America." The Fed Circuit held that the mark is incapable of functioning as a trademark as it is laudatory and descriptive and nothing more that an claim of superiority. Boston Beer had rather thought that was the idea and had submitted evidence that the beer had received awards at several competitions. Read the final decision for yourself at www.ipo.org/bostonbeer.htm.
Well - It Was Worth a Try Wang Global, previously called Wang Laboratories, claimed that Internet software from Netscape and America OnLine (AOL) infringed on its patent no. 4,751,669, which was granted in 1984. Wang contended that the patent covered features such as bookmarks and save-as functions that enable users to save Web pages retrieved from a server, features that are offered by Netscape and AOL.
The lawsuit, which claimed the two Internet companies violated portions of the decade-old Wang patent for a videotext system, was filed in October of 1997. In a December 17, 1999 decision, Leonie Brinkema, District Judge for the Eastern District of Virginia, deemed Wang's patent to be "generically and fundamentally different" from Web browsers and other related technologies.
Netscape, which did not deny the patent's existence, maintained the document was invalid because the technologies in question were being used well before the time of Wang's patent.
In an attempt to drum up cases of "prior art," Netscape last month posted details of the case to its mozilla.org web site and called upon developers to turn up products that had utilized the contended technologies before the patent date. Netscape reported that it received "hundreds" of leads that greatly assisted its legal team's efforts.
Wang has earned a reputation in recent years for dusting off patents and finding out what they are worth. In 1993, the Billerica, Mass., company hit Microsoft Corp. with a lawsuit, claiming that its use of OLE (object linking and embedding) technology amounted to patent infringement. The two sides later settled out of court.
Wang also hit Mitsubishi Electric with a patent lawsuit in 1993 but ended up losing the case.
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