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The Abelman Firm Intellectual Property Report

October 1, 2003

Volume 2, Issue 2

Topics

Calendar (See Below)

News

Trademarks and Unfair Competition

Patents

Domain Names and Other Internet Matters

Discussions

Calendar   top

October 3 - 4, 2003 American Bar Association (ABA) - Trying an IP Infringement Case in Foreign Countries - Five Mini Trials. New York, NY.
October 3 - 4, 2003 Association Internationale pour la Protection de la Propriété Intellectuelle (International Association for the Protection of Intellectual Property) (AIPPI) - International IP Litigation Program. New York, NY.
October 10, 2003 Silicon Valley Seminars (SVS) - The EPO: an Inside Scoop. San Francisco, CA
October 12-16, 2003 Interamerican Association of Industrial Property (ASIPI) - XVth Congress. Mexico City, Mexico.
October 16, 2003 SVS - The EPO: an Inside Scoop. Boston, MA.
October 16-17, 2003 Practicing Law Institute (PLI) - Patent Litigation 2003. PLI California Center, San Francisco, CA.
October 16 - 18 Patent Resources Group, Inc. (PRG) - Seminar on Madrid Protocol Practice. The Lodge at Rancho Mirage, Rancho Mirage, CA.
October 20-21, 2003 PLI - Understanding the Intellectual Property License 2003. PLI New York Center, New York, NY.
October 21-23, 2003 World Intellectual Property Organization (WIPO) - Workshop on Domain Name Dispute Resolution. Geneva, Switzerland.
October 23-24, 2003 LexisNexis - Advanced Trademark Strategies. New York, NY.
October 27-28, 2003 PLI - Patent Litigation 2003. PLI New York Center, New York, NY.
Oct. 30 - Nov. 1, 2003 American Intellectual Property Law Association (AIPLA) - Annual Meeting. Grand Hyatt Hotel, Washington, D.C.
Oct. 30 - Nov. 3, 2003 IENA International Fair For Inventors. Nuremberg Exhibition Centre, Nurnberg, Germany
November 6-7, 2003 WIPO - Seminar on the Madrid System of International Registration of Trademarks. Geneva, Switzerland.
November 10, 2003 Intellectual Property Owners Association (IPOA) - Corporate IP Management Meeting. Washington, DC.
November 10-11, 2003 PLI - Patent Litigation 2003. Tyson's Corner, VA.
November 10-11, 2003 American Conference Institute (ACI) - A Tactical and Practical Guide to Freedom to Operate. New York, NY.
November 12 , 2003 ACI - The Master Class on Drafting a Legally Sound Opinion on Invalidity and Non-infringement. New York, NY.
November 12-15, 2003 International Trademark Association (INTA) - Leadership Meeting. Boca Raton, FL.
November 17, 2003 SVS - Patents and the Patent Process. Washington, DC.
November 13-14, 2003 PLI - Communications Law 2003. New York, NY.
December 3-5, 2003 PLI - Fundamentals of Patent Prosecution. San Francisco, CA.
December 8, 2003 United States Patent and Trademark Office (USPTO) - PTO Day. Washington, DC.
December 15-16, 2003 ACI - Advanced Corporate Counsel Forum On Advertising Law. New York, NY.

NEWS

Trademarks and Unfair Competition

European Community Trademarks: Enlargement of European Union: Critical Dates for Trademark Owners   top

On May 1, 2004 ten new countries will join the European Union. The new countries are Cyprus (Greek), Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovak Republic, and Slovenia. These countries will join the existing European Community countries of Austria, Belgium, Denmark, Finland, France, Germany, Greece, Italy, Ireland, Luxembourg, Netherlands, Portugal, Spain, Sweden and the United Kingdom.

European Community trademark applications and registrations existing as of May 1, 2004 will automatically be extended to cover these ten new states. No action is necessary nor any payment required to obtain the extension to the new countries.

However, to protect existing national rights in the new member countries and to prevent piracy, the following procedures have been implemented by the European Community Trademark Office:

  1. Community trademark applications filed by October 31, 2003 will not be subject to opposition based on national rights in the new member states.
  2. Community trademark applications filed from November 1, 2003 and after will be subject to oppositions based on national rights in the new member states. However, if the proprietor of an earlier right does not oppose the Community application, the proprietor will not be allowed, at a later date, to apply to invalidate the Community registration.
  3. Community trademark applications filed by April 30, 2004 cannot be refused as generic, descriptive, customary or deceptive in the languages of the new member states (the new languages are Czech, Estonian, Hungarian, Latvian, Lithuanian, Maltese, Polish, Slovak, and Slovenian). From May 1, 2004 and forward, examination may take into consideration the new languages when considering the technical registrability of a mark.

Clients should consider filing new trademark applications in the Community prior to the October 31, 2003 term to avoid the possibility of oppositions based on national rights in the new member countries. Clients should also bear in mind the April 30, 2004 term in respect of amendments to the technical registrability of marks.

Gambia: Publication of Trademark Gazette   top

The last issue of the Gambian Trade Marks Journal was published in 1997, backdated to 1992. Prior to that issue, the previous issue was published in July 1987. There is no schedule for regular resumption of publication.

India: 1999 Trade Marks Act Comes into Force   top

The 1999 Trade Marks Act came into force on September 15, 2003. Some of the features of the new Act are:

  • Registration of service marks now possible
  • Definition of trade mark has been amplified to include shapes, packaging and colors
  • Multi-class applications can now be filed
  • Part A and Part B of the Register will be combined into one Register
  • Period of registration and renewal has been increased from 7 to 10 years
  • Recognition of well-known trade marks
  • The definition of infringement has been enlarged
  • "Permitted use" has been expanded to include use of a registered trade mark by an unregistered l licensee - use of a registered trade mark even by an unregistered licensee may accrue to the benefit of the registered proprietor.

Libya: Trademark Applications filed between 1981-2002 May Be Cancelled   top

The Libyan Ministry of Commerce issued a decision on July 7, 2003 ordering the cancellation of all trademark applications filed between 1981 and December 2002. No action has yet been taken in response to the decision and the matter is now under review and a reversal of the decision is possible. United States sanctions against Libya are currently in force.

Madrid Protocol: WIPO Approves Adding Spanish as Official Language for International Registrations    top

The World Intellectual Property Organization, administrator of the Madrid Protocol, approved the addition of Spanish as the third working language of the Protocol. The move is intended to encourage Spanish speaking countries to join the Protocol. Spanish will become an official language of the Madrid Protocol effective October 1, 2004.

At present, English and French are the official languages of the Protocol.

New Zealand: New Trade Mark Law   top

A new trade mark law was scheduled into force on August 20, 2003 in New Zealand. Among the provisions of the new law are:

  • new registrations receive protection for 10 years (previously 7 years)
  • renewals are for terms of 10 years (previously 14 years)
  • multi-class filings are now accepted
  • eliminates the declaration of ownership of the mark and intention to use the mark.


Patents

PROPOSED CHANGES IN ASSIGNMENT PROCESSING AND POWERS OF ATTORNEY BEFORE THE U.S. PATENT AND TRADEMARK OFFICE   top

Anthony J. Natoli, Associate, Abelman, Frayne & Schwab

Motivated by efforts to streamline the processing of thousands of assignments and powers of attorney, the U.S. Patent and Trademark Office (PTO) is strongly encouraging electronic filing of assignments and the use of customer numbers in patent applications, with such customer numbers associating multiple registered patent practitioners and a single correspondence address simultaneously with a given patent application.

To further the change-over to image storage of assignments as well as the simple data input of a customer number instead of re-entering practitioner addresses, a Notice of Proposed Rule Making was published June 27, 2003 in Vol. 68, No. 124 of the Federal Register, in which the PTO set forth proposed rules to radically change the processing of assignments of both trademark and patent applications, as well as the listing of patent practitioners on powers of attorney for prosecuting patent applications.

A number of active practitioners, including AIPLA and Genentech, submitted their comments to the proposed rules, which have been published on the PTO website with the proposed rules.

CHANGES IN ASSIGNMENT PRACTICE

Currently, practitioners send physical documents for assignments for patents and trademarks, accompanied by assignment cover sheets, to the assignment branch of the PTO. The assignment may be an original assignment or a true and legible copy. Alternatively, faxed assignments may be transmitted, provided that the assignment lists the trademark registration number or patent application or issue number. In addition, assignments can be transmitted electronically via the Internet, provided the assignment is scanned in a manner which complies with the PTO's required format and specifications.

After recordation and image capture of the physical or faxed documents, the documents are sent back to the practitioner with a Notice of Recordation, listing reel and frame numbers of the recorded assignment.

Under the proposed rules, only the Notice of Recordation of assignment will be sent back to the practitioner, and any physical documents previously submitted will be disposed of. That is, even an originally signed and notarized assignment will be trashed.

Since such assignments are legal documents affecting the title to the rights in the patent, trademarks, or security interests or other aspects (merger, change of name) affecting such rights, it is imperative that practitioners submit only copies of such assignments in the future.

In addition, under the proposed rules, a physically mailed or faxed assignment as well as the assignment cover sheets must comply with paper size and margin requirements; that is, each assignment or an extract thereof must be on letter size or A4 paper, and must have a one-inch margin on every side, which will facilitate the electronic image-capture of the document.

Assignments on legal-size paper would no longer be acceptable, although often legal-size is the format typically used by many companies and law firms.

Therefore, for any size of paper (legal, letter, or A4), the practitioner must copy the assignment and assignment recordation sheets to meet margin requirements. Accordingly, a practitioner may be required to copy portions of the assignment such that each copied portion has the one-inch margins on letter or A4 paper.

In addition, paper submissions cannot be on any other color but white, so practitioners must ensure that, if the assignment is received by fax or by mail from a client on colored paper, the practitioner must copy the assignment onto white paper.

Furthermore, under the proposed rules, electronic submission of such assignments must be performed by scanning the assignment into the Tagged Image File Format (TIFF) for storing images, with the scanned image, once reprinted, meeting the above paper and margin requirements.

Since trademark practitioners who currently file trademark applications electronically are required to submit images in specified data formats (JPG or GIF) format, such practitioners must also be capable of scanning assignments into another format, that is, TIFF.

CHANGES IN POWERS OF ATTORNEY IN PATENT APPLICATIONS

Currently, powers of attorney may be executed by inventors and assignees to allow registered patent practitioners to represent them in the proceedings of the PTO. Although the correspondence address of record has been limited to one physical mailing address, there has not be any limitation as to the number of practitioners which may be listed, and associate powers of attorney have been freely signed by empowered practitioners to effectively add unlisted practitioners to the list of attorneys of record in a patent application.

This flexibility has allowed entire firms as well and practitioners from different firms and corporations to be empowered with the ability to communicate with the PTO regarding a given patent application. In addition, any changes in personnel of a firm would not require new powers of attorney to be executed by the inventors or assignee, provided that at least one original attorney of record was available to empower more practitioners.

The primary change in the proposed rules is to require powers of attorney to list a customer number of a group of practitioners, unless the number of practitioners is at most ten. If a power of attorney has ten or less practitioners, no customer number is needed.

However, if more than ten practitioners are listed and no customer number is provided, the PTO will reject the power of attorney as invalid for non-compliance with the rule. This may require re-execution by all inventors and/or assignees of a power of attorney complying with the proposed rule.

In addition, the proposed rules also indicate that associate power of attorney documents will not be recognized. In the PTO's remarks, it states that the use of the customer number has made associate power of attorney documents unnecessary, since any practitioner associated with the customer number may add new practitioners to be associated with the customer number.

However, since the customer number lists all practitioners together, commentators to the proposed rules have suggested that there are liability issues which the PTO has not considered, such as the association of practitioners outside of a law firm with corporate in-counsel on multiple applications via a single customer number, although such practitioners have distinct liability issues and conflicts of interest for distinct applications.

In addition, many law firms currently allow clients, such as corporate law departments and foreign firms, to use a prepared power of attorney for convenience, listing a set of practitioners. After execution, new practitioners may be empowered by associate powers of attorney. However, to comply with this proposed rule, each law firm must have every prepared power of attorney updated within their firm and with their clients including corporate counsel and foreign firms to list customer numbers, lest the foreign firms cause faulty powers of attorney to be executed which will be rejected by the PTO under the proposed rule.

Another significant issue raised by the commentators is that continuation applications are often filed with a copy of the original power of attorney complying with the current rules, but which would not comply with the proposed rule. Yet, many years may have passed and inventors may be unavailable, deceased, or reluctant to execute new powers of attorney, so there may be a rise in the number of Rule 1.47 filings to petition acceptance of the original declaration and power of attorney in such circumstances.

PATENT PRACTITIONER NAMES

Furthermore, one additional concern in the proposed rules is the requirement that patent practitioners signing documents submitted to the PTO must list their entire exact name as registered with the Office of Enrollment and Discipline (OED), along with their registration number. Thus, practitioners cannot abbreviate their names with nicknames, initials, or "jr." designations not in the OED records. Also, name changes, including those due to marriage, must be promptly addressed with the OED, lest the PTO reject any documents, including applications filed on a statutory deadline, which are signed by the practitioner but listing the wrong name, and so being in non-compliance with the proposed rule.

PRACTICE ADVICE

Although the proposed rules have not yet been finalized, and may be modified in view of received comments from AIPLA, Genentech, and other active practitioners, it is advisable that practitioners in both patents and trademarks should take the following immediate actions:

  1. Practitioners should immediately cease filing original assignment documents, and instead record true and legible copies of assignments in the PTO. Similarly, other documents affecting title to patent and trademark rights, such as mergers, conveyances, changes of name, security interests, etc., should be treated in the same manner, with originally signed documents retained by the practitioner or the assignee.
  2. Practitioners should immediately discontinue the use of legal-size paper for assignments and title-affecting documents, and eventually should set standards as in the proposed rules for the paper size, margins, and color of assignment documents or similar documents affecting title submitted to the PTO.
  3. Prospectively, patent practitioners should apply for a customer number to list a specific correspondence address and a set of registered patent practitioners, and so to be ready if or when such proposed rules are finalized. Any changes to the list of practitioners associated with a given customer number should be coordinated to ensure that there is no confusion as to whether or not a given person has been added or removed.
  4. While very small firms or groups of ten or less practitioners may continue to use powers of attorneys without customer numbers, all practitioners should be aware that the use of associate powers of attorney may become obsolete in the near future, and exceeding a PTO limit without a customer number may adversely effect their patent filings.
  5. Finally, patent practitioners should review and update their name and address as listed in the OED roster, and be prepared to require all documents for their signature list their full name as per the OED roster.


Domain Names and Other Internet Matters

Afghanistan Domain Name Registry Active   top

Afghanistan accepts domain name registrations in the .com.af, .net.af and .org.af domain spaces. Domains must match a registered trademark. A local presence is not required.

Bosnia and Herzegovina Domain Name Registry Active   top

The domain name Registry for Bosnia and Herzegovina offers domain name registrations in the .ba and .co.ba domain space.

Applications in the .ba domain space must be in the name of a local company and applicants must provide a local business registration number.

.co.ba is unrestricted and is open to all on a first-come, first-served basis.

Ecuador: .EC Domain Space to Become Available October 15, 2003   top

The .EC domain space will open October 15, 2003. Priority will be given to parties who already own registrations in existing Ecuadorian domain names spaces (.com.ec, .net.ec, and .org.ec).

Ireland Introduces Domain Name Dispute Policy   top

Effective July 31, 2003, the Irish Domain Name Registry introduced a dispute resolution policy, referred to as the IEDRP. Disputes initiated under the IEDRP will be administered by the World Intellectual Property Organization (WIPO). Remedies available under the policy are cancellation or assignment of the domain name.

To prevail under the IEDRP, a complaining party must provide evidence to show that:

  • The domain is identical or misleadingly similar to a protected name in which the Complainant has rights; and
  • The Registrant has no rights in law or legitimate interests in respect of the domain name; and
  • The domain name has been registered or is being used in bad faith.

New Zealand: Domain Space .geek.nz Introduced   top

The New Zealand domain name Registry has introduced the .geek.nz domain space. The .geek.nz domain is directed at the technical community. .geek.nz joins New Zealand's eleven other domain spaces: .ac.nz, .co.nz, .cri.nz, .gen.nz, .govt.nz, .iwi.nz, .maori.nz, .mil.nz, .net.nz, .org.nz, .school.nz.

URDP Decision: Pfizer Prevails in Complaint Against VYAGRA.COM Domain Name   top

John Callum owned the domain name VYAGRA.COM. At one time, the VYAGRA.COM website pointed to an online pharmacy purporting to offer Pfizer's VIAGRA-branded goods. In addition, the VYAGRA.COM site displayed pornographic images.

Callum requested $2,500 from Pfizer in consideration of a transfer of the domain name to Pfizer. Pfizer brought an action before the World Intellectual Property Organization, pursuant to ICANN's UDRP provisions, demanding transfer of the domain name.

Among the defenses raised by Callum was the fact that he was not the original registrant of the domain name but had himself purchased it from a prior registrant.

The WIPO panelist, finding the domain name VYAGRA.COM confusingly similar to VIAGRA, ruled in favor of Pfizer, holding that (i) although Callum was not the original registrant of the domain name, he had constructive knowledge of Pfizer's VIAGRA mark as a result of its widespread reputation, and (ii) Callum sought to "attract users to its website by improperly associating itself with the Complainant's marks or misleadingly suggesting an affiliation with, or sponsorship by" Pfizer.

The name was ordered to be transferred to Pfizer.


Discussions

TRADEMARKS WITH AN AUSTRALIAN TWIST - COMMON LAW TRADEMARK SERIES PART II. - PRACTICE TIPS FOR APPLYING FOR AND REGISTERING TRADEMARKS DOWN UNDER (OR THERE IS A LOT MORE TO MASTERING TRADEMARKS IN AUSTRALIA THAN SPELLING TRADE MARKS AS TWO WORDS)   top

Robert E. Lee, Jr., Of Counsel and Natasha J. Finlen, Associate, Abelman, Frayne & Schwab

You are having lunch with a client who discusses his plans for opening a division in Australia.

And since you had handled matters pertaining to his trademark matters in the U.S. and Canada, the conversation naturally drifts to Australian trademarks.

The client asks if his marks and trade name are automatically protected under Australian common law and whether there are federal and state registries for trademarks and trade names? You reply that his marks and trade name would be protected nationally by the Trade Practices Act of 1974 which is a codification of the common law (and the reciprocal State Fair Trading Acts) and by the tort of "passing off" once a reputation is established and if he shows deception or confusion. Also, you advise him that trade name matters remain solely within the province of the states and that he will need to register his trade name in each state and territory where he does business before he commences his business activities in the State. Failure to register your business may result in a monetary penalty. Conversely, you advise him that trademark and service mark registrations are handled exclusively by the federal government and that there are no state trademark registries. You client asks whether service marks are treated as second class citizens and limited to certain services or whether services are fully protected. You reply that the Trademarks Act of 1995 placed trademarks and service marks on an equal footing and encourage him to federally register both his trademarks and service marks. By federally registering, you state that he will acquire affirmative rights to use, license and pursue infringers.

The client asks whether "intent to use" applications can be filed and you reply that applications can be either filed based on use or intent to use. Then to prevent the client from possibly drawing the wrong conclusion from your answer, you explain that, contrary to the Trademark Acts in the U.S. and Canada, Australian law follows the prevailing world rule that use is not a condition of registration. Therefore, he can file an application, obtain and even renew a registration without ever showing or alleging use in Australia. The only times when lack of use catches up to an applicant or registrant is where use may need to be proven to establish distinctiveness, or after a mark has been registered for three years and a third party attacks the registration for non-use.

You conclude your discourse with the following statement: "something else that you should be aware of is Australia's divisional practice. The mark can be filed claiming a number of classes and then a divisional application can be spun off with less than all the classes while still maintaining the original priority date. Further, the mark can be filed in one class and then a divisional application can be spun off by excluding one or more of the goods and/or services. This is a very useful tool if you need to "buy" time in securing the registration of your mark in Australia. For example, you may file an application for AUSSIE CRICKET BATS for "toys and sporting goods in Class 28". Your application may be objected to on the basis of descriptiveness. In order to overcome the objection, the Examiner has asked you to provide evidence of use. Unfortunately you have not used AUSSIE CRICKET BATS in Australia as yet and your deadline to respond to the Examiner is fast approaching. Further, a third party has filed an application for AUSSIE CRICKET BALLS and you may want to rely on your earlier application for AUSSIE CRICKET BATS to oppose. In this case, it is wise to file a divisional application You may file your divisional application for AUSSIE CRICKET BATS for "toys and sporting goods in Class 28, excluding remote-controlled cars". Your divisional application will retain the same filing date as your original application for AUSSIE CRICKET BATS, but the examination process starts again. The new Examiner may not object to your divisional application or you may be able to show use during the examination period for your divisional application. But be warned: this is a once only deal.

"Let's see how well you have been listening", you say to the client:, "One of the following six statements concerning Australia is incorrect. Can you identify it?" (The answer is found at the bottom of this article.)

(1) There are no state trademark registrations;
(2) Use is not required to file, register or renew trademarks;
(3) Intent to use applications do not require proof of use to register;
(4) Service mark registrations can only be obtained for legitimate services;
(5) Trade names can not be federally registered; and
(6) An action for passing off can be brought independent of trademark registration.

About the authors: Robert is Of Counsel to the Firm and had a long corporate career where he specialized in international IP matters. Natasha is an Associate of the Firm and graduated from law school and practiced law in Australia.

{The answer lies somewhere between (3) and (5).}

Appeals Court Excuses Mistake in Notice of Opposition   top

Frank Terranella, Associate, Abelman, Frayne & Schwab

A federal appeals court has ruled that a trademark document that named the wrong company was not fatally defective and could be amended.

The case began when a company called The Payroll People, Inc. contacted their attorney to file a Notice of Opposition to a mark that they considered too close to theirs. The attorney filed two requests for extensions of time to oppose before she noticed her mistake. She had thought that the company had changed its name to Custom Computer Services, Inc. when in fact that was a sister corporation to The Payroll People, Inc. The attorney had mistakenly filed her papers in the name of "Custom Computer Services, Inc., formerly known as The Payroll People."

When it came time to file the Notice of Opposition, the attorney corrected her mistake, but the Trademark Trial and Appeal Board (TTAB) refused the change and dismissed the Notice as untimely. The TTAB took the position that although the Trademark Rules allow a mistake such as a typographical error to be corrected, they do not allow the substitution of one entity for another. The company appealed.

In a case entitled Custom Computer Services, Inc. v. Paychex Properties, Inc., No. 03-1148 (July 22, 2003), the Court of Appeals for the Federal Circuit overruled the TTAB. It noted that Rule 2.102(b) allows for a correction where the party filing an opposition "was misidentified through mistake." The court noted that here the entity named by the attorney did not exist since Custom Computer Services, Inc. was never known as The Payroll People. So what we had is merely a mistake in the form of the entity's name. The court ruled that a mistake in a company's name may be corrected where the mistake is in "the form of the correct entity, not an attempt to substitute one entity in the place of a different existing legal entity."

So while great care should be taken to get the company's name correct, this ruling will allow some margin for error where the mistake is in the form of the name.

Court Grants U.S. Trademark Rights to Monaco Casino   top

Frank Terranella, Associate, Abelman, Frayne & Schwab

In a startling decision, a federal appeals court has ruled that a company that rendered services only in Monaco is entitled to trademark rights in the United States.

A panel of the Fourth Circuit Court of Appeals ruled that the trademark "Casino de Monte Carlo" was protected under U.S. trademark law because the company successfully marketed its Monaco casino to U.S. citizens, who came to gamble in Monaco. The company, Societe Des Bains de Mer et du Cercle Des Etrangers a Monaco, has maintained a tourist promotion office in New York City for many years.

The court based its decision on its reading of constitutional and statutory law. According to the court, the U.S. trademark statute, the Lanham Act, extends its protection to all trademarks used in commerce that Congress may regulate under the Commerce Clause of the U.S. Constitution. That Clause specifically authorizes Congress's power "to regulate Commerce with foreign nations." Therefore, the Lanham Act extends to trademarks used in foreign trade. Since "foreign trade" has been defined by the Supreme Court as trade between U.S. citizens and foreign nationals, the frequenting of a Monaco casino by U.S. citizens is foreign trade. And since the "Casino de Monte Carlo" trademark is being used in foreign trade, it is entitled to protection under U.S. trademark law, the court concluded.

The court, in an opinion by Judge J. Michael Luttig, said that extending trademark protection to trademarks whose associated services are not rendered in the United States may cause jurisdictional problems for U.S. courts in trying to enforce the Lanham Act abroad, but that has not stopped the government from promulgating laws and regulations such as those that prohibit U.S. citizens from purchasing merchandise in Cuba with a foreign market value in excess of $100. According to the court, "Congress may regulate foreign trade wherever it occurs." In distinguishing prior decisions, Judge Luttig noted that here the foreign company made a "singularly impressive commitment to building brand identity in the United States" through expenditures of $1 million a year out of its New York office.

The court's decision changes the reach of U.S. trademark law. Traditionally, use of service marks required two elements: (1) use or display of the mark in the sale or advertising of the services and (2) the services being rendered in commerce. Traditionally both of these factors had to happen in the United States. The court has now broken from tradition by holding that the second element can take place outside the United States.

In an impassioned dissenting opinion, Judge Diana Gribbon Motz warned, "Such a rule threatens to wreak havoc over this country's trademark law and would have a stifling effect on United States commercial interests generally." The judge noted that now it would not be enough for companies trying to clear a new trademark to simply search in the United States; now, a worldwide search would be necessary for every trademark. "Like some sort of foreign influenza, these new entitlements would accompany American travelers on their return home, creating a vast array of new duties for individuals in the United States seeking to use the same or similar marks on goods or services sold in the United States." The judge characterized this as "reverse imperialism" whereby foreign businesses would be able to "colonize American markets with their foreign trademarks" based on sales that took place entirely outside the United States.

The controversial decision is likely to be reconsidered by the entire Fourth Circuit Court of Appeals in an en banc proceeding. It may even find its way to the U.S. Supreme Court. For now, it is the law only in the Fourth Circuit, which covers the states of Maryland, North Carolina, South Carolina, Virginia, and West Virginia.

What To Watch Out For In A Digital Archive   top

Alan J. Hartnick, Partner, Abelman, Frayne & Schwab

The Alexandrian Library in the Hellenistic world was an attempt to collect the literary works of the ancient world. Fire swept that dream away, and that is why we only have about 5% of such works. The digital world has created another hope. Can a digital archive be preserved perpetually?

  1. Definitions.

    What does digital mean? And what is an archive? Almost everything in the world can be represented in one of two forms: analog or digital. Analog representations are continuous - such as the movement of the hands on a watch, or the recording of varying amplitude of an electronic signal on magnetic tape in a VCR or audio cassette. Digital representations are based on discontinuous data, such as digital watches, which go from one value to another, without displaying any intermediate value, CDs and DVDs. Computers are digital machines because they can distinguish between two values, 0 and 1, off or on. We experience the world analogically. Most analog events can be represented digitally. And all data that a computer processes must be encoded digitally.

    An archive is a place for collecting and storing records, documents and other materials of historical interest. It is really a specialized library, a library being a place for reading, reference, or lending, from the Latin, liber, a book.

  2. Digital Images

    The first question is, what are digital images? They are the result of the multiplication of codes used in data processing systems in which it is possible to capture and store almost any phenomenon in digital form. It is thus possible to translate into digital code an existing representation on an analog base, such as scanning the illustration of a book.

    The "right" to digitize, if it is a "right", was not expressly mentioned in the official "Digital Agenda" of the WIPO Copyright Treaty approved in Geneva on December 20, 1996. But is it a new copyright "right", like colorization? It can be argued that the creator of digital images makes decisions in choosing among different possibilities of focusing, framing, and fixing the "density" of pixels (that is, picture element).

    There is a spirited discussion that a derivative work is created when an analog sound recording is transformed into a digital sound recording in an article by a student at Southwestern Law School.1. The author uses a suggestion from Paul Goldstein's treatise that "a new work [is created] for a different market," and various 2nd and 9th Circuits decisions. He argues that the transformation of an analog sound recording into a digital sound recording requires a high degree of true artistic skill.

    The Copyright Office has had difficulty with applications from those claiming copyright authorship in the scanned image itself rather than in the underlying work. The view is that scanning typically involves mechanical acts. Even if registered, it is not clear what the courts will do. An independent copyright in a digital image could create harassment problems from the owner of the new right.

  3. Digital Collections

    The Library of Congress has assumed a leadership role in the National Digital Information Infrastructure and Preservation Program, authorized by Congress in December 2000. The Library is collaborating with other federal agencies as well as other organizations and individuals in the information community. The mission is to develop a national strategy to collect, archive and preserve the burgeoning amounts of digital content, especially materials that are created only in digital formats, for current and future generations.

  4. Report On Copyright Issues In Digital Archiving

    The Library and the Council commissioned a brilliant report by June M. Besek, Executive Director of the Kernochan Center for Law, Media and the Arts at Columbia University.2.

    Ms. Besek considers that if a new version consists merely of the same work in a new form - such as a book scanned to create a digital version - then it is a reproduction of a copyrighted work, and is not a derivative work. Even if it were a derivative work, the consent of the author of the underlying work is necessary.

    She writes "Neither the courts nor the Copyright Office has yet endorsed a 'digital first sale doctrine' to allow users to retransmit digital copies over the Internet... Even though works can be converted into 1's and 0's when digitized, they generally retain their fundamental character. In other words, if a digitized work is a computer program, it is subject to the privilege the law provides to owners of computer programs to make archival copies. If it is an unpublished work, it retains the level of protection that attaches to unpublished works..."

    And what rights does the owner of a material object in which the copyrighted work is embodied have to make a digital copy? The owner of the physical property can sell or lend, but cannot reproduce the copyrighted work unless there is an exception in the copyright law.

    There are exceptions for certain archival and other copying by libraries and archives in section 108 of the Copyright Act. Three copies of a published or unpublished work may be made in digital format but cannot be made available outside the library premises. For a published work, the digital format can only be used if an unused replacement cannot be obtained at a fair price. The "fair use" provision in section 107 probably applies to a nonprofit digital archive for scholarly and research use.

    Ms. Berek concludes: "What about copying or 'harvesting' publicly available web sites... there is no clear road under existing law for collecting the works proposed for a digital archive and placing them on a publicly accessible network."

  5. Straddling the Analog/Digital Worlds

    Anne M. Carley considers archives a "virtual goldmine?3. She writes:

    "An international group of experts has begun The Cuneiform Digital Library Initiative. Their task is to provide a Glossary of Cuneiform - "to make available through the Internet the form and content of cuneiform tablets dating from the beginning of writing, ca. 3200 B.C.E." [from their website, http://cdli.ucla.edu/]

    The Lester S. Levy Digitized Collection of Sheet Music is a project at Johns Hopkins University. Already it has digitized over 29,000 pieces of popular American sheet music from 1780 and 1960. The music is arranged by topic - "Drinking, Temperance and Smoking" is one topic, and "Postal" is another. The cover and the music are available as printable image files. Now the project is beginning to include audio files, full-text lyrics, and special search capabilities."

    The above listings of digital archives are generally public domain.4. As I have indicated in this article, a digital archive made of copyrighted works is much more complicated!

Conclusion

The Library of Congress' Preservation Reformatting Division is pragmatic in its recommendations. Its first underlying principle is to retain an analog version of digitally-reformatted items until it is clear that the life-cycle management will ensure access for as long as, or longer than, the analog version. How shrewd!

Endnotes

  1. Comis, Copyright Killed the Internet Star, 31 Southwestern University Law Review 753 (2002).
  2. Besek, Copyright Issues Relevant to the Creation of a Digital Archive: A Preliminary Assessment, Council on Library and Information Resources and Library of Congress, January, 2003. Besek's Report is available on the web site of the Council for Library and Information Resources. You go to its website at http://www.clir.org and then you click on "What's New." It is one of the listed documents.
  3. Carley, Archives - A Virtual Goldmine, Remarks, New York State Bar Ass'n Copyright and Trademark Committee, October 17, 2000.
  4. As an example, the url for a very good web-based archive of the entire output of Gemini GEL, a first-tier fine art print studio from California, now archived at and by the National Gallery of Art in Washington, DC: http://www.nga.gov/gemini/. Other examples of archive sites: one of the best known is the Internet Archive's "Wayback Machine," available at http://www.archive.org. Another digital archive is http://www.pubmedcentral.nih.gov, the U.S. National Library of Medicine's digital archive of life sciences journal literature. JSTOR, available at http://www.jstor.org is a scholarly journal archive.


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