Written by: Susan Neuberger Weller

The City of Houston, Texas has filed a Petition For Writ Of Certiorari with the Supreme Court of the United States asking the Court to interpret Section 2(b) of the Lanham Act to determine whether it prohibits a government entity from federally registering its own flag or coat of arms or other insignia as a mark with the US Patent and Trademark Office.  The City of Houston v. Acting Director, U. S. Patent and Trademark Office, 13-784 (S.Ct. December 30, 2013). As was noted in our previous post on emoticons, US trademark law prohibits the registration of marks which fall into many different categories, including any mark which “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.”  The original Examining Attorney for Houston’s application for registration, and the US Trademark Trial and Appeal Board and the US Court of Appeals for the Federal Circuit in subsequent appeals, all agreed that the “plain meaning” of the statutory language prohibited such registration. Does this make sense?

Continue Reading Houston, We Have a Problem: City Petitions the US Supreme Court to Register Its Official Seal as a Trademark

Written by Susan Neuberger Weller

The bill to extend intellectual property protection to the fashion industry, S. 3523, the substance of which we reported recently, has passed the US Senate Judiciary Committee without amendment. By voice vote on September 20, the bill passed with Senators Lee (R-Utah), Kyl (R-Ariz), Cornyn (R-Texas) and Coburn (R-Okla.) voting against the bill. Lee had offered an amendment to the bill proposing a loser-pays provision to prevent lawsuit abuse, but the amendment was defeated. As previously reported, bills have been introduced since, at least, 2006 trying to extend IP protection to the fashion industry without success. A bill similar to S. 3523 in the House of Representatives, H.R. 2511, awaits action. Participants in an American Bar Association panel discussion on March 29, 2012 expressed positions that IP protection of this type is unnecessary and undesirable, and others have expressed some doubt about whether protection of this type will ever be approved by Congress.

 Written by Susan Neuberger Weller

A few weeks ago, the Second Circuit’s ruling in the Louboutin decision made clear that color as a trademark can be protected in the fashion industry.  Recently, Lululemon has sued Calvin Klein for design patent infringement over the design of yoga pants. And just before Fashion Week in New York City, New York Sen. Chuck Schumer introduced Senate Bill 3523 entitled the “Innovative Design Protection Act of 2012” seeking to amend the US Copyright Act to extend protection to fashion design. Coincidence? Perhaps, but the fashion industry has been waiting a long time for this type of protection. Continue Reading S. 3523: Louboutin, Lululemon, and Fashion Design: Finally Getting Some Respect?

Written by Susan Neuberger Weller

On Friday, August 10, 2012, Google announced that it was changing its search algorithms so that websites with high numbers of valid copyright infringement removal notices would appear much lower in the search results. This announcement was greeted with strong approval by many online copyright content owners who have for years tried various methods of pressuring Google and other Internet site operators to take action to combat copyright infringement and piracy. Many of these large media companies had backed two anti-piracy bills before the U.S. Congress earlier this year  – known as SOPA and PIPA – which had proposed significant penalties for online pirating of copyrighted content, with particular aim at infringing foreign websites. That legislation was opposed by many constituencies, including Yahoo and Google, claiming it would abridge freedom on the Internet. The legislation ultimately died.

Google said it now receives more than 1 million copyright removal notices a week related to its search engine, and, in the last 30 days, had received over 4.3 million. To put this in perspective, the number of notices received in the last 30 days is more than what Google received for all of 2009.

It remains to be seen whether any others will follow Google’s approach, and whether this action will result in any diminishment of copyright infringement online.


Written by Susan Neuberger Weller

At a conference held June 18 at Stanford University Law School – The 9th Annual Stanford Ecommerce Best Practices Conference – it was reported that copyright holders are increasingly using the Digital Millennium Copyright Act’s (“DMCA”) notice and takedown procedures to address copyright infringement on websites. Continue Reading Copyright Owners Using DMCA To Take Down URLs

Following this week’s Internet blackout by service providers and online resources opposed to the pending Stop Online Piracy Act and the Protect IP Act, Congressional leader have announced a postponement on future action on the legislation. Senate Majority Leader Harry Reid delayed a vote on PIPA scheduled for Tuesday.  In the House, Judiciary Committee Chairman Lamar Smith responded by announcing that the Committee would not consider SOPA until a compromise on the legislation was reached.  Several backers of the legislation, including Senator Marc Rubio (R-Fl) who had co-sponsored PIPA, have withdrawn their support after being flooded with phone calls and messages expressing opposition to the anti-online piracy measures. But Senator Patrick Leahy, the leading sponsor of PIPA, was not swayed by the outpouring of concern over the breadth of the pending legislation.  He expressed his continued support of the legislation and warned of the continuing threats posed by online piracy and theft.  “Somewhere in China today, in Russia today, and in many other countries that do not respect American intellectual property, criminals who do nothing but peddle in counterfeit products and stolen American content are smugly watching” the controversy over the bill, he said.

In response to the Stop Online Piracy Act (SOPA) and the Protect IP Act (PIPA) pending in Congress, several online resources have decided to make their resources unavailable for a 24 hour period.  Wikipedia, Google, Mozilla, Reddit and others have either literally gone black today or have been converted into protest pages decrying censorship and urging consumers to contact their representatives to express opposition to the pending legislation.  The protest focuses around concerns that both SOPA and PIPA contain overly broad mechanisms for the enforcement of copyright and will have the effect of stifling free expression on the Internet.  The step of blacking out content on the Internet is unprecedented and surely deserving of attention.  To the extent that the general public was unaware of SOPA and PIPA before, the protest will unquestionably have the effect of raising awareness generally.  But will it have an effect on Congress?  We’ll see.

For more information about SOPA and PIPA, click here.

Written by Joe DiCioccio

I recently had the pleasure of attending a very informative presentation given by the Media Law Resource Center on two very important pieces of legislation currently working their way through Congress. These contentious bills focus on curtailing online infringement and piracy in a creative way, by disabling access to the websites themselves and cutting off the website owners’ financial incentives to enable infringement. These new solutions, if enacted, may present groundbreaking new enforcement tools for content owners – but will also present significant challenges for certain other industries, namely telecommunications and internet service providers.

The bills, the Protect IP Act in the Senate and the Stop Online Piracy Act in the House both seek to achieve the same goal, to isolate and financially starve foreign and certain domestic websites that are focused primarily on infringing the intellectual property rights of others. Since foreign websites are not as susceptible to the same legal protections available to content owners as are domestically run websites (e.g. service of legal process, litigation, subsequent liens and attachments, etc.), these bills attempt to impose upon the foreign websites certain punishments that should effectively achieve the same ends, i.e. shutting them down. Here are some brief highlights of the bills.

PROTECT IP ACT Continue Reading The PROTECT IP ACT and the STOP ONLINE PIRACY ACT (SOPA): New Solutions to Stop Online Infringement and Piracy

Written by Joseph M. DiCioccio

“Fashion is more usually a gentle progression of revisited ideas.” 
– British Fashion Designer Bruce Oldfield

Perhaps no other industry is more cognizant of the need to build upon and reinterpret prior work than the fashion industry. The idea that designs must constantly change and evolve several times a year with fresh and innovative new styles is a firmly entrenched concept and results in a mind-bogglingly large amount of new fashion designs every year. Yet, almost as soon as they are created, some designs seem to find their way into counterfeit shops and online auctions where they may or may not be passed off as the original. If they are, then the issue is a relatively straightforward one of enforcing established laws against trademark infringement.  However, what if the new design fully acknowledges is it not the original, but is merely a copy based on the original and does not use any protected trademark? Continue Reading H.R. 2511 Offers Legal Protections For Fashion Design