Tuesday, January 27, 2015

Omega S.A. vs. Costco Wholesale Corp: First Sale Doctrine vis-à-vis Imported Goods

On January 20, 2015, a three judge panel from the United States Court of Appeals for the Ninth Circuit passed a decision which is a victory for Costco and other similar retailers alike. The Court affirmed the decision of the Central District of California which had granted summary judgment to the defendant, U.S retailer Costco. The defendant had been sued by the Swiss Luxury Watches manufacturer, Omega for copyright infringement.

Omega manufactures luxury watches in Switzerland, which it distributes around the world. One of Omega's high-end watches, the Seamaster, often bears an engraving of the Omega Globe Design (“Omega Globe”). Omega obtained a copyright for the Omega Globe in March 2003 and began selling watches with the engraving in September 2003. In 2004, Costco purchased 117 Seamaster watches bearing the Omega Globe on the so-called “gray market”. Omega sold the watches to authorized foreign distributors. Unidentified third parties then bought the watches and sold them to ENE Limited, a New York company. It was from ENE Limited that Costco then purchased the watches. Furthermore, Costco sold the watches to its members in California.

Omega sued Costco for copyright infringement claiming that it had authorized the initial sale but did not approve of the importation of the watches into the U.S.   Costco defended on the grounds of the first sale doctrine, which currently provides a defense for reselling goods manufactured in the United States that are resold by retailers or distributors. Costco claimed that the doctrine applies to foreign-manufactured goods as well. The Central District of California granted summary judgment to Costco, noting that Omega had engraved the Globe Design on its watches at least in part to control importation of the watches, and thus had misused its copyright. According to Costco, the first sale doctrine allows a copyright holder to control the initial distribution of his product, but prevents the copyright holder from controlling a copy’s distribution once it has entered the stream of commerce. Costco argued that copyright holders would be able to eliminate both secondary markets for copyrighted products and the market for used goods. According to Costco, copyright holders would also be able to restrict rental-, lease-, and other lending-based markets.
While the Costco suit was under way, the Supreme Court held in 2013, in Kirtsaeng v John Wiley & Sons that the first sale doctrine also applies to copies of protected works lawfully manufactured abroad. Since the Kirtsaeng judgment retroactively applied in Costco, the Ninth Circuit found that Omega had no copyright infringement cause of action against Costco.

“Omega’s right to control importation and distribution of its copyrighted Omega Globe expired after that authorized first sale, and Costco’s subsequent sale of the watches did not constitute copyright infringement”.

- Nayanika Singhal

Monday, January 12, 2015

Will Flavour marks get Trademark?

Many food treasures and eating haunts are trying to get a trademark for their Flavour marks. If they are accepted, they join the list of non conventional trademarks like sound, smell, touch etc. The problem lies in the fact that the requisites for registration of traditional and non-conventional marks cannot be the same as both are incapable of graphical representation. Secondly, the flavours are subjective in nature, they change over time, besides being difficult to access.

Since functional aspects cannot be registered, flavour marks for food products can be registered only if it acquires secondary meaning. Even the identity of origin function of traditional trademarks is not served as the customer comes to know about the taste only after he buys it.

In a recent case, United States District Court rejected the contention of New York Pizzeria, Inc. that it receipes are being used at a rival restaurant which constitutes trademark infringement under the Lanham Act. The Court rejected it and held that that though Lanham Act encompasses “almost anything at all that is capable of carrying meaning” but that meaning entitles a mark to trademark protection only if it distinguishes and indicates the source of a product. Flavour marks may not be able to satisfactorily carry out this function. Thus, only when a flavour has acquired distinctiveness, or “secondary meaning” – that is, when customers have learned to associate the flavour with its source, that it has any chance of serving as a valid trademark.

-Shambhavi Mishra

Sunday, January 11, 2015

Netflix sued

OpenTV has sued streaming giants Netflix in both the US and in Europe on the grounds of patent infringement of video-on-demand software. The District Court of the Hague held that OpenTV’s claim does not meet the requisites of novelty and inventiveness.

This brings relief to people across Europe as OpenTV had sought a court order banning Netflix in the Netherlands outright and also intended to acquire share of the video giant’s profits for the alleged infringement.

OpenTV was ordered to pay legal costs for Netflix of around €234,500.

-Shambhavi Mishra

Friday, January 9, 2015

3D printed ‘Spider Dress’

The 3D printed ‘Spider Dress’ is the latest example of the robotic fashion. This dress is the creativity of engineer and designer Anouk Wipprecht and is connected to an Intel Edison.

‘Spider Dress’ is a master piece of wearable technology that combines 3D printing with animatronic mechanics. A series of skeletal-like limbs "respond to external stimuli" as per configuration proximity and respiration sensors, meant to "defend the personal space of the wearer." It transforms itself as per the mood, level of aggression, heart beat and stress level.

It is still in the testing phase, and will make its debut next week Consumer Electronics Show in Las Vegas.

-Shambhavi Mishra

Thursday, January 8, 2015

Facebook's new policies

The modifications made by Facebook in the statement of Rights and Responsibilities, forms the foundation to understand the ownership of the content of that you upload on Facebook. Facebook, being a social networking site, has become the sharing centre for people across the globe.

The social networking giant does not take the ownership of the content and information posted. The person who is posting  and uploading is the rightful owner and the visibility depends on the privacy and application settings .

Facebook is granted, as per the privacy and application settings, non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any content that is covered by Intellectual Property rights that you post in connection with Facebook. The condition is terminated once the content is deleted unless the content has been shared with others and they have not deleted it.

A person may contact the individual who has infringed copyright or trademark before complaining and filing out the form. A person having a Facebook account or a person having no Facebook account can also file copyright infringement. Report can be filed against third party made apps as Facebook does control the content made available through those apps.

-Shambhavi Mishra

Wednesday, January 7, 2015

Kalashnikov applies for World Trademark

The arms designer credited with creating the AK-47, Soviet Lt-Gen Mikhail Kalashnikov, died last year. The Kalashnikov, or AK-47, is one of the world's most recognisable weapons. Kalashnikov Concern has paid more than USD 380,000 for rebranding  the rifles which includes a new logo “CK” written in black and red and melded into a single block. The logo stands for Kalashnikov Concern.

The arms manufacturer has applied to register a world trademark of AK-47 including for goods of 28 class under the International Classification of Goods and Services. As the Nice Agreement of 1957 the goods of 28 class include games and toys, gymnastic and sporting articles not included in other classes and decorations for Christmas trees.

The Intellectual Property rights Court has rejected another claim of Kalashnikov Concern against M T Kalashnikov firm, owned by the relatives of late designer regarding "image of a rifle with AK-47 marking."

This gun due to its easy manufacture and cheapness is very popular with terrorists and national armies in Asia and Africa.

-Shambhavi Mishra

Tuesday, January 6, 2015

“pŏm” lands into trouble

The largest maker of 100% pomegranate juice, Pom Wonderful filed an infringement suit against Hubbard before the 9th Circuit to restrain it from selling a pomegranate-flavoured drink labeled “pŏm”. Pom Wonderful contended that “pŏm” is likely to cause confusion among the customers due to similarity with its own trade mark “POM”.

The Court of Appeal is of the view that five factors weigh in favor of Pom Wonderful (strength of mark, relatedness of goods, degree of consumer care, similarity of marks, and marketing channel convergence) and three factors are neutral (actual confusion, defendant’s intent, and product expansion). None of the factors weighs in favor of Pur. There are many semantic, aural and visual similarities particularly in respect of the marks in the respective labels.

Thus, the district court was erroneous and has abused its discretion. The decision is reversed and an injunction is granted by the higher court to further public interest.

-Shambhavi Mishra

Monday, January 5, 2015

iPhone v. iFone

Apple’s iPhone was launched in 2007 and iPhone 3GS was brought to India by Vodafone in 2009. In 2007, Chennai based iVoice Enterprises’ mobile venture, India Phone or ‘iFon’ filed for registration of the btand and logo ‘iPhone’ but Apple filed a motion against it even though at that time Apple’s iPhone was not registered as a trademark. Subsequently, iVoice had to suffer huge loss and filed for rectification asking for removal of Apple’s ‘iPhone’ trademark from the registry, to which a counter was recently submitted by Apple.

Some points need to be focused in this case. Firstly, iFone is phonetically similar to iPhone. Both of them cater the needs of the same section of the customers. The syllable “i” is associated with the products of Apple. Similarly, iFone could have registered under India Fone  and it was registered at the time when the customers in India were eagerly waiting for the launch of iPhone. iFone is deceptively similar to  iPhone which is likely to be detrimental to the reputation of iPhone.

Though iPhone is a foreign, unregistered trademark, it can enforce its rights by establishing priority use, reputation in India, misrepresentation and injury to Goodwill in the claim of passing off. The judgment is eagerly awaited to see in whose favour trademark rights are upheld.

-Shambhavi Mishra

Italy follows India

As discussed in the earlier article “Made in India program” which can be reached here, Italy is also following the footsteps of India. It has also undertaken “Made in Italy” program with the aim to promote Italian-made fashion and textile products. Japan has initiated such program long ago and has even benefited from it especially in the arena of electronic gadgets.

The Italian government has decided to invest for the promotion so as to strengthen its hold in the United States.

This step can help them to reconfirm the trust in public involvement aimed at supporting development and giving hope to one of the most important productive sectors for the future re-launch of Italy.

-Shambhavi Mishra

Saturday, January 3, 2015

Made in India Program

Government of India has initiated the MADE IN INDIA PROGRAM to promote the “Brand India” so as to facilitate investment, innovation, skill development and protect intellectual property but brand building is a difficult task and involves focus on a number of aspects.

Brand building essentially depends on the distinctiveness or strength of a mark indicates the source of the goods or services with which it is used. Public acceptance determines the strength of the brand which in turn depends on its unique character in its quality or when it has received intensive advertisement or both.

The need of the hour is to improve the “quality standards” as nothing can substitute the role of “quality” in brand branding. “Made in India” does not instill the same kind of respect as is commanded by “Japan” brand. This is the result of long term perseverance and brings a sense of positivism among the customers. “Made in India” has very weak reach among the customers on a global basis. Some of the products were banned or suffers due to its reputation on account of its quality.

Thus, the quality should be improved which in turn will promote the brand. Long term critical assessment is required for sustainable industrial growth. There is no shortcut to success.

-Shambhavi Mishra

Thursday, January 1, 2015

Google lands into controversy

Google has landed into controversy with regard to its services, Google Books and Google News. Authors Guild has filed a lawsuit contending copyright violation and objecting three sentence “snippet” of a book that is reproduced by the search engine.

The 2nd Circuit U.S. Court dismissed the contention and held that the concept of snippet is highly transformative and falls within the ambit of “fair use” in copyright law. The Manhattan Court heard the arguments by way of an appeal. The approach of the bench seemed to favour the defendants stressing on extreme liberal approach of fair use. Judge Level is of the view that most classic fair use cases were based on activities that were commercial in nature.

The aspect that needs to be focused here is the traditional jurisprudence on fair use. According to it, mere reproduction in the absence of any value addition would not constitute fair use in such a profit-making scenario. Google Books makes no value addition to the book.

-Shambhavi Mishra

Overlapping of Intellectual Property Rights

In the case of Mukul Goyal v. Union of India and Ors., Section 15(2) of the Copyright Act has been brought under the scanner and has been contended by the petitioner to be ultra vires. As per Section 15(2), any artistic piece that is capable of being registered as a design, but has not so been registered, will lose its copyright protection the moment it has been reproduced more than 50 times. The petitioner has contended that S. 15(2) and 2(d) infringes his right to carry out his trade under Article 19(1)(g). Also Article 14 is violated as S. 15 imposes arbitrary restriction and the number of reproductions-50, is without any rationality.

As per Microfibres v. Giridhar, copyrighted artistic works simpliciter would not be hit by S. 15)2) while design works would be hit. This results in ambiguity due to overlapping Intellectual Rights. 

One solution can be to protect the original designs as artistic works under copyright law and amending the Copyright Act to ensure that any artistic work produced industrially more than 50 times is granted protection for only 15 years.

-Shambhavi Mishra