Economics and Statistics Administration and the USPTO released the 2011 report “Intellectual Property and the U.S. Economy: Industries in Focus.” The principal findings of the report are:
The reason someone registers a trademark is typically to protect against infringers and unscrupulous competitors. One motorcycle gang apparently decided to use trademark law for a different task and secured a trademark registration with the goal of preventing law enforcement agents from infiltrating the gang, at least that is what is claimed in an apparent FBI report recently published on publicintelligence.net.
According to that FBI report, the Vagos Motorcycle Club, a California motorcycle gang and alleged criminal organization, secured a trademark registration for its logo (shown above) hoping that nobody, including undercover agents, will be able to wear the logo without proper authorization of the club’s leadership. In the FBI report’s own words:
“The Vagos added the ® symbol to the bottom center of the large back patch as shown
in photo 1. There are only about 20 of these new patches which are currently being worn by
members. It is believed that the new patches will be given out to new members as they are
vetted by the Vagos leadership. By doing this, the Vagos believe they will have exclusive rights
to the Vagos patch and no one, including undercover officers, would be able to wear the patch
without the consent of the International Vagos OMG leadership”
Despite the FBI report, I think there may be many legitimate explanations as to why the club may have wanted to secure that registration. After all, the logo has a certain degree of notoriety, with corresponding merchandising opportunities. But if there is any truth to the FBI report as to the actual goal of registration, then I seriously doubt the registration will stop any undercover agents from sewing fake patches with the logo onto their jackets. The agents will just need to be sure to add the ® sign to their fake logos to prevent their cover from being blown, just as the FBI report recommends.
If you are not an FBI agent, however, you should probably still refrain from creating or selling fake Vagos insignia. Aside from the risk of being confronted by a couple of intimidating guys with leather jackets and itchy fists, you can also be sued for infringement. After all, Vagos does own a valid and enforceable trademark registration for the logo. You can find it in the USPTO records underU.S. Reg. No. 4,115,905. You can also click hereto see that registration.
On August 3, 2010, the U.S. District Court for the Eastern District of Virginia issued a summary judgment in the Rosetta Stone Ltd. v. Google case, ruling that Google’s practice of selling Rosetta Stone’s trademarks as advertisement keywords did not amount to trademark infringement or dilution and that Google could not be held liable to Rosetta Stone for such a practice, therefore throwing out Rosetta Stone’s case. A good summary of the August 3, 2010 opinion can be foundhere.
A copy of the summary judgment can be found here:
Last Monday, however, U.S. Court of Appeals for the 4th Circuit vacated the district court’s order with respect to trademark infringement and dilution and remanded the case to the lower court for further proceedings. As the court of appeals noted, “A reasonable trier of fact could find that Google intended to cause confusion in that it acted with the knowledge that confusion was very likely to result from its use of the marks."
More information about the Court of Apples decision is available on the website of MSNBC.
If you are a big copyright owner or an Intellectual Property attorney, I am sure you have heard of The Pirate Bay, the self-described “World’s most resilient” bit torrent site.
It now looks like the site’s owners decided to kick the resiliency up a notch by making plans to put a number of “unassailable” servers up in the sky on board of several aerial drones. You got that right.
I am not sure how successful The Pirate Bay will be in its aerial exploration efforts, but a path laid by one is usually followed by others. I guess the twenty-first century is picking up speed, and the fight with copyright infringers may get to a new level soon.
Until recently, all I knew about the mathematical constant π (“pi”) is that it roughly equals 3.14 and that it plays an important role in exact sciences. Surprisingly, though, pi can be useful in composing music, which, even more unexpectedly, made pi subject to a copyright lawsuit. I thought a case involving copyright claim to pi was an interesting story, so here it is.
As you may remember from high school, the number pi is not just 3.14. It has actually been computed to trillions of digits after the decimal point and starts like this: “π = 3.14159265358979323846264338327950288419716939937510” (Please do not think I am that smart, I just know how to use Wikipedia).
Last year, a guy named Michael Blake wanted to hear what pi sounded like, so he decided to convert pi into music. To that extent, he decided that his ”pi melody” would be in C and then he assigned a musical note to each digit in the pi sequence, all the way through 31 decimal places, so that 1 became C, 2 became D, and so on. He then played his composition on several instruments and edited resulting versions into one video clip “What Pi Sounds Like,” which he then posted on Youtube. You can view his clip here:
"What Pi Sounds Like"
The Youtube clip became popular, earning its creator a certain amount of fame on the Internet. Everything was going well for Michael Blake until YouTube received a “take-down” notice alleging copyright infringement. The video was then removed from YouTube.
The author of the “take down” request was Lars Erickson from Nebraska who owns a copyright registration for a piece of music he composed back in 1992 using the same basic idea – that digits within pi can be assigned musical notes. Not surprisingly, Lars Erickson’s creation is called “Pi symphony.” You can listen to it here:
"Pi Symphony: The Ruse Performance Movement I."
There are definitely some similarities between the two melodies, but similarities must be expected when you use the same basic idea: converting a mathematical constant into music. The question then is whether such similarities are enough to give raise to a copyright infringement claim. Lars Erickson thought the answer was “yes” and sued. His complaint can be viewed below:
Lars Erickson vs. Michael Blake
Michael Blake picked up the fight and filed a motion to dismiss, essentially arguing that the only similarity between the two melodies is that they are both based on the same idea – the transcription of digits of pi to musical notes, and that no one can claim a monopoly to that idea. That sounded like a reasonable argument to me when I first heard about that case, but I waited for the decision before writing on the case.
On March 14, 2012 (which is also known as the “Pi Day”) the court issued a decision agreeing with Michael Blake and dismissing the case. As the court stated, “The primary similarity between Pi Symphony and “What Pi Sounds Like” is the musical pattern formed by transposing the digits of pi to a set of musical notes. That pattern is not protected by Mr. Erickson’s copyright for Pi Symphony. Pi is a non-copyrightable fact, and the transcription of pi to music is a non-copyrightable idea.”
In his decision, the judge did acknowledge that music is comprised of many elements, such as harmony, rhythm, pitch, tempo, phrasing, structure, etc., and that some combination of elements can be copyright protected. However, the judge concluded that any similarities between Mr. Erickson’s work and Mr. Blake’s were based on non-protectable elements.
This was an interesting case which reiterated some basic rules of the Copyright law, including that ideas and facts are not protectable and cannot be monopolized; that the mere fact that a work is copyrighted does not mean that every element of the work may be protected; and that if a non-protectable idea can only be expressed in one way, the resulting expression is also not protected, to prevent monopolization of the idea.
The .XXX top level domain became available for registration in September of 2011 making many companies concerned that their trademarks may be registered as .xxx domain names by third parties.
To protect their trademarks from misuse in the .xxx field, many companies (including Pepsi, Apple, Coca Cola, and Hilton, to name a few) already rushed to preemptively block their trademarks from registration during the “Sunrise B Period”. This is why, for example, you will not stumble upon an adult-oriented website www.pepsi.xxx while googling PepsiCo’s products.
Of course, the Sunrise B Period has long expired (meaning trademarks can no longer be blocked from .xxx preemptively), but trademark owners are not without remedy when it comes to protection against .xxx infringers and cybersquatters. There are good options that can be used to protect a trademark against infringement on .xxx:
(1) Complaint under the Rapid Evaluation Service (“RES”);
(2) Complaint under the Charter Eligibility Dispute Resolution Policy (“CEDRP”);
(3) Complaint under the Uniform Dispute Resolution Policy (“UDRP”);
(4) Cease and desist letter; and
(5) Law suit
Since sending a cease and desist letter or filing a law suit are old tools requiring no additional introduction, I will focus here on the first three options: RES, CEDRP and UDRP
A client received a notice from a “UNITED STATES REGISTRATION OFFICE Trademark Registration and Monitoring Division.” The correspondence concerned one of the client’s U.S. registrations, and the client was asking whether that was a legitimate official notice requesting official trademark maintenance fees.
The client provided a copy of that notice, which is shown below. I just edited out the client-specific information.
The notice turned out to be a solicitation from a private company, disguised to look official, offering services of a somewhat questionable value. While a trademark attorney can easily see that the notice is just an attempt by a private party to make a few quick bucks, it is not surprising that such an officially looking correspondence may confuse a non-attorney into believing the fee must be paid in order to maintain and protect the trademark.
As guidance to those without much experience with trademark law, there are several red flags that can be used to a spot a fake disguised like an official letter:
First, the only agency in the United States responsible for accepting trademark applications and registering trademarks on the federal level is the United Stated Patent and Trademark Office (“USPTO”). If you see correspondence from an entity with a similarly sounding name, you are probably dealing with an impostor.
Second, if you receive any correspondence pertaining to your federal trademark registration, check the sender’s address. The USPTO is located in Alexandria, VA, so any other address is a red flag. The address in the notice above corresponds to a private office in Los Angeles.
Third, no government agency in the United States will ever offer you to record your trademark with U.S. Customs and Border Protection (“CBP”) or any other government agency or database. Similarly, neither the USPTO nor any other agency will ever send you a reminder regarding any maintenance or renewal deadlines pertaining to your U.S. trademark registration. If you receive such a reminder from anyone, that is nothing more than a solicitation from a private party.
Of course, if you read the above notice carefully, it does mention that it is only a solicitation and that there is no obligation to pay the fee. Therefore, always read such letters carefully. If you still have any doubts regarding whether you need to pay any fees to maintain or protect your trademark, it is probably a good idea to ask a trusted attorney you know first, before writing any checks.
It is your choice whether you want to pay someone to protect your trademark. Just make sure you know who you deal with and what exactly you will get for your money before you mail your check out. But that is just my opinion.
Microsoft submits a reply in support of its motion for summary judgment in the “app store” fight with Apple.
"Apple strains to keep “App Store” for its exclusive use, even claiming that its online stores are not real stores, only metaphorical ones. But Apple cannot escape the hard truth: when people talk about competitors’ stores, they call them “app stores.” You don’t have to look far to find this generic use – The Washington Post, The New York Times, The Wall Street Journal and even Apple’s CEO Steve Jobs. And generic use of “app store” is not obscure or occasional as Apple would have us believe. It is prominent, ongoing and, by Apple’s own measure, hundreds of times more frequent than the thin generic use in the cases upon which Apple relies."
The U.S. Patent and Trademark Office is sponsoring a two-day, free, seminar titled "China's Impact on Intellectual Property: Protecting Your Intellectual Property in China and the Global Marketplace." The seminar will take place on Wednesday and Thursday, April 6 and 7, 2011 at the USPTO Headquarters in Alexandria, Virginia.
Below is an excerpt from the USPTO’s announcement:
"WHO SHOULD ATTEND: Companies of any size, from those contemplating entering the China market to those with an established presence in China, and including those who simply want to know more about better protecting themselves against IP theft from abroad.
"TOPICS: China’s laws and regulations that may affect how a business protects and enforces its intellectual property, how best to protect business assets to avoid intellectual property problems in the first place, how to recognize when an intellectual property asset has been infringed, what to do if infringement occurs, and what the U.S. government is doing to improve the intellectual property protection and enforcement environment in China.
"This program is part of the USPTO’s continuing commitment to increase public awareness of intellectual property rights and the enforcement of these rights in the global marketplace. "
More information about the seminar is available here.
If you attend the seminar and learn something you would like to share with others, please send me an e-mail with your notes or any other materials at info@trademarkscroll.com. I will gladly post your notes under your authorship.
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Until recently, all I knew about the mathematical constant π (“pi”) is that it roughly equals 3.14 and that it plays an important role in exact sciences. Surprisingly, though, pi can be useful in composing music, which, even more unexpectedly, made pi subject to a copyright lawsuit. I thought a case involving copyright claim to pi was an interesting story, so here it is. 
