New Balance. Shoes. IP. Overseas.

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Knock Off Products.

Intellectual Property

IP. Footware. Lawsuit.

The United States and China are big trading partners, but underneath it all there is a simmering tension between the two nations, especially when it comes to intellectual property. China has been accused, quite often, of not respecting IP and of manufacturing “knock offs” of American consumer goods.

Recently, a Chinese company sued an American company for trademark infringement. The company on the receiving end of the lawsuit was none other than shoe giant, New Balance. The company, headquartered in Boston, manufactures roughly 70% of their shoes in China.

Footware Manufacturer.

Chinese businessman Zhou Lelun from Guangdong Province filed a trademark infringement suit against the Chinese sales company that distributes New Balance shoes. The lawsuit contended that New Balance was using the same name, in translation, as his company (Xinbailun or 新百伦), for which he received a trademark for in 2008. The company is itself a footware manufacturer.

When Zhou Lelun was awarded his trademark in 2008, New Balance appealed the trademark ruling to the People’s Court in Guangdong. The appeals court ruled in favor of Zhou Lelun even though New Balance was using the trademark long before he applied for it.

New Balance Ruling.

Although the court upheld the ruling against New Balance, they did decrease the original damages given to Zhou Lelun from $98 million RMB (Ren Min Bi) to $5 million RMB, the equivalent of $750,000 U.S. dollars for damages he suffered. The court scolded New Balance for using the trademarked name knowing that it was registered to Zhou Lelun since 2008. In the end, New Balance could do little but accept the People’s Court verdict.

Amy Dow, a spokeswoman for New Balance issued a statement which read as follows: “This ruling is particularly concerning as it is contrary to the rest of the developed world’s understanding of Intellectual Property.”

There’s no doubt that doing business in China can be a confusing and challenging task for foreign companies, but access to the Chinese market makes these challenges simply the cost of doing business.

What are your thoughts?

Until next time, I’m Attorney Francine Ward helping you protect what’s yours. Join my conversation on Facebook, Twitter, or in one of my LinkedIn groupsGoogle+ Circles.

 

Fair Use. Take-down. Copyright.

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Fair Use. Take-down. Copyright.

Fair Use. Copyright.

Fair Use. Copyright.

Is it Fair Use?

Section 512(c)(3)(A)(v) of the Digital Millennium Copyright Act requires that copyright holders consider, whether content that is perceived as potentially infringing is fair use before they issue a take-down notice. A recent Ninth Circuit case reaffirmed that requirement in Lenz vs. Universal. While a copyright holder is only required to make a subjective assessment, an assessment is nonetheless required before requesting that a website, such as YouTube, Google, Facebook, or Twitter remove allegedly infringing content.

Take-down. Copyright.

After making such a subjective assessment, what goes into a take-down notice? A take-down notice must contain “[a] statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.” 17 U.S.C. § 512(c)(3)(A)(v). Because fair use of copyrighted material is not an infringement of copyright, such use is “authorized by . . . the law.” See id. § 107. Therefore, in order to form “a good faith belief that use of the material in the manner complained of is not authorized by . . . the law,” id. § 512(c)(3)(A)(v), a party must consider the doctrine of fair use.

Subjective assessment of Fair Use.

To comply with the law, a copyright holder is only required to form a subjective assessment, which does not require investigation of the allegedly infringing content. The assessment does not have to be accurate, it must only be performed. If a copyright holder fails to consider fair use before sending a take-down notification, gives lip service to the consideration of fair use by claiming it formed a good faith belief when there is evidence to the contrary, is subject to liability.

That’s it for now. Do you have an opinion about this? Join my conversation on my Facebook Law Page, Google+ page, Twitter feed, or in one of my LinkedIn group discussions.

Trademark Registration. USPTO. Trademark.

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Trademark Registration. USPTO. Trademark.

Just off the press! The United States Patent &Trademark Office (USPTO) has announced that the USPTO will start sending email reminders to trademark registrants who have “live” registrations, as of January 2015. There are some caveats, among them is that USPTO must have a valid email address on file and the trademark registration must be live, not a dead trademark registration. Email reminders will also be sent to registrants regarding the filing of the Declaration of Continued Use , which is due between years 5-6 after trademark registration.

Trademark Registrants.

In order to ensure that trademark registrants receive email reminders, registration owners should add the USPTO to its “safe senders list.” If trademark registrants have done so in the past, they may want to reconfirm that their email server will accept email from the USPTO and will not treat it as junk mail or spam. It is important to know that despite this effort on the part of the USPTO to make it easier for trademark registrants not to lose their valuable trademarks, it is still the responsibility of the trademark registrant to be on top of any statutory obligations. Any failure by the USPTO to provide the courtesy email reminders or any non-receipt of such reminders will not excuse a registration owner who fails to meet its statutory obligations.

Until next time, I’m Attorney Francine Ward helping you protect what’s yours. What do you think? Law Facebook Fan Page, Law Twitter Feed, Google+, LinkedIn.

Trademark. Trademark Registration.

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Trademark. Trademark Registration.

Trademark. Trademark Registration.

Trademark. Trademark Registration.

Have you recently filed a trademark registration on your own? Or have you filed a trademark through a non-lawyer website like Legal Zoom? If so, you should know that there are important trademark deadlines you must adhere to, or you risk losing that valuable asset called a federally registered trademark. Trademark registration is more than just filing.

If you are working with an experienced trademark attorney, who remains the attorney of record on file, they will make you aware of those critical deadlines. If not, you are on your own. And make no mistake about it, the United States Patent & Trademark Office (USPTO) will not tell you when it’s time to file a document—it’s not their job. It’s yours. And if you miss a deadline, you will lose your application, and if you have registered your trademark and miss a deadline, you will lose that trademark. Period.
When I am working with a client throughout the entire application process, I make sure the client knows what is going on. Once the trademark is registered, I educate my clients as to everything they must do to protect their valuable asset. If it is a client I enjoyed working with, even after I am no longer the attorney of record, I keep them aware of filing deadlines.

Here are a few of the important dates and deadlines you must know about:

  1. A Section 1(a) filing basis applies when you are currently using your trademark in commerce with all the goods/services in your application. You must provide the date you began using your trademark and a specimen (real-use sample) showing how the mark is actually being used with the goods/services.
  2. A Section 1(b) filing basis applies when you have not yet started using your trademark. You must use the trademark and pay an additional fee prior to registration.
  3. A Section 44(d) filing basis applies when you have filed for the mark in a foreign country.
  4. And so many more. Check out the US Patent & Trademark Office website for all of the important deadlines you MUST be aware of.

It is better to do it right the first time. But, if you find you have made a mistake and need help cleaning up the mess, feel free to contact me for a complimentary consult to determine if there is a fit. Don’t worry, there is no attorney/client relationship established during the complimentary consult. You are free to take advantage of the information I give you and choose someone else to work with.
Bottom line, you want to protect your asset. It is better to file and meet necessary deadlines correctly the FIRST TIME, instead of filing your application incorrectly and having to respond to a USPTO Office Action. But if you didn’t do it right and need assistance, feel free to give me a call.
I’m Attorney Francine Ward, helping creative entrepreneurs and business owners protect their valuable content, products, brand, and their business. Find me on Facebook, Twitter, LinkedIn, Google+, LinkedIn, and on my website. Until next time, think protection!

 

 

 

 

 

 

 

 

 

 

Podcasting. Patent Infringement. Podcasts.

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Podcasting. Patent Infringement. Podcasts.

Patent Infringement.

Patent Infringement.

Once there was only radio. Then came television. Now there is podcasting. For years, these two outlets were the only technology available to the public from which people could tune into audio and video feeds, e.g. music radio, talk radio, TV news and talk shows, etc. Of course, the digital age of technology has broadened the options for information and entertainment. One such technology is podcasting.

Podcasts are defined as digital audio or video files that are produced in a series. People can subscribe to these files, and through podcatcher software, receive them to their computer, Smartphone or iPod. Today millions of podcasts are downloaded just in the Unites States alone. So, who invented Podcasting, and is the technology protected by a patent? A new argument on the horizon is a claim for patent infringement.

Adam Carolla. Podcaster.

These questions may soon be answered in a court of law after a Texas based company, Personal Audio, filed a patent infringement lawsuit against comedian and television personality, Adam Carolla. Carolla, who claims to be the world’s largest podcaster, was just the latest to be sued for infringing on the “podcasting patent” by Personal Audio.

Shortly after the company filed the suit, they turned around and dropped it. Carolla claims they dropped the suit when they realized he didn’t make much money as they thought from the podcasts. He claims they (Personal Audio) troll the Internet for large podcasters who they believe make large sums of money, then they file the infringement suit.

Carolla has decided that he won’t let Personal Audio drop the suit, instead, he plans on defending the suit and countersuing for damages. He states that he is taking up the fight for all podcasters and believes that the patent they hold should be rescinded.

Personal Audio. Podcasting.

Personal Audio, a company that once transcribed magazine articles to cassette tapes, filed for the podcasting patent by claiming they invented a “system for disseminating media content representing episodes in a serialized sequence.” They were granted the patent in 2012. The company claims they invented podcasting back in 1996. Opponents dismiss the claim by asserting that the first podcasts began three years earlier in 1993.

Electronic Frontier Foundation, an Internet freedom advocacy group, has petitioned the U.S. Patent Office to review the patent and have it invalidated. They assert that podcasting was already in existence in 1993, three years before Personal Audio claimed to have invented it. Earlier this year the Patent Trial and Appeal Board stated that the advocacy group’s petition had a “reasonable likelihood of success.”
The trial is scheduled to begin this September in a Texas court. This case likely to have a large impact on how and what people will be able to access from the Internet, so stay tuned.

I’m Attorney Francine Ward, and what do you think? Join the conversation on my Facebook Law Fan Page, my Twitter Law Page, my Google+ Page, or in one of my LinkedIn Groups.