Court Rules that Tiffany & Co., not eBay, should police its trademark

In a recent ruling involving Tiffany and eBay, a U.S. District Court judge ruled that eBay can't be held liable for trademark infringement "based solely on their generalized knowledge that trademark infringement might be occurring on their websites."

Tiffany had sued eBay to remove bogus items and immediately suspend sellers that Tiffany suspected of trademark infringement. Tiffany’s legal team had alleged that eBay should more closely scrutinize its sellers and their merchandise in order to better crack down on numerous instances of trademark infringement and counterfeit jewelry sales. Tiffany also sought monetary damages.

eBay claimed that it was not in a position to determine which goods were counterfeit and that Tiffany did not consistently participate in eBay’s programs to prevent trademark infringement. eBay also contended that it was working diligently to respond to allegations of trademark infringement and that it could not be entirely responsible for the actions of its users.

According to Judge Richard Sullivan, “Tiffany has not alleged, nor does the evidence support a conclusion, that all of the Tiffany merchandise sold through eBay is counterfeit…Were Tiffany to prevail on its argument that generalized statements of infringement were sufficient to impute knowledge to eBay of any and all infringing acts, Tiffany’s rights in its mark would dramatically expand, potentially stifling legitimate sales of Tiffany goods on eBay…”

The moral of this story for trademark owners? You must diligently police your own trademark.

Court Rules Selling Promo CDs Doesn’t Constitute Copyright Infringement

In June, a District Court Judge in San Francisco dismissed a suit by Universal Music Group against Troy Augusto, a man who had been selling promotional copies of UMG CDs on eBay. The attorneys for Universal, which has produced recordings for artists such as 50 Cent, Elvis Costello, and Melissa Etheridge, argued that by ignoring the labels that designated the CDs as “personal use only, not for resale”, Augusto was infringing on the recording giant’s copyright.

The court, however, sided with Augusto and ruled that his actions were protected under the first sale doctrine, which states that once copyrighted material has been sold or given as a gift to a consumer, the consumer has the right to sell it, give it away to another person, or even destroy it. A promotional CD, even one labeled “not for resale,” constitutes a gift and therefore the court ruled that Mr. Augusto could do with it whatever he pleased.

Sony Sued Over Buzz Quiz Games

Buzztime Entertainment has filed suit against Sony Computer Entertainment Europe (‘Sony’) over their super-popular Buzz! series of Play Station 3 quiz games, claiming the franchise violates several of their trademarks.

Buzztime, maker of electronic trivia games most frequently found in restaurants and bars, is claiming that Sony’s use of the name Buzz! and the slogan, "It's time to get buzzing" infringes on its trademarks. While Buzztime owns the trademarks for several "buzz" related words and phrases, such as BUZZTIME, BUZZHEAD, SHARE THE BUZZ, AND BUZZKIDS, it does not own a trademark for BUZZ or BUZZ!

Buzztime wants the U.S. Patent and Trademark Office to deny Sony's pending trademark application for BUZZ! They have also asked for a recall and destruction of the offending products, actual and punitive damages, and legal fees.

Because it appears that the names and goods are similar enough to cause consumer confusion, it appears that Buzztime has a legitimate case for at least an injunction which would prevent further use of the BUZZ! trademark by Sony.

House Considers a Steep Increase in Law Enforcement and Penalties for Copyright Infringement

The Prioritizing Resources and Organization for Intellectual Property Act of 2007, or “PRO-IP,” is currently pending in the House of Representatives.

PRO-IP would, among other things, increase statutory damages in copyright cases by letting copyright holders recover individually for each work in a copyrighted compilation. For example, each song on a CD could be counted as a separate infringement for the purpose of calculating statutory damages.

PRO-IP was introduced to the House on December 5, 2007 and presented to the Subcommittee on Courts, the Internet, and Intellectual Property on December 13, 2007. At that hearing, consumer rights group Public Knowledge argued that statutory damages already impose disproportionate penalties for infringement and pointed out that copyright owners can already get actual damages in those cases where statutory damages are not enough.
On the other hand, the bipartisan committee sponsoring PRO-IP said it will stem what one representative called the “tsunami” of counterfeiting and piracy. The bill is supported by some labor unions and industry groups.

For additional information the text of the bill is at: http://thomas.loc.gov/cgi-bin/query/z?c110:H.R.4279:

Research in Motion settles trademark infringement lawsuit with Samsung

Blackberry maker Research in Motion has confirmed that they have now settled a lawsuit filed against Samsung Electronics related to their Blackjack trademark.

RIM had claimed that the Samsung’s Blackjack cell phones were infringing its trademarks to the blackberry range of telecom products. The company said in a statement: “RIM is very pleased to have reached a mutually beneficial settlement agreement that includes immediate provisions for the protection of RIM’s valuable trademarks.”

However, RIM has not released the specific terms of the agreement. The company just mentioned that the deal includes “limitations on use of the Blackjack trademark and withdrawal of the U.S. Trademark Application for Blackjack”.

CNBC 'Money Honey' seeks branding trademark

CNBC news anchor Maria Bartiromo wants to sweeten the pot on her "Money Honey" nickname, making it a brand on children's TV, piggy banks and cookie jars. Bartiromo filed several trademark applications with the U.S. Patent and Trademark Office to trademark her Money Honey moniker.

The trademark applications show that Bartiromo is casting a wide net. Besides kids' TV and books, the Money Honey trademark would appear on school supplies, DVDs, mouse pads, jigsaw puzzles, dolls, and backpacks, among other items. The applications were filed on Jan. 16.
Bartiromo was not available for comment.

Winnie the Pooh rights holder trying to force Disney to cancel trademark registrations

In the latest move in a long struggle with Walt Disney Co. over the rights to A.A. Milne's Winnie the Pooh, Stephen Slesinger Inc. petitioned the U.S. Patent and Trademark Office to cancel Disney's trademark registrations over the 80-year-old bear and his friends.

Stephen Slesinger Inc. is a film production company named after the literary agent who bought merchandising and other rights to Winnie the Pooh from Milne in the 1930s. The company sued Disney in 1991 claiming that Disney owed it several hundred million dollars in royalties for Pooh movies and merchandise. Slesinger also sought to cancel its 1983 licensing agreement with Disney, citing alleged contract breaches. The case was dismissed in 2004, but Slesinger is appealing the dismissal.

In 2002, Disney's entertainment unit and Milne's granddaughter filed suit against Slesinger to terminate A.A. Milne's grant of the Pooh rights to the literary agent and his company. A district court ruled against Disney and Clare Milne's right to terminate Slesinger's rights, and an appeals court affirmed the district court's ruling. In 2006, the U.S. Supreme Court declined to hear Disney's appeal.

Disney spokesman Jonathan Friedland said the allegations in Slesinger's petition to the U.S. Patent and Trademark Office are same they've made in their earlier case that was dismissed.
"This is by no means anything more than the 'same old, same old,'" he said.