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Interesting TM decision out from the D.C. Circuit today, Aktieselskabet v. Fame Jeans Inc.

The D.C. Circuit joins the 1st and 7th Circuits who have now all held that a party may introduce new issues in a § 21(b) district court action that were not brought before the TTAB.

The Court also addresses pleading standards under Twombly at length, concluding that the Twombly decision has not altered or heightened traditional notice pleading standards.

Bestseller has sold jeans outside the U.S. since 1990 under its Danish TM for “Jack & Jones” jeans. Fame Jeans filed a U.S. intent-to-use application for that mark in January 2004, with Bestseller applying for the mark in the U.S. in December 2004, but not having any clear sales in the U.S. before January 2004.

Bestseller contested Fame’s application on likelihood of confusion grounds and the Court concluded that under § 2(d), an intent-to-use applicant (e.g., Fame) prevails over any opposer who began using a similar mark (in the U.S.) after the intent-to-use filing date. Bestseller’s confusion claim, however, withstands a motion to dismiss because it adequately alleged use analogous to TM use within the U.S.

Bestseller also adequately alleged a claim that Fame lacked a bona fide intent to use the mark.

However, Bestseller cannot allege common law fraudulent misrepresentation by Fame where it only alleges that the PTO relied on Fame’s misrepresentations and not that Bestseller itself so relied.

First, from this opinion, the TTAB looks like a practice run and one can apparently always call “do over” and try out new arguments before the district court. That seems like an unfortunate waste of time and money for those trying to resolve things before the TTAB. Second, the factual background of this case strongly suggests that Fame knew exactly what they were doing and that it was simply a cheap trick by a competitor. Do they really think anyone believes that they just happened to come up with the name “Jack & Jones” for jeans and had no idea that name was already in use internationally on jeans? What’s a little surprising is how far Fame has gotten with this tactic and how narrow Bestseller’s options are now. The moral may be that if you’ve got a mark outside the U.S. and you think you’ll ever want to move into U.S. sales you should quickly proceed to make a few U.S. sales, document them well, and get your U.S. TM application on file ASAP. Otherwise, any competitor can just adopt your mark for its products in the U.S. and you’ll have a long hard road to stopping them.

Interesting opinion out from the Second Circuit today, Ehrenfeld v. Mahfouz, No. 06-2228-cv (2d Cir. Mar. 3, 2008). The Court had certified to the New York Court of Appeals

whether New York’s long-arm statute confers personal jurisdiction over a person (1) who sued a New York resident in a non-U.S. jurisdiction; and (2) whose contacts with New York stemmed entirely from the foreign lawsuit and whose success in the foreign suit resulted in acts that must be performed by the subject of the suit in New York.

The New York Court of Appeals answered the certified question in the negative and so the Second Circuit affirmed the district court, which had dismissed the case for lack of personal jurisdiction.

Query whether there is now a circuit split between the Second and Ninth Circuits when one also considers Yahoo! Inc. v. La Ligue Contre Le Racisme et L’antisemitisme (9th Cir. 2006)?

They’re at it again. On Feb. 27, 2008 the Ninth Circuit issued its opinion in Sybersound Records, Inc. v. UAV Corp., No. 06-55221 (9th Cir. 2008). The court considered:

whether the transfer of an interest in a divisible copyright interest from a copyright co-owner to Sybersound, unaccompanied by a like transfer from the other copyright co-owners, can be an assignment or exclusive license that gives the transferee a co-ownership interest in the copyright. We hold that it cannot.

Bzzzzzt. Try again. See William Patry’s blog post about this entitled, The Death of Divisibility, where he writes

This isn’t what Congress intended: it intended that co-owners be able to grant non-exclusive licenses without the others’ permission and that they be able to transfer their proportional share in the whole without the others’ permission, in which case the transferee would indeed stand in the shoes of the transferor. It is truly remarkable that such simple, but commercially important points have been destroyed.

Patry thinks Congress is our only hope. I’m placing my hope in rehearing or rehearing en banc.

Yesterday I received a generic replacement battery that I had ordered for my Sony VGN-FS840/W laptop. When placed in the laptop the battery indicator flashes rapidly. The laptop will not turn on with the battery inserted, even if the AC cord is also used. The battery shows no charge and does not charge. Reading online I learned that Sony apparently uses a hardware lock in certain of its laptop models to prevent the use of non-Sony replacement batteries. See, for example, these blog posts.

Some people, using Windows, are able to avoid this problem by using msconfig to delete the Sony program, ISBMgr.exe, that monitors for non-Sony batteries, but I am running GNU/Linux and not Windows. Some others using Windows also find that deleting the program doesn’t help because Sony has some hardware or BIOS method of disallowing any non-Sony battery. I think this must be the case for my model laptop.

I’m pondering who can be sued over this. Post your ideas on who the plaintiff(s) should be and what the claims should be in the comments. I’d also be happy with a technical fix, if anyone has one.

I’ve been working from Starbucks today on the T-Mobile wireless, and I’m now, in less than four hours, sitting next to the second pyramid scheme pitch. The first one was amusing because it was incomprehensible what the product or service even being sold was. The entire discussion was motivational and about how much money could be made building your “team”. The current one at least has an identifiable product, but it makes me wonder just how prevalent this sort of thing is.

Perhaps high school (or at least some college course) should have a segment explaining why pyramid schemes always fail, because it appears they are alive and well in Starbucks, which is providing virtual office space to these hucksters.

One good DRM paper deserves another. Former EFF Staff Attorney, Jason Schultz, has taken a position at UC Berkeley’s School of Law and has just posted a pre-publication paper he co-wrote with Berkeley Law Professor Pamela Samuelson entitled: Should Copyright Owners Have to Give Notice About Their Use of Technical Protection Measures? From the abstract:

Consumers expect to be able to do at least as much with digital content as they have been able to do with analog content, and more. Yet, some copyright owners are using technical protection measures to thwart certain consumer uses of digital content, and rarely do they give effective notice to consumers about these technical restrictions. This article identifies six types of consumer harms that have occurred from inadequate notice, including lack of expected interoperability, privacy invasions, security vulnerabilities, anti-competitive lock-out as to compatible systems, risks of inadvertent anti-circumvention liability, and unanticipated changing terms and discontinued service. It discusses a range of options for responding to the notice inadequacy problem, from trusting the market to substantive regulation that would forbid use of certain kinds of TPM restrictions (such as those that invade user privacy). Because the market has yet to yield effective notice to consumers of TPM restrictions, the article recommends that the Federal Trade Commission investigate the deployment of TPMs in digital content and make recommendations for standard notices that should be provided to consumers about the TPM restrictions.

Berkeley Law seems to be gathering together a think-tank of talent focused on getting technology law right.

Radiohead recently announced that fans could pick the price they’d pay for Radiohead’s new album, In Rainbows.

To check this out and support this experiment, I signed up for the download-only version and chose to pay $.99 per song, i.e., $9.90 for the 10-song album. (I used a currency-converter to figure out how much to pay in pounds.)

I just received the following e-mail indicating the download codes will be provided tomorrow morning (UK time) and the songs will be provided as DRM-Free MP3s. Nice. They have made the right choice. Again.

THANK YOU FOR ORDERING IN RAINBOWS. THIS IS AN UPDATE.

YOUR UNIQUE ACTIVATION CODE(S) WILL BE SENT OUT TOMORROW MORNING (UK TIME). THIS WILL TAKE YOU STRAIGHT TO THE DOWNLOAD AREA.

HERE IS SOME INFORMATION ABOUT THE DOWNLOAD:

THE ALBUM WILL COME AS A 48.4MB ZIP FILE CONTAINING 10 X 160KBPS DRM FREE MP3s.

MOST COMPUTERS NOW HAVE ZIP SOFTWARE AS PART OF THE OPERATING SYSTEM; IF YOUR COMPUTER DOES NOT, YOU NEED TO GET WINZIP OR ZIPIT INSTALLED PRIOR.

YOU CAN DOWNLOAD THEM HERE:

PC: http://www.winzip.com/
MAC: http://www.maczipit.com/

IF YOU HAVE ANY QUESTIONS OR PROBLEMS DOWNLOADING YOUR FILE, PLEASE CONTACT OUR DOWNLOAD CUSTOMER SERVICE TEAM AT downloadinrainbows@waste.uk.com

Last week my firm distributed an article I wrote on the Ninth Circuit’s recent decision in Douglas v. United States District Court for the Central District of California as a Client Alert entitled Don’t Try This on Your Site: Changing Contracts via Website Notice Alone.

Ultimately I think the Ninth Circuit was justified in granting this writ of mandamus because the district court never clearly held that Douglas had notice of the new terms to be added to the contract. So it is a clear error of law for the district court to compel arbitration pursuant to a contract that it held binding on Douglas without a clear finding that he had notice of the new terms.

However, the district court’s more problematic error is never really reached. It’s entirely possible that the original agreement had a change of terms clause that would have provided for website only notice, and if so, perhaps the new contract was binding on Douglas. I really think there shouldn’t have been a ruling compelling arbitration until we’ve had a look at the original contract.

Alternatively, perhaps it was the plaintiff’s burden to come forward with something more than a declaration to overcome defendant’s production of the more recent contract. That burden issue is far more tricky than it at first appears. There are two separate lines of cases regarding how to assign the burdens on motions compelling arbitration that reach opposite conclusions. As a policy matter, I think the Federal Arbitration Act shows that Congress wanted to encourage arbitration and if all a plaintiff need do is declare he didn’t have notice, then we’re going to get to arbitration far less often. Seems like something a little more than a self-serving declaration ought to be required here.

On July 3rd the 9th Circuit filed its opinion in Perfect 10 v. Visa Int’l Serv. Assoc., (9th Cir. 2007). The majority (Reinhardt and Smith) takes itself to be following the recent P10 decisions from the 9th Circuit, Perfect 10, Inc. v. CCBill LLC, (9th Cir. 2007). and Perfect 10, Inc. v. Amazon, Inc., (9th Cir. 2007), finds the claims against Visa were rightly dismissed, and has an interesting discussion of secondary liability–worth reading even if you’re intimately familiar with CCbill and Amazon. Kozinski’s dissent is classic Kozinski and also worth a read. He ends in exasperation, “In straining to escape the strictures of our caselaw, the majority draws a series of ephemeral distinctions that are neither required nor permitted; the opinion will prove to be no end of trouble.”

When one recalls that Kozinski penned the opinion in the rightly-maligned Fair Housing Council v. Roommates.com, LLC, (9th Cir. 2007) decision from May of this year, one can see how divergent Kozinski’s views are on these topics from his fellow judges.

I wrote a detailed analysis of the opinions, No End of Trouble? Perfect 10 v. Visa International and Secondary Liability.

The Supreme Court said no today in Powerex Corp. v. Reliant Energy Services, Inc., but civil procedure buffs should be sure to read Breyer’s dissent. I think he likely makes the better argument here, arguing that appeal of a remand order has to be available in a case like this or

the FSIA [Foreign Sovereign Immunity Act] would otherwise fail to achieve Congress’ basic objectives. Context and purpose make clear that few if any members of Congress could have wanted to block appellate review here. Were the Court to pay greater attention to statutory objectives and purposes and less attention to a technical parsing of language, it might agree. Were it to agree, we would exercise our interpretive obligation, not “lawmaking power,” ante, at 13, n. 5, with increased fidelity to the intention of those to whom our Constitution delegates that lawmaking power, namely the Congress of the United States. And, law in this democracy would be all the better for it.

Whew! Who said civil procedure wasn’t a testy subject?