Time for Friday’s Soft IP round up. Here are the top Copyright and Trademark stories from this week. Unfortunately, I was out of town this week and could not make regular posts.  Enjoy!

Gumpy Cat files for Trademark with USPTO, doesn’t like it

USPTO Eliminates Medical Marijuana from TM Categories

Mexican Supreme Court rules against Apple in iFone Trademark Case

Fight to defend Sherlock’s presence in the public domain

Library of Congress fights to preserve achieves of protected music

Copyright lawyers face sanctions for pornography cases

Meltwater’s use of AP news clippings is not fair use

Ninth Circuit reaffirms decision, isohunt induced users to illegally download movies and TV shows



New gTLDs and what it means for Trademark Holders

After the approval of new gTLDs (generic top level domains) by ICANN, several issues are likely to arise for trademark holders, however, with the introduction of the new domains ICANN, created a protection mechanism to address these concerns.

First things first, most people don’t know gTLD means, I will try my best to explain

What is a gTLD?

gTLD is short for generic Top Level Domain. This is something nearly everyone sees every day. It is the suffix at the end of internet addresses such as .com .gov .org. According to ICCAN, the Internet Corporation for Assigned Names and Numbers, there are about two dozen gTLDs in use at this time. As the organization responsible for the coordination of the internet system of identifiers it has moved for the creation for additional gTLD domains in order to expand the digital universe and foster competition. In 2008 ICANN started working towards a new gTLD naming policy which could result in the creation of hundreds of new TLDs such as .eng for England, .med for medical organizations, and .nyc for New York City.

Trademark holders often objected to this due to the fear their mark could be easily infringed by those registering its protected marks under a new domain with a new suffix for example; someone attempting to register pepsi.eng or pepsi.nyc

How are trademark holders protected with the expansion of gTLDs?

To address the concerns of trademark holders ICANN established the Trademark Clearing House (TMCH). The TMCH functions as a database of registered trademarks which will provide support to trademark claims. Trademark holders can register their mark in this database for a fee. In order to register and qualify for a new gTLD the trademark holder must be able to prove actual use of a trademark. Additionally, the TMCH will provide a “Sunrise” service which gives rights holders an opportunity to request a domain name before the domains are available to the public. When a new gTLD becomes available the “sunrise” period begins and registered TM holders will be able to decide if they wish to register under the new TLD, the sunrise period lasts at least 30 days. Therefore, a third party could not simply register a well- known mark under a new gTLD in an attempt to usurp the holder’s good name or attempt to sell the domain to the holder, at least, not without the holder first having an opportunity to use that domain.

Perhaps the greatest benefit to registration is that the TMCH will automatically notify a party attempting to register a new domain name if the name matches one already in the database. For example, if a party attempts to register raptorchef.nyc it would automatically notify the registrant of the existence of raptorchef.com. Furthermore, it notifies the trademark holders when domain names are registered which matches their registered mark. Therefore, the claim service seeks to notify the registrant and the trademark holder of possible infringing uses.

The fees for this service are $150 USD for one year, $435 USD for 3 years, and $725 USD for 5 years, which does not seem like much if a holder is truly concerned about the misuse of his or her mark.

It seems the new gTLDs have created quite a stir as lots of companies have already applied for use of the new domains, you can see the applicant list here. The Trademark clearing house will be open to registration on March 26, 2013.

Summary Judgment Reversed in Favor of Superman’s Copyright Holders

A few months back DC comics and Warner Brothers Entertainment, Inc. successfully appealed a California district judge’s grant of summary judgment in favor of Laura Siegel Larson, the heir of Joe Siegel, the creator of Superman.

The issue at hand in the appeal was whether the parties reached an agreement on the transfer of the copyright in the Superman character. The court determined that a letter mailed from Larson’s attorney constituted an acceptance of DC’s offer and was therefore binding on the parties. The court cited the letter itself which stated the heirs have “accepted DC Comics offer of October 16, 2001 in respect to the ‘Superman’…properties.” The letter outlined years of negotiations between DC and Siegel’s heirs which apportioned substantial compensation to the heirs and gave DC the right to produce works based upon the Superman character. Statements from the attorneys indicated that the letter reflected the material terms that the parties agreed upon and was therefore binding. The court also said that California contract law allows parties to be bound even if some aspects of the contract will be prepared at a later date. The court’s decision can be found here: Larson v. Warner Bros

The context surrounding this case seems more like a problem from a 1L contracts class. It’s simple: negotiations + oral agreements + letter summarizing negotiation with major contract points + signature of duly authorized agent = binding terms.

See also 17 USCS § 204(a) Execution of transfers of copyright ownership

(a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.