Chanel vs Chanelle Nailbar - Fair or Foul?

The owner of Chanelle Nailbar got a nasty surprise: Fashion and beauty empire Chanel was not amused by the use of its name and promptly sent a cease and desist letter. 

Owner Le Ngyun was surprised, she came up with the name by combining the first name of her daughter (Chanel) with her own family name (Le). Business is booming - her Chanelle Nailbar became a household name when it was mentioned as the best nail studio in the Netherlands by the Dutch TV channel RTL.

According to the lawyer of Chanel, Ms. R. van der Straaten, she infringes on the IP of Chanel since Chanelle Nailbar profits from the appeal of the well-known Chanel brand. 

Chanel is willing to forfeit any claims, providing that Ms. Le changes her trade name to avoid confusion. The company understands that is was never Le’s intent to infringe on the IP of Chanel. That’s why Chanel is willing to find a new name together with Ms. Le. Chanel does however claim a penalty of 1,000 euro per day that Ms. Le keeps on using her Chanelle trade name, as well as 750 euro in legal fees.

Ms. Le is uncertain what to do. She is attached to the Chanelle trade name since it has personal and emotional value as well as commercial value.

The (social) media got involved - making all kinds of suggestions for new names such as “Chanaile” and “Nachelle”. A legal secretary of a law firm situated opposite of the nail studio used it as an opportunity to drum up business for her bosses and wrote that Ms. Le can drop in anytime for advice.

What do you think? Brands such as Chanel invest a lot of time and money to build and protect their brand, so it makes sense that they take an aggressive approach. But small entrepreneurs might also use a similar brand for legitimate reasons. 

Who is right in this case? The jury is out…

Google Wants to Trademark the Word "Glass"

Google wants to trademark the word “Glass” for its computer-powered glasses. The company has already successfully trademarked the term “Google Glass”. It now wants to trademark the single word “Glass” featuring a distinctive font to make it unique.

The U.S. trademark office has refused to do so. The grounds are obvious:

1. The suggested trademark is too similar to other existing or pending computer software trademarks (e.g., Microsoft's SmartGlass) that contain the word “glass”. This is a main ground for rejection since it would confuse customers or consumers.
2. Even when “Glass” would have a distinctive format or lettering, it would still remain “merely descriptive.” Generic terms cannot receive trademark protection under federal law. 

For more details, click here

Trademark attorneys for Google, Anne Peck and Katie Krajeck from Cooley LLP, claim that Google’s proposed trademark does not confuse consumers, especially given how much media and policy attention the Glass device has received in the last couple of years.

They also argued that “the frame and display components of the Glass device do not consist of glass at all,” but are made from titanium and plastic. The word “glass” would therefore not “inform potential consumers as to the nature, function or use” of the product Google is selling.

However, Google could skirt the issue by marketing its device as “Google Glass”. But that would limit its possibilities of successfully suing competitors for IP infringement. Google lists Glass in its trademarks list as “Glass™ wearable computing device".

IP Rights Take Precedent over Nature – Courtesy of the US Supreme Court

Mr. Bowman, a 74-year-old soybean farmer, bought soybean seed from a local grain elevator that was contaminated with the patented seed. He used those seeds in good faith to produce soy beans on his 299 acres of farmland.

Bowman began purchasing Monsanto’s patented seeds in 1999 and, because of the licensing agreement, did not save any of the seed for future planting. But he also bought so-called “commodity” seed from a local grain elevator, which acts as a clearinghouse for farmers to buy and sell seed.

The elevator’s seed was contaminated with Monsanto’s patented seed since more than 90 percent of the soybeans planted in the area were Roundup Ready crops. Mr. Bowman planted that commodity seed which was substantially cheaper to purchase. He produced a second, late-season crop, which is generally more risky and has lower yield.

He also used seeds generated in one late-season harvest to help produce subsequent late-season crops.

According to Monsanto, the farmer should have known that the seed was Monsanto’s IP since the seeds were resistant to herbicides.

Monsanto promptly sued the farmer for patent infringement which case Mr. Bowman (quite correctly) won. The farmer’s lawyer argued that “this issue affects every farmer in the country and the method of planting that farmers such as Mr. Bowman have used for generations.”

Monsanto appealed to the Supreme Court to get its pound of flesh. Mr. Bowman argued that the Supreme Court should analyze whether the law allows patent holders to “continue to assert patent rights after an authorized sale.”

The case therefore centered on the question how far down the stream of commerce (e.g., the farming cycle) is a company such as Monsanto allowed to enforce its patents. This is even more poignant since soybeans can easily self-replicate.

A lower court, an appeals court, the Barack Obama administration and the Supreme Court all claim that the stream is virtually endless.

The US Supreme Court has for the first time backed patents for a self-replicating technology. It ruled in favor of Monsanto’s “Roundup Ready” soybeans, along with its licensing agreement that allows farmers to use them only once.

This licensing agreement with forbids farmers to resell the seeds for commercial planting, and those seeds can also not be used for research, crop breeding or seed production.

The ruling is a clear sign of how patented, genetically modified organisms get legitimacy. The Supreme Court ruling was unanimous. It ruled IP rights take precedent over nature – go figure!

In this case, the court ruled against an Indiana soybean farmer. A lower court ruled in favor of the Monsanto and ordered the farmer to pay $84,456 in damages and costs to Monsanto in 2009 for infringing its soybean patents.

Justice Elena Kagan explained: “If simple copying were a protected use, a patent would plummet in value after the first sale of the first item containing the invention. The undiluted patent monopoly, it might be said, would extend not for 20 years as the Patent Act promises, but for only one transaction. And that would result in less incentive for innovation than Congress wanted.”

According to Kagan, “were the matter otherwise, Monsanto’s patent would provide scant benefit.” As a fellow lawyer, I can only say: So what? Not every patent is enforceable, let alone profitable!

The Obama administration instructed the Supreme Court that its justices should not concern themselves with the eventuality that such rigid patent protectionism could undermine traditional farming techniques. The administration went on to point out that Congress “is better equipped than this court” to handle these issues. Is the government not blatantly interfering with the justice system? A slippery slope indeed!

Monsanto informed the Supreme Court that if it would rule in favor of the soybean farmer, it would doom its business model.

In my lawyer’s opinion, this decision is bad, really bad. Farmers who buy seed in good faith should be able to use them to use them to produce food for all of us. Monsanto might have scored a commercial victory, but on the marketing and PR front – the company lost big time!

Landmark decision by the US Supreme Court for Resell of Copyrighted Content

In the case of Kirtsaeng v. John Wiley and Sons, the US Supreme Court ruled that American IP owners cannot stop imports and re-selling of copyrighted content that is lawfully sold outside of the US. It marks a major victory for American consumers since it allows them to shop worldwide for content that is covered by IP.

It means that a legal purchaser of a copyright-protected item may dispose of that property anyway he/she sees fit. The court ruled in favor of an immigrant scientist from Thailand., Supap Kirtsaeng,  imported textbooks that were lawfully printed overseas by a U.S. publisher. He then sold those printed textbooks on eBay.

The Supreme Court explained in it ruling that products are nowadays easily bought and sold outside of the US. Customers therefore enjoy a wider choice as well as lower prices for items that companies, libraries, used bookstores and retailers can import to the US, without the need to verify if any there is any US IP for further sale. To quote the Supreme Court: “A geographical interpretation would subject many, if not all, of them to the disruptive impact of the threat of infringement suits.”

This decision preserves the rights that the first-sale doctrine protects manufacturers, retailers, libraries, consumers, and the public at large.

The Supreme Court’s decision could potentially also impact digital content as well as is pharmaceuticals. As a result, people could opt for buying drugs abroad where prices are lower.

The Kirtsaeng case shows us legal eagles that copyright monopoly must be limited to its constitutional purpose. As the Supreme Court stated: “American law … has generally thought that competition, including freedom to resell, can work to the advantage of the consumer”.

Copyleft – Great Idea or a Legal Minefield?

Although it gives the impression that it is the opposite of copyright, it is not. Copyleft is still a license in the legal sense. Ironically enough, a copyleft work still has copyright.

A copyleft license has five characteristics:

1. Free Use
2. Freeree Distribution
3. Free Modification and Derivation
4. Free Combination
5. Universal Application

When owners of IP want to share their work, they often shy away from putting it in the public domain which would entail that they forfeit their IP and all legal claims to their program or work. The legal problem with public domain is that once a program or work is part of it, anyone can take it, amend or adjust it, and copyright or patent it. 

Examples of copyleft license:

CC-SA

CC-SA is a small set of copyleft licenses rapidly growing in popularity, particularly in Free Culture communities rather than Open Source Software communities. It is a set of Creative Commons Share-Alike License. These copyleft terms for Creative Commons licenses are offered in two different Creative Commons licenses, providing the CC-BY-SA (Attribution/Share-Alike) and CC-BY-NC-SA (Attribution/Non-Commercial/Share-Alike).

GPL

By far the most prominent and popular copyleft license is the GNU General Public License, or GPL. In addition to the usual copyleft terms and preferential treatment (but not prescriptive requirement) for noncommercial uses, it adds additional restrictions and reinforcements of restrictions based on earlier versions.

MPL

The Mozilla Public License, or MPL, is used by Firefox Web browser and is hence one of the best-known pieces of open source software in the world.

US Government Cracks Down On Megaupload

The US government seized Megaupload’s domain names, grabbing $50 million in assets, and getting New Zealand police to arrest four of the site's key employees, including e founder Kim Dotcom.

The 72-page indictment states that the site earned more than $175 million since its founding in 2005, most of it based on copyright infringement. The indictment goes after six individuals.

The case is a major one, involving international cooperation between the US, Hong Kong, the Netherlands, the UK, Germany, Canada, and the Philippines. In addition to the arrests, 20 search warrants were executed today in multiple countries.

Megaupload controlled 525 servers in Virginia alone and had another 630 in the Netherlands—and many more around the world.) For years, the site has claimed to take down unauthorized content when notified by IP owners. It has registered a DMCA agent with the US government. It has created an “abuse tool” and given rIP owners access. It has negotiated with companies like Universal Music Group about licensing content.

The US government points to numerous internal e-mails and chat logs from employees showing that they were aware of copyrighted material on the site and even shared it with each other. The government says that the site therefore does not qualify for a “safe harbor” of the kind that protected YouTube from Viacom's $1 billion lawsuit.

Megaupload employees apparently knew how the site was being used. They also knew how important copyrighted content was to their business. Employees also had access to analytics. The government therefore concluded that Megaupload knew what was happening and did little to stop it.

The MPAA stated: "By all estimates, Megaupload.com is the largest and most active criminally operated website targeting creative content in the world. This criminal case, more than two years in development, shows that law enforcement can take strong action to protect American intellectual property stolen through sites housed in the United States."

This is for sure a case to watch!