Letter from AmeriKat I: Viacom v YouTube - The Viacom Appeal

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Letter from AmeriKat: ACTA - its baaaa-aaack! (Part II)

Section 4- Criminal Enforcement

The section the AmeriKat highlighted and scribbled on the most was the section on criminal enforcement. Paragraph 1 introduces the concept of willful intellectual property infringement to jurisdictions, unlike the US, that do not already have this concept. It provides:

"Each Party shall provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright or related rights piracy on a commercial scale."

Commercial scale includes at least those acts "carried out as commercial activities for direct or indirect economic or commercial advantage." Yes, the good ole "commerical advantage" test. We still do not know what it means under the UK's Copyright Designs and Patents Act 1988 fair dealing provisions and the AmeriKat bets no one will be able to point to exactly what this means. (picture, left - an IP infringer behind bars).

Each Party is required to treat willfull importation or exportation of counterfeit trade mark goods or pirated copyright goods on a commercial scale as unlawful activities subject to criminal penalties. This can include the "distribution, sale or offer for sale of counterfeit trade mark goods or pirated copyright goods on a commercial scale as unlawful activities subject to criminal penalties."

Unlike paragraph 1, paragraph 2 is a provision relating solely to trade mark infringement. It provides that the Parties shall provide for criminal procedures for the willful importation and domestic use, in the course of trade and on a commercial scale, of labels or packaging which is identical or cannot be distinguished from a registered trade mark and which is identical to goods or services for which the trade mark is registered.

Paragraph 3 has another disputed word, this time it is "may". Paragraph 2 reads:

"Each Party may provide criminal procedures and penalties in appropriate cases for the unauthorized copying of cinematographic works from a performance in a motion picture exhibition facility generally open to the public."

The AmeriKat is guessing the Motion Pictures Association of America (MPAA) wanted a "must" not a "may". See earlier Letter regarding MPAA's involvement with ACTA here.

Section 5 - Digital Environment

The section everyone was holding their breath for was the section on the enforcement of intellectual property rights on-line. From previous leaked drafts of the text, the final draft seems far more toned down in the aggressiveness of the earlier versions. In fact there is no longer any definition of "Third-party liability" or notice and takedown and Safe Harbor provisions echoing the US’s Digital Millennium Copyright Act (DMCA) (see this IPKat post that outlines the Safe Harbor provisions in action). The old Section 3 was heavily concerned with the liability of ISPs, which ISPs could avoid if they adopted a three-strike type rule(see previous IPKat post here).

The new Section 5 has generally abandoned these concepts save for the footnote to paragraph 2. This abandonment can only be seen as a failure by the US negotiators during the ACTA rounds. Paragraph 2 provides, with some disputed language, the following:

"Each Party's enforcement procedures shall apply to infringement of at least trademark and copyright or related rights over digital networks, including the unlawful use of means of widespread distribution for infringing purposes. These procedures shall be implemented in a manner that avoids the creation of barriers to legitimate activity, including electronic commerce, and consistent with each Party's law, preserves fundamental principles such as freedom of expression, fair process, and privacy."

The footnote to this paragraph suggests that such a procedure could include instances where a Party adopts or maintains a regime providing for limitations of the liability of or the remedies available against ISPs while preserving the legitimate interests of rights holders - i.e., Safe Harbour provisions again, but this time just a suggestion.

Paragraph 4 deals with orders made against ISPs that identify customers who allegedly use their account for infringing "at least trademark and copyrights". The paragraph provides that:

"Each Party may provide, in accordance with its laws and regulations, its competent authorities with the authority to order an on-line service provider to disclose expeditiously to a right holder information sufficient to identify a subscriber whose account was allegedly used for infringement, where that right holder has filed a legally sufficient claim of infringement of at least trademark and copyrights or related rights and where such information is being sought for the purpose of protecting or enforcing at least the right holder's trademark and copyright or related rights. These procedures shall be implemented in a manner that avoids the creation of barriers to legitimate activity, including electronic commerce, and, consistent with each Party's law preservers fundamental principles such as freedom of expression, fair process, and privacy."

The AmeriKat is concerned with the use of the words "allegedly used for infringement". The AmeriKat is concerned that the low-threshold of only showing an alleged infringement will allow a procedure open for abuse. Any applicant can allege that any ISP user has infringed an IP right, but absent sufficient evidence supported by concrete technological information that an ISP address did download a music track or offer for sale a counterfeit good this process is open for abuse. There needs to be a requirement for sufficient evidence that satisfies a court about the allegation of infringement, not casual assertions. What does "allegedly' even mean? That the applicant has reason to believe that the user infringed an IP right or that they actually did?

Another curiosity about Section 5 that the AmeriKat knows she and laden ladenfam both share, is the reference to "at least trademark..." What does this mean? The prior drafts did not include provisions on trademark enforcement,so where did this come from? As laden ladenfam says "who knows with these non-transparent treaties?" Do any readers have any suggestions?

Conclusion?

The final version of ACTA seems to be a win, albeit an unimpressive win, for critics of the digital section of the Agreement. The most contentious provisions that exported the most-argued aspects of the US's Digital Millennium Copyright Act, those relating to ISP-liability and digital rights management restrictions, have been substantially watered down, but other areas of the Agreement are so vague as to be problematic. The AmeriKat is also concerned to again notice the stark absence of any fair-use or fair-dealing provisions from the Agreement.

Unsurprisingly the Recording Industry Association of America (RIAA) praised the text. RIAA's VP for international affairs, Neil Turkwitz, said in a statement:

"While ACTA does not provide all of the answers about how governments will move forward to tackle online piracy, it is a very important multilateral statement concerning the importance of finding solutions to online theft. It may not be a precise roadmap, but it is a powerful expression of a common vision and unity of purpose."

"It may not be a precise roadmap". No kidding, Neil!

As much as the AmeriKat criticizes the wording, the biggest problem with ACTA is that China has expressed no interest in being a Party to the Agreement. According to the Wall Street Journal almost 80% of all counterfeit goods come from China. So what use is ACTA if the biggest offender is not party to its provisions?

But it is not only China's involvement that is being questioned. Members of the European Parliament have been speaking out against ACTA (see report here) and Mexico's Senate voted last week to withdraw from the negotiations. Although discord is being vocalized, the AmeriKat does not believe that such disquiet will rail-road the Agreement.

The JIPLP's weblog is inviting readers to write to Jeremy about their concerns under ACTA. For more details click here.

Global Forum on IP: Report 3

Three weeks ago, following a hearty lunch during the first day of the Global Forum on IP this Kat made her way to the trade mark parallel session, but as she sat down a shadowy realization (picture, left) begun to creep: she knew that as hard as she tried, she could not face another conference session on Google AdWords. After attending about 6 seminars, one of which she herself presented at, how much more could she learn about the CJEU (ECJ) case and would it be any different to what had come before? A cynical voice thundered saying "No, it won't be. Go to the oft-neglected copyright session, instead." So with the voice booming away, she decided that the copyright parallel session would be the best place for her and her report of that balmy Singaporean afternoon is set out below.

Pirate Bay and the Digital Economy Act: Is the time ripe for an overhaul of copyright law?

Although the session had the Digital Economy Act (DEA) in the title very (very) little was said about the actual Act or the fact it was being judicially reviewed. Professor Hughes, the moderator of the session from the Cardozo School of Law, began the session by expounding on the beginnings of ISP liability and peer-to-peer technology culminating in the Napster and Grokster litigation in the US. This litigation was the impetus for the US legislature and courts to examine ISP liability in the US. This issue is still pertinent 10 years later with the extensive litigation that has been seen in the Pirate Bay litigation - whose service was ordered to be cut off by the Danish and Italian courts. The question has now become whether or not ISPs should be involved in graduated responses, and if so what should their level of involvement be in this response.

Jan Rosén, (picture, left) Professor at Stockholm University stated that the UK, like many other countries in the EU, has instruments of graduated response legislation to stop traffic and to ascertain IP addresses of suspected copyright infringers. This has very much been central to the debate on these issues. Professor Rosén asked whether in this growing system of "copyright abolitionism" we have learned something from piracy and the Pirate Bay case. The simple answer, he says, is that copyright has survived and has come out stronger than ever and Professor Rosen cannot see any alternative to this. He does however, note that stopping internet service has deep issues concerning freedom of expression and privacy.

Professor Rosén acknowledged that copyright is a complex area of law and has been so over the years. In recognition of this increasing complexity and in line with what Mr Justice Arnold said earlier in the morning (see report here), Professor Rosen stated that UK copyright should be amended by a new act. The UK Copyright Act, like the Swedish copyright act, is just layer after layer of amendments which it makes it too difficult to understand or interpret.

It may have been sitting under the halogen lights coupled with her jet lag but laden ladenfam tuned out for a bit (picture, right - laden ladenfam warming her whiskers under the lights) and when she looked up again she was staring at a slide entitled ‘Pirate Bays contribution to a contribution…” and that was the end for her for a couple of minutes. She mentally returned to the program when Professor Rosén spoke about whether or not ISPs should benefit from reduced liability due to the social value of their work and business. This argument had been rejected by the the Swedish Court in Pirate Bay. However, the Swedish court did say that liability may be reduced for ISPs because of impassive willfulness due to automation and intense traffic, i.e. being passive and not acting with full responsibility. As laden ladenfam understood it, any kind of ISP service maybe liable for contributory infringement at least according to the Swedish Appeal Court. This may not fall under willfulness, but it could be argued as being grossly negligent in Sweden suggested Professor Rosen.

Professor Ng-Loy Wee Loon of the National University of Singapore stated that Singapore is also looking to a graduated response type legislation. To rightsholders, graduated response mechanisms are just another enforcement measure -they are not actually getting any additional rights. Professor Loon says she can understand why this is an effective means of enforcement of copyright in an area which is ripe with infringement, i.e., the internet. In Singapore there is a separate police force, the IPR Branch in the Criminal Investigation Department, which enforce IP infringement. But a lot of burden is placed on this branch and the tax payers who pay for the enforcement of a private right.


ISPs similarly have a burden by way of their gatekeeping function. But with this burden comes the benefit of safe harbor provisions; the provisions of which in Singapore are similar to the US model (see AmeriKat reports on the Safe Harbor provisions in the DMCA here). Professor Loon questioned how much further copyright enforcement should go in protecting copyright. She thinks there should be a three-strikes law which should be called "balance-balance-and-balance". The RecordTV v MediaCorp TV Singapore (2010) case was cited. The technology involved the ability of any member of the public being able to register with the plaintiff and following registration could use the system to record the TV programs, i.e. time-shifting. This is permitted by the Singapore Copyright Act under section 114. MediaCorp TV Singapore is the main broadcaster in Singapore and produces television programs like documentaries. The issue before the court was the right of communication to the public. When this case went to the Court of Appeal, there were questions about the scope of communication to the public. Where there is a one–to–one translation, i.e., where the streaming of the broadcast is to the user of RecordTV individually, and not to the public, the court looked at the bigger policy picture. Right at the start of the Court of Appeals judgment, the court asked how the court should strike a “just and fair balance” between all the interests of the affected stakeholders, including the interests of consumers, content providers as well as technology and service venders. They said the balance should come down in favor of the wider public interest, and therefore RecordTV’s service did not involve a communication to the public. Professor Yoon says she is not sure about this aspect of the Court of Appeal’s judgment. She believes the court bended over backwards to make this decision make sense in the favor of balance because the parliamentary debate on this issue seemed to indicate that such a case of RecordTV should fall within the definition of communication to the public. Professor Yoon stated that it may not have been the wrong decision, but it was a very alternative route to get there.

The overall point that came out from the two presentations was that from both Singapore and Sweden alike, even when legislatures craft safe harbors for ISPs, if the judge wants to throw the book at an infringement based model or wish to protect an ISP, they will do so regardless of the legislative intent.

Google Book Settlement

The next session discussed the Google Books Settlement. An IPKat favorite and always entertaining speaker, Mr Tilman Lueder, Head of Unit (Copyright) of the European Commission, (picture, left) the moderator of the session, begun by giving background on the Google Book project. Lueder compared the Google Book Search to the EU’s Europeana project which is “falling behind” because, he says, the EU has a strict copyright system without fair use. Mr. Lueder suggested that if we wanted to facilitate large scale digitization we would have to change the laws and could not leave this in the hands of a private party settlement. Meanwhile, he says he is not so sure that this is Europe's only option any more. The European Commission published an impact study on orphan works and there was no forthcoming consensus as the publishers, users, and the like do not seem to speak the same language. One can be excused in thinking, Mr. Lueder continued, that the Google Book Settlement is not so bad – or at least not as difficult as passing legislation.

Professor Rosén said that this issue was very vast. Now that Google Settlement diminished to only a fraction of its previous incarnation, there is still 50 million works that have been digitized. Something will surely happen with these digitized works. The question is whether we want a global player who has a capacity to offer these large catalogues of works in a private capacity? No collecting society can provide such a big repertoire. A detailed discussion then ensued about the Nordic compulsory licensing system, which this IPKat has such strong views on its un-workability throughout the EU that she unfortuantely automatically stops listening. One could even feel the rest of the audience switch-off as soon as the issue of compulsory licensing was brought up.

Professor Wong stated that she thinks that the Google Book Settlement should be approved. She says that the second version is many ways an improvement on the first especially due to the resolution for the foreign rights owners. Leaving aside the anti-trust issues, she does not believe that dragging the copyright issue to trial would be beneficial. Professor Wong also stated that even though a private company is handling these licences, it may be no bad thing for the US to experience a licensing system. There are some cautions going forward beyond the Google Book Settlement which includes the treatment of orphan works. Professor Wong also stated that it has been frustrating for her that the US legislature has started initiatives dealing with orphan works but they have not gone anywhere. Although not mentioned by name this would include the Shawn Bentley Bill, which this IPKat knows intimately being the subject of her LLM dissertation, which was a good bill but never went anywhere. In addition, proposals for the exemption of Section 108 to the Copyright Act -an exemption for libraries and private individuals - which still has gone nowhere. The Google Book Settlement is one elegant solution in addressing the problem of orphan works.

Professor Hughes (picture, left) from the Cardozo School of Law said the seeds of the Google Book project is that they make money from the Google Book Project, a little fact that Google always seems to forget when promoting the Settlement. Although, doctrinally, there may have been an argument for fair use, politically there is no way there could be fair use. The Statement of Interest from the US government filed in 2008 opposed the first settlement. The Statement of Interest focuses on market dominance of Google. The Department of Justice say they should not achieve anything more than first-mover advantage in scanning the books and then obtaining a licence. The settlement should not do anything more in prolonging market dominance. The recent filing in September 2010 characterized the revised Settlement as a “bridge too far”, which includes the issue of orphan works.

Mr. Lueder asked if orphan work legislation is misguided. The Department of Justice says that the Google Book Settlement is a private agreement substituting for legislation of private rights for members who are not present. This troubles Professor Hughes, and, as readers know ,the AmeriKat greatly (see her post here). Professor Hughes says that the wider issue is what does this project say about the system of publishing in the US as well as the role of libraries. Will we be entirely cutting out the middle-man in all of these processes? Professor Hughes says that if he was a librarian, he would be very concerned about the Google Book Project.

Mr. Lueder says that although we have recognized that we should not have private parties legislate on issues, the difficulty in the orphan works experience in Europe makes such private legislation seem attractive. Professor Hughes says that with the Google Book Settlement in the US we may be seeing a mixture of private settlement with the US Government guiding them in a quasi-legislative role of saying whether the settlement is acceptable or not – the “you are getting warmer, warmer. Nope, now you are colder” game.

Mr Justice Arnold (picture, right), in audience, argued that although Mr. Lueder says that legislation like orphan works is challenging the point surely is to balance the interests and make a judgment as to where that balance lies [a judge would say that, says laden ladenfam]. Why, said Mr Justice Arnold, does there have be a complete consensus on the legislative issue before legislation is made? Mr. Lueder says that every time they try to strike a balance in proposed legislation, they receive pressure from stakeholders and this constantly makes this legislative process challenging. He said that at times the rights holder community is so strong, that they feel that any strike of balance is an attack on their rights and this holds back the balance. Likewise with the other side of the camp, laden ladenfam says.

Admittedly, there was one more session in this afternoon but the AmeriKat, having sat under the halogens and suffering from a mean case of jet lag, stalked up to her hotel room to take a 40 minute Kat nap before dinner.

Issues With TRAI’s New Spam Call & SMS Regulations

TRAI’s new Spam Call and SMS regulations inhibit the open ecosystem in the VAS industry, especially the content businesses, and give more power to telecom operators to control what is in their pipe, without holding them accountable: there are guidelines, but no punitive damanges for indiscretions and oversight from telecom operators, but allows them to punish others at their discretion. However, there is no doubt that there was abuse of the open SMS pipe in India (they had it coming), and these stringent guidelines are likely to address several issues, even if they may create more issues. From a consumer perspective, she is best placed while in the NCPR, and in a worst case scenario, will at least be able to identify the spammer if not on the NCPR.

Please note that this is our reading of the regulations (with some suggestions from Mobile VAS companies that we agree with), and we’re open to correction. If there are any issues we may have missed, please leave a message, or contact nikhil [at] medianama.com. So, some issues:

- What about content distribution? The regulations suggests that any external party who wants to send over 100 SMS’ per day is a telemarketer, and needs to register as one, in order to avail of bulk SMS rates. Without registering, they can still send SMS’ at expensive P2P rates. (Thanks for correcting, Deepak) The regulations appear to take into account only transactional and commercial communication, but content is neither commercial nor transactional communication. Or is content delivery being treated as a transactional message? In which case, it is limited to account related information sent to its customer(s) by the Bank or financial institution or insurance company or credit card company or telco; information given by Airlines or Indian Railways or its authorised agencies to its passengers regarding travel schedules, ticket booking and reservation; information from a registered educational institution to parents or guardians of its students. Thus, off-deck SMS content and communities are dead.

- Punishes the intermediary or the telemarketer? With billions of messages, the aggregator, just like the telecom operator, has no control over the messages being sent via the system. So if XYZ Bank has six complaints ratified against it, will the intermediary be disconnected or just the bank? Is there safe harbor for the intermediary? If the intermediary is protected, then that means that several entities entity will have to register as a telemarketer: if MediaNama is sending updates via using Google SMS, or a community on SMS Gupshup also have to register as a telemarketer, and pay Rs. 10000 and deposit Rs. 1 lakh deposit? For enterperise messaging, will every SME will have to do the same? This doesn’t augur well for the enterprise messaging business.

- Kills individual SMS brands? If, however, intermediaries have to register as telemarketers, in order to facilitate message sending, then it also affects individual brands: For example, responses or messages from 9232232665 (92-FACEBOOK), will have to come through with the name of the intermediary they tie up with. There is no clear alphanumeric identifier for a brand, and each sender via each telco has a unique ID.

- Too much power in the hands of the telecom operator: there is no option for a telemarketer or legitimate content distributor to present his case. It’s a six strike policy, with the telecom operator playing judge, jury and executioner. No redressal system for the telemarketer has been identified in the guidelines, in case of false accusations (more on ID spoofing below).

- One category fits all? What about selective opt-in? Lets say I want to opt in for messages from MediaNama’s hosting service provider E2E Networks, for messages informing me that the server is down. Messages from them will be in the IT category (6). By opting in for the IT category, am I thus opening myself to ALL promotional messages from category 6 – including Broadcasting, Communication and Entertainment? Will, say, STAR Plus now be able to send me messages informing me of the latest soap? The other thing is that even network-status messages from our hosting service provider will be deemed to be commercial communication, not transactional. Transactional messages are limited to certain categories (as we mentioned in our first point above).

- Killing mobile SMS advertising? One can understand not allowing companies to slip in promotional messages to a consumer on the NCPR who has subscribed to content, but why has the TRAI banned promotional messages within the SMS? Especially in case content messages are being treated as transactional messages, then this unnecessary clause preventing in-message advertising kills ad supported SMS content model.

- What about free p2p SMS services? The way ad supported free SMS services like 160by2 work, they send the messages, but the sender ID shown is that of a person sending the message. This now prevents them from using that sender ID.

- What about number churn? Often an issue is that a subscriber churns out, and the telecom operator allocates the number to a new subscriber. In case of SMS based free community and content services like SMS Gupshup and MyToday, there is no way of accounting for this churn since the number hasn’t been unsubscribed. Will the NCPR account for this number churn, so that these messages are filtered at the source? Else there will be complaints against these companies.

- Six strikes too few? Some VAS companies that we’ve spoken with have suggested that the six strike (six legimitate complaints) policy is too risky, especially if you take into account billions of messages being sent across telecom operators.

- Risk of ID Spoofing: Since all telemarketers will have access to the NCPR data, the system is open to abuse with ID spoofing. One VAS company asked – “What stops me from getting a competitor banned by spoofing his Sender ID?”

- What happens if the Originating and Terminating Telco are the same? Will a telecom operator register a legitimate complaint against his own telemarketer? In my experience – no. Two months ago, over two weeks, I received three calls from a marketer for Airtel, offering me a number similar to my existing number. I filed a DNC complaint – after fighting with the Airtel customer care exec who was trying to avoid filing a complaint, only to receive a message a few weeks later that my DNC complaint was incomplete. It was not, but it handn’t been registered accurately, I believe, on purpose.

On a positive note: the 100 SMS limit for consumers, who earlier were buying SMS packs of 500 SMS’, will push people towards mobile IM and the mobile Internet. So this is a big win for the Mobile Internet

Please feel free to share counter-points to our observations, in the comments, or email them to us (we’re okay with anonymous / anonymising comments, as long as the views are valid). Or, in case we’ve missed something, please share that as well.

Letter from AmeriKat: Full of Surprises - USPTO fights TM bullies, the Hulk, and Olson takes on YouTube

Two Fridays ago, the AmeriKat was involved in a technical discussion with a partner at her firm, when a bouquet of beautiful pink and purple flowers interrupted the dialogue as it landed on her desk. Convinced the bouquet was meant for someone else she looked at the card, but it was indeed addressed to her, an ipkitten, from an anonymous reader. The AmeriKat, unsure of what was more surprising, receiving flowers or receiving them from an anonymous source, began to quiz the usual suspects - all of whom knew nothing of the greenery. The flowers, still blooming away on her desk, are a little reminder to the AmeriKat that when you least expect it, your otherwise run-of-the-mill day can surprise you. (picture, left - the AmeriKat smelling her bouquet on her desk) Thank you, anonymous reader!

USPTO to stop trade mark bullies?: Recess - either the enjoyable half hour that many look forward to, or dread as the encounter with the playground bully nears. Teachers and students are not the only individuals concerned with bullies - surprisingly, the USPTO is as well! Earlier this year the US Congress and President Obama passed into law the Trademark Technical and Conforming Amendment Act of 2010 (TTCAA). The bill focused primarily on technical aspects of trade mark law such as affidavit filing for continued use of trade marks and other fascinating issues. However, there is a surprise in the Act. Every IP lawyer's favourite politician, Senator Patrick Leahy (D-Vermont, picture right), included a provision, now lovingly known as the "trade mark bullies" provision, that requires the Secretary of Commerce to study and report to Congress on:

"the extent to which small businesses may be harmed by litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner"

So where does Senator Leahy's concern about trade mark bullies derive? Well, it turns out it is good old fashion state politics. Senator Leahy is a senator from Vermont. His election to Senate, therefore, depends on the good people of Vermont. Some of these good people include a husband-and-wife run Vermont brewery, Rock Art Brewery, who had been on the receiving end of Hansen Natural Corporation's lawyers. Hansen produce a variety of beverages, including Monster Energy Drink. Rock Art Brewery produce a beer called VERMONSTER. Not infringing to the AmeriKat and little chance a consumer would be confused between buying a energy drink and a beer. However, Rock Art Brewery duly received a cease and desist letter from Hansen claiming that Rock Art's VERMONSTER infringed their MONSTER ENERGY trade marks. Instead of submitting to the multi-million dollar coroporation, the Vermont brewery fought back and generated enough negative publicity to lead to a settlement agreement whereby Rock Art Brewery could continue to use their mark. To hear Rock Art Brewery's story - click the links here and here.

The AmeriKat reads several reports of multi-million dollar corporations sending out such cease and desist letters (remember the DoughBoy/Girl saga here?) and with such commonplace stories the USPTO is now calling for submissions from small business owners about their experiences with such "bullies". Specific questions include:

• In approximately the last 5 years, please describe any instances of which you have first-hand knowledge where a small business may have been the target of litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner
• Whether you think “trademark bullies” are currently a problem for trademark owners, and if so, how significant is the problem?
• Whether you think aggressive litigation tactics are more pervasive in the trademark area than in other areas of the law?
• Whether you think the USPTO has a responsibility to discourage or prevent trademark bullying? If yes, what should the USPTO do?

If you are the David in one of these David and Goliath sagas, the USPTO asks you to respond to questions and send your comments to TMFeedback@uspto.gov, with the subject line “Small Business Study” by no later than January 7, 2011.

The AmeriKat loves this provision and the call for evidence, but is questioning what Congress is really going to do with the evidence? What protection should be afforded small businesses? Perhaps an unjustified threats action? What do readers think?

Trade mark infringement makes Hulk mad: In the field of "surprising' (and potentially keeping with the trade mark bullies theme), nothing could be less surprising than a Disney-owned subsidiary, Marvel Comics, suing a much smaller company for use of one of their marks. Marvel Comics has filed a complaint against Airbase Industries, an Ohio-based power tool manufacturer, for use of a line of industrial and domestic equipment under a "Hulk" brand. The line's marketing logo is "Unleash the Power". One of Airbase's subsidiaries registered the HULK mark with the USPTO last year, which Marvel opposed, but an USPTO examiner gave the go ahead nevertheless. Now with the sale of Airbase's air compressor (picture, right) under the HULK mark, Marvel has initiated proceedings in the Ohio Southern District court.

The complaint states that the products slimy green shade is "confusingly similar" to the Hulk's green character. The lettering and font of the product's HULK mark is also, they allege, "nearly identical" to Marvel's Hulk logo. These two elements are so similar to the look and feel of Marvel's Hulk (picture, left) that your average power tool consumer will think that Marvel licensed the use of their Hulk rights to Airbase. Does your average power tool consumer think much except "that is an awesome air compressor!", anyway? Marvel is asking the court for the usual remedies - injunction, cancellation of the Airbase trade mark and all the profits from the infringing products.

Although several other companies and individuals have used and indeed registered HULK for products without too much of a squeak from Marvel, it is Airbase's product that has awoken the dragon. The AmeriKat believes this is due to the mistaken choice, by Airbase, to use such a similar green color to that of the Hulk. But the timing is also telling. Reported by The Hollywood Reporter last week, Marvel and American TV channel, ABC, are planning the return of the Incredible Hulk. Lesson: don't mess with the Hulk when he has a new show and merchandise coming out...

YouTube to face superstar lawyer in Viacom appeal: Another superstar that is planning a bit of an upcoming show is Theodore Olson. Olson, one of the most renowned appellate lawyers in the U.S. , has been hired by Viacom in their appeal against Judge Stanton's ruling earlier this summer. As reported by the AmeriKat (here), the judge ruled that YouTube qualified for the Safe Harbor protections under the Copyright Act for direct and contributory copyright infringement in hosting Viacom content illegally posted by other users. The loss was a huge knock to Viacom and other rights-holders in their fight against YouTube. The hiring of Olson, however, means that Viacom - far from being defeated, is coming back for another round.

Olson, (picture, right) a Republican, grew up mainly in the San Fransisco Bay area and later worked as the Assistant Attorney General in the Reagan Administration. He also defended former President Reagan during the Iran-Contra affair. From 2001 to 2004, Olson was, unsurprisingly, Solicitor General of the United States following his victory in Bush v Gore which permitted President Bush to take office. Obviously, the AmeriKat is painting a picture of Olson as a Republican ally, used to representing the more powerful and liquidated of parties. However, keeping in line with the theme of surprise this week, Olson also joined forces with his opposing counsel in Bush v Gore, David Boies, to bring and win a federal suit to overturn Prop 8 banning gay marriage in California in Perry v Schwarzenegger.

A few weeks ago, Google submitted a motion to the 2nd Circuit court to consolidate the appeals of Viacom and the class action suit headed by the Premier League. Had Google gotten their way, Viacom would have had to join forces with Premier League et al to file one appeal brief. However, last Monday the 2nd Circuit court ruled that although the case would be consolidated and heard in tandem per Viacom's motion, each of the parties would have the chance to file their own briefs. So as of 3 December, when Viacom is expected to file their appeal, the AmeriKat anticipates their brief, with Olson at the helm, will not fall too short of their 14,000 word limit. The oral hearings in the appeal are sent to take place next summer.

The AmeriKat wonders if Olson is keeping some surprising arguments up his sleeve for the appeal, because where she stands right now it will only be the most creative and impressive of arguments that will defeat YouTube,now.