Wanted to let you all know that I will be speaking on cross-border online copyright and trademark enforcement at a Washington State Bar Association – International Practice Section seminar on January 20, 2015 at Noon at Davis Wright Tremaine LLP in Seattle, Washington.
Titled Online Copyright and Trademark Enforcement in the U.S. and Abroad, the seminar will cover issues in obtaining cross-border protection for copyrighted works and trademarks, understanding copyright and trademark enforcement systems in the U.S. and other jurisdictions, and using copyright and trademark enforcement measures on major online social media and retail sites such as Google, Facebook, Amazon, Baidu and others.
Further information on attending the seminar can be found here.
Hope you can make it. It should be fun!
Co-author Peter Dang, recent graduate of the University of Washington School of Law and admitted member of the Washington State bar.
Imitation may be the sincerest form of flattery, but try telling that to Converse. Last month, Converse filed multiple lawsuits in the U.S. District Court for the Eastern District of New York against 31 alleged infringers including Sketchers, H&M and others, for importing and selling knockoffs of Converse’s iconic shoes, the Chuck Taylor. Converse claimed that such alleged infringers infringed the Chuck Taylor’s distinctive shoe designs (aka trade dress) (15 U.S.C. § 1114), diluted such trade dress’ distinctiveness (15 U.S.C. § 1125(c)), and used such trade dress in a manner that constituted unfair competition (15 U.S.C. § 1125(a)). The trade dress at issue in both cases consists of Chuck Taylor’s federally registered “midsole design” and “outsole design” (collectively, the “Designs”). The midsole design (Reg. No. 4,398,753 – see image above) refers specifically to the Chuck Taylor’s “toe bumper” and “toe cap,” while the outsole design (Reg. No. 1,588,960) refers to the distinct diamond pattern on the sole of the shoe.
Simultaneously to filing its federal lawsuits, Converse filed a parallel complaint at the International Trade Commission (ITC) against the same alleged infringers for unfair trade practices (19 U.S.C. §1337 et seq.) related to importing shoes that infringed the Designs.
So why are these cases important? Beyond the large amount of potential financial recovery at stake, the outcome of these proceedings will have strong implications for cross-border trademark protection. Converse’s victory in its federal lawsuits may provide greater means for U.S. and foreign retail product producers to protect their products’ designs from unauthorized use in the U.S. by potentially expanding U.S. legal protections afforded to clothing and footwear trade dress. Further, an ITC ruling in Converse’s favor provides Converse the means to not only prevent the infringement of their trade dress, it also helps to stem the cross-border flow of shoes infringing their Designs.
Commentators have reported that Converse faces challenges in its actions because the Designs’ elements may be considered functional, and thus not protectable. Under U.S. trademark law, only distinctive non-functional elements of trade dress are protectable. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775 (1992). Since the Designs’ rubber toe bumper and cap, and outside design are arguably used to prevent wear and provide foot protection, they may be considered functional elements of the Chuck Taylor, and thus unprotectable.
In contrast, others believe that footwear trade dress precedent may give Converse the legal basis it needs to succeed in such actions through the Designs’ potential secondary meaning. In Christian Louboutin, S.A. v. Yves Saint Laurent Am. Holding, Inc., 2012 WL 3832285 (2nd Cir. 2012), the Court found that Louboutin’s iconic red sole of its luxury women’s shoe to be distinctive despite being a element of the shoe’s sole due to secondary meaning (aka acquired distinctiveness) that the sole had acquired amongst the general public, thereby granting Louboutin trade dress protection to its shoe’s red sole. As the Chuck Taylor shoes have been widely available in U.S. commerce for decades, Converse may be able to establish that the Designs acquired secondary meaning amongst the U.S. public, and are thus protectable despite their apparent functionality.
Impact of the ITC Action
Although Converse’s victories in its federal court actions would likely result in substantial financial recovery for Converse, a favorable ITC decision would arguably provide Converse greater cross-border benefits. The ITC provides rights holders of U.S. patent, trademark and copyright rights the means to petition the U.S. government under Section 337 of the 1930 Tariff Act to conduct an investigation of unfair trade practices, including the importation of goods infringing such U.S. IP rights. If such infringing importation is found, the ITC may issue a ban on such infringing imports. In Converse’s case, an ITC issued ban would prevent the alleged infringers’ importation of footwear utilizing the Designs into the U.S., and potentially deter transshipments of such footwear to other markets from the U.S. As such a ITC decision impacts the importation and exportation of shoes infringing the Designs, it arguably has more cross-border benefits as it could effectively provide Converse trademark protection across multiple markets through one legal action.
What’s The Takeaway?
If successful in both its federal and ITC actions, Converse may obtain substantial financial recovery and injunctive relief to prevent imitators from selling their shoe designs in the U.S. and potentially other markets. More broadly, a favorable ITC ruling for Converse would provide Converse the tools to protect its Designs and control the flow of goods infringing such Designs across markets, a strategy that commentators have reported is overlooked, but has the potential to provide enhanced cross-border trademark protections.
Today, I posted on The IPKat about Ford Motor Company’s recent trademark troubles in Russia as the Federal Service for Intellectual Property (Rospatent) denied Ford well-known trademark protection for its company name and iconic blue oval logo. Particularly, I discussed how Ford’s denial of well-known trademark protection was not such a result of Russia’s precarious IP protection environment, or even Ford’s non-use of their name or logo in Russia, but that it likely failed to comply with Rospatent’s procedural registration requirements.
It is available here.
In April, I reported in The IPKat about how Disney and Canadian DJ Deadmau5 were in a U.S. trademark dispute over Deadmau5’s mouse head logo which Disney claims is confusingly similar to Mickey Mouse. This dispute has since escalated as Disney filed a Notice of Opposition with the USPTO’s Trademark Trial and Appeal Board to request that Deadmau5’s logo be rejected registration,while Deadmau5 has made counter accusations that Disney infringed one of his songs and a number of his U.S. and international trademark registrations in an online video featuring none other than Mickey Mouse himself.
Wanted to let you all know that my colleague Rachel Buker (blogger for Art and Artifice) and I will be giving a free lunch-time presentation on IP and business legal issues Canadian entrepreneurs, start-ups and other businesses may face as they enter the U.S. market (and other foreign markets) on September 12th at noon at HiVE Vancouver.
There are only a few open spots available, so if you are going to be in Vancouver and want to attend, please RSVP through Eventbrite.
Hope you can make it! It should be a good time.
It is getting to be my favorite time of year sports-wise when U.S. college and professional football starts up again, which then transitions seamlessly into the U.S. college basketball season before bittersweetly ending with March Madness in the Spring. Sufficed to say, I am not a big baseball fan.
To commemorate this changing of the sport seasons, check out my post today on The IPKat about the U.S. trademark dispute between Canada’s only Major League Baseball team, the Toronto Blue Jays, and Omaha, Nebraska’s Creighton University over Creighton’s new logo for its mascot Billie Bluejay.
It is available at: http://ipkitten.blogspot.com/2014/08/the-blue-jay-trade-mark-battle-commences.html.
The Office of the U.S. Trade Representative (USTR) announced yesterday that it is requesting public comments to assist the USTR in identifying significant barriers to U.S. exports of goods and services, including foreign IP protection deficiencies. The comments are being collected for inclusion in the USTR’s annual National Trade Estimate Report on Foreign Trade Barriers (NTE Report) that identifies barriers to U.S. exports including the “lack of intellectual property protection (e.g., inadequate patent, copyright, and trademark regimes).”
Last year’s NTE Report identified several U.S. export markets as possessing IP protection trade barriers, or at least IP protection concerns, including Angola, Argentina, Australia, Bahrain, Brazil, Cambodia, Canada, Chile, China, Colombia, Dominican Republic, Ecuador, Egypt, El Salvador, Ethiopia, European Union (member states), Ghana, Guatemala, Hong Kong, India, Indonesia, Iraq, Israel, Japan, Kazakhstan, Kenya, Kuwait, Laos, Malaysia, Mexico, Morocco, New Zealand, Nicaragua, Nigeria, Norway, Pakistan, Panama, Paraguay, Peru, Philippines, Russia, Saudi Arabia, South Africa, South Korea, Sri Lanka, Switzerland, Taiwan, Thailand, Turkey, Ukraine, United Arab Emirates, Uzbekistan and Venezuela.
Public comments for inclusion in this year’s NTE Report are due to the USTR by no later that October 29, 2014. Further instructions on the NTE public comment submission process are available here.
Check out my post today on The IPKat about the European Commission’s recent annual report on EU counterfeit enforcement efforts and how EU customs authorities and rights holders have recently increased their efforts to stop the flow of counterfeit goods arriving by mail into the EU.
It is available at: http://ipkitten.blogspot.com/2014/08/ec-reports-on-annual-counterfeit.html.
Check out my post today on The IPKat about a number of similar recent U.S. trademark cases brought by well-known U.S. and Canadian brands against foreign (predominately Chinese) counterfeiters in order to stem the flow of inbound online counterfeit sales into the U.S.
It is available at: http://ipkitten.blogspot.com/2014/07/whac-mole-trade-mark-litigation-using.html.