CarGurus Enters Canada – Suit Ensues For Statutory Damages under the Canadian Copyright Act

11892290_10153570213132792_5698485790065904705_oThe plaintiff in a copyright infringement action has the option to choose to receive statutory damages rather than to establish its actual quantum of damages it has suffered. Statutory damages range from a minimum of $500 to a maximum of $20,000 for the infringements related to a given work. A plaintiff might choose statutory damages when the amount of its loss is difficult to quantify, particularly when works are downloaded in large quantities from the internet. The Canadian Copyright Act provides for various remedies for copyright infringement, including statutory damages as an alternative to compensatory damages and/or profits.

CarGurus is the second largest digital marketplace provider for new and used vehicles in the United States. In 2015, it entered the Canadian market and became a direct competitor of the Canadian company, Trader Corporation, which operates “digital marketplaces” for new and used vehicles in Canada through its websites “autotrader.ca” and “autohebdo.net” and related mobile applications.

In this litigation (Trader v. CarGurus, 2017 ONSC1841 dated April, 2017), Trader alleged that CarGurus infringed Trader’s copyright in 196,740 photos taken pursuant to its Capture Service.  Trader sought a declaration of copyright infringement and a permanent injunction restraining CarGurus from using Trader’s photos.  Trader also claimed statutory damages under the Copyright Act in the amount of $98,370,000 ($500 per infringing photo) and punitive damages of $1 million. Continue Reading

Can You Register a Copyright on an Artistic Element in an Industrial Design?

sebastian-davenport-handley-146343Suppose that you have expressed your idea into a tangible form such as two-dimensional artistic elements incorporated into an industrial design.  Although your copyright exists upon the moment of creation, do you have a valid copyright?  Should you register your copyright on the two-dimensional artistic elements with the U.S. Copyright Office?  Can you stop a competitor from using your two-dimensional artistic elements in their industrial design?  The answer is YES!

In the United States, to establish copyright infringement, “two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ’ns. Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991). “If the plaintiff does not have direct proof of copying, the plaintiff may show copying by demonstrating that the defendants had access to the copyrighted work and that the works are ‘substantially similar.’” Herzog v. Castle Rock Entm’t, 193 F.3d, 1241, 1248 (11th Cir. 1999). Continue Reading

FTC TELLS INFLUENCERS TO DISCLOSE CONNECTIONS ON SOCIAL MEDIA

clem-onojeghuo-220471The Federal Trade Commission (FTC) sent more than 90 letters to celebrities, athletes and other influencers – as well as to marketers – highlighting the need for influencers to “clearly and conspicuously” disclose their relationships to brands when they promote or endorse them on social media. The FTC letters mark the first time that the FTC has reached out directly to social media influencers, indicating that influencers could be subject to their own FTC actions if they fail to disclose their relationships on social media.

FTC’S ENDORSEMENT GUIDES

The FTC’s Endorsement Guides, which apply to endorsers and marketers, provide that if there is a “material connection” between an endorser and the marketer of a product that might affect the weight or credibility that consumers give an endorsement, that connection should be “clearly and conspicuously” disclosed. A material connection includes a business or family relationship, a monetary payment and even the provision of free products to an endorser. Continue Reading

IP Court has clarified that the use of a “plot generating object” in a movie may constitute copyright infringement

jakob-owens-199505In mid-February, the Russian Intellectual Property Court issued an interesting decision, in which it indicated when filmmakers have to obtain a copyright owner’s consent for use of a movie prop.

Under the auspices of the case, Pan Press Publisher filed a lawsuit against Ren-TV TV Channel and AN-film Production Company claiming that its book cover design was illegally used in an episode of a comic TV series.

The first instance and appeal courts satisfied the claims, despite the respondents’ defence that the book cover had not brought any sense or artistic value, which should have led the courts to classify it as an ordinary movie prop and apply the fair use doctrine. Continue Reading

Oh, Where Cases Like That Will Go: HOW A CEASE AND DESIST LETTER STOPPED THE PLAY BUT STARTED THE SUIT

tamarcus-brown-131431Lombardo et al v. Dr. Seuss Enterprises, L.P., case number 1:16-cv-09974, in the U.S. District Court for the Southern District of New York, is an interesting case for intellectual property practitioners, especially those involved in copyright matters and curious as to how the parody/fair use discussion started in my last post for ILN IP Insider continues to play out.

The story begins with producers getting ready to open a show entitled Who’s Holiday: A New Comedy In Couplets — a comedy that is either a parody of, or pastiche to, Dr. Seuss’ beloved How The Grinch Stole Christmas story.  Dr. Seuss Enterprises had not been asked for permission to tell such a story or use such characters.  So they had their lawyers, among other things, send a cease and desist letter to the play’s producers and the theater that those producers had booked had booked.  Though it was probably actually a typical lawyer’s letter frequently used in intellectual property matters, we imagine it could have said:

Through this letter we must insist
That your infringing conduct should desist.

In fact to assure that you do not persist,
We include in our letter a list,
Stating concerns that should not be dismissed.

We are not playing about your play,
And care little about your saying what you say.

Your claim to parody is abstruse,
You just cannot utilize Dr. Seuss
Because it subjects our rights to abuse. 

We require surrender, not a truce,
Or our Rambo lawyers we’ll unloose. 

So in the end, if you do not cease,
You will have no peace,
And litigation expense will increase. Continue Reading

CAN YOU SLEEP AT NIGHT – YOU NEED TO KNOW ABOUT INJUNCTIONS IN CANADA

nomao-saeki-63687The mattress business is a competitive one!  Trade-marks in the mattress business are valuable!

Sleep Country Canada Inc. is a major mattress retailer in Canada.  It is best known for its slogan “Why Buy a Mattress Anywhere Else?”.  It owns two Canadian trade-mark registrations for this slogan.  This trade-mark, together with its accompanying musical jingle, have been used by Sleep Country Canada in its promotional campaigns since 1994.  Those campaigns have included television, radio, print and digital adverting.  According to Sleep Country Canada, this slogan is and has been the cornerstone of its brand and marketing for its business.  The jingle was ranked as one of Canada’s 25 catchiest jingles and was inducted into the marketing Hall of Legends and the Retail Council of Canada Hall of Fame in 2005.

In 2016, Sears Canada Inc. began using what it called its “descriptive statement” or slogan, namely “There is no reason to buy a mattress anywhere else,” in association with its mattress business.  In association therewith, it launched a multi-faceted marketing plan, which included a price match guarantee.

Sleep Country Canada was unsuccessful in seeking an interim injunction in October of 2016, on the basis that irreparable harm (one of the factors for an injunction) had not been established.  Sleep Country Canada was successful in the full hearing for the interlocutory injunction – on February 9, 2017, the injunction was granted against Sears Canada restraining its use of the phrase, “There is no reason to buy a mattress anywhere else” or any other phrase or mark confusingly similar to “Why Buy a Mattress Anywhere Else” as a trade name, trade-mark, or otherwise in association with its business, wares or products, until a final determination of the issues between the parties. Continue Reading

How to Avoid Having Your Patent Interpreted as a Covered Business Method (CBM) Patent

martin-ceralde-40407Suppose that you have an invention disclosure that uses computers and the Internet to carry out transactions that could include financial transactions? When you draft your patent application, is there anything that you can do to avoid having your patent application and resulting issued patent from being interpreted as a covered business method patent?  The answer is YES!

Let’s suppose you have an invention disclosure that is related to authenticating a web page and solves problems related to providing a website to customers of financial institutions.  The disclosure mentions that a customer computer may employ a modem to occasionally connect to the Internet and any merchant computer and bank computer are interconnected via a network.  How do you draft the patent application including the claims such that the patent application and resulting issued patent are not considered a CBM patent? Continue Reading

U.S. Supreme Court Sets the Bar Higher for Obtaining Damages for Design Patent Infringement

julian-o-hayon-143085Bottom Line: 

The Supreme Court’s decision sets the bar higher for design patent holders to recover for infringement and opens the door to apportionment of damages. Parties looking to file for design patents will likely consider claiming their patents more broadly, in order to avoid the specter of reduced damages in the event the design patent is infringed. They may also consider alternative forms of protection, such as trade dress and copyright if appropriate. In addition, how damages should be apportioned will now be an important part of both side’s litigation strategy.

As the Court refused to delineate a test for determining the infringing article of manufacture, address whether there must be a causal link between the total profit made and the infringing article of manufacture, or explain how to apportion “total profits” by component, further Federal Circuit decisions on these issues are likely to follow.

In its first design patent case in over a century, the U.S. Supreme Court has redefined the meaning of an infringing “article of manufacture.” In the process, it has raised the bar for obtaining damages in design patent infringement cases. Continue Reading

A REVIEW OF THE DANISH RULES CONCERNING SPAM

_8s9nemczk0-oliur-rahmanIn Denmark, certain rules must be observed, if a company wants to turn to customers by electronic means to promote or to sell products and services.

Basically, the company must have the customers consent before the company can send out marketing. If there is no consent marketing through electronic means as text messages or e-mail would be categorized as spam.

The spam rules do not apply if the messages sent has only a service content. However, the message must not contain any other information that may increase sales or awareness of the company. In practice newsletters, and invitations to competitions or events have been categorized as spam.

A company who has received a customer’s e-mail address from the sale of goods or services to the customer has also the opportunity to market “own similar products or services” via e-mail without consent. After practice, the product must be the same type of goods or services. Continue Reading

USPTO Adopts New Regulations for Trademark Specimens of Use

ziwuqmznrvs-bench-accountingUnlike the practice in many countries, in most cases the U.S. requires a trademark owner to place the mark into actual use in commerce and provide specific types of proof of use before the registration certificate will issue.  Similar requirements apply to the mandatory declaration of use to maintain or renew a U.S. registration.  Effective February 17, 2017, the United States Patent and Trademark Office (“PTO”) has amended its rules relating to the amount of proof necessary to substantiate current use of the mark for post-registration declarations of use.  37 CFR Part§§ 2.161 and 7.37.

Post-registration requirements to prove use in U.S. commerce

Under § 8 of the Lanham Act, a trademark registrant must file a declaration that the mark is in current use in commerce and provide a specimen of that use between the 5th and 6th years after registration and every 10th year, when the registration is renewed.  Similar requirements under § 71 of the Act apply to owners of International Registrations with extensions of protection to the U.S. under the Madrid Protocol.   Specimens of use submitted to the PTO must illustrate how the owner is using the mark in commerce in connection with the particular goods or services identified in the application or registration.  Specimens of use for trademarks are usually photos of packaging or labeling for the goods bearing the mark or of the mark placed directly on the goods. Specimens of use for service marks are usually advertising or promotional material for the services bearing the mark.  For registrations originally based on the Madrid Protocol or on registrations obtained in other countries, the §8 or § 71 declaration of use is the first time proof of use of the mark in U.S. commerce is required. Continue Reading

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