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Archive | November, 2011

Proving Reputation When Domain Name Was Registered

Complaint must show a reputation when domain name was registered; a present reputation alone is insufficient if trademark had non in the past. Complainants and their trademarks either have established reputations in their marketplaces or they have not. By far the greatest number of disputes brought under UDRP are by complainants with trademarks whose reputations […]

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Copyrightability of Generic Elements in a Copyrighted Work

Co-author Gerald M. Levine Unprotected elements in a copyrighted work affects the copyrightability of those elements alone. The copyright does not extend to every sentence in a work or to undeveloped characters. Fair use is not an issue since its application presupposes expressive material that is both copyrightable and copyrighted. (we leave for another day […]

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Former Employees Registering Domains in their Own Names Without Employer’s Knowledge and Contrary to Instructions

An employee charged to attend to his employer’s intellectual property assets can have no right or legitimate interests in domain names he registers in his own name. The former employee in SIELTE S.p.A. v. Salvatore Gueci, FA1109001408629 (Nat. Arb. Forum November 7, 2011) offered to return the domain name for consideration, a violation under paragraph […]

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Copyrightability in “Original Works of Authorship”

To be protected by copyright, to have copyrightability, requires a certain degree of creativity. The Copyright Clause of the U.S. Constitution provides for copyright protection to “original works of authorship.” The Supreme Court has stated that for a work to be protected it has to “possess[] at least some minimal degree of creativity.” Feist Publ’ns, […]

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Transfer of Domain Name to Unrelated Third Party

There are two lines of reasoning from U.S. circuit courts on the issue of whether transfer of a domain name to an unrelated third-party or renewal of a registration constitutes a new registration. The resolution is critical to a finding of abusive registration under the Anticybersquatting Consumer Protection Act (ACPA). ICANN Panels have settled on […]

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Domain Names Similar to Trademarks But Not Confusing

See Anthology of Commentaries — 2014 The test for establishing confusing similarity is relatively modest. Less or more so is not easy to measure. For this reason, Panels tend to give complainant the benefit of the doubt, but low though the bar is set it is not satisfied by simply showing that the trademark and […]

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Reserving Rights When Agreeing to License

Publishers typically demand rights for the duration of copyright although the shelf life of the licensed work is likely to be measured in single digit years. Authors have a basked of exclusive rights set  out in Section 106 of the Copyright Act only some of which should be agreed to in book publishing contracts. Other […]

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Trademark Terms Distinctive in One Territorial Jurisdiction, Undistinctive in Another

Distinctiveness (despite the affirmativeness of the word) is a fluid concept. It could mean “distinctive” in its class but not “distinctive enough” to prevent others from using it for their own purposes in a different class. So, too, a term accepted by a trademark office can be regarded as distinctive within its jurisdiction, but un-distinctive […]

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Titles, Words and Short Phrases (Q&A)

Co-author Gerald M. Levine Titles, Words and Short Phrases are not copyrightable although contextualized they may become so. The answer is found in the Code of Federal Regulations, 37 C.F.R. Sec. 202.1.  Subsection (a) provides that the following “examples of works [are] not subject to copyright and applications for registration of such works cannot be […]

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Right or Legitimate Interest in a Domain Name Not Defeated by Refusal to Sell

An abusive registration presupposes either an existing trademark or knowledge of its existence when registering the domain name. If the trademark did not exist before the registration of the domain name or if it did but the respondent had no knowledge of it (which means a more probably than not denial of knowledge) then inferentially […]

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Contributory Infringement and Vicarious Liability for Copyright Infringement

Co-author Gerald M. Levine Copyright is not limited to literary works but extends to other creative productions. Expressive material in literary works are only one color on the palette of creativity. Literary works are first on the list of 8 in §102 of the Copyright Act. The second on the list is “musical works, including […]

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Multiple Registrations of Copyright (Q & A)

I wrote a paper that I registered for copyright a few years ago.  It was not published.  I am now completing a book length work that incorporates the unpublished paper.  Can I register the new work separately? Section 408(e) of the Copyright Law states that “Registration for the first published edition of a work previously […]

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Unsettled Law on Domain Criticism Sites

One of complaints against UDRP is inconsistency in decision-making. This comes about because Panels are not obliged to follow precedent, although on many issues they mostly do. WIPO Overview at paragraph 4.1 states as a consensus: “The UDRP does not operate on a strict doctrine of precedent. However, panels consider it desirable that their decisions […]

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The Fate of Business Luminaries in Protecting Their Names

Unless personal names have achieved trademark status, they are not protected under the UDRP. Excluded are living persons whose reputations are earned out of the spotlight of commerce even though active in the figurative scrum of their businesses or professions. This rule applies however extraordinary the individual’s contribution is to business, science, politics, the professions […]

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