For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Sunday, 12 December 2010

Letter from AmeriKat: Uggs, The Daily fight, Bayh-Dole turns 30, & more!!


The AmeriKat has managed to survive a week bursting with holiday work parties, lunches, dinners, and dances. Although always eager to socialize and mingle in the festive holiday cheer, by the end of last week - having sustained 6 holiday events in the course of 5 days, the prospect of teetering around another room in high heels while sustaining her hunger on only a handful of hors d'oeuvres was becoming a touch exasperating. Now that her party onslaught is over, she can return to her regularly scheduled program of returning home after a long day's work, kicking off her heels, and plopping on the sofa. (picture, left - the AmeriKat snuggling into her sofa for the night) To keep her paws warm in the evenings she either elects for her ancient red Gap slipper boots or her Uggs. The AmeriKat continues to receive abuse from her friends for the latter choice of footwear and she is the first to admit that she did formerly judge Ugg-wearers. However, she has found that after a day of cold, painful high heels, fluffy warm Uggs are really the footwear equivalent of warm tomato soup during the dark winter evenings.


Ugg chases after Emu: Besides keeping feet warm, the American company Ugg Australia is also keeping the US Courts warm with their trade mark infringement filing last week against their competitor, Emu, for the use of their registered trademark,UGG. (picture, right - examples of Ugg boots). Deckers Outdoor Corporation, who own Ugg Australia, has sued Emu Australia in the District Court for the Central District of California for describing their products on their US website as "ugg boots". Emu is defending Ugg Australia's claim by suggesting that "ugg"is a generic word used in Australia meaning "sheepskin boots". Emu also say that there are more than 70 registrations for UGG in Australia.

Last year Ugg Australia sold over $712 million worth of footwear. With Ugg look-a-likes infiltrating the market at record speeds it is no surprise that they would be keen to stamp out any alleged trade mark infringement as quickly as possible. Angel Martinez, Decker's chairman and CEO stated that:
“The success of Ugg Australia has created an entire industry of companies that market their wares by deliberately confusing consumers. Emu’s trademark infringement is intentionally misleading consumers into believing they are buying a genuine Ugg Australia product when in fact, they are not.”
The AmeriKat constantly sees Ugg rip-offs around and about, but of course the scope of protection for the design of the classic Ugg boot itself is very minimal (if at all existent). The greatest protection for Ugg is therefore in their trade mark and brand names - of which they have a reported more than 100 trade mark registrations in their portfolio.
Despite Emu's claims regarding the use of "ugg" as a generic word in Australia, this is irrelevant. The case is based on the exclusive rights of Ugg Australia in their trade mark UGG in the U.S., and therefore the question is whether the term UGG is generic in this jurisdiction. From experience, the average consumer in the US does not use the word "ugg" generically. When the AmeriKat has asked her American friends if they have a pair of Uggs some have said "No, but I have some fake ones though.". Such evidence, the AmeriKat suggests, will not be difficult for Ugg Australia to obtain if necessary to defend the distinctiveness of the mark. (picture, left - an example of an Emu boot) Further, in 2005 a California court ruled in Decker's favor when the UGG mark's validity was challenged as being generic. The court held that the mark's meaning had been ascribed to that of indicating the brand, rather than a generic term. Given that the reputation of Ugg as a brand has only increased since 2005, it would seem bizarre if the court would hold otherwise. Ugg's case will also have to show a likelihood of confusion, the test for which in the Ninth Circuit follows that of the AMF v Sleekcraft Boats (1979) case. Of the several factors of confusion that will be adduced, it is the evidence of actual confusion that will be most challenging for Ugg Australia, as well as showing the Defendant's intention in using the mark on the website.

Ugg Australia's legal efforts are not without controversy, especially in Australia. For an excellent article on the business and law of Uggs please see this Wall Street Journal article here.

Murdoch set to fight for "Daily": Generic marks seem to be the name of the game in US trade mark litigation at the moment. Last week News Corp owned company, The Daily Holdings Inc (all ultimately owned by Rupert Murdoch) filed a pre-emptive lawsuit against IMG Worldwide asking the court to bar them from claiming ownership of any trade mark rights in the sign THE DAILY. They argue that THE DAILY is a generic phrase in the media - think The Daily Mail, The Daily Mirror, The Daily Hysteric, etc. IMG Worldwide own a fashion title called The Daily Front Row and claim to have common law (unregistered) trademark rights in the words THE DAILY dating back to 2003. As those who have been keeping up with Murdoch's pay-wall and iPad experiment know, News Corporation is planning an iPad and other tablet news, sports and lifestyle media service called "The Daily". IMG Worldwide previously indicated to The Daily Holdings that it would be seeking to enforce its rights against the media conglomeration if their plans for "The Daily" were to go ahead. The Daily Front Row already have their own iPad news application - click here (picture, above).

According to Reuters, the two parties met last week in order to reach an agreement. The talks were unsuccessful so The Daily Holdings rushed to get their filing in before IMG had a chance to file their "imminent" trade mark infringement law suit. The AmeriKat checked the USPTO trade mark register to find that on 6 December 2010 IMG filed a trade mark application for THE DAILY for magazines in the fashion industry. The Daily Holdings filed a trade mark registration for the words and design of their seemingly soon-to-be logo THE DAILY on 22 October 2010. To search for these applications please click here. (picture, left - a mark applied for by The Daily Holdings)

Given that The Daily Holdings is alleging that the sign "The Daily" is generic, is it really wise to be using it to launch a new subscription service and indeed to apply for a trade mark for the words and design which incorporates the "generic" term? Is it not the first rule of branding to come up with a brand that isn't generic in your industry? (picture, left - another mark applied for by The Daily Holdings as found on the USPTO website)

Bayh-Dole Act Turns 30!: Last week the USPTO celebrated the 30th anniversary of the 1980 Bayh-Dole Act - whose birthday is actually today. The Act was created to unite patent policy throughout the many federal agencies that fund scientific research which enabled small businesses and non-profits such as universities the ability to retain ownership in patents made under federally funded research programs. According to the USTPO press statement, Senator Bayh (D-Indiana)(picture, right)stated that:
“Bayh-Dole shows that citizens really can change government. That doesn't mean that the process is easy or quick. A handful of determined men and women made the law a reality and have preserved it for 30 years. Now we need new hands to help carry the message of how valuable Bayh-Dole is to the continued health and wealth of the United States.”
If this Act sounds familiar it is because over a month ago the US Supreme Court granted the writ of certiorari to hear Stanford University's claim against Roche Holding AG in respect of patents for methods of testing the effectiveness of AIDS treatments by measuring the HIV concentration in blood plasma. Scientists at the university created the invention while under contract to the university, but one of the scientists agreed to assign his future rights in the method to Roche. A scuffle between the two entities then ensued. The Supreme Court case will focus on the interpretation Sections 200-212 of the Bahy-Dole Act which the university contends trumps the rights of Roche. The university's question to the Supreme Court reads as follows:

Whether a federal contractor university's statutory right under the Bayh-Dole Act, 35 U.S.C. §§ 200-212, in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor's rights to a third party.
For more details on this story please see the original IPKat story here.

Viacom v YouTube: Two weeks ago, as expected (so expected, the AmeriKat adds, that she didn't even think it was news), Viacom filed their appeal in the Viacom v YouTube case in the appeals court in New York (see previous AmeriKat posts on the case here). Several amici briefs from the great and the good in the media industry were also filed last Friday, including a filing from Microsoft on behalf of Viacom. The AmeriKat will be taking the 72-page brief from Viacom on her long flight back to the US next week to digest in preparation for a jet-lagged induced AmeriKat post on the appeal next Sunday!

1 comment:

Dr Mark Summerfield said...

The UGG case is interesting. There is no real doubt now that the term 'ugg boot' is a generic descriptor in Australia. Here is what the Macquarie Dictionary (generally accepted as our national standard) has to say about it:

ugg boot: (noun) a boot with an upper made from sheepskin with the fleece tanned into the skin, the fleece being on the inside of the boot and the leather on the outside. Also, ug boot, ugh boot. [origin uncertain; ? shortened form of ugly boot]

The Australian Federal Court has also found the word 'ugg' to be generic in relation to sheepskin footwear.

Now, clearly the word UGG was not in widespread descriptive use in the US when the trade mark was registered. But does that necessarily mean that it was rightly registered? In Australia, an application to register a foreign word will be rejected if it lacks distinctive character (e.g. is descriptive) in relation to the specified goods or services and it is in a language that is understood by a non-negligible number of Australian consumers.

In other words, you cannot just 'import' a word that is descriptive elsewhere and monopolise it in Australia.

If there is any kind of similar principle in the US law, then Emu may have a plausible defense. It will be interesting to see how the dispute pans out in a different arena.

Incidentally, some readers may recall that three infringers of Deckers' rights in Australia were jailed earlier this year for defying a court order to cease their infringing activities (see here).

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