Monthly Archives: December 2011

Charbucks Wins Round 3 of Trademark Dispute with Starbucks

Stating that the antidilution law should be used as “a scalpel, not a battle axe,” Judge Laura Taylor Swain of the Southern District of New York once again found that Starbucks failed to prove that the famous STARBUCKS trademark was likely to be diluted by the use of the marks CHARBUCKS BLEND, MR. CHARBUCKS, and MISTER CHARBUCKS on dark roasted coffee. In her December 23 opinion, she ordered that judgment be entered in favor of the defendant, Wolfe’s Borough Coffee, Inc., and that the long-running case be closed.

This is… More

Revenge Porn: “Is Anyone Up” on Copyright Law?

Here’s something you probably don’t want fixed in a tangible medium of expression: revenge porn.

Twenty-five-year-old Hunter Moore (pictured, above right) is the creator of the website Is Anyone Up (www.isanyoneup.com). In essence, here’s how revenge porn works: Remember those naked pictures you took of yourself and sent to a very close friend with the explicit instruction or implicit assumption that the images would remain private? Well, just make sure you don’t give your friend cause to become a former friend. If you did, your former… More

New gTLD Hearing, Round 2: A Critical House, But to What End?

After the Senate Committee on Commerce, Science and Transportation hearing on ICANN’s new gTLD Program on December 8, the House Energy and Commerce Committee’s Subcommittee on Communications and Technology held a similar hearing this morning. Returning witnesses were Dan Jaffe, Executive Vice President of the Association of National Advertisers (ANA), Fiona Alexander, Associate Administrator of the U.S. National Telecommunications and Information Administration (NTIA), and Kurt Pritz, SVP at ICANN. Joining them were Joshua Bourne, President of The Coalition Against Domain Name Abuse (CADNA), Thomas Embrescia, CEO of Employ Media (operator of the .jobs TLD), and Anjali… More

Opponents of New gTLDs Criticize ICANN at Senate Hearing

As we discussed, last week the Senate Committee on Commerce, Science, and Transportation held a full committee hearing on ICANN’s domain name expansion, perhaps in part to address CRIDO’s recent actions to stall the gTLD program. The following summary of the hearing was prepared for the American Bar Association by James L. Bikoff, David Heasley, and Philip Marano of Silverberg, Goldman & Bikoff, LLP, and is reprinted with permission.

As you know, yesterday the U.S. Senate Committee on Commerce, Science and Transportation held a hearing to "examine the merits and implications of [the new gTLD] program and… More

The Domain Name Deluge: What In-House Counsel Need to Know About ICANN’s New gTLD Program

On Monday, December 12 at 12:30 p.m. EST, the Northeast Chapter of the Association of Corporate Counsel presents The Domain Name Deluge: What In-House Counsel Need to Know About ICANN’s New gTLD Program.  J. Scott Evans, Senior Legal Director, Global Brand & Trademarks, YAHOO! Inc. will join me to explore ICANN’s upcoming introduction of new top-level domain names, including a discussion of domain name basics, an overview of the New gTLD Program and the application process and timeline, and a review of what companies should be doing to traverse the rocky terrain of potential opportunities… More

Upcoming Events: Senate Hearing on the gTLD Expansion

For those of you following, breath bated, developments regarding ICANN’s New gTLD Program, the U.S. Senate Committee on Commerce, Science, and Transportation is holding a full committee hearing on the domain name expansion on December 8 at 10:00 AM ET in 253 Russell Senate Office Building, and also via webcast. Witnesses have not yet been announced. A similar hearing was conducted earlier this year by the House Committee on the Judiciary, which was certainly exciting but which ultimately led to little. Now that the gTLD train is barreling forward, more excitement should be in… More

A New Twist on eBay: Compulsory Licensing in Copyright Cases?

As most readers know, the Supreme Court held in the 2006 eBay decision that injunctions were no longer to be the norm in patent cases, and irreparable harm was not to be presumed. Instead, injunctions are within the equitable discretion of the district court, and are to be granted only if the plaintiff has shown entitlement under the traditional multi-factor test.

It’s been clear for some time that the same principles now apply in copyright and trademark cases as well. The First Circuit, for instance, addressed eBay in the context of a trademark cases in the Voice of… More