By: James Kachmar

The Ninth Circuit recently dealt with the issue of whether the Federal Drug and Cosmetic Act (“FDCA”) prevents a plaintiff from bringing a Lanham Act claim alleging that the name and labeling of a juice beverage is deceptive and misleading.  The plaintiff Pom Wonderful LLC (“Pom”) produces and sells pomegranate juice and pomegranate juice blends.  In 2007, Coca-Cola Company (“Coca-Cola”) announced that it would start selling a new product called “Pomegranate Blueberry” and “Pomegranate Blueberry Flavored Blend of 5 Juices.”  Despite its name, only 0.5% of the juice was actually pomegranate/blueberry juice, while the rest of it was apple, grape and raspberry.  Believing that it was losing sales to Coca-Cola’s product, Pom sued Coca-Cola alleging that it violated the false advertising provision of the Lanham Act for making a false or misleading description or representation about its goods.

Coca-Cola moved to dismiss the complaint arguing that plaintiff’s claims were barred because in construing the product’s name and labeling, Pom’s claim “could improperly require the court to interpret and to apply FDA regulations on juice beverage labeling.”  After allowing Pom to file an amended complaint and conduct discovery, the court granted summary judgment to Coca-Cola and held that Pom’s Lanham Act challenge to the product’s name and labeling was barred by the FDCA’s implementing regulations.  Pom appealed this ruling.

Continue Reading What’s in a Name?

By: Zachary Wadlé

The recording industry has been hard hit over the past decade.  With the advent of mp3s, iPods, and iTunes, the entire industry business model has been upended.  Unfortunately for record labels, the hits just may keep on coming.  Courtesy of the Copyright Act of 1976, record labels could soon lose copyrights over hugely popular songs authored from the late 1970’s forward that generate substantial licensing cash for the industry.  Beginning in 2013, some of the most popular musical works of this era will likely be at the center of a hard-fought battle over future ownership rights.

The Copyright Act of 1976 permits the artists of copyrighted works to terminate a grant of rights and reclaim their ownership of the works under certain conditions.  For works created on or after January 1, 1978, artists can reclaim rights to these works beginning 35 years after the original grant, which starts in 2013.  The previous copyright law required artists to wait at least 56 years to reclaim their rights.  Congress’s move to revise the copyright law in1976 and shorten the time artists must wait to reclaim rights was driven by the belief that new artists tend to sign bad deals when they’re young, hungry, and largely unknown to the public.  Congress determined that such artists deserved the option to own their compositions sooner than allowed under the previous copyright law, especially should their tunes prove to be popular (and lucrative to the record label who signed them to a presumably one-sided deal).

Continue Reading Recording Industry Braces For Potential Impact of 1976 Copyright Act Termination Rights

By: David Muradyan

Online service providers and operators of such sites should take careful note of the Second Circuit Court of Appeals’ recent decision in Viacom Int’l, Inc. v. YouTube, Inc., Case No. 10-3342-cv (“Viacom”), where the court held that service providers and operators will not be protected from the safe harbor provisions of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 512(c), if they have “actual knowledge or awareness of facts or circumstances that indicate specific and identifiable instances of infringement.”

For background, “[t]he DMCA was enacted in 1998 to implement the World Intellectual Property Organization Copyright Treaty,” Universal City Studios, Inc. v. Corley, 273 F.3d 429, 440 (2d Cir. 2001), and to update domestic copyright law for the digital age. Ellison v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004). In particular, the DMCA established a series of four “safe harbors” that allow qualifying service providers to limit their liability for claims of copyright infringement based on (a) “transitory digital network communications,” (b) “system caching,” (c) “information residing on systems or networks at [the] direction of users,” and (d) “information location tools.” 17 U.S.C. §§ 512(a)-(d). The safe harbor at issue in Viacom was § 512(c), which covers infringement claims that arise “by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.” 17 U.S.C. § 512(c)(1). To qualify for protection under any of the safe harbors, a party must: (1) be a “service provider,” which is defined as “a provider of online services or network access, or the operator of facilities therefor,” Id. § 512(k)(1)(B); (2) satisfy certain “conditions of eligibility,” including the adoption and reasonable implementation of a “repeat infringer” policy that “provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network,” Id. § 512(i)(1)(A), and (3) accommodate “standard technical measures” that are “used by copyright owners to identify or protect copyrighted works.” Id. §§ 512(i)(1)(B), (i)(2). The § 512(c) safe harbor will apply only if the service provider: 

Continue Reading Second Circuit Holds that YouTube Is Not Protected by the “Safe Harbor” Provisions of the Digital Millennium Copyright Act

While champagne is rarely my drink of choice (the bubbles tickle my nose), those who prefer to imbibe champagne may have noticed that their favorite beverage might have quietly changed its name from “champagne” to “sparkling wine.”  In similar fashion, those who enjoy Basmati rice or Camembert cheese might also have noticed changes to the names of their favorite products.  Many may wonder what has happened, and why we are now drinking sparkling wine when we used to enjoy champagne, or why we must settle for brie when we previously enjoyed Roquefort and Camembert.

Although the names have changed, the products probably have not.  Rather, many countries have created a system which recognizes and protects the value of the intellectual property associated with the geographic origin of certain products.  Functioning like a trademark, a geographical indication can represent valuable intellectual property by identifying a particular region as the source of a certain product.  Although not traditionally protected by trademark laws, geographical indications and designations of geographic origin have traditionally been afforded protection by various countries.  Long known for its famous varieties of cheese, wine, and, of course, champagne, France introduced one of the first systems designed to protect geographical indications, known as appellation d’origine contrôlée, or the “AOC.”  The AOC makes it unlawful to manufacture and sell a product under a geographical indication identified by the AOC if the product does not comply with a set of strict criteria, which includes production of AOC-protected products in particular regions.

Continue Reading Where Is My Champagne?

By: Jeff Pietsch

What happens when someone takes your virtual goods?  You know, the virtual goods that you earn or buy by playing games such as Farmville or Second Life.  Usually, these goods are in the form of virtual objects such as weapons or special character features.  Virtual goods can also be in the form of virtual currency which can be used to purchase virtual objects.

Virtual goods and currencies were recently valued at more than $3 billion dollars globally.  Despite the large virtual economy, the law is relatively unclear when it comes to how virtual goods are treated.  Should virtual goods be treated similar to property laws or are virtual goods merely an aspect of a game that can be changed or eliminated at the whim of the game creator?  A recent class action lawsuit against Google may help clarify these issues for gamers and game developers alike.

The plaintiffs in this case are players of an online video game known as SuperPoke! Pets (“SPP”) who purchased virtual gold or other virtual items within SPP.  SPP allows its users to adopt, name and care for a virtual pet.  Users can interact with their virtual pet, dress it, customize its environment and also interact with other user’s virtual pets.  From its creation in 2008, SPP’s popularity increased and it was eventually acquired by Google in 2010.

Continue Reading Virtual Pet Owners Sue Google over Virtual Gold