Beastie Boys’ copyright win, Hatch calls for USPTO director, Hershey’s sues pot co-op, dispute over “Mormon”, Harper Lee kills lawsuit – the week in IP

Below is a selection of intellectual property stories attracting attention on the internet in the past week that were not covered on www.managingip.com (see the bottom of this blog post for the top stories published by Managing IP this week).

The Beastie Boys this week won a lawsuit against Monster Beverage and were awarded $1.7 million. A federal jury in Manhattan ruled in favour of the hip hop group two years after the lawsuit was filed over the use of their songs in a promotional video.

Monster included parts of Beastie Boys songs “Sabotage”, “So What’cha Want”, “Make Some Noise” and “Looking Down the Barrel of a Gun” in a video promoting a snowboarding competition sponsored by Monster.

The trial lasted eight days and included testimony by band members Ad-Rock and Mike D. Beastie Boy co-founder Adam “MCA” Yauch died in 2012 shortly before the video was put online. Yauch included in his will his wish that his music not be used for commercial purposes, a stand the Beastie Boys had held throughout their career.

The latest case follows the band in March settling with toymaker GoldieBlox for the use of song “Girls” in an online video.

Senator Orrin Hatch, a Republican from Utah, this week slammed the Obama administration for not appointing a director of the USPTO for the past 16 months.

“Leaving the agency without a permanent director for nearly a year and a half without so much as a public explanation is inexcusable,” Hatch wrote in a letter to Obama on Monday.

David Kappos left the post in January last year. Michelle Lee was named deputy director last December but the director spot remains unfilled.

“By all accounts Deputy Director Michelle Lee has done an admirable job juggling the functions and duties of both director and deputy director. But this arrangement simply cannot continue,” said Hatch. “Without a director backed by presidential nomination and Senate confirmation, the USPTO does not have a leader who can engage in the type of strategic and long-term planning that is crucial for ensuring the USPTO’s continued effectiveness.”

Hatch said Lee is constrained by legitimate questions about whether her appointment was consistent with statutory requirements. “I hope you did not casually disregard the clear statutory requirement that the deputy director be nominated by the director,” said Hatch. “In any case, the question underscores Ms Lee does not possess the same clear mandate as would a presidentially-nominated and Senate-confirmed director. Leaving Ms Lee to shoulder the burden of USPTO leadership alone is unfair, untenable, and unacceptable for our country’s intellectual property agency.”

Hatch said the USPTO is embarking on initiatives such as opening satellite offices and implementing post-grant review programmes, and the absence of director makes these “needlessly complicated”.

US candy manufacturer The Hershey Company is suing a Seattle marijuana cooperative for infringing its trade marks to sell cannabis products. The complaint was filed in a district court on Tuesday against Conscious Care Cooperative and says the cooperative’s actions have “tarnished” Hershey’s.

The cooperative was selling products such as “Reefer’s Peanut Butter Cups”, “Kush Peanut Butter Cups” and “Mr Dankbar” that closely resemble The Hershey Company’s Reese’s and Mr Goodbar products in name and design.

The cooperative sold its products out of two shops in North Seattle and Greenwood and online.

The Hershey Company also filed a similar lawsuit in Colorado on Tuesday against another company.

A judge in a federal court has dismissed a lawsuit filed by author Harper Lee against a museum in her South Alabama hometown of Monroeville. The “To Kill a Mockingbird” author and lawyers for the Monroe County Heritage Museum filed a joint motion to end the suit.

The judge had reinstated the case two weeks ago at the request of Lee. She and the museum had settled the case in February but the agreement was not signed.

The lawsuit was filed last year after the museum used her name and that of “To Kill a Mockingbird”. Lee claimed the museum was taking advantage of her trade marks to sell souvenirs.

A dispute has broken out over the use of the term “Mormon” on a dating site. Intellectual Reserve, which manages the intellectual property rights of The Church of Jesus Christ of Latter-day Saints, has sued the website “Mormon Match” for trade mark infringement. The website offers dating services for members of the church.

Intellectual Reserve concedes that the term “Mormon” can be used to describe church members generally but says that its family of trade marks using the term – such as “Mormon Tabernacle Choir” – could lead to confusion. The Electronic Frontier Foundation has filed an amicus brief arguing that ‘Mormon” is an indisputably descriptive term so its use in the name of the website is fair and legal.

"The name of this service simply describes what it's doing – matching up Mormons," said EFF intellectual property director Corynne McSherry. "Trade marks are supposed to be used to protect from unfair competition, not to stifle a small business or to control language."

The .xyz domain name made its debut as the number one generic top-level domain (gTLD) this week. As of Friday June 6, the gTLD had 69,156 registrations, giving it a 7.01% share. This pushed it ahead of .club, which took the number one spot in May, which had 65,967 registrations as of Friday.

The .xyz domain name has caused controversy, with some saying its initial registration figures were questionable. Network Solutions has been accused of inflating .xyz’s numbers by registering names matching existing .com names.

Donuts Inc., the world's largest registry for new gTLDs, this month is making 16 new gTLDs available to the general public. In addition to the 16 gTLDs slated for general availability, Donuts will open another 16 gTLDs for "Sunrise" availability to trade mark holders.

Donuts, now eclipsing the six-month mark of its new gTLD general availability schedule, will continue rolling out new gTLDs on a weekly basis throughout the second half of 2014. By the end of this month, Donuts will have launched a total of 127 new gTLDs, and anticipates launching approximately 200 in total by the end of the programme.

"Demand for new gTLDs in the first five months of 2014 has outstripped our most aggressive benchmarks," Donuts co-founder and CEO Paul Stahura said.

Managing IP published the following stories this week, available to subscribers and trialists:

Eversheds hires South African IP team

Fees shifted in three cases following SCOTUS Octane decision

Delhi High Court affirms that tag lines and slogans are protectable as trade marks

Americas Women in Business Law Awards: 2014 winners

India’s patent owners get a reprieve from multiple validity challenges

WilmerHale adds partner in Palo Alto

Advocate General backs libraries’ right to digitise

On- screen and cache copies do not infringe, says CJEU

Trade mark renewals in Gambia: re-classification

Impact of SCOTUS 2014 patent verdicts already being felt

O’Melveny hires IP transactions partner Heather Meeker

Latham & Watkins adds IP litigator in Chicago

Former ITC unfair import investigations director joins MoFo

InterDigital and Samsung announce patent licence deal

SCOTUS rejects CAFC’s insolubly ambiguous test and expansion of inducement doctrine

Democratic Republic of Sào Tomé and Príncipe joins ARIPO

Interview: The life and times of a GSK patent

From the blog:

Things are not as bad as they seem at the Federal Circuit

Are TPP supporters talking to themselves?

Mediation – the question no one dares to ask