Letter from AmeriKat I: Bits 'n Bobs

Last week while the AmeriKat was finishing her final LPC exams and looking forward to escaping the six years of law school shackles, the rest of the world was gearing up for summer World Cup madness (no comments about England's performance from the AmeriKat - ahem). Having had her whiskers to the books for the past couple of weeks, she assumed that once she returned to the world of US IP there would be a multitude of goings-on to catch up with. Not so....Time appears to have stopped in the world of major IP litigation and legal brief generation because after a week away everything was pretty much how she left it: No Bilski decision yet, everyone still up in arms about ACTA, mobile wars still progressing, etc. (picture, left - the AmeriKat pawing at her IP clock that appears to have stopped in her absence) So to that end, the AmeriKat has collected some interesting bits and bobs to hopefully strike your fancy until the big daddies of IP news roll out in the next couple of weeks

Is Jailbreaking about to become legal? : Something else that is waiting to escape the shackles of legal restraints (ableit non-exam orientated) is what is know as jailbreaking. Jailbreaking is the ability to hack into a mobile phone's operating system to enable the user to run any application from the phone, even those applications not authorized by the phone's manufacturer. Such activities obviously do not make companies like Apple happy. Apple of course says that it is illegal to jailbreak, but the copyright position is not so clear. Apple's reasons that jailbreaking is illegal (found here) are that jailbreaking breaches the licence agreement between iPhone users and Apple and that it constitutes copyright infringement because it

"involves unauthorized modifications to Apple's copyrighted bootloader and OS programs, it is a violation of 17 USC

§ 106(1) & (2), unless such modifications are either within the scope of the license

granted under the [licence] (which they are not), or are covered by the statutory rights under 17

USC § 117 or by the fair use doctrine (again, which they are not... [T]he

agreement flatly prohibits the modification of, or

creation of derivative works based upon, the iPhone Software. Nor is the initial act of

jailbreaking the only act of copyright infringement that users of jailbroken iPhones may need to

engage in. Further modifications (hacking) of the OS are often necessary to enable certain kinds

of applications to run even after the basic jailbreaking is accomplished.

"

Every three years the Copyright Office and other copyright regulators entertain suggestions of activities that should be excluded from the Digital Millennium Copyright Act's (DMCA's) lists of exceptions to its anti-circumvention rule (for background into the Copyright Office's DMCA rule-making procedures click here). The anti-circumvention rule makes it an offence for a person to circumvent technological measures (DRM) that are used to control access to a copyright work, such as those technologies that attempt to block access to the iPhone's operating system, so that the user cannot modify or copy material. However, the DMCA anti-circumvention rule was passed by Congress to protect DVDs and other media, but not mobile phone software. Fred Von Lohmann from the Electronic Frontier Foundation (EFF) states this is why it is appropriate that jailbreaking be exempted from the DMCA as this activity was not in the contemplation of Congress when this rule was passed.

Because the legal position in respect of copyright law to jailbreaking is ambiguous, over a year and a half ago the EFF asked the US Copyright Office to consider adding jailbreaking to the DMCA's list of exceptions - a request supported by Skype and Mozilla. Six years ago such now everyday activities such as unlocking your phone so as to switch cell phone providers were officially exempted.

A ruling has been expected from the Copyright Office since last fall (But as IP lawyers, we are now becoming accustomed to such long waits from our judiciary and regulators). For more information see this excellent post from Wired.

Vogue after charity: Lawyers for Vogue have threatened a Canadian city's charity fashion show alleging that the show infringed the magazine's trade mark in "Fashion's Night Out" and demanding a change of name. Victoria's business were planning to showcase their fashions last week, but after receiving a letter from Vogue's lawyers they are allegedly attempting to change the name to Victoria's Fashion Night. According to the Vancouver Sun the legal letter from law firm Sim Lowman Ashton and McKay stated that:

"Our client did not consent to use of its Fashion's Night Out trademark by your organization or its members and is extremely concerned by this unauthorized use of its intellectual property."

Vogue staged the first Fashion's Night Out last year in New York and London (see event here). The event will be staged again this year in multiple locations. The AmeriKat muses that the motivating factor behind the letter is perhaps the tarnishing factor of a Fashion's Night Out event taking place in a Victoria and not a New York of London?

The South Butt prevails over The North Face: Yes, you did read that correctly. The North Face, the iconic sporting brand touted around by sailors, climbers and preppy soccer moms alike, sued The South Butt last year alleging that they were infringing their trade mark and taking unfair advantage of their brand. South Butt was started in 2007 by a University of Missouri-Columbia student to help pay his tuition fees. South Butt retails similar sportswear only however encompassing the logo "The South Butt". However, according to The San Francisco Gate the two parties have now settled the dispute on undisclosed terms. From South Butt's website, it seems to appear that they are still permitted to use their name and their strikingly similar arched mark.

Coach sues Chicago: The AmeriKat's favorite leather goods retailer, Coach, has filed a multi-million dollar lawsuit in Illinois federal court against the city of Chicago alleging that the City's failure to go after vendors of counterfeit Coach goods amounts to a violation of the Lanham Act. In August 2009 a Coach investigator attended a local market in Chicago's Maxwell Street where according to the complaint around 300 vendors were selling counterfeit Coach goods, as well as fake Chanel products. Coach then demanded the city to take measures to stop the counterfeit activity at the market, but without any joy. The importance of this case is because it is against a municipal city. The argument goes that because these counterfeit vendors pay the city for a licence to operate and the city was then put on notice by Coach of the vendors' activities by way of cease and desist letters and did nothing about the problem, Chicago facilitated the trade mark infringement. The AmeriKat cannot lie, she loves everything about this argument. Why should ISPs be possibly held liable for similar activities and cities not be? ISPs are essentially on-line cities, are they not?

And Finally: This time last year the AmeriKat commenced her foray into the world of "Letter from AmeriKat". Looking back at her first letter, she is reminded of how much the IP and legal world has progressed in such a short time. This time last year we were reading about Obama's new Supreme Court nomination of Sonia Sotomayor (now Justice Sotomayor) and David Kappos's appointment to the USPTO bringing with him the winds of patent reform. Few had heard of ACTA and Bilski had only just recently submitted their writ of certiorari to the Supreme Court! The AmeriKat is looking forward to the coming years of Letter from AmeriKat and is very fortunate and proud to be part of the wonderful IPKat team and its wonderful readers. Meow!