In addition to the more formal entertainments on offer in and around Times Square, New York, there are three scantily dressed buskers. One who calls himself the Naked Cowboy and a further two, each of which calls herself the Naked Cowgirl.

These entertainers wear cowboy hats and boots and sing to the accompaniment of their guitars.

The Naked Cowboy, Robert John Burck, was born on December 23, 1970 in Cincinnati, Ohio.  He can be viewed on his website: www.nakedcowboy.com. In his performances,  he wears a pair of y-fronts, and holds the guitar sufficiently low to conceal the garment, giving the impression that he is nude – hence the name.

Louisa Holmlund, wears a micro-skirt and a pair of little mirrors on her nipples. Both earn tips by crooning the crowds and by providing photo-shoots. Apparently, she pays royalties of $500 a month or $5000 a year to the Naked Cowboy. She can be seen on her website here: www.nakedcowgirlny.com

There is now a second Naked Cowgirl; Sandra Brodsky who calls herself Sandy Kane. She  wears a starred and striped bikini and matching cowboy hat and refuses to pay a franchise fee.   She is in her 50s.

It seems that the Naked Cowboy is the original act, that inspired or was plagiarized by the Naked Cowgirls. Both have been somewhat lapse with their trademarking, with the Naked Cowboy’s mark lapsing and being refiled, and the Naked Cowgirl’s mark also lapsing.

As the Naked Cowgirl Kane has refused to take out a ‘francise’ from the Naked Cowboy – what I suppose would be called ‘protection money’, the Naked Cowboy has sued for infringement of his IP rights.

According to Burck, Kane is ripping off his intellectual property, he also claims her act is “un-American” and makes a “mockery of the system and the trademark infringement laws.”

Having entered the silly season (onat hamalafafonim - the “cucumber season” in Hebrew), this epic battle of the sexes has been picked up by the various newspapers as well as the IP Blogs – including our friends, the IPKAT.  With a dirth of real IP stories to discuss, and with the Israel Courts in recess, I have decided to analyze this case. Noone seems to have actually commented on the legal issues. So here goes.

I don’t think that being un American is a crime, even in Time Square. The issue of trademark infringement is something that can sensibly be discussed however. I thing that both trademark registrations are limited to the combination of Naked Cow+boy and Naked Cow+girl. Both marks are somewhat descriptive, perhaps the naked cowgirl with udders on show, is even more so.

I don’t think either mark should be interpreted to give wider protection than exact copying.  In other words, the fact that both use he words Naked and Cow does not imply copyright infringement or passing off. the words Boy and Girl are opposites.

For the same reason that North Face is not infringed by South Butt, I don’t believe that the word mark Naked Cowboy is infringed by Naked Cowgirl.  I don’t think that there is a likelihood of confusion either. Male body builders look different than female strippers. It’s probably something biological.

That said, and although perhaps aiming largely at a different segment of the crowd, with the Naked Cowboy getting tips from women tourists and homosexual men, and the Naked Cowgirl attracting heterosexual men, one could argue that there is a problem in setting up a competing business on someone else’s patch.  This raises various issues. For example, does a busker, who does not invest capital in premises but who clearly invests time and energy in becoming a tourist attraction in his own right, create rights?

Ms Kane seems a little past her prime. It could be that she does have a negative impact on the trade. Is this a crime?

In Jewish Law, one cannot simply open a business opposite a competitor. the issue seems to be more one of drawing away trade than passing off. However, this halachah is not the law in New York. It seems that the State does allow one to open up souvenir shops, coffee shops, restaurants and hotels opposite similar establishments, and I am skeptical that merely because Times Square is the Naked Cowboy’s patch, that other buskers can’t perform there.

Arguably, all the cowpeople are part of the scene that keeps tourists visiting Time Square.  I don’t believe that the newspaper and postcard vendors that benefit from the buskers attracting the crowds should pay them, nor do I think that the buskers should pay the theatres for bringing the crowds.

The franchise issue is an interesting one, but I would argue that noone would assume that there is a franchise for buskers and one does not order their services, but simply tips the individual if entertained. The tip is generated by the behavior of the individual at the time that the tip is made. It is not something related to the chain.

A waitress working in a chain of restaurants would not be expected to share her tips, so why should a busker?

Singing songs created by Burck would be copyright infringement. The combination of a cowboy hat, boots and underwear is not.  As is often the case, there is a confusion between an idea and the expression of the idea. Dance steps, routines, songs and the like can be protected with copyright. I don’t think the basic idea of the act can be.

Burke claims that Kane’s performances have caused “confusion” with the public and may put “a potentially permanent devaluation on a real American Brand and Icon.”

It is not the first time that Burke has gone to court to protect his trademark. In February 2008 he sued Mars Inc. in federal court in Manhattan, alleging that a blue M&M character, dressed in underpants and boots that appeared in the candy’s advertisements, violated his trademark. That suit was resolved in November that year. Neither party gave a reason for the dismissal with prejudice, which prevented Burck from re-filing his lawsuit.

The M&M advertisment was one of a series, which included an M&M dressed as the Statue of Liberty and an M&M as King Kong climbing the Empire State Building.

U.S. District Judge Denny Chin, who presided over the earlier lawsuit, ruled that Mars had to face Burck’s false- endorsement claim,wherein he claimed that there was a potential for consumers to believe Burck supported the ads. However, Burke’s right-of-publicity claim against M&M was refused.

Louise Holmlund had a stronger case of claiming trademark infringement as she’d held a mark for Naked Cowgirl. Unfortunately, however, it died in 2007.

Likelihood of confusion with Burke, not convincing. His second claim seems to be one of dilution. Here he may have a point. I think the case should be thrown out. Both sides will probably gain from the publicity in the meantime though.

Durex filed two marks: IL 174678 for the word mark Play, and IL 174730 for the word mark DUREX PLAY. 

Life Styles filed application number IL 178348 for Life Style Play, as a graphic mark :

 As these marks were all competing marks, as evidenced by the opening line of the decision: “Before me are competing applications”, one would expect that the filing dates and classes were of some importance. Apparently not, since these were not reported in the decision.

For those interested, the word mark application for Play - IL 174678 was filed on 12 September 2004 in class 10 (Medical Devices) for the following list of goods: Condoms; contraceptive, hygienic or prophylactic devices; massage apparatus, instruments and appliances; electric and electronic message apparatus, instruments and appliances; body massagers; personal massagers; vibrators; marital aids; sex aids; parts and fittings for all the aforesaid goods; all included in class 10.

Lifestyle’s mark was filed on 8 February 2005 for condoms in the same class.

Two companies cannot both be awarded the same mark as trade marks are supposed to be indications of origin. Once a mark is awarded to one party, a second party can only register the same mark if the first mark is canceled.

In cases of competing marks, where a second similar mark is filed after a first mark is applied for but before the first mark is allowed, the regulations determine which mark is to be examined, using a first to file principle.  The chronological hierarchy is, however tempered by the extent of usage of the mark and by issues of equitable behavior. The law regarding Competing Marks is found in Section 29 of the Trademark Ordinance.

Current Case Law establishes that a mark that is first filed and in use prior to examination, that was applied for without evidence of inequitable behavior, should be examined first.  The grounds for deciding are:

1. Date of application
2. Usage of the mark
3. Equitable behavior

Trademark applications are ex partes procedures. Only if and when a mark is allowed, i.e. after the examiner establishes that the mark is sufficiently distinctive from other, earlier marks, and not too generic to be allowed, or with disclaimers for generic elements, etc. the mark publishes for opposition purposes, which is an inter partes procedure where other parties can claim that the mark belongs to them, or is generic, etc. 

Judge Gronis ruled in the case of Sabon Shel Paam, that despite the occasional uncomfortable feelings arising from awarding a mark in accordance with trademark regulation 29a, to one party, with the other side losing, such is the nature of trademark rulings. Deciding such cases results in one side winning and the other losing.

Judge Gronis’ decision was cited in the ruling in this case, so was clearly known to the Deputy Commissioner Noach Shalev Shmulovich who ruled in this case.

The situation is that a subsequent filing of a second mark should not prevent the first mark from being examined on its merits. At least so we thought…

Perhaps because they had no grounds under the regulations or the case-law to prevail, Lifestyles, represented by Adv. David Wahlberg, decided to focus their arguments on the substantive issue of whether the word Play could be considered distinctive in the context of condoms and vibrators, etc.

Surprisingly, instead of pointing out that the question of apparent distinctiveness was for examination by the trademark examiner and, if necessary, for appealing in an opposition proceedings, having decided which mark should be examined, the Deputy Commissioner, Noach Shalev Shmulovich decided to relate to that issue, ignoring the legal issue before him.

There is some precedence for so doing, e.g. the Eshel decision, where both Tnuva and Yotvata filed marks for the word eshel, seen as generic for the product -  a sort of fromage frais. 

Nevertheless, in a later decision, relating to the issue of “Kochav Nolad” (literally A Star is Born), it was clearly stated that in cases of competing marks, the registerability of the mark is not an issue, merely which party is considered as taking precedence. 

Shmulovich hypothesized that the examiner would probably have ruled that the term Play was too broad and would have rejected the word mark Play and accepted the Durex Play mark with a disclaimer from the word play, leaving the way open to Lifestyles to then have their mark examined. He therefore refused IL 174678 and allowed both IL17430 and IL 178348.

In other words, both Durex and Lifestyle can continue to sell condoms under the name Life, provided that the manufacturer continues to be clearly indicated.

To add insult to injury, Shmulovich awarded costs to Lifestyle as he’d cancelled the simple Play mark applied for by Durex. But if no opposition was filed, why should Lifestyle receive costs? 

The fact that a product has historically been sold by line name and brand name together, should not necessarily be taken as sufficient to prevent the line name from being registered. At least not whilst the patent office is allowing such secondary marks to be registered and generating a not inconsiderable income whilst so doing.

If sexual intercourse with condoms is considered as playing, the term Play may be too generic to be registered for condoms in and of itself. So be it. That decision is separate from the issue of that of competing marks.

Publishing decisions should help clarify the law and create a corpus of case-law that makes clear what the relevant considerations are. This decision contradicts earlier rulings and seems to clarify that there are no rules and no guidelines.

Could be worse though. Following the decision in Hamastan to not allow trademarks to be registered for alcoholic drinks, the trademark office could have taken a tough approach against birth control, particularly condoms which have been particularly frowned upon by the Rabbis, and prevented registration on morality grounds.

Minister Tian Lipu, Commissioner of the State Intellectual Property Office of China spoke to a select group of patent attorneys and industrialists in a meeting held at the Dan Hotel, under the joint auspices of the Israeli Ministry of Foreign Affairs and the High Tech Industry Association (HTIA).

After Opening Remarks delivered by Mr. Oded Hermoni, CEO of the High Tech Industry Association, a representative of the Ministry of Foreign Affairs, and by Dr. Meir Noam, Head of the Israeli Patent Authority and Commissioner of Patents Designs and Trademarks, we were treated to a short and informative talk about IP in China delivered by Adv. Ehud Hausman, a patent attorney and Senior Partner of Reinhold Cohn.

Then Amir Gal-Or, Founder & Managing Partner of the Infinity Group/Infinity I-China spoke about investment and return on investment in China. All the above, spoke in English, despite none of them being native English speakers.

Tian Lipu, the head of the Chinese Patent Office introduced himself briefly in English, but then spoke via an interpreter, which is not a bad idea for non-English speakers.

Apart from the competence of the diminutive lady translating, which made the translation not unpleasant, I actually enjoyed hearing the deep twangy intonations of the Chinese – although I couldn’t understand a word.

Tian Lipu spoke of the fast changes being implemented in China, a country with no tradition of Intellectual Property. the commissioner pointed out that of the 1.2 Billion Chinese in 1979 when he started in the field, perhaps 12 people knew what a patent was, 4 could assess infringement and none could examine.

We learnt that the Chinese patent Law dates from the nineteen eighties and that the first Chinese term for IPR was first coined in 2000.

Commissioner Tian Lipu generously acknowledged both Israeli and Jewish long traditions of IP. We learned that Israel and China had signed a memorandum on cooperation, which indicates the mutual respect and importance held by the two patent offices and of Israeli and Chinese industries.

Commissioner Tian Lipu acknowledged a thousand year history of peaceful commerce between the Jews and the Chinese and expressed hopes that this could be built upon for the next millenium. We learned a little about the scale of things in China, and contemplated what extraordinary good money a Chinese patent is.

Most of the presentation related to the development of Chinese intellectual property system, current Chinese Patent Law and why IPR protection important to independent innovation. Commissioner Lipu took questions and answered fairly, admitting that there were still problems with enforcement and with the quantity of fake goods coming out of China, but pointed out where the system started only 25 years ago, and that there were a lot of people requiring education about IP rights. It is clear that Chinese system is leading towards an advanced pro IP regime, similar to those common in the West.

Lipu argued, and her is correct, that the Chinese cannot be fairly considered responsible for every fake good or infringing product manufactured in China, where the goods are ordered by suppliers from abroad.

We learned, that in addition to checking goods imported into China, the country was unique in checking goods exported abroad for IP infringement. The commissioner put a fair case that statistics on infringement and cost of infringing goods should be compared to the billions that China invests in royalties to Western countries, that get’s less coverage.

The chocolate eclairs where good, and, as is well-known, no calories on a thursday! The organizers and sponsors are to be congratulated for throwing together the event so quickly.

Israel State television (Israel Channel 1) has sued the commercial channels Israel Channel 2 and Israel Channel 10, for NIS 6,000,000 claiming that they had signed an exclusive agreement to screen the Beijing Olympics and that the commercial channels were only allowed to screen up to 30 seconds extracts in news programs, and these no more than three times a day.

The charges detail a blow by blow list of broadcasts. The plaintiff alleges that they are actually entitled to sue for more since each infringement is separately actionable but to lubricate the process, were limiting the amount claimed to NIS 3,000,000 to each channel and to the directors thereof.

Comment

We suspect that the timing of this suit and the World Cup is not incidental. Apart from that, I wonder why my TV licence fee goes to pay for the type of television that is commercial? Why doesn’t the Israel State TV use it’s income to support Israel film and documentary makers, etc.? Why not broadcast coverage of local, less commercially attractive sports, like high school soccer, or kick-the-can? 

Then again, the commercial sides need to be punished. Why should I have Hobson’s Choice of the same sporty rubbish on all channels?

The Nazareth District Court sentenced 27-year-old Khalid Hamuda, an Arab shop-keeper, to a year in prison and a NIS 30,000 fine for selling fake goods. The sentence was the result of a plea bargain. 

The shop-keeper sold laundry detergents bearing fake trademarks for Tide, Ariel, fake chocolate-spread of the Israeli brand-leading Shahar Ha-Oleh brand, and fake Pantene and Head & Shoulders shampoos in his grocery store.

In passing sentence, Nazareth District Court President George Azouli stated that “with economic crime of this nature, the public interest requires a severe punishment which acts as a deterrent and prevents systematic trademark fraud from becoming widespread and damaging the brand owners economically and undermines their hard-earned reputation”. He went on to say that the public is damaged as they spend hard-earned cash on what appears to be leading brands but is, in fact, cheap rubbish.” With respect to the issuance of a fine, in addition to jail sentence, the judge explained that crimes committed for financial gain should be punished by fines to get the criminal where it hurts.

Our Comments

The crimes were committed in 2008 when a gang stole 100 tonnes of the chocolate spread from the Shachar Oleh factory warehouse, so one wonders if he wasn’t selling the real thing as the real thing.

The other products all are leading brands owned by Proctor & Gamble.

 Although clothing with fake logos from the Far East are more common, as is fake Viagra, music disks and software, we note that last year, fake suntan cream resulted in Israeli sunbathers getting severely sun-burnt.

I had a meeting set up with ‘Leslie’, in-house counsel of a Fortune 500 company. We arranged to meet at the entrance to the exhibition center. Unfortunately, so did a further couple of hundred patent and trademark attorneys. I wasn’t even sure if Leslie was male or female, so found myself checking the name cards on everyone else. It took me back to my single days when, on occasion, I was set up for blind dates.

Most participants suspended their cards from a ribbon around their neck, so one has to read cards on people’s chests. This can be somewhat embarrassing.

We didn’t manage to make contact as planned, but Leslie came past the stall later and we rescheduled.

Next time, I am going to ask people to send me their photo in advance.

We will be having a stall at INTA next week – Booth 146 – alongside Thompson Delphion.

 I will be delighted for any reader to pop over and introduce yourself

.

As well as a selection of articles on patents and trademarks, prosecuting in Israel, etc., there will be a unique opportunity to see an attorney threaded through the eye of a needle. This variation of the Talmudic threading a camel through the eye of a needle is the first tie the stunt has been performed at INTA.

In the latest initiative offered by IP Resources Ltd., Israeli patent professionals, CEOs, lawyers and others, can attend a quality seminar offered by litigators from U.S. patent litigators from one of the top patent firms in the United States, Finnegan, Henderson, , Garrett & Dunner, LLP.

The course, featuring Jeffery Berkowitz and Gerson Panitch runs over the 23rd and 24th of June 2010 at the Dan Accadia Hotel Herzliya and covers

• strategies for responding to threats of infringement
•  Considerations when deciding whether to assert a patent in the U.S.
•  Pre-suit litigation planning techniques to maximize chances of success
•  Techniques for accelerating resolution of a case
•  The anatomy of a U.S. patent lawsuit

There will be lectures on pre litigation analysis, discovery, testimony and deposition, summary judgement, mediation and appeals.

The seminars is the latest initiative offered by Kimberly Lindy of IPResources, Ltd. who also intends offering courses for passing the exams for the Israel Patent Bar.

The event, costing NIS 3,950. (+ 16% VAT) is not cheap. then again, The same event costs a similar amount when held in the US or Europe, and for most Israelis, flights and hotels will be redundant. For those interested, the course qualifies for CLE credit in California and New York and the organizers will provide a certificate of attendance to attendees who wish to seek CLE accreditation from other jurisdictions.
 
Although I don’t know the speakers, we have an ongoing relationship with Finnegan, and I have always been impressed by their professionalism. I assume that the program is in English, but with names like Berkowitz and Gershon, suspect that the speakers will have at least a smattering of Hebrew.

For more details, contact kim@ipresources.co.il

Rad Ophir, data consultants, hosted a comprehensive seminar on new features of the science and technology databases avaiable through STN, and data searching techniques.

 The event was held in the Green Villa conference facility in Tel Aviv University and included a number fo experts that flew in specially from Germany.

There were a small number of patent attorneys present, but a number of examiners from the Israel Patent Office and some staff from Teva. In all, about 50 people turned up for the event.

Very few patent attorneys in private practice attended. This is somewhat worrying as it is rather difficult to do a decent job drafting patents without a handle on the prior art.

The lunch afterwards was, however, delicious.

At a meeting of the Israel branch of the Licensing Executive Society, Adv. Suzanne Erez (IP Law Counsel at IBM Israel) spoke on “Use of Open Source — an In-house Point of View, Plus More “.

The workshop was held at Beit HaPraklit, 10 Daniel Frisch, Tel Aviv.

Suzanne shared some thoughts on dealing with copyright issues in software development, particularly with alleged open-source procedures available on the Internet,  including copyright software.

Suzanne spoke with authority and kept the audience’s attention. She explained the theoretical background and then covered practice. Seeing how a firm like IBM deals with the subject gave an insight into good practice. The importance of having a company policy and ongoing education was stressed. 

She explained the problems that something including copyright material of a competitor getting into a commercial prduct could cause the company, such as compromising licensing agreements in other countries, and went on to explain how risks could be minimized by searching through code for (c), words like copyright, proprietary, etc. problems could be avoided.

 Unfortunately the presentation was in a sort of Yiddish type mix of Hebrew and English. Since the slides were in English, it would probably have been better for the whole presentation to have been in English.