Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
Famous Marks Doctrine: A Defeat in New York State
Last year, we reported on the Second Circuit's limitation of famous foreign trademark protection without domestic use. In March 2007, in ITC Limited v. Punchgini, et al., the Second Circuit held there was no federal 'famous marks' exception and upheld the district court's findings that despite foreign use of plaintiff's mark, ITC had abandoned its trademark domestically, and therefore could not seek protection under federal law for trademark infringement, unfair competition, and false advertising. The circuit court then certified questions to the New York Court of Appeals as to whether New York common law protects a trademark that despite being used only overseas might nonetheless be sufficiently famous in New York State to warrant barring others from using the name. In December 2007, the New York Court of Appeals declined to recognize the 'famous marks' doctrine, but it did confirm the possibility of protection under existing common law theories of misappropriation in certain limited circumstances.
The ITC Case
ITC owns an Indian restaurant in New Delhi, India called 'Bukhara' and 'Bukhara' restaurants elsewhere in Asia. ITC had operated restaurants in Manhattan and Chicago from 1986 through 1997, and held a registered trademark for restaurant services. Two years after ITC ceased its domestic restaurant operations, in 1999, the defendants, who included former employees of ITC's New York restaurant, opened Indian restaurants in New York City under the name 'Bukhara Grill.' They adopted the Bukhara name and allegedly incorporated logos and decor that were similar to ITC's original restaurant. ITC filed its lawsuit in February 2003, after defendants' attorneys rejected ITC's cease and desist letters, asserting abandonment.
This premium content is locked for Entertainment Law & Finance subscribers only
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN ENTERTAINMENT LAW.
- Stay current on the latest information, rulings, regulations, and trends
- Includes practical, must-have information on copyrights, royalties, AI, and more
- Tap into expert guidance from top entertainment lawyers and experts
Already a have an account? Sign In Now Log In Now
For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
The Anti-Assignment Override Provisions
UCC Sections 9406(d) and 9408(a) are one of the most powerful, yet least understood, sections of the Uniform Commercial Code. On their face, they appear to override anti-assignment provisions in agreements that would limit the grant of a security interest. But do these sections really work?