Intellectual Property

    • 19 May 2015

    En Banc Ninth Circuit Dissolves Panel’s Order That YouTube Take Down Anti-Muslim Film

    PASADENA, Calif. — (Mealey’s) Reversing a previous panel decision ordering YouTube LLC and Google Inc. to take down a controversial anti-Muslim film based on an actress’ “heartfelt plea for personal protection,” an en banc Ninth Circuit U.S. Court of Appeals majority on May 18 held that “a weak copyright claim cannot justify censorship in the guise of authorship” ( Cindy Lee Garcia...
    • 5 May 2015

    Federal Circuit to Consider En Banc If Bar on Registration of Disparaging Marks Violates First Amendment

    On April 27, the Court of Appeals for the Federal Circuit ordered en banc review of a panel decision last week in In re Tam , a trademark case. The issue to be decided en banc is “Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?” The issue of whether “disparaging” marks are subject to federal registration has received substantial attention...
    • 27 Apr 2015

    California Federal Court Dismisses Trade Secret and Other Tort Claims

    Shows Need to Specify Trade Secrets and Distinguish Other Claims at Outset of Case In California, by statute, companies and individuals seeking to enforce trade secrets have to be able to specify, with reasonable particularity, the trade secrets they are seeking to protect at the outset of the case. On April 13, 2015, the Northern District of California rejected claims in a complaint by online real estate community...
    • 24 Mar 2015

    Divided Supreme Court: Issue Preclusion Applies In Trademark Dispute

    WASHINGTON, D.C. — (Mealey’s) The Eighth Circuit U.S. Court of Appeals erroneously ruled that the Trademark Trial and Appeal Board (TTAB) applies a different likelihood of confusion standard when weighing a trademark registration than district courts apply when weighing allegations of infringement, a divided U.S. Supreme Court ruledon March 24 ( B&B Hardware Inc. v. Hargis Industries Inc. , No. 13-352...
    • 10 Mar 2015

    Can Hall & Oates Stop “Haulin’ Oats”?

    I admit I just love these things. What’s in a name? Well for many, a brand. And in the case of the huge rock duo Hall & Oates, they just can’t seem to “go for that” as a Brooklyn company is peddling hipster granola called “Haulin’ Oats.” Daryl and John have filed suit to stop the company from using the name that does seem to take advantage of the famed group’s legend...
    • 4 Dec 2014

    EDVA: REDSKINS Defendants Can’t Have It Both Ways

    by Julia Bishop As we previously wrote about this year, the Trademark Trial and Appeal Board (TTAB) cancelled Washington Redskins owner Pro-Football Inc.’s REDSKINS trademark registrations finding that the marks are disparaging to Native Americans. Pro-Football subsequently filed a complaint in the Eastern District of Virginia seeking review of that decision. In an interesting move, defendants filed a motion...
    • 3 Dec 2014

    Supreme Court Hears Oral Arguments in Trademark Tacking Case

    WASHINGTON, D.C. — (Mealey’s) A jury is best suited to determine when use of an older trademark may be “tacked” to a newer trademark, an attorney for a Korea-based bank told the U.S. Supreme Court today ( Hana Financial Inc. v. Hana Bank and Hana Financial Group , No. 13-1211, U.S. Sup.; See September 2014, Page 21) [lexis.com subscribers may access Supreme Court briefs for this case ]. According...
    • 2 Dec 2014

    Supreme Court Hears Arguments in Dispute Over Effect of TTAB Rulings

    WASHINGTON, D.C. — (Mealey’s) The preclusive effect of findings by the Trademark Trial and Appeal Board that confusion between two trademarks is likely was debated today before the U.S. Supreme Court ( B&B Hardware Inc. v. Hargis Industries Inc. , No. 13-352, U.S. Sup.; See 10/6/14, Page 52) [lexis.com subscribers may access Supreme Court briefs for this case ]. William M. Jay, attorney for petitioner...
    • 7 Dec 2009

    Continued Use of Cached Copies After Objection May Infringe the Copyright

    In Parker v. Yahoo!, Inc. , 2008 U.S. Dist. LEXIS 74512 (E.D. Pa. Sept. 25, 2008) , a federal trial court ruled that a website owner's failure to 'opt-out' of search engines' information gathering robots gave them an implied license to copy the entire website but that the website owner's subsequent complaints may revoke that license and directly infringe the registered copyrights. In this Analysis...
    • 7 Dec 2009

    Intellectual Property Issues in Bankruptcy

    The bankruptcy of a party to an intellectual property license agreement triggers the Bankruptcy Code’s provisions concerning the debtor’s rights to assume, assume and assign, or reject an executory contract. To rehabilitate a debtor and maximize value to creditors, the bankruptcy court will seek to enlarge the pool of assets available to creditors, including intellectual properties, which may conflict with...
    • 1 Dec 2009

    FTC Releases Much Anticipated Revised "Guides Concerning Use of Endorsements and Testimonials in Advertising"

    The Revised Guides Concerning Use of Endorsements and Testimonials in Advertising, effective December 1, 2009, will require advertisers to be greatly more transparent when it comes to their associations with the persons who are endorsing their products and services. In essence, the Guides require that an endorsement must reflect "the honest opinions, findings, beliefs or experience of the endorser, and must alert...
    • 3 Nov 2009

    LaFrance on the Seventh Circuit's Approach to Joint Authorship in Copyright Law

    Janky v. Lake County Convention & Visitors Bureau , 576 F.3d 356 (7th Cir. Ind. 2009) presents another variation on the many scenarios that raise difficult questions of copyright authorship (and therefore ownership) in the context of collaborative works. In Janky , Cheryl Janky sought a ruling that she had a valid copyright in a song and that Henry Farag, who allegedly made a de minimis contribution to the lyrics...
    • 26 Oct 2009

    LaFrance on Trademark Infringement for Removal of Product Codes from Packaging

    In Zino Davidoff SA v. CVS Corp. , 571 F.3d 238 (2d Cir. N.Y. 2009) , the Second Circuit held that gray market goods are materially different, and thus, infringing under the Lanham Act, when the packaging has been altered. These holdings mark a significant broadening of the concept of material differences, strengthening the rights of trademark owners to prevent their products from being sold outside of their authorized...
    • 12 Oct 2009

    LaLonde on Use of Personal Name After Selling Related Trademark Rights

    The fashion industry is replete with valuable personal name trademarks. After selling his rights to the registered trademark consisting of his name, one fashion designer waited out his non-compete agreement and began a new company. He wanted to use his name in advertising his new designs. The company that had purchased rights to his name objected. In this Analysis, Anne Gilson LaLonde discusses JA Apparel Corp. v. Abboud...
    • 29 Sep 2009

    LaLonde: What Trademark Owners Must Know About the Impending Flood of gTLDs

    In 2010, the Internet Corporation for Assigned Names and Numbers ( ICANN) will drastically expand the number of generic top level domains (gTLDs) available online, adding to .com, .net and others. This move will trigger new opportunities for cybersquatters and will require trademark owners to make decisions about where to commit their scarce resources. In this Analysis, Anne LaLonde discusses this important issue and...
    • 9 Sep 2009

    Brutocao on A Guide to Federal Preemption of Business & Professions Code 17200

    It has become standard practice in business litigation to include a cause of action for violation of Cal Bus & Prof Code § 17200 , known as the Unfair Competition Law (UCL). A common defense argument is that the UCL claim is preempted by federal law. This issue arises frequently and will continue to do so because the preemption issue is complex and yields differing results, thus making it difficult to predict...
    • 9 Sep 2009

    Gold on Remedies and Damages under Anti-Cybersquatting Consumer Protection Act

    Under the Anti-Cybersquatting Consumer Protection Act, 15 USCS § 1125 , a plaintiff may elect either actual damages and profits or statutory damages. But can a plaintiff pursue both theories and wait to see which award is larger before making an election? Pursuant to Kiva Kitchen & Bath, Inc. v. Capital Distrib. Inc. , 319 Fed. Appx. 316 (5th Cir. Tex. 2009) , the answer may be yes. In this Analysis, Andrew Gold...
    • 9 Sep 2009

    Gold on Personal Jurisdiction for the Internet: Minimum Contacts for a Website

    In Andy's Music, Inc. v. Andy's Music, Inc. , 607 F. Supp. 2d 1281 (S.D. Ala. 2009) , an Alabama plaintiff unsuccessfully argued that the mere fact that the defendant had a website accessible via the internet in Alabama was sufficient to establish personal jurisdiction against it. In this Analysis, Andrew Gold, a partner in the Oakland firm of Bogatin, Corman & Gold, examines Andy's Music and discusses...
    • 24 Aug 2009

    The Google Library Project Class Action Settlement

    Google Library Project involved digitizing millions of books provided by major libraries for online availability. Did Google, which did not acquire copyright licenses for the books before undertaking this ambitious project, engage in large-scale copyright infringement? It looks like this question will go unanswered. Google and representatives of a putative class that includes all of the authors and publishers affected...
    • 21 Jul 2009

    Arbitrating International Intellectual Property Disputes

    As technology, marketing, and the methods for transmitting information traverse worldwide boundaries, the demand for intellectual property protection increases. Consequently, the need for international arbitration as an alternative over litigation in national courts also increases. In this Commentary, Joseph P. Zammit and Jamie Hu discuss the importance of intellectual property rights in the global economy and examine...
    • 15 Jul 2009

    Astrachan and Thomas on Brand Recognition

    Manufacturers will parody well known products to take advantage of brand recognition among consumers. Their humorous brands are similar but not identical to the products they parody. Often challenged by the brand's owner, they sometimes prevail and sometimes they do not. In this Analysis, James B. Astrachan and Donna Thomas discuss brand recognition and parody and examine the disparate cases of Anheuser-Busch, Inc...
    • 13 Jul 2009

    Gold on Material Differences and Disclosures for First Sale Doctrine

    In Beltronics USA, Inc. v. Midwest Inventory Distrib., LLC , 562 F.3d 1067 (10th Cir. Kan. 2009) , Beltronics' distributors violated their distribution agreements by selling Beltronics radar detectors to Midwest, which in turn resold them as "new" on the internet. To prevent Beltronics from discovering the violation, the serial number labels were either removed or replaced with phony labels. Upon discovering...
    • 15 Jun 2009

    Gilson LaLonde: A Call to Action About the Upcoming Surge of gTLDs

    Addressing concerns about the trademark implications of the roll-out of new top-level domains in 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) created the Implementation Recommendation Team (IRT) to make recommendations for trademark protection. The IRT’s final report makes several proposals intended to protect mark owners from the possibility of large expenditures and abusive registrations...
    • 26 May 2009

    Anne Gilson LaLonde on Rescuecom v. Google and the Meaning of "Use in Commerce"

    In Rescuecom Corp. v. Google, Inc ., 562 F.3d 123 (2d Cir. N.Y. 2009) , the Second Circuit held that Google had used Rescuecom’s trademark in commerce when it recommended and sold the mark as a keyword to Rescuecom’s competitors. In this Commentary, Anne Gilson LaLonde explains the facts and holding of Rescuecom in the context of other keyword buy cases, discusses the legal issues underlying such cases, and...
    • 21 May 2009

    The Federal Circuit Hears Oral Argument on Bose v. Hexawave, and the TTAB Carves Out Some Exceptions to Medinol

    In Bose Corp. v. Hexawave, Inc ., 2007 TTAB LEXIS 91 (Trademark Trial & App. Bd. Nov. 6, 2007) , the TTAB (Trademark Trial and Appeal Board) cancelled Bose's registration for WAVE for fraud, holding that the mark had not been used on all of the goods in Bose’s renewal registration. In cancelling the registration, the Board cited the standard from Medinol v. Neuro Vasx, Inc. , 67 U.S.P.Q.2d 1205 (T.T.A.B...