Intellectual Property

    • 28 Oct 2015

    Intellectual Property and Cuba

    As relations and trade slowly begin to thaw with Cuba, what is the state of intellectual property protection there? According to a report today in the Washington Post , I suppose “could be worse” is a good summary. There seems to be a willingness by the Castro government to protect consumer products brands such as Coke, but when it comes to entertainment like Seinfeld , not so much. Plus the Cuban government...
    • 26 Oct 2015

    Neighbouring Rights in the Digital Era: How the Music Industry Can Cash In

    Why sound recording producers, sound recording artists and performers as well as digital service providers have everything to win in finding a consensus on neighbouring rights in the digital era As we detailed in our previous article on our take on Midem 2015 , the music industry’s digital revenues grew by 6.9% to USD6.9 billion in 2014 and are now on a par with the physical sector. Indeed, globally, like...
    • 21 Oct 2015

    The New Eldorado: Video Streaming and Streaming Video Content Production

    The New Eldorado: Video Streaming and Streaming Video Content Production Streaming means listening to music or watching video in “real time”, instead of downloading a file to one’s computer and watching it later. This newish technology, which provides a continuous stream of data, is awesome for many reasons. From the consumer’s perspective, it implies saving time since one does not have to download...
    • 14 Oct 2015

    Summary of Recent Precedential Trademark Trial and Appeal Board Decisions

    by Paul Bost From June through August 2015, the Trademark Trial & Appeal Board issued eleven precedential decisions. Over the course of the upcoming weeks, we are briefly summarizing each opinion and a “take away” for brand owners and practitioners. We continue our series with a summary of Wonderbread 5 v. Gilles . Wonderbread 5 v. Gilles – Whose Band Is It? Petitioner – a partnership...
    • 31 Jul 2015

    Nimmer on Copyright and Milgrim on Licensing Cited in 9th Circuit Decision

    The U.S. Court of Appeals for the 9 th Circuit cited both Nimmer on Copyright and Milgrim on Licensing in Minden Pictures v. John Wiley & Sons , 2015 U.S. App. LEXIS 13197, its July 29 decision addressing standing of a photography licensing agency to sue for copyright infringement. Nimmer on Copyright , updated by David Nimmer of Irell & Manella, is the most cited copyright treatise with citations in over 3100...
    • 29 Jul 2015

    Proposed Eco-mark Succumbs to Genericness as SUSTAINABLE WATER Proves Unsustainable

    I’ve regularly reported on the struggles faced by clean tech manufacturers and service providers seeking to protect and enforce descriptive eco-marks (including my own marks ). One can’t register or otherwise protect a mark that is merely descriptive (i.e., it immediately conveys to consumers the nature of the goods or services) because that would restrict competitors from conveying information about their...
    • 15 Jul 2015

    Redskins Trademarks – Answers to Key Questions Regarding Recent Ruling

    by Chris Mackenzie Last week, the U.S. District Court sitting in Alexandria, Virginia granted what would appear to be a sweeping victory to a group of five Native Americans who have renewed attempts to cancel the federal registrations of certain trademarks owned by Pro-Football, Inc. (“PFI”), the corporate parent of the Washington Redskins. In what has been a decades long legal battle, this ruling represents...
    • 13 Jul 2015

    EDVA Upholds Decision to Cancel Redskins Trademark Registrations — First and Fifth Amendment Challenges to Section 2(a) Still Up for Debate

    by Julia Bishop Eastern District Court Judge Lee upheld the USPTO Trademark Trial and Appeal Board’s (TTAB) decision to cancel several REDSKINS trademark registrations. Pro-Football, Inc. v. Amanda Blackhorse et al. , No. 1:14-cv-01043-GBL-IDD (E.D. Va. July 8, 2015) [subscribers can access an enhanced version of this opinion: lexis.com | Lexis Advance ] Deciding several cross motions for summary judgment, the...
    • 6 Jul 2015

    Inside An Eco-mark Application: Saving GREEN PATENT LAW from the Depths of Descriptiveness

    In a series of posts published several years ago (see, e.g., here and here ), I documented all the gory details of my attempt to register the GREEN PATENT BLOG service mark. Despite two rejections (see here and here ) on the ground that the mark was merely descriptive of the blogging services, it was ultimately registered (thanks to many of my readers) (see here ) based on an evidentiary showing of acquired distinctiveness...
    • 2 Jun 2015

    Diverting Organic Waste and Recyclables with Integrity

    Integrity Waste (IW) is full service waste management company that specializes in collection and disposal of organic waste. Based in Novato, California, Integrity Waste has implemented programs to handle waste in Foster City, San Rafael, Concord, and Union City. I recently spoke with Ron Falcon, the company’s CEO, about IW’s services. He told me that IW sorts residential waste and recycling so that harmful...
    • 26 May 2015

    Current Problems, Future Needs, and the IANA Transition: ICANN and What To Do About It

    ICANN is responsible for coordinating the Internet's systems of unique identifiers, including the systems of domain names and numeric addresses used to reach computers on the Internet. This article addresses three important topics: (1) abuse of the domain name space and ICANN's role, (2) need for ICANN to become a stable, reliable partner for business, & (3) profound effects of the USG relinquishing its oversight...
    • 28 Oct 2014

    EDVA Judge Holds That the Copyright Act Preempts Some Claims Under the Virginia Computer Crimes Act

    by Dabney Carr In Maxient, LLC v. Symplicity Corp. , Case No. 1:14CV1184, 2014 U.S. Dist. LEXIS 150542 (E.D.Va. Oct. 23, 2014) (found here ) [ an enhanced version of this opinion is available to lexis.com subscribers ], Maxient, a developer of web-based software for student conduct records management, claimed that a competitor, Symplicity, posed as a customer to access its proprietary website and gain access to Maxient’s...
    • 24 Oct 2014

    In Eco-mark Examination USPTO Getting into Anti-Greenwashing

    A recent article in the New York Law Journal caught my attention for an interesting development in examination of eco-mark applications in the U.S. Patent and Trademark Office (USPTO). We’ve known for some time that marks containing terms such as “green,” “clean,” “eco-” or “enviro-” are very likely to be rejected as merely descriptive of environmentally friendly products...
    • 7 Oct 2014

    Under Pressure: Mass Copyright Infringement Actions Face New Challenges

    Online piracy of copyrighted works isn’t going away soon. There are just too many reasons why downloading digital content by various means remains attractive to people. For one thing, it fulfills a basic need in our time: instant gratification. It’s also incredibly easy to do. Even better is that it’s free. Of course, the challenge for many copyright holders is to compete with those realities. Most...
    • 30 Sep 2014

    Is Your Mark Really in Use on Everything?

    When a trademark owner says the mark is in use on everything in the trademark registration, it is only true half of the time. The U.S. Patent and Trademark Office (USPTO) recently completed an interesting study of trademark registrations. The question addressed in the study was whether in filing documents for the maintenance of registrations, declarants were being entirely candid when they claimed the mark was in use...
    • 24 Sep 2014

    It’s No Use: Why Chevy’s BOLT Trademark Isn’t (Necessarily) a New Brand

    There is some curious eco-mark news to report: apparently, last month General Motors filed two notable U.S. trademark applications, one for BOLT and the other for CHEVROLET BOLT. They are Application Nos. 86357513 and 86357523 (BOLT Applications), respectively, and list the goods as “motor land vehicles, namely, automobiles.” The clean tech and electric vehicle blogosphere was buzzing with speculation...
    • 19 Sep 2014

    EDVA Grants Summary Judgment to Defendants in AWCPA Infringement Case, Finding Two High-Rise Residential Buildings Not Extrinsically Similar

    by Julia Bishop In this architectural work copyright infringement action, Humphreys & Partners Architects, L.P. claimed defendants’ design and construction of a high-rise apartment building in McLean, Virginia, “ Two Park Crest ” (currently under construction), infringed upon Humphreys’ high-rise condominium building in Minneapolis, Minnesota, “ Grant Park .” The court granted...
    • 29 Aug 2014

    LaFrance on Infringing Internet Transmissions of Television Broadcasts: ABC, Inc. v. Aereo, Inc., 2014 U.S. LEXIS 4496

    Excerpt: When does a copyright owner's exclusive public performance right extend to retransmissions of television broadcasts that embody the copyrighted work? The defendant in ABC v. Aereo , 2014 U.S. LEXIS 4496 (June 25, 2014) [an enhanced version of this opinion is available to lexis.com subscribers] , attempted to distinguish itself from conventional cable television companies by capturing over-the-air television...
    • 28 Aug 2014

    LaFrance on Federal False Advertising Claims Arising From FDA-Compliant Labels: POM Wonderful LLC v. Coca-Cola Co.

    Excerpt: In its second false advertising case this term, in POM Wonderful LLC v. Coca-Cola Co., 2014 U.S. LEXIS 4165 (June 12, 2014), the Supreme Court held that a misleading food or beverage label may be actionable under the false advertising provisions of the Lanham Act even if the label satisfies the requirements of the federal Food, Drug, and Cosmetics Act (FDCA) and regulations thereunder [an enhanced version...
    • 19 Aug 2014

    Tesla Resolves Chinese Trademark Dispute (Again, This Time With Cash)

    Previous posts ( here , here , and here ) discussed Tesla’s trademark troubles in China. As it sought to expand into the Chinese market, the electric car maker encountered a businessman named Zhan Baosheng who owned registrations for the TESLA (or “Te Si La” transliterated) trademark in China in both English and Chinese. While Zhan’s trademark rights initially blocked Tesla from using the...
    • 15 Aug 2014

    The REDSKINS Trademarks: What's the Real Impact of the Board's Cancellation Decision in Blackhorse?

    The dramatic pronouncement by the Trademark Trial and Appeal Board that it was cancelling the registrations of the REDSKINS trademarks has sparked a media frenzy. News reports, blogs and tweets have declared that anyone can now sell REDSKINS merchandise with impunity, or that Dan Snyder finally has no choice but to change the name of his team. Both of those assertions are wrong. This Emerging Issues Analysis looks at...
    • 8 Aug 2014

    From Burgers to Biofuels: Trademark Board Rules McDonald’s “Mc” Rights Extend to Biodiesel

    In March of 2009 Joel Joseph filed a U.S. trademark application for the mark BioMcDiesel for use in connection with marketing and selling biodiesel fuel. Needless to say, the owner of the ubiquitous global McBrand was not pleased. McDonald’s Corporation filed an opposition proceeding before the the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (Board) requesting that the application be denied...
    • 6 Aug 2014

    LaFrance on Standing to Bring False Advertising Claims under the Lanham Act: Lexmark Int'l, Inc. v. Static Control Components, Inc.

    Excerpt: Who has standing to bring a false advertising claim under the Lanham Act? In Lexmark Int'l, Inc. v. Static Control Components, 2014 US LEXIS 2214 (Mar. 25, 2014), the Supreme Court ended a three-way circuit split, and held that standing is not limited to direct competitors [an enhanced version of this opinion is available to lexis.com subscribers] . Instead, a party has standing if it suffers a business...
    • 29 Jul 2014

    EDVA Rejects Argument That a Common Law Trade Dress Infringement Claim Is Subsumed by a Trademark Infringement Claim

    by Julia Bishop Judge Liam O’Grady upheld a unanimous jury verdict in favor of Reynolds Consumer Products, Inc. in the U.S. District Court for Eastern District of Virginia. The jury found that Handi-Foil Corporation willfully infringed on Reynolds’ trade dress rights. See Reynolds Consumer Products, Inc. v. Handi-Foil Corporation , No. 1:13-cv-214, 2014 U.S. Dist. LEXIS 98059 (E.D. Va. July 18, 2014) [an...
    • 25 Jun 2014

    Divided High Court: Aereo’s Internet Transmissions Constitute Public Performances

    WASHINGTON, D.C. — (Mealey’s) A U.S. Supreme Court majority today found that the Internet transmission of copyrighted broadcast television programs provided by Aereo Inc. constitute public performances per the “transmit clause” of the Copyright Act, reversing the Second Circuit U.S. Court of Appeals’ finding that Aereo’s services did not infringe the copyrights of a group of plaintiff...