WASHINGTON, D.C. — (Mealey’s) A case presenting the question of whether a judge or a jury is responsible for determining when use of an older trademark may be tacked to a newer one will be decided by the U.S. Supreme Court in an upcoming term, thanks to a grant of certiorari today ( Hana Financial Inc. v. Hana Bank , No. 13-1211, U.S. Sup.; See 12/2/13, Page 17) [lexis.com subscribers may access Supreme Court...

by Elizabeth Papendorp The Trademark Trial and Appeal Board (TTAB or the Board), an adjudicatory division of the United States Patent and Trademark Office, issued a decision on June 18, 2014 cancelling six trademark registrations previously granted to Pro Football, Inc. for the use of the term “Redskins” for professional football related services [ an enhanced version of the Trademark Trial & Appeal...

Many people seem confused by the decision of the US Patent & Trademark Office to rescind the registered trademark “Redskins” owned by the Washington football team [ an enhanced version of the Trademark Trial & Appeal Board opinion is available to lexis.com subscribers ]. So let’s try to analyze it in my usual three paragraphs. For those who don’t know, there has been a decades old battle...

WASHINGTON, D.C. — (Mealey’s) The Ninth Circuit U.S. Court of Appeals erred in holding that a private party cannot allege Lanham Act false advertising in connection with a product label regulated under the Food, Drug and Cosmetic Act (FDCA), the U.S. Supreme Court unanimously ruled today ( POM Wonderful LLC v. The Coca-Cola Co. , No. 12-761, U.S. Sup.; See 5/5/14, Page 38) [lexis.com subscribers may access...

by Cynthia Lambert Hardman , Scott Forman , and Anne E. Li Summary: CAFC finds appeal of Board’s decision to cancel trademark registration moot. Case: Cigar King, LLC v. Corporacion Habanos, S.A. , No. 2013-1531 (Fed. Cir. May 23, 2014) (non-precedential) [ an enhanced version of this opinion is available to lexis.com subscribers ]. On appeal from the Trademark Trial and Appeal Board in Cancellation No. 92053245...

WASHINGTON, D.C. — (Mealey’s) A divided U.S. Supreme Court today ruled that a petitioner’s copyright infringement claim against Metro-Goldwyn-Mayer Inc. (MGM) is not subject to the affirmative defense of laches because her claim was brought within the three-year statute of limitations window proscribed by 17 U.S. Code Section 507(b) ( Paula Petrella v. Metro-Goldwyn-Mayer Inc. , No. 12-1315, U.S. Sup...

Excerpt: Under what circumstances does a copyright owner's exclusive public performance right extend to retransmissions of television broadcasts that embody the copyrighted work? In Aereo ( ABC, Inc. v. Aereo, Inc., cert. granted, 134 S.Ct. 896 (U.S. Jan. 10, 2014) [lexis.com subscribers may access Supreme Court briefs for this case ]), the Supreme Court has been asked to determine whether recording a television...

WASHINGTON, D.C. — (Mealey’s) The U.S. Supreme Court on April 22 heard oral arguments in a copyright infringement case pitting a group of broadcast television companies and the U.S. government against Aereo Inc., a company that provides Internet-based digital video recorder (DVR) services in a dispute over the differences between public and private performances of copyrighted works in the context of current...

Previously , CanadaFashionLaw covered retailers’ challenge to the Office Quebecois de la Langue Francaise (basically, the French language police). The Quebec Superior Court issued their decision last week which put the reins on the French language police. Public signage and marketing in Quebec is regulated by the Quebec Charter of French Language. The French Charter requires that signage/commercial advertisements...

Excerpt: Who is the author of an actor's recorded performance? This question rarely arises in practice, because motion picture producers insist that all creative participants sign work-made-for-hire agreements. When this detail is overlooked, however, all bets are off, and attempts to assert authorship rights can land the participants in court. As Garcia v. Google, Inc ., 2014 U.S. App. LEXIS 3694 (9th Cir. Feb...

WASHINGTON, D.C. — (Mealey’s) In a unanimous decision, the U.S. Supreme Court today ruled that “to come within the zone of interests in a suit for false advertising under” Section 1125(a) of the Lanham Act, “a plaintiff must allege an injury to a commercial interest in reputation or sales” ( Lexmark International Inc. v. Static Control Components Inc. , No. 12-873, U.S. Sup.; See 12...

Lexmark Int'l Inc. v. Static Control Components, Inc., 697 F.3d 387 (6th Cir. 2012) Excerpt: In the never-ending toner wars, ink will once again be spilled as the Supreme Court considers a false advertising dispute in Lexmark Int'l Inc. v. Static Control Components ., 697 F.3d 387 (6th Cir. 2012) [ an enhanced version of this opinion is available to lexis.com subscribers ], cert. granted, 133 S.Ct. 2766...

WASHINGTON, D.C. — (Mealey’s) The defense of laches cannot serve as a bar to allegations of copyright infringement, an attorney for the holder of renewal rights in the screenplay “The Raging Bull” told the U.S. Supreme Court on Jan. 21 ( Paula Petrella v. Metro-Goldwyn-Mayer Inc. , No. 12-1315, U.S. Sup.; See 1/21/14, Page 41). The Ninth Circuit U.S. Court of Appeals erroneously relied on laches...

WASHINGTON, D.C. — (Mealey’s) The U.S. Supreme Court announced on Jan. 10 that it will hear four intellectual property cases in an upcoming term, covering issues ranging from the streaming of copyrighted content over the Internet to the rights of private companies to challenge false labels. Injunction Sought Justice Samuel A. Alito Jr. did not take part in the court’s decision to hear ABC Inc....

by Szymon Gogulski and Marek Oleksyn Excerpt: Cross-border, mostly worldwide, assignment and licensing of copyrights has been a significant part of IP lawyers' practice for decades. In fact, worldwide copyright transactions preceded globalization of the world's economy. This was possible due to international treaties, e.g. the Berne Convention, TRIPS and WIPO Treaties, which contributed to increasingly common...

Canada’s legislature is mulling over new legislation that could assist in managing the influx of counterfeit product entering into Canada. The Bill was originally introduced as Bill C-56, entitled “ Combating Counterfeit Products Act ” and had to be reintroduced as Bill C-8, as Parliament was forced to reconvene. Given that this is the 2nd time around for this legislation, it is expected to pass through...

WASHINGTON, D.C. — (Mealey’s) The U.S. Supreme Court on Oct. 1 announced that it will hear oral arguments in three intellectual property disputes presenting issues that range from the availability of a laches defense to the proper standard for an award of attorney fees. In the first list of orders following summer recess, the Supreme Court granted certiorari in Petrella v. MGM (No. 12-1315; See July 2013...

Trolls Face Expensive Legal Battle To Prove Inapplicability of State Laws When a patent troll asserts a patent claim of questionable merit against a defendant, the defendant is faced with two options: 1) fight a very expensive and time consuming legal battle to prove the correctness of their invalidity/non-infringement position; or 2) fold up tents and go home— minus a significant license fee. In a case of poetic...

Excerpt: Get ready for the next great land rush, because the Internet is about to expand. Top-level domains, now restricted to 22 variations like .com, .edu, .net and .gov will soon be limitless. Companies have already petitioned ICANN (the Internet Corporation for Assigned Names and Numbers) for the right to be the official registry of new top-level domains, which may now take the form of whole words like .health...

At CanadaFashionLaw we love learning about interesting facets of the fashion industry and love to help fashionistas become aware of different career paths within the industry. So when we met Laura DiMarcello , the Supervisor of Uniforms at Porter Airlines , we had to share her story. Laura gives insight into the important role that uniforms can play in corporate branding. We hope you enjoyed this interview, as much as...

This article originally appeared in Mealey’s Litigation Report: Cyber Tech & E-Commerce June 2013 by Ilaria Maggioni In Kirtsaeng v. Wiley,[ 1 ] the Supreme Court ruled that once a copyrighted work has been sold by its owner anywhere in the world, it is free to be resold - including by importation into the U.S. itself. Hence, under U.S. copyright law a doctrine of "worldwide exhaustion of rights"...

The practice of using a competitor’s trademark as a keyword to trigger sponsored links in Internet search engines received a boost this week from the U.S. Court of Appeals for the Tenth Circuit. In 1-800 Contacts, Inc. v. Lens.com, Inc. , the Court rejected 1-800 Contacts’s claim that the practice created “initial interest confusion” among search engine users. In particular, the Tenth Circuit found...

Multitude of Anti Patent Troll Bills Before Congress Yet another patent reform bill, H.R. 2639 , was introduced last week by Rep. Hakeem Jeffries (D-NY). Like many of the bills introduced over the past few months , H.R. 2639 seeks to mandate more particuarity for pleading patent infringment, and seeks to stem the tide of infringment suits against “secondary parties” such as retailers, hotels, etc. The bill...

On the surface, the 2d and 9th Circuits appear to be in harmony regarding the standards in measuring the availability of the DMCA safe harbor to on-line service providers. Each agrees that failing to take down infringing content, despite awareness of facts that would cause a reasonable person to conclude that a specific act of infringement is occurring, can deprive the service provider of the safe harbor. However, they...

Excerpt: In Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. ___, 2013 U.S. LEXIS 2371 (March 19, 2013) [ an enhanced version of this opinion is available to lexis.com subscribers ] , the Supreme Court held that the first sale rule of copyright law applies to foreign as well as domestically made copies, thus injecting the principle of international exhaustion into United States copyright law. It remains to be seen...