The newsletter of the ISBA’s Section on Intellectual Property Law
Browse articles by year: 2013 (17)
Newsletter articles from 2011
The break up
This past August, Starbucks offered $750 million to Kraft in an attempt to “break up” with the distributor and exercise more control over the Starbucks retail products. Reports conflict about whether Starbucks’ decision was foreseeable or completely unexpected, and there are a lot of allegations about who caused the break up.
A farewell message from Outgoing Chair Dale R. Kurth.
A note from Intellectual Property Section Chair Dale R. Kurth.
Department of Commerce takes on trademark bullies
The Department of Commerce recently released its report which studied whether or not some trademark owners are using their trademark rights in an overly aggressive enforcement effort—commonly known as the Trademark Bullies report.
En banc decision provides guidance for evaluating modified products within a contempt proceeding
On April 20, 2011, the Court of Appeals for the Federal Circuit, sitting en banc, vacated a $110 million award against Echostar Corporation and implemented a new test for evaluating product redesigns within a contempt proceeding. The en banc Court overruled and modified the KSM test, effectively merging the old two-step test into one. Under the new test, the Courts are to inquire as whether the newly accused product was so different from the infringing product so as to create a fair ground of doubt as to the wrongfulness of the defendant's conduct.
Expiration of biotech crop patents—Issues for growers
The patent expiration of the first generation of Roundup Ready soybean trait in 2014 will be the first time that a major biotech trait will become potentially subject to competition with generic traits.
Immigrants beware—Trademark counterfeiting Is aggravated felony INA §101
Criminal trademark counterfeiting is counterfeiting, and an aggravated felony under INA § 101(a)(43)(R), 8 USC § 1101(a)(43)(R), and supported Immigration judge's removal order. Ninth Circuit rejects argument "counterfeiting" referred only to currency. Rodriguez-Valencia v. Holder, 99 USPQ2d 1476 (9th Cir. 2011).
“Obama Pajamas” trademarks laid to rest
Time will tell if other applicants attempt to register trademarks such as “Clinton’s Mittens” “Sotomayer’s Attire” or “Emanuel Flannels” without permission. But for now, this USPTO decision seems to have put this issue to bed.
PTO focuses on feedback
While the dedicated attention and oft’ times quick responses of Craig Morris and his team at the PTO are making communicating with the Trademark Office much more efficient, it still requires an experienced trademark professional to know the meaning of the diverse electronic choices and to efficiently evaluate how to respond to the non-automated examiners’ office actions.
“Trust me” is a phrase that often presages disaster. Many times, when trust is involved in contractual agreements, the family that does business together winds up in court together. Eva’s Bridal Ltd. discovered that the hard way when a naked trademark license got between trusting family members and the failure to hash out all the details resulted in a loss of trademark protection. Similarly, trusting property buyers lost millions and learned the importance of reading all the terms of an agreement after realizing that the Trump name had been merely licensed to the property developers.
Two new procedural options for trade mark infringement claims in the Federal Court of Canada
Two recent decisions of the Federal Court of Canada and the Federal Court of Appeal offer new procedural options to pursue trade mark infringers in Canada. Typically an action, protreacted discovery and interlocutory motions and a trial were required to seek an injunction, damages, lost profits, or other substantive relief. However, in Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada June 2011) the Federal Court for the first time granted judgment under new summary trial provisions of the Federal Court Rules, setting a meaningful precedent for the expedited procedure. In BBM Canada v. Research in Motion Limited the Federal Court of Appeal held that an application—a summary procedure akin to a motion with no discovery—may be used to pursue an injunction and damages for trade mark infringement and that such claims are not confined to proceeding as an action.
What do Chicago’s Grant Park, moral rights, the Seventh Circuit and wildflowers have in common?
This article examines the decision by the Seventh Circuit Court of Appeals in the case of Kelley v. Chicago Part District within the context of the federal Visual Artists Rights Act of 1990 ("VARA"). The court considered whether a wildflower garden planted and maintained in a public park was a protected "work of visual art" under VARA and whether the park district's reduction and modification of the garden constituted a violation of the creators moral right of integrity. It concluded that the garden did not fall within the purview of VARA because it did not qualify as copyrightable within the meaning of the Copyright Act, lacking the elements of "authorship" and "fixation" required to support copyright and eligibility for protection under VARA. In dicta, the Seventh Circuit questioned the First Circuit's position in Phillips v. Pembroke Real Estate that VARA provided no protection for site-specific art.
Winning chances? Client relations, math, and ethics
Clients and others often ask attorneys for the chances of winning a dispute. Attorneys often answer, but they should not. Mathematically the wrong question is asked; numerical answers likely violate legal ethics by incompetently providing incorrect and often deceptive information. A better response provides both valid case evaluation and client emotional support without fabricating false certainty.