Hot news itemIntellectual Property, September 2014The USPTO is seeking feedback from U.S. trademark owners, practitioners, and other interested parties about a proposal to allow amendments to identification of goods and services due to technology evolution.
Is your mark REALLY in use on EVERYTHING?By Joseph T. NaborIntellectual Property, September 2014When a trademark owner says the mark is in use on everything in the trademark registration, they really only mean it half of the time.
Lessons in timing from the Washington Redskins trademark cancellationBy Kay WeilerIntellectual Property, September 2014The controversy surrounding the trademarks and logos associated with D.C.’s beloved football team is not new. So why did it take so long for the trademark to be canceled, and can the Redskins organization overcome the decision on appeal? The answer is complex and uncertain.
Intellectual Improbabilities™By Daniel KeganIntellectual Property, June 2014Eclectic selective summaries of IP agency changes, IP cases, noteworthy events, and curiosities.
Me and my Shadow—World-famous magician, Teller, wins summary judgment against copycat magicianBy Steven L. Baron & John D. FitzpatrickIntellectual Property, June 2014Magician Teller prevailed on a summary judgment motion for copyright infringement against Dogge, a Dutch performer who re-enacted Teller’s famous “Shadows” illusion. Although the technique of a magic trick is often unprotectable by copyright, Teller registered his act as a “dramatic pantomime,” protecting his exclusive right to perform the illusion. Defendant’s pro se defenses were unpersuasive.
Should there be a presumption favoring awards of attorney fees in copyright litigation?By William T. McGrathIntellectual Property, June 2014Section 505 of the Copyright Act allows courts to award attorney fees to the prevailing party in a copyright case. Twenty years ago, the Supreme Court in Fogerty v. Fantasy, Inc. held that courts should assess fees using an “evenhanded” approach rather than one favoring a prevailing plaintiff. The Court emphasized the importance of the “equitable discretion” of the district courts in awarding fees. But in recent years, the Seventh Circuit has called for “presumptive entitlement” of attorney’s fees to the prevailing party. This paper points out the number of problem with such a presumption, including the difference between a presumption and an inference and the chilling effect on plaintiffs with legitimate claims.
Spot the errorIntellectual Property, June 2014People make mistakes, even judges. Not differences of opinion or judgments, but simple facts. Two recent federal cases offer, to IP professionals, the opportunity to spot a glaring error in each.
Creatives, entrepreneurs, and startupsBy Daniel KeganIntellectual Property, May 2014While Creatives, Entrepreneurs, and Startups follow unique paths, there typically are a few major pitfalls to minimize. Here are 19 brief guidelines; some are helpful reminders for established endeavors.
Da Bears “Shufflin’ Crew” sues over alleged unauthorized use of the Super Bowl ShuffleBy Denny EsfordIntellectual Property, May 2014In 1985 two dozen Chicago Bears football players made a music video hit, the "Super Bowl Shuffle.” In January 2014 many of the “Shufflin’ Crew” sued the record producer’s widow for breaching the recording contract by selling licenses to third-parties.
Intellectual Improbabilities™By Daniel KeganIntellectual Property, May 2014Eclectic selective summaries of IP agency changes, IP cases, noteworthy events, and curiosities.
Lexmark clarifies Lanham False Advertising TestBy Joseph T. NaborIntellectual Property, May 2014Zone of interest and proximate cause required for Lanham Act false advertising claim. Lexmark Int’l, Inc. v. Static Control Components, Inc., US No.12-873.
Careers in IP Law—Book reviewBy Joseph T. NaborIntellectual Property, February 2014The second of two reviews of the ABA's Careers in IP Law: Avenues and Opportunities, April 2013, from the perspectives of a new attorney and an experienced supervising attorney.
The dangers corporations face with assignments of intent-to-use trademark applicationsBy Robert A. CohenIntellectual Property, February 2014The Lanham Act has strict rules for assigning intent-to-use trademark applications. A recent precedential TTAB decision confirms that these rules apply to assignments between independent companies, as well as parent-subsidiary families.
EU jurisdiction: Law applicable to disputes arising from commercial agency agreementsBy Claire PerezIntellectual Property, February 2014The Court of Justice of the European Union (17Oct2013) ruled on the question of the law applicable to international commercial agency contracts, specifically, whether the governing law elected by the parties to a commercial agency contract can be disregarded in favor of the law of the forum.
Intellectual Improbabilities™By Daniel KeganIntellectual Property, February 2014Eclectic selective summaries of IP agency changes, IP cases, noteworthy events, and curiosities.
Seventh Circuit questions usefulness of trademark surveysBy Eric R. WaltmireIntellectual Property, February 2014Defendant, restaurant operator planned to expand its restaurant sales to food products in grocery stores under its CRACKER BARREL & Design logo. Kraft, maker of CRACKER BARREL cheese, won an injunction, affirmed by the Seventh Circuit, which questioned consumer survey utility in trademark disputes.
Surveys, science & skepticismBy Daniel KeganIntellectual Property, February 2014Expert witnesses are used in diverse areas of the law, including intellectual property, and are typically paid for their work, as attorneys commonly are. A skilled expert may find consistent employment helping fact finders understand the evidence and implied facts.
The dangers corporations face with assignments of intent-to-use trademark applicationsBy Robert A. CohenCorporate Law Departments, December 2013The Lanham Act has very strict rules concerning the assignment of intent-to-use trademark applications. A recent precedential TTAB decision confirms that these rules apply to assignments between independent companies, as well as parent-subsidiary families.
Breaches of privacy and data—New risks, new insuranceBy Daniel KeganIntellectual Property, October 2013The Internet makes everything much easier, including breaches of privacy and data. Federal and state laws now create employer and data-custodian liability for such breaches. An information audit is suggested. Insurance targeted for these liabilities is now available.
Intellectual Improbabilities™By Daniel KeganIntellectual Property, October 2013Brief summaries or comments on interesting or important IP developments.
Torrent Wars: Copyright trolls, legitimate IP rights, and the need for new rules vetting evidence and to amend the Copyright ActBy Jeffrey J. AntonelliIntellectual Property, October 2013The problems caused by the current wave of BitTorrent copyright litigation flooding the federal courts is a classic case of the law needing to catch up to the current state of technology. In the article Torrent Wars the writer describes the Litigation abuses need to be curbed to avoid the continued burdening of innocent individuals and families becoming defendants to federal copyright litigation. Amendments to the Copyright Act are suggested to minimize the cap on statutory damages to $5,000 for consumers who infringe without a monetary purpose, rather than $150,000, as well as to screen complaints based on the Maryland District Court’s special Master process.
Trademark Trial and Appeal Board not flip about the birdBy Steven L. Baron & Natalie A. HarrisIntellectual Property, October 2013The Lanham Act forbids registration of "immoral" and "scandalous" trademarks. Some decisions appear arbitrary. Luxuria's beverage bottle with raised middle finger was refused registration.
How to stop a competitor from getting a patentBy Eric R. WaltmireIntellectual Property, June 2013A review of the options to consider in light of a known or suspected pending patent application.
Joint CLE in Colorado?Intellectual Property, June 2013If a CLE session in Boulder, CO in 2014 sounds appealing, make sure your voice is heard!
Seventh Circuit addresses trademark confusion in movie titleBy Steve Mandell, Steven L. Baron, & Elizabeth MorrisIntellectual Property, June 2013The Seventh Circuit recently affirmed a Northern District of Illinois court’s dismissal of a trademark case where a movie title allegedly infringed upon the name of a musical group.
