General Interest

April 14, 2014 7:56 PM | Posted by Enriquez, E. Martin | Permalink

To advance U.S. foreign policy and national security objectives, the U.S. maintains laws and regulations that impose economic sanctions against certain countries, individuals, and entities (the "U.S. Sanctions Program").  31 C.F.R. § 501 et seq.  The Office of Foreign Asset Control (“OFAC”) at the Department of the Treasury manages the U.S. Sanctions Program.  The U.S. Sanctions Program prohibits U.S. nationals and U.S. companies from doing business in embargoed or sanctioned countries and from doing business with individuals or entities subject to U.S. sanctions laws and regulations.  Penalties for violating the U.S. Sanctions Program include civil and criminal fines, imprisonment, and the loss of tax credits or export privileges. 

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December 20, 2013 9:57 AM | Posted by Olafson, Shane | Permalink

In most U.S. states, merely using a trademark confers trademark rights to the owner.  As such, many companies question why they should spend time and money registering their trademarks with the United States Patent and Trademark Office (PTO).  There are many reasons to register a mark, but one of the most important reasons was recently highlighted in a case from the First Circuit Court of Appeals (the federal appellate court whose rulings cover Massachusetts, Rhode Island, Maine, New Hampshire and Puerto Rico).  That case is Dorpan, S.L. v. Hotel Melia, Inc., 728 F.3d 55 (1st Cir. 2013).   

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December 12, 2013 4:43 PM | Posted by Olafson, Shane | Permalink

On December 4, 2013, in Petroliam Nasional Berhad (Petronas) v., Inc., the United States Court of Appeals for the Ninth Circuit held that the Anticybersquatting Consumer Protection Act (“ACPA”) does not provide a cause of action for contributory cybersquatting.

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November 15, 2013 5:33 PM | Posted by Pham, Tam | Permalink

One of the questions most often asked of patent attorneys is: “Is this patentable?” Such a question may apply to the questioner’s own invention or to the purported invention of another.

While it may appear to be a simple question, there are actually a few different ways to interpret and answer the question: “Is this patentable?”

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October 17, 2013 3:32 PM | Posted by Brody-Brown, Dana | Permalink

On June 12, 2013, the Trademark Trial and Appeal Board (TTAB) granted two motions for summary judgment based on lack of Applicant’s bona fide intent.

In the first of these decisions, Pacific Poultry Company, Limited v. George D. Stirling, Jr., Opposition No. 91204620 (June 12, 2013) [non-precedential], the Applicant, George D. Stirling, Jr., applied to protect SWEET G’S HULI MARINADE, SAUCE, GLAZE for “retail grocery stores”. Opposer, Pacific Poultry Company, claimed priority, likelihood of confusion, and lack of bona fide intent to use the mark in commerce “as a service mark for retail grocery stores”.  The record reflected that Applicant’s intent was not to operate a retail grocery store.  Instead, the mark was to be used with a food product.  

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October 1, 2013 8:02 PM | Posted by Norcross, Linda | Permalink

If you’re just launching a new business, there are a few things you need to consider before getting too far along in the name game.  Sure, you may have come up with what may well be the most brilliant brand in existence.  Ever.  BUT, before you go slapping that name on everything from shipping labels to stationery, here are three important tips to guide you down the path to building a strong and successful brand identity.

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September 20, 2013 12:09 PM | Posted by Olafson, Shane | Permalink

Many patents are involved in parallel proceedings — post-grant proceedings before the United States Patent and Trademark Office (“PTO”) and infringement litigation in the courts.  What happens when the courts and the PTO do not reach the same conclusion concerning a patent’s validity?  There is little guidance when there is a conflict in the judgments.  However, on July 2, 2013, the United States Court of Appeals for the Federal Circuit addressed the impact of a USPTO post-grant determination of patent invalidity on a damages award by a district court.  In Fresenius USA, Inc. v. Baxter Int’l., Inc., the Federal Circuit clarified what happens when the PTO cancels a claim in a reexamination even after there has been a court judgment.

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September 16, 2013 4:20 PM | Posted by Bachmann, Steve | Permalink
Despite what you may have heard, patents continue to foster competition and innovation and are essential to success in technology driven markets.  To operate successfully in these markets, in-house counsel, program managers, Chief Technical Officers, and other executives in technology companies should know a few basics about patents and implementing a patent program. read more
September 10, 2013 1:45 PM | Posted by Horne, Alexandra | Permalink
On May 31, 2013, the U.S. District Court in the Northern District of Indiana ruled in favor of Plaintiffs Coach, Inc. and Coach Services, Inc. ("Coach") and against Defendants The Treasure Box, Heather Hiatt and Michael Hiatt on claims of trademark infringement and counterfeiting... read more
September 4, 2013 1:20 PM | Posted by Garrison, Sean | Permalink

Frequently, parties enter into IP license agreements in which the licensor grants a license or other rights to a bundle of its intellectual property (patents, copyrights, trademarks, trade secrets, know-how, etc.) pertaining to a particular product or technology.  In many instances, these agreements include both patents and non-patent IP - often referred to as “hybrid” agreements.  In considering the royalties to be charged in hybrid agreements, licensors must be careful to distinguish royalty payments attributable to any licensed patents from payments for the rights to the non-patent IP.  Failing to do so can lead to an unexpected cut-off of the royalty revenue stream.  Stephen Kimble learned the hard way.

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August 29, 2013 4:24 PM | Posted by Garrison, Sean | Permalink

In the course of a corporate restructuring or in the management and reorganization of a company’s IP assets, intra-corporate trademark assignments are not uncommon.  Perhaps a special entity is created to hold all of the company’s IP assets, or a corporate organization with multiple affiliates and subsidiaries may elect to consolidate its trademarks in the ultimate parent company or other entity.  There are any number  of possibilities in which one or more trademarks may be transferred from one corporate entity to another.  No big deal, right?  Well, not so fast.

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July 30, 2013 12:29 PM | Posted by Updegraff, Samantha A. | Permalink

Design patents are often a forgotten form of intellectual property despite the fact that they have been available to inventors and designers for over 150 years.  A design patent protects a new and original ornamental design of a useful product.  For example, a design patent can protect the shape of a bottle or the pattern on the bottom of a shoe or the ornamental design of a unique-looking bird house.  Design patents can be incredibly valuable to a company since they protect “iconic” designs ranging from Apple’s iPhone graphics to the original glass Coca-Cola bottle.

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July 7, 2013 5:46 PM | Posted by Edwards, Nathaniel | Permalink

Singer-songwriter Pharrell Williams recently filed a declaratory judgment suit in the Southern District of New York against of the music group The Black Eyed Peas. owns the trademarks I AM and WILL.I.AM for clothing and entertainment and philanthropic services. The two artists have been in a dispute since sent a cease and desist letter to Pharrell in December 2012 regarding Pharrell’s use of the mark I AM OTHER for clothing and entertainment production.  In April 2013, filed oppositions against Pharrell’s eight pending federal trademark applications for the I AM OTHER mark.  Apparently fed up with’s trademark enforcement tactics, Pharrell filed suit seeking a ruling that his I AM OTHER mark does not infringe the I AM and WILL.I.AM trademarks.

The case raises an issue many trademark owners face when policing their trademarks.  When do enforcement actions cross over the imaginary “actual controversy” line and subject mark owners to potential declaratory judgment suits?  read more
May 28, 2013 5:05 PM | Posted by Updegraff, Samantha | Permalink
Patent Drafting Secrets – Techniques and Templates, a book co-authored by Lewis and Roca patent attorney Samantha A. Updegraff, is now available on  Patent Drafting Secrets - Techniques and Templates was designed and written specifically for inventors. With this short fact-filled book and the template, an inventor can quickly and easily prepare the bulk of a patent application without having to thumb through hundreds of pages of rules and regulations and useless text.  This will not only make the inventor more informed about the patent application, but will also enable the inventor to give their patent attorney an almost-complete patent application that is drafted in the style and language that patent attorneys use, greatly reducing the amount of time and money that the patent attorney will spend working on the patent application.  read more
March 28, 2013 4:28 PM | Posted by Aikman-Scalese, Anne | Permalink
Complaints regarding inadequate protection for trademark owners will apparently not stop the Internet Corporation for Assigned Names and Numbers ("ICANN") from launching its new unlimited gTLD (generic Top Level Domain) program as quickly as possible in 2013. The new web environment will include hundreds of different words appearing to the right of the dot in domain names, in sharp contrast to the existing limited number of authorized strings such as .com, .biz, .net, and .info. Initial evaluations of over 1900 applications for new Top Level Domains have begun to be published by ICANN and will continue through August. Strings containing non-Latin script, known as Internationalized Domain Names ("IDNs"), of which there are over 100 in Chinese, Arabic and other alphabets, will launch first in May or June. read more
February 6, 2013 4:54 PM | Posted by Olafson, Shane | Permalink

Patent law holds that a party can be held liable for direct infringement when that party performs all steps of a patent claim.  In contrast, there is no direct infringement where multiple parties collectively – but independently – perform all steps of a patent claim.  Historically, there could be no indirect infringement without direct infringement, that is, indirect infringement required proof that at least one party performed all steps of the patent claim. 

That precedent changed last August when the Federal Circuit issued its decision in Acamai Tech’s, Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012). 

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October 24, 2012 9:48 AM | Posted by Bayton, Emily | Permalink
Today we bring you Part Two of an article authored by our partner Ms. Emily Bayton and published by Law360 on October 16, 2012.  You can check out Part One of the article here: read more
October 16, 2012 8:22 PM | Posted by Bayton, Emily | Permalink
As an intellectual property lawyer and avid sports fan, I’m always interested in a case involving the legal intersection between sports and IP. There are plenty of IP issues facing the sports industry. Like any other industry, it’s driven by money, much of which is generated from IP. From licensing of team names and logos, to broadcast and sponsorship rights, to merchandise deals, IP plays a large role in the value of the sports industry.

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June 29, 2012 1:45 PM | Posted by Krieger, John L. | Permalink

Here’s the scenario:  You’re a well-known athlete.  You’ve worked hard to become the best in your game.  You wake up one morning, grab your coffee, sit down at your computer and start to read the morning’s news.  Much to your chagrin, you come upon a story about …. you.  Apparently, while you were sleeping, you used Twitter to begin “trash talking” players of an opposing team and making derogatory jokes about the deaths of former players in the league.  But, you don’t have a Twitter account -- you don’t even know how to “tweet.”  Yet, your name is now associated with those damaging comments and it’s all over the Internet and on the news.  What do you do?  What can you do?

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April 27, 2012 4:31 PM | Posted by Willimas, Nikkya | Permalink

Let me first say that I love football and I went to Stanford.  But not when Stanford had good football teams, no, no.  I went to Stanford when we were lucky to win 4 games in the season .  So the recent, phenomenal success of Cardinal football is something I treasure deeply and hold onto with everything I have.  I tell you this so as to acknowledge any bias that may creep into the following.



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March 13, 2012 11:06 AM | Posted by Buntin, Stephanie | Permalink
Everybody knows somebody who seems physically unable to peel his eyes away from his smart phone screen for longer than two seconds, regardless of his visibly offended dinner company or the swerving and honking of oncoming traffic. Some find it merely uncouth, while others cry “addict!” And for that very reason, Research in Motion Limited (“RIM”)’s popular Blackberry smart phone was dubbed “CrackBerry” by its enthusiastic fans. read more
January 25, 2012 4:04 PM | Posted by Edwards, Nathaniel | Permalink

As a follow-up to my colleague Linda Norcross’ excellent blog piece last week, I thought I would provide our blog readers with another entertaining read on the controversial “aesthetic functionality” doctrine of trademark law.  Last February, the Ninth Circuit added to the confusing annals of aesthetic functionality doctrine by denying trademark protection to the iconic design displayed below.


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January 5, 2012 2:21 PM | Posted by Allen, W. West | Permalink
For over a decade, federal district courts have been adopting specialized local rules of practice for patent cases with varying degrees of success. Like the Federal Rules of Civil Procedure, the new local rules for patent cases are designed to promote the just, speedy, and inexpensive determination of patent actions and proceedings. On August 1, 2011, the United States District Court for the District of Nevada became the latest district court to adopt specialized local rules of practice for patent cases. The Court’s new local patent rules are arguably some of the most progressive in the country. So is Nevada now the latest best place in the country for patent litigation? The answer may surprise many: it depends. Parties with particular strong claims or defenses will welcome Nevada’s new patent rules. read more
September 16, 2011 11:27 PM | Posted by Bayton, Emily; Edwards, Nathaniel | Permalink

NCAA Division I-A sports generated an estimated $4.1 billion in revenue in 2009 - a 60% increase in revenue in just five years.  With increased profitability comes an increased number of counterfeiters looking to capitalize on the valuable intellectual property rights of colleges and universities.  Colleges and universities face counterfeiting issues on several fronts - most prominently with tickets and merchandise - and can no longer take a back-seat approach in dealing with counterfeiting. 

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September 2, 2011 3:40 PM | Posted by Horne, Alexandra | Permalink

What’s in a company name? A great deal if you choose the name carefully, as it will identify the company and be recognized by consumers as the source of the company's products and services. With this in mind, you will want to:

1.      Choose a name that is memorable;

2.      Choose a name that is simple and easy to spell;

3.      Choose a name with a positive connotation;

4.      Consider an eye-catching design or logo; and

5.      Consider a distinctive corporate color.

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July 5, 2011 11:47 AM | Posted by Hayden, Bruce | Permalink

The House of Representatives voted 304-117 to pass the “Leahy-Smith America Invents Act” patent reform bill on June 23. A similar bill passed the Senate on March 8 by a vote of 95-5. The next step is reconciliation, where the differences between the two bills will likely be resolved.

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June 24, 2011 5:37 PM | Posted by Aikman-Scalese, Anne | Permalink
Brand owners need to be aware that the complex world of Internet domain name registrations is about to get more confusing. On Monday, June 20, the Internet Corporation for Assigned Names and Numbers (“ICANN”) approved taking applications for an unlimited number of generic Top Level (after the dot) Domains. Qualified registrars may apply for any string of letters after the dot, e.g. (dot)realestate, (dot)casinos, (dot)sports, (dot)toys, (dot)music, or (dot)movies. The new “gTLDs” are expected to increase competition and foster free speech, but they also present a much more difficult trademark enforcement environment as brand owners struggle to ferret out and shut down unauthorized use of their marks and sales of counterfeit goods and services on the web. read more
April 29, 2011 7:22 PM | Posted by Norcross, Linda | Permalink

As Apple fights with to assert exclusive trademark rights in APP STORE for, ahem, a software application store, it may be a good reminder to trademark owners to formulate a strategy for avoiding the worst fate to befall a trademark…genericide. Yes, it is actually as deadly as it sounds. Genericide occurs when a trademark becomes generic, meaning it is no longer an indicator of the source of a particular product or service, but rather, has become synonymous with its general class. 

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April 18, 2011 5:49 PM | Posted by Edwards, Nathaniel | Permalink
Metro State University, a public university located in Denver, Colorado, announced plans in March to introduce state legislation that would allow it to change its name to Denver State University. The University of Denver, a private university located just a few miles from Metro State's campus, is not a fan of the proposed name change. read more
February 10, 2011 3:40 PM | Posted by Edwards, Nathaniel | Permalink

The Pac-10 Conference will add the University of Colorado and the University of Utah to its league next fall and will subsequently undergo a rebranding from the PAC-10 to the PAC-12. Whether rebranding or launching a new brand, one important consideration should be whether the domain names you want to use for your brand are available. The Pac-10 just found out that PAC12.COM - likely the most vital domain name for the launch of the Pac-10’s new brand - is registered to someone else.  

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January 28, 2011 4:03 PM | Posted by Bayton, Emily; Edwards, Nathaniel | Permalink

The National Football League (NFL) will play its 45th annual championship game, more commonly known as the SUPER BOWL, on Sunday, February 6, 2011. The game will pit the Green Bay Packers against the Pittsburgh Steelers at Cowboys Stadium in Arlington, Texas. The SUPER BOWL mark is protected by trademark law, as are the team names, and businesses planning promotions centered around the game should use the SUPER BOWL mark and/or team names cautiously.

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January 27, 2011 4:50 PM | Posted by Garrison, Sean | Permalink
The home page at Blingville, LLC’s website ( currently reads “New Facebook Game Coming Soon!” On August 18, 2010, Blingville, a West Virginia company, announced on its Facebook page that it had begun working on this new Facebook game, and the game has been in Beta testing since then. But will Blingville have to change its name? read more
January 26, 2011 3:11 PM | Posted by Norcross, Linda M. | Permalink
Innovation is a common buzzword these days, as companies search for new and unique ways to distinguish themselves and even turn a profit. How do companies large and small stand out among their competitors in today’s economy? How does a company turn an idea into a billion dollar intellectual asset, which ultimately strengthens its balance sheet and/or attractiveness to potential investors or purchasers? One way is to better understand how to build a solid brand identity that stands out and outlasts the others. When brand clearance and management is an afterthought that follows instead of intersects with the creative process, companies fail to take full advantage of the value of that brand. Companies with an understanding and appreciation for all of the factors that go into building an effective, competitive branding campaign will reap the benefits of a brand identity that enjoys strength, longevity, a more significant impact on the marketplace, and a far greater return on the initial investment. read more
January 26, 2011 12:35 AM | Posted by Edwards, Nathaniel | Permalink

The Western District of Washington is allowing the Microsoft Corporation to move forward with claims for contributory cybersquatting under the Anti-Cybersquatting Protection Act (ACPA) and contributory dilution under the Lanham Act. In an order denying the defendants’ motion to dismiss Microsoft’s claims, the court stated that causes of action for contributory cybersquatting and contributory dilution had never been directly addressed by statute or appellate courts.

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January 24, 2011 10:20 AM | Posted by Edwards, Nathaniel | Permalink

Ever wonder where the UGG brand name originated?  According to a recently filed suit in the District of Minnesota, in the early days of aviation, Australian pilots wrapped their feet and legs with sheepskin to keep warm in unheated airplanes.  Allegedly, the wraps were so ugly, the pilots referred to them as “UGGS.” 

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December 29, 2010 12:45 PM | Posted by Garrison, Sean | Permalink

On December 13, 2010, an equally divided U.S. Supreme Court let stand the decision of the Ninth Circuit Court of Appeals in Costco Wholesale Corp. v. Omega SA that original, copyrighted works legitimately purchased overseas cannot be imported into the United States and re-sold here under the first sale doctrine of U.S. Copyright law.

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December 15, 2010 12:03 PM | Posted by Garrison, Sean | Permalink
Last week, at its Board meeting in Cartegena, Columbia, the Internet Corporation for Assigned Names and Numbers (ICANN) was expected to approve the implementation of a process to increase the number of generic top level domains (i.e. .com, .net, .org., etc.) that could be made available for registration of domain names.  read more
November 11, 2010 11:02 AM | Posted by Olafson, Shane | Permalink
The U.S. Patent and Trademark Office (“PTO”) has announced that it will extend a pilot program that moves applications for environmentally friendly inventions closer to the front of the line. read more
October 26, 2010 8:12 PM | Posted by Olafson, Shane | Permalink
On October 12, 2010, the Supreme Court agreed to review Global-Tech Appliances Inc. v. SEB S.A., No. 10-6, which challenges the Federal Circuit’s standard for induced patent infringement...  read more
October 19, 2010 7:52 PM | Posted by Olafson, Shane | Permalink
Intellectual property accounts for the majority of all property owned by modern corporations. Because of its value, liability for alleged infringement is a major risk facing businesses today. Companies of all sizes may encounter lawsuits for a variety of intellectual property disputes, including patent infringement, trademark or trade dress infringement, copyright infringement, trade secret misappropriation, unfair competition, and privacy violations, just to name a few. read more
October 6, 2010 11:05 AM | Posted by Williams, Nikkya | Permalink
Hard Rock Café International (USA), Inc. (HRCI), the owner of the HARD ROCK trademarks, has sued the owners and operators of the Hard Rock Hotel and Casino in Las Vegas (“HRH”) and the producers and distributors of the reality TV show “Rehab: Party at the Hard Rock” for trademark infringement, trademark dilution, breach of contract, unfair competition and a declaration that the licensing agreement under which the Hard Rock Hotel and Casino operates is terminated.
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September 28, 2010 7:37 PM | Posted by Williams, Nikkya | Permalink

The epic battle that could have been Lindsay Lohan v. E*Trade came to a quiet end last Wednesday when the parties settled and stipulated to withdraw the lawsuit with prejudice.  This after a long summer of heavy briefing, however.  Here’s the tale of the tape for all of you keeping score at home.

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September 21, 2010 6:00 PM | Posted by Fountain, Jonathan | Permalink

Websites beware.  Once a mighty empire, the newspaper industry -- an industry that has blamed the Internet for more than a decade’s worth of declining readership and advertising revenues -- is striking back.  If you own a website and a newspaper article from the Las Vegas Review-Journal (the “Review Journal”) has been posted on your website then you are in the crosshairs and are at risk of being sued for copyright infringement.  Righthaven LLC (“Righthaven”), a Las Vegas-based startup, wants your money and it will take you to federal court to get it.  “Grubstaked” by Stephens Media LLC, the publisher of the Review-Journal, Righthaven is making big business out of suing websites whose users have posted copies of Review Journal articles in website discussion threads, forums, and blogs.  Righthaven has sued website owners and operators located throughout the United States and Canada for violating U.S. copyright laws. 

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September 1, 2010 6:23 PM | Posted by Horne, Alexandra | Permalink


Maker’s Mark Distillery, Inc. (“Maker’s Mark”) brought suit against Tequila Cuervo La Rojena S.A. de C.V., Casa Cuervo S.A. de C.V., Jose Cuervo International, Inc. (“Cuervo”) and their U.S. distributor, Diageo North America, Inc. (“Diageo”) in the U.S. District Court, Western District of Kentucky, at Louisville, alleging that the Defendants violated federal trademark and common law, by producing and distributing a bottle of tequila capped with a red dripping wax seal similar to the seal Maker’s Mark had used for over 50 years. Maker’s Mark alleged (1) federal trademark infringement, (2) false designation of origin, (3) dilution, and (4) common law trademark infringement and unfair competition under the laws of Kentucky.

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July 29, 2010 3:14 PM | Posted by Williams, Nikkya | Permalink

Let’s say you have a website.  And on your website, you allow third-party users to post content, say, their home videos or fan fiction or random comments about whatever it is your website is about.  So one day, you’re sitting around managing your website (like you do) when you get served with court papers; you’ve just been sued for copyright infringement!  But what the copyright owner is suing you for is a copy that one of your third-party users posted to your website, not something that you posted to your website.  Are you left holding the bag or can you get out of this lawsuit?

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July 27, 2010 5:49 PM | Posted by Norcross, Linda | Permalink
You have probably heard these sayings a time or two: “Nice guys finish last.” “The early bird catches the worm.” “He who laughs last, laughs best.” These familiar idioms could all be associated with running a successful ambush marketing campaign. read more
July 21, 2010 5:55 PM | Posted by Bayton, Emily | Permalink
Apple’s slogan - There’s An App for That™ - is catchy and seemingly true.  Apple markets and sells applications for its iPhone product that cover almost anything a consumer could want . . . applications for cooks, students, moms and dads…applications for the outdoors, work, music, managing money, traveling and many more.  In a speech at the 2010 Apple Worldwide Developers Conference, Steve Jobs stated that Apple passed 5 billion total applications downloaded, with over $1 billion paid to application developers - these are staggering numbers.  But with the good, comes the bad... read more
June 23, 2010 12:07 PM | Posted by Williams, Nikkya | Permalink

Bimbo Bakeries USA, Inc., the owner of Thomas' English Muffins, Oroweat brand breads and the recently launched Sandwich Thins, received a preliminary injunction against its former Vice President of Operations for California, Chris Botticella, preventing him from working for its competitor, Hostess Brands.  The reason: Botticella was privy to nearly all of Bimbo's trade secrets.

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June 16, 2010 8:13 PM | Posted by Hiscox, Frank S. | Permalink
One of the greatest challenges facing those who market innovative products or services, is educating consumers about what the new products or services are, and what they can do for the consumer. Consumers usually won't buy something unless they understand what it is and have reason to want it. And one of the greatest tools available to the marketer to help meet this challenge is logical organization or categorization. If consumers can come to understand what the new thing is and what it does, the chances improve that they may want one, so if marketers can categorize the new thing as similar-to-but-better-than something familiar, chances improve that the consumer can develop a need or desire for it. As savvy marketers have known for many years, product categorization is the fundamentally important bedrock upon which much else rests, and whole categories of products and lines of specific products within them have been developed based on a clever marketer's recognition that consumers can, and will, draw finer and finer distinctions that influence their purchasing decisions if encouraged to do so. read more
May 14, 2010 11:30 AM | Posted by Olafson, Shane | Permalink
After remand from the Federal Circuit, the United States District Court for the Southern District of Texas ruled that, due to the penal nature of the false marking statute, the appropriate penalty for marking a product with an incorrect or invalid patent number should be assessed at the maximum price the articles were sold, rather than the profit margin or economic benefit to the defendant... read more
May 6, 2010 5:54 PM | Posted by Garrison, Sean | Permalink

On April 28, 2010, the District Court for the Eastern District of Virginia granted summary judgment in favor of Google that its use and sale of “Rosetta Stone” as a keyword in its Adwords program did not infringe upon the Rosetta Stone trademark for language instruction software products.  This decision represents the most recent victory for Google in its battle against trademark owners claiming that the Adwords program violates their rights...

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April 26, 2010 4:51 PM | Posted by Edwards, Nathaniel | Permalink

The United States Supreme Court recently said it would consider whether Costco Wholesale Corp.’s resale of Omega SA watches, legally purchased by Costco in foreign countries, constitutes copyright infringement.  Omega filed suit after Costco imported Omega watches into the United States and sold 43 of them in California in 2004.  The Court’s decision will hinge on whether copyright law’s “first-sale doctrine” applies to sales outside of the United States.

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April 7, 2010 11:19 AM | Posted by Williams, Nikkya | Permalink
As you’ve probably heard by now, a few weeks ago, Lindsay Lohan sued E*Trade over its “milkaholic Lindsay” commercial that originally aired during the Super Bowl and also aired during the Vancouver Winter Olympics (If you haven’t seen it yet, you can find it here ( According to the complaint, E*Trade violated Lohan’s right of publicity under Sec. 51 of the New York Civil Rights Law, her right of privacy and her common law right of privacy to exclusive control of commercial use of her likeness, name, characterization and personality. How? By using Lindsay Lohan’s name and characterization in its ad. She is seeking an injunction preventing E*Trade from using the ad or any other ad using Lohan’s likeness; an injunction requiring E*Trade to recall and turn over all copies of the ad; an accounting of E*Trade’s profits; $50 million in compensatory damages; $50 million in exemplary damages and interest, costs and attorneys’ fees. That’s at least $100 million in damages before any accounting of profits, for those of you keeping score at home. read more
March 23, 2010 10:43 AM | Posted by Norcross, Linda | Permalink

Worth an estimated $19 million, the trademark TAVERN ON THE GREEN has become the subject of a bitter feud between the City of New York’s municipal government, and the descendant’s of Warren LeRoy, the last restaurateur to operate the establishment until its doors were closed in December of 2009.  The City has owned the parcel of land situated on the southwestern edge of Central Park since 1934.  The land, initially housed a sheep barn, but was renovated that same year to accommodate a seasonal restaurant called Tavern on the Green, which was so named by then Parks Commissioner, Robert Moses.  The City continued to pay the bulk of the costs for subsequent renovations.

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March 23, 2010 10:30 AM | Posted by Campbell, Flavia | Permalink
Last month, French high-end accessories manufacturer Louis Vuitton filed a lawsuit in federal court in New York against Hyundai Motor America over the use of an alleged imitation of the Louis Vuitton trademark on a commercial aired during the XLIV Super Bowl. read more
March 16, 2010 6:30 PM | Posted by Fountain, Jonathan | Permalink
Section 411(a) of the Copyright Act of 1976 (the "Copyright Act”) states, in part, the following: “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” 17 U.S.C. § 411(a). read more
March 9, 2010 8:00 AM | Posted by William, Nikkya | Permalink
Having won the Academy Award for Best Picture and Best Screenplay, you would think that the players behind the film would be riding high on their success. But, they’ve still got a pretty major lawsuit still hanging over their heads. read more
February 23, 2010 5:24 PM | Posted by Olafson, Shane | Permalink

The United States District Court for the District of Arizona recently dealt a strong blow to a company for willfully infringing Cricket Communication’s intellectual property rights.  In Cricket Communications, Inc. v. Nazir d/b/a GSM Cellular, Case No. 08-CV-00295, the Court held that the defendant had willfully infringed Cricket’s trademark rights in the Cricket® trademark.  The Court permanently enjoined the defendant from further infringing acts, and ordered the defendant to pay Cricket’s attorneys’ fees in their entirety.  In doing so, the Court found that “Defendant’s behavior throughout the course of this litigation may certainly -- at the very least -- be considered deliberate, willful, and fraudulent,” rendering the case exceptional under 15 U.S.C. § 1117(a).   

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February 2, 2010 11:30 AM | Posted by Williams, Nikkya | Permalink
Over the weekend, the NFL sent a letter to Louisiana Senator David Vitter, backing off its claim that the NFL had trademark rights in the phrase “Who Dat” and calling the debacle a “significant misunderstanding.” Their clarification is that the NFL is not claiming “Who Dat,” they’re claiming “Who Dat” when it’s used in conjunction with Saints trademarks, like the Saints’ version of the fleur de lis. Therefore, as an NFL spokesman explained, the t-shirts one targeted business owner was selling were perfectly okay as long they are not advertised using any of the Saints marks. The business owner was apparently advertising the t-shirts as Saints gear read more
January 29, 2010 3:25 PM | Posted by Williams, Nikkya | Permalink

“Who dat? Who dat? Who dat say dey gonna beat dem Saints?” Apparently, the National Football League

A television station in New Orleans reported that earlier this week the NFL sent cease and desist letters to several small business owners regarding their use of “Who Dat” and the fleur de lis on merchandise and now the Who Dat Nation is up in arms.

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January 27, 2010 3:52 PM | Posted by Williams, Nikkya | Permalink

Ilich Ramirez Sanchez, aka world-famous terrorist Carlos the Jackal, wants final cut of a French documentary about his life and is willing to sue to get it, according to a story in the Washington Post.  Ramirez, sentenced to life in a Paris prison, has filed suit against French production company Film in Stock, demanding that it give him three months to review the content of, and impose changes to, the documentary once it’s completed in order to protect his intellectual property rights in his name and biographical image. He’s worried that the documentary will be a propaganda film unless he can monitor its accuracy. Isabelle Coutant-Peyre, Ramirez’s attorney and wife, also alleged that Film in Stock planned to portray Ramirez as the instigator of several terrorist attacks for which he was not convicted in violation of his right to presumption of innocence.

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January 14, 2010 5:27 PM | Posted by Williams, Nikkya | Permalink
Stanford (Go Cardinal!) wasn’t the only thing in Northern California upsetting the balance of the National Collegiate Athletic Association (“NCAA”) during the college football season. Since May 2009, eight putative class action lawsuits have been filed in the Northern District of California accusing the NCAA and its authorized licensing company, Collegiate Licensing Company (“CLC”), of violating either the Sherman Antitrust Act or individual student-athletes’ rights of publicity or both in the licensing of student-athletes’ likenesses to third parties. There’s also another case pending in the Eastern District of Tennessee. The name plaintiffs are all former student-athletes who were members of either NCAA Division I football teams or men’s basketball teams. read more
December 11, 2009 4:37 PM | Posted by Bayton, Emily | Permalink
On October 5, 2009, the FTC announced that it approved final revisions to its “Guides Concerning the Use of Endorsements and Testimonials in Advertising” (the “Guides”), which address endorsements by consumers, experts, organizations, and celebrities, as well as required disclosures of relationships or connections between advertisers and endorsers. The changes, which go into effect December 1, 2009, are targeted, in part, to the increased product sponsorships and endorsements in new-media formats, such as endorsements made by bloggers, endorsements by Twitter and Facebook users and endorsements made in other social media outlets. read more