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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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 will.i.am of the music group The Black Eyed Peas.  will.i.am 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 will.i.am 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, will.i.am filed oppositions against Pharrell’s eight pending federal trademark applications for the I AM OTHER mark.  Apparently fed up with will.i.am’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
June 25, 2013 6:39 PM | Posted by Williams, Nikkya | Permalink
How many times have you sung “Happy Birthday” in your life?  Or heard it sung?   Now, have you ever wondered whether you (or the hundreds of millions of other people who sing the song) are infringing someone’s copyright in the song?  I’m hoping your answer (assuming you’re the average American) is “No!“  However, that question is at the center of a new lawsuit and proposed class action filed last week in the Southern District of New York. read more
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: http://www.lrlaw.com/ipblog/blog.aspx?entry=601 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 2, 2012 4:14 PM | Posted by Brody-Brown, Dana | Permalink

Last month, the United States Court of Appeals for the 11th Circuit heard arguments on Appeal from a 2009 decision by the Northern District of Alabama in University of Alabama Board of Trustees v. New Life Art Inc.

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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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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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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
April 5, 2011 6:06 PM | Posted by Williams, Nikkya | Permalink
As I posited a few weeks ago, the major Hollywood studios have sued start-up Zediva for copyright infringement. Warner Bros., Columbia Pictures, Disney, Paramount, Twentieth Century Fox and Universal filed suit in the Central District of California yesterday against WTV Systems, Inc., WTV Systems, LLC and Venkatesh Srinivasan, the founder and CEO of Zediva. You can find a copy of the filed complaint at http://www.mpaa.org/Resources/2146a1b0-20bd-48ce-a473-f5f27812ba29.pdf read more
March 17, 2011 12:25 PM | Posted by Williams, Nikkya | Permalink
Zediva, the newest kid on the block in online movie viewing, went live this week after a year in beta with their concept for letting the public watch new release DVDs online without the wait time imposed by movie distributors on competitors like Netflix and Amazon. Their concept is almost comically common-sense simple: buy DVDs on the day they become available at retail and use DVD players to play them, but send the picture and audio over the Internet to whomever rented the movie. 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 (www.blingville.com) 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
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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August 24, 2010 6:44 PM | Posted by Garrison, Sean | Permalink

            On August 20, 2010, Nevada federal district Judge James Mahan denied Everest Gaming Limited’s motion for a preliminary injunction to stop Harrah’s Interactive Entertainment, Inc.’s continued use of the EVEREST POKER trademark in connection with the 2010 World Series of Poker.  Everest claimed that a Promotional Agreement, previously entered into by Harrah’s and Everest’s predecessor-in-interest, Ultra Internet Media, S.A. (“UIM”), that authorized the use of the EVEREST POKER mark for the 2008, 2009 and 2010 World Series tournaments had been effectively terminated as of April 1, 2010.  In his order, Judge Mahan ruled that Harrah’s continued use of the EVEREST POKER mark in connection with the 2010 World Series, which began in May, was improper only if the Promotional Agreement had been terminated.  However, he concluded Everest had not, at least at this stage of the proceedings, satisfied its burden of proving that it was likely to succeed on the merits of its claim that the Promotional Agreement had in fact been terminated.  Accordingly, Judge Mahan denied Everest Gaming’s request for an injunction against Harrah’s finding that on the evidence before him it was unclear whether the Promotional Agreement had been terminated or not.

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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
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 (www.etrade.com/tv)). 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 26, 2010 11:02 AM | Posted by Edwards, Nathaniel | Permalink

Melvin L. Vinson recently filed a trademark infringement suit against NIKE in the Western District of Wisconsin alleging trademark infringement and unfair competition based on Vinson’s trademark registrations for the MELO and MELO GEAR and Design marks for shirts, pants, hats and other apparel. 

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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 9, 2010 11:07 AM | Posted by Kouchoukos, Robert | Permalink
After several years of waging an anti-piracy litigation campaign against the unauthorized downloading and file sharing of recorded music, the recording industry may soon find itself playing defense as legal notices served on record labels by recording artists asserting termination of the labels’ sound recording copyrights start to take effect on January 1, 2013. read more
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 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