• IP BLAWG

    Nerdy High

    Beverly A. Berneman
    8/24/21

    In Brief:  Cannabis edibles cannot use a variation of non-cannabis trademark for candy.

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  • IP BLAWG

    Honestly

    Beverly A. Berneman
    8/17/21

    In Brief:  Failure to be honest during a lawsuit can result in the court vacating a judgment.

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  • IP BLAWG

    Glittery Fish Sticks and Tater Tots

    Beverly A. Berneman
    8/10/21

    In Brief:  Fleeting use of a copyrighted work in a documentary is fair use.

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  • IP BLAWG

    The Sting That Narrowed the Sting of Computer Fraud

    Beverly A. Berneman
    8/3/21

    In Brief:  The US Supreme Court pretty much removed the stinger from the hornet that was Computer Fraud and Abuse Action (CFAA).

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  • IP BLAWG

    A Thriller Judgment Against the Tax Man

    Beverly A. Berneman
    7/27/21

    In Brief:  In a recent decision, the Tax Court determined the value of Michael Jackson’s image at the time he died.

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  • IP BLAWG

    Putting Confusion to Bed

    Beverly A. Berneman
    7/20/21

    In Brief: Initial interest confusion is still alive (sort of) despite a lot of criticism.

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  • IP BLAWG

    Who Judges Whom?

    Beverly A. Berneman
    7/13/21

    In Brief:   The US Supreme Court held that Patent Trial and Appeal Board judges need oversight by the Director of Patents.

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  • IP BLAWG

    Clearly, the Clear Brand Wasn’t Clear

    Beverly A. Berneman
    6/22/21

    In Brief:  The Trademark Trial and Appeal Board refused to register “Clear” for opaque goods.

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  • IP BLAWG

    No Silver Lining for the Producer

    Beverly A. Berneman
    6/15/21

    In Brief: The producer of Silver Linings Playbook won’t see all of the backend.

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  • IP BLAWG

    Just in Time for Summer BBQ

    Beverly A. Berneman
    6/8/21 1

    In Brief:   Metchup survives a trademark challenge, but barely.

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  • IP BLAWG

    Bankruptcy Doesn’t “Un-Terminate” a Patent License.

    Beverly A. Berneman
    5/25/21

    In Brief:  Terminating a patent license prior to the filing of a bankruptcy doesn’t result in an avoidable fraudulent transfer.

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  • IP BLAWG

    Copyrighted Flowers Have Only So Many Damages Petals

    Beverly A. Berneman
    5/18/21

    In Brief:  A plaintiff can’t get multiple statutory damages awards for the infringement of one work.

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  • IP BLAWG

    Wrinkly Excuses

    Beverly A. Berneman
    5/11/21

    In Brief:   A trademark adopted in bad faith will not be registered.

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  • IP BLAWG

    Oh, I Was Supposed to Keep it a Secret?

    Beverly A. Berneman
    5/4/21

    In Brief:  The duty to keep a trade secret arises at the time the secret was acquired.

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  • IP BLAWG

    Musical Tushies Means Something More Than You Think

    Beverly A. Berneman
    4/27/21

    JHR Entertainment LLC filed an intent to use application for the trademark “Musical Tushies”. The trademark was going to be used for musical greeting cards that included images of the posteriors of humans and animals. JHR disclaimed the word “Musical” because it was descriptive of a feature of the cards. The Examining Attorney refused registration arguing that “Tushies” is descriptive of a feature of the goods. 

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  • IP BLAWG

    SCOTUS Has Spoken on Fair Use

    Beverly A. Berneman
    4/13/21

    Oracle America, Inc. owns the copyright to the Java computer language. In 2005, Google LLC acquired Android and wanted to build a new software platform for mobile devices. To allow the programmers familiar with Java to help build the platform, Google copied about 11,500 lines of code from the Java program. These lines of code are part of a programming tool called that’s called an “Application Programming Interface (API)”. 

    Oracle sued for copyright infringement.

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  • IP BLAWG

    Fair Use Gets Transformed

    Beverly A. Berneman
    4/6/21

    In a recent blog post, I looked at the meaning of transformative use as it relates to fair use in a suit involving well-known photographer, Lynn Goldsmith, and The Andy Warhol Foundation for the Visual Arts, Inc. Lynn had taken some photos of the music artist, Prince. Vanity Fair magazine had licensed one of Lynn’s photos and commissioned Andy Warhol to create paintings from it for an article. Warhol then went a step further and used Lynn’s other photographs as the foundation for series of Prince paintings. Years later, Vanity Fair published an article using Warhol’s paintings. This was when Lynn learned about Warhol’s additional paintings. Lynn threatened to sue for copyright infringement. The Warhol Foundation brought a suit for declaratory judgment that the additional paintings were fair use. The district court held that Warhol’s treatment of Lynn’s photographs was transformative and therefore fair use.

    Andy Warhol’s art was innovative. But it may not have been transformative when it comes to fair use.

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  • IP BLAWG

    Menu Patent is Invalid No Matter How You Slice It

    Beverly A. Berneman
    3/30/21

    Ameranth, Inc. sued numerous pizza chains and delivery companies for patent infringement relating to its patents for menus. But it met its match with Domino’s Pizza Inc.

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  • IP BLAWG

    Goodwill Clucking

    Beverly A. Berneman
    3/23/21

    For the Mother Cluckers trademark saga, we need a little background about goodwill. A trademark establishes a connection between the owner’s goods and services and the consumer. That connection is the goodwill in the trademark. In order to be effective, a trademark assignment requires the assignment of the goodwill attached to it. 

    Assigning goodwill along with the assignment of a trademark isn’t form over substance.

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  • IP BLAWG

    A Lot of Mine and Some of Yours

    Beverly A. Berneman
    3/16/21

    Hiller LLC provides plumbing, heating, cooling and electrical services to residential and commercial customers. Hiller was a member of Success Group International that offers management advice and customer service training. Success Group used licensed copyrighted training manuals owned by its predecessor, Clockwork IP LLC.

    Hiller decided to create its own training materials and hired an independent contractor who conducted a series of workshops and researched Hiller’s business. The end product was an HVAC technicians Guide. The Guide had original illustrations, its own content and its own arrangement of the information. Small portions of the Guide incorporated information that had been contained the Success Group training manuals. The independent contractor assigned the copyright in the Guide to Hiller.

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  • IP BLAWG

    Bubble, Bubble, Toil and Seltzer

    Beverly A. Berneman
    3/9/21

    Molson Coors Beverage Company sells a hard seltzer called Vizzy. Future Proof Brands, LLC sells a hard seltzer called Brizzy. Future Proof sued Coors for trademark infringement alleging that Vizzy is likely to cause confusion with Brizzy.  

    Even when two product names sound similar, a likelihood of confusion isn’t automatic.

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  • IP BLAWG

    Sometimes, It’s What You Don’t Say

    Beverly A. Berneman
    3/2/21

    The US Supreme Court won’t be weighing in on some interesting cases in the world of IP. Here are just a few of them by topic:
    Copy

    • rights in Fictional Characters
    • Right to Challenge Patents
    • Trademarks
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  • IP BLAWG

    A Useful Chalk Holder

    Beverly A. Berneman
    2/23/21

    In Brief:  Copyright does not protect “useful articles” and design patents don’t always protect against infringement.

    Sidewalk chalk has been around a long time. Lanard Toys Ltd. designed chalk holders that looked like No. 2 pencils. Lanard sold the chalk holders to distributors and toy store chains like Toys R Us.  Lanard sought and obtained both a registered copyright and a design patent.

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  • IP BLAWG

    Fruit Bowl Battle

    Beverly A. Berneman
    2/16/21

    Most people are familiar with Apple Inc. and its apple logo. Apple Inc. and its products are ubiquitous and pervasive. At any time, a person can be wearing one of their watches, talking on one of their phones and watching a video on one of their tablets.

    PrePear is a new app that allows the user to save and organize recipes, create meal plans, shop efficiently for food and prepare healthy foods. PrePear adopted a pear logo, which makes sense considering the pun in the name. When PrePear sought to register its pear logo as a trademark, USPTO’s Examining Attorney didn’t see a likelihood of confusion between the pear logo and any other logo. The Examining Attorney cleared the application for publication.

    Then, Apple filed an opposition.

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  • Benefits Bulletin

    401(k) Cyber Theft - Who Is Responsible?

    Andrew S. Williams
    2/11/21

    Courts are now sorting out who is responsible when an impostor diverts a participant's retirement funds with fraudulent distribution requests.

    Can the employer, as the plan sponsor, be held responsible when an outside service provider honors a suspicious distribution request?

    One federal court recently dismissed such a case against the employer because the plan's website provider was alleged to have processed and authorized a fraudulent online distribution request without adequate participant confirmation. However, employers are plan fiduciaries with a duty to select and monitor the performance of plan service providers. This opens the door to potential claims against employers for their alleged failure to pick service providers with adequate cyber security practices - even if the employer's own data systems are secure and well maintained.

    What should an employer do about this?

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