• Fuel for the Game

    8/14/18

    Trademark fair use can win the race.  SportFuel, Inc. sued PepsiCo, Inc. for trademark infringement. SportFuel alleged that PepsiCo’s slogan “Gatorade The Sports Fuel Company” infringed on its trademark. The attached image shows SportFuel’s use of its trademark on the left and PepsiCo’s use of its slogan on the right. The court granted summary judgment to PepsiCo on the basis of trademark fair use. The court cited factors that weighed in favor of fair use. First, the Gatorade house mark appeared more prominently than the tag line which lessens the possibility that the tag line would be seen as an indicator of source. Second, the judge found that the words “sports fuel” were merely descriptive.

    WHY YOU SHOULD KNOW THIS. Descriptive marks have a hard time getting trademark protection. An unprotectable descriptive mark uses identifiers that others in the same industry will need to describe their products or services. Some descriptive marks can achieve trademark status when they are more suggestive than descriptive or they’ve been used long enough for the public to connect the descriptive mark with the goods or services. This case was a close call. The words “sports” and “fuel” do not appear together in any dictionary. Fuel is often used with vitamins and supplements but more often it’s used with either food consumption or energy sources for machinery. So the combination of the words may be more suggestive of vitamin supplements than merely descriptive. There’s no word on whether SportFuel intends to appeal the summary judgment.

  • Percentages Can Sink Copyright Infringement

    8/7/18

    Copyright infringement needs more than ‘sort of’ similarity. Experian Information Solutions, Inc. registered the copyright for a database containing consumer names and addresses. Experian’s employees made some selections in adding data, reconciling discrepancies, and discarding useless information. Experian licenses access to its database to companies for use in marketing campaigns. Nationwide Marketing Services Incorporated is Experian’s competitor. Nationwide is relatively new to the market and much smaller than Experian. Experian got an offer to purchase a Nationwide’s database of names of addresses. Experian tested Nationwide’s database  against its own and came up with a 97% match rate.  Experian brought suit for copyright infringement and trade secret misappropriation against Nationwide. The Ninth Circuit Court of Appeals affirmed the district court’s order for summary judgment in Nationwide’s favor on the copyright claim. The court held that the selection and arrangement process was sufficient to create minimal protection in Experian’s database. But, Experian did not prove infringement. Neither side could produce the databases as they appeared at the time of the alleged infringement. Experian could only show an 80% match rate between the current versions of the two databases. That wasn’t enough for copyright infringement. Experian’s trade secret misappropriation claim was remanded back to the district court.

    WHY YOU SHOULD KNOW THIS. Facts are not copyrightable. However, the arrangement of facts or a compilation is copyrightable. A compilation of facts has only minimal copyright protection. That’s because no matter how you look at it, you can’t own the underlying facts. Copyright infringement occurs when the infringing work is substantially similar to the original work. Now we know that 80% similarity was not enough similarity for infringement. This case also points out that if you’re going to claim copyright infringement, be sure to preserve the copyrighted works as they appeared at the time of the alleged infringement. And be sure to tell your alleged infringer to preserve its version of the works.

  • Empty Tech Value Means Empty Pockets

    7/31/18

    Investing in tech companies with issues can be hazardous to your retirement funds. VirnetX, a publicly traded company, supposedly sells Internet connectivity and security software. By all reports, sales of its products don’t actually generate much revenue. Instead, VirnetX makes a lot of money suing other companies who allegedly infringe on its patents. Although it was successful in suits against Microsoft and Apple, VirnetX saw its heyday dwindle after the Supreme Court’s Alice Corp. v. CLS Bank International that invalidated a lot of software patents. For Dr. Poppell, an eye doctor in Florida, VirnetX’s woes proved to be the downfall in Dr. Poppell’s investment strategy. Despite warnings from financial managers, Dr. Poppell, who had no financial training or background, personally administrated the 401(k) plan for his employees. Using Internet research, Dr. Poppell invested over half of his employees’ 401(k) money in VirnetX. VirnetX stock fell precipitously. As a result, the plan participants lost about 53% of their 401(k) investments. When the good doctor’s employees complained about the large losses, he terminated the 401(k) plan. When they complained about that, he fired them. The plan participants sued Dr. Poppell and he settled for less than a third of the losses. Then the Department of Labor got involved and required Dr. Poppell to make the plan participants whole.

    WHY YOU SHOULD KNOW THIS. Dr. Poppell is surely an example of what not to do when as the administrator of a 401(k) plan. But it all started with a high risk and heavy investment in a company that, by all reports, is a patent troll. A patent troll usually has no real inventions (or real inventions that don’t result in much revenue, are driven by lawyers rather than scientists, don’t develop, sell or license any real products, and assert weak patents to get settlements in cash or through licensing. These types of companies usually fly under the publically held stock radar. But for any publicly traded stock in the tech industry, be sure to check the company out thoroughly before making any type of investment.

  • Photos of Teeth Lack Copyright Bite

    7/24/18

    Every photo doesn’t automatically have the veneer of copyrightability. Dr. Mitchell A. Pohl is a cosmetic dentist who is very proud of his work. He posted before and after pictures of one of his patients on his website. The photos showed the patient’s unfortunate ‘before’ smile (teeth, lips and small area around the mouth) and her ‘after’ beautiful healthy smile. Dr. Pohl registered the photos with the US Copyright Office. Then Dr. Pohl found seven websites that used his photos. He sued the alleged infringer, MH SubI, LLC d/b/a Offcite, for copyright infringement. While Dr. Pohl obviously does fantastic work, his photos didn’t bridge the gap into copyrightable subject matter. The District Court for the Northern District of Florida performed the judicial version of a root canal and granted Offcite’s motion for summary judgment. The court held that Dr. Phol’s self-serving affidavit was as convincing as “plaque on a molar” and no reasonable jury could find that the photos were creative enough for copyright protection. The court later performed another extraction by denying Dr. Pohl’s motion to reconsider.

    WHY YOU SHOULD KNOW THIS. A work has to meet a minimum standard of creativity to be copyrighted. As the court noted in this case, “Meeting the standard for creativity is not like pulling teeth”. Dr. Pohl’s photos didn’t meet that minimum standard. The court noted that Dr. Pohl couldn’t identify any creative elements in the photos such as the type of camera used, decisions regarding the pose of the patient, lighting decisions, etc. Perhaps if Dr. Pohl could have described some creative decisions in taking the photos, the outcome would have been different.

    A shout out to my friend, Matthew Scott Nelles, one of the fine attorneys at Berger Singerman LLP in Ft. Lauderdale, Florida, who represented Offcite in this case.

  • A Heroic Rescue for a Cocky Word

    7/17/18

    With smoldering eyes, the beautiful and brave romance writers defended their realm. Faleena Hopkins is a self-published romance author of steamy romances with titles like, “Cocky Soldier: A Military Romance” and “Cocky Roomie”. Faleena’s company, Hop Hop Productions, Inc., registered two trademarks for the word “cocky” in relation to a series of romance novels. Faleena sent out cease and desist letters to other romance writers advising them that “cocky” has found its one true love and no one else can use the word in their book titles. In response to this attempt to keep the word “cocky” from its other true loves, a group of romance writers published a collection of short stories titled “Cocktales: The Cocky Collective”. Faleena filed suit to stop the publication. The Author’s Guild and the Romance Writers of America, rescued one of the defendants, author Tara Crescent, by paying the past due taxes on the plantation, I mean, paying her legal bills. The court denied Faleena’s motions for a preliminary and temporary restraining order against the protest work. The court held that the “cocky” marks were weak and customers would not be likely to be confused between Faleena’s books and other books using the word in their titles. On another note, a proceeding to cancel Faleena’s trademarks is now pending before the Trademark Trial and Appeal Board. So there may be a sequel to this romantic tale of the word “cocky”.

    WHY YOU SHOULD KNOW THIS. A weak mark may be meaningful but is common in usage. It usually describes the product or service. Faleena’s experience shows how hard it is to enforce a weak trademark. When choosing a trademark, try to stay away from descriptive, weak marks. Choose fanciful, arbitrary or suggestive words instead.

  • Agents of Copying

    7/10/18

    Great Minds don’t always think alike when it comes to copyright infringement. Great Minds is a company that publishes school books, including a math book. Great Minds licenses use of the book to schools for free as long as it is for strictly non-commercial use. Great Minds uses the Creative Commons non-commercial license for these deals. A school district in New York had FedEx make copies of the book instead of using the school’s copiers and staff. Great Minds sued FedEx for copyright infringement arguing that it licensed the work to the school district and not FedEx. Great Minds tried to distinguish between the school staff making copies and the school ‘jobbing’ out the project to FedEx. In affirming a ruling against Great Minds, the Second Circuit held that there really was no difference between school employees making copies and having FedEx’s copy service making copies. The Court identified FedEx as an agent of the school district. Under pure agency principals, the school district’s license to copy would extend to FedEx.

    WHY YOU SHOULD KNOW THIS. Creative Commons is a non-profit organization that acts as a clearing house for copyright licenses. The licenses are standard forms that parties can use. However, there is no requirement that the parties accept the standard language. Parties can always add or delete anything that would better define their licensor/licensee relationship. In this case, the Creative Commons license was silent on whether the license extended to agents of the licensee. To avoid a problem like this, on the licensor side, it’s best to define authorized uses under the license. On the licensee side, it’s best to make sure that the license extends to employees and agents.

  • Patent Turf Wars

    7/3/18

    The Patent Office can invalidate a patent even if a court did not. Oils States Energy LLC won a patent infringement judgment against Green Energy Group LLC. But then, the Patent Trial and Appeal Board (“PTAB”) invalidated the patent leaving Oil States emptyhanded. Oil States appealed arguing that the PTAB, an Article III (of the US Constitution) administrative tribunal, couldn’t come out differently from an Article I court. The US Supreme Court decided against Oil States. SCOTUS held that patents are a “public right”. They are a public franchise granted by the government to the owner of the patent for a period of 20 years. So, the administrative body can determine patent validity without paying homage to a different decision by a federal court.

    WHY YOU SHOULD KNOW THIS. This decision addresses the fundamental nature of a patent. Patents are different from other types of Intellectual Property. You own a copyright the minute you fix your work in a tangible means of expression. You own your trade secret as long as it’s not generally known and you take reasonable measures to keep it secret. You own a trademark as long as you use it as a source or product identifier. But a patent isn’t a patent until the US Patent Office issues the patent. So, you can win a patent infringement judgment in court and still have your patent invalidated by the PTAB.

  • Hey Mickey!

    6/26/18

    A press release doesn’t always amount to trademark use. In the 1980s, Toni Basil had a one hit wonder “Mickey” that included the lyrics, “You’re so fine you blow my mind, Hey Mickey”. She sold the copyright to the recording of the song. When Disney Co., Kohl’s and Forever 21 started using the song in their advertising, they issued press releases and mentioned Toni’s name in connection with the song. Toni sued for various types of Intellectual Property infringement including trademark infringement based on the press releases. Toni argued that the use of her name violated trademark law based on false designation of origin. The judge disagreed and dismissed the trademark claim holding that the use of her name in the press releases as nominative fair use.

    WHY YOU SHOULD KNOW THIS. Not every use of someone else’s trademark is trademark infringement. This case is a good example. A press release is an official statement that is issued to give general information to the news media. A press release isn’t considered trademark use because its primary purpose is to provide information for news purposes. The press releases didn’t use Toni’s name in the trademark sense so she couldn’t maintain a cause of action for infringement.

  • A Better Way to Make and Bake a Data Center

    6/19/18

    A better way to build a data center can be protected as a trade secret. BladeRoom developed a technique that allowed it to build data centers. BladeRoom’s system used prefabricated subassemblies that continued systems for air management, fire detection, security and lighting. Under a non-disclosure agreement, BladeRoom disclosed the system to Emerson Electric Co. and Facebook who were about to build a huge data center in Sweden. Emerson and Facebook took a pass on retaining BladeRoom. According to BladeRoom, Emerson and Facebook went ahead and built the data facility using BladeRoom’s system. BladeRoom sued for trade secret misappropriation. Facebook settled but Emerson went to trial and lost. Determining the misappropriation was a substantial factor in causing financial harm to BladeRoom, the jury awarded BladeRoom $10 million in lost profits and $20 million due to Emerson’s “unjust enrichment.” Emerson vows to appeal the verdict.

    WHY YOU SHOULD KNOW THIS. Massive data centers are becoming a huge industry (pun intended). Anyone who can find a way to build them faster has major market potential. BladeRoom did the right things in having Emerson and Facebook sign non-disclosure agreements. They must have also identified their trade secrets and taken reasonable measures to keep them secret. Although it took four years of expensive litigation, BladeRoom got a big payoff.

  • Spring/Summer 2018 Update

    6/13/18

    The last word sometimes isn’t really the last word. Here’s what happened after some previous posts:

    3/21/17 – The Intrepid Heroes of Copyright, Photographers. VHT, Inc.’s obtained an $8.3 million judgment against Zillow Group, Inc. for using photos without a license. On appeal the judgment was cut almost in half. The court determined that there was insufficient evidence that anyone actually saw the vast majority of the photos. Still, $4.3 million is a lot of money.

    6/27/17 – Horton Hears a Vulcan. The lower court’s decision that fair use permitted a comic mash up between Dr. Seuss like drawings and Star Trek in “Oh the Places You’ll Boldly Go” was reversed on appeal. The appellate court determined that at least three of the four factors of fair use weighed in favor of the Dr. Seuss estate and against the creators of the parody comic book. In other words, parody is not a golden ticket for fair use.

    10/31/17 – Spooky Banana Halloween. After settling with Kmart for allegedly infringing on its banana costume, Rasta Imposta sued Kangaroo Mfg. Inc. for copyright infringement involving the same banana costume. The court granted a preliminary injunction holding that although the costume is a useful article, it does have some elements that give rise to minimal copyright protection. It appears that Rasta Imposta has peeled off another competitor.

  • Implied License Keeps Electrical Standards Humming

    6/5/18

    An implied copyright license doesn’t need to be in writing. In Intellitech Corp., v. The Institute of Electric & Electronics Engineers, Inc. a/k/a IEEE, IEEE is a non-profit organization that was trying to set standards for electrical engineers. Intellitech contributed to the “Test Access Architecture for Three-Dimensional Stacked Integrated Circuits.” Intellitech sued IEEE for copyright infringement when IEEE tried to use Intellitech’s contributions. The court denied Intellitech’s motion for summary judgment. The court held that even if Intellitech owned the copyright in the work, IEEE had a non-exclusive implied license to use it because the parties always intended that result.

    WHY YOU SHOULD KNOW THIS. It’s always best not to rely on an implied anything, no less an implied copyright license. A written license agreement or work for hire agreement is not only preferable, it’s a must. The documents should be drafted and signed every time someone creates a work for another. In this case, the IEEE had written policies about IEEE's ability to use contributions to the standards. So Intellitech knew from the beginning that its contributions were going to be used by IEEE in its documentation.

  • Myopic View of a Specimen

    5/29/18

    A specimen of use can make or break a trademark application. Pitney Bowes wanted to register its new logo design as a trademark for mailing services among other things. For its specimen of use, Pitney Bowes used a screen shot from its website showing a picture of its “Mail&Go” kiosk that featured the new logo. The examining attorney refused the specimen saying that it showed the sale of products but not mailing services. Pitney Bowes appealed to the Trademark Trial and Appeal Board who reversed the refusal. The Board held that the examining attorney should have given greater deference to Pitney Bowes’ common sense explanation that its mailing services were offered to consumers through the self-service kiosk. Ultimately, Pitney Bowes submitted a substitute specimen of use anyway and the trademark has been registered.

    WHY YOU SHOULD KNOW THIS. A specimen is a real-world example of how you are using your trademark on goods or in the offer of services. The Examining Attorney is going to match the specimen to the description of goods and services. This case shows how technical Examining Attorneys can be in that analysis. If you file a use based application, it might be helpful to create the description of goods and services from the specimen you are going to submit. If you are filing an Intent to Use application, then the specimen should be created from the description in the application. But what happens if you file an Intent to Use application and when it comes time to file the specimen of use, the goods or services have changed from the original description? If the change is material, you might have to file a new application.

  • There Wasn't a Dry Eye in the PTAB

    5/8/18

    Selling a patent doesn’t extend its limited life. Allergan, Inc. owned the patents for Restasis which treats severe dry eyes by producing tears. The terms of the patents were about to expire. So, Allergan “sold“ the patents to the Saint Regis Mohawk Tribe and who then licensed all of the rights relating to the patents back for millions in upfront and annual royalties. In an IPR between Mylan Pharmaceuticals and Allergan, the Tribe unsuccessfully tried to dismiss the proceedings based on sovereign immunity. The PTAB’s decision had several important points which all seemed to spring from the PTAB’s view that any rights the Tribe had were “illusory”. First, it held that Allergan’s exclusive rights to the patent under the license from the Tribe were irrevocable and lasted only until the patents expired or are invalidated. Second, since Allergan retained the right to sue, the Tribe had no interest in the proceedings. Third, sovereign immunity is not a defense to IPR proceedings.

    WHY YOU SHOULD KNOW THIS. Unlike other types of IP, patents depend upon governmental sanctions in order to exist. The patent gives the owner the right to exclude others from practicing the patent for 20 years. After that, the patent goes into the public domain. Once in the public domain, generic drug manufacturers can manufacture and sell the same pharmaceutical at lower prices. This, of course, poses a problem for the owners of patents like Allergan who would like nothing more than to extend their exclusive rights for longer than 20 years. Allergan and the Tribe tried a tricky maneuver to get around the limited life of a patent. It doesn’t appear to be working.

  • Possession is Nine Tenths of the Law or Is It?

    5/1/18

    You own your domain name, right? Maybe not. While working for the law firm, Trowbridge Sidoti LLP, attorney, Kim Taylor, registered a large number of domain names for the firm, including SyndicationLawyers.com. She registered them in her own name instead of the firm’s, even though they were going to be used by the firm. After she left the firm, Kim refused to transfer the domain names claiming she owned them. Trowbridge Sidoti sued. After 10 hours of deliberation, the jury returned a verdict against Taylor with respect to all of the domain names. The jury found that Taylor’s actions only caused harm with respect to the SyndicationLawyers.com domain name and awarded $7,800.00 in damages.

    WHY YOU SHOULD KNOW THIS. This scenario is not that unusual. An employee or independent contractor is given the task of registering domain names for a company. Wittingly or unwittingly, the employee or independent contractor registers the domain name in their own name. When the relationship is severed, the company finds out that it doesn’t own its own domain name. Getting the domain name transferred to the company becomes an issue if the parties didn’t part on good terms. As this case proves, it even happens to lawyers.

  • Will Assign Doesn’t Mean Did Assign

    4/24/18

    Agreeing to assign a patent in the future isn’t an assignment at all. Three co-inventors of a patent were employed by Company A. The co-inventors signed an employment agreement stating they “will assign” their rights to any patentable invention they created during their employment. Company A transferred its assets to Company B. Only two of the inventors assigned their patent rights to Company B. Based upon the employment agreement between the original company and the third inventor, the USPTO allowed Company B to prosecute the patent without the third inventor actually assigning the patent. Company B dissolved and its assets were transferred to Advanced Video Techs, LLC. Advanced Video then brought a patent infringement suit against HTC Corp. The district court dismissed the case holding that Advanced Video didn’t have standing to bring a patent infringement suit without joining the non-assigning inventor in the suit. On appeal, the Federal Circuit Court of Appeals affirmed the decision that Advanced Video didn’t have standing. The Federal Circuit reasoned that the agreement to assign something in the future, is not an assignment. The third co-inventor only promised to assign a future patent so she still had part ownership of the patent and had to be a party to the infringement suit.

    WHY YOU SHOULD KNOW THIS. Inventors hold the rights to a patentable invention until those rights are assigned. Over the years, employment agreements contemplated that employee-inventors would always be innovating and there’s no way to anticipate which inventions will be patented. So a lot of employment agreements have the employee agree to assign inventions to the employer in the future. According to this decision, just having an agreement to assign something in the future, isn’t a present assignment. So what’s an employer to do? A two prong approach may be required. First, instead of a future assignment, have the employee make a present assignment of all Intellectual Property rights. Second, decide at what point in the research and development process, the employee will assign his or her patent in a particular invention and then follow through with it. One thing that the decision didn’t seem to address is whether the employer would have a cause of action against the employee who breached the employment agreement by failing to assign the patent as agreed.

  • The Long and Winding Road of Tom Brady Photos

    4/17/18

    Embedding a Twitter photo can be copyright infringement. It all started when Justin Goldman took photos of Tom Brady and posted them on Snapchat. Content on Snapchat is supposed to disappear after a while. These photos didn’t. Instead, the photos ended up being reposted on various social media sites, including Twitter. Some media outlets then embedded the third party tweets with the photos in articles on their respective websites. Goldman filed suit against the media outlets for copyright infringement. The defendants brought a motion to dismiss arguing that they aren’t liable because they were protected under the “Server Test”. The Server Test says that images generated by a search engine, like Google, aren’t copyright infringement because search engines don’t store images. The court denied the motion. This wasn’t a case of linking to the origin of the photos. The defendants actively embedded the images which were immediately available upon opening the offending webpage.

    WHY YOU SHOULD KNOW THIS. For now, this case is considered an outlier. But since it’s out there, the best practice is to use extreme caution. The web is full of great content, especially photographs. But there’s a line between linking (which is ok) and embedding without permission (which isn’t ok).

  • The Case of the Disappearing Discount

    4/10/18

    Advertising a discount that disappears at point of purchase is a problem. A customer of Hobby Lobby, wanted to buy a picture frame. She believed she was getting a 50 percent discount on a photo frame due to an in-store sign stating "Photo Frames 50% OFF the Marked price.” Hobby Lobby didn’t honor the discount but instead pointed to disclaimer language that said, "DISCOUNTS PROVIDED EVERY DAY; MARKED PRICES REFLECT GENERAL U.S. MARKET VALUE FOR SIMILAR PRODUCTS." The customer brought a class action suit based on false advertising as well as other causes of action. Hobby Lobby’s motion to dismiss was denied. The court held that a reasonable consumer could have been misled despite the disclaimer language. So the suit will proceed.

    WHY YOU SHOULD KNOW THIS. This is just one example of recent cases and settlements involving phantom discounts. Federal Trade Commission regulations and state laws govern advertising. The basics of proper advertising are pretty standard. Don’t use unfair, deceptive, untrue or misleading advertising. Advertising a price or a discount and then not honoring it falls squarely within prohibited conduct. Hobby Lobby’s disclaimer language didn’t excuse it from complying with the advertising rules.

  • Tequila and Cigars

    3/30/18

    Tequila and cigars go together like love and marriage; or maybe not. El Galan Inc. tried to register the word “Ternura” for a brand of cigars. The USPTO refused registration because Don Francisco Spirits LLC had already registered the same word for tequila. The USPTO said that the two products are “related”, meaning that they are complementary and linked in the minds of consumers. El Galan appealed to the TTAB. The TTAB affirmed the refusal. The TTAB reached back into history and cited a 1955 ruling by the Fifth Circuit in favor of the famous Scotch whiskey brand, Johnnie Walker, against a company that wanted to use the name for cigars. Because, after all, everyone connects whiskey and cigars. So according to the USPTO and the TTAB, the same is true for tequila and cigars. The TTAB pulled back a little by saying that the opinion should not be interpreted to mean that cigars and alcoholic beverages will always be considered related.

    **WHY YOU SHOULD KNOW THIS. ** Frankly, this ruling is a stretch. Alcohol and tobacco don’t always go together in the minds of the consuming public. This is the problem with the “relatedness” argument that can form the basis of a refusal to register. There should be some limit on a refusal to register when the same mark is being used for goods or services that don’t actually compete with each other.

  • Peeling the Software Onion Can Cause Tears

    3/20/18

    Software can have lots of layers like an onion which can be trouble for an infringement lawsuit. In CSS, Inc. v. Herrington, CSS complained that the defendants infringed on three of its copyrighted software programs. The programs were made up of a lot of different components, including third party software and abstract ideas. The court’s opinion peeled the layers of CSS’s software onions to get to the decision. First, the court peeled off the function that each program performed because they were "ideas" of the programs and not their expression. Then the court peeled away the client/server architecture used by each of the programs because that was non-copyrightable industry-standard. Next came the third party components because they didn’t belong to either party. Next came the arrangement of the third party components didn’t have enough creativity for copyright protection. Then the court peeled away the layer that was the name/address algorithm because it was unoriginal and not copyrightable. Once the court got to the small onion core of protectable software that was left, the court held that CSS didn’t prove substantially similarity between CSS’s onion core and the defendants’ onion core. CSS may have had something that was protectable, but after peeling away the uncopyrightable components of its software it couldn’t prove infringement.

    WHY YOU SHOULD KNOW THIS. This opinion is a good road map for any pre-litigation due diligence involving software copyright infringement.

  • March Madness Comes in Like a Lion

    3/13/18

    With March Madness upon us, we must remember its bumpy trademark road. March Madness is the uber-famous trademark of the National Collegiate Athletic Association’s championship basketball tournament. But the NCAA was not the first to use the trademark. The Illinois High School Association was. The IHSA unsuccessfully tried to stop the NCAA from using it. The court held that both had the right to use the name. Eventually, the NCAA acquired the IHSA’s rights. Once the NCAA acquired the rights, it aggressively protected the trademark. The NCAA has been able to squelch the unlicensed use of the trademark and anything that comes perilously close such as “April Madness” (for entertainment service), “Markdown Madness” (for auto sales services), “Skate Madness” (for skateboarding competitions) and “Freestyle Madness” (for various entertainment services).

    WHY YOU SHOULD KNOW THIS. It’s so tempting to use “March Madness” in an ad campaign to bring in business; especially at the retail and food industry. But to do so, a business has to be ready to pay the hefty license fees demanded by the NCAA or face the NCAA’s wrath. As the owner of the trademark, the NCAA can protect its trademark from any use that would be likely to cause customer confusion about the source or sponsorship of the product or service. And because the trademark is famous, the NCAA can protect against any use that might dilute its brand. Even if the use has nothing to do with a basketball championship.

  • Trademark Peaceful Coexistence

    2/27/18

    Similar trademarks don’t necessarily result in a likelihood of confusion. Two recent decisions considered whether similar trademarks can coexist without causing customer confusion. In Allstate Insurance Co. v. Kia Motors America Inc., Allstate argued that Kia’s “Drive Wise” brand infringed on its “Drivewise” trademark. Kia’s product was a high end add-on for Kia’s cars. Allstate’s product was a program to reward safe driving by its insurance customers. The court held that the goods offered by the parties were not identical or even related. Customers who wanted an add-on for their car would not be confused by similar words used for an insurance company’s safe driving incentive. And the reverse would be true as well. Another case involved a similar set of facts and came out the same way. In Destileria Serralles Inc. v. Kabushiki Kaisha Donq DBA Donq Co. Ltd., the Trademark Trial and Appeal Board ruled that a Kabushiki’s Japanese bakery chain named “Donq” was not confusingly similar to Destileria’s rum brand “Don Q”. Destileria argued that many brands of liquor cross over into other types of goods and so there would be “overlap” in the minds of the consuming public. The TTAB rejected the argument because Destileria’s brand is marginally famous and purchasers would be less likely to expect expansion into other goods.

    WHY YOU SHOULD KNOW THIS. The goods offered by trademark owners need not be identical or even competitive for a customer to be confused. Even if the goods really have nothing to do with each other. The operative question is whether consumers would assume the different goods would have the same origin. In these two cases, the adjudicating body found that the goods weren’t related enough to cause overlap in the minds of customers.

  • Divorce, Trade Secret Style

    2/20/18

    Trade secrets can be an asset in a divorce. Donald Bailey and his ex-wife, Geraldine Bailey, were in the midst of a very messy divorce. As part of the proceedings, Geraldine wanted to determine the value of their marital assets. So Geraldine’s law firm sought discovery against Donald’s two companies, Zegato Solutions Inc. and Aldmyr Systems, Inc. The two companies had trade secrets that were worth about $350 million, according to Donald. Donald then brought a suit against the attorneys claiming that they stole and copied the trade secrets. Dismissal of the suit was affirmed by the Fourth Circuit Court of Appeals. The Fourth Circuit agreed with the lower court that the law firm was entitled to explore Donald’s assets on behalf of Geraldine.

    WHY YOU SHOULD KNOW THIS. When a couple decides to cut ties with each other, a host of issues are involved. One of the primary issues is who gets what from the assets that the couple acquired during the marriage. In this case, the court had to balance Donald’s companies’ right to protect their trade secrets and Geraldine’s right to know the value of Donald’s assets. Since access to the trade secrets had nothing to do with actually using them, Geraldine’s right to discovery won.

  • I’ve Been Framed

    2/14/18

    Website framing can be copyright infringement. “Framing” is the display of content on a website that is independent of the original content creator. In Leader’s Institute LLC v. Jackson, Robert Jackson left Leader’s Institute to work for a competitor, Magnovo Training Group. Leader’s Institute sued claiming misappropriation of trade secrets and trademark infringement. Magnovo brought a counterclaim alleging that Leader’s Institute had committed copyright infringement by framing Magnovo’s copyrighted content on Leader’s Institute’s website. The court granted partial summary judgment to Magnovo on the copyright infringement claim. The court held that programming its website to display Magnovo’s copyrighted works is considered an unauthorized public display of a work of authorship under Copyright Law.

    WHY YOU SHOULD KNOW THIS. Many websites are designed to provide access to another’s website content. In some cases, it can be done without resulting in copyright infringement. For instance, a hyperlink that directs the user to the original website is probably ok. But in this case, Leader’s Institute did more. It programmed its website to incorporate the copyrighted work belonging to its competitor. Leader’s Institute was held to have infringed by an act of public display through an automated process.

  • Lawyers Can Have Problems Crafting Trademarks

    2/7/18

    A trademark can’t block competitors from using descriptive words. Attorney, Candace L. Moon, wanted to become the “on-stop shop” for the legal issues in the craft beer industry. So she tried to register “The Craft Beer Attorney APC” as a trademark. The uproar from other attorneys was deafening. No less than 10 other law firms filed oppositions to registration of the trademark. They argued that the words “Craft Beer Attorney” were generic because other attorneys need to use those words to describe their services. One firm wrote: “Such use is and would be in derogation and violation of the First Amendment rights of third parties, who have a bona fide need to use such a generic term or phrase to accurately describe and reference their own similar services.” Candace withdrew her application and the TTAB entered judgment in favor of the opposers.

    WHY YOU SHOULD KNOW THIS. Candace’s experience is a good example of the problems with choosing a descriptive mark. Candace had a bright idea to brand herself by describing her services. But, her competitors needed to use those words to describe their services too.

  • An Oracle’s Prophecy of Infringement

    1/30/18

    You don’t need an Oracle to predict the outcome of working outside the scope of a license. Rimini Street, Inc. was hired by one of Oracle USA, Inc.’s licensees to develop and test updates for the licensee’s customers. But Rimini started using Oracle’s software to develop products for its other clients who didn’t have a license from Oracle. Oracle sued and won a copyright infringement judgment. Rimini appealed and lost at the 9th Circuit Court of Appeals. Rimini had two interesting affirmative defenses that were rejected by the court. First, Rimini said it had an express license. While it had an express license with respect to a single licensee, it didn’t have a blanket express license to use the software for anyone else. Second, Rimini argued that Oracle was misusing the copyright. Copyright misuse is an equitable defense against copyright infringement allowing copyright infringers to avoid infringement liability if the copyright holder has engaged in abusive or improper conduct in exploiting or enforcing the copyright. In other words, Rimini was accusing Oracle of being a copyright bully because Oracle wasn’t allowing Rimini to get a head start with Oracle’s future software licensees. The court rejected this argument. As the owner of the software, Oracle had every right to control the use of its software by potential future licensees.

    WHY YOU SHOULD KNOW THIS. Rimini had an uphill battle. It went beyond the scope of a license. And Rimini’s copyright misuse argument was misguided. Classic copyright misuse involves elements of fraud and extortion. Oracle wasn’t doing that. It was only protecting its software in a specific case. That isn’t copyright misuse.