• 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.

    Read More
  • 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.

    Read More
  • 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.

    Read More
  • 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.

    Read More
  • 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.

    Read More
  • 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.

    Read More
  • 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
    Read More
  • 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.

    Read More
  • 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.

    Read More
  • 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?

    Read More
  • IP BLAWG

    Trade Secret Food Fight

    Beverly A. Berneman
    2/9/21

    In Brief:  Always investigate when a new hire says they own proprietary information.

    Read More
  • IP BLAWG

    Oh the Places You Can’t Boldly Go

    Beverly A. Berneman
    1/26/21

    For almost four years, comics’ legend, Ty Templeton, and Star Trek’s “Trouble with Tribbles Episode” writer, David Gerrold and their company, ComicMix, have been in litigation with the Dr. Seuss Estate. ComicMix is trying to publish a graphic comic called “Oh, The Places You'll Boldly Go.” The comic mashed Dr. Seuss’ “Oh The Places You’ll Go” with Star Trek characters. ComicMix said it was fair use. The Dr. Seuss Estate said no.

    Read More
  • IP BLAWG

    Copyright Public Domain Class of 2021

    Beverly A. Berneman
    1/19/21

    In 1976, the Copyright Act was completely overhauled. The system of protecting copyrights changed giving longer protection and making it easier to claim a copyright. But pretty much all of the pre-1976 works were going to be treated differently. So the Copyright Act grandfathered in and extended the protection for these pre-1976 works. Originally, works created in 1923 or before were still in the public domain. On January 1, 2021, any works created from 1925 went into the public domain.

    Read More
  • IP BLAWG

    That’s the Way the Pocky Crumbles

    Beverly A. Berneman
    1/12/21

    Pocky is a cookie stick that comes in several flavors including chocolate or strawberry. The cookie was first produced in Japan in 1966. Pocky’s manufacturer, Ezaki Glico Co., Ltd. can boast of world-wide popularity for its cookie sticks.

    Lotte International America Co., decided to get into the cookie stick game. It came out with its own version called Pepero. There’s no question that the Pepero cookie stick is identical to the Pocky cookie stick.

    Ezaki Glico sued Lotte International for trade dress infringement in New Jersey district court. 

    Read More
  • IP BLAWG

    The 2020 Crippys – The IP Criminals Hall of Fame

    Beverly A. Berneman
    1/5/21

    In past years, we have awarded Crippys to those who achieved infamy by committing Intellectual Property crimes over the last year. Here are the winners of the 2020 Crippys.

    Read More
  • Benefits Bulletin

    Cybercriminals May Be Stalking Your 401(k) Plan

    Andrew S. Williams
    1/5/21

    At least two pending federal cases deal with attacks on individual 401(k) plan accounts. The fact patterns are similar: a participant submits an electronic benefit withdrawal request to the employer or the plan's record keeper. The request is passed on to the plan's custodian for implementation.

    The custodian, as holder of the plan assets, then transfers the requested funds to the participant's bank account This is a routine transaction and the distribution has been implemented as intended.

    So what is the problem?

    Read More
  • IP BLAWG

    Big Girls Don’t Cry Over Fact or Fiction

    Beverly A. Berneman
    12/8/20

    The Jersey Boys is a Broadway musical (the “Play”) about the musical quartet, The Four Seasons (the “Band”). It debuted in 2005 and ran for over 10 years, toured the country repeatedly and was adapted into a movie in 2014.

    In the late 1980s, Band member, Tommy DeVito wrote an autobiographical “tell all" book about the Band. The book was ghost-written by Rex Woodard (“the Work”).  The Work was completed before the Play had been written and produced.

    DeVito’s widow, Donna Corbello, sued Frankie Valli (the Band’s lead singer) and a lot of other people for copyright infringement alleging that the Play was an unauthorized derivative of the Work.

    Read More
  • IP BLAWG

    My Blue Ivy is Not the Same as Your Blue Ivy

    Beverly A. Berneman
    12/1/20

    In 2012, Veronica Morales registered the trademark, BLUE IVY, for her event planning company. Four years later, Beyoncé Knowles-Carter’s company, BGK Trademark Holdings, LLC filed a trademark application to protect, BLUE IVY CARTER, (named after Beyoncé’s daughter) for entertainment services.

    That’s when the fight began.

    Read More
  • Benefits Bulletin

    Is Your 401(k) Plan Too Complicated?

    Andrew S. Williams
    11/18/20

    Recent cases against university-sponsored retirement plans include allegations that these plans are complicating the investment decisions of participants because the plans offer too many investment choices.

    As alleged in one complaint, the plans provide so many options that participants are left with a "virtually impossible burden" of deciding where to invest their retirement funds.

    Read More
  • IP BLAWG

    Zoom Smashes Trade Secrets

    Beverly A. Berneman
    11/17/20

    Discussing confidential or trade secret information through video conferencing platforms can be hazardous to the health of trade secrets. 

    Smash Franchise Partners, LLC and Smash My Trash LLC operate a mobile trash compaction business. Smash’s trucks compact trash in the customer’s dumpster. This allows the customer to fill the dumpster with more trash and save on waste management fees. Smash sells franchises to entrepreneurs who want to run Smash branded franchises.

    Read More
  • IP BLAWG

    Everybody Does It Fails as a Defense

    Beverly A. Berneman
    11/10/20

    Some of you may recall the argument you used with your parents that went something like “Everyone else gets to go” or “Everyone else’s parents let them [fill in the blank]”. Chances are that these arguments were unsuccessful.

    Elie Tahari Ltd. learned that “Everybody does it” doesn’t work in a copyright infringement case either.

    Read More
  • IP BLAWG

    Copyright Trolling Hasn’t Died

    Beverly A. Berneman
    11/3/20

    In 2017, I awarded the grand prize for IP criminals to the disgraced Prenda Law Firm. This stain on the legal profession had created honey pot porn websites and then sued people who downloaded their content for copyright infringement. The lesson of creating your own porn to entice illegal downloads seems to have resonated. But wholesale copyright infringement cases are still out there.

    Read More
  • IP BLAWG

    Dueling Embedding Decisions

    Beverly A. Berneman
    10/27/20

    Embedding is a technical process that allows one website to link to and incorporate content from a second website. So when the user visits the first website, they see the content on the second website even though the content is actually still on the second’s website. 

    In the past couple of years, there have been two decisions about whether or not embedding is copyright infringement.

    Read More
  • IP BLAWG

    When a Friendly Beer Turns Unfriendly

    Beverly A. Berneman
    10/13/20

    Brooklyn Brewery (“Brewery”) has been around for more than 30 years. Brewery sells craft beers all over the country. Brooklyn Brew Shop (“Brew Shop”) was founded in 2009 and sells beer brewing kits.

    In 2010, Brewery started receiving calls from customers trying to reach Brew Shop. So Brewery emailed Brew Shop about it and suggested that Brew Shop “keep an eye on it”.

    Apparently, neither side was too worried about customer confusion at that time. Brewery and Brew Shop started collaborating on projects related to beer making, including co-branded beer-making kits, promotional events, books on beer making and educational beer making programs.

    It was a match made in beer heaven. Until May 2015.

    Read More
  • IP BLAWG

    Booked that Title

    Beverly A. Berneman
    10/6/20

    Shannon DeVivo, a professional environmental engineer, wanted to encourage women and girls to seek careers in the STEM fields (science, technology, engineering and math). So Shannon wrote a series of books titled “The Engirlneers”. The books also invite readers to visit www.engirlneer.com to “Learn how to become an Engirlneer”. The books and the website feature fictional female characters with interests in STEM-related fields.

    Read More