• 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.

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  • 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.

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  • 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.

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  • 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. 

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  • 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.

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  • 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?

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • IP BLAWG

    A Copyright Application is Just a Form. Or is it?

    Beverly A. Berneman
    9/29/20

    Registering the copyright in a work has a lot of advantages, including establishing ownership, access to federal courts for litigation and the ability to recover statutory damages and attorneys’ fees for infringement. So far so good. But to register a copyright, you have to fill out an application following Copyright Office rules.

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  • IP BLAWG

    “Delivery Failed” Has Been Ghosted

    Beverly A. Berneman
    9/22/20

    The US Supreme Court decision in Alice Corp. v. CLS Bank International held that abstract ideas cannot be patented. Electronic Communication Technologies, LLC (“ECT”) is the one of latest patent holders to feel a ghostly pinch from Alice.

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  • IP BLAWG

    Get Me the One with the Pretty Colors

    Beverly A. Berneman
    9/15/20

    This blog recently discussed the inability to protect movement during a sightseeing tour as trade dress (“Emotionally Yours”, 6/2/2020). Other types of trade dress can also have problems.

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  • Benefits Bulletin

    Coronavirus Benefits Lawsuits Have Begun

    Andrew S. Williams
    9/2/20

    Former participants in a 401(k) profit sharing plan have filed suit in Federal court in New Jersey seeking recovery of investment losses allocated to their accounts by the employer-sponsor.

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  • IP BLAWG

    The Devil is in the Contract Details

    Beverly A. Berneman
    9/1/20

    Next time you look at a bottle of Listerine, think of it as a lesson in contract drafting.

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  • IP BLAWG

    Hast Thou Forsaken Me Chiclets?

    Beverly A. Berneman
    8/26/20

    Mondelez International Inc. owns a lot of trademarks. One of them is “Chiclets” for gum. Mondelez almost lost it.

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  • IP BLAWG

    These Are Not the Patent Droids You Are Looking For

    Beverly A. Berneman
    8/11/20

    The US Patent Office (“USPTO”) has bad news for CP30, R2D2 Wall-E and all of their robot friends. They don’t qualify as an inventor of a patent.

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  • IP BLAWG

    Possession is 9/10ths of Trade Secrets Law

    Beverly A. Berneman
    7/28/20

    Kevin Huber worked for AFS as a full time sales engineer for Advanced Fluid Systems, a hydraulic systems manufacturer. The Virginia Commonwealth Space Authority awarded a contract to AFS to build, install and maintain a launch pad for a NASA facility. Under the contract, the Space Authority owned the plans created by AFS. The plans were marked as confidential and were considered trade secrets. Three years later, the Space Authority ran into financial difficulty and assigned the Agreement to Orbital Sciences Corporation. So now Orbital owned the trade secrets. But, AFS still had a right to possess them so that it could perform on the agreement.

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  • IP BLAWG

    The Sky Has Its Limits

    Beverly A. Berneman
    7/21/20

    Retired attorney, Richard Bell, had a cottage industry suing people for copyright infringement of a picture of the Indianapolis skyline. Richard alleged that he took the photo in March 2000 for his law firm’s website. He registered the copyright in 2011, after his former law firm stopped using the photo on its website.

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  • IP BLAWG

    Data Links

    Beverly A. Berneman
    7/14/20

    HiQ uses an automated application to look at publicly available data on social media and provide analytics to its customers. This is called “data scraping”. Businesses use the data for all sorts of things designed to increase revenue.

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