• IP BLAWG

    Bootleg CDs Have a Lot of Kick

    Beverly A. Berneman
    10/25/16

    Criminal copyright infringement can get you kicked out the U.S. %CUT% Raul Zaragoza-Vaquero has been in the U.S. for less than 5 years. Raul sold bootleg CDs. Raul’s business model got him convicted of criminal copyright infringement. But his troubles didn’t end there. The Immigration and Nationality Act allows the deportation of someone who engages in crimes involving moral turpitude. So immigration authorities started proceedings to deport Raul. Raul appealed to the U.S. Dept. of Justice’s Board of Immigration Appeals to allow him to stay in the U.S. He lost. Although there was little precedent for it to rely on, the Board ruled that copyright infringement is a crime involving moral turpitude. The Board relied heavily on precedent in criminal trademark infringement cases and other theft type cases. The Board also looked to the legislative intent that copyright infringement enforcement was an important priority.

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  • IP BLAWG

    The Perils of the Merely Descriptive Trademark

    Beverly A. Berneman
    10/19/16

    If you use a phrase to describe your product, it probably isn’t a trademark. %CUT% Simone Kelly-Brown registered the phrase “Own Your Power” in a special form (see the first picture). When Oprah Winfrey’s “O” Magazine used the same phrase on its cover (second picture), Kelly-Brown sued for trademark infringement. The case took a tortured path up and down from trial court to appellate court to trial court and back to appellate court. In the end, the Second Circuit Court of Appeals affirmed summary judgment for Oprah and her publisher. The Court held that Kelly-Brown’s use of the phrase was merely descriptive of her products and services. Oprah demonstrated that the phrase had been in use since at least 1981. Oprah, herself, used the phrase in a 1993 commencement address which predated Kelly-Brown’s use of the phrase. Kelly-Brown tried to argue that the mark had acquired secondary meaning because the consuming public had come to identify the mark with her goods and services. But, the trial court held that Kelly-Brown didn’t have enough proof to support her position.

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  • IP BLAWG

    Only Clean Hands Need Apply

    Beverly A. Berneman
    10/11/16

    Translating a word incorrectly can put a trademark registration at risk. %CUT% Aachi Spices & Foods brought a proceeding before the TTAB to cancel Kalidos Raju’s trademark registration for “Aachi” for various food products. Aachi alleged that Raju’s registered trademark interfered with its prior rights in a mark using the same word. Raju defended the proceeding by claiming that Aachi Spices & Foods was guilty of “unclean hands”. “Unclean hands” is an equitable doctrine that prevents a party from relying on its registration if it made a false statement during the trademark application process. According to Raju, Aachi Spices & Foods translated the word “Aachi”, to mean ‘distinguished lady’. Raju said that the word really means ‘grandmother’. The TTAB found evidence that the word is translated in different ways including both of the proposed translations. Aachi Spices & Foods’ petition to cancel Raju’s registration was granted.

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  • IP BLAWG

    Link Separation Anxiety

    Beverly A. Berneman
    9/27/16

    A link to another website might get you in trouble. %CUT%Many websites include links to other websites. It’s a useful way to build browser traffic to the website and to benefit the linked website. But what happens if clicking on the link sends your user to a website that’s infringing on someone’s copyright? In the U.S., most courts have held that linking isn’t contributory copyright infringement because there’s usually no way to control or stop the infringement on the linked website. Due to a recent case in Europe, the same may not be true in the E.U. The Court of Justice of the E.U. ruled in GS Media BV v. Sanoma, that linking to a website that contained infringing material was infringement. The E.U. court held that the defendant was liable because it knew or had reason to know that the link sent a user to a website with infringing material.

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  • IP BLAWG

    Copyright Law Levels the Sims' PlumbBob

    Beverly A. Berneman
    9/20/16

    Copyright Law may be the key to who owns the design of a video game promotional item. %CUT% In the popular video game, the Sims, a green icon called a “PlumbBob” identifies the character in play. The game’s manufacturer, Electronic Arts, Inc. decided it would be a great idea to include a USB drive that looked like the PlumbBob as a promotional item to be sold with the games. EA hired Lithomania who hired Direct Tech to make up a prototype and eventually manufacture the item. Lithomania then sent the prototype to a Chinese company to manufacture the USB for less than what Direct Tech was going to charge. Lithomania didn’t tell Direct Tech. Instead, it strung Direct Tech along with a series of agreements including an agreement to assign the IP in the USB. Direct Tech didn’t realize it lost the sale when the PlumbBobs appeared in stores. Direct Tech sued Lithomania for breach of contract and they settled. Then Direct Tech sued EA for copyright infringement and trade secret misappropriation. The district court granted summary judgment to EA. The 9th Circuit Court of Appeals affirmed summary judgment on the trade secrets claim. But the Court reversed and remanded on the copyright claims. There were two issues of fact, namely: (1) whether the USB design was copyrightable because it was conceptually different from the utilitarian aspects of a USB; and (2) whether the USB design is a sufficiently original and non-trivial version of the original to be considered a derivative work.

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  • IP BLAWG

    An Early Thanksgiving for AT&T

    Beverly A. Berneman
    8/30/16

    AT&T announced a loyalty program called “AT&T Thanks”. Citibank had some problems with that. %CUT% Citibank thought the “AT&T Thanks” trademark would cause customer confusion with its loyalty program called “Thank You”. Citibank brought suit. Citibank argued that if anyone complains about AT&T’s rewards program, it would reflect badly on Citibank’s loyalty program. The court determined that the factors of customer confusion are either neutral or weigh against it. The court pointed out that customers seemed to be able to tell the difference among a wide variety of customer loyalty programs that use “Thank You” or some variation of it. So, they should be able to see the difference between a loyalty program for telecommunications services (AT&T) and one for financial services (Citibank). The judge denied Citibank’s motion for preliminary injunction.

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  • IP BLAWG

    Typos Hapne

    Beverly A. Berneman
    8/23/16

    Carpenters have a saying: "measure twice, cut once”. This opening line from a recent 7th Circuit Opinion says it all. %CUT% Final Call sold over a hundred copies of Jesus Ali’s portrait of Nation of Islam leader, Louis Farrakhan, without Ali’s permission. Ali sued Final Call for copyright infringement. The trial court relied on authority from the 7th Circuit that, through a typo, incorrectly shifted the burden of proof of an affirmative defense from the defendant to the plaintiff. While taking some responsibility for the error, the 7th Circuit reversed and remanded for assessment of damages.

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  • IP BLAWG

    Marijuana Trademark Gets Busted

    Beverly A. Berneman
    8/16/16

    The USPTO won’t register a trademark for the sale of marijuana. %CUT%Morgan Brown tried to register the name of his Washington State store, Herbal Access, as a trademark for the sale of “herbs”. Morgan’s specimen of use was a picture of the store with a neon green cross on it. For those not in the know, the green cross signals the location of a medical marijuana dispensary. Seeing that, the intrepid examining attorney visited Morgan’s website and, sure enough, Morgan sold marijuana. The examining attorney refused registration based upon an unlawful use of the trademark in commerce. While the State of Washington allows the sale of medical marijuana, federal law does not. Registration would be barred as long as it’s a federal offense to sell marijuana. The refusal was confirmed on appeal to the TTAB.

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  • IP BLAWG

    Liking Something Isn't Like Owning Something

    Beverly A. Berneman
    8/9/16

    Liking something on a Facebook page is not a form of Intellectual Property. %CUT% Stacy Mattocks created an unofficial Facebook fan page for the television series, “The Game”. Black Entertainment Television LLC (“BET”) acquired the rights to the show. BET allowed Stacy to use the trademarks and content on her fan page. BET even directed users to “like" Stacy’s fan page. BET was going to hire Stacy for a full time position. Negotiations broke down and Stacey didn’t get the job. BET instructed Facebook to migrate the page to BET. Stacy sued BET for stealing the “likes” on her Facebook page. The court held that Facebook “likes” can’t be stolen because they’re not a form of Intellectual Property.

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  • IP BLAWG

    OMG! Your Text Messages Could Be a Contract

    Beverly A. Berneman
    7/26/16

    Be careful what you text because you may end up a party to contract. %CUT% A court in Massachusetts held that the texts between two real estate sales agents resulted in a binding contract. In most states, contracts for the sale of real estate have to be in writing. This is called the Statute of Frauds. The writing has to be signed by both parties and contain sufficiently complete terms and an intention to be bound by those terms. The court held that the e-mails and texts between the agents filled all of the requirements of a binding written contract.

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  • IP BLAWG

    A Noble Battle Comes to an End

    Beverly A. Berneman
    7/12/16

    The NOBLE HOUSE trademark got lost in a corporate muddle. %CUT% Floorco Enterprises LLC claimed that it was using the NOBLE HOUSE trademark for furniture since 2010. The problem? Floorco wasn’t really using the mark. Its parent company, Furnco International Corp. was. And even then, Furnco was only using it sporadically. Noble House Home Furnishings filed a cancellation proceeding. The reason is simple . . . well, not quite. A parent company’s use of a mark can inure to the benefit of its subsidiary. But a subsidiary’s use does not inure to the benefit of the parent. Since, Floorco wasn’t using the mark, it was deemed abandoned. The TTAB canceled Floorco’ s trademark.

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  • IP BLAWG

    A Serious Dent in a Patent Pirate's Treasure

    Beverly A. Berneman
    6/28/16

    SCOTUS tells the Federal Circuit to back off of patent damages rules. %CUT% Under the Patent Act, a court may increase the damages up to three times of a judgment. Last year, in two decisions, the Federal Circuit Court of Appeals imposed strict limits on the plaintiffs’ ability to get enhanced damages. The Federal Circuit required a plaintiff to show two things: (1) that there was a high likelihood that the infringer’s actions constituted infringement; (2) that the infringer knew the risk. Under this standard, any defense by an accused infringer that was not frivolous would get them off the hook. SCOTUS reversed the Federal Circuit recognizing that the Patent Act left enhanced damages to the discretion of the trial court. SCOTUS acknowledged that Federal Circuit’s test was trying to keep enhanced damages for egregious cases only. But the test was too rigid. Justice Roberts wrote: “[The] threshold requirement excludes from discretionary punishment many of the most culpable offenders, such as the “wanton and malicious pirate” who intentionally infringes another's patent—with no doubts about its validity or any notion of a defense—for no purpose other than to steal the patentee's business.” The two cases will go back to the trial courts to determine the availability of enhanced damages using a less rigid and more neutral test.

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  • IP BLAWG

    Summer 2016 Update

    Beverly A. Berneman
    6/21/16

    Sometimes, the last word isn’t really the last word. %CUT% Here are some updates for previous posts:

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  • IP BLAWG

    Ice Cream War

    Beverly A. Berneman
    6/14/16

    Just in time for summer, Mister Softee gets its just desserts courtesy of a federal judge. %CUT% The war started when Dimitrio Tsirkos decided to rebrand his “Mister Softee” trucks as “Master Softee”, including mimicking the graphic of the delicious ice cream cone. Tsirkos was a former vendor of the venerated purveyor of the taste of summer. As a vendor, Tsirkos had to pay royalties. As a non-vendor, he got out of having to pay Mister Softee. Mister Softee sued and obtained an injunction permanently enjoining Tsirkos from operating his rogue ice cream trucks using confusingly similar branding. Tsirkos refused to surrender. He continued to operate his Master Softee trucks despite the injunction. A federal court judge held Tsirkos in contempt repeatedly and ordered him to pay $329,000.00 in damages. When he still wouldn’t stop, the court entered another order adding $287,258.00 in attorney’s fees and $52,605.00 in costs.

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  • IP BLAWG

    The Phantom of the Trademark Office

    Beverly A. Berneman
    6/7/16

    A phantom trademark can be exorcised. %CUT%A 'phantom trademark' is in which an integral portion of the mark is represented by a blank or missing information. The USPTO will refuse registration of a phantom mark because it would be hard for someone to identify and distinguish the goods and services covered by the mark. Enterprise Holdings, Inc. got caught in the vortex of phantom marks when it tried to register this trademark for vehicle dealerships, fleet management services and vehicle rental services. The examining attorney refused registration on the basis that the mark was missing information. Part of the problem was that the specimens of use each separately showed the mark with added words “car sales”, “commercial trucks” and “fleet management” in the bottom white space. The examining attorney called this ‘mutilation’ of the mark. Enterprise Holdings, Inc. wouldn’t take no for an answer and appealed to the TTAB. The TTAB reversed the refusal. The TTAB held that the added terms were generic descriptions and could not function as a trademark alone. The added terms can be deleted from the mark without changing the commercial impression.

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  • IP BLAWG

    A Tale of Two Structures

    Beverly A. Berneman
    5/24/16

    It looks pretty; but how protectable is it? %CUT% Two recent cases highlight how different types of IP law protect the structure of a product. In one case, In DeVinci Editrice S.r.l. v. Ziko Games LLC, a court held that the structure of the “Bang!” card game cannot be protected by copyright. While the plaintiff could copyright the artwork on the cards, the game structure, mechanics and rules are not protectable. Millennium Laboratories, Inc. v. Ameritox, Ltd., a court held that the structure of medical test reports can be protected as trade dress as long as the structure isn’t functional. In this case, the owner chose the structure because it didn’t look like any of its competitors’ reports.

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  • IP BLAWG

    A Sword and a Shield for Your Trade Secrets

    Beverly A. Berneman
    5/17/16

    President Obama signed the Defend Trade Secrets Act (“DTSA”) into law on May 11, 2016. It was a long time coming but we’re glad it’s here. %CUT%

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  • IP BLAWG

    Bad Reviews Live Forever; Or Not

    Beverly A. Berneman
    5/10/16

    Fake bad reviews are worse than real bad reviews. %CUT% A competitor of Romeo & Juliette Laser Hair Removal, Inc. posted fake bad reviews on Yelp.com and CitySearch.com using fake accounts. Romeo & Juliette sued the competitor because it was losing customers. The competitor’s defense was “hey, I’m out of business so you can’t touch me.” Not quite. Recognizing that false comments posted on the Internet have an immeasurable detrimental effect, the judge hearing the case entered a permanent injunction requiring the removal of the false reviews.

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  • IP BLAWG

    All Dressed Up and Going Everywhere

    Beverly A. Berneman
    5/3/16

    Trade dress can help protect the look and feel of a website. %CUT% Many businesses put a lot of time and effort into their websites. With good reason. A website is the perfect place to show what the business can do and how it does it. But how can a business protect its well-designed website from being mimicked by a competitor? In Ingrid & Isabel, LLC v. Baby Be Mine, LLC, a California federal court denied the defendant’s motion for summary judgment on the issue of whether the plaintiff’s website could be protected as trade dress. In doing so, the court acknowledged that the "look and feel" of a website qualifies for trade dress protection.

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  • IP BLAWG

    I Love This Game (Someone Paid Me to Say This)

    Beverly A. Berneman
    4/26/16

    The FTC had a problem with Machinima, Inc. for not telling anyone that it paid people to post endorsements. %CUT% Machinima describes itself as the dominant network for fandom and video gamer culture. Its services include distribution, support and monetization of YouTube channels. Things went sideways for Machinima when it paid ‘influencers’ to post YouTube videos that were supposed to be objective opinions about Microsoft’s Xbox One system. The FTC issued an administrative complaint against Machinima for failing to adequately disclose that the influencers were being paid for their opinions. Jessica Rich, Director of the Bureau of Consumer Protection summed it up well. “When people see a product touted online, they have a right to know whether they’re looking at an authentic opinion or a paid marketing pitch. . . That’s true whether the endorsement appears in a video or any other media.” The FTC and Machinima have agreed to settle. Machinima will be prohibited from similar deceptive conduct in the future and it must ensure its influencers clearly disclose when they have been compensated in exchange for their endorsements.

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  • IP BLAWG

    Tort Reform and IP Law Meet Cute

    Beverly A. Berneman
    4/19/16

    The passive licensor can find itself on the receiving end of a huge strict liability judgment. Or not. %CUT% Strict liability means if you’re anywhere in the chain of commerce of a defective product, you’re liable for damages caused by it. This can be really harsh for passive trademark licensor who does nothing more than license a name of the product. Tort reform has been trying to find ways to lessen the hit on anyone who is in the chain of commerce but really had nothing to do with the design or manufacture of the product. The defendant in Shukrullo Dzhunaydov v. Emerson Elec. Co., et al., licensed the trademark of what turned out to be a defective product. The license allowed the defendant/licensor to inspect the use of the trademark and have some control over the product. But it didn’t exercise those rights. The court held that the defendant/licensor wasn’t liable for damages caused by the defective product.

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  • IP BLAWG

    Alice's Topsy Turvy IP Protection

    Beverly A. Berneman
    4/12/16

    The answer to being ousted from the wonderland of patents is to go through the looking glass to copyrights. %CUT% Since SCOTUS’ 2014 decision in Alice Corp. v. CLS Bank International, over 70% of software patents have been struck down as being too "abstract". In answer to this, Synopsys registered its software code for static timing analysis (STA) with the U.S. Copyright Office. When AtopTech started selling STA that was eerily close to the one belonging to Synopsys, Synopsys sued for copyright infringement. A jury awarded Synposys over $30 million in damages against AtopTech.

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  • IP BLAWG

    The New York Yankees Didn't Get the Joke

    Beverly A. Berneman
    4/4/16

    The New York Yankees were not amused when someone tried to register parodies of its famous trademarks %CUT%. IET Products thought it would be funny to register trademarks that parodied the New York Yankees longtime logo and catch phrase. IET replaced the bat on the logo with a syringe referring to alleged steroid use by the players. Not willing to stop there, IET also sought to register “The House that Juice Built” as a parody of the famous catch phrase “The House that Ruth Built” (meaning Babe Ruth for the initiated). The TTAB refused to allow registration of IET’s marks. The TTAB reasoned that IET wasn’t really interested in making commercial use of the marks because they were going to be used as an “ornaments” on IET’s goods.

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  • IP BLAWG

    Some Updates

    Beverly A. Berneman
    3/29/16

    Sometimes, the last word isn’t really the last word. Here are some updates for previous posts: %CUT%

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  • IP BLAWG

    Fear the Walking Trademark Zombies

    Beverly A. Berneman
    3/22/16

    If you don’t use your trademark, it could become a zombie. %CUT% Macy’s Department Stores has been absorbing local department stores and their trademarks for decades. Once Macy’s takes over, it rebrands the store. But, those old department store trademarks still exist in the minds of the consuming public. In other words, the dead trademarks became zombies. Seeing the marketing potential of zombie trademarks, Strategic Marks started selling T-shirts using them. Macy’s filed a trademark infringement suit against Strategic Marks and won. It helped that Macy’s hadn’t really abandoned most of the trademarks. It was using them in its “Heritage Collection”. In the end, the parties settled and Macy’s transferred some trademarks to Strategic Marks.

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