• IP BLAWG

    Puzzle Me This Land O' Lakes

    Beverly A. Berneman
    3/15/16

    The Seventh Circuit is puzzled how anyone could confuse Land O’ Lakes dairy products with Land O’ Lakes fishing tackle. %CUT% It all started when Land O’ Lakes (the dairy guys) wanted Land O’ Lakes (the fishing tackle guy,) to license the name. The fishing tackle guy refused.  So the dairy guys opposed the fishing tackle guy’s trademark application. Then the fishing tackle guy filed suit. In the end, the Seventh Circuit affirmed the district court’s judgment dismissing all claims. Judge Posner stated: “Can one imagine Land O' Lakes advertising: ‘we sell the finest dairy products and the best fishing tackle?’ . . . So in this unusual case two firms sued each other though neither had been, is, or is likely to be harmed in the slightest by the other. The suit was rightly dismissed.”

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  • IP BLAWG

    Surprise Yosemite! Someone Else Owns Your Trademarks

    Beverly A. Berneman
    3/8/16

    Someone registered the trademarks associated with Yosemite National Park and it wasn’t the National Park Service. How could that happen? %CUT% Until recently, the National Park Service had a concessions contract with Delaware North Parks & Resorts Inc. to run Yosemite National Park attractions, including the Ahwahnee Hotel, the Wawona Hotel, Curry Village and Badger Pass. Delaware North lost the contract in an open bidding process. Delaware North filed suit claiming that the bidding process was unfair. Then Delaware North pointed out that one of its subsidiaries had registered the trademarks associated with Yosemite. Now Delaware North won’t let the National Park Service and the successful concessions contractor use the trademarks. The National Park Service has brought a proceeding before the Trademark Trial and Appeal Board seeking cancellation of the registrations based upon “False Association”, “Abandonment” and “Dilution”.

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  • IP BLAWG

    Can I Copyright This?

    Beverly A. Berneman
    3/1/16

    In 1991, the U.S. Supreme Court decided that the standard of creativity for copyright protection required a minimal level of creativity. Over the last year, numerous decisions explored how low that level of creativity can go. %CUT% The First Circuit Court of Appeals held that a chicken sandwich and its recipe are not copyrightable (Norberto-Colon Lorenzana et al. v. South American Restaurants, Corp.). The Ninth Circuit Court of Appeals held that series of yoga poses is not copyrightable (Yoga College of India LP et al. v. Evolution Yoga LLC et al.). However, the Ninth Circuit Court of Appeals held that the Batmobile is copyrightable because it is considered a “character” (DC Comics v. Towle).

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  • IP BLAWG

    Apple v. FBI

    Beverly A. Berneman
    2/23/16

    After the shootings in San Bernardino last December, the FBI recovered an iPhone used by one of the shooters. The FBI doesn’t know the password and can’t unlock the phone. The FBI wants Apple to hack its own software by creating a back door into the phone. %CUT% No denying that the FBI has a serious problem. If it tries different passwords looking for the right one, the iPhone might lock down. The FBI wants Apple to create a new operating system that will allow the FBI access to the phone. But it’s not so simple. As Apple CEO, Tim Cook said in an open letter to customers, “Specifically, the FBI wants us to make a new version of the iPhone operating system, circumventing several important security features, and install it on an iPhone recovered during the investigation. In the wrong hands, this software — which does not exist today — would have the potential to unlock any iPhone in someone’s physical possession.” See the entire letter at http://www.apple.com/customer-letter/.

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  • IP BLAWG

    That's Not What I Signed Up For

    Beverly A. Berneman
    2/16/16

    The New York State Division of Human Rights used a licensed photo of Avril Nolan in an ad about HIV. Now it’s dealing with a judgment for defamation. What went wrong? %CUT% It all started when Avril posed for a photo that was going to be used for an article about New Yorkers who are interested in music. Imagine her surprise when the New York State Division of Human Rights (“NYSDHR”) used her photo with the caption “I Am Positive (+), I have Rights,” implying that she was HIV positive. Avril is not HIV positive. She sued NYSDHR for defamation. NYSDHR argued that it licensed the photo from Getty Images so it shouldn’t be liable for defamation. Avril won against the NYSDHR. Avril also sued Getty Images for violating her right of publicity. Getty Images argued that the photo was used in violation of the license so it wasn’t liable to Avril. Getty settled with Avril after its motion to dismiss was denied.

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  • IP BLAWG

    What Happens to "G-r-reat Ideas"

    Beverly A. Berneman
    2/2/16

    Kyle Wilson had a great idea for a cereal breakfast bar. So he submitted to Kellogg Co.’s "G-r-reat Ideas” portal. When Kellogg used the idea without paying him, Wilson sued. %CUT% Kellogg’s portal allowed submissions of ideas. But the terms and conditions said that Kellogg wasn’t obligated to pay for a submitted idea; even if Kellogg decided to use it. Wilson lost his suit against Kellogg. The court held that Kellogg’s terms and conditions clearly warned idea givers, like Wilson.

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  • IP BLAWG

    Playing at Trademark Use Gets Nowhere

    Beverly A. Berneman
    1/26/16

    The owner of the PLAYDOM trademark learned that trademark use and “website under construction” don’t play nice together. %CUT% David Couture got a registered trademark in 2008 for PLAYDOM. His specimen of use was a website page that described his company’s services. But it also said “Website under construction”. Years later, another company tried to register PLAYDOM. The applicant, Playdom Inc. (later acquired by Disney Co.) was refused registration based upon a likelihood of confusion with Couture’s trademark. Playdom Inc. brought a cancellation proceeding and won. The Federal Circuit Court affirmed the TTAB cancellation holding that the website advertised Couture’s readiness to perform services but he didn’t render any services until 2 years later. This decision has come under fire because prior case law saw “offering services” to be the same as “rendering services”. Critics also argue that the Lanham Act (15 U.S.C. §1053) establishes a different standard for use for services; a standard that Couture met. So the fact that Couture was offering his services should have been enough.

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  • IP BLAWG

    In Memoriam: David Bowie

    Beverly A. Berneman
    1/19/16

    David Bowie, a musical and cultural icon known for pushing boundaries, passed away on January 10, 2016. Did you know that he also pushed the boundaries on monetizing Intellectual Property? %CUT% In 1997, Bowie was looking for a new revenue stream. With the help of investment banker, David Pullman, Bowie issued asset-based securities for current and future revenues from 25 of his albums recorded before 1990. And thus the term ‘Bowie Bonds” came into being. Bowie used some of the money he raised to buy back songs from his former manager. Although revenue from the bonds suffered some bumps in the road acclimatizing to digital downloads, Bowie Bonds are still considered a success. So successful that other famous musicians, such as James Brown and Iron Maiden, also used the Bowie Bond model to raise revenue.

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  • IP BLAWG

    "Bleeping" Trademark

    Beverly A. Berneman
    1/12/16

    Thanks to The Slants, the Washington Redskins’ trademark may live to fight another day. In June 2014, the Washington Redskins lost the trademark of their name because the term “redskins” was offensive. The Slants, an all Asian American dance rock band, tried to register their name as a trademark. The USPTO refused registration on the basis that the mark was “offensive” and “disparaging”. The Slants appealed the ruling. The Federal Circuit Court overturned the ruling. The court acknowledged that disparaging marks can be considered hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech. According to the court, the government (in the form of the USPTO), cannot refuse to register disparaging marks because it disapproves of the expressive message conveyed by the marks. That means, the Washington Redskins may have a good shot at getting their trademark reinstated.

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  • IP BLAWG

    Caterpillar Gets Caught in its Own Butterfly Net

    Beverly A. Berneman
    1/5/16

    Caterpillar, Inc. is dealing with a $74 million trade secret verdict for misappropriating a supplier’s trade secrets. The supplier, Miller UK Ltd., had an agreement with Caterpillar to sell components. Miller brought suit against Caterpillar alleging that Caterpillar used its power as Miller’s largest customer to force disclosure of Miller’s trade secrets. Apparently, Caterpillar’s strategy was to cancel Miller’s contract and then produce its own components without having to pay Miller. The jury found in favor of Miller.

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  • IP BLAWG

    Santa Claus is Coming to Songwriter's Heirs

    Beverly A. Berneman
    12/22/15

    The heirs of the composer of “Santa Claus is Coming to Town” got an early Christmas present from the Second Circuit Court of Appeals. The song was composed in the 1930s. The 1976 Copyright Act allows a copyright owner to terminate a license during a five year period beginning 35 years after the date of execution of the license. The composer’s heirs served a notice of termination on the publisher, EMI. Due to confusion created by the intricacies between pre and post 1976 copyright law, plus the existence of two license grants that were signed 30 years apart, EMI refused to accept the termination. The Second Circuit held in the heirs’ favor. The heirs are going to get holiday royalties until 2029.

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  • IP BLAWG

    Fox News Fails to Blind TVEyes

    Beverly A. Berneman
    12/15/15

    TVEyes, Inc. is a database that allows its subscribers to search and aggregate news in the media. Fox News didn’t like that at all. So, Fox News sued for copyright infringement. TVEyes successfully argued that its use of Fox News’ copyrighted material was fair use. The District Court in the Southern District of New York held that TVEyes did not duplicate or usurp the value of Fox News’ broadcasts. TVEyes’ use was transformative because it provides a unique “database of everything that television channels broadcast, twenty-four hours a day, seven days a week”.

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  • IP BLAWG

    SCOTUS' Spidey Sense

    Beverly A. Berneman
    12/8/15

    When the patent ran out for a Spiderman web-shooter toy, the licensor insisted that he was entitled to royalties anyway. Not so says the U.S. Supreme Court. A patent gives you a right to exclude others from using your invention. But that right only lasts 20 years. In the case of Kimble v. Marvel Enterprises (as in Marvel Comics), Kimble licensed the patented web-shooter toy to Marvel. When a dispute arose over the patent, the parties entered into a settlement agreement that provided for a lump sum payment and a 3% royalty. The agreement was silent about how long the royalty payments would last. When the patent ran out, Marvel got a judgment declaring that it didn’t have to pay royalties anymore. Kimble wasn’t happy and so he appealed. The case went all the way to the U.S. Supreme Court. SOCTUS decided that once the patent expires, the right to royalties expires too. So Marvel didn’t owe any more royalties.

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  • IP BLAWG

    Sitting on Your Trademark Rights Can Hurt You

    Beverly A. Berneman
    12/1/15

    What if you allowed someone to use a trademark that is similar to yours for a pretty long time? The owners of the SMART ONES trademark for frozen foods, snacks and desserts can answer that question. When the owner of SMART BALANCE for heart healthy butter substitutes filed intent to use applications for frozen foods, SMART ONES opposed them citing a likelihood of confusion. The Trademark Trial and Appeal Board (TTAB) sided with SMART BALANCE and allowed the applications to go through. The TTAB found that a lot of factors weighed in favor of a likelihood of confusion, like channels of trade, relatedness of goods, goods sold to the same classes of consumers and a low degree of purchasing care when buying the products. But, the two marks have peacefully co-existed for 17 years with very little evidence of customer confusion.

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  • IP BLAWG

    Browsing Isn't a Virtual Handshake Deal

    Beverly A. Berneman
    11/17/15

    TAKE AWAY: This case is particularly instructive for e-commerce websites. A typical e-commerce website invites customers to browse and then buy. Back in the dark ages, before the Internet, this kind of relationship often involved a written agreement that everyone had to sign. The equivalent for commerce over the Internet has developed over time. Now, you can post your contractual terms and conditions on your website. But, it looks like you need to go a couple of steps further to make it a binding contract. If you want to avoid B&N’s result, then you have to give your customer notice and an opportunity to accept the terms and conditions.

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  • IP BLAWG

    #®?

    Beverly A. Berneman
    11/10/15

    Can a hashtagged key word or phrase in a Tweet be registered as a trademark? For the uninitiated, Twitter is a social networking service where people communicate with each other with short messages (a “Tweet”). A Tweet can be tagged using a hashtag symbol (#) before a relevant keyword or phrase to categorize the Tweet and help it show up in a search. A business can generate buzz by using a hashtagged key word or phrase. For example #android and #SNL. There have been a couple of hashtag wars this year. One involved two taco restaurants over #tacotuesday. The owner of the hashtagged phrase tried to stop the other restaurant from using “Taco Tuesday” in an ad. The social media backlash caused the owner to back down. In another case, the Fraternity Collection brought suit against a competitor for using #fratcollection and #fraternitycollection. The court denied the competitor’s motion to dismiss the complaint deciding that the competitor’s use of the trademarks with the hashtagged phrases could cause customer confusion.

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  • IP BLAWG

    Personal Data Needs a New Safe Harbor Port in the Storm

    Beverly A. Berneman
    11/3/15

    Before:Anyone who transferred data containing personal information from Europe to the U.S. was protected from liability for data breaches as long as they complied with Safe Harbor standards created by the European Commission. Thousands of companies "self-certified" themselves as having complied with the Safe Harbor standards. The Event: This month, the Court of Justice of the European Union issued its ruling in Schrems v. Data Protection Commissioner that the Safe Harbor is no longer available. The Court cited Edward Snowdon’s surveillance practices as proof that the Safe Harbor standards don’t protect European citizens. After: Anyone who transfers data containing personal information from Europe to the U.S. has to find new ways to protect themselves from liability for data breaches.

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  • IP BLAWG

    Why You Misappropriate a Trade Secret Doesn't Matter

    Beverly A. Berneman
    10/27/15

    Utah State Supreme Court’s decision in InnoSys v. Mercer gave a boost to plaintiffs in trade secret misappropriation cases by laying out a presumption of harm. But what’s interesting about this case is that Mercer didn’t use InnoSys’ trade secrets to compete with it. Mercer had been employed by InnoSys. She had signed a non-disclosure agreement. At some point, she e-mailed and downloaded confidential trade secrets to a thumb drive. Mercer disclosed the trade secrets in an administrative unemployment hearing after she was dismissed by InnoSys. She eventually deleted the trade secrets from her storage devices. But according to the Utah State Supreme Court, her misappropriation of the trade secrets had already caused harm to her employer. Bottom line is that Mercer was liable for trade secret misappropriation even though she didn’t use the trade secrets for competitive purposes.

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  • IP BLAWG

    Happy Birthday to All of Us

    Beverly A. Berneman
    10/20/15

    We can now sing the Happy Birthday song without paying a royalty. For decades, Warner/Chappell Music Inc. claimed to own, and demanded royalties to use, the lyrics to Happy Birthday song. The royalties ran between $1,500 to hundreds of thousands of dollars. The plaintiffs in Good Morning to You Productions Corp. v. Warner/Chappell Music, sued claiming that Warner/Chappell’s copyright in the lyrics was invalid (the melody was already in the public domain). A judge recently ruled in the plaintiff’s favor. The reason for the ruling? It isn’t clear cut. The judge only ruled that Warner/Chappell didn’t have the copyright. Some commentators are saying that the ruling means that the lyrics are in the public domain. Not exactly. There was evidence that the lyrics were written in 1893 which means the copyright had long expired. That means that the 1934 copyright registration could be invalid or forfeited because the lyrics weren’t an original work of authorship. And, there was no evidence that Warner/Chappell’s assignor ever got an assignment from the two sisters who wrote the lyrics. Does that mean that someone else could step up and claim ownership of the copyright? It’s a possibility but they’d have to explain why they’ve been sitting on their rights for decades.

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  • IP BLAWG

    How is Barclay's Brokerage Services Like Edward Scissorhands?

    Beverly A. Berneman
    10/13/15

    Barclays Capital Inc. wants to register the trademark “Lehman Brothers” for brokerage services. You may recall that Barclays bought the brokerage services section of the disgraced Lehman Brothers. But Tiger Lily Ventures wants to register Lehman Brokers for wine and spirits. The two companies are now locked in opposition proceedings seeking to cancel each other’s intent to use applications for the same trademark. Most notable are the quotes coming from the Tiger Lily side. Barclay’s bought the name with the brokerage services. But Tiger Lily says that Barclay’s has done everything possible to distance itself from the Lehman Brothers brand; so how can it have an intent to use the trademark? Quoting Tiger Lily’s counsel: “Is Barclays really going to use 'Lehman Brothers' again for banking?” Garson asked. “For us that would make as much sense as using 'Edward Scissorhands' for intimate massage products. The name is just toxic, from a banking perspective.”

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  • IP BLAWG

    Copyright Law Has a Mini-Insurance Policy

    Beverly A. Berneman
    9/30/15

    Following up on last week’s Dancing Baby post, it’s worth exploring the Digital Millennium Copyright Act (DMCA) a little more. Put code here The DMCA can protect websites from claims of copyright infringement. The DMCA protects four categories of Internet service providers: (1) new media services and websites that host servicers; (2) simple conduits that simply pass data; (3) services that cache information temporarily for users; and (4) information location services like search engines. The protection works like this. A website invites users to post content. The user uploads content that violates a third party’s copyright. The third party notifies the website with a “Take Down Notice”. The website has a reasonable time to remove the offending content. If the website removes the offending content, it’s protected from a copyright infringement law suit. In order to get the advantage of DMCA, the website has to register an agent with the Copyright Office.

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  • IP BLAWG

    Dancing Baby Has A Partial Reason To Keep On Groovin'

    Beverly A. Berneman
    9/22/15

    Who would have thought that literal and figurative music icon Prince would go after Stephanie Lenz who posted her adorable children dancing to his “Let’s Go Crazy” on YouTube. Well, he did. And litigation ensued. Prince, who is notorious for protecting every facet of his art, sent a takedown notice to YouTube under the Digital Millennium Copyright Act (“DMCA"). The DMCA allows a copyright owner to ask that content be removed from a website if he has a "good faith" belief that the use of the work interferes with his copyright. YouTube complied stating that the video infringed. Stephanie sent a counter-notification claiming that the video was not infringing. YouTube reposted the video . Stephanie sued on the basis that YouTube misrepresented in the take down notice that the use was infringing. The case made its way to the Ninth Circuit Court of Appeals which held that, before sending a takedown notice under the DMCA, the copyright owner’s “good faith” belief requires consideration of fair use. The case now goes back to the trial court. Dance on baby, even though you are probably about 10 years old by now.

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  • IP BLAWG

    Michael Jordan's IP Lessons

    Beverly A. Berneman
    9/8/15

    The great Michael Jordan can teach us all some things about how to exploit our Intellectual Property. Most recently to the tune of $8.9 million. MJ obtained a jury verdict against the now defunct Dominicks food stores for violating his Right to Publicity which is the right to protect one's persona from unauthorized commercial use. Dominicks had placed an ad in a Sports Illustrated magazine that commemorated MJ's career. The ad used MJ's name and image and included a coupon. The court held that the ad went too far into commercial use without MJ's permission. Then the issue of damages was decided by a jury. They didn't give MJ all he asked for. But it's still a lot of money. MJ says he's going to donate any recovery he gets. MJ also has a suit pending against Jewel Food Stores for an ad it placed in the same magazine. We'll see how that goes.

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  • IP BLAWG

    To NDA or Not to NDA

    Beverly A. Berneman
    11/3/14

    The New York Times Small Business Blog published an article about the fate of non-disclosure agreements (“NDA”) for emerging and seed companies (Why More Start-Ups Are Sharing Ideas Without Legal Protection, New York Times, July 2, 2014). The article makes it appear that initial stage companies shouldn’t bother with a written NDA. This is dangerous advice. Sharing ideas without some protection could put an entire business model at risk. The article has some good suggestions like (a) make sure you have something to protect and (b) know your audience. But the article also suggests filing a provisional patent. The problem is that not every great idea is patentable. The article also doesn’t cover a critical issue which is how a lack of confidentiality would destroy protection for your trade secret.

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  • IP BLAWG

    Fair Use Doesn’t Mean Every Use

    Beverly A. Berneman
    11/2/14

    Two Federal Appellate Courts are duking out whether putting your own spin on someone else’s copyrighted work is enough for a fair use defense. The Copyright Act gives us four factors to look at for fair use: (1) the purpose of the use; (2) the nature of the work; (3) how much of the work is used; and (4) the effect the use has on the market for the original work.

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