• IP BLAWG

    Zazzle’s Defense Didn’t Dazzle the Court

    Beverly A. Berneman
    5/5/20

    Zazzle, Inc. is an on-line marketplace for imprinted merchandise. Zazzle will then imprint the image on things like coffee mugs, t-shirts and, these days, face masks. Zazzle uses stock images but it also allows someone to upload their artwork or a graphic.

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  • IP BLAWG

    Reply All

    Beverly A. Berneman
    4/28/20

    If the words “reply all” sound familiar to you, then you probably use email to communicate with others for various and sundry reasons. Despite their widespread use, these two words became the subject of trademark litigation.

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  • IP BLAWG

    Dropping in Bankruptcy

    Beverly A. Berneman
    4/21/20

    Thru Inc. sued Dropbox for trademark infringement claiming to own the “DropBox” trademark. After a lot of litigation and some really good discovery, Dropbox was able to show that Thru may have had some bare rights to the “DropBox” mark but it never actually used the mark. Thru then sat back and watched as DropBox branded itself and became a household name for shareable file storage. Then Thru continued to drag its heels in litigation to cash in on DropBox’s initial public offering in 2018. DropBox discovered emails from Thru’s CEO which unabashedly chronicled Thru’s strategy. In the end, DropBox obtained a $2.3 million judgment that included attorney’s fees and costs.

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  • IP BLAWG

    Public Exposure

    Beverly A. Berneman
    4/14/20

    For your stay at home pleasure, 2020 has granted us with a whole inventory of content that is now in the public domain.

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  • Benefits Bulletin

    What Health Plan Fiduciaries Need to Worry About

    Andrew S. Williams
    2/25/20

    Much has been written about excess fee claims involving 401(k) and 403(b) retirement plans. In fact, a St. Louis law firm has specialized in filing class action excess fee cases around the country. So, the personal risk to retirement plan fiduciaries has been well documented.

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  • IP BLAWG

    USPTO Has to Go Dutch

    Beverly A. Berneman
    2/25/20

    In the U.S., each side usually pays their own attorney’s fees. This is called the American Rule. Until about six years ago, that rule applied to appeals from USPTO decisions. So, if an applicant appealed the USPTO’s decision not to issue a patent or register a trademark, the applicant paid the applicant’s attorney’s fees and the USPTO paid its staff attorneys their salaries. Then about 6 years ago, the USPTO decided anyone who appealed an adverse ruling should have to pay the USPTO’s attorneys’ fees as well as their own.

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  • IP BLAWG

    The Cyber Insurance Flip Side

    Beverly A. Berneman
    2/18/20

    We’ve covered denial of insurance coverage for trade secret misappropriation and affirming insurance coverage for copyright infringement. Now we turn our attention to the newer kid on the insurance block, cyber insurance.

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  • IP BLAWG

    Insurance Flip Side

    Beverly A. Berneman
    2/11/20

    Last week’s blog covered a situation where an insurance company wasn’t required to cover the costs of defending a misappropriation of trade secrets case. This week’s blog covers a situation where the insurance company was required to cover the cost of defense of an Intellectual Property dispute.

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  • IP BLAWG

    Taking Candy from a Candy Company

    Beverly A. Berneman
    2/4/20

    If you like Sour Jacks and/or Welch’s Fruit Snacks, a lot goes on behind the scenes for your sugar pleasure. Promotion In Motion, Inc. or PIM holds the formulas and manufacturing process for the sugary snacks as trade secrets. PIM also owns the design of the packaging. Ferrara Pan Candy Co. manufactured and sold the sugar bombs for PIM from 1990 to 2014 pursuant to a confidentiality agreement and license.

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  • IP BLAWG

    Zero is Worth More Than Zero

    Beverly A. Berneman
    1/28/20

    Back in November 2016, this blog covered the case of the trademark, ADD A ZERO, for wearing apparel. The trademark is owned by Christian Faith Fellowship Church (“CFFC”). Adidas, the international sportswear powerhouse, sought to cancel CFFC’s trademark for various reasons. Adidas took on the cause because the USPTO refused registration of Adidas’s trademark, ADIZERO, due to a likelihood of confusion. Adidas argued that CFFC wasn’t using the trademark in commerce because CFFC only sold two items. The Federal Circuit Court of Appeals held that there is no ‘de minimis’ sale rule and so two sales were enough.

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  • IP BLAWG

    Ignorance Is a Catch-22

    Beverly A. Berneman
    1/14/20

    Some companies have an “ignorance is bliss” policy when it comes to reading patents. The belief is that if you don’t read it, you can’t be accused of knowing about it. And if you don’t know about it, you can’t be accused of willfully infringing on the patent. Willful patent infringement can increase or enhance the damages recoverable by a plaintiff. So a lack of willfulness can change the value proposition of prosecuting or defending an infringement suit. But is an ignorance policy a good idea?

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  • Benefits Bulletin

    ERISA 2019 Hall of Shame

    Andrew S. Williams
    1/14/20

    Doctor X’s various schemes to deprive employees of their plan benefits reduced their lump sum payments by almost one-half! This could leave a lot more money for Doctor X – who also was a participant in the plan.

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  • IP BLAWG

    Fake Influencer Followers Means Real Consequences

    Beverly A. Berneman
    1/8/20

    Influencers are individuals who have authority, knowledge, a position or a relationship that gives them the power to affect purchase decisions of others. Given the relationship between the number of an influencer’s followers and the influencer’s value, it’s no surprise that an enterprising entrepreneur could help influencers increase the number of their followers.

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  • Benefits Bulletin

    IRS Announces Painless Retirement Plan Fix

    Andrew S. Williams
    12/18/19

    What can you do if your retirement plan operations don’t square with the provisions of your plan document?

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  • IP BLAWG

    Happy Holidays™ or ®?

    Beverly A. Berneman
    12/17/19

    As the holiday season ramps up, a question arises. Can someone own a holiday trademark? Many have tried with various levels of success. The successful registrations don’t try to corner the market on holiday greetings. Here are some examples.

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  • IP BLAWG

    Do Not Pass Go and Do Not Collect License Fees

    Beverly A. Berneman
    12/10/19

    Qualcomm is a leader in the market of wireless chip connectivity that every cell phone needs. Qualcomm holds patents related to 3G, 4G and 5G networking technology as well as other software. Qualcomm demanded a license fee for every device that connects to a cellular network. In other words, all cell phones. It forced its customers, like Apple, to enter into patent license agreements for Qualcomm’s technology; even if the customer was using a chip manufactured by someone else, like Intel.

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  • IP BLAWG

    Landlord’s Blind Eye Causes Sunglasses Burn

    Beverly A. Berneman
    12/3/19

    Luxottica Group S.A. owns the trademark, Ray-Ban, and its subsidiary owns the trademark, Oakley, for sunglasses. According to Luxottica, International Malls’ subtenants were selling counterfeit Ray-Bans and Oakleys. Luxottica sued the landlords for trademark infringement. The landlords defended the action asserting that they aren’t the infringers; their subtenants are.

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  • IP BLAWG

    Exceptions to Exceptions

    Beverly A. Berneman
    11/19/19

    The New Republic magazine published 44 film reviews written by famed film and theater critic, Stanley Kauffmann. The magazine didn’t hire Kauffmann to write the reviews. He wrote them, submitted them and the magazine printed them. The parties never really talked about who owned the articles. They never entered into a “work for hire” agreement.

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  • IP BLAWG

    Uncertified

    Beverly A. Berneman
    11/13/19

    USA-Halal entered into a certification license agreement with Best Choice Meats, Inc. As part of the license to use the certification on meats and poultry, Best Choice had to submit monthly production reports to USA-Halal. Three years into the license, Best Choice stopped submitting the reports. USA-Halal terminated the license. Best Choice told USA-Halal that it stopped using the certification mark. Technically, that may have been true. However, Best Choice started using a trademark that looked a lot like the USA-Halal trademark.

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  • IP BLAWG

    That’s Obvious

    Beverly A. Berneman
    11/5/19

    TiVo is a television digital recording device (“DVR”). TiVo has search functions that allow the user to search broadcast and streaming television programs and schedule recordings for later viewing. TiVo acquired another company that it spun off as a subsidiary named Veveo. Through the acquisition, Veveo picked up a series of patents, one of which was a digital search system. The patent described the invention as a system for associating characters entered into a search bar with numerical identifiers and linking search targets, such as digital files, with digital combinations. You don’t have to know what that means. Just know that robust search capabilities would allow TiVo to surpass competitors like Comcast.

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  • Benefits Bulletin

    ERISA Fiduciary Claim Barred By Employee Release

    Andrew S. Williams
    11/5/19

    The U.S. District Court for the Southern District of Iowa granted Bankers Trust’s motion for summary judgment. In doing so, the court determined that the language of the Release was so broad that it included ERISA claims, and that Bankers Trust was protected by the Release as a person “acting on behalf of” Telligen stockholders.

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  • IP BLAWG

    Halloween Goes Bananas

    Beverly A. Berneman
    10/29/19

    In 2017, Rasta Imposta sued Kmart for copyright infringement because Kmart was selling a virtually identical banana costume (See Blawg Post dated 10/31/2017). The parties settled. Then Rasta Imposta’s competitor, Kangaroo Manufacturing Inc. started selling a substantially similar banana costume. The founder of Kangaroo had once worked for Rasta Imposta and knew that Rasta Imposta had registered the copyright in the banana costume. But Kangaroo manufactured and sold the banana costume anyway.

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  • Benefits Bulletin

    Who Owns A Participant's Personal Information?

    Andrew S. Williams
    10/24/19

    Service providers for 401(k) and other retirement plans require access to personal data on participants including name, age, address, date of hire, compensation and possibly social security number. This data is necessary to allow plan administrators and recordkeepers to properly allocate plan contributions and earnings to individual participant accounts, to prepare participant statements and for income tax reporting purposes.

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  • IP BLAWG

    An Exit Strategy Doesn’t Include Taking Trade Secrets

    Beverly A. Berneman
    10/22/19

    Trade secrets have 3 major elements. First, they have to be not generally known or readily ascertainable. Second, the owner of the trade secrets gets economic value from them because they’re not generally known. Third, they have to be the subject of reasonable measures of protection from disclosure.

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  • IP BLAWG

    Punsters Delight

    Beverly A. Berneman
    10/15/19

    In two recent cases, trademark holders learned that it was a huge Missed-Steak to sue when puns were involved.

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