• 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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  • IP BLAWG

    Antitrust and Stealing Trade Secrets Aren’t the Same Thing

    Beverly A. Berneman
    10/8/19

    Premier Comp Solutions LLC develops customized panel listings of healthcare providers for workers’ compensation claims. The technology allows employers to contain workers’ compensation costs by ensuring that a chosen healthcare provider complies with local workers’ compensation laws with respect to qualifications, licensing and quality of care. The beauty of the system is that it can be localized by the state where the employee is located. The system was protected as a trade secret.

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  • IP BLAWG

    THE

    Beverly A. Berneman
    10/1/19

    That’s not a typo. The subject of today’s blog is THE. THE Ohio State University filed an application to register THE for wearing apparel. According to news sources, Ohio State demands to be called “THE Ohio State University”. Ohio State argues that THE is part of its name. Sports and journalists have often commented on Ohio State’s branding insistence calling it stupid, ridiculous, pompous and arrogant. Ohio State responds to these negative comments saying that it has every right to protect its brand.

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  • IP BLAWG

    Big Little Copyright Lies

    Beverly A. Berneman
    9/24/19

    An application to register tells the Copyright Office about you, your work and why you’re entitled to register a copyright. To further this goal, the Copyright Act requires that you include only accurate information in your copyright application. Gold Value International Textile d/b/a Fiesta Fabrics learned the consequences of not following this rule the hard way.

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  • Benefits Bulletin

    Retirement Plan Records and the Forever Rule

    Andrew S. Williams
    9/20/19

    Retirement plan retention requirements are pretty clear. The retention lapses that do occur both in the Estate of Barton case and in our experience usually result from business acquisitions where the acquiring business either does not receive or fails to retain the “forever” records of the acquired entity. So, any due diligence checklist in a business acquisition should contain a detailed inquiry about the target’s “forever” records. And yes, you can retain your own forever records electronically in accordance with applicable Department of Labor regulations.

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  • Property Tax Insights

    How will higher property taxes impact lender decisions?

    Donald T. Rubin
    9/10/19

    As a result of the unprecedented assessment increases to commercial and industrial property values in Cook County, how will lenders deal with the resulting impact on their borrowers' tax liabilities? How will they respond to borrowers who claim they cannot meet their lender's call for substantial upward adjustments in their tax escrows? With regard to income producing properties, what happens when loan to value ratios change due to the decline in market values resulting from the affect of additional property tax expenses on the borrower's NOI. A $50,000 increase in property tax expenses, capped at 7%, could diminish the market value of a property by more than $700,000. It's not always that simple, but a decline in market value is the logical consequence of a higher tax bill for both owner/occupants and landlords. And that leads to an additional line of inquiry as to how tenants, and prospective tenants, will respond to a significant increase in their overall rent coming from these potential increases in their property tax liabilities? Will it, or has it already, caused a slow down in both leasing and sales activity? Will prospective tenants, as well as prospective purchasers and lenders, be taking a more cautious approach to making their final decisions going forward? How will lenders ultimately respond to their increased risk as existing loan to value ratios begin to fluctuate? The typical response would be for them to adjust interest rates upward where possible, to account for the sudden increase in risk, and to work to get their loan to value ratios back in synch. How they choose to accomplish this could have significant consequences for the real estate market.

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  • IP BLAWG

    The Meme-ification of Pepe the Frog

    Beverly A. Berneman
    9/10/19

    Matt Furie describes his popular Internet character “Pepe the Frog”, as a “cool, chill frog dude”. Celebrities like Katy Perry and Nicki Minaj have published Pepe the Frog memes.* Online message boards posts fan art featuring Pepe the Frog and calling them “rare Pepes”. Pepe the Frog’s Internet popularity turned into a financial windfall for Matt.

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  • Property Tax Insights

    Cook County Assessor presents gifts to 1100 residential taxpayers in New Trier Township

    Donald T. Rubin
    9/4/19

    New Trier Township is located in Cook County, IL. The entire township was subject to a reassessment in 2019. The Assessor opened the township for appeals on April 29 2019. The Assessor then certified the final assessments for all real estate in the township on August 15, 2019, meaning that he had completed his work for the year and closed his books.

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  • Property Tax Insights

    Apparently No Evidence is Enough Evidence for the Cook County Assessor

    Donald T. Rubin
    8/22/19

    The Assessor proposed a 2019 market value of approximately $1,744,000 for a property. The party purchased the property for approximately $1,150,000 at the end of 2018 in an arm's length, brokered transaction. The evidence tendered in support of the appeal included the following documents:

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  • IP BLAWG

    Loose Lips Sink Trade Secret Defense

    Beverly A. Berneman
    8/20/19

    Acacia Communications got tired of paying a license fee to Viasat, Inc. for trade secret protected technology. So Acacia supposedly created replacement technology. The problem? Acacia used Viasat’s trade secrets.

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  • Benefits Bulletin

    Should 401(k) Fiduciaries Offer In-Plan Annuities?

    Andrew S. Williams
    8/14/19

    Legislative concerns about 401(k) participants who are financially unprepared for retirement has resulted in a number of specific provisions intended to encourage participants to save more. Those provisions include tax credits for small businesses that include automatic enrollment provisions in their 401(k) plans, expanded availability of multiple employer plans, 401(k) eligibility for tenured part-time employees, postponed start date for required minimum distributions from age 70½ to 72, and penalty free participant withdraws of up to $5,000.00 upon the birth or adoption of a child.

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  • IP BLAWG

    Dental Supplier Gets a Judicial Root Canal

    Beverly A. Berneman
    8/13/19

    If you needed a crown or root canal lately, your dentist may have used a fancy wand to scan and send a picture of your mouth to the dental lab. Chances are that the scanner was the Itero Element scanner, a computer scanning system that is manufactured by Align Technologies. The Itero scanner requires a disposable sleeve for the wand. One of Align’s competitors, Strauss Diamond Technologies, began selling a competing sleeve, called “MagicSleeve”. In its advertisements, Strauss used Align’s trademarks in hashtags, product descriptions and product images.

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  • IP BLAWG

    Purple, I Mean, Orange Rain

    Beverly A. Berneman
    8/6/19

    In 1981 the well-known photographer, Lynn Goldsmith, took a series of photographs of the pop star, Prince. In 1987, Vanity Fair magazine commissioned Andy Warhol to create illustrations from the Goldsmith photos for their article titled “Purple Fame”. Goldsmith sued the Warhol Foundation, the owner of the works, for copyright infringement.

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  • IP BLAWG

    Fraudulent Trademark Ripped Up By Terror Dog

    Beverly A. Berneman
    7/30/19

    When an applicant fills out a trademark application, the applicant has to state under oath that it is the bona fide owner of the trademark. If that isn’t true, the applicant has committed a fraud in the application process.

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  • IP BLAWG

    If You See Something, Say Something Fast

    Beverly A. Berneman
    7/24/19

    CMI knew (or should have known) that Iowa Parts was manufacturing competing replacement parts. Iowa Parts made no secret of it (pun intended). Then in 2016, Iowa Parts lowered its prices and cut deep into CMI’s revenues. That’s when CMI sued for misappropriation of trade secrets under the Defend Trade Secrets Act (“DTSA”).

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  • Benefits Bulletin

    Surprise Billing - And What You Can Do About It

    Andrew S. Williams
    7/22/19

    Roughly one in six emergency room or hospital visits results in surprise billing, although the odds vary significantly depending on where you live. Such charges can be significant as the out-of-network doctor typically charges a full “list price” for services. Consumer bankruptcies have resulted because in some cases surprise billing has amounted to tens of thousands of dollars.

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  • IP BLAWG

    Strike Out for Cubnoxious

    Beverly A. Berneman
    7/16/19

    After the Chicago Cubs won the World Series in 2016 (breaking a 108 year losing streak), Ronald Mark Huber filed an intent to use trademark application for the word “Cubnoxious”. The Chicago Cubs Baseball Club LLC opposed the application. The Cubs were able to establish that Ronald had no real intent to use the trademark in commerce. All he had was one sheet of paper showing potential imprints on t-shirts. He submitted a conclusory statement that he intended to use it in no specific geographic area and not specifically to target Cubs fans. He had no business plan, no marketing plan, no established business experience and no experience in the sports industry. It could have ended there but the Cubs also opposed the application on the basis of a likelihood of confusion. That’s where the Trademark Trial and Appeal Board’s decision in favor of the Cubs got fun.

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