• IP BLAWG

    Holes in the Contractual Jurisdiction Net

    Beverly A. Berneman
    5/7/19

    Ahlam Ramzy, a former employee of Perfect Brow Art, Inc., left and started her own Tennessee eyebrow threading salon. Perfect Brow brought suit against Ahlam in Chicago for trademark infringement, trade dress infringement, false designation of origin, trade secret misappropriation and unfair competition.

    Read More
  • Property Tax Insights

    Predictability of Cook County Property Taxes

    Donald T. Rubin
    5/3/19

    Has the value of your business property actually increased by 82% in just 3-years?

    Read More
  • IP BLAWG

    Selling Tires Isn’t Like Building Bridges

    Beverly A. Berneman
    4/30/19

    Express Oil Change used the service mark “Tire Engineers” for its tire sales, repair and maintenance services. The Mississippi Board of Licensure for Professional Engineers & Surveyors had a problem with that. According to the Board, no one can use the word “engineer” unless they are actually engineers and have registered for a license to practice engineering in Mississippi.

    Read More
  • Property Tax Insights

    2019 North Suburban Cook County Assessments Causing a Crisis

    Donald T. Rubin
    4/24/19

    In the first three townships having a significant commercial and/or industrial tax base, (Norwood Park, Evanston and Elk Grove, the new assessor has been increasing market values by as much 50 to 300%. He claims that properties in the northern suburbs have been grossly underassessed for years, hence a 1-year catch-up was justified. Of course, no consideration was given to the jobs that will be lost as tenants and companies relocate, nor to the investors who will no longer invest in Cook County, nor to the companies that will no longer consider locating in Cook County, nor to the existing companies that will jettison their expansion plans. The same is true for owners of residential income properties that have also experienced significant increases. Who will be able to afford the higher rents that landlords will try to pass on to them? As to the homeowners, many of whom saw only minor increases, what will become of their property values if local jobs disappear and they cannot sell their houses? To date, the assessor has stubbornly refused to grant relief on a vast majority of commercial and industrial appeals, as his property valuations are apparently perfect.

    Read More
  • IP BLAWG

    Angels Fall from Grace

    Beverly A. Berneman
    4/23/19

    VidAngel Inc. removed nudity and violence from films and then sold the ‘redacted’ versions. Disney Enterprises, Inc. its subsidiary Lucasfilm Ltd. LLC, Twentieth Century Fox Film Corp. and Warner Bros. Entertainment Inc. sued VidAngel for copyright infringement.

    Read More
  • Property Tax Insights

    The Never Ending Battle Between Qualifying Factors for Receiving a Charitable Property Tax Exemption

    Donald T. Rubin
    4/17/19

    In the never ending battle between the qualifying factors for receiving a charitable property tax exemption as first enunciated in the Korzen case, Methodist Old Peoples Home v. Bernard Korzen, County Treasurer, et al, 233 N.E, 2d, 537, 39 Ill.2d 149 (1968), the Illinois Supreme Court initially set forth the following criteria for successfully obtaining a property tax exemption.

    Read More
  • IP BLAWG

    Looks Fair to Me

    Beverly A. Berneman
    4/16/19

    Using someone’s trademarks when criticizing their products or services can be tricky. But if you do it the right way, it could be considered nominative fair use.

    Read More
  • Benefits Bulletin

    Court Case Clears the Way for Illinois Secure Choice Program

    Andrew S. Williams
    4/12/19

    The Illinois Secure Choice Savings Program requires employers with at least 25 Illinois employees to set up a state-sponsored IRA based retirement program if they do not already have a retirement plan. Although the program is funded solely by payroll contributions from employees, subject employers must go through an online registration and enrollment process, forward payroll contributions to the program custodian and provide program information to employees.

    Read More
  • IP BLAWG

    An Oral Assignment Worth The Paper It’s Not Written On

    Beverly A. Berneman
    4/9/19

    The famous movie producer, Sam Goldwyn, is credited with saying that “An oral contract isn’t worth the paper it’s written on”. The son of Bob Ross, the Joy of Painting icon, found out that there’s an exception to this rule.

    Read More
  • IP BLAWG

    The Crashing and Burning of a Trade Secret Case

    Beverly A. Berneman
    4/2/19

    Swarmfly Inc. and CloudFlare Inc. courted each for a potential acquisition and licensing relationship related to video streaming service technologies. Each party signed non-disclosure agreements. Sadly, the courtship didn’t lead to a marriage proposal and each party went their separate ways. Until, Swarmfly sued CloudFlare for trade secret misappropriation.

    Read More
  • IP BLAWG

    Casino Dice Game Patent Application Had No Luck

    Beverly A. Berneman
    3/26/19

    Marco Guldenaar Holding BV filed a patent application for a casino dice game. The claims in the patent covered unique markings on the dice and the rules of the game. Guldenaar Holding threw snake eyes when the United States Patent and Trademark Office rejected the application and the rejection was affirmed on appeal to the Federal Circuit of Appeals.

    Read More
  • IP BLAWG

    The Shape of Things to Come

    Beverly A. Berneman
    3/19/19

    The shape of your next burger may be protected by a trademark registration.

    Read More
  • IP BLAWG

    Freeing a Princess from a Trademark Tower

    Beverly A. Berneman
    3/12/19

    Anyone with a legitimate interest can oppose the registration of a trademark. But what does “legitimate interest” actually mean. It looks like Rapunzel may help answer that question.

    Read More
  • Property Tax Insights

    Contesting your property tax assessment in court

    James W. Chipman
    3/8/19

    Boards of review don’t have the final say about property tax assessments, however they’re a necessary stop in the appeal process. Taxpayers who are unhappy with their board decision have two options: appeal to the state Property Tax Appeal Board (PTAB) as described in my Aug. 24, Sept. 12 and Nov. 27 blogs; or, file a tax objection complaint in the circuit court. You cannot file appeals in both venues. The good news is that taxpayers who miss the 30-day filing deadline for taking an appeal to the PTAB still have time to pursue the tax objection remedy.

    Read More
  • IP BLAWG

    No Shortcut for Copyright Plaintiffs

    Beverly A. Berneman
    3/5/19

    In my blog post of August 1, 2017, I posed the copyright litigation dilemma: “To File or Not to File”. On March 4, 2019, the US Supreme Court resolved the dilemma once and for all.

    Read More
  • Benefits Bulletin

    Will a MEP Plan Solve Your 401(k) Fiduciary Problems?

    Andrew S. Williams
    2/26/19

    Department of Labor proposed regulations would allow certain employers (including employer groups or associations) and business owners with no employees to share a single 401(k) plan. This arrangement would transfer administrative and compliance responsibility to the sponsor of the retirement plan under a multiple employer plan, or “MEP.”

    Read More
  • IP BLAWG

    Public Information Can Transform into a Trade Secret

    Beverly A. Berneman
    2/26/19

    Public information can’t be a trade secret because it’s, well, public. But a combination of public information arranged or organized in a unique, economically advantageous way, can be a trade secret. That’s what Diego DeAmezaga learned to his chagrin. Diego worked for AirFacts, Inc. a software company that licenses auditing software for air fare comparisons. Diego worked painstakingly and expertly to create flow charts that AirFacts used in its software development. When Diego left AirFacts, he attached the flow charts to his resume. AirFacts brought suit against Diego for trade secret misappropriation under the Maryland Uniform Trade Secrets Act (MUTSA). The Maryland District Court dismissed the complaint. The Fourth Circuit Court of Appeals reversed the dismissal. The Court held that the flow charts had independent economic value separate from the public information they contained. AirFacts had taken reasonable measures to keep the flow charts secret by requiring employees to sign confidentiality agreements and giving only a few employees access to certain accounts. So the public information in the flow charts were trade secrets.

    Read More
  • IP BLAWG

    This Song Doesn't Mean What It Used To

    Beverly A. Berneman
    2/19/19

    In the olden days, you’d buy an album and when you grew tired of it you’d sell the album to a used record store. That’s because you owned the physical record and once you bought it, that record was yours to do with as you please. This is called the “First Sale Doctrine”. Nowadays most people download their tunes. They still buy or rent it but now they don’t have a physical embodiment of the music. Relying on the First Sale Doctrine, ReDigi Inc. had offered a service whereby you could upload your digital music that you legally purchased from iTunes and resell it. Capitol Records LLC had a problem with that. Capitol Records sued ReDigi for copyright infringement arguing that the First Sale Doctrine doesn’t apply to digital files. The act of uploading the files to ReDigi’s server was creating a copy without permission. The Second Circuit Court of Appeals affirmed a judgment in Capitol Records’ favor. ReDigi also argued that its use was Fair Use. The court held against ReDigi on that as well because ReDigi was commercially motivated, made no changes to the copyrighted works, used the entire works, and resold the digital music files in the same market as the copyright owners.

    Read More
  • Property Tax Insights

    Found an assessment error, past or present? Here’s how to address it.

    Donald T. Rubin
    2/11/19

    Mistakes happen. If a mistake occurs in the property tax process, it could be costly if not corrected. Fortunately, some errors are fixable -- even those that may have occurred in a previous year or years -- thanks to what is known as a Certificate of Error, or in property tax parlance, a C of E. When an assessment error is discovered, taxpayers can seek relief by filing a C of E with local assessing officials. However, be advised that the granting of a C of E by an assessing authority is discretionary, not mandatory.

    Read More
  • IP BLAWG

    Call Me By My Own Name

    Beverly A. Berneman
    2/5/19

    Using your name as a trademark is doable. Even if someone else has the same name. %CUT% A surname is considered a descriptive trademark because it references a person or company who’s providing the goods and services. Generally, descriptive marks can’t be registered as trademarks. But, the recent case between The Saint Louis Brewery (“SLB”) and Phyllis Schlafly and Bruce Schlafly (the “Schlaflys”) demonstrated how to get a trademark in a surname. The Schlaflys are family members of the late Phyllis Schlafly who was a writer and political activist best known for her opposition to the women's movement and especially the Equal Rights Amendment. Bruce Schlafly is a doctor and he uses his name in his medical practice. SLB marketed its beer using a logo design that incorporated the name of one of the founders, Thomas Schlafly, for about 30 years. SLB sold more than 75,000,000 units of beer, not counting restaurant sales. SLB applied to register the word mark “Schlafly” saying that the surname has acquired distinctiveness through secondary meaning (connecting the name to the goods) and was no longer merely descriptive. The Schlaflys opposed the registration. The Schlaflys argued that being associated with beer was going to have a negative effect on the name. The Trademark Trial and Appeal Board (“TTAB”) denied the opposition. The Schlaflys appealed to the United States Court of Appeals for the Federal Circuit (“CAFC”) arguing that the use of the name violated the First Amendment and their Due Process Rights. The Schlaflys argued that the name “Schlafly” is recognized primarily as Phyllis Schlafly’s surname, and that the CAFC should adopt a new test called the “change in significance” test, “whereby a surname cannot be registered as a trademark without showing a change in significance to the public from a surname to an identifying mark for specified goods.” The CAFC rejected the Opposers’ arguments and affirmed the TTAB’s decision.

    Read More
  • IP BLAWG

    Confidentially Speaking or Not Speaking

    Beverly A. Berneman
    1/29/19

    Breaking attorney-client privilege can open a floodgate of information in infringement litigation.

    Read More
  • Benefits Bulletin

    ERISA 2018 Hall of Shame

    Andrew S. Williams
    1/24/19

    In McLain v. Poppell, it was alleged that Dr. Poppell, owner of the Emerald Coast Eye Clinic and trustee of its 401(k) plan with total investment discretion, invested plan assets primarily in VirnetX, a publicly traded company whose principal business was acting as a “patent troll” (a company that acquires patents and uses them primarily to sue other businesses for alleged patent infringement).

    Read More
  • IP BLAWG

    There’s No Crying in Copyright Infringement

    Beverly A. Berneman
    1/22/19

    The Copyright Act allows the recovery of actual damages; but not everything is included. %CUT% Rachel Ann Nunes wrote a novel called Bid for Love. Tiffanie Rushton admitted that she copied some of Bid for Love for her book, The Auction Deal. Rachel sued Tiffanie for copyright infringement. Rachel claimed that her actual damages were the lost sales of two books she didn’t write because of the emotional distress she suffered as a result of the infringement. The court held that the Copyright Act does not provide for the recovery of damages for emotional distress. So Rachel had no actual damages. However, she still is entitled to statutory damages.

    Read More
  • IP BLAWG

    The Prime Cut of Family Trademark Disputes

    Beverly A. Berneman
    1/15/19

    The grandkids didn’t play nice when it came to a famous restaurant trademark. %CUT% The nationally famous Palm steakhouse was founded in New York City in 1926 by John Ganzi and Pio Bozzi. The Palm enhances their patrons’ steak eating experience by decorating the walls with caricatures of famous people contributed by cartoonists who often exchanged their cartoons for meals. Eventually, the grandchildren took over management. One set of grandchildren became the majority shareholders and the other set of grandchildren were relegated to the ignominious status of minority shareholders. In 2012, the minority filed suit against the majority for breach of fiduciary duty based upon gross mismanagement and self-dealing with restaurants that were owned and operated solely by the majority. The chief issue was the sweetheart trademark license deal the majority’s restaurants were getting. Even though Palm was a national brand with almost 100 years of fame, the majority’s restaurants only paid a flat license fee of $6,000 a year for decades. The court agreed with the minority and entered judgment in their favor. In assessing the damages, the court accepted the minority’s expert damage witnesses’ conclusions that the majority’s restaurants should have paid a reasonable royalty of 5% of gross sales. The court concluded that the undervalued license agreements were self-dealing by the majority and an example of textbook fiduciary misconduct. Even though the statute of limitations limited the damages to six years of royalties, the royalty damages were over $68 million. Additional damages for other breaches of fiduciary duty were also awarded, along with interest and attorney fees, which increase the total judgment to over $120 million.

    Read More
  • Property Tax Insights

    Assessing renewable energy devices in Illinois

    James W. Chipman
    1/10/19

    Illinois is home to both the Windy City and a very flat, windy prairie. When the state’s first wind turbine went online in rural Lee County in 2003, no one could have guessed that 15 years later over 2,600 of these devices would be operational and account for 6.2% of all in-state electrical production.*

    Read More