• IP BLAWG

    Photos of Teeth Lack Copyright Bite

    Beverly A. Berneman
    7/24/18

    Every photo doesn’t automatically have the veneer of copyrightability. %CUT% Dr. Mitchell A. Pohl is a cosmetic dentist who is very proud of his work. He posted before and after pictures of one of his patients on his website. The photos showed the patient’s unfortunate ‘before’ smile (teeth, lips and small area around the mouth) and her ‘after’ beautiful healthy smile. Dr. Pohl registered the photos with the US Copyright Office. Then Dr. Pohl found seven websites that used his photos. He sued the alleged infringer, MH SubI, LLC d/b/a Offcite, for copyright infringement. While Dr. Pohl obviously does fantastic work, his photos didn’t bridge the gap into copyrightable subject matter. The District Court for the Northern District of Florida performed the judicial version of a root canal and granted Offcite’s motion for summary judgment. The court held that Dr. Phol’s self-serving affidavit was as convincing as “plaque on a molar” and no reasonable jury could find that the photos were creative enough for copyright protection. The court later performed another extraction by denying Dr. Pohl’s motion to reconsider.

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  • Property Tax Insights

    Are you taking full advantage of your property tax breaks?

    James W. Chipman
    7/23/18

    Illinois may be second in the nation when it comes to the highest property tax burden, but the Prairie State offers its fair share of tax breaks too. Here are a few of the laws designed to help homeowners and businesses cut their taxes.

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  • IP BLAWG

    A Heroic Rescue for a Cocky Word

    Beverly A. Berneman
    7/17/18

    With smoldering eyes, the beautiful and brave romance writers defended their realm. %CUT% Faleena Hopkins is a self-published romance author of steamy romances with titles like, “Cocky Soldier: A Military Romance” and “Cocky Roomie”. Faleena’s company, Hop Hop Productions, Inc., registered two trademarks for the word “cocky” in relation to a series of romance novels. Faleena sent out cease and desist letters to other romance writers advising them that “cocky” has found its one true love and no one else can use the word in their book titles. In response to this attempt to keep the word “cocky” from its other true loves, a group of romance writers published a collection of short stories titled “Cocktales: The Cocky Collective”. Faleena filed suit to stop the publication. The Author’s Guild and the Romance Writers of America, rescued one of the defendants, author Tara Crescent, by paying the past due taxes on the plantation, I mean, paying her legal bills. The court denied Faleena’s motions for a preliminary and temporary restraining order against the protest work. The court held that the “cocky” marks were weak and customers would not be likely to be confused between Faleena’s books and other books using the word in their titles. On another note, a proceeding to cancel Faleena’s trademarks is now pending before the Trademark Trial and Appeal Board. So there may be a sequel to this romantic tale of the word “cocky”.

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  • IP BLAWG

    Agents of Copying

    Beverly A. Berneman
    7/10/18

    Great Minds don’t always think alike when it comes to copyright infringement. %CUT% Great Minds is a company that publishes school books, including a math book. Great Minds licenses use of the book to schools for free as long as it is for strictly non-commercial use. Great Minds uses the Creative Commons non-commercial license for these deals. A school district in New York had FedEx make copies of the book instead of using the school’s copiers and staff. Great Minds sued FedEx for copyright infringement arguing that it licensed the work to the school district and not FedEx. Great Minds tried to distinguish between the school staff making copies and the school ‘jobbing’ out the project to FedEx. In affirming a ruling against Great Minds, the Second Circuit held that there really was no difference between school employees making copies and having FedEx’s copy service making copies. The Court identified FedEx as an agent of the school district. Under pure agency principals, the school district’s license to copy would extend to FedEx.

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  • Property Tax Insights

    Do assessors have the right to inspect your property’s interior?

    James W. Chipman
    7/9/18

    Township assessors will begin giving all properties in their jurisdiction a look when the 2019 reassessment period begins on January 1. State law requires property in Illinois to be reassessed once every four years, while it’s every three years in Cook County. But just how close of a look are assessors entitled to take?

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  • IP BLAWG

    Patent Turf Wars

    Beverly A. Berneman
    7/3/18

    The Patent Office can invalidate a patent even if a court did not. %CUT% Oils States Energy LLC won a patent infringement judgment against Green Energy Group LLC. But then, the Patent Trial and Appeal Board (“PTAB”) invalidated the patent leaving Oil States emptyhanded. Oil States appealed arguing that the PTAB, an Article III (of the US Constitution) administrative tribunal, couldn’t come out differently from an Article I court. The US Supreme Court decided against Oil States. SCOTUS held that patents are a “public right”. They are a public franchise granted by the government to the owner of the patent for a period of 20 years. So, the administrative body can determine patent validity without paying homage to a different decision by a federal court.

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  • Benefits Bulletin

    Fund Options That Protect 401(k) Fiduciaries

    Andrew S. Williams
    6/29/18

    Fiduciaries who handle investments for 401(k) and other self-directed retirement plans (such as 403(b) plans for not-for-profit organizations) are increasingly exposed to liability for their investment decisions. Those fiduciaries, including employers and any individuals charged with investment decision making, are being second guessed for the investment funds they select. Plan fiduciaries have been sued for a variety of allegations ranging from excessive fees, self-dealing, lack of transparency and poor investment performance. Some of these actions are filed as class actions, and like other fiduciary claims, they assert personal liability against plan fiduciaries.

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  • IP BLAWG

    Hey Mickey!

    Beverly A. Berneman
    6/26/18

    A press release doesn’t always amount to trademark use. %CUT% In the 1980s, Toni Basil had a one hit wonder “Mickey” that included the lyrics, “You’re so fine you blow my mind, Hey Mickey”. She sold the copyright to the recording of the song. When Disney Co., Kohl’s and Forever 21 started using the song in their advertising, they issued press releases and mentioned Toni’s name in connection with the song. Toni sued for various types of Intellectual Property infringement including trademark infringement based on the press releases. Toni argued that the use of her name violated trademark law based on false designation of origin. The judge disagreed and dismissed the trademark claim holding that the use of her name in the press releases as nominative fair use.

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  • Property Tax Insights

    Is your property record card accurate?

    James W. Chipman
    6/21/18

    An easy way to reduce your property’s assessment—and ultimately your tax liability—is to find and correct any inaccuracies that appear on your property record card.

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  • IP BLAWG

    A Better Way to Make and Bake a Data Center

    Beverly A. Berneman
    6/19/18

    A better way to build a data center can be protected as a trade secret. %CUT% BladeRoom developed a technique that allowed it to build data centers. BladeRoom’s system used prefabricated subassemblies that continued systems for air management, fire detection, security and lighting. Under a non-disclosure agreement, BladeRoom disclosed the system to Emerson Electric Co. and Facebook who were about to build a huge data center in Sweden. Emerson and Facebook took a pass on retaining BladeRoom. According to BladeRoom, Emerson and Facebook went ahead and built the data facility using BladeRoom’s system. BladeRoom sued for trade secret misappropriation. Facebook settled but Emerson went to trial and lost. Determining the misappropriation was a substantial factor in causing financial harm to BladeRoom, the jury awarded BladeRoom $10 million in lost profits and $20 million due to Emerson’s “unjust enrichment.” Emerson vows to appeal the verdict.

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  • IP BLAWG

    Spring/Summer 2018 Update

    Beverly A. Berneman
    6/13/18

    The last word sometimes isn’t really the last word. Here’s what happened after some previous posts: %CUT%

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  • IP BLAWG

    Implied License Keeps Electrical Standards Humming

    Beverly A. Berneman
    6/5/18

    An implied copyright license doesn’t need to be in writing. %CUT% In Intellitech Corp., v. The Institute of Electric & Electronics Engineers, Inc. a/k/a IEEE, IEEE is a non-profit organization that was trying to set standards for electrical engineers. Intellitech contributed to the “Test Access Architecture for Three-Dimensional Stacked Integrated Circuits.” Intellitech sued IEEE for copyright infringement when IEEE tried to use Intellitech’s contributions. The court denied Intellitech’s motion for summary judgment. The court held that even if Intellitech owned the copyright in the work, IEEE had a non-exclusive implied license to use it because the parties always intended that result.

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  • Property Tax Insights

    5 reasons to hire a real estate tax attorney

    James W. Chipman
    6/5/18

    Property taxes affect us all, whether we’re paying them directly or receiving services or benefits covered by the tax. That’s especially true in Illinois, where property taxes are the 2nd highest in the nation, behind only New Jersey.*

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  • IP BLAWG

    Myopic View of a Specimen

    Beverly A. Berneman
    5/29/18

    A specimen of use can make or break a trademark application. %CUT% Pitney Bowes wanted to register its new logo design as a trademark for mailing services among other things. For its specimen of use, Pitney Bowes used a screen shot from its website showing a picture of its “Mail&Go” kiosk that featured the new logo. The examining attorney refused the specimen saying that it showed the sale of products but not mailing services. Pitney Bowes appealed to the Trademark Trial and Appeal Board who reversed the refusal. The Board held that the examining attorney should have given greater deference to Pitney Bowes’ common sense explanation that its mailing services were offered to consumers through the self-service kiosk. Ultimately, Pitney Bowes submitted a substitute specimen of use anyway and the trademark has been registered.

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  • Benefits Bulletin

    Are You A "Checkbook Fiduciary?"

    Andrew S. Williams
    5/10/18

    There are judicial decisions holding that a business owner can be personally responsible when the owner has control over company finances and exercises such authority by paying company creditors instead of making required payments to a welfare benefit plan. But a recent decision of the U.S. Court of Appeals for the Ninth Circuit holds that an employer does not become an ERISA fiduciary merely because it breaks its contractual obligations to make welfare plan contributions (see Glazing Health & Welfare Fund v. Lamek).

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  • IP BLAWG

    There Wasn't a Dry Eye in the PTAB

    Beverly A. Berneman
    5/8/18

    Selling a patent doesn’t extend its limited life. %CUT% Allergan, Inc. owned the patents for Restasis which treats severe dry eyes by producing tears. The terms of the patents were about to expire. So, Allergan “sold“ the patents to the Saint Regis Mohawk Tribe and who then licensed all of the rights relating to the patents back for millions in upfront and annual royalties. In an IPR between Mylan Pharmaceuticals and Allergan, the Tribe unsuccessfully tried to dismiss the proceedings based on sovereign immunity. The PTAB’s decision had several important points which all seemed to spring from the PTAB’s view that any rights the Tribe had were “illusory”. First, it held that Allergan’s exclusive rights to the patent under the license from the Tribe were irrevocable and lasted only until the patents expired or are invalidated. Second, since Allergan retained the right to sue, the Tribe had no interest in the proceedings. Third, sovereign immunity is not a defense to IPR proceedings.

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  • IP BLAWG

    Possession is Nine Tenths of the Law or Is It?

    Beverly A. Berneman
    5/1/18

    You own your domain name, right? Maybe not. %CUT% While working for the law firm, Trowbridge Sidoti LLP, attorney, Kim Taylor, registered a large number of domain names for the firm, including SyndicationLawyers.com. She registered them in her own name instead of the firm’s, even though they were going to be used by the firm. After she left the firm, Kim refused to transfer the domain names claiming she owned them. Trowbridge Sidoti sued. After 10 hours of deliberation, the jury returned a verdict against Taylor with respect to all of the domain names. The jury found that Taylor’s actions only caused harm with respect to the SyndicationLawyers.com domain name and awarded $7,800.00 in damages.

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  • IP BLAWG

    Will Assign Doesn’t Mean Did Assign

    Beverly A. Berneman
    4/24/18

    Agreeing to assign a patent in the future isn’t an assignment at all. %CUT% Three co-inventors of a patent were employed by Company A. The co-inventors signed an employment agreement stating they “will assign” their rights to any patentable invention they created during their employment. Company A transferred its assets to Company B. Only two of the inventors assigned their patent rights to Company B. Based upon the employment agreement between the original company and the third inventor, the USPTO allowed Company B to prosecute the patent without the third inventor actually assigning the patent. Company B dissolved and its assets were transferred to Advanced Video Techs, LLC. Advanced Video then brought a patent infringement suit against HTC Corp. The district court dismissed the case holding that Advanced Video didn’t have standing to bring a patent infringement suit without joining the non-assigning inventor in the suit. On appeal, the Federal Circuit Court of Appeals affirmed the decision that Advanced Video didn’t have standing. The Federal Circuit reasoned that the agreement to assign something in the future, is not an assignment. The third co-inventor only promised to assign a future patent so she still had part ownership of the patent and had to be a party to the infringement suit.

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  • IP BLAWG

    The Long and Winding Road of Tom Brady Photos

    Beverly A. Berneman
    4/17/18

    Embedding a Twitter photo can be copyright infringement. %CUT% It all started when Justin Goldman took photos of Tom Brady and posted them on Snapchat. Content on Snapchat is supposed to disappear after a while. These photos didn’t. Instead, the photos ended up being reposted on various social media sites, including Twitter. Some media outlets then embedded the third party tweets with the photos in articles on their respective websites. Goldman filed suit against the media outlets for copyright infringement. The defendants brought a motion to dismiss arguing that they aren’t liable because they were protected under the “Server Test”. The Server Test says that images generated by a search engine, like Google, aren’t copyright infringement because search engines don’t store images. The court denied the motion. This wasn’t a case of linking to the origin of the photos. The defendants actively embedded the images which were immediately available upon opening the offending webpage.

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  • IP BLAWG

    The Case of the Disappearing Discount

    Beverly A. Berneman
    4/10/18

    Advertising a discount that disappears at point of purchase is a problem. %CUT% A customer of Hobby Lobby, wanted to buy a picture frame. She believed she was getting a 50 percent discount on a photo frame due to an in-store sign stating "Photo Frames 50% OFF the Marked price.” Hobby Lobby didn’t honor the discount but instead pointed to disclaimer language that said, "DISCOUNTS PROVIDED EVERY DAY; MARKED PRICES REFLECT GENERAL U.S. MARKET VALUE FOR SIMILAR PRODUCTS." The customer brought a class action suit based on false advertising as well as other causes of action. Hobby Lobby’s motion to dismiss was denied. The court held that a reasonable consumer could have been misled despite the disclaimer language. So the suit will proceed.

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  • Benefits Bulletin

    DOL Decrees New Rules For ESOP Fiduciaries

    Andrew S. Williams
    4/9/18

    All transactions involving the purchase or redemption of employer stock by an Employee Stock Ownership Plan (“ESOP”) must be conducted at fair market value. This assures that the statutory prohibited transaction exceptions available to compliant ESOPs will apply. Fair market value for private companies must be determined by an independent appraisal. This would include annual valuations and, more important, the valuation of the ESOP’s critical acquisition of the employer stock that it is required to maintain as its “principal investment.”

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  • IP BLAWG

    Tequila and Cigars

    Beverly A. Berneman
    3/30/18

    Tequila and cigars go together like love and marriage; or maybe not. %CUT% El Galan Inc. tried to register the word “Ternura” for a brand of cigars. The USPTO refused registration because Don Francisco Spirits LLC had already registered the same word for tequila. The USPTO said that the two products are “related”, meaning that they are complementary and linked in the minds of consumers. El Galan appealed to the TTAB. The TTAB affirmed the refusal. The TTAB reached back into history and cited a 1955 ruling by the Fifth Circuit in favor of the famous Scotch whiskey brand, Johnnie Walker, against a company that wanted to use the name for cigars. Because, after all, everyone connects whiskey and cigars. So according to the USPTO and the TTAB, the same is true for tequila and cigars. The TTAB pulled back a little by saying that the opinion should not be interpreted to mean that cigars and alcoholic beverages will always be considered related.

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  • IP BLAWG

    Peeling the Software Onion Can Cause Tears

    Beverly A. Berneman
    3/20/18

    Software can have lots of layers like an onion which can be trouble for an infringement lawsuit. %CUT% In CSS, Inc. v. Herrington, CSS complained that the defendants infringed on three of its copyrighted software programs. The programs were made up of a lot of different components, including third party software and abstract ideas. The court’s opinion peeled the layers of CSS’s software onions to get to the decision. First, the court peeled off the function that each program performed because they were "ideas" of the programs and not their expression. Then the court peeled away the client/server architecture used by each of the programs because that was non-copyrightable industry-standard. Next came the third party components because they didn’t belong to either party. Next came the arrangement of the third party components didn’t have enough creativity for copyright protection. Then the court peeled away the layer that was the name/address algorithm because it was unoriginal and not copyrightable. Once the court got to the small onion core of protectable software that was left, the court held that CSS didn’t prove substantially similarity between CSS’s onion core and the defendants’ onion core. CSS may have had something that was protectable, but after peeling away the uncopyrightable components of its software it couldn’t prove infringement.

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  • IP BLAWG

    March Madness Comes in Like a Lion

    Beverly A. Berneman
    3/13/18

    With March Madness upon us, we must remember its bumpy trademark road. %CUT% March Madness is the uber-famous trademark of the National Collegiate Athletic Association’s championship basketball tournament. But the NCAA was not the first to use the trademark. The Illinois High School Association was. The IHSA unsuccessfully tried to stop the NCAA from using it. The court held that both had the right to use the name. Eventually, the NCAA acquired the IHSA’s rights. Once the NCAA acquired the rights, it aggressively protected the trademark. The NCAA has been able to squelch the unlicensed use of the trademark and anything that comes perilously close such as “April Madness” (for entertainment service), “Markdown Madness” (for auto sales services), “Skate Madness” (for skateboarding competitions) and “Freestyle Madness” (for various entertainment services).

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  • IP BLAWG

    Trademark Peaceful Coexistence

    Beverly A. Berneman
    2/27/18

    Similar trademarks don’t necessarily result in a likelihood of confusion. %CUT% Two recent decisions considered whether similar trademarks can coexist without causing customer confusion. In Allstate Insurance Co. v. Kia Motors America Inc., Allstate argued that Kia’s “Drive Wise” brand infringed on its “Drivewise” trademark. Kia’s product was a high end add-on for Kia’s cars. Allstate’s product was a program to reward safe driving by its insurance customers. The court held that the goods offered by the parties were not identical or even related. Customers who wanted an add-on for their car would not be confused by similar words used for an insurance company’s safe driving incentive. And the reverse would be true as well. Another case involved a similar set of facts and came out the same way. In Destileria Serralles Inc. v. Kabushiki Kaisha Donq DBA Donq Co. Ltd., the Trademark Trial and Appeal Board ruled that a Kabushiki’s Japanese bakery chain named “Donq” was not confusingly similar to Destileria’s rum brand “Don Q”. Destileria argued that many brands of liquor cross over into other types of goods and so there would be “overlap” in the minds of the consuming public. The TTAB rejected the argument because Destileria’s brand is marginally famous and purchasers would be less likely to expect expansion into other goods.

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