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

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.

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.

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.

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.

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.

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?

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.

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.

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.

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.

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.

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.

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.

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.

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.

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

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.

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.

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.

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.

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.

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.

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.

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.