Archives: Intellectual Property

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Crabby Outcome for Seafood Restaurant in Trademark Lawsuit Against Steakhouse

Phelan Holding, Inc. did not have its day in the sun when the Eleventh Circuit granted RARE Hospital Management, Inc.’s motion for summary judgment. Phelan and RARE are owners of casual dining restaurants, and the court found this was the only trait they had in common. Phelan’s Pinchers Crab Shack extensively used its tagline “YOU … Continue Reading

Annotations to Georgia’s Legal Code Are Protected By Copyright

The state of Georgia and the Code Revision Commission achieved a victory when a federal court granted their motion for summary judgment, holding that Georgia’s “Official Code of Georgia Annotated” (OCGA) was protected by copyright and Public.Resource.Org, Inc.’s duplication of the statutes online were not fair use. The lawsuit was filed after Public.Resource.Org allegedly scanned … Continue Reading

“You’re Fired” – The Growing Fallout from Celebrity Rants

While the beginning of the Trump era started with debates over the size of crowds and immigration bans, last week was all about brands and their affiliation (or desire to be unaffiliated) with President Trump. Most recently, this issue came to the forefront when Under Armour’s CEO gave an interview on CNBC and called Trump … Continue Reading

Don’t Be Offended: Supreme Court Set to Decide Whether Offensive Trademark Ban Violates First Amendment

The United States Supreme Court, on September 29, 2016, granted certiorari in a case involving petitioner Simon Tam, his band, The Slants, and the band’s attempt to register their band name as a trademark. Commentators believe this case will resolve the question of whether the Lanham Act’s prohibition on the registration of disparaging or offensive trademarks … Continue Reading

Music Sampling Back in “Vogue”

With its decision in VMG Salsoul v. Ciccone, the Ninth Circuit Court of Appeals created a circuit split that could greatly impact copyright infringement claims based on unlicensed music sampling.  For the advertising industry, this decision affects the risk assessment involved when creating or using music that contains “samples”.  Read on for more. On June … Continue Reading

Till Death Do Us Part? How to Deal With Celebrity Publicity Rights When That Celebrity Passes

The tragic death of renowned recording artist Prince left many reminiscing about his meticulously crafted public image. In life, the law allowed Prince to control the commercial exploitations of his image.  At death, however, that control was lost. Celebrities routinely harness their “images” as a means of generating revenue, relying on intellectual property and right … Continue Reading

The Second Circuit Turns the Page on Plaintiffs’ Google Books Copyright Suit

Another important copyright decision is in—this time from the Second Circuit Court of Appeals in Authors Guild v. Google, Inc. Plaintiffs—authors of copyright protected books—brought an action for infringement against Google, claiming that its digitization of millions of books without Plaintiffs’ permission violated copyright law. The court on appeal, acknowledging that this dispute “test[ed] the … Continue Reading

“Blurred Lines” but Clear Verdict: Jury Awards Gaye Estate $7.3 Million in Damages for Copyright Infringement

In a verdict on March 10, a Los Angeles federal jury decided “Blurred Lines,” written by Robin Thicke and Pharrell Williams, substantially borrowed from Marvin Gaye’s 1977 classic “Got To Give It Up” without permission. As a result, the jury awarded the family of the late soul singer more than $7.3 million in damages. In … Continue Reading

Transformative Use: Danger Is in the Definition

In April, 2013 the 2nd Circuit concluded that certain works of the well-known appropriation artist, Richard Prince, which used Patrick Cariou's photographs in a series of collages, constituted fair use. In Kienitz v. Sconnie Nation LLC, U.S. Circuit Judge Frank Easterbrook joins in on criticism that courts, such as in the Cariou case, are placing too much emphasis on the transformative use factor in considering fair use. However, Law360 quotes Reed Smith's Brad Newberg who zeroes in on a deeper danger for authors' derivative rights: "The issue with Cariou is not that it gives great weight to a transformative use, but how it defines transformative use."… Continue Reading

Supreme Court Rules that Aereo Violated Copyrights

Earlier this week, the U.S. Supreme Court handed its decision in ABC v. Aereo, ruling that Aereo's service of providing its subscribers with streaming broadcasts obtained through the company's miniature antennas is illegal. The court ruled that over-the-air broadcasts count as a public performance and that Aereo essentially is no different from cable companies, which are subject to limitations on freely transmitting programming under the Copyright Act.… Continue Reading

Copyright Owners Go the Distance with ‘Raging Bull’ Victory

In a recent Forbes article, Brad Newberg discussed in depth the Supreme Court's recent decision in Petrella v. Metro-Goldwyn-Mayer, Inc., and ways for businesses to adapt in light of the shocking decision. With its decision in Petrella, the U.S. Supreme Court made clear that in the world of copyright infringement litigation, time is not always of the essence. The question presented was simple: "[W]hether the equitable defense of laches (unreasonable, prejudicial delay in commencing suit) may bar relief on a copyright infringement claim brought within § 507(b) [of the Copyright Act]'s three-year statute of limitations period." And the Court's answer was clear: "[C]ourts are not at liberty to jettison Congress' judgment on the timeliness of suit. Laches, we hold, cannot be invoked to preclude adjudication of a claim for damages brought within the three-year window." Yet, the implications of this case going forward are not quite as simple or clear.… Continue Reading

Reed Smith to Participate at World IP Day Event in NYC

This Friday, April 25, Reed Smith will be part of a World IP Day event in New York City titled, Movies a Global Passion, hosted by World Intellectual Property Organization (WIPO), American Intellectual Property Law Association (AIPLA), and United States Patent and Trademark Office (USPTO). Keri S. Bruce will be speaking on a panel to discuss intellectual property in films, alongside David Morrison (Indie Film Clinic) and Neil J. Rosini (Franklin, Weinrib, Rudell & Vassallo, P.C.). Among the event's keynote speakers are Michelle Lee, Deputy Director of the U.S. Patent and Trademark Office; Congressman Hakeem Jeffries; and Congresswoman Grace Meng (invited). The event is FREE and open to the public, and will feature an exhibition by film studios, directors and IP service providers. RSVP now for this event at tinyurl.com/m8wabct.… Continue Reading

The Colour Purple: Cadbury loses battle to register its signature purple shade

Cadbury has lost its Supreme Court battle to register as a trade mark its iconic colour purple (known as Pantone 2685C), ending a 10-year legal battle between Cadbury and its competitor Nestlé. The UK Supreme Court has refused Cadbury’s application to appeal against an October 2013 Court of Appeal decision which ruled in Nestlé’s favour, … Continue Reading

Building an Online Strategy to Preserve Your Brand

Online trademark infringement, which includes domain names, websites, online auction platforms and keywords, has seen a significant spike in recent years and presents unique challenges to trademark owners and government authorities around the world. Clark Lackert of our Intellectual Property group discusses how to protect your trademarks in our electronic-driven world in his recent article titled, Counterfeits and Infringements Online - A Global Overview of Liability, published in the World Trademark Review (www.worldtrademarkreview.com) by The IP Media Group.… Continue Reading

The Patent Fight for Targeted Advertising

Last year, B.E. Technology LLC filed several suits for patent infringement against a host of companies whose business model depends on advertising. The patents in suit, U.S. Patent 6,628,314 and U.S. Patent 6,771,290, date back to 1998 and are alleged to protect software that serves advertisements based on personal characteristics and behaviors, i.e., targeted advertising. Martin D. Hoyle, the CEO of B.E. Technology LLC, is the sole inventor listed on the patents. On October 8, 2013, Microsoft and Facebook challenged the validity of the patents by requesting "inter partes review" of the patents in the U.S. Patent Office. Clearly, the outcome of this case could have significant ramifications for the Internet advertising community. Inter partes review is a new procedure, created by the America Invents Act, for challenging patents in the U.S. Patent Office. Inter partes review is less expensive and faster than typical civil litigations, and provides the challenger with the opportunity to demonstrate that a patent should not have been issued because invention protected by the patent was not novel, or would have been obvious, at the critical date - 1998, in the case of the patents in this case. The inter partes review will take about 18 months to complete and, at the discretion of the judge in each case, the civil litigations may be stayed, i.e., put on hold, pending resolution of the inter partes review.… Continue Reading

Mobile Alert Patents: No Longer a Threat?

Today, our Intellectual Property group issued a client alert entitled, "A New Wrinkle in the Defense of Patent Exhaustion," covering the patent infringement case, Helferich Patent Licensing LLC v. The New York Times Company, et al., in which the court granted Summary Judgment in favor of the defendants. Helferich Patent Licensing, LLC ("HPL"), the exclusive licensee of a portfolio of patents directed to sending alerts to mobile devices, sued several parties in the Northern District of Illinois to whom it had previously licensed its patents.… Continue Reading

The Download from Durban: Reflections on ICANN 47

I think I've finally recovered from my trip to Durban, South Africa, to attend the 47th meeting of ICANN (International Association of Assigned Names and Numbers - the organization that oversees the Internet's domain name system and everything around it). After blogging from the belly of the beast, I now have the luxury of some perspective on the goings-on in Durban and the results of that meeting. Several important points came out of Durban and a few epiphanies along the way that are worth sharing.… Continue Reading

Dispatch from Durban #6: The Final Countdown (or maybe not…)

Thursday was the last day of ICANN, and two things were eagerly awaited - the Government Advisory Committee (GAC) Durban Communiqué and the ICANN Public Forum. The Durban Communiqué will update the GAC Advice from the Beijing Communiqué, clarifying (hopefully) the GAC's position on a number of burning issues. The Public Forum is where anyone (in the room or participating remotely) can approach the microphone and ask questions (or make statements) to the ICANN Board and staff...… Continue Reading

Dispatch from Durban #5: How Can You Be In Two Places At Once, When You’re Not Anywhere At All?

On Wednesday, ICANN 47 is in full swing. There are as many as nine meetings going on at once, with overlapping times with even more meetings. Cloning would be a good idea. I'm beginning to figure out tactics for being in two places at one time, some of the time - sitting in one meeting while following the "scribefeed" (live transcription) of another, checking the ICANN "twitterverse" for updates, emailing with colleagues and cohorts from meeting to meeting, etc.… Continue Reading

Dispatch from Durban #4: In the Belly of the Beast

Tuesday is Constituency Day and Music Night. My Tuesday began bright and early with a breakfast for the Commercial Stakeholder Group (CSG) with the GAC. This was our chance to rub shoulders with the government reps. I sat next to the rep from Nigeria and discussed the role of the GAC in the ICANN policy process. We both seemed to think that the GAC should be more closely involved, which would avoid the "parallel tracks" that seem to occur, including with the IOC/RCRC WG. Another highlight - we were actually in a room with windows. Of course, we had the morning sun, so we baked quite nicely. Constituency Day then moved on to the CSG meeting. The CSG includes the Commercial and Business Users Constituency (CBUC), the Internet Service and Connectivity Provider Constituency (ISCPC), as well as the Intellectual Property Committee (IPC). We are the regular business users of the Internet - those that are not "contracted parties" with ICANN. We heard from several other ICANN groups. Of greatest concern was the presentation from the Security and Stability Advisory Committee (SSAC) - the "name clash" issue has the capacity to compromise the security and performance of thousands of private networks worldwide. This was reported in such a deadpan tone that Mikey O'Connor of the ISCPC pointed out (in an even more deadpan tone), something like: "So, what you are saying is, my house is burning down, my children are inside, there's gasoline in the garage, and there are no fire trucks in the neighborhood." To view our previous update from Monday, please visit: http://www.adlawbyrequest.com/2013/07/articles/icann/dispatch-from-durban-3-welcome-back-my-friends-to-the-show-that-never-ends/… Continue Reading

Dispatch from Durban #3: Welcome Back My Friends to the Show That Never Ends

ICANN 47 kicked off this morning and I have now seen ICANN in all its glory. 1800 delegates, 92 countries. Some participants in African traditional dress; almost everyone else in business casual. The day began with the formal Opening Ceremony and President’s Opening Session. I wish I could tell you it began with the release … Continue Reading

Dispatch from Durban #2: The End of the Beginning (or the Beginning of the End?)

My Sunday started bright and early, with a 7:30 breakfast meeting between the Commercial Stakeholder Group and the GNSO members on the ICANN Board. After admiring the sunrise over the Indian Ocean, I grabbed the shuttle bus for a brief ride over to the land of windowless rooms. At breakfasts, several concerns were raised. One of these was the "name clash" issue: internal networks (such as most businesses employ) have long used internal top level domains (such as . mail and .corp, among others) for technical purposes. Since these top level domains didn't exist in the "outside world" this raised no issues. Now that these domains have been applied for, they will exist "outside." As a result, an Internet user typing in yourname.mail could find themselves in your private network (and while your network might be secured, what if our Internet user is up to no good?). Conversely, your internal network could experience problems where the same domain name exists inside and outside. The extent of this problem is unknown and has only recently been considered. It appears that the risky top level domains could be delayed while this is worked out, but that is far from certain. Also discussed was the heavy funding in the ICANN Budget for "engagement," (i.e., P.R. and outreach) while compliance appears to get short shrift. Of course, compliance is not sexy or revenue-producing, but without enough "police on the streets" the new gTLD program could be even more dangerous in practice than it appears to be on paper...… Continue Reading
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