The unprecedented disruption caused by the novel Coronavirus (COVID-19) pandemic has created challenges for brands. Temporary and perhaps permanent changes to advertising and marketing strategies and executions have occurred and will continue to impact brands. On Tuesday, March 31, 2020, Douglas Wood and Keri Bruce, partners at Reed Smith LLP, the ANA’s General Counsel and … Continue Reading
Carmen Electra, joined by models Dessie Mitcheson and Lucy Pinder, sued a Colorado strip club over the club’s allegedly unauthorized use of its photographs on its website and social media in late January of this year. The aggrieved trio claims that the Denver club “Shotgun Willie’s” posted photos of the models in online advertisements for … Continue Reading
Model and meme icon Kelleth Cuthbert (real name Kelly Steinbach) became an overnight sensation as “Fiji Water Girl” after photobombing celebrities on the Golden Globes red carpet in January. Now, she is seeking to recover against Fiji Water Company and its parent company, The Wonderful Company, for allegedly misappropriating her likeness and violating her right … Continue Reading
Gigi Hadid found herself sued for copyright infringement by New York photo agency Xclusive-Lee, Inc. over a photo the fashion model posted to her Instagram account. The disputed photo was of Hadid herself, smiling at the camera while wearing a blue denim jacket and matching shorts with silver heels, and was snapped by paparazzi. Xclusive-Lee … Continue Reading
Trademark licensing is a driving force in business relationships. One common example is where one business owns a trademark, which it licenses out to other companies who manufacture and sell the products bearing the mark. But, what happens if the trademark owner goes bankrupt? Bankruptcy law gives a debtor the right to “reject” contracts to … Continue Reading
Promotion in Motion Inc. (“PIM”) makes the popular Welch’s Fruit Snacks under a licensing deal with Welch’s, and Kervan USA LLC is a rival candymaker that has a similar licensing arrangement with Sunkist Growers Inc. PIM, however, contends that Kervan sought to capitalize on the fruits of PIM’s labors, and sued Kervan in the District … Continue Reading
The British artist Anish Kapoor, sculptor of the iconic Chicago art piece Cloud Gate, known colloquially as the Bean, filed suit against the National Rifle Association (“NRA”) for using imagery of Cloud Gate in online videos without his permission. Kapoor registered Cloud Gate with the U.S. Copyright Office in January 2016, and was “shocked and … Continue Reading
Kim Kardashian West’s fragrance company, KKW Fragrance LLC, is the target of a reverse confusion trademark infringement suit launched by Chicago-based mobile marketing company, Vibes Media, LLC. According to Vibes’ complaint, KKW Fragrance intentionally copied Vibes’ name and speech bubble logo in a new perfume also called “Vibes” that Kardashian launched as part of her … Continue Reading
The Cousteau Society (“TCS”) filed a lawsuit in New York federal court against Jacques Cousteau’s granddaughter, Celine Cousteau, alleging trademark infringement and unfair competition under federal and New York state law. In its complaint, TCS argues that it owns all of the intellectual property associated with Jacques Cousteau – trademarks; rights of privacy, publicity, and … Continue Reading
The University of Illinois sued Ted O’Malley, the seller of shirts that feature the University’s former symbol, “Chief Illiniwek,” and the phrase “Make Illinois Great Again” for trademark and copyright infringement, false advertising, trademark dilution, various common law torts, and violations of Illinois consumer protection laws in March of this year. The University owns various … Continue Reading
Last month, the Copyright Office issued a final rule governing the designation of agents to receive notifications of claimed infringement under the Digital Millennium Copyright Act (“DMCA”). To help streamline the process, the Copyright office created a new, electronic filing system so that brands and advertisers can efficiently submit and update their designated agent. The online … Continue Reading
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
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
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
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
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
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
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
On December 5, the House of Representatives voted to pass H.R. 3309, also known as “The Innovation Act”, whose supporters believe will help to address the issue of Patent Assertion Entities (also referred to as “Patent Trolls”) by placing a greater burden and risk on the asserting parties. For more information on the bill and … Continue Reading
While you are reading this, the Internet is changing. Over the past several years, you may (or may not) have heard that the number of Top Level Domains (such as .com, .net, .eu, etc.) was going to grow exponentially at some point in the future. Well, the future is here.… Continue Reading
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
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
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
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