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
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
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:
https://www.adlawbyrequest.com/2013/07/articles/icann/dispatch-from-durban-3-welcome-back-my-friends-to-the-show-that-never-ends/… Continue Reading
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
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