• Archive for November, 2008

    I Swear I Invented It First

    by  • November 30, 2008 • patent

    Judge Alsup from the patent-heavy Northern District of California court has taken advantage of the almost certain appeal of patent cases by writing an “Appendix” to point out what he perceives as an unfairness in patent jurisprudence. He asks the Federal Circuit to address the burden of proof in swearing behind references. The patent...

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    A Patently Untenable Trademark Claim

    by  • November 27, 2008 • trademark

    Plaintiff Robert Welsh d/b/a Big Ten Development pitched the idea of a “Big Ten Network” to the Big Ten Conference. Big Ten Conference wasn’t interested at the time, but several years later introduced the “Big Ten Network” and filed trademark applications to register the mark in various classes. Welsh brought suit under § 38...

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    Trifecta of IP Protection

    by  • November 25, 2008 • copyright, patent, trademark

    The legal blog with what has to be the longest name ever, the Los Angeles Intellectual Property Trademark Attorney Blog, brings our attention to an almost perfect trifecta of intellectual property ownership, where jeans are protected by patent, trademark and copyright. Almost perfect, because while the same stitching design on the back pockets is...

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    Buy Your U.S. Cohiba Cigars Now

    by  • November 22, 2008 • trademark

    You know a lawsuit has been going on a long time when the decision starts with “The parties’ familiarity with the prior proceedings and facts underlying this dispute is assumed. In brief,” and then goes on for 7 pages of a 33 page opinion just to explain the procedural history of the case. Empresa...

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    Not So Fast

    by  • November 18, 2008 • copyright, trademark

    In Halicki Films, LLC v. Sanderson Sales & Marketing, plaintiff Denice Shakarian Halicki and various related entities owned some rights – exactly what, to be decided by the court – in Eleanor, billed as “the only Ford Mustang in history to receive STARRING credit in a motion picture.“ There are really two Eleanors: a...

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    You Still Have to Own the Copyright

    by  • November 14, 2008 • copyright

    The requirement for a written assignment of copyright can bedevil a copyright claimant, as in Tacori Enterprises v. Rego Manufacturing. In Tacori, the plaintiff was vulnerable because the assignment of copyright was not in a writing, although the original copyright owner and assignee agreed that the copyright had been assigned. Luckily for copyright owners,...

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    Mowing Trademarks Down

    by  • November 12, 2008 • trademark

    A recent New York case explores a trademark licensor’s tort liability for defective merchandise, but with a twist: the licensor is a wholly-owned trademark holding company. The biggest lesson from the case is “get the left hand talking to the right.” Here, a low-probability, ultimately unsuccessful defense in a tort case only succeeded in...

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    The Dark Underbelly of Teddy Bear Puppies

    by  • November 10, 2008 • trademark

    I’ve mentioned in the past that the naked licensing doctrine has taken on a life of its own disconnected from the statutory basis for it, abandonment. Fuller v. Heintz/Candee takes the naked licensing doctrine to an extreme, apparently holding that only one “naked license” is enough to invalidate the trademark. The case is tantalizing...

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    The Melody Can Barely be Heard

    by  • November 9, 2008 • trademark

    Class 46 brings our attention to the auction of a Spanish brand for a department store chain “Galerías Preciados.” Fogasa, an agency of the Spanish Ministry of Labor and Education, acquired the family of marks as the result of a bankruptcy. Fogasa has tried to auction the brand three times; in 1997 the value...

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