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By Sheppard Mullin

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Last Entry: September 01, 2009 at 21:20:09

Federal Circuit Clarifies Standard For Proving "Fraud" in Trademark Renewals

Posted on September 01, 2009
On August 31, 2009, the United States Court of Appeals for the Federal Circuit issued a decision holding that, in order for a trademark registration to be canceled on the basis of fraud, the party challenging the registration must prove...

426,000 Patent Applications Filed in China During First Half of 2009

Posted on August 31, 2009
The Chinese government's emphasis on boosting innovation might be proving fruitful. According to the latest statistics from the State Intellectual Property Office ('SIPO'), the government entity responsible for prosecuting patents, there were 426,000 patent applications filed and 252,000 patents granted...

Removal of UPC Codes Constitutes Trademark Infringement

Posted on August 31, 2009
On June 19, 2009, in Zino Davidoff SA v. CVS Corp., the Second Circuit enjoined CVS, a national retail chain, from removing unique production codes ("UPC") from Davidoff product packaging for its "Cool Water" fragrances on the grounds of trademark...

What Is the Jurisdictional Pre-Requisite for Copyright Litigation?: Do Denim v. Fried Denim

Posted on July 14, 2009
On June 17, 2009, Judge Laura Taylor Swain of the Southern District of New York dismissed the copyright claims of jeans maker Do Denim against rival manufacturer Fried Denim Inc., holding that the mere filing of the copyright applications, fees...

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Branded: Product Placement and Video Games

Posted on July 13, 2009
Video games and feature films have a lot in common. Both tell stories and have exciting visuals and music. Although one is "interactive", recent Blu-ray HD discs are now turning linear films into more immersive, interactive experiences. Rights and talent...

Joseph Abboud Is Back: Personal Name Trademark Controversy Continues

Posted on July 13, 2009
On June 10, 2009, the Second Circuit vacated a summary judgment decision that permanently enjoined menswear designer Joseph Abboud from making commercial use of his own name. J.A. Apparel Corp. v. Abboud, No. 08-3181-cv, 2009 U.S.App. LEXIS 12537, at *3...

California Passes New Electronic Discovery Act Effective Immediately

Posted on July 01, 2009
On June 29, 2009, Governor Schwarzenegger signed into law California's Electronic Discovery Act, which is effective immediately. All discovery propounded or responded to must now comply with the new law. These rules are very similar to the recent revisions to...

Employers Should Carefully Consider Whether To Sue Former Employees For Threatened Trade Secret Misappropriation Based On Recent California Court of Appeal Decision Awarding Over $1.6 Million To Former Employees

Posted on June 19, 2009
A recent decision by a California Court of Appeal should give employers pause before they use California's trade secret laws to try to stifle competition in violation of California law. In the case of FLIR Systems, Inc. v. Parrish, the...

An Advertising Face-Off: Images and the Right of Publicity

Posted on June 19, 2009
The California Supreme Court heard oral argument on June 3 in an important 'right of publicity' case, Christoff v. Nestle USA Inc. Issues included whether the single publication rule applicable to mass communication-based torts applies to right of publicity claims;...

Does Edwards v. Arthur Anderson Bar The Use of Employee Confidentiality Agreements?

Posted on June 19, 2009
In Edwards v. Arthur Andersen, the California Supreme Court reaffirmed California's strong public policy against covenants not to compete. The primary issue in Edwards was whether the Ninth Circuit's "narrow restraint" exception was a proper interpretation of California law...

Effective Immediately, Trademark Owners Need To Protect Their Trademarks From Registration As Usernames On Facebook

Posted on June 11, 2009
Social network Web site Facebook announced that, beginning this Saturday, June 13, at 12:01 am U.S. EDT, all Facebook users will be allowed to choose a personalized username for their Facebook profiles. This username will replace the numerical string that...

Limiting Liability in Clinical Trials: Non-Lawyers, Lawyers Beware

Posted on May 13, 2009
Clinical trials are the lifeblood of biotech. Finding the right service providers (CROs, safety, IVRS, consultants, contract manufacturers and many others), as well as the right clinical investigators and sites, results in a complex web of legal obligations and potential...

Developing a Foreign Filing Strategy

Posted on May 13, 2009
The ever-increasing reality of the global marketplace has, for many years, driven U.S. companies to seek intellectual property protection beyond the nation's borders. Unfortunately, the reality they face is that global patent protection, and even multi-jurisdiction protection, is prohibitively expensive...

Ninth Circuit Report: Raymond Edwards II v. Arthur Andersen LLP

Posted on May 13, 2009
In Raymond Edwards II vs. Arthur Andersen, the California Supreme Court has broadly interpreted the California Business and Professions Code to further prohibit employee noncompetition agreements which seek to prevent a former employee from working for a competitor, subject to...

California Court of Appeals Rejects Anti-SLAPP Motion in Trade Secrets/16600 Case

Posted on May 13, 2009
In World Financial Group, Inc. v. HBW Insurance & Financial Services, Inc. the Court of Appeal for the Second Appellate District rejected an Anti-SLAPP motion to strike in a breach of contract, theft of trade secrets, and unfair competition case....

Copyrights: First Amendment Trumps Copyright Restoration

Posted on April 16, 2009
On April 3, 2009, the District Court for Colorado entered a groundbreaking copyright decision, treading on new judicial territory by directly applying the First Amendment to invalidate a provision of the Copyright Act. The case, Golan v. Ashcroft, Civil Case...

The US Federal Trade Commission considers issues in patent damages awards

Posted on April 14, 2009
With the median damages award in the millions of dollars, a patent infringement lawsuit in the US can be a boon for a patent owner or a headache for an accused infringer. In support of such awards, patent owners often...

Second Circuit Resolves Split Between the Circuits Regarding Sale of Keywords to Trigger Sponsored Links and "Use in Commerce" Under the Lanham Act

Posted on April 10, 2009
On April 3, 2009, the Second Circuit Court of Appeals handed down its decision in the matter of Rescuecom Corp. v. Google, Inc., reversing the United States District Court for the Northern District of New York's dismissal of Rescuecom's complaint...

For Artists with Original Works, It's Buy Now or Pay Later

Posted on April 10, 2009
The pressure to cut production costs for media works is larger than ever. One expense that should not be slashed, however, is the expense of registering a copyright in the work soon after it is created — whether that work...

Gibson's Patent Action Against Activision Hits Wrong Chord With Court In "Guitar Hero" Dispute: Summary Judgment Granted

Posted on April 10, 2009
Activision licensed the Gibson trademark and trade dress in November 2006 in connection with Guitar Hero's "custom guitar controller peripheral." Activision paid a one-time fixed license fee to cover the term of the license and Gibson agreed to help promote...

The Digital Countdown

Posted on March 10, 2009
The upcoming conversion to digital television will be one of our most important historic dates. No president will be sworn into office. No one will land on the moon. Instead, television in the United States, as we know it, will...

Hot News Meets DMCA

Posted on March 06, 2009
Hot News! ... for IP lawyers. Hot news is still good law. After 90 years, a dusty 1918 Supreme Court case (International News Service v. Associated Press, 248 U.S. 215 (1918)), often overlooked and generally ignored, was resurrected from the...

Case Study: Protecting Your Brand in China

Posted on March 06, 2009
China has a bad reputation for IP protection, but the reputation might not be fully deserved. People often focus on occurrences of IP infringement in China and mistakenly conclude that there is little IP protection here. China's present IP dilemma...

UMG Records v. Veoh Networks: Central District Decides Certain Activities Fall Within A DMCA Safe Harbor

Posted on February 26, 2009
In a recent case, UMG Recordings, Inc. v. Veoh Networks, Inc., 89 U.S.P.Q.2d 1449 (C.D. Cal. 2008), the Central District decided a question of first impression—whether certain activities of a website operator fit within the section 512(c) safe harbor of...

Federal Appeals Court Strikes Down California Law Banning the Sale or Rental of "Violent Video Games" To Minors

Posted on February 25, 2009
On February 20, 2009 the Ninth Circuit Court of Appeals struck down a California law banning the sale or rental of "violent video games" to minors and requiring such games to be labeled "18" (the legal age for adults). While...

Implications of Aristocrat v. IGT for Software Patents

Posted on February 17, 2009
The law governing U.S. software patents sometimes shifts like the ground here in California – a point illustrated by the recent decision of the Court of Appeals for the Federal Circuit (CAFC) in Aristocrat Technologies Australia PTY Ltd. v. International...

Federal Circuit Awards Permanent Injunction to Patentee in "Close Case"

Posted on February 17, 2009
As a result of the Supreme Court's decision eBay Inc. v. MercExchange, L.L.C., a patentee no longer can expect an automatic grant of a permanent injunction after patent infringement and validity is established. Instead, the patentee must satisfy a four-factor...

Ninth Circuit Finds Genuine Issues Relating to Possible Walker Process Fraud Arising from Counsel's Omissions in Patent Application Process

Posted on February 17, 2009
The Ninth Circuit recently affirmed in part and reversed in part the entry of summary judgment for defendant Abbott Laboratories, Inc. ("Abbott") on claims brought under Section 2 of the Sherman Act. The Ninth Circuit found that genuine issues of...

Ninth Circuit Limits the Scope of In-Term Covenants Not to Compete

Posted on February 17, 2009
In Comedy Club v. Improv West Associates the Ninth Circuit held that an in-term covenant not to compete (a covenant that continues during the term of a contract or relationship) in a Trademark License agreement was overbroad, but enforced a...

Federal Circuit's Egyptian Goddess Decision Polishes Analysis Used to Determine Design Patent Infringement

Posted on January 13, 2009
Design patent owners have reason to celebrate the Federal Circuit Court of Appeals' recent decision in Egyptian Goddess, Inc. v. Swisa et al. 543 F.3d 665 (September 22, 2008). The Federal Circuit streamlined design patent infringement analysis by disposing of...

Summary of U.S. Chamber of Commerce Recommendations to the Incoming Obama Administration Regarding the USPTO

Posted on January 13, 2009
How can the Obama administration fix a patent system in crisis? The United States Chamber of Commerce has some ideas. In its December 11, 2008, report entitled "Recommendations for Consideration by the Incoming Administration Regarding the U.S. Patent and Trademark...

Brave New Web: Trademark Rights in the Expanding Internet

Posted on January 13, 2009
In June 2006, the International Corporation for Assigned Names and Numbers (ICANN) approved a plan that would allow for the creation of hundreds of new domain names. The Internet as we know it currently operates using 12 generic top-level domain...

Ninth Circuit Clarifies the Scope of Immunity for Website Operators Under the Communications Decency Act of 1996

Posted on January 13, 2009
The Communications Decency Act of 1996 (codified at 47 U.S.C. § 230) provides immunity to interactive computer services, e.g., websites, against liability arising from content created by third parties. This immunity only applies if the interactive computer service provider is...

Questions Unanswered: The Application of California's New Trade Secret Jury Instructions

Posted on December 08, 2008
In December, 2007, the California Judicial Council published sample jury instructions for trade secret misappropriation claims. Some of the instructions were revised and others added in April, 2008 (the Table of Contents directs the reader down to Section 4400 of...

The Google Book Digitization Settlement: The Fair Use Question Remains

Posted on December 08, 2008
In December 2004, Google announced its plan to digitally scan the entire contents of four university libraries and one public library, with the ultimate goal of enabling Internet users to search that content online. In exchange for permission to digitize...

What To Do When Your .CN Domain Name Is Already Taken

Posted on December 08, 2008
When looking into registering domain names in Asia, companies often encounter the problem that their .cn domain names in China have already been registered by someone else. Companies who are zealous about protecting their brands should consider reclaiming their ...

First Sale Doctrine Not Applicable To Foreign Imports Manufactured And First Sold Abroad

Posted on November 14, 2008
The Ninth Circuit recently handed manufacturers a gift. In a decision which, at first blush, might seem at odds with well-established Supreme Court jurisprudence, manufacturers are now able to use copyright law to keep their products from being imported to...

Open Source Licensing Finds Protection Before The CAFC

Posted on November 14, 2008
Open source licensing of software got a recent boost from an unlikely source, the Court of Appeals for the Federal Circuit. The CAFC normally decides patent and trademark issues but rarely deals with copyrights. In an appeal from the Northern...

Patent Prosecution Highway Program: European Expansion

Posted on November 14, 2008
As the volume of global patent filings rises, patent offices around the world continue to face increasing patent administration demands. Currently, applicants for U.S. biotechnology and organic chemistry patents can expect an average of close to two years before a...

Why US Web Site Owners Should Watch Foreign Suits

Posted on November 14, 2008
Just when you thought it was safe to enter the waters of "thumbnail imagery" in light of the Ninth Circuit decision in Perfect 10 Inc. v. Google Inc., recent court decisions in Germany may give some pause to ISPs, online...

Two Recent Decisions Reframe the DMCA Discussion

Posted on October 07, 2008
Two recent decisions from the Northern District of California break new ground in the interpretation of the Digital Millennium Copyright Act (DMCA). These cases may indicate how a couple of the most contentious issues about the use of copyrighted works...

Muniauction, Inc. v. Thompson Corp.: The Federal Circuit Again Weighs In On Software Patents

Posted on October 07, 2008
The Federal Circuit’s recent decision in Muniauction, Inc. v. Thompson Corp., 532 F.3d 1318 (Fed. Cir. 2008), has significant implications for software and Internet patents....

UMG v. Augusto: Allowing the Sale of Promotional CDs Under the First Sale Doctrine Could Affect Much More than the Music Industry

Posted on October 07, 2008
In a decision that could have far-reaching implications for technology licenses of all types, the U.S. District Court for the Central District of California recently held that the first sale doctrine permits a recipient of promotional CDs to sell them...

In re Nuijten: Are Tangibility and Permanence Required For Patentability?

Posted on October 07, 2008
Recently the inventor of an electromagnetic data signal filed a petition for certiorari, asking the Supreme Court to overturn the Federal Circuit's affirmation that his invention does not represent patentable subject matter. See In re Nuijten, 500 F.3d 1346 (Fed...

Design Patents Clarified

Posted on September 25, 2008
The United States Court of Appeals for the Federal Circuit clarified the law of design patents on Monday (September 22, 2008), with its ruling in Egyptian Goddess, Inc. v. Swisa, Inc.[1] Prior to this decision, owners of design patents were...

Federal Circuit Redesigns Design Patent Infringement Analysis

The National Geographic Gets The Picture

Posted on August 11, 2008
A recent en banc ruling of the 11th Circuit helps to clarify and solidify a media-neutral trend in copyright law while adding certainty to what publishers may do with valuable libraries of outdated paper. Such outdated paper will have little...

Summary Judgment in Favor of Fiji Water - "Bottled At the Source" Held Generic

Posted on August 11, 2008
On July 16, 2008, the Northern District of California dismissed on summary judgment a lawsuit brought by the company that manufactures, markets and sells Crystal Geyser bottled water (CG Roxane LLC) against Fiji Water Company LLC, Fiji Water Company Holdings...

Patent Suit Brings Question of Immunity Before Supreme Court

Posted on August 11, 2008
The Supreme Court may soon consider an issue of sovereign immunity that, depending on the outcome, could open the door to private patent holder lawsuits against state governments. Attorneys for Biomedical Patent Management Corp. (BPM), a small California biotech, are...

Solicitation by Domain Name Registrar in Asia

Posted on August 11, 2008
The following is a typical solicitation letter from a domain name registrar in China or Hong Kong. Such letters are often sent indiscriminately en masse to registrants of .com domains. “Halliton Holdings, Inc.” is usually a fictitious company crafted by...

S.D.N.Y Holds eBay Not Liable in Closely Watched Trademark Case

Posted on July 14, 2008
In a July 14, 2008, decision addressing the issue of who bears the burden in policing counterfeiting on online auction sites, Judge Richard J. Sullivan of the Southern District of New York held that "it is the trademark owner's burden...

Injunctions in Trademark and Copyright Infringement Cases: Trending Against the Irreparable Harm Presumption?

Posted on July 07, 2008
Since the Supreme Court's decision in eBay v. Merc-Exchange, IP plaintiffs who plan on relying on the presumption of irreparable harm when seeking injunctive relief (whether a TRO, preliminary or permanent) may want to rethink that strategy. The days of...

Meshworks, Inc. v. Toyota Motor Sales U.S.A.: Good News and Bad News for Creators of New Media Works

Posted on July 07, 2008
Click here for a PDF copy of the document....

D.C. Circuit Overturns FTC Rambus Decision

Posted on July 07, 2008
There has been an important decision in the antitrust litigation against Rambus for failing to disclose patents to JEDEC, a standard setting body (SSO). In Rambus v. FTC, No. 07-1086 (D.C. Cir. 2008), the D.C. Circuit Court unanimously set aside...

Dilemma for Foreign Enterprises Running E-sports Games in China

Posted on July 07, 2008
Electronic sports games (“E-sports games”) have been developing at an extremely high speed, forming a sports storm sweeping over the entire world. With E-sports games gaining tremendous popularity in China, more and more foreign companies are aiming at the Chinese...

Articles

Posted on June 18, 2008
House Okays Watered Down PRO IP ActJune 1, 2008, World Law MediaPatent PoolsApril 21, 2008, New York Law JournalCourt Finds Famous Foreign Trademarks ProtectableFebruary 1, 2008, AsiaLawLeadership Liability: Protecting Directors, Officers from Exposure to Patent Infringement DamagesJanuary 31, 2008, San...

Supreme Court Strengthens Patent Exhaustion Doctrine

Posted on June 10, 2008
On June 9, 2008, the United States Supreme Court issued its unanimous decision in Quanta Computer, Inc. v. LG Electronics, Inc. and held that the patent law cannot be used to control the subsequent use or disposition of a product...

Developers of musical ringtones may benefit from using the statutory license created by Section 115 of the Copyright Act

Posted on May 19, 2008
The Register of Copyrights has issued a formal opinion finding that, in most instances, musical ringtones for cell phones and related mobile devices fall within the scope of the statutory license under Section 115 of the Copyright Act. See Docket...

Trade Secrets Can Be All In Your Mind

Posted on April 29, 2008
In Al Minor & Associates, Inc. v. Martin, 117 Ohio St.3d 58, 2008-Ohio-292, the Ohio Supreme Court recently held that memorizing information, including specifically client lists, constitutes trade secret misappropriation. The court found that neither the Uniform Trade Secret Act...

Consider the Venue: Significant Split Among Circuits In Findings of Liability for Trademark Infringement in Metatags and Keywords

Posted on April 24, 2008
On April 7, 2008, in North American Medical Corp. v. Axiom Worldwide, Inc., the Federal Court of Appeals for the 11th Circuit Court (with jurisdiction over Alabama, Florida and Georgia), ruled that using another’s trademark in metatags infringes the Lanham...

The Copyright Office Makes An Improvement For The Worse

Posted on April 17, 2008
The Copyright Office recently issued a press release in their "Newsnet," Issue 341, April 14, 2008, announcing what everyone else already knew. The Copyright Office is getting seriously behind in processing copyright applications and issuing registration certificates...

Briefs Filed for the In re Bilski Appeal

Posted on March 25, 2008
Last month, the Court of Appeals for the Federal Circuit decided (sua sponte) to reconsider its landmark State Street decision on patentable subject mater , and ordered an en banc hearing for an appeal in the case of In re...

Split Decision for eBay Refines Internet Trademark Infringement Standards

Posted on March 20, 2008
Perfumebay.com v. eBay, Inc. _ Fed 3D _ (9th Cir. Nov. 5, 2007)Click here to view a PDF copy of the document....

Split Decision for eBay Refined Internet Trademark Infringement Standards

Posted on March 20, 2008
Perfumebay.com v. eBay, Inc. _ Fed 3D _ (9th Cir. Nov. 5, 2007)Click here to view a PDF copy of the document....

First In Line: Registration Before Litigation

Posted on March 12, 2008
Like New Year's resolutions which remain unfulfilled, a decision late last year of a federal district court sent still another reminder that copyright law in the United States remains far from the formality free regime envisioned by Berne Convention rules...

Patent reform is again before Washington legislators, as Congress continued to fail to reach a consensus on the legislation in 2007.

Posted on February 19, 2008
The push to reform the U.S. patent system tracks back to February 2003 with the publication of the USPTO's 21st Century Strategic Plan. Other studies followed, identifying key areas for reform: improving the quality of patents, litigation reform, and harmonization...

Leadership liability: Protecting directors, officers from exposure to patent infringement damages

Posted on February 11, 2008
Corporate officers and directors take note -- you may be held personally liable for inducing patent infringement, even when you are acting solely through a corporation. Although most patent infringement lawsuits do not name an individual officer or director as...

Court Finds Famous Foreign Trademarks Protectible

Posted on February 04, 2008
One of the foundational principles of United States trademark law, as well as the law of most other countries, is that trademark protection is national in nature and does not extend beyond a country in which the mark is used...

Constitutional Rights and Digital Dilemmas

Posted on January 23, 2008
Government attempts to commandeer encrypted passwords and to search laptops at border points raise a host of constitutional issues from self-incrimination to unlawful search and seizure. On November 29, 2007, in a case believed to be the first of its...

Bluetooth Blues for Nintendo and Sony

Posted on January 17, 2008
Nintendo and Sony face a patent infringement lawsuit filed by Copper Innovations Group in the United States District Court for the Western District of Pennsylvania. The Pennsylvania based company filed a patent in 1996 for a "Hand Held Computer Input...

2007 - An Exciting Year For Patent Law

Posted on January 14, 2008
The patent law and business communities spent much of 2007 waiting anxiously to learn whether the Patent Reform Act of 2007 would become law. We now know the answer - it will not. Though once again Congress has failed to...

AdBriefs

Posted on January 10, 2008
http://www.coveringyourads.com/

Antitrust Law

Posted on January 10, 2008
http://www.antitrustlawblog.com/

Advertising & Promotions Law

Posted on January 10, 2008
http://www.coveringyourads.com/

Bankruptcy and Restructuring Law

Posted on January 09, 2008
http://www.bankruptcylawblog.com

Lord to Commoners: Copy Away!

Posted on January 09, 2008
Our friends across the pond are considering a new proposal that would change the rules regarding the copying of movies and music. Specifically, the proposal would allow the copying of legitimately acquired music and movies between storage devices for "private...

Corporate & Securities Law

Posted on January 03, 2008
http://www.corporatesecuritieslawblog.com/

Gambling with the Video Gaming Industry

Posted on December 27, 2007
Antigua and Barbuda, small island nations known for their sizable online gambling operations, may be entering a new business: legalized piracy. (The Hollywood Reporter, "U.S. copyright waived in tiny nation") The World Trade Organization, which administers trade disputes between members,...

The Thin Digital Line

Posted on December 27, 2007
The line between digital fantasy and reality is becoming evermore blurred, as evidenced by the recent arrest of a 17 year-old Dutch teen and the questioning of five others.[1] Using a phishing scam, the teens were allegedly able to secure...

ESOP Law

Posted on December 19, 2007
http://www.esoplawblog.com/

Fans: Friend or Foe?

Posted on December 14, 2007
In a time long long ago, fans of certain fictional worlds portrayed in games or on television were relegated to relative obscurity. User generated content was generally confined to a well-crafted Klingon warrior outfit, the occasional love sonnet written in...

Not So Fast on Granting Summary Judgment for Defendant in Trademark/Copyright Case

Posted on December 14, 2007
Click here to view a PDF copy of the document....

United States Supreme Court To Clarify Patent Exhaustion Doctrine

Posted on December 13, 2007
One of the most significant and closely watched business cases to be decided by the United States Supreme Court this year involves the over one hundred year old doctrine of "patent exhaustion" or "first sale." The case, Quanta Computer, Inc...

Fashion & Apparel Law

Posted on December 04, 2007
http://www.fashionapparellawblog.com/