The French fashion house, Balenciaga Corp. has sued New York shoe company, Steve Madden Ltd. in the U.S. District Court for the Eastern District of New York claiming infringment of its trade dress and copyrights for manufacturing and selling knockoffs of its “Lego” shoe. Interestingly, “LEGO” is a registered trademark of Lego Juris A/S/ Corp.
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INDEPENDENT RECORD LABEL SUES GOOGLE AND MICROSOFT
Florida-based independent blues label Blues Destiny Records, LLC has filed a lawsuit for copyright infringement in the U.S. District Court for the Northern District of Florida against Microsoft and Google, and the German file sharing service Rapidshare. Blues Destiny alleges that Microsoft and Google are liable for contributory and vicarious copyright infringement due to the search functions of Google and Microsoft’s Bing, which allow users to search for artist names and album titles and locate websites featuring illegal downloads of Blues Destiny’s copyrighted works that are hosted by Rapidshare.
To view the Amended Complaint, click here.
A NEW OPINION ON DETERMINING THE DISTINCTIVENESS OF TRADEMARKS
To attain legal status as a trademark, a term must be deemed to be “distinctive” as used in connection with the goods and/or services being offered. However, the degree of distinctiveness – and, therefore, the strength of a mark – can range from marks that are inherently distinctive (arbitrary, fanciful, and suggestive marks) to marks deemed unworthy of protection (generic marks and descriptive marks lacking secondary meaning.) The middle ground is occupied by descriptive marks that have achieved secondary meaning among the consuming public. Because a party cannot prevail on a trademark claim unless its mark is distinctive, determining where a particular mark falls within the “distinctiveness” scale is a crucial determination in any trademark infringement suit.
As such, the recently decided Lahoti v. Vericheck – which overturned a lower court’s more rigid application of the “descriptiveness” analysis – has the potential to significantly impact future trademark litigation. In Lahoti, the 9th Circuit Court of Appeals held that the lower District Court had made several errors of law in its descriptiveness analysis. Specifically, the lower court had held (1) that a trademark was descriptive only if it described all of the trademark owner’s businesses; and (2) that a trademark could be examined only by taking the entire mark into account. Using this analysis, the lower held that the mark “VERICHECK” was not descriptive – even though one of the services offered was ‘check verification’ – as the mark did not “immediately call to mind the broad array of electronic transaction processing services” offered by the trademark owner.
WHO DAT TRADEMARK OWNER?
As the New Orleans Saints get ready to take the field in their first SuperBowl on February 6th in Miami, the game is not the only battle that has the Who Dat Nation talking. The National Football League, who claims to be the owner of the “Who Dat” phrase, has sent cease and desist letters to retailers, including mom and pop shops, who are selling merchandise with the “Who Dat” phrase. The NFL claims that such sales would cause confusion among Saints fans about whether such merchandise is officially licensed by the NFL.
However, the ownership of the “Who Dat” phrase may not be so clear cut. Sal and Steve Monistere, who recorded a version of “When the Saints Go Marching In” in the early eighties incorporating the “Who Dat” chant, claim that they are the owners of the phrase.
GOOGLE ADWORDS II – ATTACK OF THE BILLBOARD SNATCHERS
A hot topic of late in the world of IP is the controversy over Google AdWords and its policy of allowing, and in some instances suggesting, that advertisers purchase the trademarks of their competitors as “AdWords” so that they will come up as a sponsored link when the competitor’s brand is searched. Now a recently published Patent application filed by Google in June 2008 may signal a practice that could put an entirely new wrinkle on the AdWord controversy.
In its patent application, Google is essentially seeking to protect a method for identifying potential advertising locations within “an online geographic view”, such as its Street View feature within Google Maps, so as to allow for real time advertising to be positioned or superimposed into that view. For example, if you are looking at an image of Times Square, Google could cover an actual billboard image with a targeted advertisement of its own. While at first blush some might question whether replacing an old stale ad from an old image with a new fresh ad is a cause for concern, regardless of whether a patent ever issues, the practice described therein could be a virtual Pandora’s box of IP related issues.
USPTO TO REVISE PATENT TERM ADJUSTMENT CALCULATIONS
Patents granted by the U.S. Patent and Trademark Office (USPTO) enjoy a period of exclusivity for the term of the patent, which runs from the issue date of the patent through 20 years from the earliest effective filing date of the application resulting in the patent. However, adjustments to the patent term may be available to correct for delays caused by the USPTO.
Recently, the Federal Circuit decided Wyeth v. Kappos in which the Court interpreted the statute 35 U.S.C. 154(b) regarding how “overlap” of delay periods affect the patent term adjustments. The Court’s decision is in contrast to the interpretation of the statute the USPTO has employed. Accordingly, the USPTO announced last week that they will change their calculation of patent term adjustments in view of this recent decision. See the notice for more information. Though the exact revisions to the calculations are still being determined, under this new interpretation, those patents which are eligible for patent term adjustment may be able to capture additional term extensions. Typically, a patentee may apply for patent term extension before paying the issue fee, or can file a claim with the court seeking review within 180 days of patent issuance. See 35 U.S.C. 154 and 37 CFR 1.705.
In view of this recent development, we take this opportunity to remind you that if you have a patent that is about to issue or has issued within 180 days, you may want to consider whether the proper patent term has been applied, or whether additional term adjustments may be appropriate.
POPULAR PLACES TO ENFORCE YOUR PATENT
Patents are covered by federal law, which to some degree can permit selection of the location where a patent infringement suit is brought. Perhaps not surprisingly, there is an uneven distribution of patent infringement cases among the federal district courts. As might be expected, courts with the greatest number of patent cases are generally located in high population and/or high-tech areas. However, there are some interesting exceptions.
One interesting peculiarity is the well-known U.S. District Court for the Eastern District of Texas which carries a vastly disproportionate amount of patent infringement cases. This has been happening for some time, as can be seen from this 2006 article. In fact, of the approximately 2,600 patent cases filed in 2009, over 240 were filed in the Eastern District of Texas.* Another popular court is the District of Delaware, where approximately 230 patent cases were filed in 2009.*
Of course, opposing parties will sometimes attempt to transfer out of one jurisdiction into another. In this regard, the Federal Circuit may be starting a trend towards requiring stronger justification for initial forum selection, as two recent cases involving transfers out of the Eastern District of Texas suggest:
*A useful website for searching information on federal district court filings according to subject matter, location, or other parameters isJustia.com.