Thursday, 05 November 2009 18:44

THERE’S A LAWSUIT FOR THAT

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In October 2009, Verizon launched a series of commercial advertisements comparing coverage maps of Verizon’s 3G network with more sparse 3G coverage maps of competitor AT&T. Specifically, Verizon’s ads claim that AT&T is “out of touch” and that if someone wanted to know why an AT&T customer has spotty 3G coverage “there’s a map for that.” 
 
Based on these advertisements, AT&T has sued Verizon for violations of trademark law under the Lanham Act and local laws, claiming false advertising and deceptive trade practices. They are seeking a temporary restraining order and injunctions to prevent Verizon from continuing to use the ads, as well as for damages. (see AT&T Mobility LLC v. Cellco Partnership d/b/a Verizon Wireless, United District Court for the Northern District of Georgia, Atlanta Division, Case No. 1:09-cv-3057)
 
Notably, AT&T is the carrier for Apple’s iPhone which has the popular catch phrase “there’s an app for that.”
Friday, 09 October 2009 18:44

IS “HOTELS.COM” GENERIC?

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In July 2009, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) finding that the mark HOTELS.COM was generic when used in connection with information and reservation services for temporary lodging.
 
Traditionally, “generic” terms or phrases are defined as being incapable of carrying trademark significance, meaning that they are so highly descriptive of the pertinent goods or services that they are not capable of ever achieving enough distinctiveness to serve as a source indicator. Accordingly, a common test for determining genericness of a service mark involves an analysis of whether the term or phrase at issue is used by the relevant public primarily to refer to the class or “genus” of services. 
 
Monday, 05 October 2009 18:41

RETURN OF THE SUPREME COURT.

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The Supreme Court returned to session this morning in accordance with a long-held tradition of opening the annual term on the first Monday in October.   The recent changes to the Court's composition, coupled with the potential impact of the decisions looming on the horizon, promise to make this session a particularly interesting one.

The administrators of Michael Jackson's estate have filed a lawsuit in federal court against the Heal the World Foundation on the grounds that the foundation is illegally using trademarks and websites that give the false impression that Michael Jackson is associated with the foundation. In 1992, Jackson founded a Heal the World Foundation based on his hit single, but that enterprise was abandoned a decade later. The suit claims that "Defendants' acts of infringement and unfair competition have been committed with the intent to cause confusion, mistake and to deceive" by including photos and trademarks of Michael Jackson, and statements made by Melissa Johnson, the founder of the Heal the World Foundation, which falsely suggest she had a history of working with Jackson's charity. Additionally, the lawsuit alleges that the defendants violated "cybersquatting" laws by registering domain names such as “mjaid.net,” “healtheworldfoundation.net,” and “mjquotes.net” that imply legitimate ties to Jackson and his estate. The website "healtheworldfoundation.net" has numerous sections devoted to Mr. Jackson and his charitable work. The defendants were also subject to a recent CBS investigative report, which concluded that their cause had become a "magnet for fans searching for a Michael Jackson charity."This lawsuit is part of a continuing effort by Jackson's estate to control unauthorized use of Michael Jackson's name and likeness.

Adam Goldman contributed to this entry.

Wednesday, 23 September 2009 18:39

FACEBOOK IS . . . BEING SUED FOR PATENT INFRINGEMENT.

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Next time you log on to Facebook you might want to take a moment to consider the software that runs Facebook and what is it about the way the information is exchange that keeps you coming back for more because these are now the subject of a lawsuit for patent infringement.  On Monday, September 21, 2009, Facebook, the world’s most popular social networking site, was sued by WhoGlue Inc. in the United States District Court for the District of Delaware.  And while the three page complaint is a little vague, the method patent that it claims Facebook has infringed is very interesting. 
Specifically, the company's patent covers an "information management system, method and computer program code and means for facilitating communications between user members of an online network."  The patent which was issued on July 17, 2007 contains several figures which lay out everything from logging in to searching your address book and network. The Plaintiff, WhoGlue, has requested a permanent injunction, damages including attorneys’ fees and has made a demand for a jury trial.

As we help clients navigate through the trademark application process we are careful to always explain the risks as well as the rewards associated with the breath of their registration.  Not surprisingly, afterwards we also emphasize the need to routinely maintain and update ones Intellectual Property portfolio because it is after all an investment that should not be neglected.  However, when the TTAB decided Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007), we hoped that the appeal of the decision would result in an interpretation that was more in line with the policies of public disclosure that the USPTO has consistently applied. 

Specially, the concern was that the Board had found that Bose’s 2001 renewal of its registration for the word-mark WAVE in connection with audio tape recorders and players was fraudulent because the company no longer manufactured those products. The issue of actual use, however, arose after the renewal when Bose opposed the registration of the HEXAWAVE mark and Hexawave fired back accusing Bose of committing fraud on the PTO.  In essence, the Board’s finding of fraud hinged on the determination that Bose “should have known” which in essence established a standard of subjective intent.  This finding led to the coining of the term fraudit, which are audits on Intellectual Property portfolios that seek to uncover what the owner “should have known.” 

In testimony before the House Judiciary subcommittee, U.S. Register of Copyrights, Marybeth Peters criticized the proposed agreement between Google and the Author's Guild, which would allow Google to create and maintain a vast digital library of scanned books. Specifically, this settlement would give Google the right to digitize millions of books, including "orphan books" (books for which there is no clear copyright owner), without permission from copyright holders. Consequently, Google would be shielded from liability and would establish a registry that would sell access to books to libraries and individuals. Revenue would be split among Google, authors, and publishers.

Ms. Peter's testimony, which could prove to be a crucial factor in the settlement agreement's fairness hearing on October 7th, argued that this registry created a back-door for Google to get around copyright restrictions by allowing them to sell books without prior author consent. She equated this situation to that of a compulsory license, in which the rights holder is forced to license his/her work to others, as Google would now have the right to display book text and control the sale of downloads. Most importantly however, Ms. Peters claimed that this settlement agreement usurped Congressional authority because only Congress, not the courts, can enact such licenses.

Tuesday, 25 August 2009 18:35

DAVID I4I VS. THE MICROSOFT GOLIATH.

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Earlier this month, the Honorable Leonard Davis of the United States District Court for the Eastern District of Texas made a determination of willful patent infringement in favor of a thirty (30) employee Canadian based software manufacture who sued the software giant, Microsoft.  The lawsuit filed by Infrastructures for Information Inc., known as i4i claimed that MS Word 2003 and 2007 included an Extensible Markup Language or XLM tagging feature that infringed its patent.  The plot was thickened by the fact that i4i developed a product based on the patent and even negotiated the possibility of a license with Microsoft which triggered allegations of willful infringement on the part of the software giant who is no stranger to litigation.  

Specifically, in May of this year, the jury found in favor of i4i and awarded it $200 million.  But earlier this month, Judge Davis found that the infringement was willful and added $40 million to the damages award along with pre-judgment interest in the amount of $37 million.  He then issued a permanent injunction prohibiting Microsoft from selling MS Word in the US and giving Microsoft 60 days to comply with the injunction.