Tuesday, 23 March 2010 19:48

GOOGLE'S EUROPEAN VACATION

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In a decision released earlier today, the European Court of Justice held that Google was not liable for the sale of AdWords to a retailer who, in turn, used the trademarked keywords in connection with the sale of counterfeit goods. The decision stemmed from Google's nearly five-year old appeal of a French decision in favor of Louis Vitton. Pursuant to the Court's holding, Google is not responsible for investigating the authenticity of a retailer's goods prior to selling its keywords. Nevertheless, with an eye toward future litigation, the Court did call for more transparency from companies such as Google with respect to the identity of sellers purchasing and using the trademarked keywords.

Read the decision here.

Saturday, 23 March 2013 19:33

THE POWER OF A DESIGN PATENT

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Everyone has experienced an auto accident of some form, be it a fender-bender or a more severe impact. While more forceful impacts can damage structural and/or functional components of a vehicle, even low-speed impacts can cause cosmetic damage that can be costly to replace.

So the next time you find yourself in a body shop pondering the cost of replacing cosmetic auto parts, consider this: many automobile body parts are patented. Companies in the auto industry have begun procuring design patents on the ornamental design of certain auto parts, including fenders, grilles, and quarter panels. This has led to some recent debate, since these design patents allow the manufacturers control over the original part, as well as replacement parts having the same patented design.  

The Statute of Anne, widely considered the world’s first copyright statute and the precursor to modern copyright law, went into effect on April 10, 1710, thus making this year (2010) the "tricentennial of copyright law."

The Statute of Anne was formally entitled "An Act for the Encouragement of Learning, by Vesting the Copies of Printed Books in the Authors or Purchasers of Such Copies, During the Times therein Mentioned" and was enacted in the United Kingdom during the reign of its namesake, Queen Anne.

Thursday, 11 March 2010 19:31

HOW FAR CAN YOUR LOGO GO IN FLORIDA?

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Currently in Tallahassee, State Senator Mike Fasano of New Port Richey, who is the chairman of the transportation budget committee, is drafting legislation that may allow your logo to go further than ever before in Florida. Specifically, the legislation would allow corporations to sponsor license plates and place their trademarks on the same.  The proposed legislation is being drafted to generate funds for the state and would use some of the proceeds received to give drivers who purchase the corporate tags a discount on annual registration fees. 
 
It is rumored that the legislation is being modeled after legislation passed in Texas in 2009 which began by featuring the RE/MAX logo and slogan.  It is also rumored that Disney is interested in being the first to put their trademarks on Florida license plates. Whether the legislation is passed this session, the mere consideration evidences the value of trademarks and the need to adequately protect the same.
Friday, 05 March 2010 19:19

CUBA LIBRE?

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Days after the death of prisoner of conscience Orlando Zapata Tamayo, the breath of the United States Embargo against Cuba is presently before Congress. What may surprise you, however, is that the issue is being raised by Section 211 (a)(2) of the Omnibus Consolidated and Emergency Supplemental Appropriations Act adopted by the U.S. Congress in 1998, which is not about human rights, but rather about trademarks. Specifically, Section 211 is about whom can use trademarks and is a product of the Havana Club controversy. And while the issue has been litigated for years and in several countries, Section 211 is designed to protect trademarks that belonged to businesses whose assets were confiscated by the Cuban government after the communist revolution of 1959 and establishes that no court in the United States may recognize any claim regarding trademarks and commercial names related to properties confiscated by the Cuban government. The change was challenged by the European Union and ultimately criticized by the World Trade Organization when it was first introduced. 
 
The present debate however, given the political climate may call into question the US Embargo and the purpose of its Intellectual Property carve out and as such promises to be a historic one. To read more click here.
This week Yelp! Inc. the online review site was served with a class action lawsuit in California for Violations of California’s Unfair Competition Statute. The complaint filed in the US District Court for the Central District of California, alleges that that Yelp! manipulates reviews, which have a direct impact on business ratings, and then offers to remove them if the business purchases a monthly advertising subscription. The Plaintiff, Cats and Dogs Corp, provides veterinary services in Long Beach California and claims that it was extorted by Yelp!
 
Yelp!, a San Francisco based operation which was founded in 2004, recently walked away from Google’s $550 million dollar offer to purchase.  These allegations however strike to the heart of Yelp! Business model which claims to provide “real people and real reviews.”  To date, Yelp's response to the complaint has been a statement denying the allegations.
Sunday, 12 December 2010 19:17

WARNER MUSIC: A LONE ISLAND IN THE STREAM

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Warner Music Group has announced that it will stop licensing its music to streaming services – such as Last.fm and Pandora -- that provide consumers with free, instant, and legal access to millions of songs. Generally speaking, music streaming services function like radio stations – with some, like Pandora, designed to 'guess' the musical tastes of a specific consumer and tailor suggestions based on these findings. Such services, therefore, provide new artists --and even musical genres -- with exposure to new consumers.  Nevertheless, while streaming services do pay royalties for each song played the royalties are significantly less than those a company such as Warner will earn through paid downloads.  Moreover, while some consumers may go on to purchase digital copies of favorite songs, it's unclear what proportion are simply free-riding on these service.

Warner, therefore, has come to the conclusion that "free streaming services are clearly not positive for the industry" and decided to focus on providing digital access to music by way of paid subscription services.   However, Warner’s decision to focus on paid subscription services – none of which have yet to prove popular among consumers – has been criticized as short-sighted and oblivious to the desires of consumers that have become accustomed to free and subsidized music services.  In this new landscape, many believe that any service stopping short of full-on piracy should be viewed as a positive by music labels.  This view appears to be held by several major industry players such as the senior VP of Universal Music Group who has gone on record as stating that such free services provide “a very sustainable financial model.”

It remains to be seen whether Warner’s move – which will cut access to popular artists such as REM and Muse – will negatively affect the future of music streaming services. However, as noted by the head of UK’s Music Manager’s Forum, what is clear is that “anything that's going backwards is denying where the world's going.”

While Toyota hopes that the Toyota Tundra's Super Bowl actual demonstration advertisement "Killer Heat"will make a lasting impression on you this Sunday, we hope it also reminds you of the binding effect of Plaintiff’s patent counsel’s litigation strategy in patent litigation and other auxiliary proceedings. This is because on January 26, 2010, the United States Federal District Court for the Middle District of Florida granted summary judgmentagainst Solomon Technologies, Inc. and in favor of Toyota Motor Corporation relating to claims of infringement of U.S. Patent No. 5,067,932.
 
The case is memorable for several reasons. First of all because ever since In re Gabapentin Patent Litigation in 2007 much has been written and theorized about the applicability of summary judgment in patent litigation.  And also because the case stands for the proposition that litigation strategy in other related proceedingsare binding in patent cases even if the claimant retains new counsel. Specifically, what occurred is that after initiating an action for infringement in the Middle District of Florida, which included a request for injunctive relief, the Plaintiff filed a complaint with the Unites States International Trade Commission (ITC). Soon after, both parties agreed to stay the court proceeding until a determination was reached by the ITC. During the ITC procedure the parties stipulated to meaning of certain claims which included the stipulation that “power conversion means” should be considered a “means plus function” limitation. After an extensive investigation, the ITC ruled against the Plaintiff who in turn appealed to the Federal Circuit. The appeal, however, was unsuccessful and the Plaintiff returned to the original litigation to pursue its claim of infringement. However, now represented by new counsel, Plaintiff argued that “power conversion means” was not a “means plus function limitation.” Toyota responded by moving for summary judgment, and the Court concluded that the Plaintiff’s tactic of abandoning the claim construction adopted in the other proceedings was a tactic that “offends the equitable principles underpinning the judicial estoppels doctrine.” In so doing, the Court rejected the Plaintiff’s argument that the Court was not bound by the findings of the ITC and the Federal Circuit, noting that the Plaintiff was “inviting this Court to revisit the same judicial landscape with its new counsel as its guide.”
 
This finding, while not unexpected, is something to carefully consider, since claim construction may occur early in patent litigation cases and other auxiliary proceedings. It is yet another reason to retain patent counsel and consider litigation strategy with their input, since failure to do so may result in a binding Killer Heat.