The Intellectual Property Strategist

Features

The Ninth Circuit, in a case of first impression in that circuit, recently adopted the long-standing policy of the U.S. Patent and Trademark Office's ('PTO') Trademark Trial and Appeal Board ('TTAB') that 'use in commerce only creates trademark rights when the use is <i>lawful</i>.' <i>CreAgri Inc v USANA Health Sciences Inc.</i>, 474 F.3d 626 (9th Cir. 2007). The Ninth Circuit in <i>CreAgri</i> noted that 'at least one [other] circuit has adopted and applied this rule. <i>See United Phosphorous, Ltd. v. Midland Fumigant, Inc.</i>, 205 F.3d 1219, 1225 (10th Cir. 2000).'

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Highlights of the latest intellectual property news from around the country.

The first federal case to consider directly the intersection of copyright and trade dress rights arose from a dispute over the use of revealing photographs of a young Marilyn Monroe on labels of red wine. The case, <i>Nova Wines, Inc. d/b/a/ Marilyn Wines v. Adler Fels Winery LLC</i>, out of the Northern District of California, was decided on a preliminary injunction motion and involved two commercial wine merchants intent on capitalizing on Monroe's enduring marketability.

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Can a Notice of Opposition in the U.S. Patent and Trademark Office Trademark Trial and Appeal Board give rise to an actual controversy under the Declaratory Judgment Act to support a trademark Applicant's federal declaratory judgment action against the Opposer? Generally, it can't ' or more accurately, it doesn't. But in <i>Neilmed Products, Inc. v. Med-Systems, Inc.</i>, the Northern District of California found that the Notice of Opposition pleaded detailed factors relevant to liability for trademark infringement and dilution.

The U.S. Court of Appeals for the Federal Circuit recently addressed the jurisdictional reach of U.S. courts to adjudicate patent disputes involving foreign patents. In <i>Voda v. Cordis</i>, a split panel held that even if the district court had the authority to exercise supplemental jurisdiction over the foreign patent claims, the district court abused its discretion by exercising that authority. The court's opinion rests largely on comity and judicial economy considerations.

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Imagine the following two scenarios, and try to figure out what the real difference is. First, your competitor blatantly lies in its advertising about the effectiveness of its products; second, your competitor blatantly lies to a reporter about the effectiveness of its products, and the reporter publishes the lies in an article or in a magazine. It seems like the same situation, but it is not. With the first, you could sue for false advertising because the advertisement is 'commercial' speech, whereas with the second, you cannot because the magazine article is 'non-commercial' speech. A similar difference is presented if a newspaper uses a picture of a celebrity without the celebrity's consent to highlight a news article, as opposed to a company using the same celebrity picture in a print advertisement, in the same newspaper, to promote the company. A breach of the celebrity's right of publicity claim is not available against the newspaper because the news article is 'non-commercial,' but is available against the company because the print advertisement is 'commercial.' The rationale for both is that while the First Amendment fully protects 'non-commercial' speech, it protects 'commercial' speech in a significantly limited way.

Highlights of the latest intellectual property news from around the country.