Damage Dilemma: Conflicting Standards for Disgorging Trademark Infringer's Profits
February 02, 2006
Is willfulness a prerequisite for recovering a defendant's profits under 35 U.S.C. §1117(a) for infringing a registered mark or for violations under Section 43(a) of the Lanham Act? Maybe. It depends on the circuit in which the case is decided, but it shouldn't. The substantive rights and remedies under the Lanham Act should be uniformly interpreted throughout the nation. This is especially so with respect to monetary remedies in view of the Trademark Amendments Act of 1999, which should have, but did not, resolve this issue.
Infringement By Source Code 'Golden Master': Developments in Patent Infringement Law Concerning Extra-U.S. Sales
January 04, 2006
Until recently, U.S. software companies comfortably operated under the assumption that selling software that was copied from a "golden master" CD outside of the United States, and which was sold only to customers outside of the United States, did not infringe U.S. patents. Recent developments in the law have destroyed that comfort and made clear that infringement liability may very well lie for exactly those types of foreign sales.
IP News
January 04, 2006
Highlights of the latest intellectual property news from around the country.
Nonphysical Differences Are Enough to Create Material Differences with Gray Market Goods
January 04, 2006
Under U.S. law, the resale of imported genuine goods bearing a valid U.S. trademark generally does not constitute trademark infringement. This is in part because, under the first sale doctrine, the trademark protections under U.S. law can be exhausted after the trademark owner's first authorized sale anywhere of the product bearing the trademark. Thus, U.S. law does not generally preclude the sale of identical genuine goods bearing a legitimate trademark even if the sale in the United States is unauthorized by the trademark owner.
If You're Confused, You Should Be: Two Federal Laws Apply to Cell Phone Messages
January 04, 2006
When it comes to sending promotional messages to wireless devices, such as through e-mail or short message service ("SMS"), there is more than one reason to be confused. First, there are two different federal laws that apply to messages that end up on wireless devices such as cell phones. The Controlling the Assault of Non-Solicited Pornography and Market Act (the "CAN-SPAM Act"), 15 U.S.C. §7701 <i>et seq.</i> and 18 U.S.C. §1037, applies if the address that is used to send the message consists of a username and a domain name. (Commonly, if the wireless device is a cell phone, the username would be the number of the cell phone and the domain name would be the domain name of the wireless carrier. If the wireless device is of some other type, the address may be formulated differently.) The applicable rule is: If the address has a domain name in it, the CAN-SPAM Act's wireless e-mail regulations apply.
IP News
December 05, 2005
Highlights of the latest intellectual property news from around the country.
Unmasking the Copyrightability of Costumes (and Clothing)
December 05, 2005
An interesting split in the Circuits has developed over whether costumes are per se copyright ineligible. According to one line of cases, costumes are entitled to copyright protection if the design is unique. Another line of cases, however, seemingly endorsed by Second Circuit dicta, suggests that because the purpose of a costume is to allow its wearer to masquerade, the design of the costume is not conceptually separable from the clothing itself.
A Consideration with Post-Issuance Practice: Intervening Rights
December 05, 2005
The day you have been waiting for has finally come. The patent application that your company believes covers key technology has issued. Your company may be, for example, a startup with its first marketable product or an established business trying to extend its presence in a niche market or enter into a new one. The patent provides your company the desired protection of the marketplace. There's just one problem. It appears that the scope of the patent may need to be altered to improve your position in the marketplace. For instance, a competitor may have successfully designed around the scope of your patent's claims. In some such instances, there may not be a pending application by which you, the patent owner, can capture the competitor, and post-issuance practice is the only mechanism. So, amending your claims, <i>eg</i>, to read on your competitor's products may seem like a sure way to capture him as an infringer and strengthen your position.
A 'TIP' for Responding to Trademark Infringement
December 05, 2005
If tsunamis, hurricanes and terrorist strikes have taught us anything, it is that emergency preparedness is vital to minimizing damage and facilitating recovery. Trademark infringement is no different. Trademark infringement preparedness can help lay the groundwork for an effective response by facilitating communication, reducing delay, ensuring comprehensive gathering of key response items, allowing for productive use of human resources, and providing for efficient allocation of monetary resources.
