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.
Sarbanes-Oxley and Licensee Fiduciary-Based Tort Liability for Breach of Contract: City of Hope National Medical Center v. Genentech, Inc.
November 02, 2005
Over the years, courts frequently have been called upon to determine the nature and extent of the diligence required of licensees, assignees and other parties granted exclusive rights to exploit intellectual property. Dating back to Justice Benjamin N. Cardozo's opinion in <i>Wood v. Lucy, Lady Duff-Gordon</i>, 222 N.Y. 88, 118 N.E. 214 (1917), the courts consistently have held such parties to an implied promise to exercise some measure of diligence to commercialize the transferred property in those cases in which the grantor was completely reliant upon the productivity of the intellectual property user to generate royalties or other consideration.
IP News
November 02, 2005
Highlights of the latest intellectual property news from around the country.
Offers of Judgment and Copyright Litigation
November 02, 2005
Rule 68 of the Federal Rules of Civil Procedure provides a defendant with a means to encourage parties to settle their litigation before trial. A defendant may serve a plaintiff with an "an offer to allow judgment to be taken against [defendant] for the money or property or to the effect specified in the offer, with costs then accrued." F.R.C.P. 68. If the offer is not accepted by the plaintiff, and the "judgment finally obtained by the offeree is not more favorable than the offer, the offeree must pay the costs incurred after the making of the offer." <i>Id.</i>
