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>
You're Going to Serve Someone, But Will You Have Jurisdiction?
November 02, 2005
When is a proceeding not a proceeding, or more precisely, when is a proceeding affecting a mark not a proceeding affecting a mark? No mere word game, the answer can have a profound impact on foreign trademark owners who routinely (and perhaps unthinkingly) appoint their U.S. attorneys as agents to accept service in proceedings affecting their marks. The answer ' or at least an answer ' recently was provided by the U.S. District Court for the Eastern District of California in <i>E&J Gallo Winery v. Cantine Rallo, S.p.A.</i>, slip op. 1:04 cv 5153 (OWW) (Aug. 17, 2005), where just such a profound impact faced an Italian winery with a long history whose American counsel accepted service of a summons and complaint in an infringement suit, but made only fleeting efforts to alert his foreign client. The court vacated a default judgment that threatened to terminate a 50-year business in this country because the domestic attorney designated by the foreign trademark applicant under 15 U.S.C. §1051(e) to receive service in "proceedings" affecting the mark was deemed not authorized to receive service in a "litigation" affecting the mark. (The defendant's failure to answer was also deemed excusable neglect. Following the default, the author is now representing the defendant.)
Managing Digital Risk
October 31, 2005
Few areas of information security are as misunderstood, or as critical to understand and employ, as digital risk management. Some organizations see it as an information technology (IT)-only issue. Others view risk management as relevant to everything but IT. <br>But the truth is that digital risk management is one of the most important components of an effective information-security program. For many industries, including the legal profession, digital risk management is also an integral part of a business' strategy aimed at enabling revenue while reducing risk for clients and law firms. <br>And, for organizations involved in e-commerce, digital risk management can make the difference between futility and fortune.
Ambush Marketing: Here to Stay?
October 04, 2005
Ambush marketing," a term coined by Jerry Wexler, manager of global marketing efforts for American Express in the 1980s, refers to the marketing activities of companies that manage to associate themselves, or their products or services, with high-profile events without paying to become an "official sponsor.
