IP News
May 26, 2005
Highlights of the latest intellectual property news from around the country.
Google v. American Blind: Staying in Line with Online Advertising?
May 26, 2005
One of the hot intellectual property topics for 2005 — and perhaps beyond — is whether the sale and use of trademarks as keywords constitutes trademark infringement, and, if so, who is liable for that infringement. How the courts ultimately resolve this issue will affect the billion-dollar Internet advertising industry, those who participate in online advertising and those seeking to prevent the unauthorized use of their trademarks on the Internet. This article discusses <i>Google v. American Blind & Wallpaper Factory, Inc.</i>, 2005 U.S. Dist. LEXIS 6228 (N.D. Cal. Mar. 30, 2005), the most recent case to address the emerging issue of "markmatching" in Internet contextual advertising, and its relationship to trademark infringement.
Typosquatting and the Duty to Police Infringing Trademarks: Initial Interest Confusion and 'Post-Initial Confusion'
May 26, 2005
You are the owner of KibbleSoft, the widely used fuzzy-logic retail management software package for pet food distributors. Understanding the value of the KibbleSoft brand, you have registered the trademark and carefully policed against infringers for a number of years. And having early grasped the importance of the Internet for promoting your brand, you were also a step ahead of the cybersquatters and acquired the <i>kibblesoft.com</i> domain in 1996. Much of your business now runs through your heavy-trafficked Web site at <i>www.kibblesoft.com.</i>
Doctrine of Equivalents Applied to Means-Plus-Function Limitations: There Is No 'Equivalent of an Equivalent'
May 26, 2005
A means-plus-function limitation recites a function to be performed rather than definite structure or materials for performing that function. <i>Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc.</i>, 145 F.3d 1303, 1307 (Fed. Cir. 1998). Such a limitation is more narrow than a counterpart written in structural format. <i>Lighting World, Inc. v. Birchwood Lighting, Inc.</i>, 382 F.3d 1354, 1361-62 (Fed. Cir. 2004). Nevertheless, patent drafters still commonly use means-plus-function limitations in computer-related patent claims for convenience sake.
The Metamorphosis of Assignment Clauses in Bankruptcy
May 24, 2005
Last month, we discussed "The Debtor's Nightmare," explaining how the Fourth Circuit joined the Ninth, Third and Eleventh Circuits in adopting the "hypothetical test" in denying a debtor in possession's assumption of an executory contract under section 365 (c) of the Bankruptcy Code despite an express assignability provision in the contract. <i>RCI Tech. v. Sunterra Corp.</i> (<i>In re Sunterra Corp</i>), 361 F.3d 257 (4th Cir. 2004). This month, we continue with "the debtor's paradox."
IP News
May 02, 2005
Highlights of the latest intellectual property news and cases from around the country.
Expanding Protections for Artistic Features of Utilitarian Objects
May 02, 2005
In April 2004, the Second Circuit Court of Appeals reversed a district court's conclusion that the features of Mattel's "CEO Barbie" and "Neptune's Daughter Barbie" were not protected by copyright. With little discussion, the three judge panel unanimously held that while Mattel's "particularized expression" in a "doll visage with upturned nose, bow lips, and widely spaced eyes" does not prevent a competitor from creating dolls with upturned noses, bow lips and widely spaced eyes, it does bar a competitor from copying Mattel's "realization" of the particular Barbie's features. <i>Mattel, Inc. v. Goldberger Doll Manufacturing Co.</i>, 365 F.3d 133, 136 (2d Cir. 2004).
Internet Usage Threatens Existence of Concurrent Use Registrations
May 02, 2005
In a rare concurrent use decision, <i>Hubcap Heaven, LLC v. Hubcap Heaven, Inc.</i>, Concurrent Use No. 94001147 (Jan. 25, 2005) [not citable], the Trademark Trial and Appeal Board ("TTAB") questioned the continued viability of concurrent use registrations in the face of the Internet's global reach. Concurrent usage is based on the premise that two owners of the same trademark for competing goods and services can coexist by carving out strict geographic territories for each user. The Internet, however, has no geographic boundaries.
