IP News
Highlights of the latest intellectual property news from around the country.
CoStar Reopens Settled Fixation Issue in Online Digital Environment
In a little-noticed and as yet un-cited alternative holding last year, the U.S. Court of Appeals for the Fourth Circuit undermined a previously unbroken line of cases holding that electronic copies of digital works are "fixed" within the meaning of the Copyright Act if they exist in the random access memory ("RAM") of a computer. <i>CoStar Group, Inc. v. LoopNet, Inc.</i>, 373 F.3d 544 (4th Cir. 2004).
Second Circuit Finds No Trademark Infringement in Targeted Internet Advertising Case
On June 27, 2005, the Second Circuit overturned a lower court's determination that an Internet advertising company's delivery of targeted, contextually relevant pop-up ads constituted trademark infringement. The plaintiff, 1-800 Contacts, Inc. ("1-800"), sued WhenU.com ("WhenU") for trademark infringement as well as multiple other federal copyright, state infringement, and common law claims. The Second Circuit limited its review of the case to the plaintiff's Lanham Act claim, remanding the rest of 1-800's claims back to the district court.
Dictionary Dethroned: Phillips v. AWH Corporation
To rely on the dictionary or not to rely on the dictionary, and to what extent, that is the question. A question which after frenzied anticipation by the patent bar, the <i>en banc</i> U.S. Court of Appeals for the Federal Circuit, in its July 12, 2005 landmark decision of <i>Phillips v. AWH Corp.</i>, No. 03-1269, -1286, 2005 U.S. App. LEXIS 13954 (Fed. Cir. July 12, 2005), has answered: While dictionaries may be useful to assist in the understanding of a commonly understood meaning of a claim term, the proper starting point is the patent specification and corresponding prosecution history.
Inducement Theory In <i>Grokster </i>Leaves Unanswered Questions
In <i>MGM Studios, Inc. v. Grokster</i>, the Supreme Court decided that the defendants could be held liable for copyright infringement perpetrated by the users of their respective software. Rather than clarifying the "significant non-infringing use" standard from <i>Sony Corp. of America v. Universal City Studios, Inc.</i>, to determine whether the defendants could be held liable for distributing a product with knowledge that it could be used to infringe, the Court utilized an alternative approach of finding liability. Turning to common law precedent and patent law, the unanimous Court held that liability may be based on purposeful, culpable expression under an inducement theory of secondary infringement. While some of the potential implications of this decision can be predicted, the full effect will not likely be clear for some time.
IP News
Highlights of the latest intellectual property news from around the country.
MGM v. Grokster: Inducement Theory Leaves Unanswered Questions
In <i>MGM Studios, Inc. v. Grokster, Ltd.</i>, No. 04-480 (June 27, 2005), the Supreme Court decided that the defendants could be held liable for copyright infringement perpetrated by the users of their respective software. Rather than clarifying the "significant noninfringing use" standard from <i>Sony Corp. of America v. Universal City Studios, Inc.</i>, 464 U.S. 417 (1984), to determine whether the defendants could be held liable for distributing a product with knowledge that it could be used to infringe, the Court utilized an alternative approach of finding liability. Turning to common law precedent and patent law, the unanimous Court held that liability may be based on purposeful, culpable expression under an inducement theory of secondary infringement. While some of the potential implications of this decision can be predicted, the full effect will not likely be clear for some time.
Registration of Nontraditional Trademarks in the U.S. and EU
In recent years, innovative approaches toward brand creation and marketing have given rise to a new family of trademarks, referred to as nontraditional marks, which include, among others, color, motion and non-visual marks. Trademark laws in both the United States and Europe are being clarified to accommodate these new marks. Many such provisions are harmonious across both regions, but there are some procedural and substantive differences that should be considered before a company invests its time and resources into the creation of an international nontraditional brand. Further, registration of most nontraditional marks often requires a showing that the mark acquired distinctiveness through extensive use, which can be a heavy burden to meet under the law of both jurisdictions.
