Supreme Court Will Decide Whether Fair Use Defense Survives a Showing of Likely Confusion
April 01, 2004
On Jan. 9, 2003, the U.S. Supreme Court granted certiorari to decide whether a fair use defense to trademark infringement can trump a finding of likely confusion. <i>KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.</i>, 328 F.3d 1061 (9th Cir. 2003), <i>cert. granted</i>, 124 S. Ct. 981 (2004). The decision to grant certiorari in this case is especially interesting in light of other recent cases also from the Ninth Circuit in which certiorari was denied.
A Trade Secret By Any Other Name is Still a Trade Secret: Why UTSA Pre-emption Matters
April 01, 2004
Trade secret plaintiffs sometimes couch their claims under other, alternative titles, such as "common law misappropriation," "unfair competition," or "breach of confidence." The tactic is often a deliberate ploy to avoid complying with state Uniform Trade Secrets Act (UTSA) statutes and case law governing trade secret litigation — a body of law that favors former employees in many respects.
China's IP Is Not Entirely Out of the Haze Yet
March 01, 2004
When China first bid for WTO membership, its intellectual property-related laws were one of the main obstacles to its joining the organization, as WTO membership required China to comply with the Agreement on Trade-Related Intellectual Property Rights (TRIPS). In its WTO accession documents, China declared its commitment to bringing its legal system in conformity with the TRIPS Agreement. Since then, China has come a long way. Nevertheless, not all problems have been resolved.
Buyer Beware IP Issues in Corporate Purchasing
March 01, 2004
Every year, large multinational corporations purchase billions of dollars of goods and services for both internal use and for resale. While seemingly unrelated to traditional disciplines of patent, trademark, trade secret and copyright law, corporate purchasing is surprisingly replete with a myriad of intellectual property related issues. Such purchasing can include a combination of goods and services. For example, computer hardware and software may be purchased/licensed in conjunction with professional services, such as software consulting. While corporate purchasing has been relegated traditionally to the back burner, especially when considering issues related to intellectual property, the purchasing of goods and services does involve significant issues in all the major intellectual property law disciplines.
IP News
March 01, 2004
Highlights of the latest intellectual property news and cases from around the country.
The Keys to Keyword Advertising
March 01, 2004
Until recently, courts have had relatively little to say about the practice of keyword advertising — <i>ie</i>, triggering Internet advertisements to appear when users search for a keyword identical to a competitor's trademark. Practitioners could look only to a single decision denying Playboy Enterprises, Inc.'s ("PEI") motion for a preliminary injunction against Netscape Communications Corp. ("Netscape") and Excite, Inc. ("Excite"). Now, four courts have recently issued decisions reaching starkly different results on keyword advertising practices, including a Ninth Circuit decision reversing summary judgment that had been entered against PEI in its litigation with Netscape and Excite. While much remains to be resolved, certain factors have been particularly influential.
FTC Approves 'Merger to Monopoly' in Innovation Market
February 10, 2004
The intersection of intellectual property and antitrust has been the subject of much fanfare over the past decade. The antitrust agencies have held numerous workshops where enforcement officials and practitioners have debated the scope and limitations of antitrust when such principles intersect with IP rights. The most notable work product generated as a result of this focus has been the 1995 Guidelines setting forth antitrust policy for the Licensing of Intellectual Property issued by the Department of Justice (DOJ) and the Federal Trade Commission (FTC).
