Just A Joke: The Parody Defense In Domain Name Cases
October 02, 2003
When should a third party be able to incorporate a trademark in a domain name as a form of parody? Historically the question of parody has more often been raised in copyright infringement cases where the defendant concedes that he has used a copyrighted work, but has done so in order to make a social criticism or comment. Generally courts will examine such claims by looking at whether the amount of the copyrighted work taken was no more than necessary to conjure up the original in the mind of the targeted audience and whether the parody was commenting on the copyrighted work or merely using the creativity of another to make a statement about some unrelated topic or issue. <i>See eg, Elsmere Music, Inc v. National Broadcasting Co.</i>, 482 F. Supp. 741, 747 (S.D.N.Y. 1980), aff'd, 623 F.2d 252 (2d Cir. 1980) (finding Saturday Night Live's use of 'I Love Sodom' to be protected parody of 'I Love New York').
Victor's Victorious
October 02, 2003
The United States Supreme Court decided its first Federal Trademark Dilution Act (FTDA) case on March 4, 2003, in <i>Moseley et al. dba Victor's Little Secret v. V Secret Catalogue, Inc. et al.</i> The Court granted <i>certiorari.</i> to settle the Circuits' differing opinions on whether relief under the FTDA requires a showing of objective proof of actual injury to the economic value of a famous mark, as opposed to a presumption of harm arising from a subjective 'likelihood of dilution' showing.
IP NEWS
October 02, 2003
Highlights of the latest IP news and cases from around the country.
Applying Attorney-Client Privilege Beyond the United States
October 02, 2003
The attorney-client privilege and work product immunity protect a bevy of communications between and among lawyers and clients. How do these doctrines apply when dealing with foreign attorneys and foreign patent agents? The recent decision in <i>Astra Aktiebolag v. Andrx Pharmaceuticals</i>, 208 F.R.D. 92 (S.D.N.Y. 2002), illustrates the complexities of a privilege analysis when communications take place on a global scale. In this case, defendant, Andrx, challenged claims of attorney-client privilege and work product immunity asserted by plaintiff Astra. The disputed documents fell into three categories.
Understanding, Averting and Surviving a Software Audit
October 02, 2003
According to a report released earlier this year by the Business Software Alliance, one out of every four business software applications installed in the United States is unlicensed, and thus a potential copyright infringement violation. Numbers like these have turned many businesses into targets in recent years, as software companies have made battling unlicensed software in the workplace a top priority. Armed with the threat of stiff penalties under the copyright law and backed by highly active trade groups, software vendors are increasingly making businesses aware of the unlicensed software problem and requesting that businesses perform a 'software audit,' in which the trade group will use an express or implied threat of litigation to ask that a company submit to a determination of whether unlicensed software exists on its computer system.
Can Defendants Access Trade Secrets?
October 02, 2003
One of the most frustrating problems in defending a trade secrets lawsuit comes when the plaintiff refuses to agree that the accused defendant may have access to, and thus learn about, the specific alleged secrets the defendant is accused of misappropriating. There are, however, two arguments defense counsel can use to win a motion for access to that information — a victory that alone can turn the momentum in the defendant's favor.
Patent Drafting after Johnston
October 02, 2003
In <i>Johnson & Johnston Assocs. v. R.E. Service Co.</i>, 285 F.3d 1046 (Fed. Cir. 2002) the Federal Circuit turned at least one aspect of patent drafting practice on its ear. Before <i>Johnson</i>, generally accepted patent drafting techniques encouraged the disclosure of alternative subject matter in the specification, particularly for claimed elements of the invention, in order to possibly broaden the scope of the claims of the resultant patent. Post Johnson, such practices may clearly backfire as the court held that subject matter disclosed in a patent's specification, but not claimed, is dedicated to the public. Although Johnson may well have a major impact on claim drafting techniques, this case will likely have a greater impact on techniques used for drafting the patent specification.
Tiger Woods' IP Claims Stuck in the Sand Trap
October 01, 2003
First Amendment theory triumphed over celebrity right of publicity and trademark rights this past summer. The Sixth Circuit Court of Appeals upheld a dismissal of Tiger Woods' damages claims for use of his likeness in limited edition prints of a painting titled "The Masters of Augusta." <i>ETW Corporation v. Jireh Publishing, Inc.,</i> 332 F.3d 915 (6th Cir. 2003).
IP News
October 01, 2003
Highlights of the latest intellectual property news and cases from around the country.
The Impact of the Patent Exhaustion and Implied License Doctrines on License Negotiations
October 01, 2003
Nothing should be left to chance when drafting patent licenses. Indeed, the parties on both sides of the transaction have a keen interest in eliminating ambiguities. This is particularly true with respect to the scope of the license grant. The licensor must be reasonably assured that it has not inadvertently given away more than what was bargained for. On the other side, the licensee must be reasonably assured that it may use the patent as it intended without being sued for infringement.
