Category Archives: Licensing

Was Shakespeare “Sometimes Like a Lawyer”? Legal Writing With The Bard

Shakes

William Shakespeare breathed his last on April 23rd, 1616, so this April 23rd marks 400 years since his death.  It is also, supposedly, his 452nd birthday.  Putting aside the oft-silly conspiracy theories and multitudinous alternate spellings of his name, many details of Shakesper’s life are clearly documented in contemporary sources.  No one is sure, however, exactly what he was up to in the 1580s. One compelling theory suggests that he spent some part of that decade as a lawyer –… More

Justice Scalia on Trademark and Copyright: Dastar, Penguin-Shaped Cocktail Shakers and “Guilt by Resemblance”

ScaliaWhen we decided to mark the passing of Justice Antonin Scalia by recounting a few of his copyright and trademark opinions, we were somewhat surprised to discover that there really hadn’t been that many. In fact, we located only seven matters in which Justice Scalia contributed a written opinion on a substantive issue of trademark or copyright law, and only four were majority opinions. Here they are, in chronological order:

K Mart Corp. v. Cartier, 486 U.S. 281… More

From Runway to Replica: Intellectual Property Strategies for Protecting Fashion Designs

Designers like Alexander Wang, Rebecca Minkoff, and Michael Kors are all gearing up to premier their 2016 fall/winter collections this month during New York Fashion Week.  Fashion Week draws more than 230,000 attendees each year to over 500 runway shows and events in New York City.  The economic impact of this biannual event is estimated to be close to $900 million. That’s more than the U.S. Open, which generates approximately $750 million annually for New York, and the Super Bowl, which generated an estimated $550 million when it was held in the… More

Sue-per Bowl Shuffle II: The Year in NFL-Related Intellectual Property Litigation

SBS

Around this time last year, I started worrying about what would happen if someone at a Super Bowl party asked me to explain an NFL-related lawsuit, particularly one of those IP-ish lawsuits that I’m supposed to know about. So I put together the first Sue-per Bowl Shuffle, a guide to the year’s gridiron disputes over trademarks, copyright, the right of publicity and other matters with a First Amendment flavor.

This year, we’ve got you covered again. Although the deflate-gate… More

Trademark and Copyright Law Blog Welcomes Natasha Reed as Author and Counsel in Foley Hoag’s New York Practice

reed_natasha_4x6We are delighted to welcome Natasha Reed as counsel in Foley Hoag’s Intellectual Property Department and — more importantly for present purposes — as our newest blogger. She’ll join Peter Sullivan in our New York City Office and on the author column of the blog.

Natasha has helped owners of some of the world’s most recognized brands in the luxury goods, fashion, film, music, publishing and food and beverage industries with trademark and copyright needs. With… More

Patent Strategies For Start-Up Companies

GyroPatents can be vitally important for protecting the innovations of a start-up company, just as it is important for start-ups to be mindful of trademark, copyright, and domain name strategies (see our other guides for start-ups, including Trademark, Copyright, and Domain Names). A patent is a government-granted right that prevents others from making, using, selling, or importing a patented invention. Having patents covering a start-up company’s key products or services can prevent theft of intellectual property by larger… More

Authorship Credit for Scholarly and Creative Works: The Elusive American Attribution Right

creditWhat if were to tell you that I jointly authored this article with a colleague, but that I’m not going to give her any credit or attribution because I don’t feel like it? Can she sue me for copyright infringement? No, because we are joint authors, so I have as much a right to publish this article as she does. If we lived in Europe, my colleague might have relied on her inherent right of attribution, a moral right (or droit… More

Harry Potter Lawsuits And Where To Find Them

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On July 31, 2015, Harry Potter author J.K. Rowling celebrates her 50th birthday, according to muggle sources. The enormous success of Rowling’s literary creation and its associated multimedia empire has spawned countless jealousies, countless imitators, countless parodists and countless pirates. The franchise has kept dozens if not hundreds of lawyers busy with precedent-setting copyright cases, trademark disputes, First Amendment battles over religious expression, and even the occasional breaking and entering. Indeed, it appears that Ms. Rowling and her works pop… More

And the Lawsuit Goes to . . . An Oscar-Time Guide to “Best Picture” Intellectual Property Litigation

OscarThe film that wins the Best Picture Oscar this year is certain to attract more viewers and more box office receipts than it had before receiving the award. But Best Picture winners also tend to attract more lawsuits, including intellectual property claims. Plaintiffs show up out of nowhere claiming to be the true authors of the underlying work, infringing defendants come out of the woodwork to unlawfully grab a little bit of the success for themselves, and so on. Sometimes the lawsuits are… More

Ninth Circuit (Mostly) Skirts the Issue of Copyright Misuse in Most Recent Omega v. Costco Decision

quarterSometimes a cigar is just a cigar, as the saying goes. However, things are not always as they appear, and sometimes events unfold in ways you would not anticipate. Such is the case with the Ninth Circuit decision in the matter of Omega v. Costco. The case concerns Omega’s allegations that Costco was importing watches bearing the Omega symbol, thus infringing the copyright in that design. Despite the fact that the parties on appeal briefed only one hotly contested legal issue –… More

A Trap For Santa: The First Santa Claus IP Fight

PosterAt this time of year, you may be wondering about the first intellectual property case involving Santa Claus. And even if you are not, we are going to tell you.

The Biograph Company was founded in 1895 by William Kennedy Dickson, a former employee of Thomas Edison. Biograph became known for its two-minute long documentaries made using a 68mm film format (in order to avoid the litigious Edison’s patents on 35mm technology), but over time it began making short narrative films… More

A Trademark Year in Wine and Beer: Our 2014 Holiday Buyer’s Guide to Disputed Beverages

DrinkersIf you are hosting or attending a party this holiday season, you probably need to pick up something to drink. This year, why not pick up a conversation starter as well? See if your local liquor store (in our neck of the woods, a “packie”) carries one of the many beverages that were the subject of a trademark or similar dispute in 2014. In deciding an 1891 trademark case, Lord MacNaghten famously quipped: “Thirsty folk want beer, not explanations.” Well, with our… More

The PTO vs. The Phantom Marks: A Ghost Story

RRRRDon’t read this one before bed.

As autumn sets in and Halloween approaches, my mind turns to jack-o-lanterns, skeletons, and phantoms. Phantom marks, that is. Equally incorporeal though perhaps somewhat less frightening than their ghostly namesakes, phantom marks are registered trademarks that contain a “phantom,” or changeable, element.  A well-known phantom registration was _ _ _ _ _ _ FOR DUMMIES for various self-help books, where the dotted line represented different descriptive terms that vary according to the subject matter of the book. … More

Wizard of Oz Celebrates 75th Anniversary & Victory in Copyright and Trademark Dispute Over Film Characters

adfsdfThis August will mark the 75th anniversary of the release of the classic film The Wizard of Oz. As Warner Bros. celebrates the iconic status acquired by the film and its characters during the past seven-plus decades, the studio will likely also be rejoicing over a recent victory concerning the intellectual property rights in images of the characters from the film.

In the early 2000’s, Dave Grossman Creations, Inc. (DGCI) and others began acquiring restored versions of old posters and lobby cards (smaller versions of the posters) from The Wizard… More

Amazon’s Inability To Register Domain Name .Amazon Is An Interesting Case Study For New gTLDs

Do you want your company to control .app or .restaurant? Applying to operate a generic top-level domain (gTLD) isn’t for the faint of heart.  Although several hundred companies ponied up the $185,000 application fee for over 1,900 total gTLD applications, that’s only the first stage in the process.  Once filed, ICANN reviews each application for financial, technical, and operational competence, ensuring that each applicant has the financial wherewithal, technical savvy, and a comprehensive plan to safely operate the gTLD registry for at least the length of the initial ten-year contract term.

If an application passes muster, there are… More

It Doesn’t Have To Be the Magna Carta! Alien Yogurt And The Writing Requirement For Copyright Transfers

StuffSunday (June 15) marks the 799th birthday of the Magna Carta (sometimes spelled Magna Charta), which famously limited the powers of the English monarch vis-à-vis his feudal barons.  Although often credited as a singular influence on the U.S. Constitution, and therefore on American law, it also gave rise to one of our favorite pre-internet copyright memes, courtesy of Ninth Circuit Judge Alex Kozinksi in Effects Associates v. Cohen.

The Stuff

In 1984, Hollywood director Larry Cohen was filming The Stuff, a… More

Recent Copyright And Trademark Administrative Developments

Some recent administrative developments may be of interest to copyright and trademark practitioners:

Copyright Fees

Effective May 1, 2014, the U.S. Copyright Office has amended its registration fee schedule.  This includes reduced renewal application fees and increased fees for registering multiple works.  A complete list of the new fees is available here.

Updated Trademark Manual of Examining Procedure (TMEP)

On April 30, 2014, the USPTO issued the April 2014 update of the TMEP, which includes precedential case law and other changes since the October 2013 revision.  Highlights of the changes are available from the USPTO… More

Court Finds No Business In This Show Business Trademark Dispute

It is a basic principle of trademark law that a mark can only be assigned with the goodwill of the business to which the mark relates, for the good reason that the mark is in fact inseparable from the business.  But what kind of “business” is necessary to support ownership of a mark?  A recent decision by the Federal Court in the Southern District of New York in Creative Arts by Calloway, LLC v. Brooks, a dispute among… More

Product Liability Risk in Licensing Trademarks with Technology

asbestos

A Connecticut Superior Court judge has upheld a jury verdict that once again demonstrates the product liability risks faced by trademark licensors, particularly those who license technology as well as their marks. In Hannibal Saldibar v. A.O. Smith Corp, the court upheld a $2.4 million judgment against the Tile Council of North America, which had licensed its trademarks and patented technology for dry-set mortar to tile manufacturers, in favor of the estate of Saldibar, a plaintiff who had allegedly developed mesothelioma as… More

Risks of an Unrestricted License

The recent case of Edgenet, Inc. v. Home Depot U.S.A., Inc. (7th Cir., No. 10-1335, 9/2/11) illustrates the principle that a copyright license without restrictions will be broadly construed to encompass all rights. The facts of the case were that Home Depot had contracted in 2004 with Edgenet for Edgenet to develop a classification system (called a “taxonomy”) that was to be used to organize Home Depot’s product database. For example, as the Seventh Circuit Court of Appeals suggested, a particular screwdriver part might be classified under “tools/manual/screwdriver/Phillips/bits/metal”, and that classification would form part of the taxonomy. Under the… More

No Shirt, No Shoes, No Trademark: Naked Licensing Can Mean Abandonment of Your Valuable Rights

A trademark is more than a designation of source. It is also a symbol of quality, attesting to the consistent, predictable nature of the identified goods or services. Consumers rely upon marks to insure that they purchase the same product or service they have come to know from prior experience.

For this reason, a company that uses its mark through licensees must control the quality of the goods and services that the licensees sell under the mark. If the licensor fails to do this–if it engages in “naked licensing” that fails to ensure a consistent and repeatable experience for consumers–the… More

No Harm, No Foul: Acknowledgement of Irreparable Harm Doesn’t Create Irreparable Harm

It is common for contracts that grant intellectual property licenses or that include confidentiality obligations to include a provision in which the licensee or the user of confidential information acknowledges that breach of its confidentiality or license obligations will cause irreparable harm and that the other party will be entitled to injunctive relief to enforce any breach or threatened breach of the provision. Many an attorney has spent time negotiating the finer points of such acknowledgment provisions. The recent case of Life Technologies Corp. v. AB Sciex Pte. Ltd., No. 11 Civ. 325 (S.D.N.Y.  April 11, 2011) is a… More

Apple and the Beatles: The End of a Long and Winding Road?

The decision by Apple Corps, the Beatles’ music company, to allow distribution of Beatles songs on iTunes appears to have been vindicated by the initial sales figures achieved (two million singles sold in the first week, reports Billboard). However, the release of Beatles’ music on iTunes, the final act in the resolution of the long-running trademark dispute between Apple Computer and Apple Corps, also illustrates the basic truth underlying the resolution of many trademark negotiations: the company with the biggest consumer footprint ultimately wins.

When the… More

Trademark Licensors Beware: You May be on the Hook for Your Licensee’s Defective Products

The Massachusetts Appeals Court has served up a reminder to Massachusetts trademark licensors that they may be subject to liability for injuries caused by defective products bearing their licensed mark, even if they are not the manufacturer or seller of the defective product. Under the "apparent manufacturer" doctrine, a nonseller trademark licensor may be liable for defective products if the licensor "participated substantially" in the design, manufacture or distribution of the products. In Lou and others v. Otis Elevator Company, No. 09-P-632 (Mass. Ap. Ct. September 3, 2010), Otis had licensed its marks and its technology to a Chinese joint… More