Category Archives: Uncategorized

WEBINAR: Top IP Cases in 2023

Who said there’s no looking back?

It is crucial to consider key takeaways from the most important IP cases in 2023 when planning for 2024. Foley Hoag presented a 60-minute webinar on Wednesday, January 24, 2024, offering guidance on what we learned last year and what to prepare for in the new year. Our speakers focused on developments in trademark, copyright, patent and trade secret law.

 … More

WEBINAR: Top IP Cases in 2022

Who said there’s no looking back? It is crucial to consider key takeaways from the most important IP cases in 2022 when planning for 2023. Foley Hoag presented a 60-minute webinar on Thursday, January 19, 2023, offering guidance on what we learned last year and what to prepare for in the new year.

Our speakers focused on developments in trademark, copyright, patent and trade secret law.

Speakers:

  • Paul Downs,…
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WEBINAR: 13 Social Media Pitfalls to Avoid for the Generalist In-House Counsel

Social media platforms present countless opportunities for companies looking to connect to consumers and clients in real time. But, like so much else in our connected age, these opportunities come with a host of risks ranging from minor public relations blips to unpleasant regulatory run-ins with government agencies, and from DMCA takedowns to right of publicity lawsuits.

Foley Hoag presents a 60-minute webinar offering guidance on social media issue spotting for in-house legal practitioners,… More

Webinar: Protecting Product Configurations, Packaging and Designs: What In House Counsel Needs to Know

Product configuration and packaging play an integral part in consumer choice and can often set a particular product apart from its competition on the store shelf. Because companies heavily invest in creating unique product designs and packaging that encourage brand association, business owners should also consider protecting those investments as intellectual property.

This webinar offers guidance for in-house counsel regarding the different types of intellectual property that may protect product configurations and packaging in the United States,… More

API Copying Now Fair Game in the Wake of Supreme Court’s Decision in Google LLC v. Oracle America Inc.

The decade-long dispute between Google LLC and Oracle America Inc. has now ended with the Supreme Court ruling 6-2 in favor of Google.  This dispute concerned Google’s use of Oracle’s “declaring code” – software that provides a list of functions and definitions that specify the parameters of application program interfaces (APIs) – in Google’s Android operating system.  APIs allow different software programs to work together.  In creating Android,… More

Webinar: Trademark Transactions for the Generalist In-House Counsel

Your company has invested in developing its goodwill and protecting its brands, and now seeks to bring in partners. Or perhaps your company seeks to grow by on-boarding third-party brands. Trademarks form a key asset in many business transactions, but overlooking important details and traps for the unwary can lead to unintended consequences. In this one-hour webinar, we cover the fundamentals of protecting trademark rights in the context of an array of transactions,… More

Webinar: Top IP Cases in 2020 In-House Counsel Need to Know

Looking Back to Look Ahead

Who said there’s no looking back? It is crucial to consider key takeaways from the most important IP cases from 2020 when planning for 2021. Foley Hoag will present a 60-minute webinar on Tuesday, February 9, 2021, offering guidance on what we learned last year and what to prepare for in the new year.

Our speakers will focus on 2020 developments in trademark,… More

Watch Now: Advertising Best Practices for the Generalist In-House Counsel

Advertising can take many forms, including statements about a company’s products on websites and social media platforms. A wrong step can result in serious consequences, including legal challenges from competitors, consumers, the Federal Trade Commission, and other regulatory agencies.

In this 60-minute webinar, designed exclusively for in-house counsel, you will learn how you can protect your company against legal challenges based on its advertising practices. You will also learn what options are available if your competitors are making false or misleading statements in their advertisements.… More

Watch Now: Trademarks for the Generalist In-House Counsel

Watch Now.

Trademarks – or brands – can be among a company’s most valuable assets. Some companies have enormous marketing departments focused on branding, while others have a single social media intern, but every company that provides goods or services is branding them somehow. Whether it’s your company name, specific product names, a logo, or something more unique, your business probably owns atleast one trademark –… More

SCOTUS Willfully Unfastens Infringer’s Profits From Its Mental State

Yesterday, the Supreme Court decided a trademark damages question that has long divided courts across the country.

For decades, a trademark owner’s chances of recovering an infringer’s profits in litigation varied depending on where the case was pending.  The Lanham Act allows an award of an infringer’s profits “subject to the principles of equity” – but what does that mean?  Can an unknowing infringer be on the hook for its profits,… More

CORONASPLOITATION-19: A Brief Survey of Recent COVID-19-Related Trademark Applications

Benjamin Franklin famously said that “nothing in this world can be said to be certain, except death, taxes, and the entrepreneurial spirit of Americans to turn a crisis into a business opportunity.”  That quote may not be entirely accurate, but the U.S. federal trademark register serves as a historical record of this entrepreneurial spirit, from the various applications related to 9/11 in the wake of that tragedy,… More

Supreme Court Says State Sovereign Immunity Sinks Pirate Shipwreck Copyright Suit

Edward Teach, more popularly known as Blackbeard, roamed the seven seas and terrorized merchant vessels off the U.S. and Caribbean coasts during the colonial period.  He ultimately met his demise when the colony of Virginia breached the sovereignty of neighboring North Carolina and hunted him down along the shores of the Outer Banks.  Three hundred years have since passed, and another case of state sovereignty arises as a result of the actions of Blackbeard,… More

Smiles Like Teen Spirit: “Smiley Face” Copyright and Trademark Litigation

You may think the phrase “million-dollar smile” is just a metaphor, but a smile could cost you millions of dollars in litigation damages if you aren’t careful, at least according to Nirvana LLC, the legal entity that owns the intellectual property rights relating to the 90’s rock band Nirvana.

Nirvana’s Smiley Face Logo

If you thought the image of a yellow smiley face was too common to be owned by anyone,… More

Massachusetts to Adopt the Uniform Trade Secrets Act

With H. 4732 (and amendment H. 4868) sitting on Massachusetts Governor Charlie Baker’s desk, Massachusetts is finally on the verge of adopting the Uniform Trade Secrets Act (“UTSA”).  The UTSA was published by the Uniform Law Commission in 1979 and amended in 1985, at which time many states began adopting it.  New York, and possibly North Carolina and Alabama (there is some debate about whether their legislation has expressly adopted the text of the Act),… More

New Foley Hoag Partner August Horvath Shares His Views On Advertising Law And Why You Might Not Want To Watch TV With This High Flier

We are very excited to welcome August Horvath as a partner and Co-Chair of the Advertising & Marketing practice group in Foley Hoag’s New York office. August’s practice primarily focuses on representing clients in false advertising and deceptive trade practices ligation before the Federal Trade Commission (FTC), state Attorneys General and the National Advertising Division (NAD) of the Council of Better Business Bureaus. August counsels clients on a variety of marketing,… More

A Difference With A Distinction: The Second Circuit Upholds Preliminary Injunction In Parallel Imports Case

twIn Abbott Laboratories, et al. v. H&H Wholesale Services, Inc., et al., the United States Court of Appeals for the Second Circuit affirmed a preliminary injunction issued in a trademark case focused on the parallel importation of diabetes test strips.  One defendant had hoped to overturn the injunction order by arguing that its place in the supply chain shielded it from direct liability for consumer confusion. … More

The Federal Trademark Statute Assumes Hillary Can’t Win

HiliaryToday’s example of unintentional sexism comes to us from Section 2(c) of the Lanham Act.  On its face, the language of the statute assumes that someone other than Hillary will win the 2016 presidential election – and it won’t be Jill Stein.  It could be Donald Trump, Bernie Sanders, Gary Johnson, or your dad, but it’ll be someone male.

Section 2 of the Lanham Act,… More

CARRERA’s Trademark Reputation: “Luxury, High Tech, High Performance and Success”

iStock_000019891443_Small

The German carmaker, Porsche AG, which designed the iconic 911 Carrera sports car, owns the European Union and German “CARRERA” word mark, registered for “automobiles” in class 12. How far beyond automobiles does the protection afforded by that registration extend?  Pretty far, according to recent outcome of a long running European trademark dispute, which affirmed that Porsche’s trademark protection extends to “complementary” products,… More

Lego Mark Wars: Toy Giant Snaps Together Two Favorable 3D Trademark Rulings in Europe

2On June 16, 2015, Lego Juris A/S obtained two favorable decisions from the General Court of the European Union which will afford protection to famous Lego “minifigure” as a three-dimensional (3D) trademark; a protection that has been denied to its even more famous standard building brick.

For many years the Danish company, founded by Mr. Ole Kirk Christiansen, relied on patents that were filed at the end of the 1950s. … More

No Purchase Necessary: Six Tips for Making Sure Your Online Prize Promotion is not an Illegal Lottery

sdThe Federal Trade Commission’s recent $9.5 million judgment against sweepstakes operator Crystal Ewing is a stark reminder that prize promotions remain fertile ground for regulatory scrutiny both on the state and federal level.  Marketers have grown ever more reliant on sweepstakes, contests, and giveaways since Ewing first came to the FTC’s attention nearly a decade ago—thanks in large part to our obsession with mobile devices and social media,… More

Sue-per Bowl Shuffle 2014: The Year in NFL-Related Intellectual Property Litigation

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Heading into this year’s Super Bowl party season, there are two things every lawyer should be concerned about. First, why can’t your team get it together? Second, what do you do if you are asked to explain to your friends and neighbors some NFL-related litigation that you haven’t been following? We can’t help you with the first problem (although, as an Iggles fan living in the heart of Patriots Nation,… More

Federal Government Wins Trademark Battle to Shut Down “Voice of America” Website with “Undeniable Governmental Aesthetic”

CaptureSince its first broadcast on February 1, 1942, the Voice of America radio service (VOA) has aired countless hours of programming in dozens of languages to what is currently an estimated global audience of over 100 million people. Although the history of the VOA name is storied and long, VOA’s efforts to protect that name are of a more recent vintage. VOA didn’t apply to register its name as a federal trademark until 2005,… 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,… More

A History Of Massachusetts Anti-SLAPP Legislation As A Vehicle For Protecting First Amendment Petitioning Activity From Retaliatory Defamation Claims

Before the passage of anti-SLAPP legislation, citizens engaged in First Amendment petitioning activity often found themselves the targets of retaliatory lawsuits.  For example, a group of neighbors might speak out at a local zoning commission hearing to block approval for a new building development, only to find themselves defending against a costly lawsuit brought by the developer for, among other things, defamation or commercial disparagement.

This December will mark the 20th anniversary of the Massachusetts anti-SLAPP statute, … More

Flummoxed By FLANAX: TTAB Cancels Trademark Registration Based On Misrepresentation As To Source Despite No Use In U.S. By Petitioner

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In an interesting precedential decision, the Trademark Trial and Appeal Board (TTAB) canceled a registration for FLANAX despite the fact that the petitioner, Bayer Consumer Care AG, did not use FLANAX in the United States, but only in Mexico.  The case illustrates that the “misrepresentation as to source” provision of the Lanham Act can be a useful tool in egregious cases,… More

An INTA Hong Kong Debrief

After a week at the International Trademark Association Annual (INTA) Annual Meeting in Hong Kong, and another spent exploring the city and its surrounds, it’s nice to be heading back to the comparatively quaint major city we call home.  But as I fly through Siberian airspace, over the North Pole, and through Canada en route to Beantown, I have a few parting thoughts.

The Gateway to Everything

As the Gateway to Asia,… More

Federal Circuit Copyright Decision in Oracle v. Google: A Quick Read for the Busy Practitioner

Capture

In its recent opinion in Oracle v. Google, the Federal Circuit reversed the Northern District of California and reinstated a jury’s infringement verdict against Google. The opinion is long and complex, and much ink has already been spilled by its critics. As a service to those of you sitting on the sidelines of this particular debate, here is our summary version of the case:

  1. What’s the case about?…
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Milk Dud? False Advertising Lawsuit Against Makers of Muscle Milk Illustrates Interplay Between Lanham Act, FTC and FDA

MM1In a lawsuit recently filed in the Southern District of Florida, Global Beverage Enterprises, Inc. (“Global”), the manufacturer of specialty carbonated beverages like Mr. Q. Cumber Sparkling Cucumber Beverage, brought Lanham Act claims against CytoSport, Inc., alleging false advertising of CytoSport’s popular Muscle Milk line of beverages.  The basis of the claim is that the Muscle Milk beverages contain no milk and, therefore, the product name is false and misleading. … More

Settlement in False Advertising Class Action Leaves First Amendment Questions Unanswered

Vibram

On April 30, 2014, the plaintiffs in Bezdek v. Vibram, a class action in the District of Massachusetts, filed for court approval of a class wide settlement. The case had been brought against Vibram, the Italian manufacturer of “five finger” minimalist footwear, by consumers who alleged that the company committed false advertising when promoting health benefits of its product for which there was allegedly no scientific support.… More

Copyright Claims Based on Submission of Prior Art to Patent Office Finally Dismissed: Were They The “Weakest Infringement Claims of All Time”?

wea

In April 2012, we reported on four copyright lawsuits filed by the American Institute of Physics (AIP) and John Wiley & Sons. Ltd, the publishers of a range of scientific literature.  These suits alleged that four law firms in Illinois, Kansas, Minnesota and Texas had infringed the AIP’s copyrights by submitting certain scientific articles to the Patent and Trademark Office (PTO) as “prior art.” In other words,… More

District Court Allows Claims to Proceed Against Ripoffreport.com For Copyright Infringement And “Unfair or Deceptive” Acts In Connection With Allegedly False Online Review

RippoffWe previously reported on the unique cyber dilemma faced by Richard Goren, a Massachusetts attorney.  Back in 2012, a disgruntled opponent of one of Goren’s clients logged onto the consumer review site, Ripoff Report (http://www.Ripoff Report/), and posted an outlandish – and apparently false – review of Goren’s business.  The review referred to Goren  as “Psycho-Richard” and accused him of,… More

Liability Insurer May Have to Cover Knockoff Jewelry Site for Allegedly Violating Reese Witherspoon’s Right of Publicity

kateHave you always wanted to own “The One Ring to Rule Them All” of Lord of the Rings fame?  Do you dream of an engagement ring just like Kate Middleton’s?  Your dreams can come true with a visit to Emitations.com, a website that sells costume jewelry, including imitations of celebrity baubles.  There you can search for “Middleton” and find several versions of the famous royal sapphire-and-diamond band,… More

Skippy v. Skippy: The Great Peanut Butter Trademark Wars

According to the National Peanut Board, March is not only National Peanut Month, but it contains National Peanut Butter Lover’s Day and National Peanut Cluster Day. That makes March a good time to remember one of the longest running battles in trademark law history, a dispute that began when the second Roosevelt was President and ended when the second Bush was President. It was all about peanut butter.… More

Third Circuit Attempts to Untangle Defamation and False Light Invasion of Privacy

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In Graboff v. American Academy of Orthopedic Surgeons, the Eastern District of Pennsylvania found that the defendant’s statement was not defamatory but was a false light invasion of privacy (“false light”). The defendant appealed on the grounds that such a ruling was inconsistent as a matter of law. On February 20, 2014, the Third Circuit finally weighed in on the matter.… More

Commercial Disparagement An Increasing Concern In The Age Of Social Media

tweetsCompanies are turning to social media with increasing frequency to directly communicate with customers and potential customers.  T-Mobile USA is no exception. Not only did the company release an astonishingly snarky press release in January, complete with fake quotations attributed to AT&T, but both T-Mobile and its CEO, John Legere, have recently taken to Twitter to comment on the services of their competitors.  These comments,… More

“Facebook Said I Could” Defense Fails to Justify Digital Millennium “Trademark” Notice

Crossfit picCrossFit, Inc., the fitness training company, licenses its trademarked name and goodwill to over eight thousand affiliates worldwide at $3,000 per year per affiliate. When non-affiliate Jenni Alvies began posting on Facebook about fitness under the name “Crossfit Mamas” (including selling exercise apparel bearing the same name), CrossFit felt Alvies was infringing its mark.

So CrossFit did what anyone would do in this day and age.… More

Crimes of the Heart: A Trademark Valentine To Betty Boop

Boop4Betty Boop, the cartoon character created by Max Fleischer in 1930, has always been associated with the trappings of Valentine’s Day. She is frequently depicted on merchandise alongside symbols of love, especially the heart shape. But in 2011, the 9th Circuit Court of Appeals arguably killed Betty Boop’s trademark with that very shape. Why would 9th Circuit do such a thing? The answer is found in the doctrine of aesthetic functionality.… More

Fixation by Legal Fiction: Did the Second Circuit’s Fair Use Ruling For Bloomberg Leave Open A Pandora’s Box for Copyright Law?

Swatch imageAbout ten years ago, I saw an attorney argue a hopeless criminal appeal. He began his remarks with: “Your Honors, I know I’m going to lose this case, but how I lose it is very important.”

Bloomberg News may feel the same way about its recent win in the Second Circuit. The Court ruled that Bloomberg’s unauthorized distribution of the recording of a Swatch Group investor conference call was fair use.… More

Jury’s Verdict in Madden Football Copyright Case Overturned

MaddenWe previously reported on Robin Antonick’s copyright claim against Electronic Arts, Inc. (“EA”) over the software for the Apple II John Madden Football game. Antonick didn’t have a copy of his original source code at the time of trial, so instead he had an expert take whatever binary code had survived and use that data to create a visual presentation of the kind of football play formations the original source code would create.… More

A Tough Assignment: The Use of Copyright Law to Squelch, and Preserve, Negative Online Reviews of Doctors and Lawyers

There are few things more terrifying to a doctor, lawyer or other professional than a bad online review.  Online reviews are frequently uncivil, often indelible and in some cases outright false. Meanwhile, Section 230 of the Communications Decency Act often provides immunity from defamation suits to internet companies who host this content, thus providing little incentive to guard against publishing false reviews.

So how do professionals protect themselves from false reviews? … More

Rolling with the Punches: A Blow-by-Blow Account of the Supreme Court’s Copyright Laches Case

At some point, a legal claim is just so old and stale that it’s unfair to allow the plaintiff to bring it. The statute of limitations and the doctrine of laches are two different solutions to this same problem.  The former puts specific time limits on certain types of claims. On the other hand, the equitable doctrine of laches (from the old French “laschesse,” meaning “slackness”) eschews the one-size-fits-all approach and allows a judge to use common sense and fairness to determine whether a plaintiff’s delay was unreasonable given the particular circumstances of each case.… More

The Madrid Protocol: Passage to India Now Open

india

We previously reported that India was scheduled to become the 90th member of the Madrid Protocol Concerning the International Registration of Trademarks (the “Protocol”).  We noted that this was a gratifying prospect, since India’s National Trademark Office is notoriously overburdened and slow-moving.  Under the Protocol, a country is typically required to examine a registration request within 12-18 months.  If the country does not raise any objections within this period,… More

“Be fruitful and multiply . . . but not in those words”: How much good faith is required when giving birth to a DMCA takedown notice?

FingerSection 512 of the Digital Millennium Copyright Act (DMCA) provides copyright owners with the ability to demand that Internet Service Providers (ISPs) remove unauthorized copies from the internet.  This can be a powerful tool. Risk-averse ISPs, unwilling to expose themselves to liability for copyright infringement, often comply with such notices without regard for their merit. Thus, even when a takedown notice is patently frivolous,… More

FiberCore Case Illustrates Ownership and Transferability of “Shop Rights” to Patented Inventions

Optical_fiber_cable

 An employer may have rights in a patent on its employee’s invention in three situations:

(1)  if there is an express agreement to assign or license the patent to the employer,

(2)  if the employee was “hired to invent” and the employer can show an implied contract to assign the patent rights in the invention, or

(3)  if there was no express or implied agreement but the employee used the employer’s facilities to conceive of the invention. … More

WINTER . . . I MEAN PRINTER . . . IS COMING: Game of Thrones Alleges Copyright Infringement by 3D Printer IPhone Dock

The inner twelve-year old boy in me doesn’t know which is cooler: the throne made entirely from swords for HBO’s Game of Thrones series, or the fact that 3D printer technology can now replicate that throne in my home at the touch of a button. It’s an interesting time to be a twelve-year old boy.  It may be an even more interesting time to be an intellectual property lawyer because,… More

Hopper Copyright Litigation Takes Center Stage at the Consumer Electronics Show

Dish Networks’ Hopper device has spurred a considerable amount of legal controversy. Recently, that controversy made its way into the official award ceremony of the Consumer Electronics Show.

Dish released its Hopper DVR in May 2012.  The Hopper’s “Primetime Anytime” feature automatically records the entire primetime lineups of CBS, ABC, FOX, and NBC.  During playback, the “Auto Hop” feature automatically skips commercials. … More

Will the Supreme Court Review Copyright Damages in Music Downloading Case?

Like Joel Tenenbaum, who has been discussed in prior entries in this blog, Jammie Thomas-Rasset has conducted a long-running battle with the recording industry over how much damages she should pay for her downloading activity.  Like Mr. Tenenbaum, she argues that large statutory damages are unfair against individual “consumer” downloaders who contributed only minimally to the industry’s damages.  She has had a district court judge on her side throughout her odyssey,… More

YouTube Not Required to Remove “Innocence of Muslims” Video in Response to Actress’s Takedown Notice

Last week a California federal judge declined to enter a preliminary injunction sought by actress Cindy Lee Garcia, which would have required YouTube to remove the 14-minute anti-Islamic film “Innocence of Muslims” that has sparked deadly protests around the globe in recent months.  Garcia’s complaint for direct and secondary copyright infringement against YouTube and its parent company, Google, alleges that she was fraudulently induced to appear in the “vile and reprehensible” film,… More