Supreme Court to Decide Whether Trademark Owner Must Prove Willful Infringement to Obtain an Infringer’s Profits

Under 15 U.S.C. § 1117(a), trademark holder who proves infringement may receive as damages an award of profits “subject to the principles of equity.”  This phrase has divided the circuit courts going back several decades, with six circuits requiring a finding of willful infringement in order to obtain an infringer’s profits, and the other six circuits allowing for such damages without a finding of willful infringement.… More

Son of Tam: Supreme Court Strikes Down Lanham Act Section 2(a) For “Immoral” and “Scandalous” Marks

In our prior blog entries here, here, here, here, here and here, we followed the course of Matal v. Tam, the case involving the mark “THE SLANTS.”  In that case, the Supreme Court struck down a portion of Section 2(a) of the Lanham Act, 15 U.S.C.… More

EU Parliament Approves New Copyright Rules for the Internet

We had been following on this blog the heated debates around the proposed EU Copyright Directive. These debates now belong to history since on March 27, 2019, the European parliament adopted the Directive with 348 votes against 274 and 36 abstentions.

The two most controversial provisions are Article 15 (previously 11) and Article 17 (previously 13).

Article 15: Creation of a New IP Right for Publishers of Press Publications

Article 15 addresses the issue of press publications that are circulated on the internet.… More

Watch: IP Licensing Pitfalls for the Generalist In-House Counsel

Intellectual property licenses can be important in various situations ranging from large scale strategic transactions and IP litigation to day-to-day lower profile transactions. Even the latter can have far-reaching impact on a company’s proprietary assets, particularly if certain IP-related concerns are overlooked.

Foley Hoag presents a webinar covering a range of traps and tips related to IP licenses, including:

  • Identifying less obvious IP licenses in commercial agreements
  • Addressing ownership and rights to IP or technology created in common business relationships
  • Data rights: value,…
  • More

IP and Social Networks: The Paris District Court Invalidates IP Clauses of Google+ Terms of Use

It’s been rough weather for Google in France. Three weeks after the French ‎Data Protection Authority imposed a record fine against Google for non-compliance with the GDPR, the Paris District Court (“Tribunal de Grande Instance”) invalidated 38 clauses of Google’s Privacy Policy and Terms of Use for Google+, the Internet-based social media network owned and operated by Google.

This decision was rendered on February 12,… More

Supreme Court: Copyright Owners Must Wait For Registration Certificate Before Suing

On March 4, 2019, the United States Supreme Court held that, with certain exceptions, a copyright owner must obtain a copyright registration certificate from the Copyright Office  before filing a copyright infringement suit. The unanimous opinion in Fourth Estate Public Benefit Corp. v. Wall-Street.Com, LLC, authored by Justice Ruth Bader Ginsburg, affirmed the Eleventh Circuit and resolved a split among the circuit courts of appeal.… More

BIG MAC Trademark Not That Big in the EU: How McDonald’s Failed to Prove Genuine Use of its EU Trademark

On January 11, 2019, the Cancellation Division of the European Union Intellectual Property Office (“EUIPO”) rendered a surprising decision that revoked in its entirety the McDonald’s Company’s BIG MAC trademark registration, which had been registered in the EU since December 1998.

This is the latest chapter in a fight between McDonald’s and Supermac’s, a competing chain that operates fast-food restaurants in both parts of Ireland.… More

Cultural and Intellectual Property Appropriation: Disputes Over Culturally-Inspired Fashions

If you haven’t heard already, New York Fashion Week is here! As usual, a lineup of awe-inspiring shows is expected to roll out over the next several days, as it does every September and February, highlighting the latest fashion trends of some of world’s most famous designers.  One of the big stories surrounding New York Fashion Week this year is the amount of cultural diversity expected to appear on the runway. … More

Law Students Seek to “Free Rapunzel from The Trademark Tower” by Opposing RAPUNZEL as a Trademark for Dolls

In an interesting case pending before the TTAB, law students from the Suffolk University IP and Entrepreneurship Clinic have opposed an application filed by United Trademark Holdings, Inc. to register RAPUNZEL as a trademark for dolls and toy figures.  The students, led by clinic director Loletta “Lolita” Darden, represent Professor Rebecca Curtin, a trademark law professor and mother of a young girl who has purchased dolls. … More

Copyright Protection for Creative Product Packaging

If you have ever been tasked with considering what types of intellectual property protection were available for a new packaging design, copyright may not be the first thing that came to mind. After all, it is trademark law that is designed to protect the public’s association with a commercial name or logo, and in some cases the distinctive look (or “trade dress”) of a product and/or its packaging.… More

Watch: Top IP Cases in 2018 In-House Counsel Need to Know

Who said there’s no looking back? It is crucial to consider key takeaways from the most important IP cases from 2018 when planning for 2019. Foley Hoag presents a webinar offering guidance on what we learned this year and what to prepare for in the new year.

Our speakers focus on 2018 developments in copyright, patent and trademark law.

Speakers

Intellectual Property Strategies for Start-Up Companies

We are pleased to announce a new addition to our collection of IP-focused blog posts directed to start-up companies, this one focusing on cybersecurity.  Here is the complete collection:

Trademark Strategies for Start-Up Companies

Copyright Strategies for Start-Up Companies

Patent Strategies For Start-Up Companies

Domain Name Strategies for Start-Up Companies

Privacy and Data Security Strategies for Start-Up Companies

Foley Hoag provides a full range of services to start-up companies,… 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

French Court Finds Jeff Koons Guilty of Copyright Infringement Again

At the end of 2014 and beginning of 2015, the Pompidou Museum organized a retrospective of the work of Jeff Koons, which attracted thousands of visitors but gave rise to several lawsuits.

We commented on this blog on a decision rendered by the Paris District Court on March 9, 2017 in which the Court found that for one of his Banality sculptures,… More

Under the Sea: Sneaky Trademark Filings for Cautious Companies

The general rule of thumb for trademarks in the U.S. – and everywhere else, for that matter – is “the earlier, the better.”  It’s almost always the right move to file a trademark application as early as possible, and well in advance of a product or service announcement, both to (a) minimize the possibility of conflicting marks and filings; and (b) mitigate the potential for attempted trademark and domain name “squatting” that inevitably follows a well-publicized product/service announcement. … More