Current Issue | Vol. 17, No. 1

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Feb 13, 2014

The IPLB has moved. Please find us at our new location: http://lawblog.usfca.edu/iplb.

 

The End of Arbitrary Findings of Secondary Meaning: A Call for the Expansion of Trademark Status of Literary Characters

by J.C. Sander ~ May 15, 2013

Courts do not yet have a firm grasp of what a trademark for a literary character would mean. The current rules are intellectually dishonest and do not make sense. Literary characters should be eligible to serve as a trademark as soon as a book is published, without the need to “acquire” secondary meaning. The number of literary characters protected by trademark law would be initially increased following the adoption of this principle, with the field soon tapering off. The real effect of an immediate trademark status for literary characters would be to extend protections to valuable characters from their inception and allow courts to focus on the correct application of trademark law.

Fourth Amendment Protection for Users’ Information Stored in the Cloud: The Case of Mint.com

by Yenny Teng-Lee ~ May 14, 2013

This paper explores whether users’ financial information stored in the cloud by Mint.com (“Mint”) has Fourth Amendment protection against unreasonable search and seizure.

Major Change, New Chapter: How Inter Partes Review and Post Grant Review Proceedings Created By the America Invents Act Will Shape Litigation Strategies

by William Hannah ~ May 14, 2013

What is so important about the changes to the reexamination proceedings in the American Invents Act? It’s about cost, time, and winning the high stakes game of patent litigation. Clients’ goals will remain the same but the law is changing. A new path to the clients’  desires will emerge. For a patent litigator, mastering the new America Invents Act is the key to staying on that path, while providing the best results for the client.

Substantial changes to the patent system’s reexamination proceedings include replacing the Inter Partes Reexamination with Inter Partes Review, and creating an entirely new proceeding called Post Grant Review. Being unaware of these changes could cost a patent litigator’s client a substantial amount of money, time, and the upper hand in winning the high stakes litigation. In some cases, it could even cost a client the validity of their patent claims.

Abandoning Consumer Confusion in Keyword Advertising Trademark Infringement Cases: Proposal for a Modified Dilution Analysis

by Fallon R. Scholl ~ May 14, 2013

Keyword advertising on the Internet poses new challenges for courts. To date, there is no uniform method of analyzing whether trademark infringement exists in these cases. Although both U.S. and foreign courts have applied versions of likelihood of confusion tests in this context, all of the decisions fall short of actually protecting what is at stake when trademarks are sold as keywords on the Internet. The damage to trademarks in this context is not necessarily that consumers will confuse one product with another – rather the damage is to the goodwill and value associated with a trademark that another advertiser purchases in order to garner recognition for the advertiser’s own mark. In order to protect the goodwill of trademarks on the Internet, courts must abandon any analysis that calls consumer confusion into question because confusion is nearly impossible to show in these cases and it is not the type of trademark damage at issue. This eliminates both the initial interest confusion doctrine and likelihood of confusion tests. What we are left with is dilution – which was designed precisely to protect the goodwill of trademarks. However in order for dilution to apply in this context, it must be slightly modified and extended.

 

Flava Works, Inc. v. Gunter

by Jessica Galaif ~ May 13, 2013

A Flava user uploaded a video from the Flava website to a host server which was subsequently bookmarked by a myVidster patron. This bookmark automatically led to the creation of a webpage on the myVidster website with the video’s embedded code from the host server. The webpage featured a thumbnail of the bookmarked video that connects anyone who visits the myVidster website to the host server to watch the Flava video. Consequently, Flava brought an action against myVidster alleging contributory copyright infringement. 

K-TEC, Inc. v. Vita-Mix Corp.

by E. Michelle Emelife ~ May 13, 2013

Plaintiff-Appellee K-TEC, Inc. (“K-TEC”) owns two U.S. patents, 6,979,117 (‘117 patent) and 7,281,842 (‘842 patent), for the construction of their commercial blenders. The construction protected by these patents consist of “four side walls,” which may form right angles, and a “fifth truncated wall” that could be planar or curved. The purpose of this particular construction is to decrease cavitation and increase efficiency by creating a vortex that moves from the center of the axis to the truncated wall.

 

Gucci America, Inc. v. Guess?, Inc.

by Jesse-Paul V. Albani ~ May 13, 2013

Gucci America, Inc. (“Gucci”) claimed Guess?, Inc. (“Guess”) attempted to “Gucci-fy” their product line by infringing four of Gucci’s trademarks and one trade dress on over one thousand stock keeping units. Gucci alleged that Guess and its licensees intentionally copied the famous Green-Red-Green (“GRG”) Stripe appearing on many Gucci accessories, Gucci’s Repeating GG Pattern set at the corners of the Diamond Motif Trade Dress, the Stylized G often used on the interior of Gucci handbags and the Script Gucci modeled after the signature of founder Guccio Gucci.

Case Survey: 1st Media, LLC v. Electronic Arts, Inc.

by Richard Yao ~ Mar 14, 2013

Defendant-Appellees are Electronic Arts, Inc., Harmonix Music Systems, Inc., Viacom Inc., and Sony Computer Entertainment America LLC (collectively “Appellees”). Plaintiff-Appellant 1st Media LLC (“1st Media”) is the assignee of patent No. 5,464,946 (the “946 patent”). The ‘946 patent is for a “System and Apparatus for Interactive Multimedia Entertainment” and includes “an entertainment system for use in purchasing and sorting songs, videos, and multimedia karaoke information.”

Case Survey: Capitol Records, Inc. v. Thomas-Rasset

by Kelly Rayburn ~ Mar 14, 2013

Defendant-Appellee Jammie Thomas-Rasset is a Minnesota woman found liable in district court for illegally distributing copyrighted music over the Internet. Plaintiff-Appellants are Capitol Records, Inc., Sony BMG Music Entertainment, Arista Records LLC, Interscope Records, Warner Bros. Records, and UMG Recordings, Inc. (the “Record Companies”). The Recording Companies own huge catalogs of music, including the rights to 24 songs Thomas-Rasset was found to have distributed.


Case Survey: Tetris Holding, LLC v. Xio Interactive, Inc.

by Tamika Lipford ~ Mar 14, 2013

Plaintiffs, Tetris Holding, LLC and Tetris Company, LLC, (collectively, “Tetris Holding”) brought five claims against defendants, Xio Interactive, Inc. (“Xio”), surrounding their famous puzzle block electronic video game, Tetris. The court addressed only two out of five claims brought forward: 1) Xio’s infringement of Tetris Holding’s copyright protection of Tetris and 2) Xio’s infringement of Tetris Holding’s trade dress protection.

The Split: Constitutional and Policy Bases for Establishing Separate U.S. Patent Courts

by David P. Kohn ~ Oct 18, 2012

The United States has recently enacted a high-profile reform of its patent system, the America Invents Act ('AIA"), which has been described as one of the broadest and most sweeping changes to patent law in our lifetime. In many ways this is true, but it is not enough to correct the problems facing today's patent system. The one reform which would have had more of a positive effect than any other was left out of the AIA and ever other patent reform to date. The reform described in this paper, if enacted, would direct all patent litigation cases into a specialized system of patent courts below the appellate level. These courts would operate exclusively with expert patent judges, without the presence of lay juries.

 

Culture, Poverty, and Trademarks: An Overview of the Creation and Persistence of Chinese Counterfeiting and How to Combat It

by Kimberly Shane ~ Sep 12, 2012

Counterfeiting is an estimated 600 billion dollar a year problem that has grown over 10,000% in the last twenty years. From Duracell batteries that last only two days, to North Face winter gloves that do not keep your hands warm, to Viagra pills that can induce brain damage and even death, counterfeiting has penetrated virtually every product market and every country throughout the world.

Case Survey: John Wiley & Sons, Inc. v. Kirtsaeng

by Magdalena Gruettner ~ Jun 04, 2012

Plaintiff John Wiley & Sons, Inc. is a publisher of  "academic, scientific, and educational journals and books," and textbooks for sale in the Unitd States and abroad. The books for sale abroad are manufactured by John Wiley & Sons Pte. Ltd., Wiley's subsidiary. The books made for the international market differ from the ones made domestically through the type and quality of materials used. The books made abroad contain an explanation showing which markets they are produced for and the exportation or importation to another region without authorization of the copyright holder is illegal and in violation of the holder's rights.

Case Survey: The Authors Guild v. Google Inc.

by Andrea Brizuela ~ May 22, 2012

Defendant Google Inc. (‘Google”) owns and operates a leading Internet search engine. In 2004, Google announced it had contracted with several academic libraries to digitally copy their collected of current and out-of-print books to create a digital collection on Google’s database. A digital library would make books more accessible for academic purposes and would aid disadvantaged populations who could not access the material otherwise. Additionally, the digital library would benefit people with disabilities by promoting Braille and audio format conversion. Authors and publishes would inevitably benefit since greater accessibility would create new audiences and thus new sources of income. Since 2004 Google has scanned over 12 million books, enabling users to both search and view excerpts from books in its digital collection. However, millions of the books scanned by Google were still under copyright protection belonging to the authors and publishers of the books. These authors and publishers never consented to Google’s digital use of their works.

Corbis & Copyright?: is Bill Gates Trying to Corner the Market on Public Domain Art?

by Tanya Assim Cooper ~ May 17, 2012

Art has the power to stir our emotions, evoke a physical response, and transport us to a different world. Picture the art of the great masters: The Waterlily Pond by Claude Monet and The Mona Lisa by Leonardo Da Vinci; or more contemporary iconic images such as President John F. Kennedy’s funeral and Princess Diana’s wedding.Famous artwork, especially renowned for its genius, has become ubiquitous. It can inspire and transform us. For all of those precious qualities, the public relies upon knowing that once the artist’s exclusive rights to the artwork elapse, the “art must ultimately belong to us all.” The notion that artwork eventually belongs to the public is paramount because art, like books and music , represents a collective experience that helps define what it means to be human.Thus, once the artist has enjoyed her exclusive rights to that art, it should belong to no one individual, but to everyone.

Intellectual Property’s Fashion Faux Pas: A Critical Look at the Lack of Protection Afforded Apparel Design Under the Current Legal Regime

by Whitney Potter ~ May 17, 2012

In the United States and around the world, the fashion industry’s social and economic significance is undeniable. The international fashion apparel industry sells approximately $784 billion worth of apparel each year. In 2010, U.S. apparel sales reached $192 billion. While economically impressive, these large-scale numbers also reflect the social significance society attaches to fashion. Over the years, fashion has increasingly permeated many commercial aspects of American culture. Television shows and movies embrace the fashion industry as an audience-generating subject. Even our most fundamental information resources, such as newspapers and magazines, incorporate fashion industry coverage into what is considered national news. Fueling this increased attention toward the industry is consumer demand for both access to the seemingly glamorous world of creative design production, as well as the desire for knowledge of the current trends to implement into their everyday lives. Accordingly, fashion has become a defining aspect of modern society.

Supreme Indecision: Copyright's First Sale Doctrine in the Gray Aftermath of Costco v. Omega

by Brandon Leahy ~ May 07, 2012

Under the Copyright Act, a copyright owner is only entitled to control the first sale of their copyrighted goods. Once a first sale occurs, the copyright owner's right to control distribution is exhausted. Subject to certain exceptions, copyright owners are, however, entitled to control the means by which their copies are imported into the United States. This Note seeks to reconcile the unresolved tension between these two rules of copyright law. Is there a right to control the importation of copies already once sold, and should it matter if those copies were manufactued outside the United States?

Now Accepting Applications for Volume 17

by IPLB Board ~ Feb 22, 2012

We are now accepting applications to join the Editorial Board of Volume 17 of the USF IPLB. Download the PDF of the application here. Applications can be completed electronically and must be submitted to us by 5:00pm March 10, 2012. Applications can either be submitted to our mailbox in Faculty Services (Kendrick 300) or through email to iplb@usfca.edu. If you choose to submit the file electronically, please put your name and class level in the name of the file.

Protecting Your Secrets from the Media: A Case for California's Content-Neutral Approach to Trade Secret Injunctions

by Lindsey Furtado ~ Aug 17, 2011

Fifteen days before Apple's official unveiling of its iPad tablet computer, the Silicon Valley gossip blog Valleywag announced its "Apple Tablet Scavenger Hunt," offering cash prizes for information about the greatly anticipated device. Given Apple's litigious reputation, what happened next was no surprise. Apple's attorneys immediately issued a cease-and-desist letter demanding that Valleywag discontinue its "illegal" scavenger hunt. The letter stated that anyone who had access to the information Valleywag was willing to pay for-pictures, video, and access to the device-would be bound under strict confidentiality obligations and therefore Valleywag was inducing the misappropriation of trade secrets in violation of California law.

Google found guilty of infringement

A San Francisco jury ruled that Google violated copyright law in an action brought by Oracle. The jury did not decide on the secondary issue of whether using an API is fair use. Read more at arstechnica

Insurance Companies Invoke Trade Secret Exception

In an effort to to drastically raise health insurance premiums, insurance companies are claiming a trade secret exception to keep company memos out of public scrutiny. Health insurance companies claim that the memos contain proprietary information that competitors can use against them.

 Read more about it at the New York Times

rising health insurance premiums

Six Tech Giants Back EMC in Patent Lawsuit

by Leuwam

patent troll

Some of the biggest names in technology have stepped up in support of EMC in a patent case highlighting issues surrounding filing infringement lawsuits against multiple defendents. 

Read more about it in the Boston Business Journal 

Copyright Suit over Warner Bros. Use of Mike Tyson Tattoo

by Leuwam Tesfai

 

Mike Tyson Tattoo Used in The Hangover II

 

Tattoo artist, Victor Whitmill, is suing Warner Bros. alleging missappropriation of a tattoo in the film The Hangover II. Whitmill holds a copyright for the piece that he tattooed on former heavy weight champion, Mike Tyson's, face in 2003. Read more about this story on Wired