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Archive for the ‘Intellectual Property’ Category

Once again, as it is my job, I am thinking about patents.

Every once in a while a court decision is handed down that tantalizes you with its implications.  Bigham v. Godtfredsen was one such case to me. Although the issue in Bigham boiled down to  written description support for multiple patentably distinct inventions, the decision suggested to me  that anticipation might be disproved in certain cases by a showing of unexpected results for the  claimed subject matter vis-à-vis the cited prior art―a maneuver the Patent Office guidelines set forth in the Manual of Patent Examining Procedure (hereinafter “the MPEP”) suggest cannot be done.

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The Saving High-Tech Innovators from Egregious Legal Disputes (SHIELD) Act, was introduced on February 27, 2013, as HR 6245 to the House of Representatives by Congressmen Peter DeFazio (D-OR) and  Jason Chaffetz (R-UT).  The gist of legislation is to limit the activities of “patent trolls” by making them take financial responsibility for their lawsuits where the defendant charged with patent infringement prevails. Read the rest of this entry »

Just days after the Supreme Court’s decision allowing a purchaser of books abroad to re-sell them in bulk in the U.S., thereby exercising the purchaser’s “right of first sale” of a copyrighted work, which expressly provides such a sale is not a violation of the copyright law, on March 30, 2013, a New York federal judge has ruled that digital products may not be re-sold on the web under the same doctrine.  Specifically, the Court ruled that ReDigi, a web based platform allowing Internet users to upload and re-sell songs they had bought from online retailers like Apple’s iTunes,  had infringed the copyright of a record label, Capitol Records.  The decision is expected to impact the secondary market for sale of all digital products, not only music, but also e-books.  Amazon, among others, has filed for a patent for such a marketplace. However, the decision will impact anyone in the market for digital products, whether buyer or seller.

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The news has been filled with stories involving the hacking of companies, governmental departments, and prominent peoples’ private computer information.  U.S. government sources claim that much of the hacking is being done by the Chinese.

With the advent of computer technology, the world has become a smaller, faster, and more organized place.   Each step forward brings downside impact  with it.  With the internet and IT technology, the issue of security has become a critical issue.  There are those at the highest levels of government who concede that cyber warfare is this century’s most lethal weapon.  Hackers can turn off national electric grids; steal secret government information; and obtain intellectual property, development plans, or economic information that can be used for profit or mischief.

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Web addresses ending in extensions such as .accountant or .pizza will soon join the online world where .com has long been the sought-after destination. Yet the majority of small and midsize businesses (SMBs) still have no idea the new real estate is about to hit the market.

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• U.S. courts have long split on whether Internet search engines, like Google, may lawfully sell brand names as keywords to those other than the trademark owner. Now, emboldened by victories abroad, Google has announced it will not restrict the sale of trademarks as keywords anywhere in the world and will not stop such sale even in the face of trademark owners’ complaints.
• On March 19, 2013, the Supreme Court found lawful the practice of exporting for sale in the U.S. “grey market” textbooks sold abroad.  This is a big blow for publishers who now face competition from purchasers abroad who may pay much less for the textbooks in their countries than the prices for which they are sold in the U.S.

Beginning March 26, 2013 and for a limited time, owners of national trademark registrations around the world will register their trademarks with the new ICANN Trademark Clearinghouse, enabling them to receive notification if a third party applies to register their mark under the new generic top level domain regime.

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• Prime Minister Sinzo Abe is pushing Japan to enter negotiations to join the Trans-Pacific Partnership, which is a free-trade pact that includes the U.S. and other Pacific nations. Viewing the move as a “last chance” to prevent Japan from being “left out,” Abe is facing strong opposition from Japan’s agricultural sector, which has historically been adverse to trade liberalization. Some of the effects of free trade would be the elimination of tariffs, and the lessening of governmental regulations and subsidiaries. Proponents argue that the move would result in an expansion of “Japan’s economy by at least 3.2 trillion Yen, or $33 billion – about 0.66 percent”, while others, such as the agricultural cooperatives, are concerned about the effect free trade would have on the Japanese lifestyle, and in particular Japan’s universal insurance system.
• India is again being criticized by a member of the business community for the country’s efforts to bolster its generic drug industry. The complaint, which was levied by Chief Intellectual Property Counsel of Pfizer, reflects the view that India has created a “‘protectionist intellectual property regime’ that is deterring U.S. investment in the South Asian nation.” Citing last year’s patent revocation for a Pfizer cancer medication, and the nation’s use of compulsory licensing, the Pfizer representative contended that these moves by the country reflect efforts to further the interests of domestic generic drug manufacturers and intimated that such efforts are being done at the expense of multinational drug companies. India’s “new patent law still sets a high bar for drug companies to receive patents on new innovations, and allows generics companies – not just the government – to apply for compulsory licenses to override them.” The resulting tension between market participants may be a contributing factor to the uptick in filed disputes at the WTO arising out of U.S.-India trade relations.
• Deal news: SoftLayer Technologies. Reports have privately held database web hosting company SoftLayer Technologies Inc. being considered as a target for acquisition. Among the potential suitors are IBM and EMC, although neither company (nor Softlayer) has commented. Based on other purchases that involved similar businesses, including CentruyLink’s purchase of Savvis for $2.5 billion and Verizon Communications’ purchase of Terremark Worldwide for $1.4 billion, some are anticipating that the purchase price for any deal involving SoftLayer could reach the $2 billion level. Hostess Brands. McKee Foods Corp. is set to acquire Hostess’ Drake’s snack cake business for approximately $27.5 million. The transaction is part of the ongoing liquidation of Hostess, which has already seen a sale to Apollo Global Management of its snack cake business, a sale to Flower Foods Inc. of most of its bread business, and will next see an auction of other Hostess brands in the coming days.

On September 8, 2011, the U.S. Senate passed the Leahy-Smith “America Invents Act” (AIA), which was
signed into law by President Obama on September 16, 2011, enacting its provisions. Certain provisions
had immediate effect; others came into effect on September 16, 2012; and the next significant provisions
are the “First to File” provisions, which will come into effect on March 16, 2013.

For information on the “First to File” provision, read the rest of the alert here.

In an important ruling by a federal judge in Dallas, Texas, Cointreau Corporation, owner of rights in the famous “COINTREAU” trademark for orange liqueur, has succeeded in its request for a preliminary injunction prohibiting the sale of a competing orange liqueur product sold under the trademark “CONTROY.”   Cointreau Corporation, represented by Norris, McLaughlin & Marcus, P.A., was able to convince the court that Cointreau was likely to succeed in showing that the use of the trademark Controy, on a product manufactured by Mexico’s La Madrilena S.A. de C.V. and distributed in the United States by Pura Vida Tequila Company, LLC, dilutes Cointreau’s rights in its famous brand by blurring its distinctiveness, based on the close similarity of the two marks.  The injunction bars the defendants from importing into, or selling, any orange liqueur in the United States under the “CONTROY” name.   In so ruling, the Court noted “In this case, damage to the goodwill and selling power associated with the Cointreau Marks would be difficult if not impossible to calculate in monetary terms.  Cointreau  Corp. has thus shown a substantial threat that it will suffer irreparable injury in the absence of an injunction.”

The case was handled by Bruce S. Londa and Jeanne Hamburg, members of the firm and of the Intellectual Property Group, and Danielle M. DeFilippis, an associate with the firm and member of the Litigation Department, all practicing out of the New York office of the Bridgewater-based law firm.

Edouard Cointreau first distilled his eponymous orange liqueur in 1875. The Cointreau distillery began selling the liqueur in that same year and brought it to market in the United States by 1885. Today, Cointreau is the second-most-popular orange liqueur in the United States by volume. “With the court’s decision supporting the fame and distinctiveness that our brand has earned over the past 140 years, Cointreau can put aside the legal issues, and focus on our mission to provide consumers with our premium orange liqueur,” says Cointreau Vice-President and General Counsel David Babkow.

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