November 19th, 2009
Patent Anticipation
Federal Circuit
Iovate Health Sciences, Inc. v. BSN, Inc.
2009-1018
USDC ED Texas
On motion for summary judgment, was the asserted U.S. Patent 6,100,287 which claims the use of nutritional supplements containing a ketoacid and an amino acid that is either cationic or dibasic to enhance human muscle performance or recovery from fatigue invalid as anticipated under 35 U.S.C. § 102(b) by print advertisements published before the critical date with a list of ingredients, directions for administering the supplements orally and marketing claims and testimonials from bodybuilders extolling product effects?
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Tags: 35 U.S.C. § 102(b), Anticipation, Printed Publication, U.S. Patent
Posted in U.S. Patent | Comments Off
November 16th, 2009
Domain Names
Anti-Cybersquatting Consumer Protection Act
Ninth Circuit
Lahoti v. Vericheck, Inc.
2008-35001
USDC WD Washington
Did a bench trial judgment properly obtain, and was the court’s analysis regarding trademark distinctiveness sound, where a notorious cybersquatter had been found liable under the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), the Lanham Act, 15 U.S.C. §§ 1051 et seq., the Washington Consumer Protection Act, Wash. Rev. Code § 19.86, and various Washington common law doctrines for having displayed plaintiff’s Georgia state service mark VERICHECK as part of defendant’s registered domain name, vericheck.com, in connection with his pay-per-click website that did not offer any goods or services?
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Tags: Anti-Cybersquatting Consumer Protection Act, Cybersquatter, Domain Names, Lahoti, Lanham Act
Posted in Cyberpiracy, Domain Names | Comments Off
November 16th, 2009
Trade Identity
Claim Preclusion
Federal Circuit
American Rice, Inc. v. Dunmore Properties S.A.
2009-1313
Trademark Trial and Appeal Board
Was the same set of pertinent transactional facts at question thus triggering claim preclusion where the Trademark Trial and Appeal Board dismissed a 2007 petition to cancel, which alleged likelihood of confusion, dilution and fraud in procurement, concerning a federal trademark registration on BINT ALARAB for rice and the Office records disclose a 2003 cancellation proceeding that had been brought by the same petitioner and later dismissed with prejudice?
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Tags: Claim Preclusion, Res Judicata, Trade Identity, Trademark Trial and Appeal Board
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November 13th, 2009
Patent Attorney Contingency Fees
Illinois Appellate Court, First District, Second Division
Premier Networks, Inc. v. Stadheim and Grear, Ltd.
1-08-1133
Circuit Court of Cook County
Did the Illinois circuit court have jurisdiction over a legal malpractice suit against patent attorneys engaged in substantive patent lawyering where the complaint further alleged defendant law firm’s contingency fee arrangement for 40% of plaintiff’s future earnings from certain patents, plus costs, was unreasonably high thus voiding the agreement ab initio and that the arrangement operated to place defendant in an impermissible business relationship with plaintiff, each in violation of Illinois Rules of Professional Conduct for attorneys, 134 Ill. 2d R. 1.1 et seq.?
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Tags: Attorney Malpractice, Contingency Fees, Illinois Jurisdiction, Patent Attorney Fees
Posted in Patent Attorney Fees | Comments Off
November 9th, 2009
Trade Identity
Illinois Appellate Court, First District, Fifth Division
Jim Mullen Charitable Foundation v. World Ability Federation, NFP
1-07-2505
Circuit Court of Cook County
Was summary judgment in favor of defendant’s jus tertii defense properly granted where plaintiff nonprofit organization had obtained federal and state service mark registrations for NEW FREEDOM AWARDS in connection with fundraising on behalf of disabled persons, assigned title to the United States Department of Labor, licensed-back under an exclusive arrangement and then sued defendant on various trade identity and unfair competition claims that were based on rights plaintiff allegedly holds to NEW FREEDOM AWARDS?
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Tags: Illinois, Jus Tertii, Trade Identity, Unfair Competition
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November 6th, 2009
Trade Identity
Federal Circuit
In re 1800Mattress.com IP, LLC
2009-1188
Trademark Trial and Appeal Board
Is the purported service mark MATTRESS.COM unregistrable as generic under 15 U.S.C. § 1091(c) for “online retail store services in the field of mattresses, beds, and bedding” given the two-step genus of goods or services inquiry set forth at H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986)?
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Tags: 15 U.S.C. § 1091(c), Generic, Registration, Service Mark
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November 5th, 2009
Trade Identity
Federal Circuit
The Cold War Museum, Inc. v. Cold War Air Museum, Inc.
2009-1172
Trademark Trial and Appeal Board
In view of British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB 1990) and 37 C.F.R. § 2.122(b), as well as the presumption of validity for issued registrations, was registrant in a cancellation proceeding required to formally resubmit evidence of acquired distinctiveness during the proceeding to avoid cancellation on 15 U.S.C. § 1052(e)(1) grounds given its service mark THE COLD WAR MUSEUM was only granted registration after registrant had provided the Office with substantial evidence showing five years of exclusive and continuous use in commerce under Section 2(f) due to the mark’s acknowledged lack of inherent distinctiveness?
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Tags: Acquired Distinctiveness, Cancellation Proceeding, Trade Identity
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November 5th, 2009
Copyright Infringement
Seventh Circuit
Schrock v. Learning Curve International, Inc.
2008-1296
USDC ND Illinois
On motion for summary judgment, was a professional photographer entitled to copyright his photos of defendants’ products and sue defendants on these derivative works for copyright infringement after the defendant product rightsholder and its licensee had continued to promote the photos in their advertising and on their product packages following termination of the photographer’s services for defendants, given Seventh Circuit jurisprudence under Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983)?
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Derivative Works Displayed on Product Packaging
Tags: Copyright, Derivative Works, Infringement
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November 4th, 2009
Copyright Infringement
Sixth Circuit
Bridgeport Music, Inc. v. UMG Recordings, Inc.
2007-5596
USDC MD Tennessee
Was fragmented literal similarity and thus copying determinable as a matter of law, and was a jury which had found willful copyright infringement and awarded statutory damages properly instructed regarding the questions of willfulness and the tributary fair use defense, where defendants merely had used the phrase “bow wow wow, yippie yo, yippie yea” as well as repeated the word “dog” in a low tone of voice at regular intervals along with the sound of rhythmic panting on defendants’ hip hop song “D.O.G. in Me” and these salient elements appear in plaintiffs’ original funk composition and recording musical work “Atomic Dog”?
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Tags: Composition Work, Copyright, Fair Use, Sound Recording
Posted in Copyright, Fair Use | Comments Off
November 3rd, 2009
Software Amortization
Federal Circuit
Teknowledge Corp. v. United States
2009-5053
USCFC
On motion for summary judgment, does Federal Acquisition Regulation § 31.201-4 operate to disallow a developer of software for secure transactions over the Internet from allocating the developer’s commercial development costs to its government overhead pool for amortization purposes where the United States government was allegedly an indirect beneficiary of the development work but the software in question did not pertain to a specific government contract and the government did not purchase the software?
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Tags: Amortization, Federal Acquisition Regulation § 31.201-4
Posted in Amortization, Federal Acquisition Regulation | Comments Off