Copyright Infringement and the First Sale Defense

by James Kachmar
The IP Law Blog

The Ninth Circuit’s recent decision in the case of Dolby Systems, Inc. v. Christenson, focuses primarily on the issue of which party bears the initial burden of proof with regard to a “first sale” defense in a copyright infringement action. As the reader will see, however, this case really provides a cautionary tale as to the consequences a party may face when it plays games during discovery.

Adobe, a software publisher and the copyright holder for titles such as the “Photoshop” series sued Christenson in October 2009 alleging copyright and trademark infringement.

Read More

Five IP Pitfalls That Start-Up (and Grown Up) Companies Can Easily Avoid

by Scott M. Hervey
The IP Law Blog

In business, there are numerous opportunities for pitfalls, mistakes and errors and they come up in all different legal areas – from basic formation issues to labor and employment to intellectual property. Mistakes and missteps involving intellectual property can be particularly problematic because IP is a company asset; it constitutes a part of (often a significant part of) a company’s valuation. In my 20 years working with start-up companies – and even fully grown-up companies,

Read More

Don’t Get On the Wrong Side of Taylor Swift in a Copyright Case!

by Audrey A. Millemann
The IP Law Blog

Taylor Swift has been in the news a lot over the last year or so. She is phenomenally successful. Her hit album “1989” concert tour was the highest grossing tour in the world in 2015 (over $250 million) and the highest grossing tour ever in North America (smashing the previous record held by the Rolling Stones’ 2005 tour).

As she said in a Wall Street Journal Op/Ed piece in 2014, Swift believes songs are valuable art that should be paid for.

Read More

The Federal Circuit Breathes Life into the Redskins’ Appeal

by Josh H. Escovedo
The IP Law Blog

If you’re a fan of intellectual property or the National Football League, you may have heard about last July’s ruling in the United States District Court for the Eastern District of Virginia. There, Judge Gerald Bruce Lee affirmed the Trademark Trial and Appeal Board’s ruling that the team’s moniker is offensive to Native Americans, and therefore ineligible for trademark protection under the Lanham Act, which prohibits registration of disparaging marks. This battle was fought over more than 20 years.

Read More

When Copying is Not Copyright Infringement

by Audrey A. Millemann
The IP Law Blog

A longstanding battle between Google and the authors of published books has been resolved (at least for now) in favor of Google. The Second Circuit Court of Appeals has held that Google’s use of copyrighted books in its Library Project and Google Books website, without the permission of the authors, is fair use and therefore not copyright infringement. The Authors Guild v. Google, Inc. (2nd Cir. 2015) 804 F.3d 202.

In 2004,

Read More

The Beef Between In-N-Out Burger and Doordash

by Josh H. Escovedo
The IP Law Blog

Everyone on the West Coast knows In-N-Out Burger. For some of us Californians, the burgers may even be considered a state treasure. Doordash, on the other hand, is much less recognizable. It is an on-demand delivery service that connects its customers with local businesses. According to Doordash, it enables its users to purchase food from merchants and have it delivered within 45 minutes. While providing this service, Doordash delivered In-N-Out food products to its customers all across the nation.

Read More

ISPs That Ignore Notices From “Copyright Trolls” Risk Losing DMCA Safe Harbor Protections

by Scott M. Hervey
The IP Law Blog

Representing copyright owners attempting to enforce online infringement is often routine, but can sometimes prove challenging. This tends to be the case when a content owner is trying to address large scale infringement of one or multiple works. Most often ISPs are cooperative, but on occasion an ISP may resist responding to a content owner when the owner is represented by an organization like Rightscorp — often referred to as “copyright trolls.” Based on the recent ruling by the Eastern District Court of Virginia against Cox Communications,

Read More

Why Business Methods Are Difficult to Patent

by Audrey A. Millemann
The IP Law Blog

Although the general rule (based on 35 USC section 101) is that anything made by humans is patentable, there are exceptions. Laws of nature, physical phenomena, and abstract ideas are not patentable. Inventions that fall in these categories are “patent-ineligible,” that is, directed to subject matter that is not eligible to be patented. After the Supreme Court’s key decisions over the last few years in Bilski v. Kappos, 130 S. Ct. 3218 (2010); Mayo Collaborative Services v.

Read More

Pacifico Defends its Trademark Rights on Canadian Soil

by Josh H. Escovedo
The IP Law Blog

Another intellectual property dispute has arisen in the brewing industry. This time, however, the battle took place on Canadian soil. British Columbia based Pacific Western Brewing (“PWB”) sued renowned Mexican brewery Cerveceria del Pacifico (“CDP”), arguing the latter’s name was confusingly similar to PWB’s various brew-related trademarks. For those who do not know, Cerveceria del Pacifico is the brewery responsible for Cerveza Pacifico Clara, better known as Pacifico. Although the claim concerns numerous PWB marks,

Read More

Court Provides Fair Use Guidance On YouTuber’s Use of Viral Video

by Scott M. Hervey
The IP Law Blog

This copyright case pitted two big YouTube content brands against each other over issues of fair use. On one side is Equals Three, LLC, a YouTube content studio and channel created and owned by Ray William Johnson, an early YouTube content pioneer. The Equals Three channel has over 10 million subscribers and over 3 billion total views making it one of the most viewed channels on YouTube. Equals Three produces YouTube comedy content. A typical program involves a host who gives an introduction to a particular video clip,

Read More