Intellectual Property

Weintraub Tobin understands that protecting intellectual property is vital to achieving and increasing commercial success for individuals and businesses in the global marketplace. Our Intellectual Property team provides the highest quality legal services using practical and effective approaches that consistently achieve outstanding results for our clients in cutting-edge transactions and complex intellectual property disputes.

Weintraub Tobin is a full-service IP firm representing clients in both transactional and litigation matters.  We provide strategic advice and counseling to companies at all stages of growth to help them develop or acquire all forms of intellectual property, and to protect, manage, license, enforce, and defend that intellectual property.

Our attorneys have broad industry experience and specialized academic backgrounds, including advanced technical and scientific degrees.  We understand our clients’ technology as well as their business objectives.

We have substantial experience in a wide array of fields, including:

  • Biotechnology, pharmaceuticals, and medical devices
  • Biochemistry
  • Molecular biology and microbiology
  • Genetics and genomics
  • Immunology
  • General chemistry and water treatment chemistry
  • Electronics, wireless communication devices and protocols, aeronautical applications, Wi-Fi enabled devices, energy management, microprocessors/microcontrollers, memory devices, smartphones and smart TVs (along with applications), embedded systems, in-home networking for computing and entertainment, consumer electronics, semiconductor process and fabrication technology, packaging, power conversion, and software
  • E-commerce and business and financial methods
  • Digital media and advertising
  • Mechanical systems
  • Entertainment
  • Fashion and apparel
 
 
Webinar: Up in Smoke – Navigating the Conflict Between State Law and Federal Law Concerning Cannabis Products While Advising Clients on IP Matters

Weintraub attorney Josh Escovedo is presenting this webinar by Meritas. Summary: With the legalization of cannabis in various states, but the continued classification of cannabis as a controlled substance under federal law,

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Women Leadership in San Diego Intellectual Property

Attorney Jo Dale Carothers speaks at the Women Leadership in San Diego Intellectual Property event on Thursday, October 24, organized by the San Diego Intellectual Property Law Association. Please join us as the panelists provide their thoughts and perspectives about the past,

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Live Webcast: Addressing and Identifying Challenges in Patenting Machine Learning Algorithms

Jo Dale Carothers, Ph. D. and Shareholder at Weintraub Tobin, will speak at the upcoming Knowledge Group webcast entitled “Addressing and Identifying Challenges in Patenting Machine Learning Algorithms.” Date and Time: The event will take place on Tuesday,

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Postponed: Don’t Let Your IP Float Away in the Cloud!

Summary of Program Join attorneys from Weintraub Tobin’s Intellectual Property Group (Jo Dale Carothers and Audrey Millemann) for this 1 hour MCLE program. Program Highlights Overview of Cloud Computing and Cloud Storage Who owns the information in the Cloud?

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Raising Capital for Startups

Summary of Program Join a panel of Weintraub Tobin attorneys and Touchdown Ventures venture capitalists to discuss the preliminary work that must be done before looking for investment and the details of seed and A round financing.

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Upcoming Seminars for Wineries

Three Weintraub attorneys will speak to wineries and winemakers about legal challenges for facility development, land management and business operations at two half-day seminars on Wednesday, November 9th and Thursday, November 17th.

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Scott Hervey to Speak at UC Davis Entrepreneurship Academy

On September 15, 2008, intellectual property and new media shareholder Scott Hervey will speak at the annual UC Davis Entrepreneurship Academy. Scott will provide an informative review of intellectual property rights from a legal prospective.

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Josh Escovedo Recognized as a Top Trademarks Author in JD Supra Readers’ Choice Awards 2020

SACRAMENTO, CA (April 29, 2020) – Weintraub Tobin, a leading California full-service law firm, is pleased to announce that, for the second year in a row, Josh Escovedo has been named a top Trademarks author in the JD Supra Readers’

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Weintraub Attorney Jo Dale Carothers Named to San Diego Super Lawyers® 2020 List

SAN DIEGO, CA (April 10, 2020) – Weintraub Tobin, a leading California full-service law firm, is pleased to announce that Jo Dale Carothers, Ph.D.  is a 2020 San Diego Super Lawyers honoree.

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Jo Dale Carothers Quoted in Law360

Jo Dale Carothers was recently quoted in a Law360 article after a recent Precendential Opinion Panel decision for patent petitions for inter partes review (IPR) on whether copyright and ISBN are sufficient evidence for printed reference material as having been “publicly available”.

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Weintraub Tobin Ranked in U.S. News – Best Lawyers® 2020 “Best Law Firms”

SACRAMENTO, CA (November 1, 2019) – Weintraub Tobin, a leading California full-service law firm, was honored to be recognized with eight first-tier rankings in the 2020 edition of U.S. News – Best Lawyers® “Best Law Firms.” The complete list of rankings is published on the U.S.

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14 Weintraub Tobin Attorneys Named to Best of the Bar 2019

  SACRAMENTO, California  – Weintraub Tobin congratulates its 14 attorneys who have been included in Sacramento Business Journal’s Best of the Bar 2019. Attorneys selected to the 2019 Best of the Bar list include Gary L.

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19 Weintraub Tobin Attorneys Named to The Best Lawyers in America© 2020

  SACRAMENTO, CA (August 15, 2019) – Weintraub Tobin, a leading California full-service law firm, is pleased to announce that 19 of our attorneys have been recognized on the 2020 The Best Lawyers in America list.

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31 Weintraub Tobin Attorneys Named to 2019 Northern California Super Lawyers and Rising Stars Lists

Weintraub Tobin is pleased to announce that more than 30 Weintraub Tobin attorneys have been included on the 2019 Super Lawyers and Rising Star lists for outstanding attorneys Northern California.  In addition,

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24 Weintraub Tobin Attorneys included in Sacramento Magazine’s Top Lawyers List 2019

  Weintraub is pleased to announce that 24 of the firm’s attorneys have been recognized as 2019 Top Lawyers by Sacramento Magazine.  The full list of 2019 Top Lawyers will be featured in the August,

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Weintraub Tobin Attorneys Selected for Inclusion in San Diego Super Lawyers/Rising Stars® 2019 List

Weintraub is pleased to announce that Jo Dale Carothers has been recognized as a 2019 San Diego Super Lawyer and Eric Caligiuri as a 2019 Rising Star. Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group.

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Josh Escovedo Recognized as a Top Trademarks Author in JD Supra 2019 Readers’ Choice Awards

  Weintraub is pleased to announce that Josh H. Escovedo has been named a Top Author, for the topic of trademarks, in the JD Supra 2019 Reader’s Choice Awards. Josh Escovedo practices in Weintraub’s Litigation and Intellectual Property sections.  

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Weintraub Tobin Chediak Coleman Grodin Law Corporation ranked in 2019 “Best Law Firms”

  Sacramento, CA, United States, November 1, 2018 — U.S. News & World Report and Best Lawyers, for the ninth consecutive year, announce the “Best Law Firms” rankings. Weintraub Tobin Chediak Coleman Grodin Law Corporation has been ranked in the 2019 U.S.

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19 Attorneys from Weintraub Tobin were recognized in The Best Lawyers In America ©2019

SACRAMENTO, California – August 15, 2018 – Weintraub Tobin congratulates its nineteen attorneys who have been included in The Best Lawyers of America© 2019 list. David Adams, Sacramento, Corporate Governance Law,

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24 Weintraub Tobin Attorneys included in Sacramento Magazine’s Top Lawyers List 2018

SACRAMENTO, California – July 19, 2018 – Weintraub Tobin Law Corporation congratulates its 24 attorneys who have been included in Sacramento Magazine’s 2018 Top Lawyer List. David Adams | Business/Corporate, Securities &

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Four Weintraub Tobin Attorneys selected for inclusion in Southern California’s Super Lawyers® 2018 list

LOS ANGELES, CA (January 30, 2018) – Weintraub Tobin, one of California’s leading, full-service law firms, is pleased to announce that Sherry Bragg, David R. Gabor, Andrew Gilford and Gary Waldron have been named to the 2018 Southern California “SuperLawyers” list.

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19 Attorneys from Weintraub Tobin were recognized in The Best Lawyers In America© 2018

SACRAMENTO, California – August 16, 2017 – Weintraub Tobin congratulates its nineteen attorneys who have been included in The Best Lawyers of America© 2018 list. David Adams, Sacramento, Corporate Governance Law,

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21 Weintraub Tobin Attorneys included in Sacramento Magazine’s Top Lawyers List 2017

SACRAMENTO, California – July 26, 2017 – Weintraub Tobin Law Corporation congratulates its 21 attorneys who have been included in Sacramento Magazine’s 2017 Top Lawyer List. Brendan Begley | Appellate Gary L.

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Four Weintraub Tobin Attorneys Recognized as “Rising Stars” in Southern California

Weintraub Tobin, one of California’s leading, full-service law firms, is pleased to announce that Eric Caligiuri, Jacob Gonzales, Jessica Marlow, and Darrell White  have been named to the 2017 Southern California “Rising Stars” list.

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Four Weintraub Tobin Attorneys Recognized as “SuperLawyers” in Southern California

LOS ANGELES, CA (January 20, 2017) – Weintraub Tobin, one of California’s leading, full-service law firms, is pleased to announce that Eric Caligiuri, Jo Dale Carothers, David R. Gabor, and Gary Waldron have been named to the 2017 Southern California “SuperLawyers” list.

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Weintraub Tobin’s L&E and IP Blogs recognized as “Top 100 Legal Blogs” By Feedspot Blog Reader

Weintraub Tobin’s Labor & Employment and Intellectual Property Blogs have both been recognized as a “Top 100 Legal Blogs Every Lawyer and Law Student Must Follow” by Feedspot Blog Reader! Feedspot takes into consideration 1,000’s of Law blogs from across the United States and Canada and uses search and social metrics to rank them.

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Weintraub Tobin Shareholder, Matthew Sugarman, excited to announce deal for “Cosmere”

  Weintraub Tobin Shareholder, Matthew Sugarman is excited to announce DMG Entertainment’s acquisition of the licensing rights to Cosmere from science fiction writer Brandon Sanderson. Matt, a Los Angeles-based attorney in the firm’s entertainment department,

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Chris Chediak named 2017 ‘Lawyer of the Year’ for Corporate Law in Sacramento

  Sacramento, California – Weintraub Tobin Chediak Coleman Grodin, a business law and litigation firm, announces that Chris Chediak has been named Lawyer of the Year in Corporate Law for 2017 in Sacramento by Best Lawyers in America®.

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18 Weintraub Tobin Attorneys Named to Sacramento Magazine’s Top Lawyers List 2016

  SACRAMENTO, California – July 25, 2016 – Weintraub Tobin Law Corporation congratulates its 18 attorneys who have been included in Sacramento magazine’s 2016 Top Lawyer List. David C. Adams | Business/Corporate, 

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Fair Use and Youtube – A Creator’s Take

6/25/16-  At the 7th Annual  VidCon in Anaheim, CA , Weintraub Tobin Shareholder Scott M. Hervey and Rian Bosak, Head of Network Operations Full Screen, presented  “Fair Use and Youtube- A Creator’s Take” to a standing room only audience of digital media creators and industry professionals.  

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WATCH OUT! SUPREME COURT OPENS DOOR TO TREBLE DAMAGES IN PATENT CASES!

Up until now, it has been nearly impossible for a plaintiff to recover enhanced (up to treble) damages in patent infringement cases.  The current test for enhanced damages, set forth by the Federal Circuit Court of Appeals in 2007 in In Re Seagate Technology,

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The Supreme Court Rules the PTAB and District Courts Can Continue to Apply Different Standards for Interpreting Patent Claims

Patent litigators and prosecutors have been waiting to hear whether the U.S. Supreme Court would require the United States Patent and Trademark Office (“USPTO”) to apply the same claim construction standard as the district courts. 

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Google’s Fair Use Defense Thwarts Oracle’s Attempt to Recover $9 Billion in Copyright Case

In a high-profile case, a jury recently found that Google’s use of portions of Oracle’s Java software code was allowable under the fair use doctrine and thus did not constitute copyright infringement. 

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New Federal Trade Secret Law Takes Effect!

So what is a trade secret?  Generally, a trade secret is information that the owner has taken reasonable measures to keep secret, derives independent economic value from not being generally known,

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Senate and House of Representatives Pass the Defend Trade Secrets Act

Senate and House of Representatives Pass the Defend Trade Secrets Act (DTSA).  First federal trade secret bill awaiting presidential signature. More details can be found at the following Forbes article:  “The New Defend Trade Secrets Act is the Biggest IP Development in Years,” dated April 28,

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20 Weintraub Tobin Attorneys Named to Sacramento Magazine’s Top Lawyers List 2015

  SACRAMENTO, California – August 7, 2015 – Weintraub Tobin Chediak Coleman Grodin Law Corporation congratulates its 20 attorneys who have been included in Sacramento magazine’s  Top Lawyer List 2015. David C.

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Jessica Marlow Acknowledged in Hollywood Reporter

Jessica Marlow was acknowledged in the June 19 edition of the Hollywood Reporter for her recent promotion to shareholder of Weintraub Tobin’s Entertainment Group.

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Jeffrey Pietsch Recognized in San Francisco Chronicle

Weintraub Tobin’s Jeffrey Pietsch was recognized in the San Francisco Chronicle for his promotion to shareholder at the firm. Click here to view the post.

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Jessica Marlow Recognized as a ‘Mover and Shaker’ by Variety

New shareholder, Jessica Marlow, was recognized as a ‘Mover and Shaker’ in a recent edition of Variety.

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Weintraub Tobin Promotes Three to Shareholder

New shareholders Mary K. deLeo in Sacramento, Jeffrey B. Pietsch in San Francisco, and Jessica M. Marlow in Beverly Hills, were recognized by The Daily Journal for their recent promotions to shareholder.

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On the Move

By: Jason Doiy, The Recorder Intellectual property lawyer Eric Caliguiri joined Weintraub Tobin as of counsel in San Diego. Caligiuri departed Covington & Burling, following shareholder Jo Dale Carothers. Read entire article here.

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Caligiuri Joins Weintraub Tobin as Of Counsel

By: Daily Transcript Staff Report Eric Caligiuri has joined Weintraub Tobin’s San Diego office as of counsel. Caligiuri advises domestic and international clients on complex intellectual property disputes and focuses on patent and trade secret litigation in federal district courts,

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Eric Caligiuri Joins Weintraub Tobin’s San Diego Office, Further Enhances IP Capabilities

SAN DIEGO (March 31, 2015) – Weintraub Tobin, one of California’s leading, full service law firms, is pleased to announce that intellectual property attorney Eric Caligiuri has joined the firm’s San Diego office as Of Counsel.

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Scott Hervey Quoted in International Business Times

Scott Hervey was quoted in an article in the International Business Times on how Fox’s fair use defense in a copyright infringement lawsuit arising over its use of a famous 9/11 image could change the landscape of copyright enforcement online.

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Dale Campbell quoted in Sacramento Business Journal

Shareholder Dale Campbell was quoted in the Sacramento Business Journal. When asked what the biggest challenge facing litigators is, he stated, “Implementing an effective pretrial strategy to achieve the client’s goals rather than becoming embroiled in peripheral fights that do not advance the merits of the case.

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Weintraub Tobin Welcomes Leading California IP Attorney with Broad Range of Technological and Litigation Expertise

  Jo Dale Carothers Joins as Shareholder, Strengthening Firm’s IP Capabilities and Extending Reach into San Diego SAN DIEGO (January 14, 2015) – Weintraub Tobin, one of California’s leading full service law firms,

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Scott Hervey Named to Variety’s 2014 Legal Impact Report

Download: Scott Hervey.Variety Legal Impact Report.2014.pdf Los Angeles, California, April 21, 2014 – Weintraub Tobin Chediak Coleman Grodin Law Corporation congratulates its partner, Scott Hervey on being recognized by Variety in its 2014 Legal Impact Report.

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Weintraub Tobin and Waldron & Bragg Merge

Download: WTWB Merger Press Release FINAL.pdf Weintraub Tobin Chediak Coleman Grodin Law Corporation and Waldron & Bragg, a professional corporation, have jointly announced the merger of their business law and litigation firms.

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Weintraub Tobin Raises Money for American Heart Association

Heart Walk Logo For a third year in a row, Weintraub Tobin is working to raise funds for cardiovascular diseases and stroke by partaking in the American Heart Association Heart Walk on Saturday,

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Scott Hervey Appointed To Hollywood Radio and Television Society Board

On Tuesday, September 10th at the Beverly Hilton, Scott Hervey was announced as one of the newest board members of The Hollywood Radio and Television Society. Scott had to be vetted and voted on by the existing board,

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Eight Shareholders Named 2014 Best Lawyers in America®

Weintraub Tobin Chediak Coleman Grodin, a business law and litigation firm, is pleased to announce that eight of its partners were recently selected by their peers for inclusion in the 2014 edition of Best Lawyers in America®.

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Seven Weintraub Tobin Attorneys Included in the Top 25 List by Super Lawyers

Download: Super Lawyers 2013.pdf SACRAMENTO, Calif., July 8, 2013 – Weintraub Tobin Chediak Coleman Grodin, a business law and business litigation law firm congratulates seven attorneys on being named as one of the Top 25 Sacramento Super Lawyers of 2013.

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3 Cities. Over 70 Lawyers. Now 1 Great Law Firm: Weintraub Merges with LA Entertainment Law Firm

SACRAMENTO / SAN FRANCISCO / LOS ANGELES, July 6, 2012 – Weintraub Genshlea Chediak Tobin & Tobin Law Corporation and Weissmann Wolff Bergman Coleman Grodin LLP have jointly announced the merger of their respective business and entertainment law firms.

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It’s Official – Weintraub Merges with San Francisco Firm Tobin & Tobin

Weintraub Genshlea Chediak Law Corporation and Tobin & Tobin, a professional corporation, jointly announce the merger of their business law and litigation firms. The combined firm will be named Weintraub Genshlea Chediak Tobin &

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Seven Weintraub Genshlea Chediak Attorneys Named in Best Lawyers of America for Sacramento

Weintraub Genshlea Chediak congratulates all of the attorneys who were included in the distinguished list of 2011 “The Best Lawyers in America®” for Sacramento: Banking Law Joseph S. Genshlea Bet-the-Company Litigation Joseph S.

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Twelve Weintraub Genshlea Chediak Attorneys Honored as Northern California Super Lawyers and Rising Stars

SACRAMENTO, Calif., July 14, 2010 – Weintraub Genshlea Chediak, a Sacramento-based business law and business litigation law firm congratulates its twelve attorneys who were named as 2010 Northern California SuperLawyers and Rising Stars: SuperLawyers: Gary L.

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Weintraub Genshlea Chediak Announces New Los Angeles Office

Sacramento’s fifth-largest law firm quietly opened a branch in Los Angeles this week. Weintraub Genshlea Chediak Law Corp. has hired two litigators in an office on Wilshire Boulevard to solidify a toehold in the intellectual property,

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Fourteen Weintraub Genshlea Chediak Attorneys Honored As 2009 Nor Cal Super Lawyers and Rising Stars

Fourteen Weintraub Genshlea Chediak Attorneys Honored as 2009 Northern California Super Lawyers and Rising Stars SACRAMENTO, Calif., July 21, 2009 –Weintraub Genshlea Chediak, a Sacramento-based business law and business litigation law firm congratulates its fourteen attorneys who were named as 2009 Northern California Super Lawyers and Rising Stars: Super Lawyers: Dale C.

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Six Weintraub Genshlea Chediak attorneys named in Best Lawyers in America for Sacramento

Weintraub Genshlea Chediak congratulates all of the attorneys who were included in the distinguished list of 2009 “The Best Lawyers in America®” for Sacramento: Christopher Chediak – Corporate Law (also named Lawyer of the Year);

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Six Weintraub Genshlea Chediak Attorneys Honored As 2008 Northern California Super Lawyers

Six Weintraub Genshlea Chediak Attorneys Honored as 2008 Northern California Super Lawyers SACRAMENTO, Calif., July 31, 2008 –Weintraub Genshlea Chediak, a Sacramento-based business law and business litigation law firm congratulates its six shareholders who were named as 2008 Northern California Super Lawyers: Dale C.

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Four Weintraub Attorneys Honored as 2008 Best Lawyers in America

Four Weintraub Attorneys Honored As 2008 Best Lawyers in America SACRAMENTO, Calif., November 1, 2007 –Weintraub, a Sacramento-based business law and business litigation law firm is pleased to announce that four of its partners were recently selected by their peers for inclusion in the 2008 edition of The Best Lawyers in America (Copyright 2007 by Woodward/White,

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Seven Weintraub Genshlea Chediak Attorneys Honored as 2007 Northern California Super Lawyers

Seven Weintraub Genshlea Chediak Attorneys Honored as 2007 Northern California Super Lawyers SACRAMENTO, Calif., July 27, 2007 –Weintraub Genshlea Chediak, a Sacramento-based business law and business litigation law firm congratulates its seven shareholders who were honored as Northern California Super Lawyers as published in San Francisco Magazine and Northern California Super Lawyers Magazine.

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David Adams Joins Weintraub Genshlea Chediak as Shareholder

Download: David Adams Press Release.pdf For Immediate Release SACRAMENTO, Calif., May 3, 2007 — Weintraub Genshlea Chediak, a leading Sacramento-based business and litigation law firm with one of the largest corporate and securities practices in the region,

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Ebay Negative on Negativland iPod

EBay Negative on Negativland IPod By Katie Dean Wired MagazineDecember 8, 2004 Shareholder Scott Hervey was quoted in a recent Wired Magazine article concerning Ebay’s removal of a modified U2 iPod from its auction site after Apple Computer complained of copyright violations.

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Trademark Protection for Your Brand Merchandise in the Age of Copycats, Counterfeits, and Fakes

With live events cancelled during the pandemic, content creators are increasingly dependent on merchandise sales.  Creators from podcasters to YouTubers to musicians are reliant on merch to bolster their revenue and their brands. 

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No Right to Appeal Even When IPR Institution Denied on Non-Substantive Grounds

One way to challenge the validity of a patent at the United States Patent and Trademark Office (“USPTO”) is through a petition for inter partes review (“IPR”).  The USPTO Director has delegated responsibility to the Patent Trial and Appeal Board (“PTAB”) to evaluate such petitions to determine whether to institute review of the challenged patent. 

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Trade Secrets and the Duty to Identify Them with Sufficient Particularity

One of the first elements that a plaintiff must prove to succeed on a trade secret claim is that it is the owner of a valid trade secret.  To do so,

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District Court Finds Documents Related to Litigation Funding Protected by Work Product Doctrine

In Impact Engine, Inc. v. Google LLC, 3-19-cv-01301 (SDCA 2020-10-20, Order) (Cathy Ann Bencivengo), the District Court for the Southern District of California recently considered whether litigation funding documents could be withheld from production by plaintiff Impact Engine because the documents were work product protected. 

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PTAB May Decide Patentability Under Section 101 in Inter Partes Reviews

An inter partes review (IPR) is a procedure to challenge a patent in the U.S. Patent and Trademark Office (PTO). The IPR procedure was established by the American Invents Act, and was intended to be an improvement on the existing inter partes reexamination procedure.

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Dogs, Whiskey, and Intellectual Property: Need I Say More?

Jack Daniel’s Properties, Inc. has petitioned the Supreme Court of the United States for certiorari following an unfavorable ruling from the Ninth Circuit in the matter of VIP Products LLC v.

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Empire Copyright Litigation

Weintraub Tobin IP attorneys Scott Hervey and Josh Escovedo discuss the copyright dispute over the TV show “Empire,” Jon Astor-White v. Daniel Strong.

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The Courts Step in to Protect TikTok from the Trump Administration

In a dramatic Sunday morning hearing (conducted remotely via telephone), lawyers for TikTok and the Trump Administration battled over whether the government’s order banning TikTok from the Apple and Google app stores would take effect that night.

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9th Circuit Provides Clear Copyright Guidance for Producers of Bio Pics

In this episode of The Briefing by the IP Law Blog, Weintraub Tobin attorneys Scott Hervey and Josh Escovedo discuss copyright litigation around the “Jersey Boys” — a musical and movie about The Four Seasons–

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Football, Beer, and Court Fights

When it comes to football, I am a huge fan and love watching games on TV.  However, I do not typically pay attention to the commercials during games, with one major exception:  the Super Bowl. 

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No Judicial Estoppel in the Case of the On-Again, Off-Again Patent Inventor

The case of Egenera, Inc. v. Cisco Systems, Inc. raised the question of whether inventors named on a patent can be repeatedly changed as litigation strategy changes. Because of judicial estoppel,

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New Fast Track for Patent Appeals

A new temporary pilot program in the US PTO will speed up appeals in patent applications before the Patent Trial and Appeal Board (PTAB). The program, which went into effect on July 2,

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District Court Applies Different Requirement for Similarity of Accused and Asserted Works Under DMCA Versus the Copyright Act

In Kirk Kara Corp. v. Western Stone & Metal Corp. et al, 2-20-cv-01931 (CDCA 2020-08-14, Order) (Dolly M. Gee), the Central District of California denied Defendant’s motion to dismiss Plaintiff’s claims for copyright infringement,

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The Second Circuit Vacates Tiffany & Co.’s $21 Million Judgment for Trademark Infringement and Counterfeiting Against Costco

Almost five years ago, I wrote an article published in the Daily Recorder about a ruling in the Tiffany & Co. v. Costco Wholesale Corporation case filed in the United States District Court for the Southern District of New York.

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Second Circuit Frames Novel Issue of Photographer’s Claim of Copyright Infringement and DMCA Violation

The facts in Mango v. BuzzFeed are fairly straight forward. Mango is a freelance photographer who licensed a photograph to the New York Post.  The Post included the photo in a story and below the photo included Mango’s name – an attribution known in the publishing industry as a “gutter credit”. 

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The Rule of Reasonableness: Non-Compete Provisions in California Business Contracts

The California Supreme Court in the 2008 case, Edwards v. Arthur Andersen LLP, ruled that a provision in an employment agreement that prevented an employee from competing with his former employer following the termination of his employment was an invalid restraint on trade in violation of section 16600 of the California Business and Professions Code. 

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Sushi Restaurants Battle for Control Over Hand Roll Trademark

Sushi Nozawa, LLC, owner of the popular sushi destination Sugarfish, is challenging the HRB Experience LLC over use of the term “Hand Roll Bar.” IP Attorneys Scott Hervey and Josh Escovedo discuss the lawsuit,

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You Must Prove Actual Damages if You Want Punitive Damages in an Infringement Action

Imagine litigating an infringement case for two years, and after a nine day jury trial, obtaining a jury’s verdict that says you’ve established infringement and awards your client $5,000,000.  Then you realize that the jury has awarded your client $0 in actual damages,

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Make Sure You Follow the Patent Local Rules!

An unpublished decision from the Northern District of California emphasizes how important it is for attorneys to follow patent local rules. Patent local rules are rules that many federal district courts have for patent infringement cases.

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Irreparable Harm for Permanent Injunction Supported by Lost Profits Award

In f’real Foods, LLC et al v. Hamilton Beach Brands, Inc. et al, 1-16-cv-00041 (DDE 2020-07-16, Order) (Colm F. Connolly), plaintiffs freal Foods, LLC and Rich Products Corporation sued defendants Hamilton Beach Brands,

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After Nearly 30 Years of Controversy, the Washington Redskins Will Retire the Redskins Team Name and Trademark

On Monday, July 13, 2020, the ownership group of the Washington Redskins (the “Team”) announced that it will abandon the Redskins team name after nearly 30 years of controversy. The decision,

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The “Wolf of Wall Street” Defamation Suit – The Risk of an “Inspired By” Character in Movies and TV

The motion picture Wolf of Wall Street was based on a book of the same title written by Jordan Belmont.  In the book, Andrew Greene, who was director, general counsel, and head of the corporate finance department at Stratton Oakmont between 1993 and 1996,

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The PTAB Requires Settlement and Collateral Agreements to Terminate IPRs

Following the America Invents Act, a petition for inter partes review (“IPR”) has become a common method for challenging the validity of a patent before the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office (“USPTO”). 

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“Birds of a Feather” – The Ninth Circuit Confronts “Single Unit of Publication” Copyright Issue

Unicolors, Inc. creates and markets artistic design fabrics to various garment manufacturers.  Some of these designs are marketed to the public and placed in its showroom while other designs are considered “confined” works that Unicolor sells to certain customers.

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PTO Fast Tracks COVID-19 Patent and Trademark Applications

The United States Patent and Trademark Office has established a new program for prioritized examination for patent applications for inventions related to COVID-19 and for trademark applications for marks used for certain medical products and services used in connection with COVID-19.

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Navigating the Hazy Intersection of Federal and State Law on Cannibis and Advising Clients on Protecting Their Trademarks

What was once illegal is now a thriving industry. That’s right—I’m talking about cannabis. But my initial statement isn’t entirely accurate. Although Alaska, California, Colorado, Illinois, Maine, Massachusetts, Michigan, Nevada, Oregon,

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Southern District of New York Court Orders “All Remote” Bench Trial

In Ferring Pharmaceuticals Inc. et al v. Serenity Pharmaceuticals, LLC et al, 1-17-cv-09922 (SDNY 2020-05-27, Order), Chief Judge C.J. McMahon of the Southern District of New York ordered an upcoming bench trial set to begin on July 6,

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Inside Out: The Ninth Circuit Holds The Moodsters are No Batman

(This article was republished with permission by ABA Business Law Today on 6/2/2020, available here.) Certain literary or graphic characters may, in some cases, enjoy copyright protection. Think James Bond –

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No, Machines Cannot Be Inventors!

Eventually, it was bound to happen. A patent application was filed by a machine. Well, not exactly. A human being filed a patent application naming a machine as the inventor. The machine was an artificial intelligence machine described as a “creativity machine.” Its name was listed as “DABUS Invention Generated by Artificial Intelligence.” The invention was called “Devices and Methods for Attracting Enhanced Attention.” The human’s name was Stephen L.

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The Ninth Circuit Affirms Ruling that COMIC-CON isn’t Generic for Comic Conventions

The battle started almost six years ago. A Utah-based company known as Dan Farr Productions (“DFP”) decided to use San Diego Comic Convention’s (“SDCC”) registered trademark COMIC-CON in conjunction with its own comic and popular arts convention,

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SCOTUS Considers Whether Adding a Top-Level Domain Makes a Generic Term a Protectable Trademark

On Monday, May 4, 2020, the Supreme Court of the United States heard oral argument in United States Patent and Trademark Office v. Booking.com, B.V.  For the first time in the history of the Court,

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Trademark Infringers Beware – Willfulness Not Required for Disgorgement

For some time there has been a split among the Federal circuits as to whether evidence of willfulness is required in order to award disgorgement of profits for trademark infringement under Section 1125(a) of the Lanham Act. 

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Supreme Court Limits Appeals to Prevent More Bad Patents

A party accused of infringing a patent may challenge the validity of the patent in the federal court infringement litigation or in separate administrative proceedings in the Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB).

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Burbank High School Jumps with Glee over Copyright Victory

Burbank High School runs a music program that reportedly provided the inspiration for the hit TV show, Glee. It is nationally known for the competitive show choirs its students participate in as part of the program.

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Patent, Trademark, and Copyright Deadlines Extended Due to COVID-19

On March 31, 2020, the U.S. Patent and Trademark Office announced that, pursuant to the Coronavirus Aid, Relief, and Economic Security Act, certain deadlines for patent and trademark applications would be extended. 

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Federal Circuit: Sequenom’s Fetal DNA Claims Are Patent Eligible

An unborn baby’s DNA (“fetal DNA”) can be used to determine the sex of the baby as well as to test for conditions such as Down’s syndrome.  In the past, procedures to get samples of fetal DNA for testing involved sticking a large needle through the abdominal wall and into the uterus of the mother to obtain amniotic fluid,

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SCOTUS Rules That North Carolina is Protected from Copyright Infringement Claims by Sovereign Immunity

The Supreme Court of the United States has held that the state government is free to infringe copyrights without fear of retribution. In Allen v. Cooper, the Supreme Court decided whether the state of North Carolina could be held liable under the Copyright Act for infringing filmmaker Frederick Allen’s copyright relating to Queen Anne’s Revenge.

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Stay Away; No Trademark for Social Distancing and Other Informational Terms

Call me a pessimist, but it was surprising to me when I recently checked the USPTO trademark database that I did not find an application to register “Social Distancing” for some other novelty item. 

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District Court Stays Discovery Deadlines Because of Coronavirus Threat but Keeps Markman Hearing on Calendar

On March 6, 2020, a Central District Court in UPL NA Inc. f/k/a United Phosphorous, Inc. v. Tide International (USA), Inc. et al, 8-19-cv-01201 (CDCA 2020-03-06, Order) (Ronald S.W. Lew), issued an order that may become more common place across courts. 

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YouTube and the First Amendment

Is the privately-owned YouTube site really a “state actor” subject to judicial scrutiny under the First Amendment? That’s the claim made in a lawsuit by Prager University, which is not really a university.

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Google’s Servers Do Not Constitute a Regular and Established Place of Business for Patent Venue

It has become commonplace for companies such as Google to use local servers to provide faster service to customers.  This practice has raised the question as to whether those local servers constitute “a regular and established place of business” for the purposes of establishing venue in patent infringement suits in the districts where the servers are located.

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IPRs Cannot Be Used to Challenge Patents for Indefiniteness

There are a number of requirements that must be met for an invention to be patentable. The invention must be novel (unique) and nonobvious (i.e., a person skilled in the field of the invention would not have found the invention obvious based on the existing knowledge in the field).

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Lil Nas X Takes His Horse to the Old Town Road and Moves to Dismiss Producers’ Copyright Infringement Action Concerning “Rodeo”

Lil Nas X broke onto the scene in spectacular fashion when he released the viral sensation “Old Town Road,” featuring Billy Ray Cyrus. Old Town Road broke the prior record for most consecutive weeks at No.

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No Trademark Protection In Book or Movie Titles?!?

Generally, the title to a single motion picture is not entitled to trademark protection.  This is the same for the title to single books, songs and other singular creative works.  Most non-trademark attorneys are surprised when I tell them this. 

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Inequitable Conduct Can Render all Patents in a Patent Family Unenforceable through Infectious Unenforceability

In Guardant Health, Inc. v. Foundation Medicine, Inc., 1-17-cv-01616 (DDE 2020-01-07, Order), the Court rejected the Plaintiff’s argument that an inequitable conduct claim must be related only to the prosecution of the patent-at-issue in ruling on plaintiff’s motion to dismiss defendants’ infectious unenforceability counterclaims. 

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Is Your Competitor Objectionable? The Scope of Immunity Under the Communications Decency Act

In February 1996, faced with increasing public concern about the availability of pornography on the internet, as well as recent court decisions that seem to deter efforts to filter out such content,

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Copying by Competitors is Evidence of Nonobviousness of an Invention

The Patent and Trademark Office (PTO) may reject a patent application on several different grounds.  One of those grounds is obviousness.  Under 35 U.S.C. § 103, if an invention is obvious to a person of ordinary skill in the art,

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Is a Copyright Notice Sufficient Evidence a Textbook Is a Printed Publication for Institution of Inter Partes Review?

To use a textbook or other reference to challenge the validity of a patent in a petition for inter partes review (“IPR”), the textbook must have been “publicly accessible” prior to the date of the challenged patent to qualify as a printed publication.

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Disney Seeks to Stop the Rise of Infringing Baby Yoda Goods on Etsy

When Disney chose to delay the production and release of merchandise related to The Child—commonly referred to as Baby Yoda—from its hit series, The Mandalorian, it created a significant opportunity for unlicensed fans to create and sell such merchandise.

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Player/Haters May Be Original Afterall

In the early 2000’s, an all-girl band called 3LW performed a song called “Playas Gon’ Play,”  which was written by Sean Hall and Nathan Butler.  “Playas Gon’ Play” was initially released in May,

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U.S. Supreme Court Strikes down USPTO’s Request for Attorney’s Fees

In a unanimous ruling, the U.S. Supreme Court in Peter v. NantKwest, case number 18-801, struck down the U.S. Patent and Trademark Office’s (USPTO) recent and often-criticized effort to recoup its legal fees –

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Challenging a Trade Secret Injunction? Better Come Loaded For Bear

One of the most common forms of relief sought in trade secret litigation is an injunction preventing the defendants from using or disclosing the plaintiff’s trade secret information.  Although temporary restraining orders and/or preliminary injunctions may be obtained that are in place during the lawsuit,

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Patent Priority Dates Must Be a Priority!

The priority date of a patent is an important aspect in protecting intellectual property. The priority date is the earliest possible filing date that a patent application is entitled to rely on;

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Online Gaming Case Addresses Trigger for One-Year IPR Filing Deadline

  When sued for patent infringement, a defendant can still petition for inter partes review (“IPR”) of the asserted patent at the United States Patent and Trademark Office (“USPTO”) if the petition is filed within one year of service of the complaint. 

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OK, BOOMER: Fox Media Seeks Registration of the Viral Phrase From the USPTO

If you’re plugged into the digital world and its constantly emerging meme trends, you’ve probably encountered various “OK, Boomer” memes by now. If you’re unfamiliar with the trend, here is a brief synopsis.

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Order in Netflix Lawsuit is a Reminder of the Bounds of Copyright Protection

Virginia Vallejo, a well known Colombian journalist and media personality, authored the memoir “Loving Pablo, Hating Escobar”.  The book is a factual account of her romantic relationship with Pablo Escobar and a chronicle of the rise of the Colombian drug cartel.

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Federal Circuit Holds Administrative Patent Judges Appointments Unconstitutional

In Arthrex Inc. v. Smith & Nephew Inc. et al., case number 18-2140, the U.S. Court of Appeals for the Federal Circuit recently considered whether the appointment of the Board’s Administrative Patent Judges (“APJs”) by the Secretary of Commerce,

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What Happens When the Intellectual Property Laws Clash with the Antitrust Laws?

Should a company be required to license its patents to a competitor?  That’s one question that arises when intellectual property law and antitrust law intersect. The Sherman Act, section 1, prohibits concerted action (agreements,

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When Does A Patent Expire? Ask the Federal Circuit!

Before 1995, the term of a U.S. utility patent was 17 years from the day the patent issued.  In 1994, the federal statutes were changed to make the patent term 20 years from the effective filing date of the patent application. 

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PTAB Invalidates Data Privacy Risk Assessment Patent

Many resources are being devoted to preventing data breaches and protecting privacy.  In fact, patents have issued on various approaches.  But are those approaches really patentable?   In a recent challenge to OneTrust’s patent,

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Counterculturalist Banksy to Defend His Intellectual Property in a European Cancellation Proceeding

If you’re familiar with Banksy, you know he’s the epitome of counterculturalism. For those of you who aren’t familiar with Banksy, he is an anonymous England-based street artist, vandal, political activist,

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Compliance Deadline for California’s New Privacy Act Coming Up Fast; Are You Ready?

The deadline for business to implement compliance with the California Consumer Privacy Act is just around the corner and chances are most businesses are not ready. On June 28, 2018, Governor Brown signed into law the California Consumer Privacy Act of 2018. 

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Federal Circuit Holds That Claim Language Can Limit the Scope of a Design Patent

In Curver Luxembourg SARL v. Home Expressions Inc., case number 18-2214, the U.S. Court of Appeals for the Federal Circuit recently held that the claim language of a design patent can limit its scope where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.

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LinkedIn Profiles and the Applicability of the Computer Fraud and Abuse Act

LinkedIn is a popular professional networking website with more than half a billion members. Many of its users, in an effort to enhance their networking capabilities, make their profile public and available to anyone to review their personal details such as their employment,

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Landlords – Watch out for Trademark-Infringing Tenants!

Landlords whose tenants sell counterfeit goods can be liable for trademark infringement if they have knowledge of the infringing acts or are willfully blind to the infringement. In Luxottica Group v.

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Federal Circuit Invalidates Garage Door Opener Patent Because It Is an Abstract Idea

Have you ever driven away from your home and then had that irritating doubt in your mind as to whether you remembered to close your garage door? I know I have.

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The USPTO Denies Tom Brady’s Application to Register TOM TERRIFIC

The USPTO recently refused legendary quarterback Tom Brady’s application to register the mark TOM TERRIFIC. If you’re like me, you’re wondering why Tom Brady would want to register such a trademark.

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Supreme Court Ruling In Pirate Ship Copyright Case Could Sink State Immunity

The Supreme Court is set to hear the case of Allen v. Cooper which addresses the constitutionality of the Copyright Remedy Clarification Act (“CRCA”). The purpose of the CRCA is to abrogate sovereign immunity enjoyed by States and State actors under the Eleventh Amendment for claims of copyright infringement.

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Federal Circuit Holds IPR Proceedings on Pre-AIA Patents is Not an Unconstitutional Taking Under the Fifth Amendment

In CELGENE CORPORATION v. PETER, the Federal Circuit recently affirmed the PTAB’s decisions finding appealed claims obvious. However, more importantly, the Federal Circuit also held that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.

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Ninth Circuit Inquiry on Non-Competes Could Have Huge Implications

The Ninth Circuit recently asked the California Supreme Court to provide it with guidance concerning certain types of non-compete provisions that could have huge ramifications for California’s business environment.  In essence,

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Do Your Homework Before Suing for Patent Infringement!

The federal patent laws provide for an award of attorneys’ fees to the prevailing party in exceptional patent infringement cases.  35 U.S.C. §285.  An exceptional case is determined based on the totality of the circumstances. 

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Rule Change Requires U.S. Counsel for Foreign-Domiciled Trademark Applicants

The United States Patent and Trademark Office (the “USPTO”) explains that “A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination,

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Goodbye Majestic Yosemite Hotel, Welcome Back Ahwahnee Hotel

A few years ago, when the concessionaire for Yosemite National Park (the “Park”), Delaware North, was informed that the Park planned to consider other concessionaires, such as Aramark, Delaware North responded in shocking fashion.

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Supreme Court Decision Will Have Huge Economic Impact on Trademark Infringement Damages

The Supreme Court has agreed to resolve a circuit split over when a court can order the payment of an infringer’s profits to a successful plaintiff as a measure of damages. 

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Federal Circuit Sets Higher Standard for Early Alice Motions

In Cellspin Soft, Inc. v. Fitbit, Inc. et. al., the Federal Circuit recently held that a lower court wrongly invalidated four patents under Alice because they contain an inventive concept. The four patents at issue share the same specification and generally relate to connecting a data capture device,

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Web Domains and The Forgotten Tort of Trespass to Chattels

California case law over the last few years is replete with instances where a new and/or small business has one of their employees take responsibility for various IT activities such as setting up the company website and/or email domains. 

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When is an Invention Obvious?

To be patentable, an invention must satisfy two key requirements, as determined by the U.S. Patent and Trademark Office (PTO).  First, the invention must be novel.  This means that the same invention cannot have been disclosed in a single prior art reference. 

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Supreme Court: Federal Government Cannot Challenge Patents in PTAB

The validity of a patent can be challenged in four different types of proceedings: ex parte reexamination, inter partes review, post grant review, and covered business method review. An ex parte reexamination is initiated by any person or by the PTO’s director to request that the PTO internally reexamine the claims of the patent based on prior art.

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Potential Copyright Owners Beware: Make Sure Your Copyright Registrations Are Accurate!

Normally, a copyright registration certificate constitutes “prima facie evidence of the validity of a copyright and of the facts stated in the certificate.”  17 U.S.C. §410(c).  But what happens if that certificate contains knowingly inaccurate information?

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Although the Battle of King’s Landing is Over and the Game of Thrones has Ended, the War to Protect HBO’s Intellectual Property Rages on

If your heart is beating and your lungs are taking in oxygen, you know that Game of Thrones recently reached its epic conclusion. It’s sad, but true. After eight glorious seasons,

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If You Can’t Describe It, You Can’t Patent It!

One of the requirements for obtaining a patent is the written description requirement – the specification must include a written description of the invention. 35 U.S.C §112(a).  This requirement means that the specification must fully disclose what the invention is. 

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U.S. Supreme Court Allows App Store Anti-Trust Class Action to Proceed Against Apple

In APPLE INC. v. PEPPER ET AL., case number 17-204, the United States Supreme Court considered a case alleging Apple has monopolized the retail market for the sale of apps and has unlawfully used its monopolistic power to charge consumers higher-than competitive prices.

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Allegiant Airlines Tips its Hand Regarding Las Vegas Stadium Rights

If you’re a fan of branding and sports, you may have wondered who will affix their name to the Raiders’ new stadium in Las Vegas. The construction is underway, but the team has yet to announce whose name the stadium will bear.

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Hidden Trademark Landmines in Comparative and Compatibility Advertisements

Nespresso has filed a lawsuit against Jones Brothers Coffee Distribution Company alleging trademark and trade dress infringement. In support of its trademark infringement claim, Nespresso alleges that Jones Brothers’ use of the words “Nespresso Compatible” in connection with its coffee capsules will cause consumers to believe that the Jones Brothers product is endorsed and/or sponsored by Nespresso because “Nespresso Compatible” is used prominently and without a disclaimer nearby.

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Some at the PTAB Think Textbooks Are Not Printed Publications

Shockingly, some at the Patent Trial and Appeal Board (“PTAB”) think textbook publishers who include dated copyright notices don’t actually publish the textbooks that year! Further, would you have imagined an argument that textbooks aren’t printed publications?

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Do You Know Where The Photos For Your Website Come From?

Many businesses rely on their websites to promote their company and drum up business. Having a “professional” looking web page is considered a must and companies spend a lot of money in creating and maintaining their web presence.

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Are Rules for Playing a Game Patentable?

A lot of things are patentable.  Under 35 U.S.C. §101, machines, articles of manufacture, processes, and compositions of matter (including new chemical compounds) are patentable.  But some things are not:  the exceptions are laws of nature,

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Attorney Fees for Successful Defense of IPR May Not Be Recovered as Damages under 35 U.S.C. § 284

On March 25, 2018, the District Court in Nichia Corporation v. VIZIO, Inc., Case No. 8-16-cv-00545 (CACD 2019-03-25, Order), granted defendant’s motion to preclude plaintiff’s damages expert from testifying that plaintiff should recover,

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SCOTUS to Decide if Trademark Licensees Lose Their Rights When the Licensor Becomes Insolvent

The Supreme Court has granted review in the matter known as Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, where it will decide whether a licensee loses its right to use a licensed trademark if the licensor files bankruptcy and the bankruptcy trustee chooses to reject the licensor’s license agreement.

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Dr. Seuss and Fair Use, What 20+ Years Will Do!

Over twenty years ago, the Ninth Circuit decided the case of Dr. Seuss Enterprises., LP v. Penguin Books USA, Inc.  That case involved a copyright infringement lawsuit brought by Dr. Seuss over a book entitled The Cat NOT in the Hat!

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Are Patent Applicants Required to Pay USTPO Attorneys’ Salaries, Win or Lose?

The United States Supreme Court granted a writ of certiorari in Iancu v. NantKwest to determine whether a patent applicant, win or lose, must pay the salaries of the United States Patent and Trademark Office’s (“USPTO”) in-house attorneys in district court actions challenging the rejection of patent claims by USPTO patent examiners.

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Supreme Court: File Your Copyright Application!

This week, the Supreme Court resolved a split in the circuits regarding an issue in copyright law that affects copyright owners in California.  Until now, the law in the Ninth Circuit was that a copyright owner could file suit for infringement as soon as they filed a copyright application in the Copyright Office. 

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Employee Non-Solicitation Provisions Under Attack

Companies have a number of tools available to them to help protect their intellectual property, including trade secret and other proprietary information that give them a competitive advantage. Many employers utilize detailed provisions in their employee handbooks and employment agreements to protect this information.

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Fresh Prince’s Alfonso Ribiero Denied Copyright Registration for the Carlton Dance

As we previously wrote on this blog, Alfonso Ribiero, better known as Carlton Banks from the Fresh Prince of Bel Air filed suit against multiple videogame publishers, including the publisher of NBA 2K and Fortnite for featuring avatars that perform his signature “Carlton Dance.” Ribiero’s case,

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The Federal Circuit Clarifies Rules For Importation of Limitations From the Specification During Claim Construction

In Continental Circuits LLC v. Intel Corp. et al., case number 18-1076, the U.S. Court of Appeals for the Federal Circuit, in a precedential opinion, recently clarified the rules for the incorporation of a limitation from a patent’s specifications into the claims during claim construction. 

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Unprotectable Generic Trademarks + Top-Level Domains = Protectable Trademarks

Generic trademarks are those which, due to their popularity and/or common usage, have become synonymous with the products or services. Such trademarks include Kleenex, Band-Aid, Jeep, Aspirin, and Cellophane. Such marks,

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It’s Not Water under the Bridge – “Fiji Water Girl” Sues Water Company Over Cardboard Cutout

For those of you that watched the red carpet happenings at last year’s Golden Globe Awards, you may have noticed the “Fiji Water Girl”, a model standing ready to keep Hollywood glitterati hydrated with bottles of Fiji water,

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District Court Rules Certain Prior Art References Are Precluded Under IPR Estoppel

On December 28, 2018, the Court in The California Institute of Technology v. Broadcom Limited et al., Case No. 2:16-cv-03714-GW-(AGRx), issued a Final Ruling on Plaintiff’s Motion for Partial Summary Judgment of Validity under 35 U.S.C.

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In-Game “Carlton Dance” Routine Triggers Lawsuit From Fresh Prince Actor Alfonso Ribeiro

Actors gain notoriety for different reasons.  For some, it’s due to a physical characteristic or an iconic character portrayal.  For Alfonso Ribeiro, it’s a dance.  The dance, which has become known worldwide as the “Carlton Dance,” is a corny dance number performed by Ribeiro’s character Carlton Banks on the 90’s sitcom “The Fresh Prince of Bel Air.”   That dance is now the center of a copyright infringement lawsuit Ribeiro filed against Epic Games and Take-Two Interactive. 

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Federal Circuit Narrows Reach of Obviousness-Type Double Patenting

Non-statutory, or obviousness-type, double patenting (“ODP”) is a judicially created doctrine that prohibits an inventor from effectively extending the monopoly on a patented invention by applying for a later patent with claims that are not “patentably distinct” from the claims in the earlier patent. 

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Royalties, Preemption and Attorney’s Fees

The Ninth Circuit recently was called upon to decide awarding attorney’s fees in a case where artists were suing for unpaid royalties under the California Resale Royalties Act (“CRRA”).  In the case,

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What’s New This Christmas?

Every year about this time, I search the PTO database for any new patents on inventions related to Christmas. This year turned up several. Interestingly, most of the ones I looked at issued at October and November of this year.

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Court Finds No Personal Jurisdiction Over Foreign Defendant Based On U.S. Subsidiary Under Stream of Commerce and Agency Theories

In University of Massachusetts Medical School et al v. L’Oreal SA et al, 1-17-cv-00868 (DED 2018-11-13, Order) (Sherry R. Fallon), the magistrate judge recommended granting a foreign parent company defendant’s motion to dismiss plaintiffs’ patent infringement action for lack of personal jurisdiction where its American subsidiary introduced the alleged accused products into the stream of commerce and the foreign defendant’s corporate structure is not sufficient to establish personal jurisdiction because “mere ownership of a subsidiary does not justify the imposition of liability on the parent.” The primary plaintiff in the case is the University of Massachusetts Medical School,

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Amarillo Natives Hold San Diego Padres’ Double A Affiliate Team Name Hostage

The San Diego Padres recently took control of the Amarillo minor league baseball organization. The organization will serve at the Padres’ Double A affiliate. In the spirit of new beginnings, the organization recently held a public naming contest to determine its new mascot.

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TTAB’s Refusal To Register Trademark Reveals Important Lesson For Trademark Attorneys

The Trademark Trial and Appeals Board’s recent ruling in In re Productos Verde Valle, S.A. de C.V. upholding a trademark examiner’s refusal to register the mark SONIA for “sauces; chili sauce;

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IP Challenges Again Take the Stage at the U.S. Supreme Court

Intellectual property disputes will again take their place on stage at the U.S. Supreme Court this term when the court addresses at least two IP questions.  1.  Can the government challenge patents under the America Invents Act (“AIA”)? 

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Trademark Registration and the Presumption of Secondary Meaning

The U.S. Court of Appeals for the Federal Circuit was recently tasked with reviewing determinations made by the International Trade Commission (“ITC”) relating to trade infringement claims brought by Converse, Inc.

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Ordering Pizza is Not Patentable!

Some things are not patentable: laws of nature, natural phenomena, and abstract ideas.  The Supreme Court has long held that inventions falling within these categories are not patentable; they are patent-ineligible subject matter. 

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District Court Grants Motion For More Definitive Statement Because Patent Infringement Claim Involved Complicated Technology

In Lexington Luminance LLC v. Service Lighting and Electrical Supplies, Inc. d/b/a 1000bulbs.com, 3-18-cv-01074, the District Court for the Northern District of Texas denied defendant’s motion to dismiss for failure to state a claim,

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SCOTUS Will Decide What the Copyright Act Means by “Registered.”

Any work that is entitled to copyright protection automatically receives protection when it is fixed in a tangible medium of expression. However, in order to benefit from the Copyright Act, the owner must “register” his or her work with the United States Copyright Office.

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The Supreme Court: Cases to Watch and Missed Opportunities

In recent years, the U.S. Supreme Court has considered a number of intellectual property and related cases, but many issues remain unresolved.  Therefore, it is important to look both at the cases currently before the U.S.

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The Essential Purpose of the Short Form Copyright Assignment

Recently, a client asked why we included a short form option agreement and a short form assignment agreement as an exhibit to a long form literary option agreement.  I am sure that many a corporate transactional attorney has similarly wondered why a short form copyright assignment agreement is included within the package of numerous M&A transaction documents. 

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Michael Jackson, Commercial Speech and Anti-SLAPP Motions

A California appellate court recently dealt a blow to fans of Michael Jackson who brought a class action alleging unfair competition and violations of the Consumers Legal Remedies Act (“CLRA”) in connection with the sale of an album titled simply “Michael” following the singer’s death. 

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Court Finds Prior Finding of No Literal Infringement Bars Later Claim for Infringement Under the Doctrine of Equivalents

In Galderma Laboratories, LP et al v. Amneal Pharmaceuticals LLC et al, 1-16-cv-00207 (DED August 31, 2018, Order) (Stark, USDJ), Judge Stark of the District of Delaware recently found that a plaintiff was collaterally estopped from pursuing claims for patent infringement of two drug patents under a doctrine of equivalents theory based on a finding of no literal infringement in a prior case even though a doctrine of equivalents theory was not asserted in that case.

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Accused Patent Infringers – Don’t Wait to File an Inter Partes Review!

An inter partes review (IPR) is one of the ways a party can challenge a patent in the Patent and Trademark Office. This procedure was added by the America Invents Act,

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Procter & Gamble Seeks to Register Text Message Lingo Such as LOL and WTF

Procter & Gamble, the international consumer packaged goods conglomerate, recently filed a slew of trademark applications with the United States Patent and Trademark Office, seeking to register WTF, LOL, FML, and NBD for use in conjunction with certain consumer goods.

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Navigating Username Jacking

Have you ever had the experience of attempting to register a social media account in the name of your business only to find that your preferred name is taken? Often, it’s just the case of another business with the same name having registered that account first.

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Patent Litigation Venues: Is a Computer Server Room Really a Place of Business?

The U.S. Supreme Court’s in TC Heartland v. Kraft Food, and subsequently the Court of Appeals for the Federal Circuit in In re Cray Inc., addressed where patent litigation can be filed under the patent venue statute,

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“Honey Badger Don’t Care”: The Rogers test and Trademark Infringement

Christopher Gordon is a comedian who created a viral video about the honey badger with the notable catch phrase, “Honey Badger Don’t Care,” among others. He later trademarked that phrase and sued greeting card companies for trademark infringement for using that phrase,

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Federal Circuit Limits Patent Infringement Damages

The Federal Circuit Court of Appeals has taken aim at sky-high patent infringement damages. In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., 2018 U.S. App. LEXIS 18177 (July 3, 2018),

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Federal Circuit Affirms Tribal Immunity Does Not Apply in Inter Partes Review Proceedings Before the USPTO

In Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc. et al., the U.S. Court of Appeals for the Federal Circuit held that Native American tribal sovereign immunity does not apply in Inter Partes Review (“IPR”) proceedings at the Patent Trial and Appeal Board (“PTAB”) arm of the USPTO.

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Conor McGregor Returns to Combat in the Intellectual Property Arena

Conor McGregor doesn’t back down to anyone. He knocked out the once unbeatable Jose Aldo in 13 seconds. He was the first UFC fighter to simultaneously hold titles in two different weight divisions.

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Recovery of Lost Foreign Profits for Infringement of a U.S. Patent

While a U.S. patent provides the patent owner with a monopoly to prevent others from “making, using, offering for sale, or selling the invention throughout the United States,” there are significant limits to the extraterritorial application of U.S.

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Right of Publicity Risks For Producers Still Uncertain

Often writers base characters on complete fiction, drawing from their imagination to build a character’s various facets. However, on certain occasions a writer may base a character on a living person.

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Ninth Circuit Rejects “General Possibility” of Infringement Theory

Today’s real estate industry relies heavily on the use of websites displaying photographs of properties for sale to entice buyers. Many of the photographs on these sites are taken by professional photographers who license the use of their photos and retain the copyrights to them.

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Ninth Circuit Denies Copyright Protection to Monkeys

Does anyone think that a monkey has standing to bring a copyright infringement lawsuit? In Naruto v. Slater, 888 F.3d 418 (9th Cir. 2018), the Ninth Circuit Court of Appeals said no,

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SAS Institute, Inc. v. Iancu Has Affected Cases in Federal Courts in Addition to Those at the PTAB

On April 24, 2018, the Supreme Court issued its ruling in SAS Institute, Inc. v. Iancu, which held that the Patent Trial and Appeal Board (“PTAB”) arm of the United States Patent and Trademark Office (“USPTO”) must issue a final written decision addressing each and every patent claim challenged in an Inter Partes Review (“IPR”) petition if review is granted.

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The Process: Who Does it Really Belong to?

A few years ago, before the 76ers returned to playoff glory, the NBA’s Philadelphia 76ers’ ownership and front office began utilizing the phrase “Trust the Process” to represent their journey back to the top.

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Three-Stripes and the Burden of Irreparable Injury

adidas and Skechers are athletic shoe and apparel manufacturers who have a long history of litigation between them arising out of claims that Skechers has repeatedly infringed upon adidas’ trademarks. In Adidas America,

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New ITC Rules for Patent Infringement Cases: Adding Fuel to the Ultimate Rocket Docket

The United States International Trade Commission (“ITC”) is a Federal agency that deals with matters involving trade. Among its many responsibilities, the ITC investigates a variety of issues related to trade including investigating and adjudicating cases involving imported products that allegedly infringe intellectual property rights.

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USPTO Proposes Change in Claim Construction Standard for PTAB Proceedings Under the AIA

Currently, the standard for claim construction is different in AIA reviews before the United States Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB) than in proceedings in federal district courts and the International Trade Commission (“ITC”).

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U.S. Supreme Court Rules America Invents Acts Reviews by the Patent Trial and Appeal Board arm of the Patent and Trademark Office are Constitutional

In a 7-2 opinion, the U.S. Supreme Court ruled in OIL STATES ENERGY SERVICES, LLC v. GREENE’S ENERGY GROUP, LLC that inter partes review does not violate Article III or the Seventh Amendment of the Constitution.

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The DMCA’s Safe Harbor Provision and Policing Repeat Infringers

The Ninth Circuit recently revisited the issue of the applicability of the safe harbor provision of the Digital Millenium Copyright Act (“DMCA”) in the case Ventura Content, Ltd., v. Motherless, Inc.,

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Patent Myths Corrected – Part One

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts.

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How To Protect Your Clients’ IP

A business’s intellectual property may be its most valuable asset. Whether it is biotechnology, trade names, business methods, or computer software, intellectual property should be protected to the greatest extent possible in order to maximize the value of the business.

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LegalZoom Allegedly Engages in the Unauthorized Practice of Trademark Law

According to a complaint filed in the United States District Court for the Northern District of California by California law firm LegalForce RAPC Worldwide, LegalZoom engages in the unauthorized practice of law when its non-attorneys instruct customers on how to register trademarks.

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Hall v. Swift: Nothing Original About a Player Hater

“Cause the players gonna play, play, play, play, play And the haters gonna hate, hate, hate, hate, hate Baby I’m just gonna shake, shake, shake, shake, shake Shake it off / Shake it off Heartbreakers gonna break,

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U.S. District Court for the Eastern District of Texas Finds Defendants Have Not Committed Acts of Infringement Sufficient to Establish Venue

The U.S. Supreme Court’s May 22, 2017 ruling in TC Heartland v. Kraft Foods held that personal jurisdiction alone does not convey venue for patent cases under the patent venue statute.

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Do Secret Sales Bar Patents?

There is some confusion about what constitutes an “on-sale bar” in patent law. The on-sale bar, set forth in 35 U.S.C §102, prohibits a patent if the invention sought to be patented was offered for sale or sold more than one year before the patent application was filed.

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Federal Circuit Weighs in on Reasonable Royalties as Patent Infringement Damages

In Exmark Manufacturing Company v. Briggs & Stratton Power Products, 2018 U.S. App. LEXIS 783 (Fed. Cir. 2018), the Federal Court of Appeals addressed patent infringement damages based on a reasonable royalty.

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Surviving Alice Challenges to Patent Claims

The Court of Appeals for the Federal Circuit just highlighted another approach plaintiffs can use to overcome early challenges to the validity of patent claims under 35 U.S.C. §101.   What is that approach? 

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Stone Brewing Fires the Shot Heard Round the Brewing World

The fight between craft brewers and Big Beer (i.e. MillerCoors & Budweiser) has been ongoing for years. Ever since craft beer came to prominence in the late ‘90s, it has been stealing Big Beer’s share of the marketplace.

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Copyright Infringement and Third Party Software Support

A recent case out of the Ninth Circuit, Oracle USA, Inc. v. Rimini Street, Inc. (July 13, 2017), illustrates some of the risks third party software vendors run concerning copyright issues. 

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U.S. District Court for the Central District of California Makes Rare FRAND Royalty Rate Determination

The U.S. District Court for the Central District of California recently issued its opinion in TCL Communications v. Ericsson (SACV 14-341 JVS(DFMx) and CV 15-2370 JVS (DFMx)) on standard-essential patents and whether a commit to license them was on terms that are fair,

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Ruling in Lawsuit Over Fox’s Use of “Empire” Extends Permitted Use of Third-Party Trademarks

Did you ever wonder why some movies use fictional names for companies or sports teams? TV and movie producers intentionally avoid using brand or company names in order to avoid any potential of an entanglement with a trademark owner. 

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Contingent Patent Ownership is Not Sufficient for Federal Court Jurisdiction

There is no federal court jurisdiction for disputes involving patents where the claimant does not actually own the patents. The possibility that one might own a patent, if a contingent future event occurs,

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Federal Circuit Clarifies Waiver of Venue Issue in Light of TC Heartland, but Issues Still Remain For District Courts to Address

The U.S. Supreme Court’s May 22, 2017 ruling in TC Heartland v. Kraft Foods held that personal jurisdiction alone does not convey venue for patent cases under the patent venue statute. 

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Would Glue Maker’s Trademark Claim Stick Against Pot Strain

According to cannabis folklore, cannabis cultivators in 2010, Josey Whales and Lone Watie  created a strain of marijuana that was so sticky, Mr. Whales, during a phone call, commented that the plant made his hands “stick to things like Gorilla Glue.”  From that,

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Call it what you want. Just don’t call it copyright infringement.

A demand letter is a formal way of telling someone, “now we got bad blood.”  Recently, a Northern California blogger received a demand letter in which Taylor Swift threatened to sue the blogger. 

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USPTO Finalizes Rule for Privileged Communications in Trials Before the PTAB

The Leahy-Smith America Invents Act (“AIA”) provided for trials before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) in inter partes reviews, post-grant reviews,

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Say Cheese: Stock Photos, Non-Exclusivity & Copyright Infringement

The Ninth Circuit recently addressed an issue as to who may pursue claims for copyright infringement concerning stock photos in the case DRK Photo v. McGraw-Hill Global Education Holdings, LLC, et al.

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Can Patent Owners Buy Sovereign Immunity?

The latest issue in the patent world is one no one would have expected – sovereign immunity. How did this issue arise? Allergan, the company that makes the dry-eye drug Restasis,

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Allegan’s Restasis Patents Invalidated by a Federal District Court Even After Transfer to Native American Tribe and Sovereign Immunity Claim.

In Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al, Case No. 2:15-cv-1455-WCB (EDTX October 16, 2017 Order), a Federal District Court recently invalidated several patents covering Allergan’s dry-eye drug Restasis. 

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Google May be a Verb, but Verb Use Alone Does Not Constitute Genericness

Just Google it. Can you Google the score? Have you Googled the restaurant’s reviews? These are all common phrases in today’s internet-reliant society, and it’s entirely due to the creation of Google and its widespread success.

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Federal Circuit Clarifies Venue Requirements for Patent Cases

Until the U.S. Supreme Court’s May 22, 2017 ruling in TC Heartland v. Kraft Foods, the Court of Appeals for the Federal Circuit and the United States district courts had interpreted the patent venue statute,

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Wine and Spirits Are not Always Confusingly Similar

Brand litigation can be extreme in the consumer products space and even more so for alcoholic beverages (legal cannabis brand owners take note and start stockpiling your war chest).  It’s not uncommon for litigation to arise whenever an alcoholic beverage brand owner believes that another alcoholic beverage brand infringes. 

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Federal Circuit: PTO Can’t Shift Burden of Proof of Patentability to Applicant

In In re Stepan Co., 2017 U.S. App. LEXIS 16246, decided August 25, 2017 the Federal Circuit Court of Appeals made it very clear that during patent prosecution, the burden of proving patent ability lies with the PTO examiner.

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Bridgestone Brands, LLC v. Firestone Public House, LLC: Battle of the Brands

Just over two months ago, Sacramento’s beloved Firestone Public House was sued by multinational conglomerate Bridgestone Brands, LLC for trademark infringement, trademark dilution, and unfair competition based upon Firestone’s use of the FIRESTONE mark.

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Court Denies Plaintiff’s Motion to Disqualify its Former Counsel as Counsel for Defendant in a Patent Litigation Action After Plaintiff Delayed Filing its Disqualification Motion for Over A Year After Discovering the Conflict.

In Eolas Technologies Incorporated v. Amazon.com, Inc., 3-17-cv-03022 (CAND August 24, 2017, Order) (Tigar, USDJ) the United States District Court for the Northern District of California recently denied plaintiff Eolas Technologies Incorporated’s (“Eolas”) motion to disqualify its former counsel,

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Patent Myths Corrected – Part Two

  My last column was the first of two columns discussing some of the most common misconceptions or myths about patents.  Here is the second part, starting with number five on my list.

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California Finally Rolling Out Its Own Cannabis Trademark Laws

California was the first state to legalize marijuana for medical use.  In 1996, California approved Proposition 215, the California Compassionate Use Act.  Two decades later, California voters approved  Proposition 64, the Control,

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Patent Myths Corrected – Part One

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts. 

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Ninth Circuit Holds that “Reverse Confusion” Need Not Be Pled with Specificity

A plaintiff seeking to prevail on a trademark infringement claim needs to establish that there is some likelihood of confusion between its mark and that of the defendant.  Generally, a plaintiff establishes that there is “forward” confusion by showing that customers believed they were doing business with plaintiff but because of a confusion in their respective marks,

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SUMMER FUN!

Because it’s summertime, I thought we should take a break from “serious” intellectual property articles.  So, instead, here are some patented inventions that you might see this summer. A baseball with a speedometer seems like a great idea.  

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Repeated Discovery Failures and Abusive Litigation Tactics Warrant Terminating Sanctions, Treble Damages, Attorney Fees and Permanent Injunction Against Defendant In Patent Litigation Case.

In TASER International, Inc. v. PhaZZer Electronics, Inc. et al, 6-16-cv-00366 (FLMD July 21, 2017, Order), a Florida District Court took the drastic step of entering a default judgment in favor of Plaintiff Taser,

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The First Amendment Protects the Trademark Registrability of THE SLANTS and THE WASHINGTON REDSKINS Irrespective of Political Correctness.

In 2014, the Washington Redskins lost a battle before the Trademark Trial and Appeal Board (“TTAB”) where the petitioner, a group of Native American activists, sought cancellation of the “Washington Redskins” trademark,

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Amazon Tips its Hand with New Trademark Application

As you likely know, Amazon is taking the world by storm. Whether it is through its convenient offering of household goods, and pretty much anything else you can imagine, to your door,

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Diddy’s @Infringement Instagram Post

In today’s age of rapid fire social media, posting to feed the ever growing hunger of a digitally connected audience has become second nature to celebrities and other influencers.  In fact,

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Offensive Trademarks Are Protected Free Speech Under the First Amendment

Simon Tam is the lead singer of the rock group call “The Slants’, which is composed of Asian-Americans.  Tam applied for federal trademark registration of the band’s name.  While the term “slants” is a derogatory term for persons of Asian descent,

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When is Making a Movie Not an Act of Free Speech?

I admit that the title of this article may be a bit deceiving.  Making films, like any other production of art, is almost always an act of free speech.  However, the Ninth Circuit was recently faced with a dilemma of determining this issue in connection with an anti-SLAPP motion brought against a screen writer who claimed that the defendants had failed to pay him for using his idea to make the film,

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Supreme Court Cuts Back Patent Owners’ Post-Sale Rights

Patent owners can no longer restrict the use of their patented products after the products are sold.  Under the doctrine of patent exhaustion, a patent owner’s rights are “exhausted” once the patent owner sells the product. 

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U.S. Supreme Court Allows Early Notice For Biosimilars

In SANDOZ INC. v. AMGEN INC. et al., the United States Supreme Court in a unanimous opinion ruled that biosimilar makers can give their required 180-day statutory notice of sales before their products win approval by the United States Food and Drug Administration (“FDA”). 

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Eagles Ltd. v. Hotel California Baja, LLC: Any Time of Year, You Can Find Infringement Here

Recently, Eagles Ltd. (the “Eagles”), the entity in control of legendary rock band The Eagles’ business affairs, filed a lawsuit against Hotel California Baja, LLC for trademark infringement. While I’m sure most of us are familiar with the Eagles’ song Hotel California,

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The Jury Is Still Out on What “Registration” Means Under Section 411 of the Copyright Act.

The Copyright Act provides that “Registration” of a copyright is a precondition to filing suit for copyright infringement.  17 U.S.C. § 411(a).  We are still trying to figure out exactly when registration occurs.

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Did the Supreme Court Just Close the Door on Eastern District of Texas Patent Plaintiffs?

For over 25 years, the Court of Appeals for the Federal Circuit and the United States district courts have interpreted the patent venue statute 28 U.S.C. §1400(b) to allow plaintiffs to bring patent infringement cases against a corporation in any district court where there is personal jurisdiction over that corporate defendant. 

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Googling Google

“I googled it …” has become ubiquitous in every day conversation. Many of us refer to “googling” as the act of searching the internet regardless of whether we use the Google search engine to do so. 

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Everything Old is New Again!* Not So!

*This line is the title of a song written by Peter Allen and Carole Bayer Sager that was performed in Bob Fosse’s movie “All that Jazz.”  The song was a hit,

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Federal Circuit Holds Non-Public Sales Can Still Satisfy the On-Sale Bar for Patents under the AIA

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the United States Court of Appeals for the Federal Circuit recently ruled that the America Invents Act’s (“AIA”) did not change the meaning of the on-sale bar provision in 35 U.S.C.

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Lawsuits are the Inevitable Cost of YouTube Success

Whenever there is a report of a YouTube creator being sued for copyright infringement, the response from the creator and the community seems to be one of shock and surprise.  The truth is,

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What Do California Wine Grapes and California Marijuana Have in Common?

When a winery wants to tell consumers the geographic source of its wine, it includes on the label the wine’s “appellation of origin.”  An appellation of origin tells the consumer where the wine grapes were grown. 

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Are the Tides Turning for Motions to Amend Claims in IPR Proceedings?

The Patent Trial and Appeal Board (“PTAB”) has rarely allowed patent owners to replace or modify claims during inter partes review (“IPR”), covered business method review, or post-grant review.  In fact,

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The Fabric of Copyright Infringement: Obtaining Summary Judgment on Copying Element

Generally, the issue of copyright infringement presents issues of fact to be decided by a jury.  However, when evidence that a design is so “substantially similar” to a copyrighted design, the trial court can find infringement as a matter of law and grant summary judgment to the copyright owner. 

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More Patent Invalidated as Abstract Ideas

Apple just escaped a $533 million jury verdict by invalidating the plaintiff’s patents on the grounds that the patents cover abstract ideas. The case is Smartflash, LLC v. Apple Inc., decided by the Federal Circuit Court of Appeals on March 1,

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U.S. Supreme Court Limits Laches Defense in Patent Cases

In SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al., the United States Supreme Court held that laches cannot be invoked as a defense against a claim for patent infringement damages brought within U.S.C §286’s 6-year limitations period. 

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Tavern on the Green Trademark Battle Round #2

The City of New York has reignited the battle over the trademark TAVERN ON THE GREEN. Last month the City of New York filed a lawsuit for trademark infringement against Tavern on the Green International LLC,

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One Is Not Enough for Patent Infringement Under 35 U.S.C. §271(f)(1)

In Life Technologies v. Promega Corporation, the U.S. Supreme Court addressed whether supplying a single component from the United States of a multicomponent invention assembled abroad constitutes patent infringement under 35 U.S.C.

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Divided Infringement – Expanding Patent Infringement Liability

In 2015, the Federal Circuit Court of Appeals cast the net of patent infringement liability even more broadly, to cover direct infringement by “divided” (or “joint”) infringement.  Akamai Technologies, Inc. v.

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Northern District of California Revises Local Patent Rules

On January 17, 2017, the United States District Court for the Northern District of California issued revisions to its Local Patent Rules requiring early disclosure of damages-related discovery and contentions. The revised rules are effective immediately in all patent cases pending in the Northern District. 

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McGregor Files for Trademark for “Conor McGregor” and “The Notorious”

Whether you like him or not, Conor McGregor’s business savvy cannot be disputed. The UFC superstar, in just over year, has become a household name known to people who may not even watch the sport.

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Star Trek Fan Film Not Fair Use

Paramount and Star Trek Fan Film Producers Settle The copyright infringement lawsuit between Star Trek fan film producer, Axanar Productions, and Paramount Pictures came to an end less than two weeks before trial. 

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Federal Circuit Requires Standing to Appeal PTAB’s Final Decisions

Although arguably foreshadowed, some may be surprised to learn that a party with the right to challenge the validity of a patent at the United States Patent and Trademark Office (“USPTO”) may not have the right to appeal an unfavorable decision. 

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COVERED BUSINESS METHODS PATENTS — NOT SO BROAD!

The Federal Circuit Court of Appeals has reminded the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office in no uncertain terms that covered business method review has limits. 

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“It’s In The Game” – Proof Issues In Software Copyright Infringement Cases

A recent Ninth Circuit decision in Antonick v. Electronic Arts, Inc. (filed Nov. 22, 2016), shows some of the proof issues that a plaintiff may encounter in prosecuting claims for copyright infringement in connection with software. 

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Law Firm Survives Disqualification Motion in Florida Patent Infringement Lawsuit

In Lanard Toys Limited v. Toys “R” Us, Inc. et al, 3-15-cv-00849 (FLMD December 16, 2016, Order) (Barksdale, MJ), a patent infringement matter in Florida District Court, the court denied defendants’ motion to disqualify plaintiff’s new counsel for simultaneously representing defendant in an unrelated case. 

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From Rogue One to Forces of Destiny: A Star Wars Intellectual Property Story

With last weekend’s release of Rogue One: A Star Wars Story, Star Wars is once again living and thriving. Rogue One opened with a most impressive $155 million opening in North America,

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Holiday Horror Series: Part 4 – HO, HO, HO! AND FA-LA-LA-LA-LA! MORE CHRISTMAS PATENTS

The last time I checked (which was a couple of years ago), I found over 900 U.S. patents in the U.S. Patent and Trademark Office’s database that had the word “Christmas” in the title. 

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Phasers Set to Stun – Star Trek and Fan Film Producers Trade Copyright Shots

Fan films and fan fiction ordinarily don’t end up being the subject of a federal court lawsuit.  Most fan fiction are creative expressions reflecting adoration of a series, film or character and the majority of copyright owners take a permissive view of fan fiction. 

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Two Key Things You Need to Know About the 2016 Federal Rule Changes

On December 1, 2016, amendments to the Federal Rules of Civil Procedure (“FRCP”) and Federal Rules of Appellate Procedure (FRAP) took effect.  While at first glance, the changes may not seem dramatic,

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Holiday Horror Series: Part 1- Could You Patent Christmas?!

The holidays are upon us.  Given that everything seems to be protected by intellectual property rights, could someone protect Christmas? The most likely candidate to try to patent Christmas would be Santa Claus. 

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Supreme Court May Cut Back Laches in Patent Infringement Cases

The United States Supreme Court is considering whether the doctrine of laches will bar a patent infringement claim filed within the Patent Act’s six-year damage limitations period set forth in 35 U.S.C.

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Federal Circuit Takes A Common Law Approach to “Abstract Idea” Determinations in Alice Cases

In Amdocs (Israel) Ltd. v. Openet Telecom Inc. et al., the U.S. Court of Appeals for the Federal Circuit recently upheld four software patents against a patent-eligibility challenge, finding that the patents do not claim an “abstract idea.”  The patent challenge was under the frame work set out by the U.S.

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Branding Buds – Still Illegal Under Federal Law

If voters in California  approve Proposition 64 which would legalize the possession and use of marijuana for recreational purposes, it is without question that the sunshine state will see a huge increase in the number of businesses within the cannabis industry.

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Weintraub Tobin’s L&E and IP Blogs recognized as “Top 100 Legal Blogs” By Feedspot Blog Reader

Weintraub Tobin’s Labor & Employment and Intellectual Property Blogs have both been recognized as a “Top 100 Legal Blogs Every Lawyer and Law Student Must Follow” by Feedspot Blog Reader! Feedspot takes into consideration 1,000’s of Law blogs from across the United States and Canada and uses search and social metrics to rank them.

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Can You Appeal the PTAB’s Decision to Institute Review of Patent Claims on Grounds Not Raised in an IPR, PGR, or CBM Petition?

The America Invents Act provided several procedures for challenging the validity of patent claims, including inter partes review (“IPR”), post-grant review (“PGR”) and covered business method patent challenges (“CBM”).  An IPR,

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Locksmith Locked Out By Communications Decency Act

The Communications Decency Act (“CDA”) provides broad immunity for “providers of interactive computer services.”  In essence, if an internet service provider falls within certain parameters, it is entitled to immunity against certain claims of liability brought under state law. 

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Website Listing of Tequila Client Work Gets PR Firm a Trademark Shot

Can the owner of renowned tequila brand Patrón prevent a former marketing and PR firm from listing it as a client on its website and discussing the services it provided?  Patrón believes it can and has sued its former marketing firm,

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Federal Circuit Rules the Patent Trial and Appeal Board Can Consider New Evidence During AIA Review Trial

On September 26, 2016, the U.S. Court of Appeals for the Federal Circuit declined to review in a unanimous en banc decision a panel Federal Circuit decision affirming that the Patent Trial and Appeal Board (the “Board”) at the Patent and Trademark Office (“USPTO”) could hear new evidence during a trial,

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Luxo Shuts the Lights Out on Disney’s and Pixar’s Merchandising of Luxo Jr.

It is no secret; the Disney Corporation is a marketing and merchandising powerhouse. It has achieved that reputation by capitalizing on almost every marketing and merchandising opportunity that comes its way.

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Animation Software Patent Survives Alice Scrutiny

The application of the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347. (2014) has made it almost impossible to patent software.  The United States Patent and Trademark Office is increasingly rejecting patent applications for software under the Alice test on the grounds that the software is an abstract idea,

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Is the Technology for Self-Driving Cars Patent-Eligible?

It sounds like a silly question, doesn’t it?  After all, self-driving cars represent innovative progress in technology, and patents are intended “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”  U.S.

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How BREXIT Will Affect Intellectual Property

As everyone knows, in June, the United Kingdom passed the BREXIT referendum (driven by British voters), voting to exit the European Union.  What affect does BREXIT have on intellectual property rights in the United Kingdom and the European Union?  

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NO ICE, PLEASE!

California’s unfair competition and consumer protection laws protect consumers from false representations about products or services.  These laws include the Unfair Competition Law (Business and Professions Code §17200, et seq.), the False Advertising Law (Business and Professions Code §17500,

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Federal Circuit Holds the PTAB Must Apply Narrower Phillips Claim Construction Standard to Patents that Expire During Pendency of Re-exam

In In re CSB-System Int’l, Inc., No. 15-1832 (Fed. Cir. Aug. 9, 2016), the Court of Appeals for the Federal Circuit recently held that patents that expire during a pending re-examination before the Patent Trial and Appeal Board (“PTAB”) should be examined under the Phillips standard of claim  construction,

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The Seattle Seahawks’ 12th Man Flies Again

If you regularly follow our publication, you may remember when I discussed the Seattle Seahawks and their use of the Texas A&M trademark “12TH MAN” over a year ago. If not,

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Small Burger Chain Has a Beef With Chipotle

Chipotle’s entry into the burger business has a Boston based small burger chain up in arms.  The Boston burger spot, which has been in operation since 2010 and goes by the name Tasty Burger,

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Wearable Technology Raises Concerns Regarding IP, Data Privacy and Data Security

When fashion fuses with high tech, we see our friends show up with trendy wearables, such as smart watches, fitness bands, and even high-tech, designer purses.  But, trendiness aside, wearables raise numerous questions for designers,

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Trademark Assignability Laid Bare

Crazy Horse was a legendary Native American chief of the Oglala Lakota tribe who lived during the second half of the 1800s.  Unfortunately today, his name may be more familiar as a brand for various products,

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INDUCED INFRINGEMENT BECOMES MORE DIFFICULT TO DEFEND

In Warsaw Orthopedic, Inc. v. NuVasive, Inc. (June 3, 2016) 2016 U.S. App. LEXIS 10092, the Federal Circuit Court of Appeals broadly interpreted the Supreme Court’s test for induced infringement, finding irrelevant the defendant’s belief that there was no infringement.

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En Banc Federal Circuit Rules A Product Must be the Subject of a Commercial Sale or Offer for Sale to Trigger On-Sale Bar

On July 11, 2016, the U.S. Court of Appeals for the Federal Circuit ruled in a unanimous en banc decision in The Medicines Co. v. Hospira Inc., Federal Circuit case number 2014-1469,

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Fair Use and Youtube – A Creator’s Take

6/25/16-  At the 7th Annual  VidCon in Anaheim, CA , Weintraub Tobin Shareholder Scott M. Hervey and Rian Bosak, Head of Network Operations Full Screen, presented  “Fair Use and Youtube- A Creator’s Take” to a standing room only audience of digital media creators and industry professionals.  

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WATCH OUT! SUPREME COURT OPENS DOOR TO TREBLE DAMAGES IN PATENT CASES!

Up until now, it has been nearly impossible for a plaintiff to recover enhanced (up to treble) damages in patent infringement cases.  The current test for enhanced damages, set forth by the Federal Circuit Court of Appeals in 2007 in In Re Seagate Technology,

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The Supreme Court Rules the PTAB and District Courts Can Continue to Apply Different Standards for Interpreting Patent Claims

Patent litigators and prosecutors have been waiting to hear whether the U.S. Supreme Court would require the United States Patent and Trademark Office (“USPTO”) to apply the same claim construction standard as the district courts. 

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Google’s Fair Use Defense Thwarts Oracle’s Attempt to Recover $9 Billion in Copyright Case

In a high-profile case, a jury recently found that Google’s use of portions of Oracle’s Java software code was allowable under the fair use doctrine and thus did not constitute copyright infringement. 

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Ninth Circuit Rejects Current Status of Music Sampling Copyright Infringement And Sets Circuit Split For The Supreme Court

On June 2, 2016 the Ninth Circuit issued an opinion in a music sampling Copyright infringement case that sets up a split between the Ninth Circuit and the Sixth Circuit which will likely send the issue to the Supreme Court.  

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New Federal Trade Secret Law Takes Effect!

So what is a trade secret?  Generally, a trade secret is information that the owner has taken reasonable measures to keep secret, derives independent economic value from not being generally known,

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Tattoo Infringement Case Against NBA 2K Game Publisher Shows Misunderstanding of Applicability of Statutory Damages

This isn’t just another tattoo-copyright infringement case.  This case raises an important lesson for all copyright claimants. The backstory: Solid Oak is a licensing firm that represents the go to tattoo artists for NBA royalty,

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Senate and House of Representatives Pass the Defend Trade Secrets Act

Senate and House of Representatives Pass the Defend Trade Secrets Act (DTSA).  First federal trade secret bill awaiting presidential signature. More details can be found at the following Forbes article:  “The New Defend Trade Secrets Act is the Biggest IP Development in Years,” dated April 28,

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FEDERAL CIRCUIT APPLIES BROADENED TEST FOR DIVIDED INFRINGEMENT

On April 18, 2016, the Supreme Court denied certiorari in Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir., August 2015) (“Akamai IV”), cert. denied, 2016 U.S. LEXIS 2768. 

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Court Orders Plaintiff to Pay Defendants’ $8 Million in Attorney’s Fees in Patent Row

Since the U.S. Supreme Court’s twin 2014 decisions in Highmark Inc. v. Allcare Health Management System, Inc. and Octane Fitness, LLC v. ICON Health & Fitness, Inc. attorney’s fees awards are becoming more common in patent cases. 

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Supreme Court Battle Set Over Prohibition of Disparaging Trademarks

Section 2(a) of the Lanham act bars the registration of “scandalous, immoral or disparaging trademarks.” The USPTO has used this applied this provision to refuse the registration of marks such as F**K PROJECT,

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Are Pins, Posts, Tweets and Likes Appropriate for Use in Selecting Jurors?

When you hear the name of someone you can’t place or don’t know much about, what do you do?  Chances are, you “Google” them.  Well that is what attorneys are doing to learn more about prospective jurors too! 

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Pre-Issuance Damages for Patent Infringement – A Very Rare Remedy

The Federal Circuit Court of Appeals recently addressed an issue of first impression: what is the “actual notice” required under 35 U.S.C. §154(d) for a patent owner to recover damages for a defendant’s infringing conduct that occurred before the patent issued?

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Apple Argues It Should Not Be Compelled to Write Software for the F.B.I.

On February 16, 2016, Magistrate Judge Sheri Pym in the United States District Court for the Central District of California issued an order compelling Apple, Inc. to provide technical assistance to the F.B.I.

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Kylie Minogue v. Kylie Jenner: A TTAB Clash of Celebrities

Kylie Jenner has finally decided to step out from behind her older sisters and get to work on her own independent ventures. In furtherance of this desire, Ms. Jenner filed numerous federal trademark applications in April and November 2015.

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The Federal Circuit Finds Foreign Sales Do Not Exhaust Patent Rights

In Lexmark International, Inc. v. Impression Products, Inc., No. 14-1617 (Fed. Cir. 2016), the U.S. Court of Appeals for the Federal Circuit decided en banc that a U.S. patent owner’s “first sale” of items in a foreign country does not exhaust the patent owner’s right to sue for patent infringement when those items are later imported into the U.S.

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Disney’s Influence on United States Copyright Law

If you’ve ever applied for, or researched copyright law, you likely learned one thing above all else: it’s not a perpetual right. So, how, you might wonder, have companies like The Walt Disney Company managed to maintain copyrights on certain creations for almost 100 years?

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Federal Circuit Limits Attorneys’ Fees in Exceptional Cases

Two weeks ago, the Federal Circuit Court of Appeals limited the factors a district court may consider in determining the amount of attorneys’ fees to award in an “exceptional” patent infringement case.

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Copyright Infringement and the First Sale Defense

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.

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

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.

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

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).

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The Federal Circuit Breathes Life into the Redskins’ Appeal

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.

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When Copying is Not Copyright Infringement

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,

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The Beef Between In-N-Out Burger and Doordash

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.

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

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.

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Why Business Methods Are Difficult to Patent

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.

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Pacifico Defends its Trademark Rights on Canadian Soil

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”),

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

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,

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Yoga and the Copyright Idea/Expression Dichotomy

Over the last half century there has been an explosion in the popularity of yoga in the United States, much of it attributable to Bikram Choudhury, the self-proclaimed “Yogi to the Stars.” In 1979,

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Does Trump Own “Make America Great Again?”

  As I frequently mention in my articles, trademark law is a much more prevalent part of the average person’s life than they realize. We are surrounded by the trademarks of numerous companies every time that we step outside,

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Patent Owners Beware: Don’t Sleep on Your Rights!

Laches, a judicially created defense based on the plaintiff’s delay and prejudice to the defendant, is a proper defense to the recovery of damages in a patent infringement suit, even though the Supreme Court ruled in 2014 that laches does not apply in copyright infringement cases.

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Tiffany & Company v. Costco Wholesale: Tiffany is far from Generic

On September 9, 2015, the United States District Court for the Southern District of New York ruled that Costco was willfully infringing Tiffany & Co.’s trademarks by selling diamond engagement rings bearing the renowned jewelry retailer’s name.

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Divided Infringement: A Stronger Sword for Plaintiffs

The Federal Circuit Court of Appeals has established a new test for “divided” patent infringement. Direct infringement of a method patent exists when a single party performs all of the steps of the claimed method.

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A Chicken Sandwich is Not Copyrightable – Really?

As reported in Law 360 and other outlets, the First Circuit has ruled that a chicken sandwich, no matter how amazingly delicious it may be, cannot be copyrighted. A Puerto Rican epicure named Norberto Lorenzana argued that he created the “Pechu Sandwich” which is “a fried chicken breast patty,

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Hidden Pitfalls of Old Non-Compete Provisions

Companies and employers around the country seek to protect their intellectual property by, among other things, using non-compete provisions in employment agreements. Generally, these provisions are intended to prevent an employee from soliciting or doing business with a former employer’s customer/clients over a set period of time and/or in regard to a set geographical area.

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Hey, that’s my beer! I think…

In the bustling craft brew economy brewers are faced with new issues every day. One that recently came to my attention arises when the craft brewery’s brewmaster or head brewer decides to either start his own craft brewery,

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Federal Circuit Continues to Nix Financial Patents

Patents covering software for use in the financial industry are increasingly being invalidated by the courts. Because of the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S.

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Air Jordan Grounded in China

By: Intellectual Property Group Michael Jordan is considered by many to be the greatest basketball player of all time. Beyond his five MVP trophies and six NBA championship rings, however Jordan also was the one of the most widely marketed athletic personalities in history.

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Will Lenz v. Universal Make Online Copyright Enforcement More Challenging for Copyright Owners

Pending before the 9th Circuit is a case which may change the landscape for online copyright protection. The case, Lenz v. Universal, may make it more difficult for copyright owners to protect against infringement in today’s environment of hyper infringement.

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Patent Infringement and Appellate Jurisdiction

In general, any appeal from a civil action involving claims of patent infringement must be made to the Federal Circuit in Washington, D.C. A recent case from the Ninth Circuit, Amity Rubberized Pen Company v.

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Lloyd’s Likeness: A Hat Trick to Superstardom and Mega Endorsements

Unless you have been living under a rock for the last week, you know who Carli Lloyd is. If, however, you do not, she is the reigning World Cup MVP for Team USA.

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Keep Calm and Sip Some Sparkling Wine

By: Intellectual Property Group Many who enjoy champagne have noticed that their favorite cuvée has quietly changed its label. Many of the world’s bottles of bubbly now indicate that they contain “sparkling wine” when they used to be “champagne.” Those who enjoy Basmati rice or Camembert cheese also have noticed changes to the names of their favorite products.

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Everything Old is New Again: Post-Expiration Patent Royalties are a Bad Idea!

On Monday, the United States Supreme Court upheld the longstanding case law that prohibits a patent owner from receiving royalties after a patent has expired. In Kimble v. Marvel Entertainment, LLC (June 22,

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Richard Prince Once Again Pushes the Limits of Fair Use

By: Scott Hervey Prince is a practitioner of what has come to be known as “appropriation art,” that is, art – mainly visual art – that incorporates and utilizes third-party images and photographs,

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California Homegrown: Protect Your Pot!

By: Josh H. Escovedo Let’s face it, we live in a progressive era. Many things that were once taboo in the eyes of the law have become not only socially acceptable,

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“Desert Warrior” Vanquished: Google Defeats Cindy Lee Garcia’s Copyright Claims

By: Intellectual Property Group Cindy Lee Garcia thought she was playing a bit part in “Desert Warrior,” an adventure film being made by an amateur film maker. The film was never completed.

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That Would .SUCK

By: Scott Hervey The word that comes after the period in a domain name is referred to as a top level domain (“TLD”) and there seems to be a TLD for everything.

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Live Streaming Apps Raise New/Old Copyright Concerns

By: Scott Hervey Periscope (owned by Twitter) and Meerkat are two new “live streaming” apps which allow users to live stream videos from their phones.  These applications could potentially change the way live sporting or music events are broadcast or change the way news footage is gathered.  

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Brewing Up Some IP

By: Josh Escovedo With so many new microbreweries popping up in Sacramento, the Bay Area, and the Greater San Diego area, I felt compelled to write the present piece for the benefit of the aspiring,

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Enablement is Key – Especially in Biotech Patents

By: Audrey Milleman Enablement is the requirement that a patent teach a person skilled in the art (the field of the invention) how to make and use the invention without undue experimentation.

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Move Over Vanna White, Here Comes Marion Barry’s Kidney

By: Intellectual Property Group In 2008, former Mayor of Washington, D.C., and then council member Marion Barry became ill with a kidney disease. To survive the illness, Mr. Barry required a kidney transplant,

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Is Fox News Proposing a New Standard For Determining Fair Use?

By Scott Hervey North Jersey Media Group Inc. is the copyright owner of the iconic photograph of three firefighters raising an American flag at the ruins of the World Trade Center on September 11,

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Bob Marley and Federal False Endorsement Claims

By James Kachmar Since his death in 1981, reggae superstar Bob Marley and his “image” continue to be broadly popular and command millions of dollars each year in merchandising revenue. His children own an entity called Fifth Six Hope Road,

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Supreme Court: Patent Claim Construction – Two Standards of Review

By Audrey Millemann The Supreme Court recently decided a patent case involving a significant procedural issue.  In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (1/20/15), the question before the Court was whether the Federal Circuit Court of Appeals should review a district court’s factfindings in its claim construction decision under a de novo or a “clearly erroneous” standard.  

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The Blurred Lines of an Infringement Action

By Josh Escovedo Many of you may be familiar with the pop hit “Blurred Lines” by Robin Thicke, Clifford Harris, more popularly known as T.I., and Pharrell Williams (the “Composers”). If it does not sound familiar by title,

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IP in the NFL: “I’m Just Here So I Won’t Get Fined,” or Are You?

By Josh Escovedo Just last week, on February 18, 2015, Seattle Seahawks superstar running back Marshawn Lynch (“Lynch”), also known as Beast Mode, filed for a federal trademark with the United States Patent and Trademark Office (“USPTO”) for his now famous quote—“I’M JUST HERE SO I WON’T GET FINED.” For those of you who are not big NFL fans,

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Congress is Reconsidering “Anti Troll” Legislation

By: Intellectual Property Group On February 5, 2015, Congressman Bob Goodlatte reintroduced the “Innovation Act”; a bill designed to implement several changes to the legal framework governing United States patent law.

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The Left Shark, Katy Perry and Copyright Chum

By Scott Hervey What do you get when you take one shark costume, add a confused backup dancer, throw in Katy Perry and the Super Bowl halftime show and top it off with a satirical artist with a 3D printer?

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Protecting Trademarks and the Likelihood of Confusion Factor

By James Kachmar A few years ago, I wrote a column addressing a case in which Pom Wonderful LLC sued Coca Cola Company in connection with the marketing of one of its pomegranate-blueberry juice products.

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Federal Circuit Chips Away at Patentable Subject Matter

By Audrey Millemann The Federal Circuit Court of Appeals has applied the Supreme Court’s test for unpatentable abstract ideas to patents covering methods to determine a person’s likelihood of getting certain types of cancer.

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Davis: Electronic Arts Gets a New Set of Downs and Still Can’t Score

By Josh Escovedo Just over a month ago I wrote about the Davis v. Electronic Arts matter that was pending before the Ninth Circuit Court of Appeal.  Specifically, I opined that the matter was ripe for Supreme Court review in light of the circuit split that is developing with respect to the misappropriation of likeness in video games. 

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The Power of the Press Release II: A Suggestion For Heightened Scrutiny of Governmental Prosecutorial Pre-trial Public Announcements

By David Gabor In Russell G. Ryan’s recent thoughtful article in the Wall Street Journal entitled “Get the SEC Out Of The PR Business,” he raised several issues that resonate well beyond the practices of the SEC and into the world of advertising law,

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At Least the Court Didn’t Blow This Call . . . Thoughts on the Oklahoma City High School Football Case

By David Gabor It’s not exactly a decision in the intellectual property sphere, but a recent ruling by a judge in Oklahoma City, Oklahoma related to a botched call in a high school football game deserves to be called-out for praise.

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Ho, Ho, Ho! And Fa-La-La-La-La! More Christmas Patents

By Audrey Millemann The last time I checked (which was a couple of years ago), I found 979 U.S. patents in the U.S. Patent and Trademark Office’s database that had the word “Christmas” in the title. 

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Electronic Arts and its Disrespect for the Game

By Josh H. Escovedo On September 11, 2014, the Ninth Circuit heard oral argument on the appeal in Davis v. Electronic Arts (Case No. 12-15737), a class action lawsuit brought by three former NFL Players against Electronic Arts (“EA”),

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Your Facebook Copyright Notice is More Annoying than Farmville

By: Intellectual Property Group If you use Facebook, you probably already have noticed that many users are posting statements claiming that Facebook somehow acquires ownership of users’ intellectual property that has been posted to that site. 

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Cambridge v. Becker – A Copyright Win For Publishers or an Enlargement of Fair Use?

By Scott Hervey Recently the 11th Circuit addressed on appeal the question of whether fair use insulates from copyright liability a University which offers to its students a digital repository of reading material culled from third party publications without the benefit of a license.   

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9th Circuit Agrees to En Banc Rehearing of Garcia v. Google, Inc.

By James Kachmar In March 2014, this column analyzed a decision by a Ninth Circuit panel in Garcia v. Google, Inc., in which the Court held that an actress, who believed she was appearing in a minor role in an Arabian adventure movie,

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Attorneys’ Fees for Patent Infringement – Easier to Obtain!

By Audrey A. Millemann One of the more important intellectual property cases decided in 2014 is the U.S. Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc.

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What is and What Should Never Be: Led Zeppelin Not Feeling a Whole Lotta Love in Pennsylvania

By: Intellectual Property Group On May 31, 2014, members of the band Led Zeppelin and its publishers were sued for copyright infringement by Randy California, the former guitarist and front man of the band Spirit. 

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Zombies Have IP Too

By Audrey A. Millemann Zombies have become part of our lives.  We are fascinated with vampires, but we are obsessed with zombies. Our obsession is best evidenced by the tremendous success of AMC’s television series “The Walking Dead,” about the zombie apocalypse. 

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Clearing Marks In the Beverage Space Has Become Increasingly Complex

By Scott Hervey In this author’s opinion, I believe that most consumers see wine, beer and mineral water as unrelated products and would not believe that beer, wine or mineral water that share similar trademark elements (e.g.,

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Model Mayhem – The Communications Decency Act is Not a Defense to Negligent Failure to Warn Claim

By James Kachmar One of the primary purposes of the Communications Decency Act (“CDA”) is to limit liability for certain internet content providers specifically protecting websites from liability for material posting on their website by a third party.

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New Jersey Woman Refuses to “Let It Go.”

By Josh H. Escovedo You don’t have to be a Disney enthusiast like myself to be familiar with its latest blockbuster franchise, Frozen.  To date, the film has grossed over 1.2 billion dollars in worldwide box office revenue,

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Patents Must Provide Clear Notice of Their Scope

By Audrey A. Millemann The patent laws require that the claims of a patent (which define the boundaries of what the patent owner can protect) “particularly point out and distinctly claim the subject matter … of the invention.”  35 U.S.C.

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Gallo Whines Its Way Into the Tequila Business

By Josh H. Escovedo In the not so distant past, E & J Gallo Winery (“Gallo”) decided that it was not satisfied with only being a player in the wine business. 

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Ninth Circuit Limits Application of the Computer Fraud and Abuse Act

By: Intellectual Property Group Victims of trade secret theft often can seek a variety of civil and criminal remedies against those who have absconded with proprietary information.  The Ninth Circuit however recently rejected criminal charges in a situation where the claims could be addressed as a civil matter under California’s trade secret laws.

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Vicarious Liability Under the Lanham Act: The Amazon Affiliate Case

By David Gabor In a sensible decision, the Ninth Circuit Court of Appeals recently ruled that Amazon.com Inc. is not vicariously liable for copyright infringement based upon the conduct of its Associates who use copyrighted photos without permission on their linked websites.

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Who Owns Facebook “Likes” on Your Page

By Scott Hervey The answer may surprise you. This dispute over ownership of Facebook ‘likes’ pits the creator of a fan Facebook page for a TV show against the television network that owns the show. 

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Copyright Ownership Claim Of Pictures Taken By Wild Ape is Monkey Business

By Scott Hervey Recently, Wikimedia (the entity behind Wikipedia) has refused repeated requests from professional photographer David Slater to remove from one of his most famous photos from its royalty free photo collection website. 

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No Inducing Patent Infringement Unless There is Direct Infringement

By Audrey A. Millemann In a June decision, the U.S. Supreme Court resolved a key issue in patent law: whether a party can be liable for patent infringement when there is no underlying act of direct infringement. 

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When is Enough Really Enough? The Importance of Experts in Music Copyright Infringement Actions

By Josh H. Escovedo On June 17, 2014, a federal judge in Illinois granted summary judgment to Stefani Joanne Germanotta against plaintiff, Rebecca Francescatti, in a copyright infringement matter because he found that no reasonable trier of fact could find that Ms.

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Federal Regulatory Authority and Power of the Press Release

By David Gabor Among the unstated powers of the federal (and sometimes state) government that few litigation targets think about is the power of the press release. Prosecutors, whether at the agency level or above (for example,

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The Duke and Duke Duke It Out In Trademark Rowe

By Scott Hervey Clearly there is no love lost between John Wayne Enterprises, LLC (“JWE”), the entity owned by John Wayne’s heirs which controls the intellectual property related to John Wayne,

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Funk, Copyrights, and Collecting Judgments

By James Kachmar Litigants know that obtaining a judgment against an adversary is only half the battle.  Sometimes the efforts a litigant must expend to collect on that judgment are just as significant,

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Business Method Patents: Murkier Water

By Audrey A. Millemann The long-awaited decision by the United States Supreme Court on business method patents was issued on June 19, 2014.  Unfortunately, the decision raised more questions than it answered.  

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Google’s Android: Was It Truly The First Generation?

By Josh H. Escovedo With the prevalence of smartphones in today’s society, one cannot help but to have at least heard of Google’s Android operating system.  This operating system came about with the intent of competing with the superpower known as Apple’s iPhone. 

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Trademark Office Tackles Redskins

By: Intellectual Property Group The 2013 NFL season was not kind to the Washington Redskins, and after winning only 3 games and losing 13, there are many in the Washington Redskins organization who might have wanted to hide behind a new name. 

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Supreme Court Says Raging Bull Copyright Case To Go Another Round

By Scott Hervey In the one corner, Paula Petrella, the daughter of Frank Petrella, co-author of the 1963 Raging Bull screenplays and book.  In the other corner, MGM, the owner of the copyright in the critically acclaimed motion picture Raging Bull,

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Best of Luck to California Chrome!

By Audrey A. Millemann Let me start with a disclaimer.  This column is not really about intellectual property.  It’s about the unexpected – what happens when people stick to their principles and challenge the way it’s always been done. 

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Raging Bull Revisited – Copyright Infringement and the Laches Defense

By James Kachmar This column addressed the Ninth Circuit’s decision in the case Petrella v. Metro-Goldwyn-Mayer, Inc., et al., approximately 18 months ago.  The Ninth Circuit held that the equitable defense of laches could be asserted to bar a claim for copyright infringement even if it was filed within the three-year statute of limitations. 

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Stay Tuned for the Court’s Decision in ABC v. Aereo

By: Intellectual Property Group On April 22, 2014 the United States Supreme Court heard oral arguments in the case of American Broadcasting Company (“ABC”) v. Aereo.  Although this case has been overshadowed by other matters on the Court’s docket and has received very little media attention,

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Kind Bar or Clif Bar: A Transparent Trade Dress Dispute

By: David Gabor A recently filed in New York federal court lawsuit between Kind, LLC (the maker of the Kind Energy Bar) and Clif Bar & Co. (the maker of various iterations of the Clif Energy Bar),

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Challenging Business Method Patents

By: Audrey Millemann Congress has been listening. Under a new program enacted as part of the America Invents Act ("AIA"), business method patents can be challenged in a specific procedure in the PTO.

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Tweet, Tweet, Sue, Sue: Corporate Twitter Feeds and The Lanham Act

By: David Gabor A case filed on April 9, 2014 in New York Federal District Court highlights the tension between celebrity endorsements and ordinary First Amendment communications in the digital age.

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Will The Copyright Act be Amended to Include a “Making Available” Right

By Scott Hervey Under the WIPO Internet Treaties, member states are required to recognize in their national laws  the exclusive right of  authors of works to ‘‘make [the works] available’’ and ‘‘communicate [the works] to the public’’,

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Patent Filings and the Potential Discovery of Trade Secret Misappropriation

By James Kachmar Under California law, a plaintiff must bring a claim for trade secret misappropriation within three years of discovering the misappropriation or, by the exercise of reasonable diligence, should have discovered the alleged misappropriation. 

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Patent Myths Corrected – Part One

By Audrey A. Millemann Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts. 

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Patent Myths Corrected – Part Two

By Audrey A. Millemann Last week’s column was the first of two columns discussing some of the most common misconceptions or myths about patents.  Here is the second part, starting with number five on my list.

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Challenging Business Method Patents

By Audrey A. Millemann Over the last 15 years, the United States Patent and Trademark Office has issued many business method patents.  Many of these patents seem overly broad or obvious,

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Holy Lawsuit Batman

By: Scott Hervey The U.S. District Court for the Central District of California handed a big victory to Warner Bros. when it ruled that Gotham Garage violated Warner Bros.’ intellectual property rights in the iconic Batmobile.

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A Bit Part, a Fatwa and Copyright Infringement

By James Kachmar Most law students learn early in law school the old maxim: “Bad facts make bad law.” A recent Ninth Circuit case, Garcia v. Google, Inc., seems certain to test this proposition with its incredibly sympathetic facts.

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No E-Smoking Please, We Are European!

By David R. Gabor For those of us old enough to remember, the bars, restaurants and salons of Europe were once literally awash in smoke so thick you could cut it with the proverbial knife.

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Patent Holders Bear the Burden of Proof Even as a Defendant

By Dale Campbell The United States Supreme Court was presented with the question of who has the burden of proof when a licensee files an action seeking a declaration of non-infringement against the patentee.

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Red Rothko: Confidentiality Agreements in the World of Big Art

By David R. Gabor I. The Art World Is No Longer A Quiet Place Decades ago, a former counsel for the Metropolitan Museum of Art in New York City commented that transactions in the art world are generally very “hush-hush”

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Patent Owners have Burden of Proof in Declaratory Judgment Actions

By Audrey A. Millemann On January 22, 2014, the United States Supreme Court decided that a patent owner has the burden of proving infringement in an action filed by a licensee for a declaratory judgment of noninfringement.

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Did The California Court Of Appeals Transform The Transformative Use Test in Right of Publicity Cases?

By Scott Hervey Every practitioner should teach law school at least once. This year I am teaching Entertainment Law at the University of California at Davis. (Although flying up from and back to L.A.

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Copyright Preemption and Its Interplay with Trade Secret Misappropriation

By James Kachmar A recent decision in the case Jobscience, Inc. v. CVPartners, Inc. (N.D. Cal. Jan. 9, 2014) shows the interplay between the various theories of intellectual property claims. There,

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Patent Infringement: Attorneys’ Fees A Little Easier to Get

By Audrey A. Millemann The Federal Circuit has loosened the standard for recovering attorneys’ fees in patent infringement cases, making it easier for winning defendants to obtain their fees from plaintiffs.

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The Long Lashes of the Law: Fed Circuit Rejects Nation-wide Application of California § 17200

By David Gabor On December 30, 2013, the Federal Court of Appeals, in Allergan, Inc. v. Athena Cosmetics, Inc., et al., an as-yet unpublished decision, affirmed a California District Court ruling that has the potential significantly to affect advertising law and the use of the California unfair competition statute at B&P Code §17200,

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The Ninth Circuit Throws a Penalty Flag Against Electronic Arts

On July 31, 2012, the Ninth Circuit issued its ruling protecting the right of privacy held by collegiate athletes against the use of their likeness in connection with video games. (Keller v.

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UPDATE: You Can Still Hop Through Commercials

In April, we published an article about Fox Broadcasting Co. v. Dish Networks, LLC, where Fox Broadcasting was requesting a preliminary injunction against Dish Network, claiming that were engaged in copyright infringement by offering their Auto Hop on Dish Networks’

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Character Copyright — Is Sherlock Holmes in the Public Domain?

Currently pending before the United States District Court for the Northern District of Illinois is a case that will determine whether the Estate of Sir Arthur Conan Doyle has any remaining copyright interest in the iconic character of Sherlock Holmes,

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(Natural) Genes are not Patentable

In Association For Molecular Pathology v. Myriad Genetics, Inc., decided on June 13, 2013, the United States Supreme Court held that isolated natural genes (DNA) are not patentable. Thus, genes that exist in a living organism,

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Are Patent Trolls Good?

The landscape of patent law has been rapidly changing over the last several years. President Obama recently signed into law the America Invents Act (the “AIA”) which offered the first identifiable attempt by the United States government to stem the tide of claims asserted by non-practicing entities,

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Federal Circuit Puts Generic 1800Mattress Trademark to Bed

After four years, the quest to obtain federal trademark protection for the mark MATTRESS.COM by owner 1800Mattress.com IP, LLC, formerly Dial-A-Mattress Operating Corp, has been put to bed. The United States Court of Appeals for the Federal Circuit has finally held that the mark is generic and not entitled to registration.

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When Product Resales are not Protected under the First Sale Doctrine

Earlier this year, the Tenth Circuit court upheld a preliminary injunction granted in favor of an electronics equipment manufacturer against a reseller of its goods in a trademark infringement action. In Beltronics v.

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Supreme Court Hears Oral Argument in Key Patent Case

Several weeks ago, on November 9, 2009, the United States Supreme Court heard oral argument in a key patent case. The case is Bilski v. Kappos (the USPTO). The issue before the Court was whether the Court should reverse the Federal Circuit’s “machine-or-transformation” test for the patentability of process inventions.

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More Guidance On Pre-Discovery Trade Secret Disclosures

A central issue in all trade secret litigation is the adequacy of plaintiff’s pre-discovery disclosure of the alleged trade secrets. The Fourth District Court of Appeal has contributed to the growing body of case law interpreting the adequacy of the initial trade secret disclosure required by California Code of Civil Procedure section 2019.210.

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Sound Marks — Registration Basics

Most people are familiar with the concept of trademarks in the form of logos or words. But intellectual property can also be embodied in sounds not represented by words and drawings,

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Identifying Trade Secrets with “Reasonable Particularity”

Section 2019.210 of the Code of Civil Procedure requires that a plaintiff identify its alleged trade secrets with “reasonable particularity” before that party can commence discovery on its claims based upon trade secret misappropriation.

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7th Circuit Case Should Serve As A Reminder To Business Attorneys

Recently the 7th Circuit in Sunstar, Inc. v. Alberto-Culver Company provided a reminder to attorneys engaging in a business transaction between domestic and a foreign parties. Stated plainly, the 7th Circuit reminded business attorneys that if a term is included in a transaction document – especially if that term is a foreign word – be sure you understand what it means.

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Trademark Basics: Dilution

Not all trademark law is aimed at protecting consumers. The Federal Trademark Dilution Act (“Act”) is aimed at protecting a company’s property right in its trademark. Dilution is defined as “the lessening of the capacity of a famous mark to identify and distinguish goods or services,

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Patent Enablement Requires More Than a Guess

One of the requirements for obtaining a patent is enablement. As set forth in 35 U.S.C. §112, ¶1, the specification of the patent must teach a person skilled in the art how to make and use the invention without undue experimentation.

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The First Circuit Takes a Novel View of the Attorney Work Product Privilege

Is the work product of an attorney always protected? No, according to the First Circuit in a decision which may draw the attention of the U. S. Supreme Court. The First Circuit,

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The Parody Defense to Trademark Infringement: The North Face vs. The South Butt

Missouri teenager Jimmy Winkelmann grew weary of his high school classmates’ blind and materialistic infatuation with The North Face products, and decided something had to be done. Mr. Winkelmann’s answer was to come up with his own competing apparel line to mock the ubiquitous North Face fleece jackets found on his high school campus.

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Hallmark Cards Raises Unique Defense to Paris Hilton’s Right of Publicity Claim – That’s Hot

This is about a birthday card. Not just any birthday card mind you. This birthday card, produced by Hallmark Cards, depicts a cartoon waitress, dressed in an apron, serving food to a restaurant customer.

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Online Retailer Not Liable for Libelous User Posts

In a recent case from the Eastern District of Missouri, Cornelius v. DeLuca (E.D. Aug. 18, 2009), the district court addressed whether a fitness website and online retailer was liable for negative comments and reviews posted by users concerning plaintiffs’ dietary supplements.

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Section 271(f) Does Not Apply to Method Patents

The Federal Circuit Court of Appeals has overruled a 2005 decision which addressed the liability of exporters of components of patented inventions for infringement of method patents. Under 35 U.S.C. §271(f),

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“Transformative” Or Not Revisited

Earlier this year, I wrote of an impending legal battle between Shepard Fairey, the artist of the iconic Barack Obama “Hope” painting and the Associated Press who owns the photograph upon which the painting was based.

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Taster’s Choice – Appropriation of Likeness and the Statute of Limitations

by James Kachmar In Cristoff v. Nestle USA, Inc., the California Supreme Court issued guidance in determining when the statute of limitations runs on a claim for appropriation of likeness. Russell Cristoff,

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Wine’s “Full Bodied” Label Not To State Regulator’s Liking

Those in the wine industry regularly traverse a vast array of statutes, rules and regulations in an effort to get their grape from the vine into your glass. One set of regulations all wine producers deal with are those governing wine labeling.

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Ninth Circuit Changes Its Definition of “Prevailing Party” In Copyright Cases

Section 505 of the Copyright Act provides that the court may, in its discretion, award full costs, including reasonable attorneys’ fees, to the prevailing party in a claim arising under the Copyright Act.

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Copyrighter in the Rye – J.D. Salinger Stops Publication of Alleged Sequel To Famous Work

J.D. Salinger, author of the seminal teen angst novel “The Catcher in the Rye,” recently filed a lawsuit in United States District Court in Manhattan for copyright infringement against the author of a purported “sequel” to Salinger’s classic work entitled “60 Years Later: Coming Through the Rye.” Salinger’s lawsuit sought a permanent injunction against publication of the new work in the United States.

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Does an Anti-Plagiarism Service Violate Students’ Copyrights?

In April 2009, the Fourth Circuit upheld a summary judgment granted in favor of an online technology system designed to prevent plagiarism in a copyright infringement action. (A.V. v. iParadigms, L.L.C.,

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A Dream Case: Statutory Damages for Infringement of Illegal Bingo Gambling

Most everyone knows that federal copyright laws protect an author’s expression of an idea. When someone infringes a protected work, either by copying or distributing it without permission, the copyright owner is generally entitled to damages.

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“Transformative” or Not?

20090212-1 Recent news reports tell of an impending legal battle between the artist of the painting at left and the Associated Press who owns the photograph upon which the painting was based.

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New Test for Business Methods Patents

The Federal Circuit Court of Appeals has redefined the test for the patentability of business methods and computer software. In In re Bilski, 545 F. 3d 943 (Fed. Cir. 2008), an en banc decision,

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Grand Theft Auto: Trademark Infringement and the First Amendment

The Grand Theft Auto (“GTA”) video game series is one of the most successful video games of all time. In April 2005, the maker of GTA was sued for trademark infringement as a result of its inclusion of a fictional strip club in its game that bore a resemblance to a real strip club in East Los Angeles.

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Jack Bauer to Hunt Down DVD Pirates?

Sometimes a law is passed which tackles incredibly complex issues and causes seismic shifts in entire industries. Unfortunately, nothing like that happened in time for this article. However, early this month President Bush signed into law Senate Bill 3325 –

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We’re the Government, and We’re Here to Copy – Blueport Co. v. United States

By: Intellectual Property The United States Government, which created the courts and a legal system to provide an avenue to seek redress for injury, is immune from suit in that system unless the Government agrees to be sued by waiving its immunity.

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Third Party Trade Secret Misappropriation and the Statute of Limitations

Third Party Trade Secret Misappropriation and the Statute of Limitations By James Kachmar A California appellate court was recently faced with the issue of when the statute of limitations runs on a claim for trade secret misappropriation against a third party when the plaintiff’s trade secrets are stolen and sold to that third party.

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What is a Patentable Business Method? Federal Circuit to Decide

What is a Patentable Business Method? Federal Circuit to Decide By Audrey A. Millemann On May 8, 2008, the Federal Circuit Court of Appeals heard oral argument in a case that may significantly change the patent landscape.

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Viacom V. Youtube: Are Our Internet Privacy Rights Really In Danger?

Viacom V. Youtube: Are Our Internet Privacy Rights Really In Danger? By: Dale C. Campbell and Serena Crouch, Third Year Law Student at McGeorge School of Law Internet users and privacy advocates across the nation fear they are losing the continuing battle to protect internet privacy rights.

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Internet Search Adwords: Are Your Trademarks Protected?

Internet Search Adwords: Are Your Trademarks Protected? By Dale C. Campbell Search engine websites sell keywords as a component of their advertising programs. By purchasing an advertising keyword, a business’s advertisement will appear next to the search results whenever a person enters the advertising keyword as a search term.

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Court Couldn’t Give A Quack About Generic Mark

Court Couldn’t Give A Quack About Generic Mark By Scott Hervey The First Circuit recently decided a case that exemplifies the downfall of building a brand around merely generic terms. No matter how long the mark owner may use a mark in commerce,

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Lack of Enablement – A Stronger Tool for Invalidity

By: Audrey Millemann One of the requirements of a valid patent is enablement. As set forth in 35 U.S.C. section 112, paragraph 1, a patent’s specification must contain “a written description of the invention,

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Intentional Interference Claims and Preemption by the California Uniform Trade Secrets Act

By: James Kachmar On March 5, 2008, the United States District Court for the Northern District of California (“District Court”) in First Advantage Background Services Corp. v. PrivateEyes, Inc., (“First Advantage”) found,

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Google Loses Initial Cybersquatting Battle

By: Jeffrey Pietsch Google may soon be facing an expensive and damaging class action lawsuit. A federal court ruled last month that Google can be sued for its role in serving ads on websites that use domain names that violate trademark and cybersquatting laws.

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Superman and a Super Copyright Battle

By Scott M. Hervey On March 26, 2008, the District Court for the Central District of California issued an order closing one chapter to a long running battle between the heirs of one of the original creators of the iconic comic book superhero,

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Trademark Infringement: Factors Considered in Consumer Confusion

By Jeffrey B. Pietsch Trademark infringement occurs when a third party uses a mark in a way that infringes upon a trademark owner’s exclusive right and use of a trademark. Often,

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The Ninth Circuit Just Doesn’t Like Karaoke

By Intellectual Property The Ninth Circuit just doesn’t like karaoke. At least, that’s what plaintiffs, manufacturers of karaoke machines, in two recent opinions involving copyright law would likely say. In both decisions,

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Federal Circuit Applies Supreme Court’s New Test for Declaratory Judgment Jurisdiction

Federal Circuit Applies Supreme Court’s New Test for Declaratory Judgment Jurisdiction By Audrey A. Millemann The Federal Circuit Court of Appeals recently reversed a district court’s dismissal of a declaratory judgment action,

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Lights, Camera, IP Issues…

Lights, Camera, IP Issues… By Scott Hervey Last October I had the good fortune of being invited to attend my friend’s “man shower” in Las Vegas. What made this trip interesting was the fact that this all guy’s version of a baby shower would be the subject of an episode of the VH1 reality TV show “Scott Baio is 46 and Pregnant.” While there are a number of interesting stories that came out of this first and only man style baby shower,

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A Fresh Look At Managing Intellectual Property

A Fresh Look At Managing Intellectual Property By Scott Hervey As 2008 gets underway, its time for companies to take a fresh look at how they manage intellectual property assets. This applies to companies that have never taken serious steps to protect intellectual property,

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American Express Wins Trademark Battle Over “My Life. My Card.”

American Express Wins Trademark Battle Over "My life. My Card." By Jeff Pietsch Last week, the Second Circuit affirmed a summary judgment against an advertising consultant in a suit against American Express.

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Ownership Issues Underlying the “Work Made for Hire” Doctrine

Ownership Issues Underlying the "Work Made for Hire" Doctrine By Andrea Anapolsky The "work made for hire" doctrine is a major exception to the fundamental principle that copyright ownership vests in the person who created the work.

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E-Discovery Ethical Rules Remain Unchanged

E-Discovery Ethical Rules Remain Unchanged By Dale C. Campbell Lawyers can’t turn around without being bombarded with CLE brochures announcing yet another e-discovery workshop. Electronic discovery is a new medium for storing information,

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Election of Statutory Damages for Counterfeiting Bars Attorney’s Fees

Election of Statutory Damages for Counterfeiting Bars Attorney’s Fee By Jeffrey Pietsch Plaintiffs in trademark infringement cases may not be eligible for attorney fees depending on their election of damages. This last December,

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Trademark Infringement and the Importance of Establishing Likelihood of Confusion

Trademark Infringement and the Importance of Establishing Likelihood of Confusion By James Kachmar On December 28, 2007, the Ninth Circuit issued its opinion in the case titled Applied Information Sciences Corp.

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In The 9th Circuit, May Not Be Worth It To Elect Statutory Damages In Trademark Counterfeiting Claim

In The 9th Circuit, May Not Be Worth It To Elect Statutory Damages In Trademark Counterfeiting Claim By Scott Hervey In a trademark counterfeiting claim, the successful plaintiff is entitled to recover actual damages or can statutory damages.

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The Federal Circuit Finds Mental Process Unpatentable

The Federal Circuit Finds Mental Process Unpatentable By Audrey Millemann Patentable subject matter (i.e. what kinds of things can be patented) includes processes, machines, articles of manufacture, and compositions of matter.

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Can A Company Go Too Far In Preventing Its Employees From Being Hired Away By Its Customers?

Can A Company Go Too Far In Preventing Its Employees From Being Hired Away By Its Customers? By Dale C. Campbell Can a company go too far in preventing its employees from being hired away by its customers?

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Fantasy Sports League Hits It Out Of The Park In Challenging MLB’s Ownership Of Player Statistics

Fantasy Sports League Hits It Out Of The Park In Challenging MLB’s Ownership Of Player Statistics By Scott Hervey Just how valuable are baseball statistics? Apparently very valuable. In fact, baseball statistics are so valuable that CBC Distribution and Marketing,

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Tiffany v. Ebay: Is Ebay Responsible for Trademark Infringement?

Tiffany v. Ebay: Is Ebay Responsible for Trademark Infringement? By Jeffrey Pietsch The lawsuit Tiffany & Co. brought against Ebay in 2004 for contributory trademark infringement is currently being heard in the U.S.

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Is There Really Only Room For One “Bay” On The Internet?

Is There Really Only Room For One “Bay” On The Internet? By: Intellectual Property Has eBay become so powerful that it can successfully claim to be the only “Bay” on the Internet?

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Blind Internet Users Victorious in Discrimination Action Against Website

Blind Internet Users Victorious in Discrimination Action Against Website By Jeffrey Pietsch Earlier this month, a California district court certified a class on behalf of blind internet users against Target.com under the American Disabilities Act and California law.

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It’s Hammer Time at The USPTO

It’s Hammer Time at The USPTO By Scott Hervey There is a growing trademark dispute between a small Alaskan museum devoted to a 900 piece display of hammers and the great Los Angeles based Hammer Museum (formerly known as the Armand Hammer Museum).

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Disparage At Will, Just Don’t Infringe – The Message From The Ninth Circuit In Freecycle

By: Intellectual Property The Ninth Circuit Court of Appeals issued an opinion last week that, while not necessarily controversial or new, serves as a good reminder for trademark litigators: There must be actual infringement to prevail in a trademark infringement lawsuit.

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New U.S. Patent and Trademark Office Rules

New U.S. Patent and Trademark Office Rules By Audrey Millemann The United States Patent and Trademark Office (“PTO”) has revised the patent rules in an attempt to reduce the PTO’s workload,

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Ninth Circuit Holds Modified Terms of Use Unenforceable

By Scott Hervey It’s not uncommon for companies to change or modify the terms under which they provide services to consumers. This is true whether the company is a traditional brick and mortar company or Internet based.

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“Making Available” is Copyright Infringement in File Sharing Case

By Jeff Pietsch Last week, a judge for the United States District Court in Arizona has granted a summary judgment in favor of recording companies. The judgment finds the defendant, Jeffrey Howell,

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Experts and Summary Judgment

Experts and Summary Judgment By Dale C. Campbell Intellectual property litigation relies heavily upon the use of expert testimony. The Ninth Circuit Court of Appeals recently analyzed the intersection of Federal Rules of Evidence,

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Act Now! – Or Lose Your Trade Dress Infringement Claim

Act Now! – Or Lose Your Trade Dress Infringement Claim By James Kachmar In Magic Kitchen LLC v. Good Things International Ltd., et al., the California Court of Appeal (Second App.

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Host A Website And Get Sued For Trademark Infringement

Host A Website And Get Sued For Trademark Infringement – Possible Under California’s Model Trademark Law By Scott Hervey According to the Department of Commerce, losses to U.S. businesses from the counterfeiting of trademarked consumer products are estimated at $200 billion a year.

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Interactive Websites May Lose Protection Under the Communications Decency Act

By Jeff Pietsch On May 15, 2007, the 9th U.S. Circuit Court of Appeals created a significant exception to the immunity granted to a website operator under 47 U.S.C. § 230 “The Communications Decency Act” (“CDA”).

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The 11th Circuit Reminds All That Copyright Protection For Databases Is Alive And Well

By Scott Hervey Under contemporary Copyright Law, a database is a “compilation.” A compilation is defined under the Copyright Act as “a work formed by the collection and assembling of preexisting materials or of data….” While the inclusion of a compilation as a protectable work was statutorily introduced in The Copyright Act of 1976,

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Copyright Infringement and the Internet: A Closer Look at Perfect 10 v. Google and Amazon

By Andrea Anapolsky On May 16, 2007, the 9th U.S. Circuit Court of Appeals sent a mixed message to search engines everywhere – publishing thumbnail images is legal, but a search engine may still be liable if it links customers to other sites that publish certain thumbnail images without authorization.

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Is That Expensive Custom Computer Program Really Yours?

By Dale Campbell Custom and customized computer programs create unique challenges under the Copyright Act. More and more companies have custom software written by outside programmers to automate the company’s unique business processes.

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Collage Ads & Copyright Infringement

By James Kachmar In Jarvis v. K2 Inc. (April 30, 2007), the Ninth Circuit held that a retailer’s use of collage advertisements containing copyrighted photos was not covered by the “collective works” privilege and,

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Over Installing Software May Subject A Company to Liability for Copyright Infringement

By Scott Hervey Its that time again; time to upgrade your computer operating system and associated programs. Microsoft’s new operating system, Vista, is coming pre-installed on new computers and laptops, along with new versions of Microsoft Word,

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Departing Partners: Is Their Name a Protected Trademark

Departing Partners: Is Their Name a Protected Trademark By: Dale C. Campbell There always has been a few simple things to do when a named partner leaves a law firm: change the name of the firm,

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The Ninth Circuit Clarifies the “Safe Harbor” Provisions of the Digital Millennium Copyright Act

By James Kachmar On March 29, 2007, the Ninth Circuit issued its opinion in the case Perfect 10, Inc. v. CCBill LLC, et al. in which it attempted to clarify when immunity is available to internet service providers for copyright infringement under the Digital Millennium Copyright Act (“the DMCA”),

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The YouTube Question

By Scott Hervey By now, everyone has heard about the One Billion dollar copyright infringement lawsuit Viacom filed against YouTube and its owner, Google. The lawsuit stems from the fact that clips from a number of Viacom’s programs are regularly appearing on the YouTube website.

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The Academy Award’s Oscar: Golden or Generic under Trademark Law

The Academy Award’s Oscar: Golden or Generic under Trademark Law By Jeffrey Pietsch And the Oscar goes too …. This phrase means only one thing to most people: the annual award given to those celebrated actors and actresses at the Academy Awards each February.

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California Supreme Court Affirms Broad Immunity for Defamatory Republication on the Internet

California Supreme Court Affirms Broad Immunity for Defamatory Republication on the Internet By Dale Campbell When can you knowingly republish defamatory statements without risk of liability? When you do so on the Internet.

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The Complexity of Proving Copyright Infringement

By Scott Hervey Last year’s Ninth Circuit’s decision in Funky Films, Inc. v. Time Warner Entertainment is a reminder just how complex and complicated it can be proving copyright infringement. Funky Films involved a claim that the award winning Home Box Office mini-series “Six Feet Under” infringed Funky Films’ screenplay “The Funk Parlor.” At issue on appeal was the district’s court conclusion that “The Funk Parlor” and “Six Feet Under” were not substantially similar.

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Will the Real Keith Urban Stand Up: A Showdown in Cybersquatting

Will the Real Keith Urban Stand Up: A showdown in Cybersquatting By Jeffrey Pietsch Last week Keith Urban, the Grammy nominated country singer from Australia, sued Keith Urban, a New Jersey painter,

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Should Ripping Your Purchased DVDs Onto Your iPod Be Illegal?

Should Ripping Your Purchased DVDs Onto Your iPod Be Illegal? The Motion Picture Association Says “Yes!” By: Intellectual Property Last month, in a lawsuit filed in the U.S. District Court for the Southern District of New York,

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A Refresher on the Trade Secrets Doctrine, Part I

By Andrea Anapolksy In the wake of jury selection for the Coco-Cola Co. theft trade secrets trial and Apple Computer’s two-year quest to discover who leaked trade secret information about an unreleased Apple product to several online blog sites,

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Settlement In Keyword / Trademark Dispute

By Jeffrey Pietsch In 2006, Federal District Courts throughout the country were asked to decide if purchasing and using trademark-protected keywords to trigger internet advertising constitute trademark violations as contemplated by the Lanham Act.

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Employers: You May Be Eligible for Immunity Under the Communications Decency Act

Employers: You May Be Eligible for Immunity Under the Communications Decency Act By James Kachmar A California appellate court affirmed last month that an employer is entitled to immunity from tort liability for threatening emails sent on or through the employer’s internet/email system by one of its employees.

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Copyright Office Clears the Way for More Ringtones

Copyright Office Clears the way for more Ringtones By Scott Hervey On October 16 the Register of Copyrights issued an interpretation of Section 115 of the Copyright Act that will make it easier for record labels and cellular phone services to offer ringtones to consumers.

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How To Protect Your Clients’ IP

By Audrey Millemann A business’s intellectual property may be its most valuable asset. Whether it is biotechnology, trade names, business methods, or computer software, intellectual property should be protected to the greatest extent possible in order to maximize the value of the business.

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Defamation Claims Pierce the “Blogosphere”

By Andrea Anapolsky Once perceived as just a means for personal expression, blogs have grown into a mainstream form of communication used by business entities, the media, political campaigners and individuals alike.

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Copyright Problems for the Unwary Real Estate Developer

By Scott Hervey Real estate lawyers take head. Waiting in the tall grass of your client’s real estate development project may be a thorny copyright issue that could cost your client all of the profit it earned on the project,

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Court Rejects Adoption of a Public Policy Test Component to Fair Use Doctrine

By Dale Campbell The United States District Court of Colorado issued summary judgment in favor of several big-name producers and movie studios and against several "clean movie" companies in the business of creating sanitized versions of movies.

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Digital Applications of the Compulsory License

By Scott Hervey A class action lawsuit filed this past May by a small group of independent music publishers against major online music services for failing to secure licenses to sell downloadable versions of certain songs brought to light what could be a crack in the way labels,

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The RIAA Goes After XM Satellite Radio for Copyright Infringement

By Scott Hervey XM’s introduction of a new service called XM + MP3 that allows its subscribers to listen to XM’s service on a portable player and record up to fifty hours of programming.

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Learn a Lesson from Puffy – Don’t Ignore a Cease and Desist Letter

By Scott Hervey A Federal district court jury in Nashville levied a $4.3 million dollar verdict against Sean Combs’ (Puffy) Bad Boy Entertainment, Bad Boy, LLC and Universal Records/UMG Recordings for infringing copyright owned by Bridgeport Music and Westbound records.

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Your Cell Phone Is A Homing Beacon

Your Cell Phone Is A Homing Beacon -Should The Government Be Allowed To Use It Without Showing Probable Cause? By: Intellectual Property Here’s the next step Big Brother is taking toward an Orwellian 1984: Your cellular telephone can pinpoint your location any time it’s turned on.

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Tech Companies, Insure You Choose the Correct E&O Policy!

By Scott Hervey Picking an Errors and Omission policy can be an extremely important undertaking, especially for a technology focused company. When legal costs for defending a complex intellectual property infringement claim can exceed half a million dollars,

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The Attorney General’s Google Search Comes Up Empty – So Far…Is Your Online Privacy At Stake?

The Attorney General’s Google Search Comes Up Empty – So Far…Is Your Online Privacy At Stake? By: Intellectual Property It was just a simple discovery tool, used by the Department of Justice in defense of a lawsuit brought by the American Civil Liberties Union.

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Intend To Infringe = Go To Jail

By Scott Hervey Intend to infringe – go to jail. That’s what the United States Attorney General proposed at a recent anti-piracy summit hosted by the U.S. Chamber of Commerce. United States attorney general Alberto Gonzales said the Department of Justice recently submitted to Congress the Intellectual Property Protection Act of 2005 aimed at toughening up intellectual-property enforcement.

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The Grokster Decision- What Does It Really Mean?

The Grokster Decision- What Does It Really Mean? By Scott Hervey On June 27, 2005, the United States Supreme Court handed down its decision in MGM v. Grokster.#160 That case involved an appeal from the Ninth Circuit by MGM,

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New Laws Attempt To Regulate The Internet

Download: New Laws Attempt to Regulate the Internet.pdf New Laws Attempt To Regulate The Internet Article first appeared in the March / April 2004 issue of Sacramento Lawyer, the bi-monthly publication of the Sacramento County Bar Association.

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What’s the Big Deal About Copyright?

Sacramento News & Review November 14, 2002 http://www.newsreview.com/sacramento/Content?oid=13569By Scott Hervey Sometime a musician will ask me, what’s the big deal about Copyright and why should I care about it? Shouldn’t I just focus on my music rather than worrying about all of this legal mumbo jumbo?

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