Los Angeles Intellectual Property Trademark Attorney Blog

Watching the Cubs play at Wrigley Field is a nostalgic indication of summer (except for the playoffs), especially when cameras pan out to the bleachers and the rooftop spectators overlooking the field. The Chicago Cubs filed a trademark infringement and unfair competition lawsuit on February 15, 2008 to prevent rooftop facility owners from charging patrons to watch the game from the rooftops that overlook Wrigley Field. The Cubs sued numerous rooftop operators in 2002 for copyright infringement and several state causes of action. The previous lawsuit settled with the rooftop operators agreeing to give the Cubs 17% of their gross revenue. Last year, the rooftops reportedly raked in $18 million dollars, resulting in a windfall of about $3 million for the Cubs.

Tom Gramatis was one of the original defendants in the 2002 lawsuit and settlement agreement and he has recently built two additional buildings with rooftop seating. The Cubs allege that Gramatis breached their settlement agreement by not paying the agreed upon royalties and has not paid any royalties for the new buildings. Interestingly, the Cubs have dropped their dubious copyright infringement claim from this lawsuit – undoubtedly a lesson learned from 2002 – and only assert that Gramatis is infringing on the Cubs’ trademarks and falsely advertising an association with the team in his promotional material and website. The Cubs allege that “Defendants’ marketing efforts are, and have been, likely to cause confusion, to cause mistake or to deceive as to, inter alia, the affiliation, association or connection between Defendants and the Cubs and the Cubs’ approval or sponsorship of Defendants’ business activities.” Chicago National League Ball Club, LLC v. Wrigley Rooftops III, LLC, 08-cv-968 (N.D. Illinois).

PRACTICE NOTE: In essence, the Cubs are trying to assert a copyright claim that they don’t have. It is highly unlikely that the Cubs would settle the lawsuit if Gramatis agreed to market his rooftop facilities as “a high perch with a view of a game played with a ball, a bat, no steroids or HGH, a diamond field, where the team’s logo incorporates a hibernating mammal.” On second thought, he might be dragged before Congress with a false advertising charge for the "no steroids or HGH" quip.

Los Angeles, CA – Patent infringement and copyright litigation complaint over toy helicopters was filed in Central District Court of California, Los Angeles, by Hong Kong based Silverlit Toys Manufactory, LTD. and its Canadian distributor. Plaintiffs design, manufacture, develop, and market toy product for children and sell the toy under its federally registered trademark Air Hogs® Havoc Heli™ Helicopters, in addition to track racing systems, robot toys, and water toys. Plaintiffs have issued United States Patents on the toy helicopter: U.S. Design Patent No. 546,269; U.S. Design Patent No. 552,531; U.S. Design Patent No. 554, 040, and U.S. Design Patent No. 544,825. They also have a registered copyright certificate with the U.S. Copyright Office, Copyright Registration No. VAu694-351. Plaintiffs claim that “the Air Hogs® Havoc Heli™ Helicopters is an original decorative design that is easily distinguishable from traditional remote control toy helicopters” and has been recognized by “the Guinness Book of World Records as the world’s smallest commercial toy remote control helicopter.” Plaintiffs further allege that Air Hogs® Havoc Heli™ Helicopter was the number one best selling remote control toy of 2007.

The defendants, Soft Air USA, Inc. and a subsidiary of Sports Authority, are accused of copying and selling toy helicopters that infringe on Plaintiffs’ Air Hogs® Havoc Heli™ Helicopter’s patents and copyrights. Plaintiffs allege that Defendants’ helicopters are identical to the Air Hogs® Havoc Heli™ Helicopter that “Defendants’ knock off helicopters were recently recalled after an investigation by the Consumer Product Safety Commission in response to consumer complaints that the rechargeable battery packs were catching fire.” Plaintiffs continue that they were “bombarded with calls from customers who mistakenly believed that Defendants’ inferior and dangerous knock off product was made by Silverlit.” Plaintiffs allege that customers believed that the Defendants’ voluntarily recall included the Air Hogs® Havoc Heli™ Helicopter and returned the genuine product to Plaintiffs. The case is styled as: Silverlit Toys Manufactoy, LTD v. Soft Air USA, Inc., CV08-01053 JFW (C.D. California).

PRACTICE NOTE: In order to preserve their good will and reputation with their customers and the public, it is important for intellectual property owners to immediately enforce their rights against infringers to stop the influx of unauthorized product of inferior quality.

Los Angeles, CA – On February 20, 2008, Chanel, Inc., the luxury goods company, filed a complaint for counterfeiting, trademark infringement, and Lanham Act 43(a) unfair competition against numerous individuals in the California Central District Court – Eastern Division, in Riverside. Chanel asserts that it is the owner of the USPTO registered trademarks CHANEL and the CC MONOGRAM for use on necklaces and costume jewelry, including earrings, rings, bracelets, and pendants in International Classes 14 and 28. Chanel asserts that its trademarks are “symbols of Plaintiff’s quality, reputation, and goodwill” and customers “readily identify merchandise bearing the Chanel Marks as being high quality merchandise sponsored and approved by Chanel.”

Chanel alleges that Defendants are “promoting, and or otherwise advertising, distributing, selling, and/or offering for sale counterfeit products, including at least necklaces and costume jewelry bearing trademarks which are exact copies of Chanel Marks” and are counterfeit, lower quality goods that also incorporate Chanel’s trade dress. The complaint further alleges that the “net effect of Defendants’ actions is to confuse consumers who will believe Defendants’ Counterfeit Goods are genuine goods originating from and approved by Chanel.” In addition to preliminary and permanent injunctive relief, Chanel seeks three times its actual damages under 15 U.S.C. § 1117, or, at its election, seeks statutory damages of $1,000,000.00 (one million dollars) from each defendant under 15 U.S.C. § 1117(c)(2) of the Lanham Act. The case is styled as Chanel, Inc. v. Kin Fung Poon et al., EDCV08-0224 VAP (CD CA 2008).

PRACTICE NOTE: The Ninth Circuit Court of Appeals recently held that if a trademark owner seeks counterfeiting statutory damages under 15 U.S.C. 1117(c) – instead of actual damages, then it is not entitled to attorneys’ fees under section 1117(b). K and N Engineering, Inc. v. Bulat, 510 F.3d 1079, 1081 (9th Cir. 2007). The Ninth Circuit vacated the trial court’s award of $100,000 to K and N, but let stand the $20,000 in statutory damages. In counterfeiting cases where the actual damages are low, Plaintiffs must weigh the option of receiving lower actual damages and their attorneys’ fees, against the award of higher statutory damages and no attorneys’ fees.

Los Angeles, CA – On February 15, 2008, Star Fabrics, Inc. commenced copyright litigation in California Central District Court over textile/fabric design copyrights, which apparel bearing the design is allegedly sold at Ross department stores and were manufactured by US Textile Printing, Inc. and Uno Clothing, Inc. Star Fabrics claims to have purchased all rights in the design which it then transferred to fabric. Star Fabrics registered the design with the U.S. Copyright Office and received Copyright Registration No. VA 1-418-127.

The complaint alleges that Plaintiff sent cease and desist letters to all of the defendants – who refused to stop selling the garments and/or fabric. As a result, Star Fabrics’ lawsuit makes a claim for copyright infringement 17 U.S.C. § 101 et seq. It also adds a second claim for vicarious and/or contributory copyright infringement, alleging that defendants “knowingly induced, participated, aided and abetted in and resultantly profited from the illegal reproduction, importation, purchase and distribution and/or sales of product featuring” the copyrighted design.

PRACTICE NOTE: Although copyright laws currently protect patterns and designs printed on or stitched into the fabric, copyright protection is not currently available to protect fashion designs themselves (i.e. the cut, style, or dimensions of clothing). However, the Design Piracy Prohibition Act (H.R. 5055) bill is currently pending in congress that, if enacted into law, will provide three years of protection for the fashion design if certain conditions are met. Click Here To Read About The Bill.

A jury awarded patent infringement damages of $41,083,853.00 to Rembrandt Vision Technologies, L.P. in its patent infringement trial against CIBA Vision Corporation. Rembrandt Vision Technologies, L.P. v. CIBA Vision Corporation, 2:05-CV-491 (E.D. Texas). The patent infringement lawsuit commenced in 2005 when Rembrandt originally accused both Bausch and Lomb – which settled before going to trial – and CIBA of infringing on U.S. Patent No. 5,712,327. The asserted patent relates to long-term extended wear contact lenses which are more gas permeable, allowing for oxygen exchange, and retain moisture.

Rembrandt is a non-practicing patent holding company – i.e. they don’t manufacture products, they merely file patent infringement lawsuits. As Forbes.com reports, Rembrandt’s parent “has raised $150 million to purchase patents and sue companies it claims infringe on them.” Forbes also reports that numerous patent assertion companies are being funded by institutional investors and hedge funds.

PRACTICE NOTE: Rembrandt’s strategy in settling with Bausch & Lomb raised concerns for co-defendant CIBA. In eBay, Inc. v. MercExchange, LLC, 126 S. Ct. 1837 (2006), the Supreme Court limited the ability of non-practicing patent holders from obtaining permanent injunctions. In an attempt to overcome the eBay decision, Rembrandt – because it is non-practicing patent holder – has reportedly given Bausch & Lomb – who manufactures the product – the right to seek a permanent injunction against infringers.

Litigation commenced in Central District Court of California, Santa Ana Division, alleging unfair competition under the Lanham Act 43(a), 15 U.S.C 1125. Plaintiffs, Orthopedic Development and MinSURG Corp., are the owners of a patent-pending TruFUSE® medical device product which is a spinal facet fusion system invented by Dr. David A. Petersen, M.D., “that offers a low-risk and minimally invasive surgical solution to back pain resulting from facet joint degeneration and from mild spinal instability.” The complaint alleges that the TruFUSE® surgery can be completed in less than an hour and the patient usually needs one night of hospital stay. Although the invention is patent-pending and cannot be currently asserted in a patent infringement lawsuit, Orthopedic Development currently owns a registered trademark with the USPTO for the TruFUSE® trademark.

The Plaintiffs discovered that one of their own distributors, Nutech Medical, Inc., was allegedly developing and marketing a “TruFUSE® knock-off” facet fusion product. The complaint alleges that Plaintiffs discovered that the infringing product was going to be marketed under a confusingly similar name of “NUFUZE” and that the product incorporates Plaintiffs’ proprietary information and trade secrets, which were provided under the Plaintiffs’ distribution agreement with NuTech. Upon learning of NuTech’s application to the USPTO to register the NUFUZE trademark, Plaintiffs filed an opposition to the application before the Trademark Trial And Appeal Board (“TTAB”). NuTech filed an answer in the TTAB proceeding and abandoned its NUFUZE and BIOFUZE trademarks, and allegedly began marketing the product under the “NuFix” trademark. The case is titled Orthopedic Development Corp. v. Vikingcraft Spine, SACV08-01888 (C.D. California)

The complaint alleges that numerous surgeons that use Plaintiffs’ TruFUSE® product began receiving solicitations from NuTech and its distributor, Vikingcraft, offering the NuFix product at a reduced price. Plaintiff filed suit against NuTech and other defendants in Florida and sent notice to Vikingcraft, putting it on notice of the patent application and the Plaintiffs’ unfair competition and false advertising claims. Plaintiff claims that Defendant falsely asserts “that (a) the TruFUSE® Allograft has a tendency to pop out after it is implanted and that the ridge design of NuFix reduces this occurrence; and that (b) NuFix is designed to be used with TruFUSE® Instruments held on consignment by hospitals.”

Plaintiff asserts that Defendant’s statements to customers causes confusion and asserts a cause of action under the Lanham Act unfair competition – false designation of origin (15 U.S.C. §1125(a)(1)(A)). Also, Plaintiff asserts a cause of action for false advertising under the Lanham Act (15 U.S.C. §1125(a)(1)(B)). Plaintiffs also include causes of action for common law unfair competition and for violation of California Business and Professions Code § 17200. In addition to preliminary and permanent injunctive relief, Plaintiffs seek monetary and punitive damages.

PRACTICE NOTE: Although a patent-pending application cannot be asserted in a patent infringement action, damages – in the form of a reasonable royalty – may be obtained against a potential infringer by putting the infringer on notice of a published patent application. See 35 U.S.C. 154(d).

Trademark litigation, including Anti-Cybersquatting Consumer Protection Act violations and Section 17200 unfair competition, was filed by Beverly Hills based Hollywood Network, Inc. against its former independent contractor of ten years, Chris Davies. Hollywood Network alleges that Davies was intimately involved in Plaintiff’s annual Hollywood Film Festival and Hollywood Awards gala celebration. Plaintiff is a licensee of numerous trademarks registered with the USPTO, including Hollywood Film Festival, Hollywood Awards, and Hollywood Movie Awards. Plaintiffs also own numerous domain names that incorporate their trademarks.

Plaintiffs allege that Defendant Davies registered the “awardshollywood.com” and “hollywoodmobileawards.com” domain name using a fictitious pseudonym or dba. Plaintiffs alleged that they made a good-faith attempt to resolve the dispute by having the domain names transferred voluntarily. However, Defendant offered to sell the disputed domain names to Plaintiffs. Plaintiffs thus filed the instant complaint alleging cybersquatting under 15 U.S.C. § 1125(d), requesting statutory damages under 15 U.S.C. § 1117(d) in an amount not less than $1,000.00 and not more than $100,000.00 per domain name. Also, Plaintiffs allege infringement of USPTO registered trademarks under 15 U.S.C. 1114(1) and False Designation of Origin under 15 U.S.C. § 1125(a). Further, Plaintiffs allege California Common Law Trademark Infringement and unfair competition under Business and Professions Code § 17200. The case is titled Hollywood Network, Inc. v. Chris Davies, CV08-01035 (CD CA 2008).

Patent infringement litigation commenced against The DIRECTV Group, Inc. in Los Angeles District Court on February 14, 2008. The patent holder, Phoenix Solutions, Inc., is accusing DIRECTV of infringing four of its patents (Patent Nos. 6,615,172, 7,139,714, 7,050,977, and 7,225,125). The patents relate to computer-based speech recognition technology and allow for “virtual customer service agent” responses to incoming phone calls from a live person.

The complaint alleges that DIRECTV’s customer support lines and website, “including movie and/or event ordering lines and installer activation lines, that employ a natural language interactive voice response (IVR) system that includes a virtual agent” infringes on the four patents. The complaint asserts that customers/installers can speak with DIRECTV’s ordering system in a conversational manner, which ability has saved DIRECTV $9.2 million over touch-tone answering devices. The complaint states that Plaintiff contacted DIRECTV almost a year ago in an attempt to settle the dispute, but DIRECTV did not provide the requested information. Plaintiff alleges that the patent infringement is willful and seeks treble damages and attorneys’ fees and costs under 35 U.S.C. §§ 284 and 285.

A copyright infringement, trade dress infringement (Lanham Act 43(a), 15 U.S.C. 1125), and unfair competition lawsuit was filed by luxury jeweler Van Cleef & Arpels against supermodel Heidi Klum’s company and jewelry designer Mouawad USA, Inc. in Federal District Court in New York in December of 2007. The complaint alleges that for almost forty years, Van Cleef “has marketed the Alhambra collection of jewelry, which has become world renowned for its distinctive well-recognized design.” Van Cleef alleges that it is the owner of all copyrights in the subject designs and, through extensive advertising and promotion of the Alhambra collection, it has established secondary meaning and distinctiveness therein.

Van Cleef alleges that defendants intentionally and willfully copied the Alhambra designs, which mainly feature a four leaf clover. Van Cleef continues that defendants, by appropriating the goodwill built up by plaintiff are causing confusion in the market place, in that consumers are often confused between the plaintiff’s designs and those of defendants.

It now appears that the lawsuit is going to be settled even before the Defendants file an answer to Van Cleef’s allegations. On February 13, 2008, the parties asked the Court to adjourn the initial conference from February to April while they negotiate a settlement of the case.

PRACTICE NOTE: It is interesting that the case is settling so quickly because Van Cleef admits that one of its applications for copyright registration was refused registration by the U.S. Copyright Office. I would predict that it was refused registration because it was a mere depiction --without any elements of originality-- of a four leaf clover that appears in nature. Even if the copyright claim fails, however, Van Cleef appears to have acquired distinctiveness in its four leaf clover jewelry to assert its trade dress infringement and unfair competition claims, which exist outside of the copyright claims.

Pharmaceutical company Sanofi-Aventis filed a complaint in Los Angeles, California District Court seeking a declaratory judgment that three medical device patents are invalid and not infringed by Sanofi’s syringes. The three United States patents at issue, which cover syringes having needle shield safety devices and may be used with pre-filled pharmaceutical injection syringes, are owned by Saftey Syringes, Inc.

Safety Syringes asserted the same three patents, Nos. 6,613,022, 7,101,355, and 7,300,420, in Los Angeles District Court in April of 2007 against Plastef. That case is titled: Safety Syringes, Inc. v. Plastef Investissements, 07-CV-2307 (C.D. CA 2007). Sanofi alleges that it imports and uses a needle safety shield device that is similar to the device in the Plastef case. Thus, because Safety Syringes has asserted claims of inducement and contributory patent infringement in the Plastef case, Sanofi-Aventis believes that it is being accused of infringing the three patents and that an actual controversy exists between the parties. Sanofi alleges that Safety Syringes has put Sanofi in a “position of pursuing behavior that [Safety Syringes] would allege constitutes an infringement or of abandoning a course of action which Aventis believes it has a lawful right to pursue.”

PRACTICE NOTE: Sending a cease and desist letter to a potential infringer may subject a patent holder to a declaratory judgment complaint in the potential infringer’s backyard. Careful wording in a cease-and-desist letter may divest the court of jurisdiction in the infringer’s home town and, thereby, eliminate defendant's "home court" advantage.

Domain-name arbitration complaint was filed by trademark owner Laerdal Medical Corporation at the WIPO. Laerdal had common law trademark rights in “Laerdal” before it filed a trademark application with the U.S. Patent & Trademark Office on October 16, 2000. The Disputed Domain Name leardal.com – a misspelling of the trademark which transposes the “a” and “e” – was registered by the Respondent on October 11, 2001, nearly one year after the trademark application filing date. Laerdal’s trademark registered with the USPTO on March 25, 2003, after the domain name was registered.

The Panel found that the medical company’s trademark and the misspelled domain name were confusingly similar. Also, the pay-per-click advertising on the parked website targeted the same consumers based upon offers for competing medical equipment and the registrant did not have any rights or interests in the confusingly similar trademark. Further, the Panel found that the domain was registered in bad faith because it was registered after the trademark application was filed and offered similar products through pay-per-click ads. Thus, the Panel ruled that the registration “was an act of typo squatting and was calculated to confuse Internet users as to the source of and to take commercial advantage of the Complainant’s rights in the LAERDAL trademark.” Click Here To Read The WIPO Arbitration Ruling.

PRACTICE NOTE: You should choose a strong trademark because it allows for instantaneous protection from the date of first use. For example, because laerdal’s trademark is strong, even though Laerdal’s trademark had not registered with the USPTO at the time the domain name was registered, the Panel found that the prior application date was sufficient to establish trademark rights. Fanciful, arbitrary, or suggestive trademarks are strong, whereas descriptive and generic marks are weak. Click Here For Additional Suggestions In Selecting A Trademark.

The trade secret and copyright infringement lawsuit filed by Symantec subsidiary Veritas against Microsoft is proceeding to trial in Washington, as we discussed here, when the Court denied Microsoft’s motion for summary judgment. Microsoft had also filed counterclaims in the Washington lawsuit against Symantec for breach of contract and for breach of the implied covenant of good faith and fair dealing. The agreement between the companies was for Symantec to provide source code in certain software to Microsoft for use with its operating software and servers; however, there were specific limitations on the use of the software which Symantec alleged Microsoft exceeded. The agreement also included the following jurisdictional provision:

VERITAS consents to jurisdiction and venue being solely in the state and federal courts sitting in the Western District of the State of Washington with respect to any claim or counterclaim brought by VERITAS in connection with this Agreement. MICROSOFT consents to jurisdiction and venue being solely in the state and federal courts sitting in the Northern District of the State of California with respect to any claim (including a counterclaim) brought by MICROSOFT in connection with this Agreement.

On summary judgment, the Court dismissed Microsoft’s contract-based counterclaims because of the unambiguous and express contractual language. The Court was not persuaded by Microsoft’s argument that enforcing the bargained-for forum selection clause would be unreasonable under the circumstances. Nor was the Court moved by Microsoft’s argument that Veritas had waived this defense by waiting to raise it on summary judgment because the defense was clearly stated in Veritas’ earlier filed Reply to Microsoft’s counterclaims. Click To Read The Order.

Copyright infringement litigation was filed against Miguel Naranjo by Warner Bros. Entertainment, Inc. and Disney Enterprises, Inc. on February 6, 2008 in the Central District of California, Los Angeles. The copyrighted movies at issue are Tim Burton’s Corpse Bride and Finding Nemo. The complaint alleges that since 2005, Mr. Naranjo, without plaintiffs’ permission, used the KaZaA online file sharing technology to distribute the movies in violation of the Copyright Act, 17 U.S.C. 101 et seq. The complaint alleges that the copyright infringement was willful and intentional and seeks preliminary and permanent injunctions, in addition to monetary damages and attorneys’ fees. Read The Warner Bros. Ent., Inc. v. Naranjo Complaint.

A patent infringement lawsuit was filed by tax preparation company H&R Block against Jackson Hewitt on February 8, 2008. Click To Read Complaint. H&R Block is the owner of US Patent No. 7,072,862 and US Patent No. 7,177,829 and asserts that Jackson Hewitt is infringing both patents.

The ‘862 and ‘829 patents are business method patents that cover providing a tax refund to a tax payer through debit cards, credit cards, or credit at a retailer. The patents also cover the ability to assign other governmental payments, social security payments for example, to creditors that in turn credit the funds to a tax payer via debit cards or credit cards. The complaint alleges that Jackson Hewitt’s ipower CashCard infringes on H&R Block’s two tax refund patents. The complaint seeks three times the actual damages because Jackson Hewitt’s conduct was allegedly intentional and willful.

PRACTICE NOTE: As of February 14, 2008, there are 63 issued patents that are classified by the US Patent & Trademark Office as “tax strategy” patents, with an additional 107 published applications. There have been discussions in Congress to ban tax strategy patents, but until there is a change in the law, tax advisors need to be aware of the tax patent landscape. Follow these steps in order to search for tax strategy patents by classification number:

• Go to: http://www.uspto.gov/patft/index.html
• Select: “Advanced Search” in "Issued Patents" or "Published Applications"
• Type In: “ccl/705/36T”

Although this procedure provides information related to tax patents as classified by the USPTO, there may be other tax patents which would require additional search parameters to locate. If a more detailed search is required, you should contact a patent attorney.

A trademark cancellation proceeding – which is similar to a lawsuit – was filed at the Trademark Trial and Appeal Board (TTAB) by John Lennon’s widow, Yoko Ono, against Lennon Murphy, the registrant of the “Lennon” trademark. Murphy, a musician, filed an “intent to use” trademark application with the United States Patent and Trademark Office (USPTO) for the trademark “LENNON” on April 11, 2001. The trademark application was published on October 29, 2002 and was registered on January 21, 2003.

Ono alleges that she is the owner of two registered trademarks for “John Lennon” (although she fails to disclose that they are for a design – John’s signature pictured to the left – and not a word mark) for use with “paper products, tote bags and address books” and “eyewear and eyewear accessories.” Murphy’s registration, on the other hand, is for the use of the “Lennon” trademark on musical sound recordings and entertainment services by a musical group.

Ono alleges that the use of the “Lennon” trademark will dilute, either by blurring or tarnishment, the power of her John Lennon trademarks. Ono further alleges that Murphy committed fraud on the USPTO in her application by not disclosing that “Lennon” was her first name and that Murphy lied to the USPTO when she stated that she began using the trademark in 1997, at the age of 15. Click To Read Ono's Filing.

PRACTICE NOTE: It seems that Ono may run into a laches issue because she waited over five years from the date of publication to file the cancellation proceeding. See Turner v. Hops Grill & Bar, Inc., 52 U.S.P.Q.2d 1310 (T.T.A.B. 1999) (finding laches in cancellation proceeding with five-year delay between publication for opposition and filing of petition to cancel); National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 1580, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991) (holding that laches defense is applicable to TTAB proceedings and the time begins to run from the date of publication of the trademark for opposition). According to Murphy’s website, her manager – who ironically is the son of Ono’s attorney – approached Ono in 2000 to clear the use of the “Lennon” trademark and received her blessing. An undue delay in asserting your rights may prevent recovery under the equitable defense of laches.

A lawsuit alleging trade secret and copyright infringement litigation was filed by Symantec security products subsidiary against Microsoft in 2006: Veritas Operating Corporation v. Microsoft Corporation, Case No. 2:06-CV-00703-JCC (W.D. Washington). The case arose from a 1996 agreement between Symantec and Microsoft, whereby Symantec had shared its source code in certain software products for Microsoft to uses in its operating systems and server software. Symantec alleged that Microsoft breached their agreement by modifying the software in ways that were exclusively reserved to Symantec and expressly prohibited, thereby running afoul of Symantec’s trade secret rights and copyrights. Microsoft filed for summary judgment of non-infringement of Symantec’s alleged trade secrets, copyrights, and other claims.

On February 4, 2008, the Court denied most of Microsoft’s requests. The Court ruled that it was not persuaded that Microsoft did not breach its agreement and that Veritas had presented enough evidence to establish its trade secret rights in the private interfaces and other information. The Court also noted that Veritas had provided credible evidence of bad faith, one in the form of an email summarizing a statement by one of Microsoft’s managers on the project, who admitted that:

his intention is to eventually get [Symantec] out of the box because he believes we should not rely on any 3rd party for core components. . . . He also says he doesn’t care a damn about the contract because he wasn’t involved, and we should just lie to [Symantec] that we are doing this for performance reasons[.]

Also, because the Court found that whether or not Microsoft’s actions were within the scope of the Agreement is a fact question that remains for the jury, it maintained Symantec’s copyright infringement claim – finding substantial similarity in Microsoft’s software. Accordingly, Symantec’s remaining claims will now proceed to trial.

In April of 2006, an Eastern District of Texas jury awarded TiVo $73.9 Million in damages for EchoStar’s infringement of several claims of U.S. Patent No. 6,233,389. The ‘389 patent covers digital video recorder (“DVR”) technology that covers time shifting both for previously recorded programs and for programs that are currently being recorded. You may recall TiVo’s commercials proclaiming that “you can pause live TV.” The jury found that EchoStar, operator of the Dish Network, infringed on both the hardware claims and the software claims. The district court issued a permanent injunction against EchoStar and entered the judgment. EchoStar appealed.

On an emergency motion by EchoStar, the Court of Appeals for the Federal Circuit (“CAFC”) stayed the permanent injunction pending the outcome of the appeal. On January 31, 2008, although the CAFC agreed with EchoStar that it did not infringe on the hardware claims, the CAFC upheld the infringement of the software claims. The CAFC explained that because the jury had not segregated the damages award along the hardware and software claims, the $73.9 Million award still stood. In fact, the CAFC instructed the lower court to increase the monetary award based on EchoStar’s continuing infringement while the lower court’s judgment was stayed. Click To Read The CAFC Opinion.

Filing a trademark application with the USPTO for a descriptive trademark does not provide enforceable trademark rights until secondary meaning can be established, after which the trademark can be registered on the principal register from the supplemental register. The trademark owner learned the drawbacks of choosing a descriptive trademark when attempting to enforce its trademark rights against a domain name registrant in a National Arbitration Ruling that was filed under the Uniform Domain-Name Dispute-Resolution Policy ("UDRP").

Complainant trademark owner B&V Associates, Inc. filed a trademark application for its ewaterways.com trademark on July 26, 2000. However, because the USPTO deemed the mark was merely descriptive of applicant’s services, B&V amended its application to seek registration under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f), based on acquired distinctiveness as a result of continued and exclusive use since 1996. On June 18, 1999, a year before B&V’s trademark application was filed, Respondent registered the ewaterway.com domain name. The Panel found that at the time of Respondent’s domain name registration, Complainant, as admitted by its Section 2(f) filing with the USPTO, had not established trademark rights because it had not acquired distinctiveness. Accordingly, because Complainant did not meet the initial burden of presenting a sufficient prima facie case showing of enforceable rights in the trademark at the time of the domain name filing, the Panel denied cancellation or transfer of the domain name. Click To Read The Decision.

PRACTICE NOTE: It is best to adopt a trademark that is immediately protectable and enforceable. Descriptive trademarks are not immediately protectable and require a showing of acquired distinctiveness. Click To Read Suggestions On Selecting A Proper Trademark.

The Internet Corporation for Assigned Names and Numbers (“ICANN”) is looking to effectively end domain tasting. Domain tasting is the use of the Add Grace Period (“AGP”) to test the profitably of a domain name registration by tracking traffic to a newly registered domain name. The AGP is a five-day grace period that allows the registration of the domain name to be deleted and a refund to be issued to a registrar for the annual ICANN fee. Cybersquatters and typosquatters will sometimes register a domain name, that is a misspelling of a trademark or service mark, and monitor traffic from visitors that misspell the proper domain name or trademark. The cyber-squatters and typo-squatters will then park the domain name and place advertisements, such as pay per click advertisements, and monitor the income for up to five days, cancelling the lower traffic domain names.

ICANN proposes to eliminate the AGP and charge a non-refundable ICANN fee upon registration of the domain. “Domain tasting has been an issue for the Internet community and ICANN is offering this proposal as a way to stop tasting,” said Dr Paul Twomey, ICANN’s President and CEO. “Charging the ICANN fee as soon as a domain name is registered would close the loophole used by tasters to test a domain name’s profitability for free.”

The original purpose of the AGP was logical because it allowed registrars to avoid costs if a domain name was mistyped or misspelled during the registration process. It is part of the .com, .net, .org, .info, .name, .pro, and .biz registry contracts.

According to ICANN, “[t]asting has been a serious challenge for the Internet community and has grown exponentially since 2004. In January 2007 the top 10 domain tasters accounted for 95% of all deleted .com and .net domain names – or 45,450,897 domain names out of 47,824,131 total deletes.”

PRACTICE NOTE: In today’s internet-based business world, you have to make sure that the .com extension is available for your trademark. Don’t use hyphens in your domain name because that will send your traffic and customers to another site. Also, don’t misspell common words because that will unintentionally direct your traffic and customers to another site. You may, however, want to register common misspellings of your domain name and point those domains to your main site. You should also register the .net and .org extensions for your trademark to reduce the possibility of cybersquatters registering your domain name with those extensions.

An intellectual property lawsuit was filed on January 30, 2008 in Los Angeles Federal District Court, by Paige Premium Denim against Mervyn’s department store over the sale of allegedly infringing jeans which incorporated the plaintiff’s designs. Plaintiff was founded by Paige Adams-Geller, a former Miss California and a jeans industry model. Paige’s jeans bear original and distinctive stitched rear pocket designs, some of which have received copyright registrations and function as Paige’s trade dress. Paige’s jeans have been featured on nationally televised shows such as The Tyra Banks Show, Daily 10, and Inside Edition.

The complaint alleges that in disregard of Paige’s exclusive rights in the designs, Mervyn’s is copying the copyrighted stitching designs and confusingly similar designs. Paige also contends that Mervyn’s conduct was willful and intentional and that Mervyn’s products are of inferior quality. The lawsuit sets forth five causes of action and seeks a preliminary injunction and a permanent injunction of Defendants’ alleged conduct:

First, copyright infringement under 17 U.S.C. § 501, where Defendant’s access and copying is alleged based on the voluminous sales of Paige’s jeans and the stitch designs, and seeking full costs of suit pursuant to 17 U.S.C. § 505;

Second, false designation of origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), for infringing on Paige’s trade dress rights by causing confusion among consumers that Paige “authorized, originated, sponsored, approved, licensed or participated in” defendant’s use of the stitch designs on defendant’s jeans;

Third, violation of state trademark dilution and injury to reputation, California Business & Professions Code § 14330, because Mervyn’s use of Pagie’s trademark and/or trade dress “is causing a likelihood of dilution because Paige’s trade dress is deprived of its exclusive capacity to identify Paige;”

Fourth, California unfair competition and unfair business practices in violation of the Cal. Bus. & Prof. Code, § 17200, et seq.; and

Firth, infringement of Paige’s California common law trademark and/or trade dress rights.

PRACTICE NOTE: Although copyright laws currently protect patterns and designs printed on or stitched into the fabric, copyright protection is not currently available to protect fashion designs themselves (i.e. the cut, style, or dimensions of clothing). However, the Design Piracy Prohibition Act (H.R. 5055) bill is currently pending in congress that, if enacted into law, will provide three years of protection for the fashion design if certain conditions are met. Click Here To Read About The Bill.

WIPO domain name arbitration under the UDRP provides a thorough analysis of a domain name registrant’s rights and those of trademark owners. In HSBC Finance Corporation v. Clear Blue Sky, Inc., Case No. D2007-0062, Complainant HSBC had registered the trademarks CREDITKEEPER and CREDIT KEEPER (plus design) with the USPTO on July 13, 2004 and November 22, 2005, respectively. The domain name in dispute was initially registered by Peter Bradford on January 24, 2001 – prior to HSBC’s trademark registrations. On December 15, 2004, after HSBC’s trademark had already registered, Respondent Clear Blue Sky acquired the disputed domain name from Bradford for the sum of $48,000.

Clear Blue Sky argued that it should benefit from Bradford’s earlier domain name registration because it acquired all rights and interests through a written assignment and denied bad faith registration and use of the domain name. Paragraph 4(a) of the Policy requires that the Complainant prove three elements to obtain a decision that a domain name should be either cancelled or transferred, one of which includes that “the domain name has been registered and is being used in bad faith.” In rejecting Respondent’s “relation back” theory, the Panel found that:

The consensus view of WIPO Panelists is that, while a renewal of a domain name does not amount to registration for purposes of determining bad faith, the transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.

The Panel also found that HSBC had established a prima facie case of bad faith registration and that Blue Sky had not met its burden of countering with evidence to show its good faith. The Panel noted that the initial registration occurred before HSBC trademark rights were established. But after HSBC launched the mycreditkeeper.com domain, the initial registrant posted pay-per-click ads on its parked domain with similar subject matter. And, eight months after HSBC’s launch, Blue Sky purchased the subject domain for a substantial sum of $48,000, presumably, in hopes of selling it to HSBC at a much higher price. As a result, the Panel ordered that the domain name be transferred to HSBC.

PRACTICE NOTE: The Anti Cyber-Piracy Act, 15 U.S.C. 1125(d), allows domain name disputes to also be filed in U.S. Federal District Courts. The advantage of filing a Federal District Court action is the availability of statutory damages of at least $1,000 and not more than $100,000 per domain name. Attorneys’ fees and costs are also available under 15 U.S.C. 1117.

In my previous post, I discussed the Patriot’s trademark application filing for “19-0 The Perfect Season,” and the New York Post’s retaliatory, and possibly clairvoyant, “18-1” trademark application. I was interviewed by New York Post reporter, Charles Bennet, regarding the trademark issues surrounding the now more relevant “18-1” trademark and was quoted in his newspaper article. Click HERE to read the NY Post article.

February 1, 2008. The Los Angeles, California district court issued summary judgment of invalidity of plaintiff David Sitrick’s asserted claims from his two U.S. patents (5,553,864 and 6,425,825) against DreamWorks and Warner Brothers. The patents claim the replacement of images and voices into pre-existing movies and video games. The District Court held that the asserted claims were invalid for lack of enablement for integration of voice or images into DVDs (i.e. the specification did not teach a person of ordinary skill in the art how to practice the invention – without undue experimentation – as claimed for movies). Even though the patents enabled practicing the invention for video games, the district court held that the full scope of the claimed invention – including integration into movies – must be enabled.

The Court of Appeals For the Federal Circuit (“CAFC”) affirmed the lower court’s ruling and the invalidity of the asserted claims for lack of enablement:

Defendants showed with clear and convincing evidence that one skilled in the art could not take the disclosure in the specification with respect to substitution or integration of user images in video games and substitute a user image for a pre-existing character image in movies without undue experimentation. Defendants supported their motion for summary judgment of invalidity by reference to the teachings of the specifications and the opinions of their two experts. Read the CAFC opinion.

The CAFC stated that the full scope of the claimed invention must be enabled and not merely one portion thereof. See Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007). Read the CAFC opinion.

Sitrick also appealed the transfer of the case from Illinois to the Central District of California. The CAFC held that Sitrick had waived his objections to venue in California because he did not assert them in his complaint or by motion, despite litigating the case for more than three years in California.

Palantir.net began using the “palantir” trademark in 1996 for providing website design and development services nationally and registered the domain name in 1997. Palantir.net also filed a trademark application in 2002 with the USPTO, which registration issued in 2006. In early 2007, Palantir.net discovered Palantir Technologies, Inc. (“PTI”) was using the “palantir” trademark for designing database software for others and hiring interaction designers and software engineers, similar to Palantir.net. Palantir.net also learned that PTI was using the “palantir” trademark for Google’s AdWords service to pay for sponsored search results for the word “palantir” on Google.

Palantir.net moved for a preliminary injunction to stop PTI’s use of the trademark “palantir” in advertising its services. The California Northern District Court granted the preliminary injunction and found that: “Palantir.net has easily proven the existence of serious questions going to the merits; indeed, the Court finds that it has also demonstrated a probable success on the merits given (1) the virtual identity of the marks, (2) the strength of the mark, (3) the relatedness of the goods, and (4) both parties’ use of the Internet.”

The Court also found that the balance of hardships also tips sharply in Palantir.net’s favor because of PTI’s recklessness in adopting the “palantir” trademark without first searching for any similar trademarks, Palantir.net’s long-time use of the mark, and the importance of the trademark to word-of-mouth referrals. The Court ordered that PTI not use “palantir” in any Google ads and to place prominent disclaimers on its website disclaiming any affiliation with Palantir.net and advising visitors how to access Palantir.net. Click To Read Order.

PRACTICE NOTE: A trademark search and legal availability opinion are a relatively inexpensive way to determine whether there are any conflicting trademarks that should be avoided. This slight initial expense will avoid possible litigation and an interruption to your business and advertising. Click Here To Read Suggestions On Selecting A Proper Trademark.

Former World Wrestling Entertainment (“WWE”) wrestler the “Ultimate Warrior” (he has legally changed his name to Warrior) filed a trademark infringement lawsuit against video game maker THQ, Inc. for infringing on Warrior’s USPTO registered trademarks, service marks and common law trademarks. Warrior has registered trademarks and service marks for “Ultimate Warrior,” “Generation Warrior,” and “Warrior” with the U.S. Patent & Trademark Office. Warrior also owns a design trademark registration for his logo, which includes his wrestling costume and face paint design. In 2003, the parties entered into negotiations to license intellectual property rights associated with Warrior, but the negotiations terminated without finalizing an agreement.

THQ later produced a wrestling video game that allowed players to create their own character or select from real-life wrestlers. The create-a-wrestler feature allows a player to select the wrestler’s appearance, select a name (“Warrior” was an option), assign signature wrestling moves, including entrance moves into the ring, and entrance music. Plaintiff argued that the video game allowed players to create a wrestler that “has a similar build, face paint, and logo symbol as Warrior, that uses the entrance and finishing moves” and the same name “The Warrior” or “Warrior.” Defendant conceded that players exchange information on the internet on how to build “The Warrior” character and that it issued “a preliminary marketing document stating that Warrior would be in Defendant’s ‘Day of Reckoning’ video game was released on April 1, 2005, but was then retracted.”

Plaintiff filed a complaint against THQ alleging infringement of a registered trademark, false designation of origin of an unregistered trademark or trade dress, and infringement of common law trademark. THQ basically argues that it was fair use and it did not take any affirmative actions that would make it liable for trademark infringement. Defendant moved for summary judgment of non-infringement, or in the alternative, partial summary judgment. Click To Read The Order.

Defendant argued that “Warrior” is descriptive and Defendant was using the term in a descriptive sense and there was no likelihood of confusion. The Court slammed Defendants argument by holding that the mark was registered and protectable and there was a high likelihood of confusion because it is the same exact word and used for a wrestling character, the exact use for which the mark was registered. Defendant argued that its use of the “bat like” symbol was generic, not exactly the same as the Warrior’s symbol, and was not likely to cause confusion. The Court ruled against the Defendant’s arguments because the logo did not have to be exactly the same and the fact that the games were geared to wrestling fans was likely to cause confusion.

The Court also quickly disposed of Defendant’s “fair use” defense: “[d]espite this assertion, the Court finds that a jury could find that neither the mark nor the similar symbol was used in good faith based on the prior, unsuccessful negotiations between the parties.” If the case does not settle, it will proceed to trial where – based upon the Court’s findings on summary judgment – a jury is likely to find infringement.

Defendant Palliser Furniture’s manufacture and sale of a theater chair under the trademark “The Eastwood” did not make the Dirty Harry star’s day and a trademark infringement suit was filed in the U.S. District Court in Los Angeles, California. The trademark lawsuit probably didn’t make the Canadian defendant’s day either, especially because Palliser had only recently also been sued by the estate of the late Marlon Brando for a theater chair which it sold under the trademark “The Brando.”

The complaint explains that Clint Eastwood is very selective in the use of his name, image, and likeness and did not authorize Palliser’s use of “The Eastwood” designation. In addition to the federal Lanham Act (15 U.S.C. § 1125) claim, the complaint adds a cause of action for misappropriation of name in violation of California Civil Code § 3344, where the use of the “Eastwood” name for commercial gain and profit was not authorized or licensed by the plaintiff. To round up the good, the bad, and the ugly, the complaint adds a common law claim for misappropriation of name or likeness.

In addition to a preliminary and permanent injunction, Eastwood seeks statutory damages under 15 U.S.C. § 1117(a) for the defendant’s profits and for costs of the litigation. And to make the case a million dollar baby, Eastwood asserts that Palliser’s knowing and willful conduct makes the case exceptional, thereby entitling Eastwood to treble damages and attorneys’ fees.

PRACTICE NOTE: The complaint also alleges that Palliser chairs with other famous celebrity last names, “The Connery,” “The Bronson,” “The Cagney” and “The Cooper.” You should usually not adopt a celebrity’s name as a trademark for your products because it is highly likely to lead to litigation. If your business resources can best be utilized in other areas to promote your business, CLICK HERE to read our article on selecting a proper trademark that will reduce the likelihood of ending up in court.

Patents, trademarks and copyrights and counterfeiting will be at the forefront at the WIPO’s Fourth Global Congress on Combating Counterfeiting and Piracy that meets in Dubai from February 3-5, 2008. The meeting is to focus on the following key themes:

• Health and Safety Risks Counterfeit Products Pose to Consumers;
• Raising Awareness of the Full Economic and Social Costs of Counterfeiting and Piracy;
• The Growing Problem of the Sale of Counterfeit and Pirated Products over the Internet; and,
• Strengthening Cooperation and Collaboration at the Global Level.

“The Congress will bring together policy makers and experts from more than 60 countries to explore and identify concrete measures and resources to counter the damaging effects of the illegal trade in counterfeit and pirated goods.” Click To Read The WIPO Announcement.

Every year as the Super Bowl approaches, the National Football League begins to use trademark law and copyright law to enforce its trademarks for the words “Super Bowl” and its copyrights of the broadcast. In years past, the NFL has prevented hotels from using its trademark “Super Bowl” in association with viewing parties. This year, the NFL has sent cease and desist letters to churches that intend to host “Super Bowl” viewing parties. The NFL has asserted that showing the game on television screens larger than 55 inches violates the NFL’s copyrights. Copyright Statute: 17 U.S.C. § 110(5)(B). The NFL argues that viewing parties slant its Nielsen Ratings downward, which are used to determine viewership and, in turn, the amount the NFL can charge advertisers, thereby decreasing advertising revenue. Click To Read Christian Post Article.

A trademark, antitrust and unfair completion lawsuit was filed in Las Vegas, Nevada on behalf of plaintiff Nights at Vegas, Inc., a Las Vegas based real-estate property-management company. The Defendants are the ubiquitous Donald Trump, the star of television reality show The Apprentice, and several companies that include …you guessed it… the name Trump in some way, shape, or form. The lawsuit seeks the Court’s declaration that Nights at Vegas can fairly use the Trump trademarks in its advertising when it attempts to rent out condominium space in the Trump Towers.

Also, Nights at Vegas accuses the Trump Defendants of antitrust violations for entering into exclusive deals with online travel sites to only use the Trump owned management-company, refusing to deal with the plaintiff, and intimidating real estate agents to suppress the fact that condo owners can deal with plaintiff. Plaintiff alleges that they only charge a twenty percent commission for the rented condos and Trump charges fifty percent.

Further, the complaint adds a cause of action for false promotion under 15 U.S.C. § 1125(a)(1)(b) based on the statements in Trump’s agreements that property owners will not be free to stay at their own property if they deal with other management companies (i.e., there will be “blackout periods"). There is also a state cause of action for unfair competition thrown in without much elaboration.

Plaintiff alleges actual damages of one billion dollars, and seeks punitive damages of three times its actual damages.

PRACTICE NOTE: In order to prevail on a fair use defense, a defendant must show: (a) the mark is not being used as a trademark; (b) the mark is being used to only describe defendant’s products, geographic origin or the products, or the mark is also the defendant’s name; (c) the use was made in good faith. See 15 U.S.C. § 1115(b)(4). The Ninth Circuit also recognizes a “nominative fair use” defense which requires a showing that “First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992).

A federal complaint alleging (i) copyright infringement, (ii) unfair competition and false designation of origin under the Lanham Act § 43(a) (15 U.S.C. 1125), (iii) unlawful deceptive acts and practices, and (iv) unfair competition under New York law was filed against Target Corp., by well renowned fashion designer Diane von Furstenberg (“DVN”). DVN accuses Target of selling a dress with a print that is nearly identical to DVN’s fabric pattern and design for a “spotted frog” print, for which DVN owns copyright registration number VAu704-073. Click HERE to read the complaint.

DVN alleges that after her attorneys sent a cease and desist letter to Target, the infringing dress was quickly removed from Target's website. Target, however, is accused of continuing to sell the infringing dresses at its retail locations across the country. Thus, the complaint alleges that Target’s “infringement is willful, done with knowledge of and/or in reckless disregard of DVF’s rights in its Spotted Frog Design.” If the infringement is found to be willful, the Court may award punitive damages.


PRACTICE NOTE: Copyright laws currently protect patterns and designs printed on or stitched into the fabric. As we have previously discussed, however, copyright protection is not currently available to protect fashion designs themselves (i.e. the cut, style, or dimensions of clothing). But the Design Piracy Prohibition Act (H.R. 5055) bill is currently pending in congress that, if enacted into law, will provide three years of protection for the fashion design if certain conditions are met. Click Here To Read About The Bill.

In a patent infringement lawsuit, medical device maker TriMed, Inc. had accused Stryker Corporation, a competing medical equipment manufacturer of devices that mend broken bones, of infringing on its utility patent related to an implantable wrist-fracture treatment medical device. The District Court in Los Angeles, California had adopted Stryker’s proposed claim construction and granted summary judgment of non-infringement.

TriMed appealed and the Federal Circuit Court of Appeals (“CAFC”) held that the claim at issue of U.S. Patent No. 5,931,839 “recites sufficient structure on its face for performing the claimed functions, and therefore, contrary to the district court’s interpretation, does not involve a means-plus-function limitation.” In holding that the lower court had erred in its claim construction and order of non-infringement, the Federal Circuit stated:

Stryker’s motion for summary judgment of noninfringement was premised solely upon reading the claim language at issue as a means-plus-function limitation. Having properly construed the relevant claim language as falling outside the ambit of § 112 ¶ 6, we hold that Stryker has failed to demonstrate that there is no genuine issue of material fact that its accused devices do not infringe on the ’839 patent. By Stryker’s own admission, the structural limitation of holes in claim 1 is certainly present in its accused devices.

The Federal Circuit, by reversing the trial court’s summary judgment order, revives TriMed’s patent infringement litigation in Los Angeles District Court.

PRACTICE NOTE: When drafting patent claims in a patent application, particular attention must be paid to the term “means” and whether it is intended to serve as a “means plus function” limitation. If uncertainty exists, the prudent path is to eliminate the term “means” from the claim language.

The New England Patriots are apparently so confident that they will win the Super Bowl and finish the season with a perfect 19 and 0 record, that on January 17, 2008, they filed trademark applications with the United States Patent and Trademark Office to protect the “19-0 The Perfect Season” and “19-0” trademarks on numerous goods and services. Click To See The Applications. Not to be outdone and to show support for the New York Giants, the New York Post newspaper has reportedly filed a trademark application for “18-1.”

The Patriots, however, may be dismayed to learn that they were beaten to the punch. William Harpole – who was apparently more confident than the Patriots – filed a trademark application for “19-0 The Perfect Season” over two months earlier. Click To See Harpole's Application. Nine years earlier, Mr. Harpole – a possible clairvoyant – had also filed a trademark application for “The Perfect Season 19-0” on December 7, 1998. But the 1998 application was later unwisely abandoned, thereby drawing the previous “possible clairvoyant” accolade into question.

Because Mr. Harpole’s current trademark application filing date precedes the Patriot’s application by over two months, Mr. Harpole’s application is superior to that of the Patriot’s and a trademark dispute and possible litigation may follow. See 37 C.F.R. § 2.83.

The Patriots are not the first to attempt trademarking a sport-related-term. In 1988, Pat Riley, the then coach of the Los Angeles Lakers, registered the trademark for “Three Peat” with the Patent and Trademark Office. Unfortunately, the Lakers lost the next year in the finals and Coach Riley had to wait until the Chicago Bulls won three championships in a row to cash in on his trademark investment. Click To See Riley's Trademark.

Jay Leno, The Tonight Show comedian, had sued Judy Brown and her book publishers for copyright infringement for publishing his jokes without permission in several joke books. Other comics such as Rita Rudner and Bob Ettinger were also named as plaintiffs in the copyright lawsuit, which was filed in US District Court in Los Angeles. NBC Studios, which produces The Tonight Show and is the copyright owner under the work-for-hire doctrine, was also a plaintiff in the copyright infringement case.

Judy Brown was accused of publishing books with jokes from various comedians – although she did give credit to the authors of the jokes. Leno’s copyright attorney had argued that by naming the source of the material, Brown admitted that she was not the true author and had willfully infringed on the comedians’ copyrights.

"I thought it was important to make it clear that jokes are protected like any other art form," Leno said in a statement. In fact, Compendium II of Copyright Office Practices § 420.02 provides for copyrighting jokes and comedy routines if they contain at least a certain minimum amount of original expression in tangible form. However, short quips and slang expressions consisting of no more than short phrases are not registrable. Further, the copyright protection in jokes only applies to the “expression” (i.e. the way the words are arranged) and not the “idea” itself. See Gibson v. CBS, Inc., 491 F. Supp. 583 (S.D.N.Y. 1980) (the court dismissed a copyright infringement lawsuit involving a comedy skit where the only similarity between the two routines involved people pretending to be eggs).

Under the out-of-court settlement, Brown and her publishers agreed to immediately cease the distribution, manufacture and sale of Brown's joke books and to pay an undisclosed monetary amount to plaintiffs.

PRACTICE NOTE: Copyright registration is a relatively inexpensive form of intellectual property protection that is often overlooked by businesses owners. For example, websites and marketing materials may be copyrighted by businesses in order to protect against infringers. Copyright protection extends to a broad range of materials - even the makeup designs applied to actors in the Broadway musical Cats were deemed to be copyrightable. See Carell v. Shubert Org., Inc., 104 F. Supp. 2d 236, 243, 247 (S.D.N.Y. 2000).