IP Law Blog

Weintraub partner Scott Hervey presented a program on August 19, 2010 to the Association of Corporate Counsel on boilerplate language in IP transactions.

Boilerplate - those standard legal clauses appearing at the end of the agreement. These clauses are often overlooked when reviewing an agreement because they are supposed to be "standard," and in drafting they are often cut from a previous agreement and copied into a new one. This is a mistake. Boilerplate is important and should be given as much scrutiny as the rest of the contract. Although this presentation will focus certain boilerplate language in IP transactions, most of the clauses discussed can be found in any type of transaction.

By: Matthew G. Massari

On August 10, 2010, the United States District Court for the Central District of California granted Blizzard Entertainment, Inc., the publisher of the online computer game World of Warcraft, $88.5 million in a copyright-infringement case against a Georgia resident. The game publisher filed suit in federal court in Los Angeles in October 2009 against Alyson Reeves of Savannah, Georgia, and five unidentified defendants.

By: Audrey Millemann and Etan Zaitsu

The federal Stored Communications Act (SCA) of 1986 was established in an attempt to give Fourth Amendment-type privacy protections to people for their Internet communications. In other words, Congress sought to protect people’s Internet privacy from warrantless intrusion.

By: Jeffrey Pietsch and Etan Zaitsu, second year law student at McGeorge School of Law

Thinking of running a smear campaign against a business competitor? Thinking of posting disparaging content about someone anonymously online? Think again. According to a decision made by the Ninth Circuit on July 12, 2010, anonymous online postings may not qualify as protected speech under the First Amendment.

By: W. Scott Cameron

Farzad and Lisa Tabari are auto brokers specializing in matching customers with new Lexus automobiles through authorized Lexus dealers. They used two Internet domain names to market their business – buy-a-lexus.com and buyorleaselexus.com. Toyota Motor Sales U.S.A. (“Toyota”), the exclusive distributor of new Lexus vehicles, objected to the Tabari’s use of their trademark “Lexus” in the domain names, and sued for infringement. The district court found infringement after a bench trial, and granted Toyota’s request for an injunction. Specifically, it enjoined the Tabari’s use of the Lexus mark in any domain names. The Tabaris appealed to the Ninth Circuit, which agreed with the Tabaris and reversed. Toyota Motor Sales U.S.A., Inc. v. Tabari (9^th Cir. July 8, 2010).

By: Audrey Milleman

The Supreme Court recently decided a key case addressing the patentability of business methods. In In Re Bilski, 2010 U.S. Lexis 5521(June 28, 2010), the Court rejected the Federal Circuit of Court of Appeals’ “machine-or-transformation” test for determining the patentability of a process. The Court also declined to adopt a rule that business methods are not patentable.

By: James Kachmar

The Ninth Circuit recently addressed the application of anti-dilution law to trademarks that happen to be common English words. In Visa International Service Association v. JSL Corporation (decided June 28, 2010), the Court held that the defendants’ use of the term “eVisa” for its multilingual education and information business was likely to dilute the Visa trademark. Joseph Orr, who operated eVisa through JSL Corp., ran an English language tutoring service while living in Japan called “Eikaiwa Visa.” (Eikaiwa is Japanese for “English conversation.”) After returning to the U.S., Orr started eVisa (the short form of Eikaiwa Visa) and claimed that the use of the word “visa” was meant to suggest “the ability to travel both linguistically and physically through the English speaking world.” Visa sued JSL claiming that eVisa was likely to dilute its “Visa” trademark. The district court granted summary judgment in Visa’s favor.

By: Zachary M. Wadle

The following scenario is common when a business owner attempts to register a trademark with the United States Patent and Trademark Office (“USPTO”): The business owner decides upon a seemingly unique business trademark. The business owner conducts a quick internet search for similar trademarks being used in the same industry, and does not find anything. Confident in the uniqueness of the mark, the business owner files for registration of the trademark with the USPTO, pays the required fee, and presumes the application will fly through the registration process with a hitch. A few months later, the business owner receives an “office action” from an Examining Attorney at the USPTO.

By: Matthew G. Massari

In February 2010, a U.S. District Court judge for the Northern District of California denied the National Collegiate Athletic Association’s motion to dismiss a class-action lawsuit that argues the NCAA and its licensees should compensate former student athletes for the use of their images and likenesses. Subsequent to the judge’s order, eleven former college football and basketball players joined former UCLA basketball star Ed O’Bannon in the litigation. O’Bannon alleges that the NCAA has and continues to enter into agreements that allow the use of his image without compensation paid to him, including a 2007 agreement between the NCAA and Thought Equity Motion, Inc. to offer “classic” college basketball games online. 

By: Scott Hervey with summer associate James Brannen

Recently the 9th Circuit heard an appeal involving the network and producers of the TV program “Ghost Hunters” and two individuals who claimed that the network stole their idea. Parapsychologist Larry Montz and publicist Daena Smoller maintain that in 1981 they conceived of and created written materials, including a screenplay, about a new reality television program featuring a team of investigators who use high tech equipment to study and occasionally debunk paranormal activity.