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, also known pejoratively as “patent trolls.” Among the many changes included in the AIA is the requirement for non-practicing entities to file individual lawsuits against accused infringers rather than multiple defendants, thereby creating a potentially significant increase in the cost of litigation. This provision of the AIA, and other proposals directed at non-practicing entities, are often premised on the assumption that every lawsuit filed by these so-called “trolls” is frivolous.

While it’s true that a significant number of lawsuits filed by non-practicing entities have no merit, and are settled by the accused parties merely to avoid the costs associated with defending a patent infringement lawsuit, it is inaccurate and potentially counterproductive to assume that all patent litigation initiated by a non-practicing entity is meritless. Yet, recent comments by President Obama grouped all non-practicing entities together and cast them all as a significant drain on U.S. businesses and an overall drag on technology companies. The White House stated that “stopping this drain on the American economy will require swift legislative action.”

Continue Reading Are Patent Trolls Good?

By Kay Brooks

Today the United States Supreme Court ruled that Section 3 of the federal Defense of Marriage Act (DOMA) is unconstitutional. The case, United States v. Windsor, 570 U.S. ____ (2013), involved the portion of DOMA that stated that the federal government will only recognize marriages between opposite-sex spouses for purposes of federal law. There are over 1,000 federal laws that address marital status, and DOMA’s Section 3 denied validly married same-sex couples myriad protections and responsibilities under federal law. Because of the Windsor decision, same-sex spouses who are validly married under state law will now also be treated as married under federal law.

 

Continue Reading Supreme Court Rules DOMA Section 3 Unconstitutional

By Hilary Lamar

The United States Supreme Court issued its opinion in Hollingsworth v. Perry, 570 U.S. ___ (2013), this morning, regarding the validity of Proposition 8. The outcome is that same-sex marriage is once again legal in California. The Supreme Court did not rule on a specific right to same-sex marriage, but rather it stated that neither it nor the federal Court of Appeals for the Ninth Circuit (which includes California) had the power to hear the case. Hollingsworth is largely a procedural case, and it requires some background to fully understand.

 

Continue Reading Marriage Equality Returns to California

By Lisa Y. Wang

In March 2013, pop star Rihanna filed a lawsuit in the United Kingdom against TopShop, the enormously popular fast fashion chain, for using an "unflattering" image of her on one of their t-shirts without her permission (the offending t-shirt can be seen here). Rihanna is claiming £3.5 million in damages (U.S. $5 million). Rihanna alleges that TopShop used the image on the shirt without her permission, and that she is not making any royalties off of the product even though it features her face. She is also particularly upset because the image is very unflattering and the quality of the t-shirts is "poor" stating that "The base image of the first claimant [Rihanna] is of such an unflattering nature that it would not be approved." 

According to some reports, Rihanna has been trying to negotiate with TopShop for almost a year regarding the offending shirt, but they have dismissed complaints from her team and offered her a paltry US $5,000. It is interesting to note, and a smart legal move on TopShop’s part, that the shirt is only sold in TopShop’s United Kingdom locations. The reason TopShop can sell the shirts without paying Rihanna a dime is because of a loophole in the copyright laws in the United Kingdom. The loophole gives photographers ownership rights to an image. In other words, the subject of the image, in this case, Rihanna, does not own the image or its copyright. More important, England does not have strict right of publicity laws like the United States. Traditionally, there has been no protection of the commercial value of one’s persona in England.

Continue Reading A Celebrity’s Right of Publicity

 

By Scott Hervey

“Everyone does it” exclaimed the IT staffer in charge of the company’s website. "Everyone uses their competitor’s brand as a keyword to trigger a paid advertisement."   The company’s chief marketing officer remembers something her mother use to say about jumping off a bridge…but that’s not important right now. They received a letter from a competitor’s lawyer and it’s time to get the company’s general counsel involved.

Over the past 10 years there have been a number of cases in State and Federal courts that have addressed the question of when the use of a competitor’s trademark as a keyword is actionable infringement. For a time the focus was on whether such use was “use in commerce” as required by the Lanham Act. Some courts held that there was no use in commerce when the competitor’s mark was used as a keyword to trigger an advertisement but the mark did not itself appear in the ad copy; other courts held that such use was “use in commerce.”   The debate over whether or not such use is “use in commerce” under the Lanham Act is now dead; most jurisdictions agree that the use of a competitor’s brand as a keyword is “use in commerce.”   The focus is now on whether such use creates a likelihood of confusion.

In Network Automation v. Advanced Systems Concepts, the 9th Circuit advanced a new four factor test for determining likelihood of confusion in keyword cases: i) mark strength; ii) evidence of actual confusion; iii) the type of goods and degree of purchaser care; iv) and the labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page.   

Continue Reading Keyword Advertising Quagmire