Most of us have become familiar with the terms and conditions printed on the back of the ticket that is obtained when parking our cars in public lots. We all are familiar with the caption at the top of the ticket proclaiming “This contract limits our liability, please read it.”  Having parked my car hundreds of times in public parking lots, each time receiving a small ticket informing me of this proclamation, I now scandalously admit that I have never read these terms. Yet, if a dispute were to ensue regarding the terms and conditions of my use of public parking, the dispute would likely center around the terms and conditions that I have carelessly ignored in cavalier fashion. While I’m not suggesting that we review, analyze, revise and negotiate the boilerplate terms thrust upon us in the context of public parking, I mention this frequently overlooked contract relationship to demonstrate that we often may enter into contracts with others, while giving little thought or consideration to the terms we have accepted.

Continue Reading This Contract May Cause You Unlimited Liability – Please Read It

By Scott Hervey

Licensing attorneys should take note of the recent decision by the Central District of California in Jason Bitzer v. Body Glove Int’l et al. In this case, Body Glove licensed its trademark to Sport Dimension who manufactures bodyboards. Sports Dimension allegedly had the permission to use the likeness of professional bodyboarder Jason Bitzer on merchandise, including bodyboards. Body Glove separately had a sponsorship agreement with Bitzer which gave Body Glove the right to use Bitzer’s likeness in certain circumstances. Sport Dimension manufactured bodyboards containing Bitzer’s image and Body Glove’s trademark. Body Glove now faces potential liability for the alleged misappropriation of Bitzer’s likeness due to its use on the bodyboards.

Sports Dimension argues that it entered into an agreement with Bitzer to have Bitzer promote Sport Dimension products as a sales representative, and this agreement gave it the right to use Bitzer’s image on various Sport Dimension products such as bodyboards. Sport Dimension claimed that this agreement included the Body Glove branded bodyboards. Bitzer claimed that the agreement did not grant Sport Dimension that right and that Sport Dimension and Body Glove violated California Civil Code Section 3344.

Continue Reading Licensor Can Potentially Be Liable for Licensee’s Misappropriation of Third Party Athlete’s Likeness

 

By James Kachmar

Personal jurisdiction is an issue that a court must typically decide in determining whether it can hear a case brought against a nonresident defendant, for instance, when a resident of Nevada is sued in a California court. Unless a defendant has “continuous and systematic” contacts with a forum state, personal jurisdiction is generally limited to specific jurisdiction, that is, when the defendant has done some act or made some contact with the forum state that gives rise to the claims against it. Last month, the Ninth Circuit considered the issue of personal jurisdiction in the context of a willful copyright infringement claim. 

Washington Shoe Company has done business in the state of Washington for more than 100 years. A-Z Sporting Goods, Inc. is an Arkansas company that operates a single retail store in Alma, Arkansas. It does not sell products over the internet and apparently conducts no business in Washington, or even outside of Arkansas for that matter. 

Between 2007 and 2009, a Washington Shoe salesman regularly visited A-Z in Arkansas and A-Z would purchase a number of items from Washington Shoe. Washington Shoe later discovered that A-Z was selling two boots that appeared to infringe on Washington Shoe’s copyrights. Washington Shoe’s attorney sent a cease and desist letter to A-Z and in response A-Z sold the offending boots to a thrift store. Washington Shoe then sued A-Z for copyright infringement in a federal district court in Washington. A-Z moved to dismiss the complaint on the grounds that the court lacked personal jurisdiction over it since it did not have any contacts with the state of Washington.

 

Continue Reading Copyright Infringement and Personal Jurisdiction

by Audrey Millemann

The holidays are upon us. Given that everything seems to be protected by intellectual property rights, maybe someone should protect Christmas!

Could Santa Claus patent Christmas? Well, as a result of the America Invents Act (“AIA”), enacted in September 2011, the United States switches from a “first to invent” to a “first inventor to file” patent system effective March 16, 2013. U.S. patent law will now be more consistent with the patent laws of the rest of the world, although U.S. law still provides a one-year grace period in which a patent application can be filed after certain types of public disclosures by the inventor, while most foreign laws require absolute secrecy before filing. 

So, maybe Santa Claus could file a patent application if he was the first to invent something that has not been publicly disclosed in the last year. If he filed the application before March 16, 2013, the application would be governed by the old patent laws. If he filed it after March 16, 2013, it would be governed by the AIA and Santa would have to be the first inventor to file an application for that invention. Of course, there may be no other inventors competing with Santa so it might not be much of a problem.  And, as to public disclosures, that should not be a problem since Santa has been operating in secret for hundreds of years.

Continue Reading You Can’t Patent Christmas!

Imagine you just finished reading your favorite book series about vampires and werewolves, which you purchased at Costco at a significant discount.  Or perhaps you bought your favorite Dracula knockoff on eBay from an overseas retailer.  Finding no need to re-read the books, or re-watch the movies, you decide to recoup some of your hard-earned money by selling the books and movies on Craigslist.  Have you committed copyright infringement?  Possibly.

The answer to this question may soon be understood when the United States Supreme Court rules on the matter of Supap Kirtsaeng d/b/a Blue Christine99 v. John Wiley & Sons, Inc. (”Kirtsaeng”).  In the Kirtsaeng case, the United States Supreme Court has been asked to define the limits of the First Sale Doctrine under United States Copyright Law.  The decision may have a far-reaching impact on the ability of so-called “gray market” retailers such as Costco and eBay to sell copyrighted goods at discount prices.

Continue Reading Is it the Twilight of a New Era for the First Sale Doctrine?