by The Lanham Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. §§ 1051, 1127,defines a trademark to mean “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” Under 15 U.S.C. § 1114(1), the holder of a registered trademark can file a trademark infringement claim against any person who, without the registered trademark holder’s consent, (1) uses any reproduction, counterfeit, copy, or colorable imitation of a registered mark; (2) in commerce; (3) in connection with the sale, offering for sale, distribution, or advertising of any goods or services; (4) where such use is likely to cause confusion, or to cause mistake, or to deceive. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988); see also 15 U.S.C. § 1125(a) (“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”).
The Trouble With Torrents
Most of us easily will recall one of the first uses of the internet: Napster. While Napster thrilled users with the prospect of “free” music and the ability to locate those obscure songs you thought were lost when your last vinyl LP record broke, its widespread use was devastating to the retail music industry and infuriated Metallica drummer Lars Ulrich. Further, in most instances, the use of Napster to download music and other content also amounted to copyright infringement. Accordingly, Napster was sued, the general public was educated about the fact that stealing copyrighted content is unlawful, and Lars Ulrich was happy.
The end of Napster marked only the beginning of the use of the internet for sharing files over what are called peer-to-peer (“P2P”) networks. Although Napster ultimately was moved to make adaptations to comply with copyright laws, multiple other unrestricted P2P file-sharing tools sprang up in its place. Seemingly overnight, tools like LimeWire Kazaa, and BearShare came into existence to fill the void left by Napster.
No First Sale Defense on Foreign-Made Copies
By Jeff Pietsch and Fabiola Larios
In a 4 to 4 split per curiam decision, the United States Supreme Court recently affirmed the judgment of the Ninth Circuit’s opinion in Omega S.A. v. Costco Wholesale Corp. which held that the first sale doctrine is not a defense to infringement claims on products imported in an unauthorized manner into the United States.
Omega S.A. (Omega) manufactured watches in Switzerland and sold the watches globally to consumers through authorized distributors and retailers. Omega first sold watches to authorized distributors overseas. Unidentified third parties eventually purchased the watches and sold them to ENE Limited, a New York Company, which in turn sold them to Costco Wholesale Corp (Costco). Costco then sold the watches to consumers in California. Omega originally authorized the foreign sale of the watches, but did not authorize their sale into the United States. Omega claims that by purchasing the watches bearing the copyrighted design which had been imported into the United Stated by third parties, Costco bypassed the authorized U.S. distribution channels thereby obtaining “gray market” goods.
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Swooshed Away
It’s with mixed emotions that we wish Matthew Massari farewell. Matt is joining our client Nike’s legal department in Portland, Oregon. A recent story by Bob Shallit tells the story well.
Sacramento attorney Matt Massari has just nabbed his "dream job" – with Nike Inc. in Beaverton, Ore. A former football All-American at UC Davis, Massari went to the University of Oregon for law school and did an internship there with Nike. The company’s campus was "magical," he says. The focus on sports is right up his alley.
He continued doing some outside legal work for Nike in associate stints at Downey Brand and Weintraub Genshlea Chediak Tobin & Tobin. Recently he got a call from Nike, asking him to join the company’s two-dozen-member in-house legal team.
Massari is getting good wishes from Scott Hervey, the Weintraub attorney who supervised him here. But Hervey jokes that he’s a little tired of having top talent lured away. Another associate ended up with a studio job with Paramount. "If you want a real cool in-house job with a great company," Hervey says ruefully, "come work for me."
Supreme Court Adopts Willful Blindness Standard for Inducing Patent Infringement
By A patent may be infringed directly or indirectly. Direct infringement exists when the alleged infringer makes, uses, sells, offers to sell, or imports a patented product or performs a patented method. 35 U.S.C. § 271(a). Indirect infringement exists when the alleged infringer causes another to directly infringe a patent. 35 U.S.C. §271(b) and (c).
There are two types of indirect infringement: inducing infringement and contributory infringement. Inducing infringement is essentially aiding and abetting another to infringe a patent. Section 271(b). Contributory infringement exists when the alleged infringer sells a component of a patented invention knowing that the component is especially made for use in an infringing product and not a staple article of commerce having substantial noninfringing uses. Section 271(c).
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