by Nathan Geronimo

Earlier this month, the Ninth Circuit addressed the standard for evaluating a claim for trademark dilution under the Trademark Dilution Revision Act of 2006 (“TDRA”), 15 U.S.C. §1125(c). The TDRA is meant to protect a property right in a trademark. Dilution prevents the use of a famous mark by others in any manner that lessens the uniqueness of the mark. Under the TDRA’s predecessor, the Federal Trademark Dilution Act (“FTDA”) and cases under the FTDA, to pursue a claim for trademark dilution, the offending junior mark had to be “identical or nearly identical” to the mark it was diluting. The new standard represents a more holistic approach, applying factors that focus on, among other things, the degree of similarity between the two marks.

Continue Reading Levi’s Legal Department: The Ultimate Pocket Protectors

By Dale Campbell

The Ninth Circuit has attempted to end the disputes arising from the creation of Facebook. As dramatized in the Hollywood blockbuster, The Social Network, the Winklevoss twins and other Harvard graduates claimed that Mark Zuckerberg stole the idea for Facebook from them. The Winklevosses claimed they conceived and created the idea for a social network, then known as Harvard Connection and later as ConnectU, and hired Zuckerberg to complete the programming.

The Winklevosses claimed that Zuckerberg was involved in all aspects of the website development and business planning for Harvard Connection and acted as a member of the Harvard Connection development team. Zuckerberg was allegedly entrusted with the basic idea for the project and enterprise, including database and website design. Moreover, the Winkelvosses alleged that Zuckerberg was provided information regarding the website’s business model, functionality, concepts, and information to be collected from users. The Winklevosses alleged that Zuckerberg utilized all of this information in creating Facebook and failed to advise the Winklevosses that he had stopped working on the Harvard Connection code but, instead, was developing a competing website. The complaint alleged a variety of business torts including copyright infringement, misappropriation of trade secrets, breach of the covenant of good faith and fair dealing, breach of fiduciary duty, and interference with prospective economic advantage. 

Continue Reading At Some Point, Litigation Must Come To an End

By Zachary Wadlé

When Google was initially formed in 1998, it announced ambitious plans to digitally scan all of the world’s existing books and make them accessible to users of Google’s internet search engine.  By 2004, Google announced that it had partnered with several large research libraries around the world to scan their collections.  Google’s plan was predictably attacked in a lawsuit by the Authors Guild and other publishers in 2005 who said that Google was infringing their copyrights.  The Author’s Guild’s case was then certified as a class-action lawsuit, meaning that the millions of authors who have published a book worldwide would be part of the class represented and would be bound by the result of the case.  Given the class-action certification, any settlement reached by the litigating parties had to be thoroughly vetted and approved in court.  The case has been pending for several years before Second Circuit Court Judge Denny Chin under Authors Guild v. Google Inc., 05-CV-08136, U.S. District Court, Southern District of New York (Manhattan).  

Continue Reading Google Books Settlement Rejected By Court

By Jeffrey Pietsch

Last month, the United States District Court in Nevada found that a non-profit that reposted in its entirety an article originally published by the Las Vegas Review-Journal did not infringe on the owner’s copyright under fair use grounds.  The court’s decision was likely influenced by the copyright holder’s business as a serial litigator in copyright infringement cases.  This article will discuss the fair use exception to copyright infringement specifically in light of the copyright holder’s business model.

Continue Reading Copyright Troll Loses on Fair Use Claim

by David Muradyan

 

When a creditor provides a loan to a debtor, the debtor will often grant to the creditor a security interest in the debtor’s collateral, including the debtor’s intellectual property. A creditor who receives a security interest in the debtor’s intellectual property, usually by a security agreement, must perfect the security interest so that subsequent purchasers and creditors are on notice of the creditor’s security interest in the collateral. Rules relating to the creation, attachment, perfection and priority of security interests in personal property, including “general intangibles” which include intellectual property, are governed by Division 9 (Secured Transactions) of the California Uniform Commercial Code (“Article 9”), unless federal law preempts Article 9. In order to determine where to perfect a security interest for each type of intellectual property, and since copyrights, trademarks, and patents are all governed by different statutes and case law, it is important to review and analyze not only Article 9 but also the Copyright Act of 1976, 17 U.S.C. § 101 et. seq. (the “Copyright Act”), the Lanham Trademark Act of 1946, 15 § 1051 et. seq. (the “Lanham Act”), and the Patent Act of 1952, 35 U.S.C. § 101 et. seq. (the “Patent Act”).

 

Continue Reading How to Perfect a Security Interest in Intellectual Property (Copyrights, Trademarks and Patents)