by Zachary Wadlé

On July 17, 2008, Apple, Inc. applied to register the trademark “APP STORE” covering the Cupertino based company’s online store where users can buy various software applications for their iPhones, iPads, and/or iPods. Apple eventually completed the trademark examination process, and the mark proceeded to publication in the Trademark Official Gazette on January 5, 2010. On July 6, 2010, Microsoft Corporation filed an Opposition with the Trademark Trials and Appeals Board against Apple’s proposed registration of the APP STORE trademark. Two weeks ago, Microsoft filed a motion for summary judgment requesting that Apple’s trademark application be summarily rejected by the Board. The centerpiece of Microsoft’s motion is the argument that Apple’s proposed APP STORE trademark is “generic” and therefore ineligible for trademark protection. The Trademark Board must therefore decide whether Apple’s proposed APP STORE trademark is “generic” or not.

Continue Reading Microsoft v. Apple In a “Generic” Trademark Dispute

by Audrey Millemann

Patent misuse is a judge-made doctrine (now partly codified in 35 U.S.C. § 271(d)) that provides a defense to patent infringement if the patent owner has used the patent in such a way as to expand the scope of the patent grant. Patent misuse prevents a patent owner from conditioning a license on requirements beyond the scope of the patent. For example, a patentee cannot condition a license on the licensee’s purchase of an unpatented product from the patentee. This would result in the patentee expanding the scope of its monopoly beyond that granted by the patent. Another type of patent misuse occurs when the patentee requires the licensee to pay royalties after the expiration of the patent. 

Continue Reading Patent Misuse Becomes Narrower

Over the last several years as I have interviewed clients, lectured students, and otherwise engaged in discussions relating to intellectual property, specifically copyrights, I have found that people have more misconceptions about copyright law than most other areas of law.  Although many of these misconceptions, or myths, have their origin in a kernel of truth, or are the reasonable conclusions of a logical mind, they are nonetheless misconceptions and operating under these incorrect beliefs can adversely affect a person’s legal rights.  Below are five of the most common myths.

Continue Reading Common Copyright Myths

by David Muradyan

Do promotional CDs sent by music recording companies to radio disc jockeys and music critics which contain labels restricting distribution of the CDs and purport to create a license agreement actually create a license agreement between the recording company and the recipient, thereby rendering inapplicable the “first sale” doctrine—an affirmative defense to copyright infringement that allows owners of copies of copyrighted works to resell those copies? In UMG Recordings, Inc. v. Augusto, No. 08-55998 (9th Cir. Jan. 4, 2011) (“UMG Recordings”), the Ninth Circuit answered in the negative.

Continue Reading “First Sale” doctrine allows radio disc jockeys and music critics who are provided with promotional CDs to resell such CDs without infringing the copyright holder’s copyright in those CDs

by Jeffrey Pietsch

Naked licensing is not as fun as the name suggests. Rather it can mark the end of a trademark owner’s exclusive right to their trademark. A trademark owner may grant a license to another to use the owner’s trademark. For example, following the San Francisco Giants’ World Series victory, the amount and type of products that featured the Giants trademark was mindboggling. Each of these products, if legally produced, would have obtained a license from the Giants to produce these goods. The consumer purchasing these goods and seeing the Giants’ trademark would have an idea as to the quality of the merchandise based on the trademark. Naked licensing occurs when the trademark owner fails to exercise adequate quality control over the licensee. This failure may result in the trademark ceasing to represent the quality of the product or service the consumer has come to expect.   The Ninth Circuit stated that such licensing is “inherently deceptive and constitutes the abandonment of any rights to the trademark by the licensor.” 

Continue Reading Naked Licensing: Trademark Owners Beware