By Zachary Wadlé

On April 19, 2010, the United States Supreme Court granted certiorari in Costco v. Omega, in which the Ninth Circuit found that the first sale doctrine in copyright law only applied to goods manufactured or sold in the United States with the copyright owner’s authority. The Supreme Court will decide whether the first sale doctrine also applies to the “one-way” gray market sale of goods –goods that are manufactured and first sold abroad and then imported to the United States without the authorization of the copyright owner.

Continue Reading Supreme Court Will Decide Direction of the “First Sale” Doctrine in Copyright Law

by Matt Massari

Patent lawyers have understood the consequences of sending a cease and desist letter to a potential infringer since the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). After MedImmune, a party contemplating sending such a letter risks that the recipient may file for a declaratory judgment in their own jurisdiction.  This may require the sender to appear in a distant court, at their own expense.  Thus, the patent owner must be very careful when communicating with possible infringers. Several recent decisions have applied the MedImmune standard for declaratory judgment jurisdiction to trademark controversies, making it difficult for trademark lawyers to avoid exposure to a declaratory judgment action after contacting a potential infringer. 

Continue Reading Patent Minefield Now a Risk for Trademark Owners

by Sara Davidson

The United States Court of Appeals for the Second Circuit issued an opinion on April 1, 2010 that provides a compass for companies like eBay to navigate the murky waters of trademark infringement in the e-commerce marketplace. Tiffany & Co. v. eBay Inc., No. 08- 3947 (2d Cir. April 1, 2010)

Continue Reading Tiffany v. eBay, Revisited

By W. Scott Cameron

Mighty Leaf Tea sought to register the mark “ML” in standard character form to market, not tea, but rather personal care products and skin care products, including skin soap, body wash, foam bath, body lotion, body scrub, bath salts, massage oils, potpourri, and incense.  It filed its application with the United States Patent and Trademark Office on July 2, 2007, claiming first use in November of 2004.  The USPTO denied the application, however, because it found a likelihood of confusion with the mark “ML MARK LEES,” which had previously been registered for “skin care products, namely skin cleanser, skin toner, skin cream, skin lotion, skin mask gel, make-up foundation, powder and blush.” 

Continue Reading Is “ML” Confusingly Similar To “ML”?

By Audrey A. Millemann

The “first sale” or “patent exhaustion” doctrine provides that the first unrestricted sale by a patent owner of a patented product exhausts the patent owner’s control over that particular item. The doctrine is also analyzed as an implied license to the purchaser of a particular product of the rights to use and resell the product. Stated another way, the initial authorized sale of a patented item terminates the patent owner’s rights with respect to that item. 

Continue Reading Patent Exhaustion Clarified