By Scott Hervey

The battle over the right to the trademark “Tavern on the Green” is over. In Manhattan earlier this month U.S. District Judge Miriam Cedarbaum ruled in favor of New York City, casting aside the prior concessionaire’s claim that it owned and controlled the famed “Tavern on the Green” trademark. The risk to New York losing were extremely high. Tavern on the Green, LP and LeRoy Adventures Inc. claimed ownership of the iconic brand that had recently been valued at $19 million and were seeking an injunction to prevent the new operator and the city from using the mark. Although the restaurant was the second-highest-grossing independent restaurant in the U.S. in 2008, with sales of $34.2 million. It’s almost certain that the new operator would renegotiate its winning bid if it was not able to use the Tavern on the Green mark, which would mean the city could lose millions of dollars in license fees.

Continue Reading Tavern on the Green – N.Y.C’s Gain is a $19 Million Loss

By Jeff Pietsch

Last week, a United States District Court for the Eastern District of Missouri denied a motion by Intel to dismiss a declaratory judgment suit brought by Express Scripts Inc. Since last February, Express Scripts has been marketing some of its health care and pharmaceutical consulting services under the trademark “Intellact.” Shortly thereafter, Express Scripts received a cease and desist letter from Intel claiming that Express Scripts’ “Intellact” trademark infringed on Intel’s trademark rights. Intel specifically stated that the “Intellact” trademark would likely deceive or confuse consumers as to the source of the goods, namely that consumers would believe “Intellact” was affiliated with Intel. According to the suit filed by Express Scripts for declaratory judgment, Intel claims that it owns “all rights to names that contain the root of the word ‘intelligent.’” This article will examine trademark infringement in light of Express Scripts’ request for declaratory judgment.

Continue Reading Intel Claims Rights to “Intelligent” Trademarks

By W. Scott Cameron

The Ninth Circuit issued an interesting ruling last week regarding the ownership and status of a domain name as property. In Office Depot, Inc. v. Zuccarini, ___ F.3d ___, Feb. 26, 2010, the Ninth Circuit ruled that a judgment creditor can levy a domain name of a judgment debtor to satisfy his judgment. This ruling was interesting for a couple of reasons. First was the location where the domain name can be levied, and second the facts of the case make the result somewhat ironic.

Continue Reading Need To Enforce A Judgment? Levy A Domain Name.

By James Kachmar

In today’s economic environment, bankruptcy is often the only viable option for struggling businesses. In Jasmine Networks, Inc. v. Superior Court (Santa Clara County), the Court faced the issue of whether a bankrupt company could maintain an action for trade secret misappropriation when that company had sold its “trade secrets” in connection with the bankruptcy. The Court concluded that a plaintiff did not have to be the present owner of trade secrets in order to pursue an action for trade secret misappropriation. 

Continue Reading Trade Secrets, Bankruptcy and “Standing”

By Dale C. Campbell and David Muradyan

The Seventh Circuit and the Ninth Circuit do not agree on what constitutes “authorization” under the Computer Fraud and Abuse Act, 18 U.S.C. § 1030 (2004) (“CFAA”)?  The CFAA prohibits accessing computers “without authorization” or “exceed[ing] authorized access” to take various forbidden actions, ranging from obtaining information to damaging a computer or computer data.  See 18 U.S.C. § 1030(a)(1)-(7). Notably, the CFAA provides a private cause of action for persons who have suffered harm resulting from computer fraud.  Id. § 1030(g).  The CFAA provides, in relevant part: “Any person who suffers damage or loss by reason of a violation of this section may maintain a civil action against the violator to obtain compensatory damages and injunctive relief or other equitable relief.” Id. To assert a viable claim, the harmed plaintiff must allege, among other things, that the defendant intentionally accessed its information “without authorization” or “exceeds authorized access.” Id. § 1030(a)(2). Congress enacted the CFAA in 1984 to enhance the government’s ability to prosecute computer crimes.  LVRC Holdings LLC v. Brekka, 581 F.3d 1127, 1130 (9th Cir. 2009).  The CFAA was targeted to rein in hackers who illegally accessed computers to steal data or to disrupt or destroy computer functionality. Id. The CFAA was also designed to target criminals who possessed the capacity to “’access and control high technology processes vital to our everyday lives . . ..’”  Id. at 1130-31 (citing H.R. Rep. 98-894, 1984 U.S.C.C.A.N. 3689, 3694 (July 24, 1984).

Continue Reading The Seventh And Ninth Circuits Split On What Constitutes “Without Authorization” Within The Meaning Of The Computer Fraud And Abuse Act