By Audrey A. Millemann

A recent decision from the Federal Circuit Court of Appeals has interpreted provisions in patent litigation settlement agreements that grant a covenant not to sue. The case is TransCore, LP v. Electronic Transaction Consultants Corp., 2009 WL 929033 (Fed. Cir. 2009). 

 

In TransCore, the plaintiff,TransCore, LP, owned several patents covering automated toll collection systems. TransCore sued Mark IV Industries, a competitor, in 2000, for infringement of the patents. The parties settled the case. In the settlement, Mark IV paid TransCore $4.5 million and TransCore released all existing claims against Mark IV and agreed to an unconditional covenant not to sue for future infringement of the patents.

 

Continue Reading TransCore Case Changes Patent Licensing and Patent Settlements

by Dale C. Campbell

 

Section 43(a) the Lanham Act provides for liability related to unregistered marks. Section 43(a) provides for civil liability for any person who, IN connection with any goods or service uses in commerce any word, term, name, symbol or any combination thereof, or any false designation origin, false or misleading description of fact or false or misleading misrepresentation of which (a) is likely to cause confusion as to the origin, sponsorship or approval of the goods or services by another person or (b) in commercial advertising or promotion misrepresents the nature, character qualities or origin of his or her good, service or commercial activity. Subsection (a) is commonly known as the false origin claim and subsection (b) is commonly known as false advertising claim. In short, one can’t be liable for claims of false origin even if the statements are not made in the course of commercial advertising or promotion as required in subsection (b).

Continue Reading LANHAM ACT DAMAGES – What Is the Plaintiff’s Burden?

by Zachary Wadlé

Hilton Hotels Corporation and two high-ranking executives are facing a civil lawsuit and a federal grand jury investigation stemming from allegations that they developed Hilton’s new luxury lifestyle brand, “Denizen,” using proprietary information stolen from rival hotel company Starwood.

The civil complaint filed in federal district court in White Plains, New York, alleges that Ross Klein and Amar Lalvani, two former Starwood executives who joined Hilton last summer, stole more than 100,000 electronic and paper documents containing Starwood’s trade secrets.

Continue Reading G-Men’s Interest in Hilton’s Alleged Trade Secret Theft Highlights Importance of Trade Secret Policies

by James Kachmar

On May 7, 2009, the Ninth Circuit issued its opinion in the case, Barnes v. Yahoo!, Inc. (No. 05-36189), in which it decided the issue of whether the Communications Decency Act of 1996 (“CDA”) protected Yahoo from a lawsuit where it allegedly promised to remove harmful material to the plaintiff from its website but failed to do so. 

In 2004, Cecilia Barnes broke up with her boyfriend and he responded by posting profiles of Ms. Barnes on a Yahoo website. The profiles contained nude photographs of Ms. Barnes and her ex-boyfriend that were apparently taken without her knowledge and the profiles included solicitations to engage in sexual intercourse. The ex-boyfriend also participated in discussions in Yahoo chat rooms in which he posed as Ms. Barnes and directed correspondents to the fraudulent profiles of Ms. Barnes he had created. In response to these profiles, several men contacted plaintiff, including visits to her office, all in the expectation of sex.

Continue Reading Barnes v. Yahoo!, Inc.: Immunity Under The Communications Decency Act

by Scott Hervey

It’s been five years since the Trademark Trial and Appeal Board dramatically changed the way Untied States trademark registrations are handled. The case of Medinol Ltd. v. Neuro Vasx, Inc. reflected an analytical shift in the way in which the Trademark Trial and Appeal Board (TTAB) determines whether an applicant committed fraud on the trademark office. The holding also provided those seeking to cancel a trademark registration with a powerful weapon, and created substantial risk for trademark applicants and registrants who overstate the goods or services in their application. The facts of Medinol Ltd. v. Neuro Vasx, Inc. are as follows:

Continue Reading An “F-word” Trademark Owners Should Avoid