By Jeff Pietsch

          Earlier this month, the shoe company Skechers defeated a preliminary injunction brought by the shoe company ASICS. The injunction against Skechers sought to prevent Skechers from making and selling their shoes. ASICS brought this action against Skechers for trademark infringement claiming that Skechers hijacked the ASICS brand image and goodwill by using a similar stripe mark that ASICS has used on its shoes over its 40 year history. The two shoes both use a stripe mark, but the ASICS shoe uses two horizontal stripes while the Skecher shoe has only one stripe. The court found that the design of these shoes were dissimilar and would not likely create consumer confusion. Since ASICS was not likely to succeed in its trademark infringement action, the court denied the injunction against Skechers. This case is just a sampling of the many trademark infringement claims that are brought in court each month. The purpose of this article is to examine the test that courts use to determine if trademark infringement exists.

Continue Reading Trademark Infringement: Factors Considered in Consumer Confusion

By Dale Campbell

          There always has been a few simple things to do when a named partner leaves a law firm: change the name of the firm, stationery and business cards, and send a notice to clients. Today, additional tasks include changing web page domain names, email addresses, and websites. Is that enough? One intellectual property attorney in Pennsylvania thought not and filed suit against his former firm alleging violation of federal and state unfair competition and trademark law and the federal Anti-Cybersquatting Consumer Protection Act, among other causes of action.

Continue Reading DEPARTING PARTNERS: IS THEIR NAME A PROTECTED TRADEMARK

By Scott Hervey

The United States District Court for the Southern District of New York rules that the downloading of a digital music file embodying a particular song does not constitute a "public performance" of that song within the meaning of the Copyright Act.  Thus, on-line music retailers need not negotiate a license with performance rights organizations like ASCAP and BMI in order to offer downloadable music files to consumers.

The opinion is available here

By Audrey Millemann

            The number of patent infringement cases filed in the United States has increased dramatically over the last ten years or so, and we can expect to see that trend continue. One reason is that the number of patents issued is increasing, and many of those patents, particularly business methods patents, are viewed with suspicion by the high-tech industry. Another reason is that businesses are investing more time and money into intellectual property assets and the loss of those assets could cost the business greatly. 

What is patent infringement? Anyone who makes, uses, offers to sell, or sells in the United States, or imports into the United States, a patented invention, without authority from the patent owner, infringes a utility patent. The prerequisite is an issued (not pending or expired) U. S. patent. No intent is required. The patent is infringed if any of the above acts are committed in the United States. An infringer cannot, for example, avoid liability by moving a manufacturing operation outside the United States where the product is sold within the United States. Likewise, a manufacturer of a product made in the United States infringes the patent even if the product is only sold outside the United States. 

Continue Reading Patent Infringement 101

By James Kachmar

On March 29, 2007, the Ninth Circuit issued its opinion in the case Perfect 10, Inc. v. CCBill LLC, et al. in which it attempted to clarify when immunity is available to internet service providers for copyright infringement under the Digital Millennium Copyright Act (“the DMCA”), 17 U.S.C §512. Perfect 10, the publisher of an adult magazine and a related subscription website, brought a lawsuit claiming that CCBill and CWIE violated copyright laws by providing services to other websites that posted images stolen from Perfect 10’s magazine and website. CWIE provides web hosting and related internet connectivity services to the owners of various websites. CCBill allows customers to use credit cards or checks to pay for subscriptions or memberships to various websites. The U.S. District Court granted summary judgment in favor of CCBill and CWIE as to the copyright claims finding that they qualified for the “safe harbor” provisions from copyright infringement liability under the DMCA. 

Continue Reading The Ninth Circuit Clarifies the “Safe Harbor” Provisions of the Digital Millennium Copyright Act