Trademark Law

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by Jeff Pietsch

Earlier this month, the Tenth Circuit court upheld a preliminary injunction granted in favor of a manufacturer of electronics equipment against a reseller of its goods in a trademark infringement action. (Beltronics v. Midwest Inventory Distribution (10th Cir. April 9, 2009)). The reseller argued that it was able to resell the manufacturer’s goods online based on the first sale doctrine. The court, however, disagreed with this assessment and ruled that the resellers violated the manufacturer’s trademark rights because Midwest’s actions caused consumer confusion.

Continue Reading When Product Resales Constitute Trademark Infringement

By Zachary Wadlé

The widely popular Guitar Hero videogame series created by Activision Publishing, Inc. allows players to emulate their favorite rock guitarists, without requiring any actual guitar playing skill. However, this virtual reality was endangered last year by a threatened patent infringement lawsuit by guitar company, Gibson, longtime maker of iconic rock guitars such as the Gibson “Les Paul,” “SG,” “ES-335,” and “Flying V,” to name a few.

 In January 2008, Gibson sent a letter to Activision, claiming that Guitar Hero infringed upon Gibson’s registered U.S. Patent No. 5,990,405 (the “‘405 Patent”). This patent covered "a system and method for generating and controlling a simulated musical concert experience." Gibson claimed that the Guitar Hero game controllers – miniature plastic replicas of Gibson guitars with no strings, and four buttons on the fret-board – infringed upon Gibson’s patent and required Activision to obtain a license from Gibson, or else halt sales of any version of the Guitar Hero game and controllers.    Continue Reading Keep On Rockin’ In The Virtual World–Guitar Hero Videogame Does Not Infringe Gibson Guitar’s Patent

By Jeff Pietsch

Trademark law is traditionally concerned with protecting consumers. Trademarks protect consumers by helping consumers identify the source of the goods or service. For example, when a consumer buys a product, she knows exactly what she is going to get with the product based on its mark. Trademark law was designed to protect these consumers by protecting these marks against copy-cats or products with confusingly similar marks. Cases based on consumer protection concern similar products with similar marks that may confuse consumers. Continue Reading Trademark Basics: Dilution

By Dale C. Campbell

The Ninth Circuit recently considered the enforceability of non-competition covenants contained in franchise-like agreements.  (Comedy Clubs, Inc. v. Improv West Associates (9th Cir. January 29, 2009; WL 205046.)

 

The plaintiff Comedy Club, Inc. (“CCI”) entered into a trademark license with Improv West Associates (“IMPROV”). CCI owned and operated restaurants and comedy clubs across the nation. The license agreement provided that IMPROV granted CCI an exclusive nationwide license to use the IMPROV marks; that CCI would open four IMPROV clubs a year in 2001 through 2003; and CCI would not operate any non-IMPROV clubs during the term of the license.

 Continue Reading Ninth Circuit Blue-Pencils Non-Competition Agreement

by James Kachmar

The Ninth Circuit recently addressed the issue of whether a “first publication” exclusion in an insurance policy applies to trademark infringement claims. In United National Insurance Company v. Spectrum Worldwide, Inc., et al., decided February 2, 2009, the Ninth Circuit resolved a split among lower courts and held that a “first publication” exclusion did apply under California law.

 

In December 1997, Sunset Health Products, Inc. (“Sunset”) hired Spectrum to advertise and distribute a diet drink called “Hollywood 48 Hour Miracle Diet” drink. Celebrity Products Direct, Inc. (“Celebrity”) was formed a short time later and began selling a similar product, “The Original Hollywood Celebrity Diet” drink. Spectrum then terminated its contract with Sunset and begin marketing the Celebrity diet drink.   Sunset made repeated demands that Spectrum cease infringing on its Miracle Diet trademark. 

Continue Reading “First Publication” Infringement Claims and Insurance Policy Exclusions