Intellectual Property

The newsletter of the ISBA’s Section on Intellectual Property Law

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2014 Articles

Book review: Careers in IP law: Avenues and Opportunities By Sophie Yanling Jiang February 2014 The first of two reviews of the ABA's Careers in IP Law: Avenues and Opportunities, April 2013, from the perspectives of a new attorney and an experienced supervising attorney.
Careers in IP Law—Book review By Joseph T. Nabor February 2014 The second of two reviews of the ABA's Careers in IP Law: Avenues and Opportunities, April 2013, from the perspectives of a new attorney and an experienced supervising attorney.
Creatives, entrepreneurs, and startups By Daniel Kegan May 2014 While Creatives, Entrepreneurs, and Startups follow unique paths, there typically are a few major pitfalls to minimize. Here are 19 brief guidelines; some are helpful reminders for established endeavors.
The CTM: then and now, and why national trade mark registrations are still important By Rachel Havard September 2014 The European Community Trademark system still provides excellent value for the money. To seek EU wide registration is relatively inexpensive compared with the cost of filing individual national trade mark applications in 28 countries.
Da Bears “Shufflin’ Crew” sues over alleged unauthorized use of the Super Bowl Shuffle By Denny Esford May 2014 In 1985 two dozen Chicago Bears football players made a music video hit, the "Super Bowl Shuffle.” In January 2014 many of the “Shufflin’ Crew” sued the record producer’s widow for breaching the recording contract by selling licenses to third-parties.
The dangers corporations face with assignments of intent-to-use trademark applications By Robert A. Cohen February 2014 The Lanham Act has strict rules for assigning intent-to-use trademark applications. A recent precedential TTAB decision confirms that these rules apply to assignments between independent companies, as well as parent-subsidiary families.
Electronically stored information and reasonable retention vs. hoarding By Daniel Kegan November 2014 While most lawyers and law firms may not suffer as extremely as hoarders seen on TV, the similarities can sometimes be striking.
EU jurisdiction: Law applicable to disputes arising from commercial agency agreements By Claire Perez February 2014 The Court of Justice of the European Union (17Oct2013) ruled on the question of the law applicable to international commercial agency contracts, specifically, whether the governing law elected by the parties to a commercial agency contract can be disregarded in favor of the law of the forum.
Gary A. Rosen, Unfair to Genius: The Strange and Litigious Career of Ira B. Arnstein, Oxford University Press, 2012, 307+xv pages By Daniel Kegan September 2014 Gary Rosen’s biography of copyright and perennial plaintiff Ira B Arnstein presents the perspectives of panel judges Leonard Hand, Jerome Frank, and Charles Clark as they wrestled with the right to summary judgment for a poor plaintiff’s case.
Hot news item September 2014 The USPTO is seeking feedback from U.S. trademark owners, practitioners, and other interested parties about a proposal to allow amendments to identification of goods and services due to technology evolution.  
Intellectual Improbabilities™ By Daniel Kegan November 2014 Recent news and developments of interest to intellectual property law practitioners.
Intellectual Improbabilities™ By Daniel Kegan June 2014 Eclectic selective summaries of IP agency changes, IP cases, noteworthy events, and curiosities.
Intellectual Improbabilities™ By Daniel Kegan May 2014 Eclectic selective summaries of IP agency changes, IP cases, noteworthy events, and curiosities.
Intellectual Improbabilities™ By Daniel Kegan February 2014 Eclectic selective summaries of IP agency changes, IP cases, noteworthy events, and curiosities.
Is that really juice? An analysis of the POM Wonderful v. Coca-Cola false advertising decision and its business implications By Amanda E. Bacoyanis November 2014 This past June, the U.S. Supreme Court unanimously held that the regulatory provisions of the Food, Drug, and Cosmetic Act does not preclude or limit the statutory private right of action provided in the Lanham Act.
Is your mark REALLY in use on EVERYTHING? By Joseph T. Nabor September 2014 When a trademark owner says the mark is in use on everything in the trademark registration, they really only mean it half of the time.
ISBA Newsletter Archived Abstract from July 1993 May 2014 ISBA Newsletters from 1999 now Web-archived with abstracts and author-title index available to the public.
Lessons in timing from the Washington Redskins trademark cancellation By Kay Weiler September 2014 The controversy surrounding the trademarks and logos associated with D.C.’s beloved football team is not new. So why did it take so long for the trademark to be canceled, and can the Redskins organization overcome the decision on appeal? The answer is complex and uncertain.
Lexmark clarifies Lanham False Advertising Test By Joseph T. Nabor May 2014 Zone of interest and proximate cause required for Lanham Act false advertising claim. Lexmark Int’l, Inc. v. Static Control Components, Inc., US No.12-873. 
Me and my Shadow—World-famous magician, Teller, wins summary judgment against copycat magician By Steven L. Baron & John D. Fitzpatrick June 2014 Magician Teller prevailed on a summary judgment motion for copyright infringement against Dogge, a Dutch performer who re-enacted Teller’s famous “Shadows” illusion. Although the technique of a magic trick is often unprotectable by copyright, Teller registered his act as a “dramatic pantomime,” protecting his exclusive right to perform the illusion. Defendant’s pro se defenses were unpersuasive.
No copyright infringement for using photograph of Madison’s mayor on t-shirt By Steven L. Baron & Alyssa V. Newswanger November 2014 A discussion of the recent case of Michael Kienitz v. Sconnie Nation, LLC and Underground Printing-Wisconsin, LLC.
PTO report to Congress on virtual marking, executive summary, September 2014 November 2014 To assess the effectiveness of virtual marking, Congress directed the United States Patent and Trademark Office to produce an analytical report.
Seventh Circuit affirms Google’s right to ANDROID trademark and rejects “naked licensing” issues raised by Specht By Nicole Kopinski June 2014 Plaintiff Specht abandoned his ANDROID DATA trademark when it ceased operations in 2002 and failed to reclaim it before Google Inc's 2007 launch of its ANDROID operating system. Google's open source software deemed not naked licensing.
Seventh Circuit questions usefulness of trademark surveys By Eric R. Waltmire February 2014 Defendant, restaurant operator planned to expand its restaurant sales to food products in grocery stores under its CRACKER BARREL & Design logo. Kraft, maker of CRACKER BARREL cheese, won an injunction, affirmed by the Seventh Circuit, which questioned consumer survey utility in trademark disputes.
Should there be a presumption favoring awards of attorney fees in copyright litigation? By William T. McGrath June 2014 Section 505 of the Copyright Act allows courts to award attorney fees to the prevailing party in a copyright case. Twenty years ago, the Supreme Court in Fogerty v. Fantasy, Inc. held that courts should assess fees using an “evenhanded” approach rather than one favoring a prevailing plaintiff. The Court emphasized the importance of the “equitable discretion” of the district courts in awarding fees. But in recent years, the Seventh Circuit has called for “presumptive entitlement” of attorney’s fees to the prevailing party. This paper points out the number of problem with such a presumption, including the difference between a  presumption and an inference and the chilling effect on plaintiffs with legitimate claims.
Spot the error June 2014 People make mistakes, even judges. Not differences of opinion or judgments, but simple facts. Two recent federal cases offer, to IP professionals, the opportunity to spot a glaring error in each.
Surveys, science & skepticism By Daniel Kegan February 2014 Expert witnesses are used in diverse areas of the law, including intellectual property, and are typically paid for their work, as attorneys commonly are. A skilled expert may find consistent employment helping fact finders understand the evidence and implied facts.
What law governs the mediation privilege in federal cases? By Jonah Orlofsky September 2014 Many states have mediation statutes that create statutory privileges for all communications that are part of the mediation process. There is, however, no similar federal statute. This raises the question of whether there is a mediation privilege for federal cases. Two recent Illinois federal district court decisions examined this issue