Still Standing?: The Sometimes Rocky World Of Public Art

What distinguishes public art is the unique association of how it is made, where it is, and what it means.” The Association for Public Art

To many, the names “Rocky Balboa” and the “Italian Stallion” are as universal and front of mind as the names “Chuck Wepner” and the “Bayonne Bleeder” are regional and tucked into (or have already fallen out of or never made it into) the recesses of memory.  But this writer is not most people.  Though aspiring to be a child of the universe, I am at heart still a ten-year-old kid from Bayonne, New Jersey, at the south end of Hudson County who (in 1975) thought a guy from our neighborhood was about to pull off the greatest upset in sports history (at least in the pre-Miracle-on-Ice/before-Jimmy-V era).

You see, in the 9th round of the heavy weight championship fight that would inspire Sylvester Stallone to write Rocky (and Chuck to sue him on a right of publicity claim that later settled), Chuck Wepner knocked down Muhammed Ali (Really, you can see it for yourself).   Though Chuck’s dreams of wearing the crown and earning lots of money were short-lived after the GOAT got up furious, everybody in Bayonne (and wherever Stallone was) felt like a million bucks during those few moments of believing—including both the struggling actor and a ten-year-old that would later write for an IP blog.  But this isn’t about Wepner v. Stallone—this is about what curiously happened more recently when Chuck Wepner’s hometown wanted to honor him in various ways. Continue Reading

Descendants of Danish well-known scientist could not prevent the use of his name by a large Danish based stated-owned energy company

The descendants of a well-known Danish scientist could not prevent the commercial use of the name ØRSTED as a trademark, domain and company name by the Ørsted Group (former Dong Energy A/S).

The parties to the dispute

Before going into the details of the dispute, the parties are briefly presented in the following. H.C. Ørsted is a well-known Danish physicist and chemist who discovered that electric currents create magnetic fields, thereby establishing proof of a link between electricity and magnetism. This formed the basis for the electricity production we know and use today – especially in respect to more green energy sources. Continue Reading

Federal Circuit Reminds Us That Extrinsic Considerations Are Narrowly Construed in Trademark Matters

2018 saw a number of important trademark cases decided across the United States.  Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark Trial and Appeal Board (“TTAB”).  Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018) and Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1318 (Fed. Cir. 2018) showed that there is overlap in the analysis to be conducted under these two different legal theories and provides important lessons for practitioners to remember.

The first of the two cases decided was Royal Crown addressing genericness analysis.  At the TTAB, genericness is a two-step analysis: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?”  H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986). Continue Reading

Should Scandalous Trademarks Be Registered?

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  What if the trademark is immoral or scandalous?  Should you register your scandalous trademark with the U.S. Patent and Trademark Office?  The answer may be YES!

In Matal v. Tam, 582 U.S. ___ (2017), the U.S. Supreme Court decided that the disparagement clause violated the Free Speech Clause of the First Amendment.  The U.S. Supreme Court found that trademarks are private speech and not government speech, that trademarks are not a form of government subsidized speech, and that the registration of trademarks is not a type of government program in which some content- and speaker-based restrictions are permitted.  Thus, the U.S. Supreme Court held that the disparagement clause violated the Free Speech Clause of the First Amendment.  Since the disparagement clause violates the Free Speech Clause of the First Amendment, should the U.S. Supreme Court decide that the scandalous clause of Section 2(a) also violates the Free Speech Clause of the First Amendment? Continue Reading

Rospatent gives the green light to foreign applicants from 11 states

As outlined in art. 1247 of the Russian Civil Code, any applicant may choose one of the options how to be represented before Rospatent:

  • directly, or
  • by a Russian patent attorney, or
  • by another representative (e.g., attorney-at-law)

The list is significantly shortened for foreign applicants: under art. 1247 (2) of the Civil Code, foreign citizens and legal entities may be represented before Rospatent only by Russian patent attorneys, unless otherwise envisaged by an international treaty.
Continue Reading

When appealing bears fruit: Pear Technologies v EUIPO – Apple

Are apples different from pears? Or are they both just fruit? Or, as cockney rhyming slang would have it, are they stairs? These are the questions (excepting the last one) that the distinguished judges of the Court of Justice of the European Communities (CJEU) have been gr-apple-ing with in the recent case of Pear Technologies v EUIPO – Apple [2019] EUECJ T-215/17. Aside from offering opportunities for highly amusing wordplay, this recent decision includes some useful guidance on the CJEU’s approach to the visual and conceptual comparison of signs in trade mark disputes.

The case is the result of an EU logo trade mark application (see below) by digital marketing company Pear Technologies Ltd (PTL) in 2014. The application, which was in three classes (9 (computer software), 35 (consultancy services) and 42 (computer services)), was opposed by Apple Inc. (Apple) before the European Intellectual Property Office (EUIPO). Apple based its opposition on its prior EU registration for the well-known apple logo (see below). Continue Reading

Apple Closed Two of Its Stores in Eastern Texas. The Reasoning May Surprise You – How patent laws can affect key business decisions

Apple, the technology giant which runs successful Apple Stores all over the world, announced that it will close its only two stores in eastern Texas by Friday, April 12.

Apple, however, did not announce why it was closing those two stores. This is especially intriguing since Apple likely generates millions of dollars in revenue each year from those stores.

It begs the question: why would Apple close its only two stores in that area when those stores are typically very successful to its business? Continue Reading

New Process for Timestamping IP works in Greece

On 26 February 2019, the Hellenic Copyright Organization (Greek acronym: “OPI”) launched a new online service for “electronic timestamping” of all types of works.

The service, which can be accessed at , claims to offer the opportunity to creators, both amateurs and professionals, to easily get certified proof of existence of their work at a specific time, in order to be prepared to prove the priority of their rights of intellectual property or related rights if a case of infringement or another related dispute arises in the future.

The authority of OPI to establish the new online platform was provided by article 54 par. 11 of Law 4481/2017, amending article 69 par. 1 of Greek Copyright Law 2121/1993 regarding the services that OPI may provide. Continue Reading

Plant Breeder’s Rights in Australia: updated, amended and strengthened

Recent amendments to the PBR Act have strengthened PBR rights and have aligned aspects of PBR with other intellectual property laws in Australia.

This article summarises the changes.

The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (Amending Act) received Royal Assent on 24 August 2018 and makes significant changes to the Plant Breeder’s Rights Act 1994 (Cth) (PBR Act).

The most recent changes to the PBR Act came into effect on 24 February 2019. Key changes include amendments permitting additional damages for infringement and new provisions dealing with unjustified threats of infringement, exclusive licences and joint ownership. Continue Reading

“…For me? As what? Tough guy? I don’t need tough guys. I need more lawyers…”: INTELLECTUAL PROPERTY LAW IN CRIMINAL MATTERS

There is a popular vintage Harley Davidson t-shirt that says “Tough Guys Finish First.”  That may be true.  But, sometimes, to finish first, one does not need more tough guys; one needs more lawyers, as a crime-related matter involving the Mongols Motor Cycle Club has recently shown.  So today we thought that we would use Michael Corleone’s observation as the title of our discussion of how creative intellectual property lawyering has impacted that recent Mongols’ matter in a California federal court.  [Not only is the Corleone quote apt here, but it is often useful in any context to start with a quote from The Godfather, which has been described as the “sum of all wisdoms” and “the source of all knowledge.”  So it is probably fitting that we lead this piece (or any piece) with a Godfather quote or reference, especially since it has worked for us before.]

The notion that trademark law is relevant to criminal law is not a new one, and the concept that controlling the marks or identifying symbols associated with an alleged criminal enterprise are also not new.  Indeed, it has been celebrated in cinema and conceded in real life. See, US v. Saunders, 826 F. 3d 363, 375 (7th Cir.  2016 ) (“But the court ultimately accepted that … he used red tape to wrap his heroin in order to distinguish it, and that he was known on the street for having excellent quality heroin because of this ratio”) (emphasis added).  But law enforcement efforts to seize control of, and limit the use of, group identifying marks raise sensitive free speech and related issues that are worth considering.  And in the end, no matter how many tough guys were within the Mongols’ ranks, it was about having the right lawyers involved.  Indeed, those lawyers made their mark by making the right arguments to let the Mongols, who were on the verge of losing the rights to their name, keep their mark. Continue Reading