Category: Case Studies

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When Does “Copying” a Photograph of a Building Constitute Copyright Infringement?

A recent decision from a Pennsylvania federal court underscores that there is generally no copyright protection in an actual building or a skyline of buildings; instead, the protection is in the particular photograph or rendering of the building. Creating an original depiction of a building or skyline that is not substantially similar to the photograph … Continue Reading

IP Court restrained to sell and market a generic drug until the patent expiry

On 24 April 2018 the Intellectual Property Court published its Decision in case A41 85807/2016 between Swiss-based Novartis AG and local generic Nativa LLC. The IP Court’s position in this case may result in an extra defense granted for patent holders against unfair practice of registration of generics drugs until patent expiry. Under the auspices of the … Continue Reading

ARGOS aggro: UK infringement issues arising from US advertising site

The Court of Appeal for England and Wales was asked to consider a case where 2 companies were using the same name in different territories, both legitimately, but one decided to exploit traffic mistakenly hitting its website by using targeted ads[1] The dispute involved two businesses who shared the “Argos” name, but on different sides … Continue Reading

Federal Circuit Establishes New Test for Trade-Dress Secondary Meaning

The United States Federal Circuit recently issued a precedential opinion addressing trade dress secondary meaning.  The decision establishes a six-factor test to determine whether trade-dress acquired secondary meaning and clarifies a variety of other, related matters. Converse appealed a final determination of the International Trade Commission (“ITC”) that Converse’s U.S. trademark number 4,398,753 (“the ‘753 … Continue Reading

“Liquor Before Beer, You’re In The Clear… Beer Before Wine, You’ll Be Fine,” and So On: “Confusing” Advice For The Reveling Tippler & Registering Trademarks

The relationship of wine, beer, and spirits has often proved complicated and confusing for the tippler, regardless of country.  There are old saws that many repeat, and report on, that say things like “Beer Before Liquor, Never Sicker; Liquor Before Beer, You’re In The Clear” and “Wine Before Beer Leaves You Queer, But Beer Before … Continue Reading

Sufficiency of Drawings in Design Patent Applications

Suppose that you want to file a design patent application for an article that is three-dimensional.  What views of the article will you need for the design patent application that will be sufficient to support your claim?  The answer is a sufficient number of views to constitute a complete disclosure of the appearance of the … Continue Reading

Street Art, Copyright Infringement, and De Minimis Use

The legal protections afforded to graffiti and “street art” artists have gained increased visibility in recent months. But while street art may be entitled to certain protections under the law, not every use of street art without permission will violate an artist’s rights. A recent decision from the U.S. District Court for the Southern District … Continue Reading

BLOCKING PATENTS CAN MOOT OBJECTIVE INDICIA OF NON-OBVIOUSNESS

In a recent precedential decision, a split Federal Circuit (Judges Dyk and Taranto in the majority, Judge Newman, dissenting) issued a lengthy, 53-page decision, regarding the obviousness doctrine.  Judge Taranto, writing for the majority, engaged in a fact-intensive analysis to determine that a ‘blocking patent’ mooted evidence of objective indicia of non-obviousness and found the … Continue Reading

Russian IP Court compelled domain name registrars to remove illegal content reported by trademark holders

On 4 July 2018, Russian IP Court rendered a landmark judgment in case No. A40-132026/2017. Under the merits of the case, LLC Azbuka Vkusa (trademark holder) sued LLC Registrator R01 (prominent domain registrar) seeking to cease delegation of the disputed domain name. It was apparent that the claimant’s trademark AZBUKA VKUSA was infringed in the domain … Continue Reading

Nothing beats a good TM LWYR – Nike’s questionable LDNR campaign

A July 2018 decision of the UK Intellectual Property Enterprise Court (IPEC) appears to have put paid to Nike’s recent “Nothing beats a Londoner” ad campaign. The case highlights, with hindsight, a perhaps regrettable commercial/legal decision by the sports giant, whilst also demonstrating the usefulness of the IPEC as a means of speedy and effective … Continue Reading

Clarifications on resolution of non-use disputes against bankrupt trademark holders

On March 21, 2018, the Russian Supreme Court published its Decision in case No. A55 5711/2014, which may have a dramatic impact on resolution of trademark non-use disputes. Under the merits of the case, Heineken filed a non-use claim against Samarskiy Vodochnyi Zavod based on its failure to use the trademark Volzhskaya Okhota for 3 consecutive years. … Continue Reading

IP Court restrained to sell and market a generic drug until the patent expiry

On 24 April 2018 the Intellectual Property Court published its Decision in case A41 85807/2016 between Swiss-based Novartis AG and local generic Nativa LLC. The IP Court’s position in this case may result in an extra defense granted for patent holders against unfair practice of registration of generics drugs until patent expiry.… Continue Reading

Fair is foul, and foul is fair: How TV Eyes May Help Us See Through The Blurred Lines & Fog Around Fair Use

First Witch:     When shall we three meet again/In thunder, lightning, or in rain? Second Witch:  When the hurlyburly’s done,/When the battle’s lost and won. Third Witch:    That will be ere the set of sun. *** ALL:                 Fair is foul, and foul is fair:/Hover through the fog and filthy air. [MacBeth, Act 1, Scene 2] … Continue Reading

Trade Secrets as Part of Your IP Portfolio: The Case of Col. Sanders

Trade secrets, together with patents, trademarks, and copyrights, are one of the four main types of intellectual property.  Unlike the three other types of IP, trade secrets are never made public.  Trademarks and service marks are obtainable only through public use that creates an association between the mark and the origin of specific goods or … Continue Reading

Registration of Mark “THEZARA” for Motel Services Invalidated Based on the Mark “ZARA” for Clothing – A Case Study

Representing our client Inditex S.A. (“Inditex”), owner of the famous fashion brand “ZARA,” Lee International obtained a favorable decision in its invalidation action against the registered mark “THEZARA” for motel and hotel services. Facts Lee International filed an invalidation action against the registered mark “THEZARA” for “motel, hotel,” etc., on behalf of Inditex.  The invalidation … Continue Reading

Success in the battle for Stolichnaya and Moskovskaya

bkp partners Martin Reinisch and Georg Fellner have obtained a favorable judgment by an Austrian Appellate Court for bkp client Spirits International (SPI Group) confirming the latter’s rights in the iconic Stolichnaya and Moskovskaya trademarks in Austria. The favorable judgment has been rendered in a lengthy, complex court proceeding which is the Austrian part of … Continue Reading

FTC Announces First COPPA Action Involving Connected Toys

A Hong Kong-based electronic toy manufacturer and its U.S. subsidiary agreed to pay the Federal Trade Commission (FTC) $650,000 to settle allegations that they violated the Children’s Online Privacy Protection Act (COPPA) by collecting personal information from children without providing appropriate notice and consent, and by failing to take reasonable steps to secure the data … Continue Reading

Tomorrow Is Yesterday: Today’s Cases Boldly Going Where Our Blogs Have Gone Before

Sometimes blogging topics are hard to come by.  It is often difficult because, as a sage once noted in discussing the search for The Ultimate Computer, one wants to do one’s best, but something like creativity “doesn’t work on an assembly line basis. … You can’t simply say, today I will be brilliant,” insightful, informative … Continue Reading

Greek Supreme Court contests the validity of Philips’ EFM+ (DVD) Patent

Summary In its decision no 1589/2017 the Greek Supreme Court upheld the appeal brought by the Greek company “DPH” against the Dutch company “P”. The Supreme Court held that the Court of Appeals’ decision, which had upheld definitely the lawsuit of “P” against “DPH” for breach of “P”’s essential patents, was wrong in finding they … Continue Reading

TV FORMAT PROTECTION – MORE DETAILS NEEDED

Introduction From Bullseye to Mastermind and from The Chase to Eggheads, it is undeniable that the public love a TV game show.  Who (in the UK) doesn’t remember Judith Keppel sensationally becoming the first winner of Who Wants to be a Millionaire?  A total of 14.9 million UK viewers (that is about a quarter of … Continue Reading

Battling the Real “Fake News”: FTC Reaches Multi-Million Dollar Settlement with Internet Marketers for False Celebrity Endorsements

Unfortunately, the unauthorized use of a celebrity’s name and image has become a deceptive advertising practice frequently used by dishonest online marketers. This type of ad typically claims (falsely) that a public figure has used or endorsed what is billed as the latest miracle weight loss supplement or wrinkle-reducing cosmetic. Going after these bad actors … Continue Reading

Korean Patent Court Finds: Use of Outback motel mark unfairly competes with mark for restaurant services

In a suit alleging trademark infringement and unfair competition, the Korean Patent Court concluded that the use of the mark “” in connection with “unmanned lodging services” used for so-called love motels with an image of a naked woman, did not infringe Outback Steakhouse’s trademark.  But it did constitute unfair competition because that use harmed … Continue Reading

“EACH DAY HAS A COLOR, A SMELL…”: Searching For New Trademark Worlds

The search for spices, and the gold that one expected to find nearby (or earn through sale of the spices), in many ways drove the Age of Exploration.  And spices still hold a special place in our economy and in our imagination; in fact, we believe that spices “all hold magic.” Part of that magic … Continue Reading

Can Trademarks Related to Cannabis be Protected?

Suppose that you want to federally register a trademark that identifies a source of goods or services related to your cannabis business.  What if the trademark covers merchandise indirectly related to cannabis or products directly related to the use of cannabis?  Should you attempt to register your trademark with the U.S. Patent and Trademark Office?  … Continue Reading
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