Category: Protection & Enforcement

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A DAVID AND GOLIATH STYLE UGG BOOT DISPUTE

Just over five years after the California-based retail giant Deckers Outdoor Corp. (Deckers) filed a lawsuit against Sydney-based footwear company, Australian Leather Pty Ltd (Australian Leather) for trademark infringement, the U.S. Court of Appeals for the Federal Circuit has ruled in favour of Deckers. The Court of Appeals affirmed the previous decision of the district … Continue Reading

Software Patents: When is enough enough?

Software Patents: When is enough enough?[1] Developing a Disclosure for Software Patents: Discuss with the inventor the technological underpinnings of the novel functional aspects of the software and how those technological considerations support that function. Discuss with the inventor details that link the novel functional aspects of the software description to those technological underpinnings. Ask … Continue Reading

Enforcing IP Rights Through Online Intermediaries: The Need for Regulation in Canada

The rise of online intermediaries, such as Google, Amazon, and Facebook, has radically changed the way in which many businesses and individuals operate and has introduced novel legal and business questions and challenges. It is easier and cheaper than ever for bad actors to use online tools, whether it be websites, platforms, or online profiles, … Continue Reading

WHAT, IN THE NAME OF GOD, …?: Intellectual Property Rights In Holy Names, Sacred Words, & Other Aspects of Creation

The title of this piece tracks a common “phrase of exasperation used to emphasize a question or statement.”  If that be the case, and I think it is, then the subtitle implies the question this piece will address.  That question is “how have various countries’ intellectual property laws addressed efforts to copyright, trademark, or patent … Continue Reading

Infringers Beware – The U.S. is Emphasizing Copyright Enforcement

The United States received two major copyright updates in the middle of the pandemic.  Copyright owners should breathe a sigh of relief.  On December 27, 2020, as part of the major COVID-19 Relief bill, the Copyright Alternative in Small-Claims Enforcement Act of 2020 (the “CASE Act”) and the Protecting Lawful Streaming Act of 2020 (the … Continue Reading

Protecting Confidential Information in Canada: Is there a Better Way?

The British Columbia decision Equustek Solutions Inc. v Jack[1] highlights the difficult, time consuming, and expensive exercise that organizations may find themselves in when an employee misuses confidential information. In today’s environment, information can be downloaded, transferred or shared instantly. How can organizations best protect their intellectual property assets and confidential information to maintain their … Continue Reading

The King Is Dead! Long Live The King!: Elvis Sightings, Taking Care of Business, And Rights Of Post-Mortem Publicity

…Never let me go… I’ll be yours through all the years, till the end of time. [Love Me Tender, performed by Elvis Presley] Elvis sightings have had a long, storied life of their own since the King of Rock-and-Roll’s “death” was reported (or perhaps exaggerated (though neither greatly nor grossly)), in 1977.  Indeed, since 1977, … Continue Reading

Protection of Photographic Works

With the development of science and technology, cameras or mobile phones are now having various built-in shooting modes or parameters to facilitate photographers to quickly shoot assorted scenes or atmospheres, which is quite different from the traditional way that photographers need to adjust various parameters by themselves. Regarding whether the photographic works taken using the … Continue Reading

Data Privacy and E-Commerce: Considerations for the Food and Beverage Industry

The global food and beverage e-commerce market is expected to grow to $22.4 billion in 2020, possibly reaching $36.4 billion in 2023. That’s up from $14.9 billion in 2019.  Food and beverage e-commerce revenue in the United States alone is projected to exceed $15.2 billion this year and $19 billion by 2022. It’s no surprise … Continue Reading

Supreme Court Unanimously Rules That Willfulness Is Not Required to Recover Profits

The U.S. Supreme Court resolved a circuit split on April 23, 2020, by unanimously holding in Romag Fasteners, Inc. v. Fossil Group, Inc., et al. that a brand owner is not required to prove that a trademark infringer acted willfully in order for the owner to be awarded the infringer’s profits. Background Romag Fasteners, Inc. … Continue Reading

BUSINESSES BEWARE: DEPRECIATION IN GOODWILL CLAIMS NOT BOUND BY INDUSTRY LINES

The Federal Court of Canada (the “FCTD“) recently released Toys “R” Us (Canada) Ltd v Herbs “R” Us Wellness Society, in which it considered whether a cannabis company, Herbs “R” Us Wellness Society (“Herbs R Us“), had breached Sections 20, 7(b) and 22 of Canada’s Trademarks Act (the “Act“) with respect to claims of trademark … Continue Reading

Queen Anne’s Revenge, Indeed!: Copyright Conundrums, Sovereign States, and IP Piracy

“One man’s legally sanctioned privateer is another man’s pirate.”           [James Wadsworth, Global Piracy: A Documentary History of Seaborne Banditry (2019), at p. 8] We live in a time of contradictions and confusion, and today we aim to explore how some such tensions have manifested themselves in the area of intellectual property law. On the one … Continue Reading

RECENT UPDATES IN PERSONAL DATA REGULATION IN RUSSIA

THE SUPREME COURT CONFIRMED THAT RUSSIAN USERS MAY FILE A LAWSUIT AGAINST AN AMERICAN SOCIAL NETWORK TO A RUSSIAN COURT The Supreme Court of the Russian Federation reviewed a case initiated by a number of Internet users against the American social network Facebook Inc. The Russian users filed a lawsuit against Facebook Inc. based on … Continue Reading

U.S. Supreme Court – Willfulness Is Not a Prerequisite for a Profit Award for Trademark Infringement

In its unanimous April 23, 2020 opinion in Romag Fasteners v. Fossil, Inc., the Supreme Court made clear once and for all that a successful trademark plaintiff is not required to establish that the defendant’s infringement was willful to be entitled to an award of the infringer’s profits. In other words, profits may be disgorged … Continue Reading

Facebook and Twitter fined for violation of requirements for the personal data localization

At the end of 2019, Federal Law No. 405-FZ1 entered into force. This act has significantly increased administrative liability for violations of the requirements on the localization of databases containing personal data of Russian nationals. We already wrote about this amendment earlier. The new provisions have significantly increased the amount of fines for violation of requirements for … Continue Reading

Selling Your Products on US Online Marketplaces

Before you begin selling your products on a U.S. online marketplace like Amazon, Etsy or Rakuten, there are three intellectual property considerations to make: clearance, acquisition and enforcement. This article provides a summary of all three considerations and includes steps to take to help mitigate risk, decrease instances of infringers and position your product for … Continue Reading

Supreme Court Settles Circuit Split on When a Plaintiff May Sue

The Supreme Court handed down a unanimous copyright decision in March 2019 with implications for anyone involved in a copyright dispute, as well as for marketers and brands that create and use copyrighted materials. In Fourth Estate Public Benefit Corporationv. Wall Street.com, LLC (Fourth Estate), the Court resolved a long-standing split among the circuits over the requirement … Continue Reading

Th-Inking About The Law: Tattoos Leaving Indelible Marks On Black-Letter Principles & Coloring Our Perspectives

Tattoos, one of the oldest art forms in the world, are all over the legal news in recent years.  The news runs the gamut from a tattooist suing a movie studio over replication of Mike Tyson’s facial tattoo in The Hangover II to artists looking to gaming companies for compensation for reproduction of tattoos appearing … Continue Reading

PATENT TROLL SUITS DOWN, NOT OUT IN 2018

Over the past half-decade, Congress and the courts have made aggressive efforts to curb the worst abuses of the patent system. In 2013, Congress passed the America Invents Act (AIA), which established the Patent Trial and Appeal Board (PTAB) to hear patent validity challenges outside of the federal court system. In 2014, the U.S. Supreme Court issued its landmark ruling … Continue Reading

WORLD FAMOUS (By, Say, New Jersey Standards): Expanding The Right Of Publicity Nationally And Internationally

Springsteen. Sinatra. Chuck Wepner (for at least one night in 1975 and then through the “Rocky” avatar). At least some of the people that rest stops on the New Jersey Turnpike are named after. These public figures are, or were, world-famous, and certainly had made a name for themselves outside of the Garden State, even … Continue Reading

Establishment of the Intellectual Property (IP) List in the Court of First Instance of the Hong Kong High Court

According to the 2018 Global Competitiveness Report released by the World Economic Forum, Hong Kong was ranked 9th out of 140 economies in terms of IP protection.  In accordance with the recommendations made by the Working Group on IP Trading in 2015 (of which the writer is a member), a wide range of measures were … Continue Reading

Simon Cowell picks bone with “The Pets Factor” UK trade mark

When TV format creator Mark Duffy struck upon the tongue-in-cheek name “The Pets Factor” for what was (presumably) a talent competition for domestic animals, he might well have smiled at his own ingenuity. Conversely, when Simon Cowell heard about the name (via Mr Duffy’s application to register it as a UK trade mark in classes … Continue Reading

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 … 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 … Continue Reading
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