Tag: Case Studies

Can You Register a Copyright on a Website or Web Page?

Suppose that you have expressed your idea into a tangible form such as a website or web page.  Although your copyright exists upon the moment of creation, do you have a valid copyright on the website or web page?  Should you register your copyright on the website or web page with the U.S. Copyright Office?  … Continue Reading

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

Supreme Court Finds Google’s Copying of Oracle’s APIs a Fair Use

A recent Supreme Court decision has finally put an end to the longstanding fight between Oracle and Google concerning Google’s use of Oracle’s copyrighted Java Application Programming Interfaces (APIs). The Supreme Court’s decision held that, contrary to the decision by the Federal Circuit Court of Appeals which was discussed in our previous alert, Google’s use … 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

Can Patent Claims be Held Indefinite for Failing to Disclose an Algorithm?

Suppose that you want to obtain a patent for an invention and, in your claims of the patent application, you recite terms as a structure with functional language or means-plus-function language.  What if this language requires an algorithm to carry out the function and you fail to disclose the algorithm in your patent application?  Can … Continue Reading

INTERNET MEMES IN RUSSIAN PRACTICE: IP PROTECTION AND PERSONALITY RIGHTS ISSUES

When we say “meme”, we usually mean an internet meme. An Internet meme is an idea (and some content embodying this idea) spread via the Internet. Memes are usually created in the internet community for humorous purposes. However, memes in practice may raise issues associated with copyright, registration of trademarks, or even with personal data … 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

AUSTRALIAN PATENT LAW UPDATE – THE HIGH COURT HAS OVERTURNED OVER 100 YEARS OF LAW, FAVOURING THE US DOCTRINE OF EXHAUSTION

Late last year, the High Court of Australia overturned more than 100 years of precedent when it handed down its decision in Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41 (Calidad v Seiko). Rather than following the existing principle of ‘implied licence’, in its decision, the High Court adopted a US common law … 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

Recent changes in personal data regulation in Russia

Personal data (PD) protection is becoming the main topic of the recent days, so the Russian legislation in this sphere changes rapidly. The article represents an overview of updates on personal data regulation for the 3rd quarter of 2020. ATTEMPTS TO COUNTER THE CONSUMERS’ PERSONAL DATA COLLECTION Russian Agency for Health and Consumer Rights has … Continue Reading

Out Of Character: Jersey Boys, Detective Stories, & The Case Of Space-Traveling Tardigrades

At heart, and still, I am a non-singing Jersey Boy, and one who grew up reading Sherlock Holmes stories and watching Star Trek, the Original Series (before it even needed that modifier), in reruns in the 1970s while also keeping up with the real Rocky.  And, I have been writing for ILN IP Insider for … Continue Reading

TRADEMARK USE: NO NEED FOR A “BRICKS AND MORTAR” PRESENCE IN CANADA

“Use it or lose it” is a staple expression known to Canadian trademark lawyers. Once a business successfully registers a trademark in Canada, it must “use” its registered mark in Canada or it may lose the protections provided by the Trademarks Act (the “Act“). With the advent of e-commerce, many non-Canadian businesses can now advertise their services … Continue Reading

Can You Register a Copyright on a Short Work of Words and Artistic Designs?

Suppose that you have expressed your work into a tangible form such as a short expression of words and artistic designs.  Although your copyright exists upon the moment of creation, does the work contain a sufficient amount of authorship on which to base a claim for a copyright registration?  Should you register the copyright on … 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

GENERIC.COM — REGISTRABLE IN CANADA?

The U.S. Supreme Court recently confirmed that a “generic.com” term may be eligible for federal trademark registration in the U.S., in certain circumstances. We will review the relevant decisions, discuss the Canadian legal framework with respect to registration of such mark and consider the implications of seeking registration of a “generic.com” or a “generic.ca” mark … 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

A Recipe for Patent Protection: Are food products patentable?

In the past several years, the food and beverage space has seen an explosion of innovation—alternative meat products, plant-based dairy and protein alternatives, CBD- and collagen-infused everything, and functional foods and beverages and containing everything from pre/pro/post-biotics to nootropic and adaptogenic herbs, just to name a few. And many of these innovations have led to … 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

Compulsory Licensing in Russia in the view of COVID-19

Nowadays the sphere of healthcare is becoming one of the mostly discussed because of a mass spread of the coronavirus pandemic (also COVID-19). Confirmed cases of COVID-19 around the world have passed more than a 2.4 million. As the disease is continuing to surge the World Health Organization is warning that there are no specific … Continue Reading

In Determination of Trademark Parody Fair Use, Culture Differences and the Products Used Should be Considered

Generally speaking, “trademark parody fair use” is a defense where an unauthorized trademark user claims that the use should be shielded from liability because of public interests such as freedom of speech.  In Taiwan, while there were court judgments that recognized “trademark parody fair use”, there is no clear language for such defense in the … Continue Reading

Reviving a brand? A reminder to ensure it is put to genuine use

The case of Aiwa Co. Ltd v Aiwa Corporation is a useful reminder to brand owners, particularly those who are looking to revive a brand, of what amounts to “genuine use” of a registered trade mark. The case particularly considers whether the sale of second-hand goods by third parties in the UK can constitute genuine use of … Continue Reading
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