I recently moderated a table topics discussion at the INTA annual meeting in Dallas on alternatives available to US mark holders when registering their marks in Europe. One of the issues that came up was the case of Chartered Institute of Patent Attorneys v. The Registrar of Trademarks known as IP Translator (decision here). The case continues to cause problems for Community Trademark fillers seeking a community trademark (CTM) in the European Union (EU).
May 22, 2013
January 28, 2013
I recently spoke at a CLE at my firm about how to successfully draft key provisions in an intellectual property license and negotiate them. Here is an edited transcript that I post in two pieces. In this first one I offer suggestions about drafting warranties, indemnities and limitations of liability and I also provider some drafting tips.
December 27, 2012
The oral argument in WNET et al. v. Aereo before the 2d Circuit panel of Judges Denny Chin and Christopher Droney and Eastern District Judge John Gleeson was long (more than 45 minutes) and spirited. The transcript is here. But the panel’s questions suggest the court may reverse and find that Aereo’s online transmission of live TV performances is an unlicensed public performance violating the Copyright Act.
August 8, 2012
Innovation breeds copyright litigation. The scenario is often the same. The copyright holder whose market share is eroded by the innovative product claims it infringes its statutory-protected rights. The technologist responds that its innovation is simply another authorized improvement in an evolutionary chain that benefits the public. These arguments are at play in ABC et al. v. Aereo and WNET v.
July 27, 2012
Guest Blog Post by Michael Einhorn: Establishing Indirect Lost Profits Resulting from Copyright Infringement
Introduction by Andrew Berger
I am pleased to introduce Michael A. Einhorn to IP In BRIEF. Michael is an economic consultant and expert witness in the areas of intellectual property, media, entertainment, and product design. He is the author of Media, Technology, and Copyright: Integrating Law and Economics (2004) and over seventy related professional articles in intellectual property and economic analysis.
July 19, 2012
Faced with a copyright infringement suit where your defense is fair use? Chances are you wouldn’t consider making a motion to dismiss at the outset. Instead, you will most likely contemplate extensive discovery and an expensive summary judgment motion. Well, think again. The 7th Circuit in Brownmark Films v. Comedy Partners recently affirmed the district court’s grant of a motion to dismiss a copyright infringement suit based solely on a side-by-side comparison of the videos in question before the parties had engaged in any discovery.
July 18, 2012
Those caught in costly trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board may be wondering how they might streamline their TTAB practice and achieve faster resolution on the merits. A webinar sponsored by the ABA Section of Litigation on July 26th may help.
The focus will be on more efficiently achieving a merits determinations in inter partes proceedings before the TTAB. Mary Margaret O’Donnell of the Blue Filament law firm (and co-chair of the Trademark Subcommittee of the IP Litigation Committee) has organized and will moderate what looks to be a fine program.
July 12, 2012
Sometime in 2013 we may experience the largest expansion of the Internet namespace in history. On June 13, 2012, ICANN (the Internet Corporation for Assigned Numbers and Names) announced the receipt of 1,930 applications from 60 countries for 1,409 new generic top-level domains or gTLDs. (A gTLD is part of the domain name or string to the right of the dot, such as .com., .biz or .org.) A list of applicants is here.
June 7, 2012
Keep Alert, a brand monitoring site based in France, published a study (here) of decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) in 2011. The study is a treasure trove of useful and noteworthy information, including the following:
1. The arbitration tribunal at the World Intellectual Property Organization (WIPO) handled the most UDRP cases in 2011: 2,764.
June 6, 2012
Introduction by Andrew Berger
I am pleased to post an article by Weston Anson on IP valuation. Wes is Chairman of CONSOR®, a leading intellectual asset consulting firm specializing in trademark, technology, and copyright licensing, valuation, and expert testimony. The firm is headquartered in La Jolla, California with offices in New York and London.
After receiving his MBA from Harvard, he served with the management consulting firm of Booz-Allen & Hamilton and then at Playboy Enterprises, Inc., where he launched many of their licensing programs.