Published Articles
  1. Determining Genuine Use of a CTM in the EU after ONEL

    Determining Genuine Use of a CTM in the EU after ONEL

     

    Another issue that came up in a Table Topics discussion I moderated at INTA earlier this month was what constitutes genuine use sufficient to sustain a CTM in the European Union (EU). We briefly touched on Merken v. Beheer (better known as  ONEL) recently decided by The Court of Justice of the European Community (CJEU).
    Again because ONEL might not be well known to practitioners outside the EU I decided to summarize it and the guidance it provides.

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  2. Translating IP Translator For US Mark Holders Filing in Europe

    Translating IP Translator For US Mark Holders Filing in Europe

    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 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 filers seeking a community trademark (CTM) in the European Union (EU).

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  3. Why It’s Difficult to Predict the Amount of Statutory Damages Plaintiff Will Be Awarded in Copyright Litigation-Revised Version

    Why It’s Difficult to Predict the Amount of Statutory Damages Plaintiff Will Be Awarded in Copyright Litigation-Revised Version

             
    Mastering Rubik’s Cube may be easier. Predicting the amount of statutory damages that will be awarded in copyright infringement litigation continues to confound attorneys on both sides of the fence. Why? Here are some reasons.
    But first a few words of explanation.  I originally wrote this post in April of 2010. I decided to update it after some of the cases I mentioned went through further appeals and retrials.  I kept the same title (so you may see the earlier version come up on Google searches) but I substantially rewrote this version.

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  4. A Conversation with Lisa Martens About How Brand Owners Can Combat Counterfeiting

    A Conversation with Lisa Martens About How Brand Owners Can Combat Counterfeiting


    Counterfeits cost brand owners billions of dollars every year. How can brand owners combat this problem? What are the best strategies they can employ and will they work?
    I am delighted that Lisa Martens has given us some expert and helpful advice. Lisa is a Principal in the Southern California office of Fish & Richardson P.C. Her practice emphasizes trademark prosecution and litigation for the food service, health care, biotechnology, computer, Internet, and retail clothing industries.  Her complete bio and contact information are here.

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  5. Arista Records v. Lime Wire: Did the Record Companies Forfeit the Right to Collect from Lime Wire As Much as $15.6 Million By Recovering Less than $48,000 from Other Infringers in Earlier Actions?

    Arista Records v. Lime Wire: Did the Record Companies Forfeit the Right to Collect from Lime Wire As Much as $15.6 Million By Recovering Less than $48,000 from Other Infringers in Earlier Actions?

     
    Lime Wire continues to educate regarding statutory damages. The latest novel issue it decided is whether a judgment for statutory damages against an individual infringer for copyright infringement of a work in one action bars a statutory award in a second action against a secondarily liable defendant who induced that infringement. In other words where two (or more) infringers are jointly and severally liable, does recovery of an award of statutory damages against one infringer in one action bar a statutory award against the other infringer in a second action.

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  6. Arista Records v. Lime Wire Answers Some Novel Questions re Statutory Damages In Copyright Litigation

    Arista Records v. Lime Wire Answers Some Novel Questions re Statutory Damages In Copyright Litigation

     
    The Arista Records v. Lime Wire litigation in the Southern District of N.Y., headed for a jury trial in early May, is a statutory damages tutorial. Judge Kimba Wood  has decided a number of issues of first impression dealing with the availability of statutory damages in copyright litigation involving secondary and joint and several liability. The statutory damage issues, now answered, include:
    1.

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  7. John Marshall Law School Center for Intellectual Property Law on February 25

    John Marshall Law School Center for Intellectual Property Law on February 25

    Andrew will be speaking in Chicago at John Marshall Law School’s 55th Annual Intellectual Law Conference on Friday February 25. His topic will be constitutional challenges to statutory damages for copyright infringement. He will focus on the Tenenbaum and Thomas-Rasset cases. Here is his article on the Tenenbaum case he prepared for the talk. It urges that the jury verdict be reinstated.

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  8. Sony v. Tenenbaum: What Are the Due Process Limitations on Awards of Statutory Damages in Copyright Litigation?

    Sony v. Tenenbaum: What Are the Due Process Limitations on Awards of Statutory Damages in Copyright Litigation?


    First Circuit review of Judge Gertner’s decision in Sony BMG v. Tenenbaum is in sight with argument set for April 4. In that copyright infringement case, the district court did what no court had ever done before. It threw out a jury award of $675,000 in statutory damages on due process grounds even though the award was within the statutory range set by Congress.  The court instead awarded the music labels $67,500 for Tenenbaum’s near-decade of music downloading.

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  9. My Podcast on Sony BMG v. Tenenbaum Sponsored by Suffolk Law School

    My Podcast on Sony BMG v. Tenenbaum Sponsored by Suffolk Law School


    Sony BMG  v. Tenenbaum

    Here is the audio of the nine minute podcast I recently did for Suffolk University Law School discussing the district court’s decision in Sony BMG v. Tanenbaum and its impact on copyright enforcement if not overturned on appeal. If for some reason you can’t listen to it here, Legal Talk Network also posted the podcast here.

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  10. Express v. Forever 21: How Much Creativity Does Copyright Require? “A Little Dab Will Do”

    Express v. Forever 21: How Much Creativity Does Copyright Require? “A Little Dab Will Do”


    How much creativity does copyright require? Thankfully for copyright creators, not much. A dash will do. But in the rare case when that dash is absent, the owner of the work cannot protect it. Express, LLC  v. Forever 21, Inc., recently decided in the Central District of California, is the latest example of copyright litigation that collapsed because the copyright owner could not show that its works contained even the spark of creativity.

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