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Mapping the evolving legal landscape

No ifs ands or butts about it: Ohio plaintiffs must prove injuries are “reasonably foreseeable”

Posted in Other Articles

Our colleagues on Porter Wright’s product liability team shared an alert about a decision that should be of interest to our manufacturing readers. In Butts v. OMG, Inc., et al., the Sixth Circuit Court of Appeals clarified that a plaintiff’s burden, when bringing a design defect or inadequate warnings claim under the Ohio Products Liability Act, is to prove the injury was reasonably foreseeable to the manufacturer. Read more

End of Cuban embargo could prove costly for unprepared trademark holders

Posted in Intellectual Property, Patents, Trademarks

President Barack Obama has called on the U.S. Congress to lift the U.S. embargo on Cuba and normalize trade relations. French President François Hollande recently urged the same of the U.S., saying there is growing interest in doing business with Cuba. When the embargo is lifted, U.S. companies should be prepared to enter the Cuban marketplace. Being prepared means seeking trademark registration.

Cuba is a first-to-file country for trademark protection; in other words, a registration is awarded to the first applicant, even if that applicant has no legitimate claim to the trademark. Currently, an exception to the embargo permits U.S. companies to obtain trademark registrations — as well as submit patent applications — in Cuba. Proactively seeking a trademark registration in Cuba may avoid problems when the embargo is lifted.

An applicant can apply for a Cuban trademark registration using the international Madrid Protocol mechanism if it has an existing U.S. registration. A Cuban trademark application is screened against existing registrations by the Oficina Cubana de la Propiedad Industrial (OCPI). If a registration exists for the mark of the application, the OCPI will reject the application.

Generally, if your brand is well-known in the U.S., it is more likely that a trademark squatter might register your mark in Cuba to demand payment from you in exchange for the trademark. It is more expensive for trademark owners to obtain rights from others rather than to seek early trademark registration in first-to-file countries.

Though it may take time to reach normalized relations with Cuba, companies should consider Cuban trademark registration now so they are better prepared to enter the Cuban market.

Harmless rap or dangerous threat? The question that has Chief Justice Roberts quoting Eminem.

Posted in Social Media

If I look you in the eye and tell you with a flick of my wrist I will slit your throat, you will likely call the police and have me arrested. If I threaten to kill my co-workers, or plant a bomb in a kindergarten class, or shoot my spouse, I will lose my job, my marriage and my freedom. But, if I make those same egregious threats in the form of a rhyme and post them on Facebook it is “artistic expression” and protected free speech.

That is the basis of the argument Anthony Elonis made to the U.S. Supreme Court in a ground-breaking case that is the Court’s first examination of the limits of free speech on social media. Oral arguments were heard Dec. 3, 2014, and a decision is expected by the end of June. That decision will have far-reaching implications, not just for battered spouses, but for employers who want to fire an employee who uses social media to harass and threaten co-workers.

Not long after his estranged wife persuaded a judge to issue a protective order against him, Elonis posted this message to his Facebook page: “Fold up your PFA (protection-from-abuse order) and put it in your pocket. Is it thick enough to stop a bullet?” Continue Reading

Google’s patent shopping spree starts May 8

Posted in Intellectual Property, Patents

Google has been one of the most vocal critics of so-called patent trolls, more formally referred to non-practicing entities (NPEs) or patent assertion entities (PAEs), as well as a proponent of measures designed to improve software patent quality. At the same time, Google is one of the largest patent holders in the world. Though Google files its own patent applications, it also actively acquires patents from others. In 2011, for example, Google paid $12.5 billion for Motorola Mobility and its purported 17,000 patents. In 2014, Motorola Mobility was sold to Lenova for $2.9 billion. But Google kept almost all of those 17,000 patents.

Apparently looking to further expand its patent portfolio, last week Google announced a Patent Purchase Promotion. Described as an “experimental marketplace” for patent owners to sell their patents to Google, the program runs May 8-22, 2015. Patent owners interested in selling their U.S. patent to Google can make a binding offer to sell via an online portal.

If Google is interested, submitters will be notified by June 26, 2015.1 Following notification of Google’s interest, a brief period of due diligence will follow. Google will then decide by July 22 if it accepts the offer, and payment will be made within 30 business days thereafter. Continue Reading

Katy Perry’s left shark – take 2

Posted in Intellectual Property, Trademarks

In February 2015, I wrote a comment about Katy Perry’s ineffective attempt to assert copyright to stop a 3D printer from selling figurines similar to a shark costume used in her Super Bowl XLIX halftime show. In an attempt to establish rights in various expressions of that shark, Perry (Killer Queen, LLC) filed U.S. trademark applications for BASKING SHARK, DRUNK SHARK, RIGHT SHARK, LEFT SHARK and for three  applications that depict designs of a shark. Each of the applications recite the goods to be used with the trademarks as cell phone covers, stickers, mugs, T-shirts, sweatshirts, hats, plush toys, action figures, certain costumes, certain figurines, and live musical and dance performances. Those applications have now been examined by the U.S. Trademark Office.

Trademarks, which provide protection for brands and other source identifiers, differ from copyrights, which cover original works of authorship. Although Perry did not come up with the term “Left Shark,” originality is not a requirement for rights in a trademark; however, other requirements may be of issue for her applications.

Perry’s word mark applications appear to be in line for allowance with some amendments, but two of the applications that cover a shark design — a front view of a standing shark and a side view of a standing shark— have been refused because the Trademark Examiner determined that the designs are of a character and do not function as trademarks. (Note: The third application for a shark design used a photo of an actual 3D shark figurine from the printer that Perry originally accused of copyright infringement; the printer asserted his copyright against Perry, and the application was abandoned.) Continue Reading

Have you taken appropriate measures to ensure your intellectual property is secure?

Posted in Intellectual Property, Patents, Trademarks

If manufacturing or selling goods in China is part of your current or future business strategy, it is not too early to ensure protection of your intellectual property in China. On May 8, Porter Wright is holding half-day seminar titled Strategies for protecting IP rights in China to discuss U.S. businesses’ experiences as they enter the Chinese market. During this in-person event taking place in Columbus, Ohio, business leaders have the rare opportunity to gain insights directly from Beijing-based IP attorneys. Skilled IP practitioners from the U.S. and China will discuss real-world scenarios and strategies about how businesses can ensure their intellectual property is protected. Topics are:

Wu-smallObtaining patent protection and challenging patent
validity in China

Get an overview of the types of patent protection available in China, and how U.S. businesses can leverage these patents to protect their new technologies and products. If a Chinese business or other Chinese patent owner makes an accusation of patent infringement, also understand procedures that can be taken to invalidate a Chinese patent.
Speaker: Gary Wu, Kangxin Partners

Liles-J Web 2007Preventing unauthorized importation of your products
from China

Sometimes, regardless of efforts to protect your company’s IP, it happens: A rogue manufacturer or other party copies the product you are manufacturing in China and starts selling it in the U.S. (and elsewhere). Learn what steps you can take to minimize risk, pursue legal options, decommission unlawful operations and maintain the value of your intellectual property.
Speaker: Jim Liles, Porter Wright

Li-croppedDeveloping your business based on the Chinese IP rotection system
U.S. entities operating in China can enhance business outcomes by building their knowledge of the Chinese IP protection system as it applies to trademarks, copyright and domain names. Hear about several critical IP issues to consider, including the best ways to protect and enforce IP rights in China. Also learn about the recently implemented Chinese intellectual property courts.
Speaker: Celia Li, Kangxin Partners

The realities of doing business in China — experience and lessons learned
During this informal roundtable, panelists will discuss real-world challenges and surprises that occurred when U.S.-based companies began manufacturing and/or selling product in China. Find out how they resolved problems and implemented successful business plans. In addition, attendees are welcome to ask questions specific to their own scenarios. 
Panelists: Celia Li and Gary Wu, Kangxin Partners; Martin Miller, Robert Morgan and Donna Ruscitti, Porter Wright
Moderator: Melanie Martin-Jones, Porter Wright

For more information about the Strategies for protecting IP rights in China seminar, contact Porter Wright. Please note that space is limited; registrations are accepted on a first-come, first-served basis.

Who owns the photo?

Posted in Copyright, Intellectual Property

You may have heard about the dispute of copyright ownership over a selfie taken by a macaque in 2011. The wildlife photographer who owned the camera claimed ownership when a website published the photo without his permission.

Under U.S. law, copyright in a photograph is the property of the person who presses the shutter on the camera — not the person who owns the camera, and not even the person in the photo. Unless a written agreement exists that makes the photo a work made for hire, any person you ask to take your picture with your camera owns the copyright in that photo — not you. How many of us have those photos on our cameras or cell phones? Selfies appear to be a better idea. But do monkeys own copyrights?

The answer is: “No, they do not.” The U.S. Copyright Office issued a document in December 2014, reiterating that it will not register works produced by nature, animals or plants. According to the Copyright Office, a photograph taken by a monkey is unprotected intellectual property. The monkey selfie falls into the public domain and may be used by anyone without permission.

So maybe the answer to owning those vacation photos of yourself is a drone? The Copyright Act states that copyright protection subsists in original works of authorship that are made either directly or with the aid of a machine or device. Copyright in photos from a drone operated directly by a human most likely are owned by that human — but make sure you do not preprogram the drone to operate without a human.

A potential game-changer in trademark registration proceedings

Posted in Information Technology, Trademarks

In trademark infringement litigation, the critical and usually pivotal issue is whether there is a likelihood of confusion between two allegedly similar marks. Eliminating a defendant’s ability to defend against an allegation of likelihood of confusion can be tantamount to establishing liability against the defendant. Yet, that will be the situation for many defendants following the U.S. Supreme Court’s March 24, 2015 decision in B& B Hardware, Inc. v. Hargis Industries, Inc. In that case, the Supreme Court held a defendant can be precluded from contesting “likelihood of confusion” if that issue, or a non-materially different issue, was previously decided between the parties in the Trademark Trial and Appeal Board (TTAB), a tribunal in the U.S Patent and Trademark Office (USPTO).

At first blush, the decision might not appear unusual. The doctrine of “issue preclusion,” a doctrine that prevents a party from relitigating an issue previously decided between parties, is long established law. TTAB decisions, however, are different for several reasons. First, the TTAB is part of an administrative agency (the USPTO), not part of the judicial system. Second, TTAB decisions are based on “the mark as shown in the application [for trademark registration] and as used on the good described in the application,” not the mark as actually used in the marketplace. Third, and perhaps far more significant in practical terms, many trademark registration proceedings in the past have been conducted under the assumption that the stakes involved in the proceeding were relatively modest. TTAB proceeds were viewed as relating to only to trademark registration issues, and not involving injunctive relief or monetary damages. After B&B, that isolation of a TTAB decision from injunctive relief and monetary damages, though still theoretically true, might become illusory. Continue Reading

Protecting your brand in the age of gTLDs dot sucks

Posted in gTLDs, Intellectual Property, Trademarks

ICANN has made it possible to serve up every brand owner’s worst nightmare; welcome to [yourbrand].sucks. ICANN and registries of new gTLDs have painted a rosy picture of the new Internet landscape, advocating that the introduction of new top level domains, like .app and .restaurant is a way to increase choice and competition. Unfortunately, the introduction of the new gTLDs has created a harsh reality for brand owners who are forced to decide how far they are willing to go to protect their valuable brands through the preemptive purchase of domain names with otherwise undesirable gTLDs.

Would-be gTLD domain registries were required to pay at least $175,000 to obtain the right to offer domain names with a new gTLD of their choice, so it was understood that the cost to domain registrants for a second level domain wouldn’t necessarily be cheap. Plus, the registrars need to mark the prices up to account for integration, registration and the continued maintenance of the domains. When brand owners find themselves paying top dollar for second level domain names only for the purpose of preventing someone from disparaging their brand, exorbitant registration costs may feel like blackmail. Continue Reading