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Technology Law Source

Mapping the evolving legal landscape

Supreme Court charts clear course for trademark tacking determination

Posted in Intellectual Property, Trademarks

The U.S. Supreme Court created some wake by issuing their first substantive trademark ruling in more than a decade this week. The Supreme Court decided to hear a case on appeal from the Ninth Circuit’s decision in Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158 (9th Cir. 2013) cert granted, 134 S. Ct. 2842 (2014).

Of significant importance to the case is the trademark doctrine of tacking, which allows a trademark owner to make slight modifications of a trademark over time while maintaining the original first-use priority date. The doctrine holds that the original mark and the later, slightly altered, mark may be tacked when they are considered to be “legal equivalents” that “create the same, continuing commercial impression.” Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed. Cir. 1991).

The issue addressed by the Supreme Court is whether a judge or a jury should determine whether tacking is available — that is, whether the original and revised marks are legal equivalents — in a given case. Continue Reading

Warrant required for cell phone searches

Posted in Information Technology, Privacy

A recent U.S. Supreme Court decision provides “a very clear and straightforward message” to law enforcement: You must obtain a warrant to search the contents of any cell phone. Kelly Johnson provides a review of the court’s decision in his article, “Privacy Comes at a Cost — Warrant Required for Cell Phone Search,” published by the Cincinnati Bar Association in its CBA Report.

gTLD update: gTLD delegation sluggish after holiday season

Posted in gTLDs

ICANN has not started the new year off with a bang, delegating a mere four new gTLDs this January and only 11 in total since our last gTLD update. Those newly delegated gTLDs are:

  • .fit
  • .lat
  • .kddi
  • .bank
  • .shriram
  • .zuerich
  • .flowers
  • .ggee
  • .sale
  • .amerstadam
  • .video

Similarly, there are only a small number of gTLDs about to enter or in the sunrise phase this month.

These gTLDs are on the horizon:

gTLD

Sunrise opens

.pharmacy

01/15/15

.kred

01/16/15

.tires

01/20/15

.flowers

01/26/15

.poker

02/05/15

.osaka

02/09/15

.ong

03/17/15

.ngo

03/17/15

And these are in sunrise now:

gTLD

Sunrise closes

.space

01/16/15

.rip

01/17/15

.band

01/17/15

.energy

01/31/15

.delivery

01/31/15

.frl

02/01/15

.sydney

02/03/15

.lgbt

02/04/15

.green

02/05/15

.party

02/06/15

.cricket

02/06/15

.science

02/06/15

.voto

02/12/15

.vote

02/12/15

.nrw

02/14/15

.legal

02/28/15

.coach

02/28/15

.money

02/28/15

.memorial

02/28/15

.tirol

03/04/15

New gTLDs are still selling

Since our last gTLD update, nearly half a million second-level domains have been purchased within new gTLDs at an average of 7,000 purchased per day. There has been movement across the leaderboards in 2015.

In the top 10 of gTLD registrations, .网址 (website) jumped to number 2 following .xyz, which has remained constant at number 1; .wang (net) jumped .realtor to the number 5 ranking; .guru, .nyc and .ovh have held onto their spots; and .london was replaced on the list with .link.

The top 10 gTLDs in terms of number of domain registrations:

Number

 New domain

 Number of registrations

1

.xyz

756,124

2

.网址 (website)

352,727

3

.club

157,523

4

.berlin

154,677

5

.wang (net)

108,733

6

.realtor

90,348

7

.guru

78,926

8

.nyc

66,401

9

.ovh

56,483

10

.link

52,848

In the top 10 fastest growing gTLD leaderboard, .wang made the chart at number 1; .link jumped three spots to number 7; .xyz, .club and .website fell one spot to numbers 2, 3 and 4 respectively; .moscow, .ren and .paris were replaced on the list by .wang (net), .red and .click.

Top 10 fastest growing gTLDs:

Number

New domain

1

.wang (net)

2

.xyz

3

.club

4

.website

5

.click

6

.red

7

.link

8

.nyc

9

.rocks

10

.top

If any of these gTLDs could be of value to you or your brand or are otherwise of concern — remember that as a registered agent of ICANN’s Trademark Clearinghouse, we can help develop and implement your gTLD strategy. For more information, read Porter Wright’s law alert about gTLDs.

App developers should beware of the risks associated with transmitting data from a user’s mobile device to external servers

Posted in Information Technology, Privacy

The availability of third-party keyboard apps on the new iOS 8 operating system for Apple mobile devices created quite a buzz. It also served as a reminder for any developer of apps that transmit data or communications from a user’s host device to external servers to be cognizant of the risks associated with such data collection, whether intended for misuse or not.

Though previously available on the Android operating system, third-party keyboard apps such as SwiftKey, Fleksy and Swype broke through with Apple for the first time on iOS 8, MacRumors.com and Tech Republic report. iOS 8 comes stock on the newly released iPhone 6 and is available for download on earlier iPhone versions. Third-party keyboard apps provide aesthetic variety and features such as the ability for users to type without lifting their fingers from the keyboard by tracing their fingers between letters or numbers. Some keyboard apps also have the capability of recording a user’s keystrokes and transmitting the data contained in those keystrokes to external servers, according to MacRumors.com and a technology blog written by IT expert Lenny Zeltser. In some cases, this allows the app to require less hard drive storage space on the host device and to provide upgrades more efficiently. Continue Reading

Ad agencies: If you want to say something nice, don’t not say anything at all (about your relationship with the company or product you are praising)

Posted in FTC issues, Social Media

As we discussed previously, the Federal Trade Commission’s Endorsement Guides apply not only to bloggers who receive promotional merchandise, but also to contest promotions and corporate social media advertising. A recent FTC action confirms that advertising agency staffers cannot casually tweet nice things about their clients without disclosing their relationship.

The FTC finalized a consent order with Sony Computer Entertainment America LLC (“Sony”) earlier this month regarding charges that it deceived consumers with false advertising claims about the “game changing” technological features of its PlayStation Vita handheld gaming console during its U.S. launch campaign in late 2011 and early 2012. The FTC’s complaint against Sony charges that some of the claims made by Sony regarding the PS Vita’s “cross platform gaming” or “cross-save” feature were misleading. As part of its settlement with the FTC, Sony is barred from making similarly misleading advertising claims in the future, and will provide consumers who bought a PS Vita gaming console before June 1, 2012, either a $25 cash or credit refund, or a $50 merchandise voucher for select video games and/or services. Continue Reading

gTLD update: ’Tis the season for new gTLDs

Posted in gTLDs, Intellectual Property, Trademarks

ICANN has been making a final push this December after a couple sluggish months and has delegated 40 gTLDs since our last gTLD update. Those newly delegated gTLDs are:

  • .docs
  • .tires
  • .dev
  • .schwarz
  • .iwc
  • .osaka
  • .sew
  • .garden
  • .lidl
  • .doosan
  • .sky
  • .cartier
  • .samsung
  • .商店 (shop)
  • .adult
  • .porn
  • .trust
  • .eurovision
  • .fashion
  • .latrobe
  • .irish
  • .网店 (webstore)
  • .aquarelle
  • .memorial
  • .legal
  • .money
  • .coach
  • .everbank
  • .谷歌 (Google)
  • .madrid
  • .firmdale
  • .グーグル (Google)
  • .mormon
  • .lds
  • .party
  • .八卦 (gossip)
  • .cricket
  • .science
  • .reit
  • .android

Though ICANN has picked up the pace, there are only a small number of gTLDs about to enter or in the sunrise phase this month. Continue Reading

Hospital pays six figures to settle data breach enforcement suit

Posted in Data Breach, HIPAA Compliance, Privacy

At the end of last month, Boston hospital Beth Israel Deaconess Medical Center (BIDMC) settled a data breach lawsuit brought by the Massachusetts Attorney General related to the 2012 theft of a physician’s laptop. Under a consent decree entered on Nov. 20, 2014, BIDMC agreed to pay $100,000 and to take a number of steps to ensure future compliance with state and federal data security laws.

The state of Massachusetts filed the enforcement suit against BIDMC on the same day as the consent decree’s entry, alleging that an unauthorized person gained access to a BIDMC physician’s unlocked office on campus in May 2012 and stole an unencrypted personal laptop sitting unattended on a desk. Though the laptop was not hospital-issued, the physician used it regularly for hospital-related business with BIDMC’s knowledge and authorization. The physician and his staff allegedly were not following hospital policy and applicable law requiring employees to encrypt and physically secure laptops containing protected health information and personal information. According to the state, the laptop contained nearly 4,000 patients’ and employees’ protected health information and nearly 200 employees’ personal information, including names, Social Security numbers and medical information. The complaint also alleged that BIDMC failed to notify patients about the data breach until nearly three months later, in August 2012. Continue Reading

Changes are coming for trademark registration holders in Canada

Posted in Intellectual Property, Trademarks

In late 2015 or early 2016, significant changes will occur in Canada under the Canadian Trade-Marks Act. Entities holding a Canadian trademark registration that has a renewal date close to this time period will face issues regarding the renewal term period and potential fee increases.

Under the current provisions of the Canadian Trade-Marks Act, registrations are valid for a period for 15 years. The Canadian Trademark Office has indicated that registrations having a renewal date before the change will renew for a period of 15 years. Registrations with a renewal date after the change will have 10-year terms. In that the exact date of the change is not yet known, any Canadian trademark registration having a renewal date from about September 2015 to about April 2016 could have either a 15-year or 10-year renewal period, depending on when the change is enacted. Continue Reading

Supreme Court decision likely to affect TTAB proceedings

Posted in Intellectual Property, Trademarks

Early in December 2014, the U.S. Supreme Court heard oral arguments in B&B Hardware, Inc. v. Hargis Industries, Inc. At issue are inconsistencies by the 12 regional federal courts appeal in giving preclusive effect in trademark infringement cases to a denial by the Trademark Trial and Appeal Board (TTAB) of an application to register a trademark in an opposition action. Issue preclusion prevents a party to a lawsuit from re-litigating an issue once it has been decided in a previous case where the party was given a full and fair opportunity to litigate the issue. The issue here is “likelihood of confusion.”

B&B owns a U.S. registration for the trademark SEALTIGHT. When Hargis applied to register SEALTITE, B&B opposed the registration. The TTAB held for B&B. B&B then sued Hargis in district court, alleging trademark infringement. The district court found that the TTAB’s ruling for B&B did not have preclusive effect on the district court case. B&B appealed to the Eighth Circuit. The Eight Circuit held that the TTAB and the district court used different tests to reach their findings of a likelihood of confusion, so refused to apply issue preclusion. B&B appealed to the Supreme Court. Continue Reading

Sony Data Hack: “You Can’t Lose What You Ain’t Never Had”

Posted in Copyright, Information Technology, Intellectual Property, Privacy, Trademarks

Back in the 1960’s, legendary bluesman Muddy Waters wrote a song called “You Can’t Lose What You Ain’t Never Had.”

Now, it is Sony Pictures that is singing the blues, as damages continue to mount following the cyber attack on its data networks just before Thanksgiving. A shadowy group with possible connections to the North Korean government has claimed responsibility for the hack, which, to date, has resulted in exposure of Sony intellectual property (e.g., movie scripts), trade secrets (e.g., film budgets), employee personal information (e.g., employee and former employee home addresses and social security numbers) and other sensitive information (e.g., actor travel aliases and phone numbers).

I’m no cybersecurity expert, but I’m at the point where I seriously doubt any currently available data security technology is totally hack-proof. Who knows, there may have been precious little that Sony could have done to prevent the loss of its intellectual property and trade secret information to determined hackers. Let’s face it, some of the most highly sophisticated corporations and government agencies have been victimized by cyber attacks in the last year. But the same really can’t be said for their employee data.

Continue Reading