Rivalry in the Athleisure Industry – lululemon and Under Armour battle over criss-cross straps

By Porter Wright on August 16, 2017

Patent infringement lawsuits are rather unusual in the fashion industry in part because design patents are difficult, expensive, and slow to obtain. In an industry that is constantly evolving to keep up with consumer trends, the year+ length of time from application filing to design patent registration is a lifetime. The latest development gaining momentum in the fashion industry is a niche known as “athleisure.” This trend, as suggested by the term, is defined by clothing designed not only for hardcore workouts or athletic activity, but also to be worn in other low impact settings, such as at the workplace, school, or other casual or social settings. Athleisure apparel caters to those, typically women, who want to be comfortable but still want to be trendy.

This athleisure market feeds a growing multibillion dollar industry which increases the demand on big time players to carve out their stake with continuously innovative items.

But what is considered innovative and novel?

Supreme Court holds ban on disparaging trademarks is unconstitutional – a victory for The Slants

By Porter Wright on June 20, 2017

On Monday, June 19, 2017, the Supreme Court released a decision in a high profile trademark case rejecting the Lanham Act’s rule against disparaging trademarks as being facially invalid and unconstitutional.

The Lanham Act, since its enactment in 1946, has contained a provision stating that a trademark should not be refused registration on the principal register unless it “consists of … matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” (See 15 U.S.C. §1052). Since the enactment of the Lanham Act, courts have routinely found that the disparagement rule does not violate the First Amendment because it does not preclude actual use of the mark in commerce nor prevent the establishment of common law trademark rights, but is rather just a bar to federal registration.

‘This could be heaven or this could be hell’ for Hotel California

By Porter Wright on June 9, 2017

Nearly 50 miles south of San Diego in Mexico lies an eleven room hotel which is currently making waves for its name, Hotel California, which is also the name of the Eagles classic single and album. The boutique hotel was originally named Hotel California at its 1950 opening but has since undergone several name changes. Ultimately the original name, Hotel California, was revived sometime after a Canadian couple bought it in 2001.

Although the Baja hotel has been around for over 60 years many of us are more familiar with Hotel California being associated with one of America’s greatest rock bands, the Eagles. Both the song and album, “Hotel California,” have arguably become legendary. The album won the 1977 Grammy Award for record of the year and is one of the best-selling albums of all time.

Don’t wannacry? Help your IT staff prevent ransomware

By Donna Ruscitti on May 18, 2017

This week our colleagues at Employer Law Report published a post discussing the recent “Wannacry” ransomware attack. In the post, Brian Hall outlines the risks employers may face when dealing with cyber attacks and how human resource departments can help protect their organizations. Click below to read the full article.

Don’t wannacry? Help your IT staff prevent ransomware

Expiration of Amazon’s 1-Click patent: Are you preparing for the single click world?

By Rick Mescher on May 10, 2017

About two decades ago, Amazon.com, Inc. revolutionized e-commerce transactions with the innovation of single click buying. Single click buying is a checkout process that enables customers to bypass the shopping cart to make an online purchase with a single click based on payment and shipping information previously provided by the customer. Amazon received U.S. Patent No. 5,960,411 (the 1-Click Patent) for this technology in 1999. Amazon also has U.S. registrations for the trademark “1-Click”. The 1-Click Patent will expire on Sept. 12, 2017 so the technology will enter the public domain and Amazon will no longer have exclusive rights. This is good news if you like to use single click buying at Amazon.com, iTunes, iPhoto, Apple App Store etc. (Apple, Inc. licensed the single click technology from Amazon) because many other companies will begin using this technology once the 1-Click Patent expires. If you have an e-commerce site, you should be preparing for the single click world where many customers will likely come to expect “frictionless transactions” everywhere including mobile applications.

The 20 year life of the 1-Click Patent has not been without controversy. Continue Reading

Phishing for tax returns: Where’s your refund?

By Donna Ruscitti on March 29, 2017

The use of phishing scams, phone scams and computer hacking seems to multiply daily. The object of the scams and hacks: getting your tax refund. How? By the scammers and hackers filing a false tax return on your behalf. It’s more common than you think. Part of the problem is that those darn phishing emails look so real, including company logos, brand identity, signature blocks and even the photo of the alleged sender of the email.

These scams are not new, but many of them continue to succeed. Last year, phishing emails were so prevalent that it prompted the IRS to issue a special alert. It’s becoming common practice for IT departments at many companies to introduce “fake” phishing threats to train their employees on what not to do. These are essentially planned attacks from a known source. Employees learn how to recognize a phishing email using various techniques, such as looking for misspellings, incorrect domains and hovering over any links embedded in the body of the email. More importantly, they learn what to do, and what not to do: DO report the suspicious email to the help desk and delete the email; DON’T reply to the email, click on any links in the email, or open any attachments to the email.

March Madness: the showdown between the Big Ten Conference and the NCAA – who is your number one pick?

By Porter Wright on March 14, 2017

It’s the month of March, and most of us are highly aware of the NCAA’s basketball tournament that dramatically decreases work productivity and determines the college basketball national champion. If you’re thinking about entering the hype and using any of the NCAA’s trademarks in your promotions and marketing this month, it’s important to consider your use very carefully. The reason: the NCAA has trademarked a slew of marks associated with the tournament, such as “NCAA,” March Madness,” “Final Four,” the “Big Dance” and any corresponding logos. These marks are all federally registered trademarks of the NCAA, and the NCAA zealously defends them.

The NCAA has been using the mark MARCH MADNESS for over three decades and has recently attempted to claim further rights in the term “March”, quite possibly with respect to any services rendered in conjunction with sports-related entertainment services. This is how it happened. A little over a year ago, the Big Ten Conference filed a federal trademark application based on an intent to use the mark “MARCH IS ON!” for services related to sporting events and contests. The application was reviewed by a United States Patent and Trademark Office (USPTO) examiner, who ultimately determined that there were no conflicting marks that would bar registration of this mark and the application was published for opposition in August of 2016. The NCAA did not respond kindly to this application and after exhausting several extensions of time to oppose formally filed an opposition on Feb. 13, 2017.

Get back to whom you once belonged: Paul McCartney seeks to reclaim ownership of music catalog through interesting provision of copyright act

By Porter Wright on March 9, 2017

To a music lover and intellectual property attorney, this story is a wonderful collision of law and musical lore. Paul McCartney’s efforts to regain ownership of the Lennon/McCartney (or is it now “McCartney/Lennon?”) music catalog from Sony combines two interesting tales–the story of how Sony came to own the catalog to begin with and the existence and story behind a seemingly odd copyright reclamation provision of the Copyright Act of 1976.

Let’s start with Sir Paul and The King of Pop. As the story goes, at some point during the 1980s, when Michael Jackson and Paul McCartney were friends and making songs together, McCartney pointed out to Jackson the value of music rights. Michael must have been listening and undoubtedly said something to himself along the lines of, “Say, Say, Say, that sounds like something I could make some money off of.” In 1985, Jackson bought ATV in a deal worth $47.5 million. ATV owned Northern Songs, the publishing company set up by Dick James and Brian Epstein in 1963 and which owned the rights to the majority of The Beatles’ songs. For those who might be curious, further interesting elements of that transaction are described in more detail here.

Takedown of counterfeit goods in China

By Rick Mescher on March 2, 2017

The elimination of counterfeit goods from online marketplaces in China continues to improve due to support from the Chinese government, changing laws in China which can impose liability on online marketplaces for infringement of intellectual property rights (IPR) and continued pressure from manufactures from around the world. The Alibaba Group, owner of some of the most popular online marketplaces in China, launched in January a “Big Data Anti-Counterfeiting Alliance” which already includes members such as Louis Vitton, Swarovski, Samsung, Amway and Ford. The Alibaba Group will provide members with technological support and protection from counterfeiting utilizing data and analytics. The Alibaba Group had previously established IPR protection platforms in the English language several years ago which largely remain the same. However, the Alibaba Group has recently streamlined the takedown procedures to make them easier and more effective, started closing the accounts of three-time infringers, and started prohibiting listings that intentionally blur trademarks.

Trends in behavioral advertising: What you need to know about cross-device tracking

By Porter Wright on February 20, 2017

The Federal Trade Commission (FTC) recently issued a staff report (available here) on the trend to link consumers’ online behavior across multiple devices. Among other recommendations, the FTC suggests that companies not track sensitive information which may include health, financial, children’s and precise geolocation information without the consumers’ affirmative express consent. The FTC also recommends that all companies engaged in cross-device tracking should truthfully disclose their tracking activities. The FTC reviewed the privacy policies of 100 top websites and only found 3 policies that expressly mentioned enabling third-party cross-device tracking on their websites. Continue Reading