Intellectual Property Law Blog

In Al Minor & Associates, Inc. v. Martin, 117 Ohio St.3d 58, 2008-Ohio-292, the Ohio Supreme Court recently held that memorizing information, including specifically client lists, constitutes trade secret misappropriation. The court found that neither the Uniform Trade Secret Act nor the Ohio legislature "intended to distinguish between information that has been reduced to some tangible form and some information that has been memorized."

On April 7, 2008, in North American Medical Corp. v. Axiom Worldwide, Inc., the Federal Court of Appeals for the 11th Circuit Court (with jurisdiction over Alabama, Florida and Georgia), ruled that using another’s trademark in metatags infringes the Lanham Trademark Act.  There is a split of authority regarding trademark infringement by the use of search engine key words and metatags.  This decision followed the reasoning of the 9th Circuit in Brookfield Communications, Inc. v. West Coast Entertainment Corp., along with a majority of other circuits (with the 2nd Circuit being an exception), in holding that the use of another’s trademark(s) in metatags and keywords is a “use in commerce” and may result in trademark infringement.

The Copyright Office recently issued a press release in their "Newsnet," Issue 341, April 14, 2008, announcing what everyone else already knew. The Copyright Office is getting seriously behind in processing copyright applications and issuing registration certificates. In fact, the official time lag for receiving a certificate is now "up to 8 months." This is not an inconsiderable pendency since as recently as a year ago certificates were being issued within 4 to 6 months. The problem of pendency becomes even worse in relationship to when the information actually appears on the public records which may be some time after the registration issues. This means that the public which is bound by the legal effects of the copyright registration as of the original filing date, may not even be aware that an application has been filed, or have any way of easily investigating online, for up to a year after such filing date which is, legally speaking, also the "effective date of a copyright registration" under Section 410(d) of the Copyright Act.

Last month, the Court of Appeals for the Federal Circuit decided (sua sponte) to reconsider its landmark State Street decision on patentable subject mater , and ordered an en banc hearing for an appeal in the case of In re Bilski.  In its order, the Court presented the following five questions:

Perfumebay.com v. eBay, Inc. _ Fed 3D _ (9th Cir. Nov. 5, 2007)

Click here to view a PDF copy of the document.

Like New Year's resolutions which remain unfulfilled, a decision late last year of a federal district court sent still another reminder that copyright law in the United States remains far from the formality free regime envisioned by Berne Convention rules.  In November, Goss International Americas, Inc. v. A-American Machine & Assembly Co., 2007 WL 4294744 (N.D. Ill., Nov. 30, 2007) once again drove home the reality that registration is one formality that still rules.

Click here to view a PDF copy of the document.

The push to reform the U.S. patent system tracks back to February 2003 with the publication of the USPTO's 21st Century Strategic Plan.  Other studies followed, identifying key areas for reform: improving the quality of patents, litigation reform, and harmonization of U.S. patent law with the laws of the U.S.'s major trading partners.

One of the foundational principles of United States trademark law, as well as the law of most other countries, is that trademark protection is national in nature and does not extend beyond a country in which the mark is used or registered.  A recent decision by the New York State Court of Appeals demonstrates that in an increasingly global economy, this bedrock principle of trademark law is no longer absolute.  The Court of Appeals decision in ITC Ltd. v. Punchgini, Inc., involved a claim by the owner of the Bukhara restaurant in New Delhi, India, that a restaurant which opened in New York City under the same name was infringing its trademark rights.

Government attempts to commandeer encrypted passwords and to search laptops at border points raise a host of constitutional issues from self-incrimination to unlawful search and seizure. On November 29, 2007, in a case believed to be the first of its kind, a U.S. District Court in Vermont ruled that the government could not require a man to type in a password that would unlock his computer because doing so would violate his Fifth Amendment right against self-incrimination. In addition, the Central District of California has found that the government must have a reasonable suspicion to search a person's computer at a point of entry to the United States. Both decisions are on appeal.