Intellectual Property Law Blog

On August 6, 2010 Senator Charles Schumer (D-NY), introduced a bill entitled the Innovative Design Protection and Piracy Prevention Act ("IDPPPA") (S. 3728), which represents a compromise between the American Apparel & Footwear Association ("AAFA") and the Council of Fashion Designers of America ("CFDA") in an effort to afford protection to American designers for new and original fashion designs.[1]

A change in the rules on copyright licensing may be coming in the near future and from an unexpected and unanticipated source. The rules deal with whether the owner of an exclusive copyright license may sublicense such right without the approval of the licensor. The clear and unequivocal answer in the Ninth Circuit has long been, "No." See, Gardner v. Nike, Inc., 279 F.3d 774 (9th Cir. 2002). The answer in other circuits is somewhat less clear. Most licensors, however, have long sought contractual clarity by providing for "assignment" or "license" provisions in any contract for copyrights, trademarks or patents. Congress, however, may soon be changing the Ninth Circuit's answer at a time when few may even be aware of the pending change.

Building Brands In A Digital World

Building a better mousetrap, widget, or search engine isn't enough. Join leading branding professionals and trademark counsel for an in-depth discussion of how to build a compelling brand, including online brand development strategies as well as best practices regarding brand protection and enforcement in both the actual and virtual worlds, focusing on “real life” practical examples.

Judge Harold Baer in Gucci America, Inc. v. Frontline Processing Corp., No. 09 Civ. 6925 (HB), 2010 WL 2541367 (S.D.N.Y. June 23, 2010), ruled that Gucci had sufficiently alleged facts to defeat a motion to dismiss in a suit brought against three defendant credit card merchant service providers for trademark infringement. The litigation stems out of an earlier action, Gucci America, Inc. v. Laurette Co., Inc., No. 08 Civ. 5065 (LAK) (S.D.N.Y. June 3, 2008), in which Gucci successfully sued defendant Laurette for operating a website, "TheBagAddiction.com," which sold counterfeit Gucci designs. Gucci later brought suit against three credit card merchant companies, Durango Merchant Services (a Wyoming corporation), Frontline Processing Corporation (a Nevada corporation principally operating in Montana), and Woodforest National Bank (a Texas corporation), alleging that those companies aided and assisted Laurette and other similar website operators in infringing Gucci's marks. According to the allegations set forth in Gucci's complaint, Durango established credit card processing services for web companies like Woodforest and Frontline that sold counterfeit products. Gucci brought trademark infringement and counterfeit claims against Laurette based upon website sales of counterfeit Gucci products. Gucci alleged that the credit card processing services established by the three defendants were essential to Laurette's sale of counterfeit Gucci products, and, for that reason, Durango, Frontline, and Woodforest were equally responsible for direct, contributory, and vicarious trademark infringement under the Lanham Act and New York state law. The defendants moved to dismiss the action on the grounds that the court lacked personal jurisdiction and that Gucci had failed to state a claim.

This morning, in a highly anticipated decision, a fractured Supreme Court affirmed the Federal Circuit's judgment in Bilski v. Kappos. The Court unanimously upheld the rejection of Bilski's patent claims, which concerned a process for hedging against the risk of price changes in the energy market. But the Court split on the grounds for rejecting the claims, with the majority characterizing the claims as impermissible attempts to patent abstract ideas while explicitly leaving open the possibility of protecting "business method" inventions in other contexts.

Silvaco Data Systems v. Intel Corp., 184 Cal.App.4th 210 (April 29, 2010)

In a recent case, Silvaco Data Systems v. Intel Corp., 184 Cal.App.4th 210 (April 29, 2010), the California Court of Appeal clarified what constitutes use of a trade secret in the software context. At issue in Silvaco was whether defendant, Intel, was liable for trade secret misappropriation based on its use of software it had purchased from a third party, that was derived from plaintiff's trade secret source code, which in turn, had been misappropriated by a third party.

The Del Mar office of Sheppard Mullin recently had the rare honor and privilege of hosting an inventors forum with David Kappos, the Director of the United States Patent and Trademark Office, as the guest of honor. During the event, inventors from the general San Diego area had the unique opportunity to ask Mr. Kappos questions, in-person, regarding the patent office, and discuss issues relating to their dealings with the patent office.

Digital Media Law Forum at the Commonwealth Club Silicon Valley

On May 13, 2010, at the Computer History Museum in Mountain View, CA, a panel of experts from Yahoo!, Funny or Die, United Talent Agency, Wired.com, and Sheppard Mullin examined the new business models for content creation, distribution and monetization.

Recently, a California court of appeal took up an issue that is more often examined by federal courts than state courts: trade-secret preemption of related tort claims.

On April 19th, 2010, the United States Supreme Court granted certiorari to consider whether, in the context of a copyright infringement claim, the first sale doctrine applies to imported goods manufactured abroad. The first sale doctrine, codifed at 17 U.S.C. § 109(a), works as a defense to a copyright infringement claim where the copyright owner consents to the first sale of its copyrighted work.