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Edwin Komen is a partner in the Entertainment, Technology and Advertising and the Intellectual Property Practice Groups.

Bona fide intent, the sine qua non of non-use trademark applications, was given new meaning by the TTAB in a decision released unpublished February 21, 2014 but redesignated as precedent on March 26, 2014, thus placing at risk similar applications for oppositions and issued registrations for cancellation.  The decision, Lincoln National Corporation v. Anderson, Consolidated Opposition Nos. 91192939 and 91194817, TTAB Mailed February 21, 2014[1], exemplifies an apparent trend of the TTAB requiring greater proof of an applicant’s “intent” as a jurisdictional prerequisite for filing or face a finding that the application is void ab initio.  This finding may result from an opposition but, perhaps more significantly, from a cancellation many years following registration.
Continue Reading Intent To Use – It’s Not The Thought That Counts

The Supreme Court today handed down a far reaching decision throwing out an attempt by Congress to deny the benefits conferred by federal law on same sex couples legally married under state law holding that the Defense of Marriage Act (“DOMA”), as so applied, constituted a deprivation of the equal liberty of persons protected by the Fifth Amendment. In so doing, and perhaps without realizing it, the Supreme Court was also writing an important copyright case.

Continue Reading DOMA goes down – Copyright goes up – U.S. v. Windsor, Supreme Court, No. 12-307, decided June 26, 2013

A little used and often overlooked provision of the California Code of Civil Procedure recently played an important role in three recent cases brought by AF Holdings LLC, a foreign entity formed under the laws of the Federation of Saint Kitts and Nevis, against California residents for allegedly dealing with copyright infringing content through use of BitTorrent software. These decisions, copies appended, are:

AF Holdings LLC v. Trinh, United Stated District Court for the Northern District of California, 2012 U.S. Dist. Lexis 161394 (November 9, 2012) (“AF Holdings I”).

AF Holdings LLC v. Navasca, United Stated District Court for the Northern District of California, No. C-12-2396 EMC (February 5, 2013) (“AF Holdings II”).

AF Holdings LLC v. Magsumbol, United Stated District Court for the Northern District of California, No. 12-4221 SC (March 18, 2013) (“AF Holdings III”).

Continue Reading BONDing WITH NPE’s – The requirement for security for costs or expenses under Section 1030 of the California Code of Civil Procedure