New Ninth Circuit Law re Irreparable Harm in Trademark & Copyright Cases

Quick update for all my IPeeps! (new term I coined to refer to my IP colleagues... don't steal it).

Ninth Circuit rejects presumption of irreparable harm for trademark owners.  Herb Reed Enterprises, LLC v. Florida Entertainment Management, No. 12-16868 (9^th Cir. Dec. 2, 2013).  See eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) in which the Supreme Court rejected a similar presumption of irreparable harm in patent cases, which “effectively overruled” the Ninth Circuit’s prior decisions re trademark and copyright irreparable harm.

Ninth Circuit rejects presumption of irreparable harm for copyright owners.  Perfect 10, Inc. v. Google, Inc., No. 10-56316 (9th Cir. Aug. 3, 2011).

Links to cases:

Herb Reed case

http://cdn.ca9.uscourts.gov/datastore/opinions/2013/12/02/12-16868.pdf 

Perfect 10 case

http://cdn.ca9.uscourts.gov/datastore/opinions/2011/08/03/10-56316.pdf 

eBay case

http://www.supremecourt.gov/opinions/05pdf/05-130.pdf

See also, Winter case
http://www.c-span.org/pdf/USSC_NavySonar.pdf  

In Winter, the Court held that a party seeking an injunction in a non-patent case must show that irreparable harm is “likely,” not merely “possible.”

Get over it….. ;-)

Happy Holidays!

Trademark Oppositions in the United States - Is The Cost Worth The Benefit?

I found this interesting article about the costs and benefits of US trademark oppositions.  I think you will find it informative.

http://bit.ly/1bsb5Qs

Comments welcome!

Have a great week.

IN RE CITY OF HOUSTON - Local Government Entity Cannot Register a Trademark for its Official Insignia

Another interesting case, more so because it is a case of first impression!  I would have thought this had come up at some point or another before now....  Anyway, the court upheld the decision of the TTAB that Section 2(b) of the Lanham Act prohibits the registration of these insignia.

Houston and Washington, D.C. both were attempting to register their city seals.  Both received final rejections from the TTAB and appealed to the Federal Circuit.

The court stated: "Section 2(b) prohibits registration of an "insignia of the United States, or of any State or municipality." We see nothing in this plain language that suggests a government entity such as Houston should be exempted from the reach of the prohibition."

The case is an interesting read:  http://1.usa.gov/1hi5s7e

Comments welcomed.

Viacom CEO Philippe Dauman Loses UDRP Over Registration of His Name

I thought this was interesting because a famous person's name is often also a source indicator of goods and/or services.  In this case, the WIPO arbitrators acknowledged that is often true while explaining that in Mr. Dauman's case, his name does not serve as a source indicatory.  His name is well known, perhaps famous, but not a source indicator.  That is a requirement under the UDRP and therefore the UDRP complaint was denied.

You can read the decision here:  http://bit.ly/15QKw5D

As always, comments welcome.

Sculptor's Copyright Claims Improperly Dismissed

An author's claims were dismissed by a federal magistrate judge becuase he ruled her copyright submission was not in an orderly form -  as required for copyrighting a collection of unpublished works -  and therefore the copyright was invalid.

The author submitted her application with some photos bound in a booklet and some loose photos.  The scupture at issue was depicted in one of the loose photos.

On appeal, Judge Easterbrook logically pointed out that the Copyright Office found the deposit sufficient to issue a registration.  Judge Easterbrook noted that "The Register found the submission adequate; a district court should not set aside an agency's application of its own regulations without strong reason."

Judge Easterbrook wondered how the magistrate could have determined that the copyright submission was not orderly when it was not in the record.  Oops......

Here's a link to an article from Bloomberg and the case:

http://bit.ly/1d9dnV3

Have a great day!

Groklaw Tech Blog Shuts Down Citing US Government Monitoring

Check out this article from the ABA Journal about the Groklaw shutdown.  It's an interesting article, although I think the shutdown is a kneejerk/emotional reaction rather than a well-reasoned response to this issue.  What is your take?

http://bit.ly/1figW9Q

Comments welcome and have a great day!

Green Day Wins "close and difficult" Copyright Infringement Case in 9th Circuit

Calling the case "close and difficult," the 9th circuit affirmed a district court ruling that Green Day's use of a graphic image in a video was a fair use.  The district court's award of attorney's fees to Green Day was reversed.

Story from the World Intellectual Property Review here: http://bit.ly/152ZI1k

The "fair use" defense is typically problematic, and here it is interesting that the lower court believed that the Plaintiff's case was unreasonable and awarded attorney's fees to Green Day, but the 9th Circuit said not so fast - this was a close and difficult case - and reversed the award of attorney's fees.

Enjoy and have a great day!

HP Fights Lawsuit Over Penis Size App Known as 'Chubby Checker'

I couldn't resist reposting this from the Hollywood Reporter!  I guess Chubby Checker (the singer) has a problem with an phone app that measures penis size....   He claims his name has been tarnished.

http://www.hollywoodreporter.com/thr-esq/hp-fights-lawsuit-penis-size-607372

Have a great weekend!  You, too Chubby!

Obama's IP Czar Steps Down

Victoria Espinel was appointed by President Obama in 2009.  She was responsible for  working with various government agencies and helping develop IP strategies.  Earlier this year she introduced President Obama's IP plan with goals of improving transparency in IP policymaking and international negotiations, improving law enforcement communication with IP stakeholders and educating authors on "fair use."

See story from the Hollywood Reporter here:

http://bit.ly/14HXtQV

And from Corporate Counsel Magazine here:

http://bit.ly/125ATxA

President Obama's IP Plan (light reading, 91 pages):

http://1.usa.gov/11OIqwc

Copyright Green Paper Issued by the Department of Commerce

What? Two blogs in one week?  That's *^&% crazy...

Here's a link to the copyright green paper issued by the Department of Commerce last week.  Evidently this paper is the most thorough and comprehensive analysis of digital copyright policy issued by any administration since 1995.  You might want to read it and see what our government is thinking about digital copyright.  I'm sure there will be a public comment period, so heads up!  I will be back next Wednesday, August 14 (as promised) with more.  In the meantime, dig in to some light weekend reading and let me know what you think.  Have a great weekend!

http://www.uspto.gov/news/publications/copyrightgreenpaper.pdf

I'm back in saddle again!

First blog post in over a year, and my goal is to post once a week - every Wednesday!  Please stay tuned.

Interesting case in Georgia where the state is claiming copyright in annotated state statues and trying to prevent a commercial service from copying and distributing the annotated statutes.  Check out the Techdirt story here:  http://bit.ly/14z4LPI