A Legal Blog by Aaron | Sanders, PLLC


One Week, Two Trademarks, Three Countries, Five Opinions, and a Big Ol’ Circuit Split

Tara is an experienced Nashville intellectual property lawyer with particular interests in managing international IP portfolios and helping start-ups develop IP assets.

Last week, two different U.S. courts took action in cases involving the use of trademarks outside the borders of the United States, and if you aren’t confused you don’t understand territoriality.

 

The big news last Monday was the Supreme Court’s refusal to hear an appeal in the case of Belmora, LLC v. Bayer Consumer Care AG. You can read the Fourth Circuit opinion here. This is a case of the limits of standing to sue under the Lanham Act coming up against a really bad actor, to put it simply.

Bayer Consumer Care, a Swiss company, sells naproxen sodium pain relievers under the brand name FLANAX in Mexico. (The product is the same as ALEVE in the United States). They’ve been selling FLANAX in Mexico since 1976.  In 2004, Belmora LLC started selling its own naproxen sodium pain relievers under the name FLANAX. The packaging was virtually identical to Bayer’s packaging in Mexico. Belmora marketed its product to distributors with all kinds of claims about the “topselling brand among Latinos” and declaring that “Flanax is now made in the U.S.” Did I mention these are really skeezy guys?

Belmora even had the gall to apply for registration of FLANAX at the USPTO, and…

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Swimming in the Shark Tank: Even Gladiators Need to Clear Trademarks

Rick is an experienced Nashville intellectual-property litigator and an erstwhile part-time professor at Vanderbilt University Law School whose writing and teaching focuses on copyright issues but whose law practice involves a wide variety of IP-related disputes.

Swimming with the Shark Tank

If you’re a fan of Shark Tank, one of the more interesting pitches was by Rachel Zietz in 2016, a (then) fifteen-year old lacrosse player and entrepreneur. She said she was tired of the lousy lacrosse equipment she had been buying from the major manufacturers, who, she suspected, didn’t really understand the sport. She would design better equipment herself. Encouraged by her parents and The Young Entrepreneurs Academy of Boca Raton to form a business around something she loved, she started manufacturing and selling lacrosse equipment. She called her business “Gladiator Lacrosse.” She was only thirteen. It was 2013.

None of sharks invested in her company, though they were all impressed and a few were intrigued. They didn’t doubt her business model or her success. Her company already had revenues of $340,000, in just a matter of two years, so she was clearly tapping into something. They just didn’t see how their involvement and money would add anything to her company. Some also doubted that she could stay involved in her company at such a young age, when she would have so many other commitments. She responded that she has a strong brand: GLADIATOR.

Those about to…

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Honey Catches Flies and Hackers, But Not A Trademark Registration

Tara is an experienced Nashville intellectual property lawyer with particular interests in managing international IP portfolios and helping start-ups develop IP assets.

In honor of Valentine’s Day, the Trademark Trial and Appeal Board has offered us honey. You know, that stuff with which you catch more flies.

The lines between descriptive and suggestive marks has never been easy to define.  Bitvoyant, a Virginia-based software company, found that out this week.  Bitvoyant applied to register the mark HONEYFILE in connection with the following:
Computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence in Class 9; and

Computer security consultancy; Computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities; Computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; Computer virus protection services; Design and development of electronic data security systems; Platform as a service (PAAS) featuring computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intellegence in Class 42.
The Examining Attorney found the mark descriptive, based on evidence that the cybersecurity industry used the term to denote files that would…

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Tinkering, Vision, Business and Patents: What the Tangled History of Windsurfing Can Tell Us About Innovation

Rick is an experienced Nashville intellectual-property litigator and an erstwhile part-time professor at Vanderbilt University Law School whose writing and teaching focuses on copyright issues but whose law practice involves a wide variety of IP-related disputes.

A Meditation on Innovation on the Occasion of the Death of S. Newman Darby, Tinkerer, Hobbyist & Inventor

If you enjoy windsurfing, you might raise one to S. Newman Darby, who essentially invented it and who passed away last month. For a long time, not very many people knew this.

He grew up around Wilkes-Barre, Pennsylvania. Though he clearly had a mechanical gift, he was content to run the sign-painting business his father had started, and to tinker on the side. He particularly enjoyed boating on the Susquehanna and on nearby lakes. But he found sailing fussy, and steering by rudder unsatisfying. How much better it would be to steer by guiding the sails themselves and leaning into the wind. It was 1964.

He started by attaching a sail directly to a board. That worked, but it was clumsy and limited. You couldn’t turn very well, and you couldn’t go into the wind. He tried again, this time attaching the sale to the board with a short length of nylon rope, effectively creating a universal joint. This worked a treat, and in a short time, he taught himself how to “sailboard.” You stood on a rectangular board, about the size of an…

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A Business New Year’s Resolution – Don’t Violate the Trademark “Anti-Trafficking” Rule

Tara is an experienced Nashville intellectual property lawyer with particular interests in managing international IP portfolios and helping start-ups develop IP assets.

You need a trademark lawyer. No, really.  Even if you have a corporate lawyer. No, especially if you have a corporate lawyer.  Do not let your corporate lawyer do your trademark lawyer’s work.  Would you let your dentist do your appendectomy?  The following is a story of trademark work gone wrong. (Arguably better than an appendectomy gone wrong, but still).

Perry Orlando files a trademark application for THE EMERALD CITY in 2008. He files on an “Intent to Use” basis. Everything goes fine, and the application is allowed, but Mr. Orlando still has to file is Statement of Use before the mark will register.

In 2009, and before he files the Statement of Use, Mr. Orlando assigns the trademark to Emerald Cities Collaborative, Inc. (The U.S. trademark lawyers, of course, can see the problem immediately). From the case, it looks like the assignment was probably drafted by a lawyer. The lawyer seems to have even maybe understood the problem and tried to get around it.  Mr. Orlando agreed to “assign unto ECC all right . . . in the Mark . . . . at such time as the Mark is registered at the PTO” (emphasis in original). Emerald Cities Collaborative…

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Has There Really Been Fallout from the Blurred Lines Case and What Can Be Done About It?

Rick is an experienced Nashville intellectual-property litigator and an erstwhile part-time professor at Vanderbilt University Law School whose writing and teaching focuses on copyright issues but whose law practice involves a wide variety of IP-related disputes.

Giving Credit Where Credit Is Due (or Demanded)

Last week, the Associated Press reported, “More and more, artists are giving credit” to the writers of pre-existing songs “in the wake of the ‘Blurred Lines’ case.” The main point of the article was that songwriters are taking a more cautious approach when they know they have at least been influenced by a particular song and have been giving credit to the writers of the older songs to play it safe. As evidence, the article cited the addition of the Gap Band’s “Oops Upside Your Head” to “Uptown Funk,” the addition of the massively awesome Tom Petty and Jeff Lynne to the credits for Sam Smith’s “Stay With Me”—completely justified, in my view—and the addition the two songwriting dudes from The Fray to the credits for The Chainsmokers’ “Closer” (a song I have never listened to until just now).

That’s hardly overwhelming evidence, particularly since at least two of the additions were really settlements of legal claims before litigation. I don’t know how the Chainsmokers dispute was resolved, but I doubt it was purely voluntary.

Songwriting credit is a big deal because it’s how songwriters get paid. Royalties for a song are divided among…

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Poking Bears and Blocking ISPs

Tara is an experienced Nashville intellectual property lawyer with particular interests in managing international IP portfolios and helping start-ups develop IP assets.

I’m going to post this and then go hide out in a bunker somewhere.  I’m not even sure I can get through the introductory paragraph before needing to take cover.

 

 

SOPA.

 

(Crawling back out from her hiding space under her desk…..)

 

You will all remember the Day the Internet Went Black in protest of the twin legislative boogey men, the Stop Online Piracy Act in the House and the Protect IP Act in the Senate.  The acts were secretly negotiated and quickly drafted attempts to curb piracy and counterfeit from foreign sites by prohibiting U.S. companies from advertising on those sites or processing payments to those sites, or from indexing those sites on search engines. We’re coming up on the 5th anniversary of Protest Day. The primary arguments against the bills were that the DNS blocking provisions would “break the internet,” that it was not narrowly tailored to avoid curbing free speech, that it would chill sites for user-generated content, and that it would generally stifle internet innovation.

The short history is that the bills came out, the Internet went berserk, the Internet went black, and the bill died.  Prior to the demise, those of us who moderated panels on the issue that…

dreamstime_m_48059685

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New DMCA Registration Regime Starts Today. Don’t Delay!

Rick is an experienced Nashville intellectual-property litigator and an erstwhile part-time professor at Vanderbilt University Law School whose writing and teaching focuses on copyright issues but whose law practice involves a wide variety of IP-related disputes.

New DMCA Registration Regime Starts Today. Don’t Delay!

Today is the first day to take advantage of the U.S. Copyright Office’s new electronic registration system for DMCA agents Gone are the days of printing out a form, physically signing it, and physically mailing it in, usually accompanied by a fairly large check (over $100). Now, you just create an account (which means picking a user name and password, alas), fill out a fairly simple form, pay a very small fee—currently, $6.00—by credit card, and you’re done. The whole thing can be accessed here.

I just did it for my firm, and it wasn’t that hard. There are only a couple of tricky things. First, you (i.e., your organization or who you’re representing) is the “service provider,” not, for example, your internet service provider. In this context, “service provider” means anyone providing any type of service over the internet, not just traditional last-mile ISPs. Second, you’ll want to include, as “additional names,” any name by which you or your organization might be known. At present, there’s no additional fee for additional names, so there’s no reason to skimp.

Even if You’ve Registered, You Need to Re-register.

Now for the important bit. Today might be the…

Usually, DMCA takedown notifications don't have such nice handwriting.

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Is it Fair Use? Who’s on First (Copyright Fair Use Factor)?

Rick is an experienced Nashville intellectual-property litigator and an erstwhile part-time professor at Vanderbilt University Law School whose writing and teaching focuses on copyright issues but whose law practice involves a wide variety of IP-related disputes.

Abbott and Costello Meet the Copyright Lawyer (1 1/2 Stars)

It’s time for another round of “Is it Fair Use?”, the fast-paced, heart-racing game that’s sweeping the nation. This episode of “Is it Fair Use?” features one of the classic skits of American Comedy: “Who’s on First?”

Pure gold. Most of us have this routine more or less memorized, and yet, even knowing all the jokes, the routine is never fails to make us laugh.

Along Came a Demonic Hand Puppet

Much more recently, a Broadway play, called Hand to God, about—if I’m understanding this correctly—a possibly possessed hand puppet, used about the first minute’s worth of routine. The play is about “an introverted student in religious small-town Texas who finds a creative outlet and a means of communication through a hand puppet, which turns into his evil or devilish persona.” It’s meant to be a “dark comedy.”

Early in the play, we get a sense of what we’re in for when the boy with the puppet tries to impress a girl by reenacting the “Who’s on First?” routine, between himself and the hand puppet. (The puppet naturally plays the Costello role.) After about a minute of the routine, pretty much verbatim, the girl…

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The Aftermarket Holy Grail: Using Software Copyrights to Control Replacement Parts

Rick is an experienced Nashville intellectual-property litigator and an erstwhile part-time professor at Vanderbilt University Law School whose writing and teaching focuses on copyright issues but whose law practice involves a wide variety of IP-related disputes.

Intellectual Property and Personal Property: Two Great Tastes That Might Not Taste Great Together

When everything runs on software, then everything will be subject to copyright protection, and you might not like the consequences. Let’s take cars, for example. In the old days, if your car needed a new distributor cap, you’d go down the neighborhood auto supply shop, and you would have several different manufacturers competing for your money, which keeps the price for replacement parts low. One of the manufacturers might be “authorized” by the car manufacturer and appropriately branded. And that one might command a somewhat higher price because of that association and the sense that it will somehow work better with your car. That premium is the result of branding—and trademark law—and years of hard work building up the brand.

The Right to Distribute Distributors

Slap a little computer module on the distributor cap, and the car manufacturer has a lot more control over who can manufacture replacement distributor caps. That’s because the computer module requires software, and software is made up of characters, and that makes it a literary work that is subject to copyright protection. It doesn’t matter if the only characters involved are 0 and…

Plug and play! (But where does the software come from?)

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