Intellectual property controversies

Louis Vuitton Wins a $32 Million Trademark Judgment

That’s a pretty big sum for a trademark infringement case, litigated in a federal court in Northern California. What is interesting is it wasn’t levied against some knock off artists directly. Instead, the charge was contributory infringement (kind of like aiding and abetting) against web site hosts that allowed fake L.V. hand bags to be sold via the Web. This ruling will potentially have a big impact in the world of online retail. The case bears some similarity to Napster, which dealt with copyrights and online music exchanges. In the L.V. case, however, it will be much harder in the future for fake goods sellers and their web hosts to escape unnoticed. This is, in sum, a big victory for trademark owners.

The full business wire story is here.

September 2, 2009 by Professor Orozco Categories: Design, Intellectual property controversies, TrademarksTags: brands, controversial trademarks, Design, Intellectual property controversies, law, legal innovation, Trademarks, web Leave a comment

J.D. Salinger Wins Copyright Lawsuit

A federal judge in New York upholds J.D. Salinger’s copyright and issued an injunction to prevent a modified version of “Catcher in the Rye” from being published in the U.S. The New York Times reports the story here.

To learn more about the lawsuit click here.

July 5, 2009July 5, 2009 by Professor Orozco Categories: Copyrights, Intellectual property controversiesTags: artists, authors, copyright, copyright criminals, derivative, Intellectual property controversies, law, license Leave a comment

J.D. Salinger Sues Author of Catcher in the Rye Sequel for Copyright Infringement

J.D. Salinger, author of the classic Catcher in the Rye novel filed a lawsuit in Manhattan alleging that the authors of a sequel to his acclaimed novel have committed copyright infringement. In the complaint, Mr. Salinger alleges that the unauthorized sequel involves an elderly Holden Caulfield who leaves a retirement home to spend a few days in New York City.

Salinger asserts that his copyright to the first work grants him the exclusive right to authorize any derivative works of that prior and seminal work of fiction. The complaint alleges that the new sequel is an unauthorized derivative, and Mr. Salinger requests the court to grant an injunction against its publication, sale and distribution.

Given the nature of Mr. Salinger’s copyright, and if the injunction is granted, many of us will probably never know how phony or lousy that sequel may have really been.

To read the full complaint click here.

June 10, 2009July 5, 2009 by Professor Orozco Categories: Copyrights, Intellectual property controversiesTags: artists, authors, copyright criminals, Copyrights, derivative, fair use, Intellectual property controversies, law, license Leave a comment

Can you copyright a tweet?

With the rise of Twitter it was inevitable that intellectual property issues would surface regarding “tweets” (information snippets under 140 characters in length).

Some are concerned that copyright might stifle the ability to reproduce tweets for collaborative projects. Twitter itself states, “We claim no intellectual property rights over the material you provide. Your profile and materials uploaded remain yours.”

So the website tweetCC has decided to take action, and create a list of Tweetsters who have agreed to license their tweets under open terms, using the creative commons license.

Here is the result of my own search:

May 29, 2009 by Professor Orozco Categories: Copyrights, Intellectual property controversies, Legal resources, Public domainTags: artists, authors, copyright, copyright criminals, creative commons, Intellectual property controversies, law 2.0, license, web Leave a comment

Lecture in Munich

Next week I’ll visit Munich, labeled as one of most beautiful cities in Europe to present a paper and lecture at the Max Planck’s Munich Intellectual Property Law Center (MIPLC).

The subject of the talk is patent advocacy before the U.S. Supreme Court. My co-author James Conley and I have measured the patent advocacy of various types of firms when they file briefs before the highest court of the land. In the past few years, the Supreme Court has taken a more active role in shaping patent laws and policy. This is in contrast to Congress, which has largely stalled in the area of patent reform.

What are some of the key issues facing patent reform today?

First, there is the issue of first-to-invent vs. first-to-file. The U.S. is one of the few countries that follows the first-to-invent rule. In most other countries, whoever wins the race to the patent office gets the patent (first-to-file rule). According to one senior Patent Office official I spoke with recently, there is a strong chance we might adopt the first-to-file rule. Some believe this would favor large companies over the small inventor.

Another major issue is damages. Patent infringement damages, particularly if the infringement is found to have been willful, can be extremely high. Some advocates, particularly the larger companies, want to limit damages.

Some of the theses issues have been recently addressed by the Supreme Court, the topic of our research.

May 13, 2009May 13, 2009 by Professor Orozco Categories: PatentsTags: innovation, Intellectual property controversies, inventors, law, research Leave a comment

Starwood Hotels Alleges Trade Secret Theft

Starwood Hotels, owners of the W Hotel brand of boutique hotels, filed a lawsuit against Hilton Hotels and several former Starwood executives hired by Hilton. The lawsuit alleges trade secret infringement.

The complaint alleges that Hilton lured key W Hotel executives and that these individuals misappropriated W Hotel trade secrets to help Hilton with the launch of its Denizen brand of boutique hotels. The trade secrets listed in the complaint include:

Proprietary marketing and demographic studies that cost more than $1,000,000 to develop.
Training and operational materials.
The names of designers, property owners and developers.
Guidelines for how to create the “Ultimate W Experience’ in converted properties.
A dining concept called a “restro-lounge” designed to optimize food and beverage services in the W Hotel lobby-bar areas.

This is just another example of how far-reaching intellectual property has become. As brands become more important and as innovation touches on customer experiences created by companies, the intellectual efforts used create these assets will increase in strategic importance. This kind of competitive knowledge is safeguarded by contracts called confidentiality agreements. Starwood Hotels required its executives to sign them, and this may be an important factor in this trade secret fight.

To read the entire complaint filed in District Court of New York, click here: starwood20complaint

April 19, 2009September 11, 2009 by Professor Orozco Categories: Design, Intellectual property controversies, Trade SecretsTags: brands, Design, Intellectual property controversies Leave a comment

Blogger Sues Goldman Sachs For Domain Rights

It would be an understatement to say that Michael Morgan dislikes Goldman Sachs. Mr. Morgan expresses his vitriol against the large investment bank in not-so-subtle terms. Mr. Morgan writes on his blog: “Yes, I am short Goldman Sachs stock. I believe this company is evil and should not exist. We need to begin to break up companies that have as much control over world finances as Goldman Sachs.”

His explicit contempt, however, is not what drew the ire of Goldman Sachs and its attorneys. Instead, it’s the domain name that Mr. Morgan reserved to express his views. The domain name for Mr. Morgan’s blog is goldmansachs666.com. As Mr. Morgan writes, his blog’s purpose is to serve as “an open forum for facts and discussion about what part Goldman Sachs and their executives played in the current Global Economic Crisis.“

On April 8, 2009 Goldman Sachs’ attorneys fired-off a cease and desist letter to Mr. Morgan. The letter states “your use of the mark Goldman Sachs violates several of Goldman Sachs’ intellectual property rights, constitutes an act of trademark infringement, unfair competition and implies a relationship and misrepresents commercial activity and/or an affiliation between you and Goldman Sachs which does not exist and additionally creates confusion in the marketplace.”

Mr. Morgan had several options at that point. He could have ceased using the domain name as requested by the letter. He could have ignored it and risked further legal actions. Or, sue Goldman Sachs and petition a court to uphold his use of the domain name as a legal use, and not a trademark infringement as claimed by Goldman Sachs. Mr. Morgan chose this last option, and has filed a complaint in the United States District Court – South Florida. Click here to read the complaint.

April 17, 2009 by Professor Orozco Categories: Intellectual property controversies, TrademarksTags: authors, brands, controversial trademarks, domain name, fair use, Intellectual property controversies, license, Trademarks Leave a comment

Liquidators Buy Bankrupt Brands For $175 Million

The New York Times has a great story on entrepreneurial companies that have purchased bankrupt company brands. Among them: Sharper Image, Linens ’n Things and Bombay.The price for these three trademark rights is estimated at $175 million.

April 16, 2009 by Professor Orozco Categories: Entrepreneurship, Intellectual property controversies, TrademarksTags: brands, controversial trademarks, entrepreneurs, Intellectual property controversies, Trademarks 1 Comment

Borrowing Blue

Smart marketing. That is what comes to mind when I think about what China Glaze has done with the branding behind its For Audrey nail polish. Take a look at the product.

Did you notice the clever associations the nail polish company created by relating the product to the blue color associated with an iconic jewelry store? Or the movie with that store’s name?

On its Web site, China Glaze calls this product a “Tiffany inspired turquoise creme nail lacquer”. But the word “Tiffany” does not appear anywhere on the nail polish bottles or the store displays.

Why is this all so clever? Because the color conjures up images of exclusivity, allure, romance and also a bit of decadence. How did this come about? There is actually a trademark tale behind it all. Tiffany & Co. owns the trademark exclusive rights to use the color robin’s egg blue for boxes, shopping bags, packaging and catalogs in various markets, including fragrances, tableware and crystal. The famous luxury retailer has done a magnificent job of managing this exclusive trademark color in the market for high-end luxury items.

Has China Glaze infringed the color trademark owned by Tiffany & Co.? Not likely since their nail lacquer is not included in the above categories.

April 9, 2009April 9, 2009 by Professor Orozco Categories: Design, Intellectual property controversies, TrademarksTags: brands, controversial trademarks, Design, Intellectual property controversies, Trademarks Leave a comment

Will Google Shut Down Copycat Site?

A student in my Entrepreneurship class recently made me aware of the site: “Let me Google that for you” .com (LMGTFY).

As the name of LMGTFY implies, the site shows you how to search Google if you follow the simple steps listed on the site. I showed the website in class, and one student immediately thought it was a joke. “That’s not so unique” was one comment. “Why not get rid of the middleman and go straight to Google?” another student asked.

As it turns out, the website is dedicated “to all those people that find it more convenient to bother you with their question rather than google it for themselves.” So, if you receive an annoying question, rather than ignore the person or say something nasty, you can send them to LMGTFY and hope they get the message not to bother you again.

The website raises some intellectual property issues, however. I asked the class if they would be willing to invest in this company. The site apparently is trying to raise advertising revenues and claims to have a “steady stream of traffic made up primarily of affluent 30-somethings.” They also claim to have received 1.25 million visitors in February. One student said he would not invest because Google would be able to “shut them down fairly quickly”.

Under what grounds? First, there is the possible trademark issue since the Google trademark and logo are used on the site. Also, the Google website is secured under copyright.

April 3, 2009April 3, 2009 by Professor Orozco Categories: Copyrights, Intellectual property controversies, TrademarksTags: brands, controversial trademarks, copyright, Copyrights, derivative, entrepreneurs, fair use, google, innovation, Intellectual property controversies, law, Trademarks Leave a comment