Intellectual Property

Minimizing Legal Risks When Using the Word ‘Organic’
July 27, 2017 | Nancy A. Del Pizzo
Nancy Del Pizzo’s article, “Minimizing Legal Risks When Using the Word ‘Organic’,” appeared in the July/August issue of Nutrition Industry Executive. The article details the U.S. Department of Agriculture’s requirements for the use of the word “organic” as well as what is considered false and misleading advertising for organic products. To read the article, click …
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SCOTUS: Provision Barring Registration of Disparaging Trademarks Unconstitutional
June 19, 2017 | Michael C. Cannata | Frank M. Misiti
It has been a long road for Simon Tam and his bandmates in the rock group “The Slants.”  Back in November 2011, Tam filed a trademark application for THE SLANTS for use in connection with “entertainment in the nature of live performances by a musical band.”  In doing so, Tam hoped to reclaim the otherwise …
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Del Pizzo Published in Westlaw Journal
May 23, 2017
Nancy A. Del Pizzo published her article, “Using Open Source Code for Development of ‘Proprietary’ Software,” in the May 10, 2017, issue of Westlaw Journal, Intellectual Property, Litigation News and Analysis. To read the article, Click Here. …
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The Eagles Refuse to Take It Easy on Alleged Infringer
May 17, 2017
Like The Dude from The Big Lebowski, the “Hotel California,” located on the Baja Peninsula in Mexico, is likely no longer a fan of The Eagles.  Earlier this month, the iconic classic rock band filed suit against the hotel in the U.S. District Court for the Central District of California seeking to take it to …
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PacerMonitor quotes Cannata
April 14, 2017
Michael Cannata was interviewed for an article entitled, “Patent Trolls’ East Texas Haven Threatened in Supreme Court,” which discusses the TC Heartland v. Kraft Foods case before the U.S. Supreme Court. The case raises the question of whether it is appropriate to resolve a patent infringement claim in Marshall, Texas, if a defendant does not maintain …
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Del Pizzo Quoted in Westlaw
April 13, 2017
Nancy Del Pizzo provided the following comment in an article published in Westlaw’s Journal of Intellectual Property regarding Mavrix Photographs LLC v. LiveJournal Inc.: “This decision should put social media companies on notice to, at the very least, closely follow this case on remand and educate its ‘moderators’ on the DMCA, particularly its ‘red flag’ exception.” …
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Starbucks Hits the Bong Designer In the Wallet
December 5, 2016
The U.S. District Court for the Central District of California recently granted Starbucks’ motion for a default judgment against James Landgraf, an individual responsible for the design and sale of glass bongs, clothing, and other novelties that infringed certain logos owned by Starbucks. Starbucks Corp. v. Glass, 2016 U.S. Dist. LEXIS 145694 (C.D. Cal. Oct. …
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Emerging Case Law Exposes ‘Bot’ Makers To DMCA Absent Copyright Infringement
October 19, 2016
Nancy Del Pizzo has written an article for Westlaw Journal of Intellectual Property entitled, “Emerging Case Law Exposes ‘Bot’ Makers To DMCA Absent Copyright Information,” Click here to read the article. …
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Sixth Circuit’s Decision on Privacy Claims Over Data Breaches
October 18, 2016
Data breaches such as the one Yahoo recently revealed (500 million accounts!) get the big headlines. In response, large companies double down on their efforts to protect the security of their data. But small to midsize businesses often fail to appreciate the risk of a data breach to their own business. They may believe that …
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Court Rejects Insured’s Attempt To “Shoe-Horn” Trademark Infringement Claims Under Advertising Injury Provisions
October 13, 2016
The U.S. District Court for the Central District of California recently rejected efforts by an insured to procure coverage for allegations of trademark infringement under its “Personal and Advertising Injury” insurance coverage.  Infinity Micro Computer, Inc., et al. v. Continental Casualty Company, et al., 2016 U.S. Dist. LEXIS 134957 (C.D. Cal. Sept. 29, 2016). In …
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Cybersecurity Rulings Tap Insurance and Standing Issues
August 25, 2016
Nancy Del Pizzo and Gene Kang have published an article entitled, “Cybersecurity Rulings Tap Insurance and Standing Issues,” in the American Bar Association’s Section of Litigation, Intellectual Property, Practice Points section. To read the article, Click Here. …
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Recent Decisions by the Trademark Trial and Appeal Board
August 17, 2016
Mark Fails To Satisfy Lawful Use Requirement The Trademark Trial and Appeal Board (“the Board”) affirmed the refusal to register HERBAL ACCESS on the grounds that the mark was not used in lawful commerce.  The Board started its analysis with the principle that to qualify for federal trademark protection, the mark must be lawfully used …
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Infringement of Adult Images Ex(xx)ed Out of Coverage
July 19, 2016
The U.S. District Court for the Western District of Texas recently rejected an attempt by two online content providers to secure coverage in connection with a copyright infringement action commenced against them by an adult entertainment company.[1] Perfect 10, Inc. (“Perfect 10”) filed an action against Giganews, Inc. (“Giganews”) and Livewire Services, Inc. (“Livewire”) for …
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FTC Issues Privacy Tool, Guidance for Health-Related Mobile Apps
June 21, 2016
Only days after the Federal Communications Commission (FCC) adopted a notice of proposed rulemaking to establish privacy guidelines applicable to Internet service providers (ISPs),1 the Federal Trade Commission (FTC) took two actions on the privacy front that will affect a smaller, but fast growing, industry: developers of mobile health applications. Given the pervasive use of …
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Cannata and Misiti issue Bulletin entitled, “No Coverage For The Sale Of Counterfeit Goods”
June 6, 2016
Businesses that peddle counterfeit goods beware.  According to a recent decision by the Second Circuit, the advertising injury provisions of a standard general liability policy do not obligate an insurer to indemnify its insured for damages resulting from the insured’s sale of counterfeit goods.  Given that the MSRP for all goods seized by the Department …
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Recent Decisions by the Trademark Trial and Appeal Board
May 26, 2016
Board Requires Disclosure Of Unredacted Documents The Board granted a motion by Intex Recreation Corp. and Intex Marketing Ltd. (“Intex”) to compel The Coleman Company, Inc. (“Coleman”) to produce unredacted versions of certain documents.  Coleman claimed that the redacted information was either irrelevant or confidential.  Intex argued in response that relevance is not an appropriate …
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FCC Proposed Rules That Impact Everyone’s Online Privacy
April 19, 2016
“Broadband Internet access service” (BIAS) is the essential conduit for the conduct of our daily personal and private lives, without which all Internet activity comes to a stop. Indeed, the Federal Communications Commission recently referred to BIAS as “the most significant communications technology of today.”1 Nevertheless, because BIAS is the road on which Internet traffic …
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Recent Decisions by the Trademark Trial and Appeal Board
March 1, 2016
Board Rejects Request For Reconsideration By Order dated July 13, 2015, the Board denied a motion to dismiss filed by Knowluxe LLC (“Knowluxe”) seeking dismissal of a petition for cancellation on the grounds that the claims were implausible and that the rights asserted by Guess? IP Holder L.P. (“Guess”) conflicted with the: (1) doctrine of …
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The EU-U.S. Data Protection Dispute and Possible Resolution
February 18, 2016
Early in February, the European Commission and the U.S. government agreed on a new framework for transatlantic data flows, which they are referring to as the “EU-U.S. Privacy Shield.” Lawyers advising clients with an online presence (i.e., almost all lawyers and almost all clients) typically have had little reason to be concerned about the agreement, …
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Cannata Published in the NYIPLA Bulletin
February 9, 2016
Michael Cannata’s column was published in the New York Intellectual Property Law’s December 2015/January 2016 issue of “The Report.”  Michael’s column is entitled, “Notable Trademark Trial and Appeal Board Decisions.” Complete summaries of the decisions can be found here.   …
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Recent Decisions by the Trademark Trial and Appeal Board
January 8, 2016
Board Dismisses Section 2(a) Challenge to MARATHON MONDAY Application The Board dismissed an opposition filed by the Boston Athletic Association (“BAA”) to an application filed by Velocity, LLC (“Velocity”) seeking registration of MARATHON MONDAY in connection with “clothing, namely, tops, bottoms, headwear, sweatshirts, sweat pants, jackets, pullovers, caps, hats, socks.” BAA alleged that the mark …
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Standing to Assert Claims for Online Privacy Breaches
December 15, 2015
Many believe that we are on the precipice of a deluge of litigation—both individual and multiparty/class action—concerning how an individual’s data is handled and the remedy, if any, if that data is misused or wrongfully disclosed. A case recently argued before the U.S. Supreme Court involves the intersection of the Internet and privacy laws and …
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Recent Decisions by the Trademark Trial and Appeal Board
October 23, 2015
Michael C. Cannata has issued an Intellectual Property Law Bulletin. We hope you find the Bulletin useful and interesting. We invite your suggestions. The Bulletin is not legal advice. Recent Decisions by the Trademark Trial and Appeal Board …
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Court Overturns ‘Threat’ Conviction, But Leaves Mens Rea Standard Unclear
June 16, 2015
The U.S. Supreme Court has ventured into the world of violent online speech. On June 1, in Elonis v. United States,1 the court overturned a defendant’s criminal conviction for communicating threats on Facebook. The court ruled that a mens rea standard of negligence was insufficient to allow the conviction to stand, but it did not …
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New Jersey Legislators Seek to Expand Data Breach Notification
February 27, 2015
New Jersey legislators advanced a bill to expand notification requirements in the event of a data breach affecting New Jersey residents. The bill, Assembly No. 3146, passed on December 15, 2014, by a vote of 75–0 and was referred to the Senate Commerce Committee where it has not yet been addressed. The Assembly bill seeks …
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Tech Tools Are Increasingly Used to Disseminate Notice
February 17, 2015
Federal Rule of Civil Procedure 23 requires two forms of class notice. Rule 23(c)(2) requires notice to a potential class member that a class has been certified and substance of the class claims. Rule 23(e) requires notice that a settlement has been negotiated, which will require court approval, and the steps that each potential class …
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Craft a Stronger Defense by Distinguishing Parody from Satire
December 31, 2014
“Parody” is a technique used by artists in various forms of entertainment, from comedians to radio disc jockeys to authors. “Parody,” in the copyright sense, generally involves using someone else’s copyright-protected work and results in copyright infringement, absent a license for the use. In some cases, however, an infringer can successfully claim “fair use” as …
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Court of Appeals Rejects Claim of Internet-Based Jurisdiction
December 16, 2014
Long-arm jurisdiction over non-domiciliaries is an issue that continues to  bedevil practitioners and litigants in the Internet age. In New York, CPLR  302(a)(1)1 authorizes jurisdiction over a non-domiciliary that  “transacts any business” within the state. The test, however, can be difficult  to apply when a commercial entity uses technology to project itself into New  York …
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Circuit’s Decision Clarifies Law Of Contributory Cybersquatting
October 28, 2014
Nearly 15 years ago, Congress passed the Anticybersquatting Consumer Protection Act (“ACPA”).[1] The ACPA amended the federal trademark law known as the Lanham Act by adding two new causes of action aimed at cybersquatting.[2] Under the ACPA, a person may be civilly liable “if … that person has a bad faith intent to profit from …
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I Like the Nightlife Baby!
September 30, 2014
In its recent decision, Cutino v. Nightlife Media, Inc., 2014 U.S. App. Lexis 15179 (Fed. Cir. Aug. 7, 2014) (“Nightlife Media”), the Federal Circuit underscored its preference for adjudicating, on the merits, trademark opposition proceedings.  The court directed the Trademark Trial and Appeal Board (“TTAB”) to consider whether one of three federal trademark registrations, owned …
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Court Addresses Bitcoin, Other Novel Online Technology Issues
August 19, 2014
Online technology, as this column frequently has noted, presents numerous challenges to attorneys during litigation,[1] while managing their firms and marketing their services,[2] and in trying to keep up with the newest legal developments and rulings.[3]  A recent decision in a case of first impression by Judge Katherine B. Forrest of the U.S. District Court …
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Trademark Trial and Appeal Board Cancels Six Trademark Registrations Owned by the Washington Redskins*
June 24, 2014
On June 18, 2014, the United States Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) issued a blockbuster 2 to 1 decision cancelling six federal trademark registrations owned by the Washington Redskins.  All six registrations feature some variation of the term “REDSKINS” used in connection with professional football services.  The decision was issued …
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Website Terms of Use: Recent New York Rulings
June 17, 2014
On a nearly daily basis, each of us is asked or asks others to agree to be bound by “terms of use” or “terms of service” (TOS) as a condition of using an Internet website or obtaining goods or services offered through a website. Whether or not TOS are enforceable continues to be a question …
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First Amendment Protects Search Engine Results
April 15, 2014
In an ironic twist, China’s largest search engine, Baidu, has successfully argued that it was entitled to First Amendment protection in regard to its search engine results in the United States, which excluded statements by the plaintiffs, a group of New York residents who “advocated” for “the Democracy movement in China.”   In a question of …
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Defamation Claims Come of Age on the Internet
February 18, 2014
All of the elements necessary for defamation claims seem to have coalesced on the Internet. There is the ease of posting content, including videos, on blogs and chat sites; the ubiquity of tweets, email, blogs and text messages; the pervasive abandonment of personal privacy; and the ability for almost anyone to quickly set up a …
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You Should Trademark That!
January 1, 2014
Not so fast. With the emergence of online companies advertising discounted trademark registration services, one could easily be misled into believing that securing a trademark registration has been relegated to nothing more than a ministerial act; that with the insouciant wave of the hand, a trademark registration will instantaneously appear at your door step. Nothing …
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You Should Trademark That!
December 31, 2013
Not so fast.  With the emergence of online companies advertising discounted trademark registration services, one could easily be misled into believing that securing a trademark registration has been relegated to nothing more than a ministerial act; that with the insouciant wave of the hand, a trademark registration will instantaneously appear at your door step.   Nothing …
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Accessing Email Evidence on Company Computers
December 17, 2013
Work-related email accounts are ubiquitous and often are used by employees for personal reasons. Employees also may use their own personal email accounts on employer provided resources ? with or without the permission of the employer.  Many cases have considered the right of an employer to access an employee’s email accounts from the employee’s work …
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The Role of the Internet in the Conduct of Litigation
October 15, 2013
Much has been written (in this column and elsewhere) regarding lawyers’ adoption of social media and other Internet enabled applications for such diverse purposes as discovery, advertising, client communication,  research and the like.  Indeed, due to the proliferation of portable devices, including laptops, smartphones and tablets, whether in their offices or not, lawyers now rely …
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Email Can Constitute Binding Enforceable Stipulation of Settlement
August 20, 2013
Plus ça change, plus c’est la même chose.[1] It is a lesson that lawyers should take to heart when incorporating technology in their every day best practices.  Technology may have changed the speed, immediacy, and even the formality of communication, but the effect of the communication will be determined by its content as interpreted by …
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When Judges ‘Friend’ Lawyers: Must Recusal Necessarily Follow?
June 18, 2013
It should be no surprise that the continuing growth of social media tools such as Facebook, Twitter, and LinkedIn has led to questions about its use by members of the legal community, including members of the judiciary. In fact, New York’s Advisory Committee on Judicial Ethics[1] has just issued another opinion[2] exploring the ethical constraints …
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Courts Divide Over Intellectual Property Licensee’s Rights When Bankrupt Licensor Rejects License
April 30, 2013
Celeste M. Butera, a partner in the firm’s Insurance Coverage & Litigation and Intellectual Property Practice Groups and Stuart I. Gordon and Matthew V. Spero, members of the firm’s Corporate & Commercial Practice Group, co-authored, “Court’s Divide Over Intellectual Property Licensee’s Rights When Bankrupt Licensor Rejects License,” which appeared in the April/May 2013 issue of Pratts …
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Online Retailers Lose Challenge to New York’s Sales Tax
April 16, 2013
In a case that has far-reaching ramifications because of the exponential expansion of cyberspace in general, and because of the growth of commerce over the Internet in particular, the New York Court of Appeals has rejected challenges by two major online retailers to New York’s “Internet tax,”[1] which requires collection of a sales tax on …
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Courts Divide Over Intellectual Property Licensee’s Rights When Bankrupt Licensor Rejects License
April 1, 2013
Suppose that a company licenses a trademark ? or some other form of intellectual property ? from a company that owns a trademark (the “licensor”), the licensor files for bankruptcy protection, and the bankruptcy trustee exercises its rights under the Bankruptcy Code to “reject” (i.e., breach) the trademark license. What are the licensee’s rights and …
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Optics Maker Burnt In Magnifying Glass IP Row Against Rival
March 25, 2013
Please click the link below to view Optics Maker Burnt In Magnifying Glass IP Row Against Rival. Adobe Reader is required to view the bulletin. If Adobe Reader is not installed on your PC, click here to download and install. Optics Maker Burnt In Magnifying Glass IP Row Against Rival Reprinted with permission from Law360.  …
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Court Clarifies Copyright Issues of Online Photo Posting
February 19, 2013
Various social media tools, from TwitPic and Instagram to Flickr and Pheed, enable ? indeed, encourage ? users to post their photos online.[1]  Posting a “real time” image from the Mideast, a political event, the Super Bowl, or a snowstorm can be informative and even exhilarating for both the poster and the viewer.  However, there …
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Courts Confront the Question of Service by Facebook
December 18, 2012
Under New York law, service of process may be effected by: (1) personal service; (2) delivery to “a person of suitable age and discretion at the actual place of business, dwelling place or usual place of abode of the person to be served” and mail; (3) service on an agent; or (4) so-called “nail and …
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Ethical Issues Arise in Lawyer’s Use of Social Media
October 16, 2012
As with most of the population, the use of social media by lawyers in the conduct and marketing of their legal practices has been “trending” up.[1]  Although well-established ethical rules apply, some social media activity may introduce new twists to the rules’ interpretation or raise issues that a lawyer may not have considered before posting …
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ABA Approves Changes to Technology-Related Ethics
August 14, 2012
The headline could read “ABA drags lawyers, kicking and screaming, into the 21st Century,” but that would not tell the whole story. In reality, for the past decade or more, lawyers have increasingly relied on technology to practice law, but that reliance has grown so incrementally that its potential impact on ethical responsibilities may not …
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A Landscape View of Privacy Protection Issues
June 30, 2012
Please click the link below to view “A Landscape View of Privacy Issues.” Adobe Reader is required to view the bulletin. If Adobe Reader is not installed on your PC, click here to download and install. A Landscape View of Privacy Issues Reprinted with permission.  All rights reserved. …
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