Intellectual property (IP) is a valuable asset, not only for the producers and creator of this intangible property, but also for the overall economy that benefits from the innovation and creativity this property represents.  However, the value of intellectual property is greatly reduced when unauthorized users are allowed to exploit this property through counterfeiting, piracy and other illegal activities. Enforcing IP rights in a global economy requires a coordinated effort among a variety of governmental agencies.  The federal government recently announced a plan to improve those efforts.

The 2010 Joint Strategic Plan on Intellectual Property Enforcement (JSPIPE), a 65-page document, was issued in June 2010 by Office of the Intellectual Property Enforcement Coordinator (IPEC).  The JSPIPE coordinates the efforts of eight government agencies: the Departments of Agriculture, Commerce, Homeland Security, Justice and State; as well as the Food and Drug Administration, United States Trade Representative and the Copyright Office.  A total of 33 Enforcement Strategy Action items are organized into six categories: (1) Leading By Example; (2) Increasing Transparency; (3) Ensuring Efficiency and Coordination; (4) Enforcing Our Rights internationally; (5) Security Our Supply Chain; and (6) Building a Data-Driven Government.

Click here to read the entire document.

Trademarks create an association in the minds of consumers between specific goods and the source of those goods.  Because of this, it’s important for trademark owners to police their marks for misuse by competitors who would profit from the goodwill created by the owner.  A common way of enforcing one’s trademark rights is through the cease and desist letter.  But some uses, such as parody, may be a defense to infringement and actually decrease the likelihood of confusion.  When the trademark owner ignores this difference and proceeds with a cease and desist letter, the result can be both humorous and embarrassing.

Such was the case with a recent dispute between the National Pork Board and Geeknet, Inc., an online store specializing in novelty items. On April 1, 2010, Geeknet began offering “Radiant Farms Unicorn Meat” for sales on its website www.thinkgeek.com, using the slogan, “Unicorn – the new white meat.”  A little over a month later, ThinkGeek received a 12-page cease and desist letter on behalf of the National Pork Board, owner of the internationally registered trademark “The Other White Meat”. In a tongue-in-cheek response in keeping with the April Fool’s Day spoof, Scott Kauffman, President and CEO of Geeknet, issued a public apology to the National Pork Board, stating, “It was never our intention to cause a national crisis and misguide American citizens regarding the differences between the pig and the unicorn.  In fact, ThinkGeek’s canned unicorn meat is sparkly, a bit red, and not approved by any government entity.”

According to U.S. Trademark Manual of Examining Procedure (TMEP), parody per se is not a defense to a claim of likelihood of confusion, but there are confusing and non-confusing parodies.  A true parody actually decreases the likelihood of confusion by creating a distinction in the consumer’s mind between the actual product and the joke.  Unlike a parody mark used on the same goods sold in the same channels of trade (see our earlier blog post, Trademarks & Parodies: The North Face versus The South Butt) the fact that unicorns are mythical creatures makes it less likely that anyone would confuse ThinkGeek’s non-edible novelty item with the edible meat promoted by the National Pork Board.

Parody marks can often be used as an effective way to capitalize on the goodwill in someone else’s trademark. But like the famous quote about cigars attributed to Sigmund Freud, sometimes a parody is just a parody.

The Third Circuit Court of Appeals recently heard arguments regarding a district court decision in a trade secrets case between Bimbo Bakeries USA, Inc. (maker of Thomas’ English Muffins) and its former executive, Chris Botticella.  Many in the popular media dubbed this the “nooks and crannies” case, a reference to the unique texture of the muffin, to which Botticella had access.  In reality, the case involves a much broader spectrum of trade secrets, as well as the enforcement of a confidentiality agreement and the use of computer forensics to detect possible violations of that agreement.

Until January of 2010, Chris Botticella was Bimbo’s Vice President of Operations for California.  In this capacity, he was one of less than 12 people at Bimbo with access to a variety of confidential and proprietary information, such as product formulas and process parameters, which were stored on a secure website.  Among these trade secrets were the three components (formula, manufacturing, engineering design, and process parameters) that give Thomas’ English Muffins their celebrated texture.  With annual sales of about $500 million, the muffins have been a vitally important item in Bimbo’s product line.  In order to keep these trade secrets from its competitors, Bimbo compartmentalized this information so that only seven people (among them Botticella) had access to all three components.

But Botticella was also knowledgeable about other sensitive aspects of Bimbo’s business operations.  As a company vice president, he was one of only five people with access to Bimbo’s highly confidential cost-reduction strategy for the Western region.  This strategy included information about lines and plants to be closed, new processes to be implemented, new products to be launched, and formulas to be optimized.

In March of 2009, Botticella entered into a confidential agreement with Bimbo as a condition of employment.  Less than seven months later, in September of that year, he received a job offer from Interstate Brands Corporation, the predecessor to Hostess Brands, Inc., one of Bimbo’s three major competitors.  In October 2009, Botticella accepted the position with Hostess, and in December he signed an “Acknowledgement and Representation Form,” stating that Hostess was not interested in Bimbo’s trade secrets, nor would Botticella disclose such secrets to his new employer.

Botticella was to resign from Bimbo on January 15, 2010, but it was not until January 4, 2010 that he informed Bimbo of this intention, and not until about 10:00 a.m. on January 13 that he let Bimbo know that he was going to work at Hostess.  He was then told to stop all work and leave that same day.  But according to the testimony of a computer forensics expert, at 10:12 a.m. on January 15, Botticella accessed 12 company documents on his laptop computer (including highly confidential Bimbo documents), all in the course of 13 seconds.  Computer forensics also revealed that three external storage devices had been attached to the laptop, only two of which have been accounted for.  When questioned about this in deposition, Botticella testified that he attached the USB flash drives to the computer as “practice” in order to improve his computer skills for his job at Hostess.

On February 9, 2010, the court entered a preliminary injunction barring Botticella from starting his employment at Hostess and from divulging any of Bimbo’s trade secrets to anyone.  He was also ordered to return all of Bimbo’s confidential information in his possession back to his former employer.  This injunction was to remain in effect until after the trial, which was scheduled for April 12.  But by filing an appeal, Botticcella actually prolonged his unemployment until at least after the court of appeals enters its decision.

It remains to be seen how this case will be decided, but one thing is certain: it’s not just about English muffins.

Your privacy settings on Facebook or My Space may determine when a third-party can subpoena electronic communications from your Facebook or My Space page.  In the copyright infringement case, Crispin v. Christian Audigier, Inc. et. al., the defendants served subpoenas on a number of third-party entitites, to include the social networking providers Facebook and MySpace, Inc., seeking basic subscriber information and communicaitons relating to the case.

Read the opinion here.

We often wonder how private, “private” really is.  Here “private” apparently does matter.  The privacy settings in the case will determine the extent to which Facebook and My Space comments are accessible to the other party in litigation and can be obtained by subpoena.

Liz Claiborne, Inc. learned a costly lesson recently:  when going after a smaller company for trademark infringement, it’s not the “lucky” party that wins, but the one with the facts and the law on its side.

In July 2005, Liz Claiborne and its subsidiary Lucky Brands Dungarees, Inc. (“Claiborne”) sued a smaller company, Marcel Fashion Group, Inc. (“Marcel”) for trademark infringement, trademark dilution and unfair competition surrounding Marcel’s use of the trademark GET LUCKY, which Claiborne alleged infringed upon a number of federally registered trademarks owned by Claiborne and its subsidiary that contained the word “Lucky”.

Marcel countered in September 2005, claiming that by continously using the GET LUCKY mark since 1985, it, and not Claiborne, was the senior user of the mark.  Marcel also filed six counterclaims against Claiborne, to include breach of a May 2003 settlement agreement.  After nearly five years of litigation, the court awarded nothing to Claiborne and $20,000 in compensatory damages to Marcel.  And in an unusual ruling in trademark infringement cases, the court ordered Claiborne, the plaintiff, to pay an additional $280,000 in punitive damages to Marcel.

Trademark litigation can be an effective way to enjoin other companies from profiting off the good will that a trademark owner has built up in a mark.  But to succeed, there has to be more than mere “luck” on the plaintiff’s side.

Click here to register!

In an earlier post entitled “J.D. Salinger, The Catcher in the Rye & Intellectual Property Rights”, we discussed a pending case (Salinger v. Colting) in which a U.S. district court granted the estate of J.D. Salinger a preliminary injunction against Swedish author Fredrik Colting, his publishers and distributors concerning the book 60 Years Later: Coming Through the Rye. In a recent decision concerning this case, the Second Circuit Court of Appeals ruled that the district court used the wrong standard for granting the preliminary injunction, vacating the order and remanding the case back to the district court.

The court of appeals said that the correct standard for a preliminary injunction in a copyright infringement case is the four-factor test outlined in the Supreme Court decision eBay, Inc. v. MercExchange, L.L.C. The four factors are: (1) the plaintiff suffered an irreparable injury; (2) remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) the public interest would not be disserved by a permanent injunction.

This ruling is significant, because it may mark the first time in a reported case that the so-called eBay factors are being applied to a preliminary injunction in a copyright infringement dispute.  The eBay case involved a permanent injunction in a patent dispute.  However, the decision did nothing to immediately change the situation for the defendants. The preliminary injunction (which barred Colting, his publishers and distributors from advertising, publishing or distributing Colting’s book) will stay in place for ten days following the issuance of the mandate. This will give the estate of J.D. Salinger the opportunity to apply for a temporary restraining order pending the rehearing of the motion for a preliminary injunction.

We were disappointed to see Amarillo’s own Lacey Brown leave American Idol but a Top 12 finish is still an incredible accomplishment!  We know this is just the beginning for Lacey.  Her talent is going to take her very far!

There is a nice article about Lacey in the April 2010 issue of Accent West.

A trademark can be anything that serves as a “source identifier,” that is, a device that makes an association in the consumer’s mind between certain goods or services and the source of those goods or services. When a shopper sees a box marked with the word, “CHEERIOS®,” it’s taken for granted that the box will contain O-shaped cereal of a known taste and quality made by General Mills. Likewise, when customers see the golden arches outside a fast food restaurant, they assume that they can walk inside and order a Big Mac®, and that burger will taste the same no matter where the restaurant is located. But words and logos aren’t the only source identifiers; sounds, colors, smells – and artwork – can all serve as trademarks for goods (or service marks for services). Artwork can be protected from unauthorized reproduction through copyright law, but when someone uses another’s artwork to create a false association regarding the source of goods or services, trademark law can protect the owner of the “artwork mark.”

Regina Pizzeria has been serving pizza lovers since its first restaurant opened in Boston’s North End in 1926. Expanding to other locations throughout Massachusetts and New Hampshire, Regina Pizzeria began to be more and more associated with the red T-shaped sign that originally hung in front of the North End restaurant. A painting of the North End street scene around the pizzeria displaying the sign has also been used in Regina Pizzeria marketing materials. As such, that artwork depicting the restaurant and its unique signage has served as a service mark.

But in 2009, another local pizzeria decided to capitalize on the good will Regina had established in its artwork mark. Capone’s Pizzeria and Prohibition Pub, with restaurants in nearby Pembroke and Weymouth, Massachusetts, began using artwork on their advertising and take-out menus that is alleged to be confusingly similar to the artwork that Regina used by merely replacing the word “Regina” with the word “Capone’s” on the sign in the picture. On the left is the Regina artwork; on the right is the artwork used by Capone’s:

Regina sent a cease and desist letter to Capone’s on December 7, 2009, and when Capone’s refused to comply, on February 9, 2010, Boston Restaurant Associates, Inc. (the corporate owner of Regina Pizzeria) filed suit against Gambino’s Restaurant, Inc. (the corporate owner of Capone’s) in federal court for infringement of the T-sign and artwork service marks (under both federal statutes and Massachusetts common law) and for unfair and deceptive trade practices (under Massachusetts statute).

From the moment a businessman hangs a sign outside of his establishment or uses other service marks in advertising or trademarks on the goods he sells, the public begins creating an association between the marks and the quality of the goods and services offered inside. Because it can take years to build up a good reputation, that association needs to be protected from others who would misappropriate it for their own benefit.

Ever since the first Harry Potter novel was released in 1997, readers all over the world have delighted in the fantastic adventures of Harry and his classmates at the Hogwarts School of Witchcraft and Wizadry.  But when J.K. Rowling wrote the fourth book in the series, Harry Potter and the Goblet of Fire, was she drawing from her own imagination or from a novel written years before Harry Potter was even conceived?  According to the family of Adrian Jacobs, author of the 1987 novel entitled, The Adventures of Willy Wizard No 2: Livid Land, Ms Rowling plagiarized the late Mr. Jacobs.

The estate of Adrian Jacobs (who died in 1997) first sued Rowling’s publisher, Bloomsbury Publishing, in June of 2009, before joining Ms. Rowling as a defendant in February of 2010.  The lawsuit, filed in High Court in England, alleges that both novels involve human hostages being held in a bathroom by half-human creatures, as well as boys who are trying to rescue the hostages. Other alleged similarities between the two books include a wizard train and a wizard prison.

Regardless of how similar two literary works may be, an author is not generally considered to be liable for plagiarism if that author’s work was arrived at independently.  J.K. Rowling has claimed that she had never even heard of Adrian Jacobs or his novel until the first accusation of plagiarism was made in 2004, some four years after the publication of Harry Potter and the Goblet of Fire.

This is not the first plagiarism lawsuit filed against Rowling.  In 1999, American author Nancy Stouffer claimed that her two 1984 works, The Legend of Rah and the Muggles and Larry Potter and His Best Friend Lilly were the basis for the Harry Potter character.  Rowling claimed that since only portions of Rah were printed in booklet form in 1986 and were never sold, either in the United States or elsewhere, there is no way that she could have plagiarized Stouffer’s works, especially since she never even visited the United States until 1998, a year after the publication of the first Harry Potter novel.  In 2002, Rowling, her publisher, and Warner Brothers (owner of the movie rights to the Harry Potter books) sought and received a declaratory judgment that they had not infringed on Stouffer’s works. It was further ruled that Stouffer had in fact defrauded the Court.

Stories of wizards & witchcraft date back at least as far as the legends of Merlin the Magician, and there are common threads that run through many such stories.  Not even a magic spell will help the estate of Adrian Jacobs unless the estate can prove direct copying.