On February 27th, a proposed bill was introduced in Congress to curb such tactics by NPEs. If passed, the SHIELD Act, H.R. 845, would significantly reduce litigation by NPEs. The bill would require NPEs to pay the entire litigation costs, including reasonable attorneys’ fees, if the NPE fails to prove is patent is valid and infringed. The bill also requires that for the NPE plaintiff to bring a lawsuit, it has to show that it is either a university, the original inventor of the patent, or a company that is making a substantial investment in the commercial exploitation of the invention covered by the patent.

Although the bill may not be the perfect solution in stemming the unnecessary litigation brought by NPEs, it sends a strong message to NPEs that there is bipartisan support in Congress to address the tactics used by NPEs to extort money from businesses.

If you have questions about patent litigation or other intellectual property matters, please contact Janet Phipps Burkhead at 515-246-4531 or jphipps@dickinsonlaw.com

While the Executive Order is not geared toward general commercial businesses, private industry will be affected. Within 150 days of the signing of the Executive Order, the Homeland Security Secretary is to identify critical infrastructure, to include private industry infrastructure, where a cybersecurity disruption could reasonably result in “catastrophic regional or national effects on public health or safety, economic security or national security.” Financial institutions are mentioned several times in the Executive Order as part of the critical infrastructure to guard against cyber-attacks.

It remains to be seen how this unfolds as to the baseline and best practices standards that are developed, as well as the voluntary adoption of these practices by those identified with “critical infrastructure.”

If you have questions about cybersecurity, protecting intellectual property, or other intellectual property matters, please contact Janet Phipps Burkhead at 515-246-4531 or jphipps@dickinsonlaw.com.

Hallmark and Murley entered into a negotiated separation agreement whereby Murley agreed not to work in the greeting card or gift industry for 18 months, solicit Hallmark employees, disclose or use any proprietary or confidential information, or retain any business records or documents relating to Hallmark. Murley also agreed to release Hallmark from any claims arising from her termination. In exchange, Hallmark offered Murley a $735,000 severance payment, 18 months of paid COBRA benefits, executive outplacement services, and paid tax preparation services for two years.

After the expiration of the non-compete agreement, Murley became a consultant for Recycled Paper Greetings (“RPG”) for $125,000. In 2009, American Greetings purchased RPG. During American Greetings acquisition due diligence, it contacted Hallmark to review RPG records to ensure none of Hallmark’s confidential information was in RPG’s possession. It was discovered Murley gave a number of Hallmark documents and other confidential information to RPG, including Hallmark’s business model, consumer buying process, and market research. Hallmark filed suit against Murley alleging breach of contract, misappropriation of trade secrets, conversion of Hallmark’s confidential information, and unjust enrichment.

During the course of the litigation, Murley admitted she had retained and disclosed Hallmark’s confidential information to RPG. Additionally, Hallmark’s computer expert testified that Murley had deleted several documents, including Hallmark files, from her computer two days before a forensic computer expert made a copy of her hard drive. Based on this destruction, Hallmark sought an adverse inference instruction to the jury allowing the jurors to infer that the contents of the destroyed documents would have been detrimental to Murley. The jury ruled in favor of Hallmark awarding a full refund of the $735,000 severance pay plus the $125,000 from her assignment with RPG.

Murley appealed the adverse inference instruction given to the jury as improper and that the total award of $860,000 was excessive. The Eighth Circuit upheld the return of the entire severance pay of $735,000 ruling the award not to be excessive or unwarranted based on the evidence in light of Murley’s clear violation of the terms of her agreement with Hallmark. However, the Court declined to uphold the award of the $125,000 reasoning that this would put Hallmark in a better position than it would have been before Murley’s breach.

This case highlights the importance of monitoring and enforcing severance agreements and taking the necessary steps to protect a company’s intellectual property.

If you have questions about severance agreement, protecting intellectual property, or other employment matters, please contact Janet Phipps Burkhead at 515-246-4531.

The creator of an original work is given exclusive rights to prevent the use of a work by others. This protection exists the moment a work is produced in a fixed, tangible form of expression. This includes information found on the Internet. A work does not have to be registered with the U.S. Copyright Office to give the creator exclusive rights to the creative work.

To protect against a claim of copyright infringement, here are some tips:

• Get permission! If you have information regarding the owner of the work, contact the owner directly. If you are not certain, you can search the database of the Copyright Office for such information. In the absence of permission, err on the side of not using the material.
• Verify that you are getting permission from someone who is authorized to grant permission.
• Request the permission in writing.
• Be prepared to pay a fee for the use.
• Give credit to the author/artist.

There are four classifications of trademarks and associated strength. The stronger the mark, the greater protection is afforded the mark.

Fanciful marks are the strongest and are afforded the strongest protection. A fanciful mark is a made-up word that only functions as a trademark or service mark. Since the term is a made-up term, consumers are more likely to associate these new terms with your company. Some well-known fanciful marks include XEROX, POLAROID, REEBOK, EXXON, and GOOGLE.

Arbitrary marks are real words which have no relationship to the good or service. The pairing of the word with a particular good or service is random. Again, these types of marks are afforded strong protection. Some well-known arbitrary marks include APPLE for computers, IVORY for bar soap, BEEFEATER for gin, and JAGUAR for a car.

Suggestive marks ‘suggest’ rather than describe a feature or characteristic of the good or service. These marks require thought, imagination and perception to reach a conclusion about the good or service to which it applies. Some well-known suggestive marks are COPPERTONE for suntan products, GREYHOUND for bus services, CHICKEN OF THE SEA for tuna, and LIQUID PAPER for correction fluid.

Descriptive marks describe a characteristic, ingredient, quality, feature, or purpose of the good or service. These marks are not afforded a great deal of protection unless they acquire distinctiveness through secondary meaning. Secondary meaning may be acquired through long-term use and a showing of a considerable amount of money or marketing of the good or service in conjunction with the descriptive mark. Some well-known descriptive marks that have attained federal registration are BUFFERIN for analgesics, COMPUTERLAND for maintenance and repair of computers, NATURE’S MEDICINE for nutritional and dietary supplements, and WORLD BOOK for books.

The selection of your mark is just one step in the process of using and seeking registration of your mark. However, this is an important step in creating a valuable asset and establishing goodwill for your company. If you have any questions about this process, please contact Janet Phipps Burkhead at 515-246-4531.

Click here to read the full article.

From a review of the list, more than 500 businesses and organizations applied for 1,930 generic TLDs at the cost of approximately $185,000 each.  More than half of the applications come from U.S. companies – 883 total. European applications numbered 675; Asia-Pacific region numbered 303; and Africa 17.

Some well-known companies that applied for new addresses include Apple, Amazon, Google, Microsoft, American Express, Macy’s, Wal-Mart, Yahoo!, and General Motors – as well as many notable others. Some interesting statistics regarding the applications:

• Google applied for more than 100 domains including .google, .youtube, .lol, .boo, and .dad.
• Amazon applied for 76 names including .amazon and .zappos
• Coca-Cola and Kellogg abstained from applying, protesting the process
• No applications were submitted by Facebook or Twitter
• Multiple applications were filed for names such as .inc, .home, .llc, .blog, .movie, and .music.

In total, ICANN collected some $350 million for the new applications. Some organizations are trying to withdraw applications: 150 refunds totaling $3.5 million are pending.

What Happens Now?

According to ICANN, it will receive objections to any of the applications for the next seven (7) months. Simultaneously, panels will begin reviewing the applications for similarity of applied-for generic TLDs to another TLD, whether the application meets the technical requirements, and other factors. The first set of new domains is anticipated to go live in March 2013.

For domains for which there were multiple applications, the process is still under development. However, there is some indication that auctions may occur – this might prove lively!

According to the complaint, Obama for America v. DemStore.com and Washington Promotions & Printing, Inc., 1:12-cv-00889, U.S. District Court for the District of Columbia, the campaign sent several cease and desist letters without satisfaction.
Obama for America alleges that the defendants’ use of the registered mark is a deliberate and willful attempt to draw on the goodwill and commercial magnetism of the trademark and the campaign. Additionally, as is typically plead in trademark infringement matters, Obama for America  alleges that DemStore’s use of the registered logo is likely to create confusion among
consumers, as well as hurt fundraising by the campaign.

DemStore CEO Steve Schwat said in an interview that he didn’t understand why the campaign was attempting to enforce its trademark against his company when “there are hundreds, if not thousands, of companies selling material with the Obama sunrise on it” without official permission. This age old, but unsound, “reasoning” is not uncommon. Just because others are doing it, doesn’t make it right!

As for domain names, many clients are receiving correspondence from domain registrars reporting that a third party is seeking to register a domain name which includes the client’s trademark.  Most, if not all of these notices, originate from Asia.  This correspondence offers the opportunity to register one or more domain names for a fee to stop the alleged infringement of the client’s mark.  In investigating these matters, the third party identified in the correspondence usually does not even exist. The registrar sending the correspondence is trying to scare companies into registering domain names when there is no need.  Internet registrars are under no obligation to inform a trademark owner that a third party is seeking to purchase a domain name which includes a registered trademark. If you receive such a notice, feel free to discard it or check with your attorney.

The other scam is from private companies which have similar names to the United States Patent and Trademark Office (USPTO).  These companies surf the USPTO for trademarks that have recently been filed and then send a letter to the applicant directly.  The companies purport to offer required services to continue the registration process of a trademark for a fee.  If you have an attorney assisting with your trademark filings, any correspondence relative to the trademark application will come from your attorney’s office on letterhead.  If you file your own applications, generally you are not in need of these services.

If you need assistance with a trademark application, seek the advice of an attorney knowledgeable in trademark practice.

Don’t be misled into bogus notices – if you ever have a question, please call for advice.

This is not a new issue to campaigning politicians.  Some notable publicity occurred after Sarah Palin’s speech at the 2008 Republican National Convention when the John McCain Campaign cued Heart’s 1977 hit “Barracuda” in an apparent reference to a nickname Palin earned while playing high school basketball.  McCain himself was also criticized by Foo Fighters for his use of its song “My Hero” on the campaign trail.

In the current Gingrich matter, the issue that will be argued is the basis on which the song’s copyright owner can restrict Gingrich’s use.  In the case of a song, there are at least three separate copyrighted works: (1) the musical composition, (2) the lyrics, and (3) the sound recording.  Under copyright law, therefore, the copyright owner of a song has several exclusive rights associated with that work, including the exclusive right to reproduce the work (essentially preventing others from making unauthorized copies) and the right  - implicated in the Gingrich matter  - to publicly perform the copyrighted work (essentially preventing others from the public performance of the work). 

There is no question that the playing of “Eye of the Tiger” by the Gingrich campaign is a public performance; however, the question is whether the playing of “Eye of the Tiger” is for political or economic reasons.  Copyright law protects economic interests.  Generally, music artists are represented by large record labels, who participate in complex licensing agreements that allow anyone to use a song for a given purpose as long as a license fee is paid.  This fee generally is for the use of one or more songs in a public performance.

One can argue that the public performance of “Eye of the Tiger” by the Gingrich campaign was not for economic interest, but as a form of political speech and falls under the “fair use” doctrine.  Because the use of a song in a political campaign doesn’t change the market value of the song (nobody is going to listen to the song at a campaign event instead of buying it), the use of the song is arguably not for economic interest and, therefore, does not constitute copyright infringement.  Additionally, the courts are hesitant to enjoin political speech unless there is a very good reason. 

We’ll wait and see what happens in this case – will the “fair use” doctrine prevail, or will Gingrich succumb to the criticism or legal action and stop using “Eye of the Tiger” in his campaign?