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• Declaratory Judgment Action Still Requires Case or Controversy By Sonny Chastain The Fifth Circuit Court of Appeals recently addressed the standard for a declaratory judgment action in the context of trademark rights. In Vantage Trailers, Inc. v. Beall Corporation, 567 F.3d 745 (5th Cir. 2009), Vantage filed civil action seeking declaratory judgment finding that its designed for a new aluminum bottom dump trailer would not infringe on any valid trademark rights of Beall Corporation.  Beall manufacturers and sells an aluminum bottom dump trailer which is protected by a registered trademark.  In early 2006, Vantage began designing its own aluminum bottom dump trailer.  In July 2006, Beall’s vice president sent a letter to Vantage stating that if your company places any trailers into service that violate any of Beall’s trademarks we will pursue legal action to stop the infringement. In response to the letter, Vantage filed a civil action seeking a declaratory judgment that Beall’s trademark is invalid and that the ....
• Guidelines for Promoting Your Business Through Social Networking Websites By Tara Madison Social networks like Facebook, YouTube and Twitter are transforming the way companies communicate with consumers.  Facebook, YouTube and Twitter can be powerful business tools, but you must be mindful of certain legal limitations and guidelines. The words “Facebook,” “YouTube,” and “Twitter” are proprietary to the companies that own them.   “Facebook,” “YouTube,” and “Twitter” are all registered with the U.S. Patent & Trademark Office.  A trademark is distinctive word, logo or phrase that is used by an individual or business to identify a unique source of products or services.  Facebook, Inc., Twitter, Inc. and Google, Inc., the owner of YouTube, are entitled to prevent others from using their trademarks or something similar in a way that is misleading, deceptive or could cause confusion in the marketplace. You must first obtain permission before using another’s ....
• Patent Infringement Opinions Continue To Be Important By Pamela A.  Baxter Recent court decisions show that patent infringement opinions are still important for any person or entity that becomes aware of a United States patent that is similar to their products, methods or processes. Under federal patent law, anyone who either makes, uses, offers to sell, or sells any patented invention in the United States or actively induces another to do so is liable for patent infringement.  In addition to regular damages, courts may award up to three times the damages for willful infringement.  Under the 1983 Underwater Devices Inc. v. Morrison-Knudsen Co. opinion, if a party had actual notice of another person’s patent rights, then that party had an affirmative duty to exercise due care to determine whether that party was infringing those patent rights.  This affirmative duty included the duty to obtain patent infringement opinions prior to engaging in any potentially infringing activities.  In 2007, the United ....
• Quick Action by Registered Trademark Owners May Prevent Future Facebook Problems Beginning at 12:01 a.m. (Eastern Standard Time), on Saturday, June 13, 2009, members of the social networking website, Facebook, will be able to claim usernames to associate with their Facebook accounts and Facebook pages. This will allow Facebook pages to be accessed by using a url such as, http://www.facebook.com/unitedairlines, or something similar. Facebook is taking certain steps to prevent infringement of intellectual property through “name-squatting.” In connection with this, Facebook is allowing Federally registered trademark holders to prevent the registration of usernames that would infringe their intellectual property rights. There is a link to the form on Facebook’s Web site if you want to complete the form yourself. You will need the trademark registration number and the exact wording of the trademark as registered. For more information, or to protect your trademark, please contact Pamela Baxter at pamela.baxter@keanmiller.com (225.389.3761) or ....
• Great Ideas by Employees - Who Owns Them? By Russel O. Primeaux As we continue our shift to a more knowledge-based economy, frequently the greatest assets of a company reside in the creativity of its employees. This is especially true for service companies in which the services can be repeated for multiple customers (example: software). Whether or not a company owns something that has been created by one of its employees will depend to a great extent on the category of intellectual property into which the creation is classified. Generally, the creations or discoveries of employees will fall into the intellectual property categories of copyright, patent, or trade secret.Copyright law states that an employer will own a work protected by copyright if the work was created within the employee’s “scope of employment.” In order to determine whether something is created within the scope of employment, one will look at the position description and the practical duties that the employee actually performed. For example, ....
• Stopping Internet Copyright Infringement Short of Filing Suit by Tara Montgomery Madison “Someone is using my photos and website design on the internet without permission. What can I do?” These questions arise more and more with the increased use of the internet in business. The technical answer is that you have a potential claim for copyright infringement. Filing a federal lawsuit under the Copyright Act, however, is not a realistic option for many businesses, particularly when monetary damages may not be at issue. The goods news is that with the enactment of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C 512, victims of internet copyright infringement now have a more practical option for achieving the desired result – removing the infringing material from the internet – without filing a lawsuit. The DMCA gives internet service providers (“ISPs”) limited liability for copyright infringement in return for promptly removing copyright infringing material from the ....
• Jury Sides with the Wham-O Slip 'N Slide by James R. Chastain, Jr. A jury in California issued a $6 million verdict against SLB Toys USA, Inc. (also known as ToyQuest) in favor of Wham-O, Inc., the manufacturer of the famous backyard yard toy, the Slip ‘N Slide. Wham-O owns two registrations for design marks for water slides which include the color yellow as part of the registration. Wham-O claimed that its famous yellow water slide has become an instantly recognizable iconic symbol of summer fun, and is famous among both children and adults. Wham-O sued Toy Quest for trademark infringement, dilution, and false advertising, claiming ToyQuest knocked off its product by using a confusing color scheme. The jury concluded that Toy Quest willfully infringed the trademarks for the yellow water slides. It awarded $3.6 million in damages and ordered enhanced damages in the amount of $2.4 million in order to compensate Wham-O and make ToyQuest infringement unprofitable. Wham-O’s president stated that it will take all ....
• Carol Burnett Action Tossed Based On Fair Use by James R. Chastain, Jr. On April 23, 2006, Twentieth Century Fox Film Corporation aired an episode of “Family Guy” entitled “Peterotica.” In this episode, Peter Griffin, who was an Archie Bunker-like character, enters a porn shop with his friends and comments that the porn shop is cleaner than he expected. One of Peter’s friends explains that Carol Burnett works part-time as a janitor. At this point, an animated character resembling the “Charwoman” from the Carol Burnett Show appears mopping the floor near several blow-up dolls and a rack of “XXX” movies. At this point, a slightly modified version of Carol Burnett’s theme song is playing in the background. One of Peter’s friends remarks, “You know, when she tugged her ear at the end of the show, she was really saying good night to her mom.” Another friend responded, “I wonder what she tugged to say good night to her ....
• Intellectual Property Due Diligence In a Community Property State by Anthony G. Boone The purpose of due diligence in the acquisition of licensing of intellectual property assets (namely patents and copyrights) is to give a buyer an opportunity to investigate and evaluate the asset concerned in some detail. More particularly, due diligence involving patens and copyrights can present ownership issues if the author/inventor is or was married and resides in a community property state. Whatever level of diligence is required for the particular transaction, the buyer should consider inquiring as to the current and past marital status of the inventor/author of the intellectual property if the inventor/author is either the seller; a direct owner of the seller; or in some cases, even a past owner of the intellectual property.  Federal law vests ownership of copyrights and patents to the author/inventor of the intellectual property; however, in a community property state, a non-contributing spouse can be given an ownership interest in what would ....
• FIFTH CIRCUIT ADDRESSES COPYRIGHT OWNERSHIP by James R. Chastain, Jr. The Fifth Circuit recently addressed the issue of copyright ownership in its unreported decision in Pritchett v. Pound, civil action 05-41445 (5th Cir. 2005). In 1981 Ronald Pound was hired by Pritchett, L.P., a business consulting firm founded by E. Price Pritchett. The employment contract provided that he was responsible for “completing regular written assignments and development of new products and procedures.”   It also stated that, “[s]hould the Employee produce any written materials in the course of his work with the Employer, then such shall be done for and on behalf of Employer and all work produced shall be the exclusive property of the Employer.” In the late 1980's, Pritchett began offering a line of handbooks to supplement his consulting services, two of which were written by Price Pritchett and Ronald Pound. Pritchett, L.P. paid all expenses associated with writing, publishing, and promoting the ....
• PRESIDENT BUSH SIGNS TRADEMARK REVISION ACT OF 2006 by James R. Chastain The Dilution Statute was enacted as part of the Lanham Act in 1996. The Dilution Statute provides in 15 U.S.C. §1125(c) that the owner of a famous mark shall be entitled to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use causes dilution of the distinctive quality of the mark and to obtain such other relief as provided in this subsection. The courts have been wrestling with the meaning of the terms in the Statute since that time. On October 6, 2006, President Bush signed the Trademark Dilution Act of 2006 into law to further refine the applicability of the Statute and clarify many of the legal issues. Many of the provisions of the Act are important to note. First, the Act retitles the cause of action to be for Dilution by Blurring and Dilution by Tarnishment. Presumably, this eliminates the possibility of another basis for claiming dilution. Blurring is defined as an association arising from the ....
• Patent Searching by Russel O. Primeaux eBay is in litigation with a small company that claims that its patents cover the online auction method used by eBay. Blackberry users were a judge’s pen stroke away from an injunction that would have stopped all Blackberry use in the U.S. In that case, the patent owner, again a small company, claimed that the famous Star Trek type devices infringed the company’s patent. These patents might have been detected during a patent search, if eBay or Blackberry undertook such searches. This article will discuss each type of patent search, the cost, and the purpose. Patentability Searches Suppose your company develops a new product that appears to be innovative. You would like to obtain a patent if it is feasible. Before spending the money for a patent application (the initial filing cost could range from $8000 to $20,000), it may be wise to conduct a patentability search. The purpose of this search is to look through the ....
• Maintenance and Protection of Trademarks When a business selects a trademark under which a product or service will be sold, it hopes to develop brand loyalty among its customers and have them come to know the trademark in the market place. As part of the strategy to create a brand, it is prudent to seek federal trademark registration for the name in order to help protect the business' rights to use the trademark. Once a trademark registration has been obtained, it is important that the owner of the trademark take certain steps to protect the trademark and the value it represents. Subsequent to registration, the Patent and Trademark Office ("PTO") requires that periodic forms be filed to keep the mark "alive". It is suggested that the mark owner create a calendar system to track the various filing deadlines for the marks. While many law firms will track the deadlines, due to the long time periods that are involved it is always prudent to have the owner of the marks keep track of the dates. The owner of the trademark should ....
• Efforts to Maintain Trade Secrets to be Scrutinized The Uniform Trade Secrets Act, La. 51:1431, et seq., provides a cause of action for misappropriation of a trade secret. However, it is important to recognize that these are specific terms which must be satisfied in order to trigger the remedies provided in the Act.A trade secret is defined as information, including a formula, pattern, compilation, program, device, technique or process that (a) derives independent economic value from not being generally known to and not being readily ascertainable by a proper means by other persons who can obtain economic value from its disclosure or use and (b) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. Both elements must be satisfied in order to be a trade secret and possibly have protection of the Act. For example, a formula, process or customer list that is not to be generally known and derives economic benefit there from may satisfy the first element of the definition. However, reasonable steps ....
• Intellectual Property Disputes By Russel Primeaux Someone once observed that most car accidents occur within 10 blocks of the driver's home. We see a analogous trend in Intellectual Property "crimes" - i.e. infringement of patents, trademarks, or copyrights; or misappropriation of a trade secret. Intellectual Property (IP) disputes between two parties that are strangers to one another are the exception, not the rule. More often than not, IP infringement suits are between parties that were formerly in some type of business relationship. The most typical relationships that go awry are license relationships, joint ventures, and dealerships or distributorships. The licenses can be for trademarks, trade secrets, or patents. In a trademark license, the licensor (the trademark owner who is granting the license) should ensure that the agreement covers good will generated by the licensee. The license agreement should clearly state that good will generated by the licensee in the trademark inures to the benefit of the ....
• Obtaining International Trademark Protection and the Madrid Protocol By Bill Caughman In November 2003, the United States joined many other countries in signing a treaty called the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the "Madrid Protocol"). The United States Patent and Trademark Office ("PTO") has just recently created forms and procedures to implement the Protocol in the United States. The Madrid Protocol is designed to provide a more efficient method for an owner of a trademark to register its trademark in a number of foreign countries. At present, 66 countries are signatories to the Madrid Protocol, and the procedures outlined below can be used to obtain the registration of trademarks in each of these countries. While the changes brought about by the Madrid Protocol are largely procedural, the Protocol does eliminate some of the expenses and difficulties typically encountered in attempting to obtain trademark registration under prior methods. Prior to the Madrid Protocol, if a USA based ....
• Louisiana In-House Counsel Rule Deadline Approaching By Lolly White In-house counsel who are employed in Louisiana but are not licensed to practice law here have until July 1, 2005 to file an application for limited licensure to practice under the Louisiana Supreme Court's new In-House Counsel Rule. Louisiana Supreme Court Rule XVII, Section 14, provides that a lawyer who is admitted and authorized to practice law in another state or territory may receive a limited license to practice law in this state when the lawyer is employed in Louisiana as a lawyer exclusively for a corporation, its subsidiaries or affiliates and/or a business which consists of activities other than the practice of law if the lawyer has filed an application for a limited license with the Committee on Bar Admissions. The Committee on Bar Admissions is comprised of 15 active members of the Louisiana State Bar Association who are appointed by the Louisiana Supreme Court. Click here for the application for Limited Licensure As In-House Counsel. This application, ....
• Mr. Mirliton's - A Recipe for a Dangerous Mix of Trademarks and Copyrights By Russel O. Primeaux It is a situation we see repeated all too often. A successful small business owner is considering a major expansion - either by franchising or by opening more company-owned offices. The business has many of the key ingredients for success. However, as we investigate the trademarks of the business, we learn of potential problems.For example, suppose the business is a theme restaurant with three locations, all company-owned and local. All locations use the same trademark - MR. MIRLITON'S. The phrase MR. MIRLITON'S is accompanied by a drawing of a man in the shape of a mirliton. For those of you who are not familiar with the mirliton, it is a vegetable with a taste similar to a zucchini. It is also called a mango squash or vegetable pear. Our little mirliton character is stirring a pot of food and has a chef's hat. The face on our "Mirliton Man" bears a strong resemblance to the restaurant's founder and owner. The Mirliton Man and the trademark MR. MIRLITON'S are ....
• To Floss or Not to Floss: Mouthwash Ad Campaign Raises Lanham Act Issues By Sonny Chastain The Lanham Act was passed in 1946 pursuant to Congress' power to regulate commerce. Section 43 of the Act prohibits false and misleading advertising, stating that "any person who uses in commerce any false or misleading description of fact, or false or misleading representation of fact, which . . . in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act." This section of the Act was at the center of a recent Listerine ad campaign.In June 2004, Pfizer, Inc. ("Pfizer") launched a consumer advertising campaign for its mouthwash Listerine. The campaign included print ads and product tags that featured an image of a Listerine bottle balanced on a scale against a white container of dental floss. The campaign also featured a ....
• Instant Messaging: Does It Belong In the Workplace? By Russel O. Primeaux In a given year, the average American teenager and young adult will spend 868 hours (36 days) online. Roughly 20 percent of this time is spent IM (IM). One recent study showed that of the 24 million U.S. teens that go online, one in five, or about 5 million, considers IM their primary means of communicating with their friends. Why are so may young Americans hooked on this technology? What can the American business man or woman learn from his/her son or daughter? If IM is such an important form of private communication in America, is there room for it in the American workplace? Can IM be an efficient and profitable means of conducting business? Or is IM just another type of electronic communication gadget along with e-mail, voice mail, paging, Blackberries, and cellular? IM: WHAT IS IT AND WHY DOES IT MATTER?? IM (IM) is technology that has changes our world to the same degree as voicemail and email. IM is the voice of the internet and perhaps the best kept secret ....