Breach of Consent or EPIC Fail?

By Dan McPheeters As we touched on in our prior post, the Electronic Privacy Information Center (EPIC) has filed a lawsuit against Google alleging that the controversial new privacy policies that were implemented on March 1st violated the consent decree Google entered into with the FTC last October. The lawsuit was subsequently dismissed when a District Court judge agreed with the FTC that Courts lack the authority to force a federal agency to take action under a consent decree; however, since EPIC is appealing the ruling, the legal question posed by the lawsuit is still relevant. Interestingly, while the FTC has yet to take any formal action against the search giant, key officials have made their feelings known and they are not favorable to the once-beloved tech icon. Moreover, an analysis of the consent decree itself can help shine a light on whether Google has actually done anything wrong in implementing its new privacy policy. The consent decree at the

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Much Ado About Google

By Dan McPheeters Google has been taking flak recently for its “new” privacy policy, which rolled out on March 1st. From tech bloggers calling the company “evil” (and showcasing their graphic design skills in the process) to accusations of illegality from European and American regulators, the company has surely taken a PR hit of late. But that simply begs the question: has the company actually done anything wrong, or have they merely completed the metamorphosis from lovable David to hated Goliath? On a personal level, as someone who grew up in the 90’s it is interesting to see Bill Gates viewed as a beloved philanthropist and Google as an evil, invasive company hell-bent on eviscerating its users’ privacy in the unholy name of profit. The juxtaposition is somewhat jarring. Meanwhile, there are those in the media who have pointed out that the privacy policies have not actually changed, and that if anything the policy has been made more transparent and

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Levi Strauss Wins a Trademark Infringement Lawsuit in China

By Evelyn Li Levi Strauss recently won a trademark lawsuit in China against four Chinese companies on its trademark infringement claim regarding its double-arc stitching design. Levi asked the court to order the four companies to immediately stop using its double-arc stitching design, destroy all infringing products and delete all Internet ads. Moreover, it also asked for compensation of 1 million yuan from the infringers, “Jasonwood” brand owners and their manufacturer. The Chinese companies argued that they designed their trademark based on the letter “J,” and it is different from Levi Strauss’ design. But the court was not convinced. The main issues in the case were: (1) whether the two trademarks were in fact similar; (ii) whether the double-arc mark on Levi Strauss’s jeans has gained distinctiveness as required by the Trademark Law of China so that any similar marks used on the same class of goods would cause confusion among the relevant public; and (iii) whether the plaintiff Levi

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Right Decision; Wrong Reason — The Prometheus Patents Seem to Satisfy § 101

By Robert Lower The Supreme Court handed down its decision in Mayo v. Prometheus Laboratories March 20, 2012, holding U.S. Patent Nos. 6,355,623 and 6,680,302 invalid for failure to satisfy 35 U.S.C. § 101. Prometheus is the exclusive licensee to these patents, which boil down to a process for calculating a dosing regimen for a drug that threads the needle between an inefficacy and overdose, based on the level of metabolites in patients’ blood. The court referenced the first claim of the ‘623 patent in reaching its opinion: We claim: 1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising: (a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and (b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder, wherein the level of 6-thioguanine less than about 230 pmol per 8 x 108 red blood cells indicates a need to increase the amount of said

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Has Christian Louboutin Committed Trademark Shoe-icide?

By Rob Lower With a trademark this fragile, Christian Louboutin shouldn’t throw stones in a glass house. Last year, Louboutin sued another high-end shoemaker, Yves Saint Laurent S.A.S., alleging YSL’s shoes infringe Louboutin’s federally registered trademark for red shoe soles. On top of losing in Southern District of New York late last year (appeal pending), Louboutin is now defending counterclaims by YSL seeking cancellation of the red sole mark along with damages. So can you actually get a trademark on a color? Yes, says the Supreme Court, along with a list of caveats below. First, here’s the shoes: Left — Louboutin’s Rolando Right — YSL’s Palais 105 (one of YSL’s four allegedly infringing monochrome shoes) While this looks like a home run for Louboutin at first blush, his registered mark looks quite a bit different: As implied by the registration, Louboutin’s red soles are unique only when the rest of the shoe is not red. Additionally, Louboutin’s optimistic claim to all-red

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Federal Circuit Rules that the Invention of a Method of Making Chemical Compounds May Be Sufficient Contribution to Qualify for Joint Inventorship of the Compounds

By Charles Pierce In Falana v. Kent State Univ., 101 USPQ2d 1414 (Fed. Cir. 2012), the Federal Circuit affirmed the district court’s order that Dr. Olusegun Falana (Falana) be added as an inventor to U.S. Patent No. 6,830,789 (the ‘789 patent), and did not address the district court’s award of attorney’s fees to Falana. Kent Displays, Inc., a private spinoff of Kent State University (collectively, KDI) was attempting to develop proprietary chiral additives with high, temperature independent helical twisting power (HTP) for use in liquid crystal displays.  They hired Dr. Alexander Seed (Seed), who in turn hired Falana.  While working for KDI, Falana developed a synthesis protocol for making naphthyl substituted TADDOLs.  He used his synthesis protocol to create such a TADDOL, which was designated Compound 7.  Compound 7 was found to be significantly temperature independent, and represented significant progress for the project.  Falana left KDI soon after this development.

Fortune Apple falls on the head of Proview— Proview Shenzhen sees a new way to get out of its debt

By Evelyn Li Apple’s successful marketing on its product “iPad” may be facing a big loss in China when a court in China rejected its claim on ownership of the iPad trademark in the country. The court ruled for its rival Proview Technology (Shenzhen) Company Ltd. (Proview Shenzhen), a struggling company that registered trademarks for the name IPAD in mainland China long before Apple conceived its smash hit tablet computer. Following the court’s decision, Proview Shenzhen has sought to halt sales of Apple’s iPad in two Chinese cities. A court in Shanghai refused its request on preliminary injunction on “all sales of ‘iPad’ by Apple Computer Trading (Shanghai) Company Ltd.” due to “the uncertainty of the decision which will be made by the High People’s Court of Guangdong on trademark ownership over ‘iPad’.” Although Apple was able to stop the preliminary injunction, the appeal to the High People’s Court of Guangdong does not look optimistic. One big problem for Apple

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Study Indicates that the Renewable Energy Market in the U.S. is One of the Most Attractive in the World

By Margaret M. Welsh According to Ernst and Young’s Renewable Energy Attractiveness Index, the United States has one of the most attractive renewable energy markets in the world.  In February 2012, Ernst and Young released its quarterly report and listed the renewable energy market in the United States second only to China.  The Report tracks the attractiveness of forty countries and ranks countries based on the development of their renewable energy infrastructure and their suitability for individual technologies. China maintained the number one position; however, the Report indicates that China’s renewable energy market growth could slow down because of a reduction in solar cell company investments by foreign countries.  The Report also predicts a decrease in renewable energy markets for more developed countries, including countries in Europe.  This is spurred by Europe’s financial uncertainty. The United States remains at the top of the renewable energy market attractiveness list.  Yet, the Report based its ranking on the assumption that the wind

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Getting to “Use”

By Dan McPheeters and Michael Stein   In our earlier post, we discussed the ambiguities surrounding the determination of whether or not a mark had been used in commerce sufficiently for federal trademark protection to accrue. The case-law revealed strong support for an “analogous use” doctrine that falls somewhere below actual sales, though how much lower is ambiguous and will certainly require litigation to confirm. If only there existed some resource, something up to date and freely accessible to all, where one could turn for help navigating these deep and existential questions… The analogous use doctrine vests rights in a mark when the marketing and promotion of the product or service with which the mark is associated rise to the level of communicating a bona fide intention for “continuous commercial utilization” of the product. Examples cited approvingly by Courts range from Marvel Comics’ distribution of 430,000 fliers with the title of a new comic book to the creation of a

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The Bipartisan Dash to Extend the Renewable Energy Production Tax Credit

By Margaret M. Welsh As many are aware, the wind energy production tax credit which is set to expire at the end of this year was not extended in the payroll tax legislation as many renewable enthusiasts had hoped.  The renewable energy production tax credit was originally enacted by the Energy Policy Act of 1992 and has been extended over the years.  The production tax credit generally provides a per-kilowatt hour tax credit for electricity generated by qualified energy resources.  Qualified energy resources now include wind, closed-loop biomass, open-loop biomass, geothermal, landfill gas, municipal solid waste, some hydroelectric, and larger-scale marine and hydrokinetic power. The credit for all the qualified energy sources listed above expires in 2013, except for wind energy which expires at the end of this year.  Currently, the wind energy production tax credit provides a 2.2 cents/kilowatt-hour tax credit for electricity generated from utility-scale wind turbines.  This credit has been instrumental in lowering the cost of electricity

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