Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

Protecting confidential information when firing employees

Terminating an employee can be a risk to a company, especially if that employee had access to trade secrets or confidential technology. An ex-employee can have many motivations for stealing and selling this type of information, but the motivations behind this activity don't change the fact that companies need to protect themselves. There are a few best practices that organizations should follow to ensure terminated employees can't access confidential data.

The first step to protecting IP is to cut off an employee's access to information during their termination meeting, not after or before it. Removing login credentials before a termination can alert the employee to what's going on, causing them to act in spite before their privileges are lost. During the termination, management should remind the employee of all restrictive covenants and post-employment confidentiality obligations. They should also make sure the ex-employee no longer carries any company devices that they can take out of the office.

Universities battle over trademarks

New Jersey sports fans might be interested in learning about a trademark battle between Ohio State and Oklahoma State University as well as the University of Oklahoma. The schools have been arguing over their respective trademarks.

According to news sources, Oklahoma State University filed an extension of its patent of OSU after Ohio State University filed an application to use OSU on hats, sports gear and clothing in February 2017. The two schools negotiated an agreement in September 2017 over Ohio State's use of the acronym.

"Honey Badger" creator seeks to stop unauthorized cards

Many people in New Jersey have seen the famous "Honey Badger" video on YouTube. Since the "Honey Badger Don't Care" catchphrase in the video has been widely referenced in a variety of media, it could come as a surprise that the phrase may have federal trademark protection. A federal appeals court overturned a judgment by a lower court in August 2018, reinstating a lawsuit filed by the video's creator against a greeting card publisher.

The video garnered millions of views on YouTube after being posted by its founder. It includes footage of a honey badger seeking out food by attacking poisonous snakes and other larger, more dangerous animals. The video's creator delivers a sarcastic commentary over the footage. The video's phrases and images were later included in television shows and social media memes. Even Louisiana State University football player Tyrann Mathieu was given the nickname "Honey Badger." After the video went viral, the creator copyrighted his narration with the title "Honey Badger Don't Care." In October 2011, he began applying for trademarks for the phrase to apply to different types of goods.

Universities aggressively prosecuting their trademarks

New Jersey residents may have heard about businesses that aggressively protect their trademarks. In addition to companies, many universities are now likewise aggressively prosecuting their trademarks against potential infringement.

According to ABC, dozens of individuals across the U.S. are threatened with potential legal action by big universities for inadvertent infringements on their trademarks. For example, a vineyard in California that wanted to trademark its name as Duke's Folly after the last name of the owners was blocked by Duke University. The university claimed that the use of the name by the winery could lead to confusion. While the owners disagreed, they settled the case by renaming their trademark as Dukes' Folly rather than engaging in litigation.

Bob Dylan's whisky company sued for trademark infringement

Even young music fans in New Jersey likely know that Bob Dylan was a major counterculture figure in the 1960s, but they may not know that the 77-year-old folk singer is now a successful entrepreneur. Dylan's thriving whisky company, which was launched in April 2018, is named after one of his most famous songs, but Heaven Hill Distillery has taken exception to the name and filed a trademark infringement lawsuit that aims to shut Dylan's nascent commercial venture down.

The Kentucky-based distillery says that the similar names could confuse consumers, and they claim that Dylan's choice of a stacked logo design increases the likelihood that whisky buyers looking for Heaven Hill whisky will purchase a Heaven's Door product instead. The lawsuit, which was filed on Aug. 17 in Kentucky, seeks an injunction that would prevent Heaven's Door Distillery from making, distributing or promoting its products until the litigation is concluded. The company's attorneys are also asking the judge to order all materials featuring Heaven's Door branding to be handed over.

Multinational companies may need to better assess IP risks

According to the Intellectual Property Litigation Risk Report, companies with a multinational presence may be overlooking key intellectual property issues. Firms based in New Jersey may face risks because intellectual property has become more mobile. Mergers between companies as well as the creation of new fields such as health tech have also factored in the increase of intellectual property disputes.

Lawsuits related to intellectual property occur most often in the United States, China and Germany. In China, the number of such cases doubled in the four years between 2013 and 2017. According to the report, 50 percent of respondents said that they were concerned about facing legal action in the United States. This is despite the fact that more intellectual property lawsuits occur in China. However, only 7 percent of companies included in the report had IP insurance.

Actor's family files trademark lawsuit against Ferrari

One ongoing intellectual property dispute may be of interest to classic movie and automobile fans in New Jersey. The descendants of the famous actor, Steve McQueen, are suing the luxury car company Ferrari for marketing cars by making use of the actor's image without compensation. The family members allege that the sports-car company made an unfair profit from the legacy of McQueen when it created and sold a special branded vehicle in 2017. The limited-edition "McQueen" model was issued as part of a 70th anniversary commemoration of the production of Ferrari cars.

The intellectual property lawsuit filed in California court claims that the Italian automobile company's actions created a false perception that the vehicle was authorized by the family. It said that the vehicle used the McQueen name to appear to be an officially licensed product and that the actor's name provides a price premium and additional value to a car. After an initial complaint by the family, the car company renamed the vehicle "The Actor" but continued to use McQueen's image to advertise the Ferrari.

Protecting trade secrets

As companies in New Jersey and across the country struggle to protect their intellectual property rights in an era of easy digital information-sharing, many are turning to trade secrets litigation when confidential information is disclosed. After the passage of the Defend Trade Secrets Act of 2016, it became easier for wronged parties to bring a claim under federal law for disclosure of trade secrets. At a time when intellectual property is key to the success of technology and other businesses, these claims are a powerful tool.

Trade secrets cases are particularly common in the life sciences and health care sectors, where research and development involve complex and intricate drug development programs, immunotherapies and treatment protocols. Over 70 cases have been filed in the two years since the DTSA was adopted related to health care corporations. Medical device companies and pharmaceutical manufacturers, including some of the largest firms in the sector, have made particularly common use of trade secrets litigation. Many companies have used these claims in order to bar former employees from sharing the information they know with other companies in the field.

New study links trademark registrations to higher employment

According to a recent study funded by the U.S. Patent and Trademark Office, trademark registrations could be tied to company growth and employment rates. With new trademark laws on the way, unemployment rates in New Jersey and other parts of the country might begin to drop even further. The evidence suggests that companies are willing to spend more on research and development when they know that their intellectual property is protected from trademark infringement and theft.

This study, which focuses on 2011 data, found that companies tend to increase their hiring rates after filing for patents. The same study also revealed that employment growth is quicker at companies that have at least one trademark registered. Many different variables impact hiring practices, but this study seems to indicate that patent filing and protection are important factors to consider.

IBM and Groupon in court over patents

New Jersey consumers may be wondering about the ongoing legal dispute between the tech companies IBM and Groupon over the latter's alleged use of four protected e-commerce patents. IBM claims that Groupon illegally used several of its proprietary technologies without permission. Other tech companies pay millions of dollars in licensing fees for the rights to use the same patents.

The legal dispute began in 2016 and involves technology patents spanning the course of several decades. Included in IBM's suit are patents that preceded the modern internet, such as two associated with the Prodigy online service of the 80's and 90's. The most recent patent is one that gives users the option to log into a third-party website using their Google or Facebook accounts. Lawyers for IBM are demanding $167 million in compensation for Groupon's alleged use of its patents without paying the hefty licensing fees. According to lawyers for IBM, other large tech companies, such as Facebook and Amazon, have paid licensing fees of between $20 and $50 million for the same patents Groupon uses without permission.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

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Flanders, NJ 07836

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