Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

Iconic names restored at Yosemite National Park

As part of a $12 million settlement paid to the park's former concessionaire, many of the names for locations in Yosemite National Park were changed back to their original names. The lawsuit was originally filed when a new company took over many of the park's concessions and hospitality services and changed the names of many iconic locations. The result of this lawsuit could also affect the naming of locations in national parks in New Jersey and other states.

During the transition of services from one company to another, much of the signage in the park was covered up or removed to show new signs. It's estimated that it will take days or weeks to return signage and other postings to their original names. All trademarks and service marks will be the intellectual property of the new company as long as they have a contract with the government.

ITC trademark rulings do not prevent future litigation

For many New Jersey businesses, protecting their intellectual property can be an important part of keeping their brands active and growing. There are a number of different venues where companies can take legal action against infringement of their trademarks, patents and copyrights. However, one question that may arise is whether a decision in one venue may prevent the issues from being raised again in a different court. According to one federal appeals court's decision, U.S. International Trade Commission rulings on trademark infringement do not necessarily preclude litigating the issue again in federal district court.

The ruling came in a case between two companies selling portable people-moving devices, Segway and Swagway. Segway filed a complaint with the ITC, an independent federal agency that investigates trade matters and deals with imported products that may infringe on intellectual properties registered in the United States. It accused Swagway of violating its patents and trademarks. While Swagway aimed to end the complaint by entering a consent order, Segway refused due to concern about future litigation of the underlying claims. In the case, the ITC ruled that Swagway did infringe Segway trademarks but not its patents.

Supreme Court rules in patent infringement case

Inventors and businesses in New Jersey and around the country obtain patents to protect their inventions, processes and designs, and they may pursue legal remedies when others use their original ideas without permission. These cases are usually complex, and patent infringement lawsuits sometimes drag on for years. A recent patent dispute case that included the Alabama-based company Return Mail and the US Postal Service was decided by the US Supreme Court. With a majority vote of 6-3, the justices ruled that the agency had infringed on intellectual property rights protected by a patent.

Return Mail developed a system that used scanning equipment, barcodes and computer databases to automate the process for sorting returned mail. The company then applied for and received a patent for the system. The company offered to sell the system to the USPS, but the agency decided to develop their own solution to handle returned mail. The legal dispute began when the Postal Service attempted to have Return Mail's patent invalidated.

High court rules against government in trademark case

The Supreme Court made a ruling that will have an impact on intellectual property, specifically trademarks, in New Jersey and across the country. On June 24, the justices struck down a rule that had been in place for a long time banning scandalous or immoral symbols and words from trademark protections. The immediate case involved a clothing brand whose trademark application had been rejected.

A street wear designer had applied for trademark protection for his clothing company, FUCT, but the trademark was denied by the U.S. Patent and Trademark Office. The Supreme Court was unanimous with all nine justices joining in a decision written by Elena Kagan. The ruling said that the ban on immoral trademarks was in violation of the First Amendment right to free speech.

Supreme Court ruling settles copyright infringement issue

Individuals or companies in New Jersey and around the country must apply for trademarks or patents if they wish to protect inventions, formulas, symbols or designs, but copyrights are issued automatically. However, intellectual property owners who wish to take legal action against copyright infringers must first register their original works with the U.S. Copyright Office. District courts have made contradictory rulings in this area, but any confusion over the issue was cleared up by a recent Supreme Court ruling.

Individuals or companies seeking to enforce copyrights have generally filed their registrations and lawsuits simultaneously, which has led to contentious legal arguments over when registration takes place. Some district courts have ruled that simply applying for registration is enough to support a lawsuit while others have said that litigation may not proceed until a Certificate of Registration has been issued by the U.S. Copyright Office.

Trademark dispute brewing over deceased rapper's slogan

New Jersey residents may be surprised to learn that the once notorious Crips street gang is taking steps to rebrand itself and escape its violent past. The Los Angeles rapper Nipsey Hussle was a member of the Crips until he was gunned down outside a clothing store he owned in March. Hussle denounced gun violence in his music and worked tirelessly to provide opportunities to marginalized young men. In a step widely seen as an effort to associate themselves more closely with their esteemed former member, the Crips LLC filed an application with the U.S. Patent and Trademark Office on May 16 to trademark the late rapper's "The Marathon Continues" slogan.

The Crips say that they plan to use the slogan to promote youth sport programs and charity events. The gang also hopes the slogan will help them to book concerts, hold boxing tournaments, and launch a reality television series. However, their plans suffered a setback on May 28 when Hussle's older brother Samiel Asghedom also filed an application to trademark the slogan. Asghedom, who also wants to be appointed the administrator of late brother's estate, says that he too wants to use the slogan to promote charities and help others. Legal observers say that the case could prove difficult for the USPTO as neither party coined the slogan.

Historic TV song leads to copyright lawsuit

Many people in New Jersey remember the classic opening theme song of "The Andy Griffith Show," which aired on CBS from 1960 to 1968. Now, the tune is the subject of a legal dispute as heirs of its composer allege that CBS continues to use the song without a proper license. The song, known as "Theme for the Andy Griffith Show," was written in the 1950s by two songwriters who later registered its copyright in 1960. The songwriters later gave the rights to the song to the Larabee Music partnership and passed them on after death to two trusts.

The trusts dissolved the partnership and transferred ownership of the copyrights to two more trusts designed to benefit the composer's heirs. Now, they are accusing the television network of selling DVDs of the show without a proper license for the music. They say that CBS is relying on an invalid 1978 agreement that does not include DVD distribution within its scope; they allege that the network failed to agree to a new contract with the heirs to use the song or to stop publishing and promoting the DVDs. They say that the network has actually expanded its use of the music by licensing the series for online distribution on Amazon, iTunes and other digital distribution networks.

Supreme Court ruling protects trademark licensees

Trademark licensees in New Jersey often depend on an agreement with the trademark holder that allows the licensee to operate significant amounts of a business. The sale and marketing of licensed products can be a major income stream for trademark holders as well as for the licensees who purchased the right to sell those items. However, when a trademark owner files for bankruptcy, it may attempt to reject the trademark license in order to obtain additional funds as part of its bankruptcy reorganization.

However, the U.S. Supreme Court has sided with trademark licensees in a ruling that prevents trademark owners from abandoning their licenses in case of bankruptcy. Specifically, the court ruled that they could not terminate the rights of their licensees simply by repudiating the license during bankruptcy. The court said that rejecting the license is only a breach and does not serve to terminate the licensee's rights. While a bankrupt company can stop doing additional work under the license, it cannot rescind a license that was already purchased and conveyed by the licensee.

Drug maker settles dispute over patent allowing sale of copycat

A complicated aspect of business innovation in New Jersey and throughout the world is how to protect a product and prevent infringement on intellectual property. This is a prominent issue with drug makers. In May, a drug maker embroiled in a patent dispute over Humira reached a settlement over the issue.

The company that held what is called a "patent thicket" and a company from Germany seeking to release a copy of the drug agreed that the generic version can go to market. The German company will pay royalties to the drug maker that owns the medication. There was ongoing litigation settled with the agreement. The German company now has the freedom to join the U.S. market for the drug.

R&B singer sues former band members over use of group name

The former lead singer of an R&B group that has some New Jersey fans is suing two other band members for trademark infringement over use of the band name. The defendants have used the band name in promotions for their recent tour.

The group, which became popular in the 1990's, had won several Grammy Awards for past hits and had several songs reaching the top 40 hit list. The singer left to begin a solo career in 2008. Subsequently, the band reunited but the members are not currently working together. Two members are attempting to obtain concert dates and are utilizing the name of the former band, according to the lawsuit.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

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Flanders, NJ 07836

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