First Circuit Affirms Trademark Owners' Ability to Stop Former Franchisees' "Holdover" Use Despite Disclaimer

By Phillip Barengolts

The owner of a trademark generally has unfettered control over the manner in which its mark may be used in connection with goods and services offered in commerce. Thus, one who does not own a trademark but wants to offer products using the mark must seek a license from the mark's owner. After such a license has been terminated, the former licensee has no right to continue using the mark. See, e.g., Burger King Corp. v. Mason, 710 F.2d 1480, 1493 (11th Cir. 1983) ("[M]any courts have held that continued trademark use by one whose trademark license has been cancelled satisfies the likelihood of confusion test and constitutes trademark infringement."); Church of Scientology Int'l v. Elmira Mission of Church of Scientology, 794 F.2d 38 (2nd Cir. 1986)...[MORE]

Government Filings Made Publicly Available Through Government Web Sites May Maintain Copyright Protection

by Phillip Barengolts

Nowadays, nearly all filings to a federal court or an administrative agency, such as the USPTO or the SEC, are available to the general public through government web sites (e.g., PACER, EDGAR, TESS, PAIR, and others). Businesses (and lawyers) often wonder whether their submissions are protected by copyright or if copying another's publicly available document violates copyright law. In a matter of first impression, one court recently found that copying a work that is available to download and use through a government web site may constitute copyright infringement...[MORE]

New .co Domain Names Now Available

By Alexis Payne, Esq.

Beginning July 20, 2010, the registry operator of the .co top-level domain, .CO Internet S.A.S., is making .co domains available to the general public through registers such as GoDaddy.com, Network Solutions, and Register.com. The move opens the .co top-level domain, which was once the country code top-level domain ("ccTLD") for Colombia, to the general public...[MORE]

New Virginia Promotions Statute to Take Effect on July 1, 2010

By Alexis Payne, Esq.

Effective July 1, 2010, a new gambling statute will go into effect in Virginia that could affect promotions conducted in the state. See Va. Code §§ 18.2 325, 18.2-325.1. The law provides that "any lawful game, contest, lottery, scheme, or promotional offering (the contest) may be conducted" so long as the sponsor satisfies several new disclosure requirements set out in the newly-added provision. Va. Code § 18.2-325.1. For instance, the sponsoring entity must make available a method of free entry to all participants who wish to enter the contest without purchase. Further, any implicated promotion must provide an equal opportunity to play and equal odds of winning for all participants. The new law also requires various written disclosures, including the terms and conditions of entry, the official promotion rules, the manner in which to request free entry, and the identity of the contest sponsor, among other required disclosures...[MORE]

Google's Alleged Licensing of Domain Names as Part of its AdSense Program may Subject it to Liability under Anticybersquatting Consumer Protection Act

by Phillip Barengolts, Trademark Attorney

In a case that tests the limits of contributory liability under the Anticybersquatting Consumer Protection Act (ACPA), Judge Blanche Manning of the Northern District of Illinois denied defendant Google's motion for summary judgment on the plaintiffs' cybersquatting claim that Google should be held liable for servicing the parking pages of registrants' allegedly cybersquatting domain names...[MORE]

Supreme Court Makes the Call: NFL Not Exempt from Antitrust Law when Licensing Team Trademarks for Merchandise

By Uli Widmaier, Esq.

Reversing the Seventh Circuit, the Supreme Court unanimously held that the National Football League's trademark licensing activities are “not categorically beyond the coverage” of federal antitrust laws. American Needle, Inc., v. NFL, No. 08-661, slip op. at 1 (S. Ct. May 24, 2010). The Court concluded that the league's actions constitute “concerted activity” under Section 1 of the Sherman Act, meaning that, on remand, the district court will evaluate American Needle's claims under the Rule of Reason standard...[MORE]

Second Circuit Rules against J.D. Salinger, Invalidates Presumption of Irreparable Harm when Considering Preliminary Injunctions in Copyright Cases

by Phillip Barengolts, Trademark Attorney

J.D. Salinger wrote The Catcher in the Rye, became a sensation, and then disappeared—except for the occasional copyright suit. In Salinger v. Colting, No. 09-2878-cv, slip op. (2d Cir. Apr. 30, 2010), the Second Circuit vacated and remanded for further consideration the district court's decision to grant Salinger a preliminary injunction against the publication in the United States of Frederick Colting's 60 Years Later: Coming Through the Rye...[MORE]