Speaking about Trademarks, Copyright and the Internet, by Chicago Trademark Attorney Mark V.B. Partridge, Partner, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, Illinois

www.GuidingRights.com

www.Pattishall.com

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Guiding Rights
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ORDER BOOK HERE

GUIDING RIGHTS: Trademarks, Copyright and the Internet, by Mark V.B. Partridge, explains the trademark and copyright principles guiding rights on the Internet in clear and accessible terms.

$24.95 hard cover; $14.95 paperback
ISBN: 0-595-65957-8

"This collection of short articles on a wide range of issues of copyright and trademark law, by one of the nation's most prominent trademark lawyers, manages to convey the nuance of the subject in language that is clear and immensely readable. This is a hugely versatile book. For scholars, the book contains valuable insights; law students will come to rely on it to explain difficult concepts in easy-to-understand terms; and practioners will be scanning it for help with some of the knottiest problems around."

Graeme Dinwoodie, Professor, Associate Dean and Director of the Program in Intellectual Property Law, Chicago-Kent, College of Law

ORDER BOOK HERE

"Guiding Rights is a unique presentation of information covering key concepts relating to the protection, enforcement and licensing of trademarks and copyrights. Mr. Partridge presents a well organized compilation of lessons that provide practical insight for understanding and handling many trademark and copyright issues that arise for companies in everyday life. Also the book discusses in a concise and effective manner the effect of significant cases from both the distant and recent past which helped shape important trademark and copyright principles."

Harrie Samaras, Attorney, Chair, Committee on Intellectual Property Organizations, AIPLA

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View Article  Chicago Tribune on Google Bombing

Tribune Internet critic Steve Johnson writes, "Google Bombs put searchers on the wrong path," available here. 

Johnson provides a fun take on google bombing, stating:

These results show up because people who followed their parents' advice to study computer science instead of English literature have analyzed Google and other search engines and figured out that they can be manipulated.

See article for more.

   more »
View Article  Intellectual Property is Your Greatest Asset: New Seminar Provides Strategies and Tips for Increasing the Value of Your Business

Intelletual Property is your greatest asset.

IP makes you or your business worth more than you can be worth on your own. IP lets you command a premium for your services. It lets you make money in your sleep. It lets you create a business that can be sold to others or passed on to your heirs.

Consider these business examples:

1. Generic cola v. COKE. Why is one worth more? Because Coca-Cola has used IP to enhance the value of a simple commodity. It receives a premium because it has a secret formula and a distinctive well-known brand. Generic ...   more »

View Article  Le Book Infringement Claim Rejected

SDNY District Court slams shut Le Book Publishing copyright claim against Black Book Publishing, reports David Walker in "Le Book Calls Black Book "Cheap Imitation"; Judge Is Unswayed" 

The defendant copied directory listings from the plaintiff's directory, but not the arrangement, so no relief from the court, which states:

"It is a basic principle of copyright law that facts [such as directory listings] cannot be copyrighted, no matter how much effort has been put into discovering and compiling these facts."

 

   more »
View Article  More on Jack Radio: Suing When We Want

SparkNet claims rights in Jack and the slogan "playing what we want," but was not successful pursuing its claim recently in Illinois, according to this article:

Not everyone sees things SparkNet's way. Earlier this month, a magistrate judge in U.S. District Court for Northern Illinois ruled in favor of Bonneville International Corp. in a trademark infringement case SparkNet filed. The judge ruled that Bonneville's use of the slogans "whatever we feel like" and "whatever we want" didn't constitute infringement, adding, "This battle is better fought in the marketplace than in the court. ... If every radio station that adopts a slogan ...   more »

View Article  Can't Register President

This week in class we talked about the prohibition in Section 2 of the Lanham Act on registering trademarks based on the name or depiction of a living president or a dead president during the life of his widow (yes, the statute still says "his widow"). 

So this story is apropos:

"Clinton Finds Himself on Cover of Condom Packs"

Perhaps he was hoping for the cover of Rolling Stone.

   more »
View Article  American Girl Typosquatter Suit Dismissed for Lack of Jurisdiction

A Wisconsin federal court has dismissed TRO action against Vancouver registrar and undisclosed registrant of www.amercangirl.com site.  Court proposes ICANN UDRP and ACPA in rem actions as alternatives.

American Girl LLC v. Nameview Inc., (E.D. Wis. 8/9/05)

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View Article  Marlon Brando Estate Recovers Domain Name

The Nation Arbitration Forum has released this decision: 

The Estate of Marlon Brando v. thewordbank twb, Claim Number: FA0506000505502,

http://www.arb-forum.com/domains/decisions/505502.htm

Panelist Hugh Putnam decides in favor of the Complainant, stating:

Respondent registered the <marlonbrando.net> domain name to prevent Complainant from reflecting its MARLON BRANDO mark in a corresponding domain name.  Furthermore, based on an article published in Artnet Magazine, Respondent has engaged in a pattern of such conduct by registering several domain names with the proper names of artists and celebrities.  These circumstances are evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  ...   more »

View Article  Former Colleague Blogs Too.

My former colleague Mark McKenna, now a professor at Saint Louis University, is the guest blogger for Eric Goldman, a professor at Marquette.  Visit the site here.

Eric and I met in person at the ABA meeting in Chicago last month.

Mark and I worked together for several years before his move to academia.

It's nice to see Mark online.

It's a small world after all. . .

   more »
View Article  Thoughts on Building An IP Practice: Rainmaking Book Suggestions

In recent months I've met with many former students and new attorneys who have asked for advice on developing an IP practice.

I meet this request with mixed feelings.  First, what do I know?  As any practicing lawyer is likely to say, I'm still practicing.  I've got a long way to go.  On the other hand, I've been at this some 24 years.  So. . .

I've commented here before about how to get started.  Advice to a Young Attorney.

Moving to the next step in private, you should think about building business.  Here are some book titles I've ...   more »

View Article  Internet Advertising Update: Google and Geico Settle
This is one of the hot topics in trademark law, with cases coming out on both sides of the issue. Here are some legal articles, cases and other materials providing background and commentary on the issue. I will update this from time as additional relevant materials come to my attention and welcome your contributions.
 
New Update Available Here
 
   more »
View Article  Good Faith Registration of missarizonausa.com Trumps Bad Faith Use

Miss Universe L.P. LLLP challenged former licensee's continued use of the domain name www.missarizonausa.com based on its rights in the marks MISS ARIZONA and MISS USA.

Miss Universe L.P., LLLP v. A Visual Group, Case No. D2005-0738

Panelist Dennis Foster denied relief, stating:

The Policy at paragraph 4(a)(iii) calls on Complainant to show bad faith in both registration and use. By Complainant’s own admission, when Respondent registered the disputed domain name in 1998, it did so with Complainant’s consent and thereafter used it to help Complainant carry on its business of organizing MISS ARIZONA beauty pageants until the license expired ...   more »

View Article  Respondent's Long Use of JACUZZI in Australia Prevails in Domain Name Dispute

Jacuzzi, Inc., owner of rights in the mark JACUZZI, challenged the domain name jacuzzi.net.au in this first WIPO decision involving the .au domain.  The Australian respondent had used the JACUZZI name for nearly 15 years.

Jacuzzi, Inc. v. Wangra Pty Ltd, Case No. DAU2005-0001

A three-member Panel denied relief, stating:

In its Amended Response, the Respondent answers, first, that a company related to the sole director and shareholder of the Respondent started to carry on business under the name Jacuzzi from the Hallam store in October 1991. It also registered the business name Jacuzzi in the Victorian Register of Business ...   more »

View Article  Application for Copyright Registration Insufficient for Jurisdiction

Applying for copyright registration is not sufficient for federal court jurisdiction, Tenth Circuit Holds.  La Resolana Architects PA v. Clay Realtors Angel Fire, (10th Cir., July 26, 2005).

Similar ruling reported here.

   more »
View Article  Supplemental Registration Fails To Establish Rights Under ICANN UDRP

Oil Changer, Inc. challenged registration of www.oilchanger.com based on alleged marks appearing on the U.S. Supplemental Trademark Register.

Oil Changer, Inc. v. Name Administration, Inc., Case No. D2005-0530

Panelist Richard Page denied relief, stating:

Prior WIPO panels have noted that the presumptions which arise from registration in the Principal Register are not available to registrations on the Supplemental Register.

The Panel further agrees that such registrations are an admission that the OIL CHANGER and OIL CHANGERS Marks were not inherently distinctive at the time of application for registration of the Marks and that they had not yet acquired secondary meaning. ...   more »

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Mark VB Partridge
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CONTACT INFORMATION

Mark V.B. Partridge
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
311 S. Wacker Drive Suite 5000
Chicago, Illinois 60606

312-554-8000

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