Guiding Rights Blog

Click Through Agreement Cases

Mark VB Partridge — Fri, 19 Feb 2010 14:31:00 -0600

New decision:

Scherillo v. Dun & Bradstreet, Inc., 2010 WL 537805 (E.D.N.Y. Feb. 17, 2010).

Good report from Eric Goldman.

AIPLA Meeting

Mark VB Partridge — Thu, 28 Jan 2010 15:36:00 -0600

I haven't been to an AIPLA meeting for quite a while. I've missed them. It is particularly nice to see again my fellow board members from my days on the Board in the early 00s. Many of the programs at this meeting focus on IP as a business asset, a valuable change from the days when IP was viewed only as a legal right. This afternoon I'll attend the session on buying and selling IP, as well as a committee meeting of the Fellows.

Do you find association activities worthwhile? Share your thoughts.

Trademark Infringement Litigation Course

Mark VB Partridge — Tue, 26 Jan 2010 21:11:00 -0600

Yesterday, Phil Barengolts and I started our winter LLM class at John Marshall on Trademark Litigation. We have a great group of students, including experienced practitioners (one student works at the USPTO and flies in once a week for classes at JM). In our first session we discussed the importance of knowing your client's goals, investigating, and creating a realistic strategy, especially in our times of high legal expense for litigation. We move on to forum selection and complaints next. My question for you: What makes trademark litigation special, unique, different from other types of litigation? Anything? What do you ...

Will ICANN Protect IP Rights?

Mark VB Partridge — Fri, 20 Nov 2009 16:42:00 -0600

ICANN is in the middle of plans for launching new gTLDs. I'm serving on a team called the STI to consider mechanisms to protect IP rights. These are important issues - Overarching Issues, ICANN calls it - which create a lot of interest and controversy. ICANN's public face provides assurance to brand owners. A September 22, 2009 letter to the House Committee on the Judiciary states:

"ICANN will, to the extent possible, protect trademark holders from abusive registrations and from the need for defensive registrations in new gTLDs. . ."

Persons attending the ICANN meetings in Sydney and Seoul this ...

ICANN IPC Submits Position Statement on Rights Protection

Mark VB Partridge — Sat, 07 Nov 2009 13:17:00 -0600

The ICANN GNSO has formed a committee called the STI (Special Trademarks Issues) to consider the use of a Rights Clearinghouse and Uniform Rapid Suspension policy for the introduction of new gTLDs. The Intellectual Property Constituency has posted its position statement in support of rights protection. A copy of the statement appears below (full disclosure: I am a member of the IPC and STI).

"The Intellectual Property Constituency position on the proposed amendments made by ICANN staff to the IRT report is straightforward. While we are not entirely satisfied with the IRT report and believe that other safeguards are needed, ...

Protecting And Defending Your Brand - Teleseminar June 11

Mark VB Partridge — Mon, 01 Jun 2009 16:22:00 -0500

You're invited to the following teleseminar on June 11, 2009. Please contact samantha@mikkiwilliams.com to RSVP.

A strong brand is essential in this economic climate. Your brand differentiates you from the competition and confirms your credibility.

Learn how to create your brand and how to protect it in this engaging and informative
TELESEMINAR on BRANDING
***ONLY $29***
June 11, 2009 at 12:00 Noon (CST)
for approximately 60 minutes

HOW TO BE YOU-NIQUE!
Mikki Williams, CSP
"We're all born unique, we just die as copies." Whoever said that never met Mikki Williams. In her nine entrepreneurial companies she has used the same ...

New gTLDs: Does anyone care?

Mark VB Partridge — Thu, 09 Apr 2009 09:52:00 -0500

ICANN is working on plans to allow operation of an unlimited number of Top Level Domains, or TLDs. I am a member of an Implementation Recommendation Team, created by the ICANN Board to develop procedures to avoid user confusion and trademark infringement in the new gTLD space. As a result, I am interested to see the reaction of the Internet and business community to the new gTLDs. So far, most comments I receive are skeptical. This attitude is reflected in an article posted yesterday on The Industry Standard - "Latest Plan for Domain Names is as Doomed as .coop and ...

Association Forum Hosts Attorney Mark Partridge on Intellectual Capital Management

Mark VB Partridge — Tue, 24 Mar 2009 13:47:00 -0500

Mark will be speaking at the Association Forum of Chicagoland on March 31, 2009.

Using Intellectual Capital to Step Up Your Business in a Down Economy

Intellectual capital is your most valuable business assets, and its importance rises even higher in a down economy. Organizations that learn to leverage their brands, content and information grow faster, according to recent economics studies. The challenge is how to avoid becoming a commodity or losing valuable rights at a reasonable cost. In this program, you will learn:

* Why intellectual capital is your most valuable asset in a down economy
* How to ...

#5 Trademark Law Development of 2008: Medinol Fraud

Mark VB Partridge — Wed, 18 Mar 2009 21:04:00 -0500

#5 Trademark Law Development of 2008: Medinol Fraud

SHRM Top Rated Speaker List 2008 Includes Trademark Attorney Mark Partridge

Mark VB Partridge — Mon, 16 Mar 2009 15:08:00 -0500

The Society for Human Resource Management (SHRM) has published its list of top-rated speakers from its annual convention in 2008. I honored to lead the list and look forward to speaking for SHRM again at its annual convention in 2009 in New Orleans. Please let me know if you would like to arrange a similar program for your company, association or organization. 312-554-8000.

#4 Trademark Law Development of 2008: Non-commercial Speech

Mark VB Partridge — Sun, 15 Mar 2009 16:00:00 -0500

#4 Trademark Law Development of 2008: Non-commercial Speech:

New Book: "Alternative Dispute Resolution - An Essential Competency for Lawyers" By Mark Partridge, Trademark Lawyer and Mediator

Mark VB Partridge — Sat, 14 Mar 2009 16:37:00 -0500

I'm pleased to announce that I have a new book coming out from Oxford University Press in May 2009 entitled "Alternative Dispute Resolution: An Essential Competency For Lawyers." Client demands have caused ADR to become a mainstream discipline. It's time to master the skills. Learn why and how in my new book. More info at the publisher's site.

$4.5 Million Awarded in Trademark Infringement and Telemarketing Fraud Suit

Mark VB Partridge — Fri, 13 Mar 2009 14:30:00 -0500

Janet Marvel and Jared Solovay of Pattishall, McAuliffe in Chicago, obtained a judgment for $4.5 million from the U.S. District Court of the Northern District of Illinois on behalf of their client Medline Industries, Inc. in Medline Industries, Inc. v. Strategic Commercial Solutions, Inc., et al., 07 CV 2783.

Defendants Strategic Commercial Solutions and Mohammed Abukhalid were found to have violated the Telemarketing and Consumer Fraud and Abuse Prevention Act, 15 U.S.C. § 6101 et seq., as well as committed trademark infringement by using Medline's name in connection with a fraudulent telemarketing scheme operated under the name Medline Savings.

$2 Million Plus Awarded in Trademark Infringement Case

Mark VB Partridge — Fri, 13 Mar 2009 14:29:00 -0500

Brett August and Andrew Downer at Pattishall, McAuliffe obtained judgment for $2 million in trademark infringement litigation.

Judge Elaine Bucklo of the United States District Court for the Northern District of Illinois today awarded over $2 million to Paxar Corporation, f/k/a Monarch Marking Systems and now a wholly-owned subsidiary of Avery Dennison Corp., in a lawsuit handled by Pattishall, McAuliffe. The award in this trademark infringement and unfair competition case was for damages, costs and attorneys' fees under a 1995 consent judgment against Kap Graphics, Inc., and Larry Fern.

#3 Trademark Development of 2008: Artistic Expression - strip club in video game

Mark VB Partridge — Sun, 01 Mar 2009 09:47:00 -0600

#3 Trademark Development of 2008: Artistic Expression - strip club in video game

#2 Trademark Law Development of 2008: Dilution Dilution

Mark VB Partridge — Tue, 24 Feb 2009 14:30:00 -0600

#2 Trademark Law Development of 2008: Dilution Dilution

#1 Trademark Law Developement of 2008: Famous Marks Doctrine

Mark VB Partridge — Tue, 24 Feb 2009 14:27:00 -0600

I am speaking on Friday February 27, 2009, at the John Marshall Annual Conference on Intellectual Property Law on the top ten trademark law developments of 2008. Here they are:

#1 Trademark Law Developement of 2008: Famous Marks Doctrine

Trademark Owners Should Consider .mp Domain Name Registration

Mark VB Partridge — Fri, 20 Feb 2009 10:50:00 -0600

Saipan DataCom, Inc.’s upcoming late March 2009 open launch of chi.mp (“Content Hub & Identity Management Platform) has implications for trademark holders that seem to have gone unnoticed to date. Chi.mp is a free platform that enables social network users to create social hubs on their own stand-alone hosted Web sites. Each chi.mp site includes a free .mp second-level domain. Registration is open worldwide and registrants need only provide a valid email address to complete the process.

Social networks are evolving away from “walled gardens” where users’ profiles and content are held within a particular site such as Facebook (see: ...

"Copyrights and Wrongs" - The Guiding Rights Newsletter 3:1

Admin — Sat, 07 Feb 2009 10:44:00 -0600

Speakers, trainers, creative professionals - content creators of all types - need to be aware of copyright protection when developing presentations, training materials, slides, or handouts. Using another's material can lead to lengthy law suits, expensive legal bills, and large damages payments. Misuse is particularly easy in the Internet age, when copying content, images, video and music is a click away.

Will Plagiarism Chill Coldplay's Grammy Night?

Admin — Sat, 07 Feb 2009 10:23:00 -0600

Guitarist Joe Satriani has sued Coldplay for copyright infringement. Are the songs too close? Compare Satriani's "I Just Want To Fly" with Coldplay's "Viva La Vida."

Listen here

Read more here

Who Owns Obama Poster Rights?

Admin — Sat, 07 Feb 2009 10:12:00 -0600

When an artist creates a poster using another's photograph, who owns the rights? Photographer? Artist? Subject? Someone else? Consider this report on claims involving the famous Obama poster we seem to see everywhere.

Mikki Williams and Friends: Protecting Your Brand

Mark VB Partridge — Thu, 05 Feb 2009 22:06:00 -0600

I'm doing a program with Mikki Williams next month. Check it out. Sign up. Join us for a great event. Follow us here for more details. THE DATE! A new seminar series kicking off on Mar. 26th Mikki will be teaming up with some of her fabulous friends and peers to create unique training days. The first one will debut on the morning of March 26, 2009 on branding, with Mikki and Mark Partridge, to be held at the Union League Club of Chicago. Mikki will speak for 90 minutes on how to become a brand and how to find ...

CEO Club of Boston Hosts Chicago Attorney Mark Partridge

Admin — Mon, 02 Feb 2009 23:16:00 -0600

Mark Partridge will be speaking at The Chief Executive Officers' Club, Boston Chapter, on May 21, 2009. His topic is based on his book Guiding Rights: Trademarks, Copyright and the Internet, and will focus on building and protecting brands in tough economic times. More information is available at www.ceoclubofboston.org.

Trademark Search and Clearance

Mark VB Partridge — Mon, 02 Feb 2009 14:12:00 -0600

One of the first and most common tasks of in-house trademark counsel is searching and clearing potential trademarks. While this is often considered a low-level function, it is one of counsel's most difficult tasks. Analyzing the body of data that results from a trademark search requires knowledge and experience, and the stakes can be high. The expenditure of millions for marketing may ride on counsel's decision and the potential loss from infringement litigation can be similarly high. For the risk adverse, these high stakes may encourage overly cautious opinions by inexperienced counsel. The client is best served ...

Selling Intellectual Property

Mark VB Partridge — Mon, 02 Feb 2009 12:42:00 -0600

One of the key points of our class is that trademarks and other forms of IP are key business assets, not merely legal rights. The point is made well in an article by Ann Meyer entitled "Selling Intellectual Property" in the Chicago Tribune on February 2, 2008. A copy of the article is available here. The online article omits the punch line, however, which was included in the print edition:

"To fetch top dollar, intellectual property needs protection through a trademark, patent or copyright. And you have to be willing to enforce it if someone infringes on your rights."

John Marshall "Trademark Transactions" Course Focuses on Corporate Trademark Practice

Mark VB Partridge — Mon, 26 Jan 2009 14:08:00 -0600

Today is the first day of the class I most enjoy teaching in Law School - Trademark Transactions" - a course on the transactional side of trademark law. The course was originally created to focus on transactions involving trademarks - licenses, assignments, consent agreements, etc. Over time, as trademarks have evolved into increasingly valuable business assets, I've expanded to the focus of the course to deal with all aspects of managing trademarks as a business asset. The course covers all aspects of trademarks faced in Corporate Trademark Practice as seen during nearly 30 years of helping in-house counsel with knotty ...

Talking about IP and Watching the Inauguration in Baltimore

Mark VB Partridge — Sat, 24 Jan 2009 16:00:00 -0600

It's tough to be a warm up act for President Obama, but that was the task on inauguration day. I spoke in Baltimore for a group of CEOs at a meeting at TIC Gums, Inc. My topic: "Guiding Rights: Intellectual Property Is Your Greatest Asset." After we finished discussing strategies for using IP to make more money in business, we watched the inauguration projected larger than life on the conference room wall.

What an amazing sight! The Washington DC mall filled with people as far as the eye can see.

My thanks to Marv Howard and his Vistage Group for ...

Chicago Trademark Attorney Speaks at PCMA

Mark VB Partridge — Sat, 17 Jan 2009 16:27:00 -0600

I returned last week from speaking at the Professional Convention Management Association annual meeting in New Orleans. My topic: "Avoid Lawsuits . . . and Other Legal Problems." When speaking to business groups, whether HR professionals at SHRM, professional speakers at NSA, or business owners and CEOs at Vistage, I find there is much uncertainty about the rules of copyright protection in the Internet world. My advice: when in doubt, ask for permission, talk to a lawyer, or create your own original work.

New Orleans was great. I stayed in the French Quarter (Soniat House) and confined my wandering to ...

Pattishall Client Prevails In Ground-Breaking Domain Name Class Action

Mark VB Partridge — Mon, 12 Jan 2009 09:00:00 -0600

My Pattishall colleagues Brett August, Bradley Cohn and Alexis Payne recently won another round in a closely watched lawsuit involving Google and others regarding allegedly unfair use of domain names. The plaintiffs had attempted to bring a class action against multiple defendants for purported trademark infringement, cybersquatting and deceptive trade practices.

In this important victory on behalf of Pattishall client Internet REIT ("Ireit"), our trial team successfully showed that the many differences among the defendants and the intellectual properties at issue precluded class certification. In refusing to certify the class, the court stated: "class members cannot be treated alike because ...

My Professional Life

Mark VB Partridge — Sat, 10 Jan 2009 12:59:00 -0600

1978 - BA, University of Nebraska, English and Linguistics

1980 - Vice President, Harvard Legal Aid Bureau

1981 - JD, Harvard Law School

1981 - Associate, Pattishall, McAuliffe & Hofstetter

1987 - Adjunct professor, John Marshall Law School

1987 - Partner, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson

1989 - Chair, Trademark and Unfair Competition Committee, American Intellectual Property Law Association

1990 - Arbitrator, Cook County Mandatory Aribtration Program

1994 - Editorial Board, The Trademark Reporter

1996 - Chair, Professional Programs, American Intellectual Property Law Association

1996 - Chair, International Trademark Law Committee, American Bar Association, IP Law Section

1997 ...