Guiding Rights Blog

Smashing Pumpkins Smash Virgin Records with Law Suit

Mark VB Partridge — Wed, 26 Mar 2008 12:27:15 -0500

Smashing Pumpkins sue Virgin Records alleging unauthorized use of band's name, music and image in Pepsi commercial. Read more at Crain's Chicago Business.

Federal Judges Speak Out On Intellectual Property Litigation

Mark VB Partridge — Fri, 21 Mar 2008 15:12:46 -0500

Last month, the Young Lawyers Section of the Chicago Bar Association, hosted a program on intellectual property law, featuring three Federal Court Judges: Virginia Kendall, Rebecca Pallmeyer, and Matthew Kennelly.

The meeting closed with the following litigation mistakes and related nuggets of advice:

1. Too many exhibits. Focus on what you need to prove your case.

2. Useless discovery. You can get by with less.

3. Lack of focus. Make judgments about what is truly significant. Be cost effective.

4. Assuming that questions mean the judge doesn't understand. Visit court and observe the judge.

5. Missing the forest for the ...

Datarecovery.con Sells for $1.7 million

Mark VB Partridge — Mon, 03 Mar 2008 09:00:00 -0600

ESS Data Recovery, Inc.of Edwardsville, Illinois aquires <datarecovery.com> for $1.7 million. More

"Cybersquatting: the Bottom Line" Chicago Bar Association Presentation

Mark VB Partridge — Thu, 28 Feb 2008 09:00:00 -0600

I recently spoke at the Chicago Bar Association on "Cyberquatting: the Bottom Line," focusing on the money being generate by the legitimate and infringing use of domain names by "cyber-entrepreneurs."

A copy of the presentation slides are available on the resources page of my GuidingRights.com site.

This was a reprise of program presented last year at IICLE as part of "Hot Topics in Business Law." The full course materials including video are available here at the IICLE site.

Buidling Your B.R.A.N.D. - The Guiding Rights Newsletter 2:1

Mark VB Partridge — Mon, 18 Feb 2008 09:00:00 -0600

Building and protecting your BRAND is a key facet of creating business success at all levels. Whether you are the manager of a multi-national corporation, a middle-market B-to-B company, a creative professional or an emerging entrepreneur, your BRAND is a key to success.

So what is a BRAND? The popular view is that a brand is merely a name or logo on a tube of toothpaste, a pack of chewing gum or a can of cola. But the popular view is too small.

The concept of BRAND that concerns us here is far bigger, the symbol of all of the ...

Naked Cowboy Sues M&Ms

Mark VB Partridge — Sun, 17 Feb 2008 09:00:00 -0600

Manhattan street star the Naked Cowboy claims M&Ms has infringed his trademark by using his likeness in advertising. He wants $2m but where not sure where he'll keep it. Read more here.

Yoko Sues Singer Over Use of Lennon

Mark VB Partridge — Wed, 13 Feb 2008 09:00:00 -0600

John Lennon's widow Yoko Ono has sued singer Lennon Murphy over the name LENNON. John Lennon's son Julian sides with Lennon Murphy.

This case poses the often challenging questions: Does a person have a right to use their own name as a trademark if it is confusingly similar to another's name or mark? And who has standing to complain?

Could Harrison Ford use his own last name as a brand for automobiles?

Could my Scottish friend Charters McDonald Brown open McDonald's restaurants selling McHaggis dinners?

More on LENNON available here.

Law Bulletin IP Seminar Features Pattishall Attorney

Mark VB Partridge — Tue, 12 Feb 2008 11:11:23 -0600

The Law Bulletin is hosting a seminar on "Corporate IP" in Chicago on February 19. The program includes my partner Thad Chaloemtiarana on Licensing. Aside from being my partner, Thad is one of the most knowledgeable experts on IP licensing, especially computer software and Internet based licensing, that I know. More on the program available here.

Use of PROGRESSIVE Leads to Infringement Dispute

Mark VB Partridge — Mon, 11 Feb 2008 09:44:23 -0600

A paint and body shop in Crestview, Florida earns infringement suit from the Progressive insurance company over allegedly improper use of the Progressive logo. Read more here.

ASCAP Sues Metropolis Radio Station; Pattishall Respresents Plaintiff

Mark VB Partridge — Wed, 21 Nov 2007 09:31:52 -0600

Copyright infringement. It even happens in Superman's hometown - Metropolis. My colleague Jared Solovay has filed suit for ASCAP against WRIK-FM in Metropolis, Illinois. Read more in The Madison St. Clair Record.

Iconix Shows How To Make Money With IP Rights

Mark VB Partridge — Tue, 06 Nov 2007 13:46:06 -0600

Many businesses recognize that most of the value of their organization now involves intangible assets including IP. Iconix Brand Group Inc. takes this a step farther. It is an example of a business that has moved away from the old economy of manufacturing and selling goods and services to a business apparently based completely on the value of brands. Iconix's entire business involves the ownership and licensing of consumer brands, such as RAMPAGE, JOE BOXER, LONDON FOG, OCEAN PACIFIC, MUDD, MOSSIMO and others. It licenses the brands. Others make and sell the products. Iconix enjoys annual revenue of $80.7 million ...

Howard Stern's Cousin Sues Over Bee Movie

Mark VB Partridge — Fri, 02 Nov 2007 10:07:22 -0500

Blomberg.com reports here that Howard Stern's cousin Richie Gerber, owner of BeeCeuticals LLC, has sued Dreamworks and Paramount for trademark infringement based on the slogan "give bees a chance" to promote the animated film "Bee Movie". The mediator in me thinks they should "Give peace a chance." The litigator in me wonders if Yoko Ono still has rights in "Give Peace A Chance." But then, I'm easily confused (he writes with a wink).

Small Business Success - The Guiding Rights Newsletter 1:5

Mark VB Partridge — Wed, 17 Oct 2007 10:00:00 -0500

When I speak to business owners, entrepreneurs and CEOs, they often want to know how a small businesses can capitalize on intellectual property. They wonder, is IP protection for big firms only? What difference does IP make to them? Sure, it's nice to know that IBM earns billions each year in royalty payments on its IP portfolio, but what about the rest of us?

Here's a small business success story built on IP rights. It involves a small group of software developers led by a college drop-out. Like many developers, they were hired to do ...

Google Claims Victory in Settlement with American Blind

Mark VB Partridge — Tue, 04 Sep 2007 21:02:21 -0500

Google claims victory as a result of a settlement of the adword infringement claim brought by American Blind. See New York Times report here.

Full report and copy of settlement agreement is available at Eric Goldman's Technology and Marketing Law Blog here.

Plagiarism, Fair Use and Infringement: The Meter Drops On Anthony Robbins - The Guiding Rights Newsletter 1:4

Mark VB Partridge — Fri, 24 Aug 2007 16:17:14 -0500

When I speak on copyright and plagiarism, two key questions often arise: First, how much does someone have to copy to be an infringer? Second, how much do I risk if I copy someone else's work? The answers are "not much" and "a lot."

Here's a tale to illustrate the point.

THE METER DROPS

Wade B. Cook is a former taxi cab driver in New York City. He did not spend his time watching soaps on a portable TV plugged into the cigarette lighter socket. Instead, he wrote. In 1995 ...

James Brown's Heirs Win Right To Sue Over Singer's Image

Mark VB Partridge — Mon, 06 Aug 2007 10:26:30 -0500

An Illinois court has ruled that the heirs of James Brown can proceed with their lawsuit against an Internet stock photo library for unauthorized sale of his image. James Brown et. al. v. ACMI Pop Division et. al., No. 1-06-08709 (Ill. 1st App. Ct., August 2, 2007).

IICLE Seminar on "Hot Topics in Business Law" Features Chicago Trademark Attorney Mark Partridge

Mark VB Partridge — Thu, 02 Aug 2007 17:21:57 -0500

Press Release - August 2, 2007

The Illinois Institute for Continuing Legal Education (IICLE) has announced that its September seminar on "Hot Topics in Business Law" will including Chicago trademark attorney Mark V.B. Partridge. Mr. Partridge's topic is "Intellectual Property Update: Resolving Disputes with Cybersquatters."

"I'm delighted to be part of the distinguished program," Partridge said, "both because of the quality of IICLE as a provider of continuing education in general and because of the quality and range of presentations on the hot topics program."

Mr. Partridge is a partner with the Chicago firm Pattishall, McAuliffe, Newbury, Hilliard & Geraldson ...

Protecting Your Brand: The Billion Dollar Cookie - The Guiding Rights Newsletter 1:3

Mark VB Partridge — Mon, 30 Jul 2007 10:00:00 -0500

The billion dollar cookie is a story about the importance of brands. Why would anyone pay a billion dollars for a cookie?

Join me on a trip to New York to learn why.

It's Tuesday morning, June 6, 1989. Picture yourself in a law firm conference room overlooking Manhattan. You are Henry Kravis, the leader of the investment firm KKR, which recently captured massive public attention by completing a leveraged buyout of R.J.R. Nabisco, for $25 billion.

You are in New York for the sale of the Nabisco European cookie, cracker and peanut business.

You're standing in that conference room ...

The National Speakers Association Convention - Trademark Registration for Speakers

Mark VB Partridge — Mon, 09 Jul 2007 08:30:10 -0500

I arrived in San Diego for the National Speakers Association Convention mid-day on Sunday. At the registration desk I met up with fellow NSA Illinois member Dr. Michael Mercer, an expert on pre-employment testing. The author of numerous books and two blogs, Dr. Mercer has established himself as the go-to expert on pre-employment testing for the HR industry. Learn more about his work and subscribe to his free newsletter at www.pre-employmenttests.com.

Dr. Mercer and I discussed a wide range of topics including trademark registration for speakers. With the help of a live wireless internet connection, I took ...

National Speakers Association Convention Starts July 9

Mark VB Partridge — Sun, 08 Jul 2007 07:40:51 -0500

I will be leaving today for San Diego to attend the National Speakers Association Annual Convention. I attended my first local chapter meeting of NSA five years ago at the invitation of my friend and former neighbor Cyndi Maxey when she began her term as chapter president. I found it an inspiring group, both for development as a practicing lawyer and for developing as a speaker. I've stayed active since. In fact, I have been elected president of the Illinois chapter, taking the helm at the start of this month. I'll report more about the convention as the week ...

Four Hour Work Week Faces Infringement Problems

Mark VB Partridge — Thu, 05 Jul 2007 10:00:00 -0500

For those of you who want to change your life or simply dream about doing so, I recommend you check out the new best seller "The Four Hour Work Week" by Tim Ferris. Learn more about it at his site here.

His latest blog entry shows that even people who only work four hours a week face infringement problems. He writes:

It has also come to my attention that a number of individuals are using the 4HWW content and trademarks to sell derivative products, primarily online (even linking from my forums!). This includes using the 4HWW trademarks in GoogleAdwords ...

Domain Name Parking A Growing Industry

Mark VB Partridge — Thu, 28 Jun 2007 10:00:00 -0500

Domain name parking is a rampant trend, attracting a wide range of entrepreneurs and media attention, as demonstrated by this story in the New York Times: "More than just squatting (on domain names," by Louise Story.

Small Firms May Survive After All

Mark VB Partridge — Fri, 22 Jun 2007 09:57:24 -0500

Sun Microsystems GC Mike Dillon has a blog called "The Legal Thing: Notes from a General Counsel." A recent post gives hope to attorneys in small specialized firms. Mr. Dillion notes how the law firm's role as an aggregator of legal talent has decreased in importance with the growth of effective Internet communication. His interesting post "The Way of the Mastodon" says, in part:

"Let me begin by asking - what is the function of the law firm? My view is that law firms serve primarily as aggregators of specialized legal expertise. . . . this ...

ABC Retreats on "Sam I Am" after Dr. Seuss Objects

Mark VB Partridge — Thu, 21 Jun 2007 10:00:00 -0500

Dr. Suess remains vigilant in protecting his trademarks and copyrights (you will remember the battle against Dr. Juice and The Cat Not In The Hat).

Now ABC has backed off use of the name "Sam I Am" after objection. More available in this story from AHN.

Intellectual Property Trials Disappear

Mark VB Partridge — Fri, 15 Jun 2007 10:00:00 -0500

During final preparation for my Illinois State Bar Association program on "ADR in IP" I checked recent federal court statistics on trials for IP cases. I was amazed.

We've all heard about the declining number of federal court trials overall. For the period ending September 30, 2006, the percent of cases terminated during or after trial was down to 1.3%.

The figures on IP cases is even more astounding. For the same period the number of IP cases terminated during or after trial were:

16 Trademark
23 Copyright
71 Patent

For the entire federal system!

Where have all the trials ...

"Disinfectable" Is Generic

Mark VB Partridge — Thu, 14 Jun 2007 10:00:00 -0500

Wouldn't life be different if your clients started with a protectable mark?

A recent case decided by the 9th Circuit is a good example. Rudolph International Inc. v. Realys, Inc., 82 U.S.P.Q.2d 1375 (9th Cir. 2007).

The plaintiff started using the term "disinfectable" for nail files in April 2001. The term was used as a descriptor with established brand names such as SOFT TOUCH, LES MIRAGES and QUADMETRICS. The company's founder advocated industry use of the term to replace "sanitizable." An application for trademark registration was rejected the Trademark Office.

These facts notwithstanding, the plaintiff brought suit against use ...

PepsiCo Loses Blue Storm Ruling in China

Mark VB Partridge — Wed, 13 Jun 2007 10:00:00 -0500

Forbes.com reports on "Mosquito v. Pepsico." A high court in China ruled against Pepsico in favor of a local beer company over the use of BLUE STORM. Read more at forbes.com.

ADR in IP: Is there a better way?

Mark VB Partridge — Tue, 12 Jun 2007 10:00:00 -0500

The AIPLA Economic Survey reports that the average cost for patent litigation disputes is over $5,000,000.00 where the amount in controversy exceeds $25 million. This begs the question: "Is there a better way?"

I will be speaking at a Illinois State Bar Association CLE program on June 14 in Chicago and on June 28 in Bloomington. My topic, "Alternative Dispute Resolution in Intellectual Property Disputes." My thesis: ADR, especially mediation, is an effective tool for IP disputes that can achieve better results, quicker, at a lower cost, than traditional litigation.

The title of my talk is "ADR in IP: Is there a better way?" ...

Vistage Group In Dallas Hosts Chicago Trademark Attorney Mark Partridge

Mark VB Partridge — Mon, 11 Jun 2007 13:00:00 -0500

Last week, I spoke to a Vistage Group in Dallas on "Intellectual Property is Your Greatest Asset: Protect It, Use It, or Lose It." The Group is chaired by Linda Swindling, a former attorney who now helps businesses achieve success in negotiations.

Vistage is the world's largest CEO membership organization. I'm a member of a Chicago group and a resource speaker for the organization.

The attendees at the meeting receives a workbook on "The Guiding Rights Process," a multi-step system I use to help business leaders protect their intellectual capital without losing their shirt. To receive a free copy ...

TTAB Default Does Not Bar Federal Civil Action

Mark VB Partridge — Fri, 08 Jun 2007 10:00:00 -0500

Default judgment entered against plaintiff in trademark cancellation proceeding does not bar plaintiff from bringing civil action in federal court, says New York court in Santos v. Hecht, 82 U.S.P.Q.2d 1542 (E.D.N.Y. 2006).