Posts Tagged: "cease and desist"

New technologies create novel issues and inform our understanding of existing laws. The statutes that form the basis of the U.S. IP regime are decades old and, as such, could not have contemplated how technology (and technology-assisted infringement) would evolve. As a result, traditional methods of IP enforcement often lag behind the rapidly changing online environment. Though Congress has taken steps to modernize these sometimes antiquated laws—for example, the America Invents Act made significant changes to the U.S. patent system in 2016 and the Music Modernization Act updated the music licensing and royalty framework to account for digital streaming platforms like Spotify in 2018—these updates almost always function as an ex post solution to a problem that was already present. The core questions of what is “protectable,” what is “infringement” and what is “willful” in view of the fundamental shifts in technological advancement remain squarely in the gray.

In devices such as the iPhone, Apple and Intel merely operate on the technological connectivity platform Qualcomm created. In short, what Intel does well doesn’t compete meaningfully with Qualcomm where American 5G leadership is concerned… Apple’s cavalier conduct toward other people’s intellectual property should run into a red, white and blue brick wall at the American border, courtesy of the ITC, in the form of immediately effective exclusion and cease-and-desist orders, keeping iPhone imports that infringe Qualcomm’s patents out of the United States.

In recent weeks, Chicago, IL-based Hawaiian cuisine chain Aloha Poke has become embroiled in a public relations nightmare over a trademark policing campaign which has created backlash over claims of cultural appropriation. According to reports, Aloha Poke has sent cease-and-desist letters to restaurants throughout the United States who have used the term “Aloha Poke” in their restaurant branding… Knobbe Martens Partner Catherine Holland, who specializes in trademark, unfair competition and copyright law, says that the kind of public backlash which has resulted in Native Hawaiian activists calling for boycotts of the Chicago-based Aloha Poke is not limited to the restaurant industry or even instances involving claims of cultural appropriation.

The result of the ITC investigation was a win for AMD with the issuance of a cease and desist order against Respondent VIZIO, a cease and desist order against Respondent SDI, and a limited exclusion order against Respondents VIZIO, SDI and MediaTek. Rather surprisingly AMD has not issued a press release touting the win and is also not otherwise taking a victory lap. Generally, when a company scores a win of this magnitude, with either a limited exclusion order or a cease and desist order, it is news that is shared far and wide. In this case both a limited exclusion order and two cease and desist orders were obtained, and there hasn’t been as much as a peep from AMD. The fact that AMD has chosen to remain silent suggests negotiations are ongoing and an omnibus settlement may be announced in the coming days or weeks.

The U.S. International Trade Commission has issued a final determination finding a violation of section 337 in a matter dealing with infringement of patents owned by Rovi Corporation. As a result of the investigation the ITC issued a limited exclusion order prohibiting importation of certain digital video receivers and hardware and software components, and also issued cease and desist orders directed to the Comcast respondents. This final determination concludes the matter at the ITC and the investigation is now terminated, with this final determination submitted to President Trump for his review.

Securing IP rights in China has been a priority for companies selling or manufacturing in China due to the country’s singular attitude to intellectual property, which has been much abused. Today 84.5% of counterfeits originate in either China or Hong Kong, and as the world becomes progressively more connected alongside the rise of e-commerce and cross-border exportation capabilities, increasingly there is a need for IP protection strategies of all companies to be adapted to Chinese policies.

Avery Labels worked hard to establish its brand among consumers as the premier retailer of label products, as well as providing software solutions through their design-and-print-online tool and one-stop premium printing service, “WePrint.” As a result, when consumers search online for label products, Avery is typically the top-of-mind brand, making Avery the envy of its competitors. A few of those competitors recently attempted to benefit from Avery’s category-leading position by using the Avery trademark on their digital marketing ads without Avery’s permission, which not only drove up Avery’s ad costs and cut into its results, but was a clear case of trademark infringement.

Attorneys and non-attorneys love to make fun of these overly aggressive and unreasonable cease and desist letters. Online, a well-written and funny response can go viral, bringing much unwanted attention to the trademark holder and undermining the purpose of endeavor… The parody website ThinkGeek launched a fake product on April Fool’s Day in 2010 called Canned Unicorn Meat. The tag line read: Pate is passe. Unicorn, the new white meat. The National Pork Board, the trade group for pork farms, owns the trademark for “the other white meat” and completely missed the joke. They penned a 12-page cease and desist letter to ThinkGeek.

Non-practicing entities are especially likely to be subject to personal jurisdiction because the nature of their business involves asserting and litigating patent rights in foreign courts. This is especially true if the non-practicing entity has had other litigations in the state… Papst is a non-practicing entity engaged in the business of acquiring and asserting patent rights incorporated under the laws of Germany and having its principal place of business there. In October 2012, Papst acquired the patents-in-suit and investigated Xilinx, a Delaware corporation with headquarters in San Jose, California. Papst sent two patent-infringement notice letters to Xilinx in 2014 encouraging Xilinx to take a patent license. Three representatives from Papst traveled to California in October 2014 to meet with Xilinx to discuss Papst’s infringement allegations and Xilinx’s potential licensing.

On August 8, 2016, plaintiff became aware of defendant’s unauthorized use of the Marilyn Monroe marks and likeness and sent a cease and desist letter. Defendant continued with their allegedly unauthorized activities, leading to the filing of the complaint that starts this legal dispute. It is worth noting, however, that the defendant did not use the name Marilyn Monroe in any of its marketing, packaging, or other branding. Any association to Marilyn Monroe is based solely on defendant’s use of her visual likeness.

Part of GiGi New York’s trademark infringement allegation is directed at how Tommy Hilfiger has styled the name TOMMYxGIGI, especially in the use of a “unique upper and lower case treatment.” By styling the brand name as TOMMYxGIGI, Tommy Hilfiger has copied an alternating case which has never been used by Gigi Hadid, which GiGi New York argues increases the risks for customer confusion. At least one advertisement for TOMMYxGIGI, included in this post published by fashion law news source The Fashion Law, uses an alternating case which mirrors the “GiGi” form used by GiGi New York.

hipotle Mexican Grill is gearing up to launch a new franchise brand of restaurants. The first Tasty Made will open this fall in Lancaster, OH, and locations will feature menus focusing on burgers, hand-cut fries and milkshakes. As Tasty Made has been making headlines, a Boston-based chain of burger fast food restaurants has raised a legal issue over trademarks, which it believes Chipotle is infringing. Reports indicate that Tasty Burger has issued a cease and desist letter to Chipotle which charges the latter company with using a brand name and logos that are similar to marks held by Tasty Burger. Tasty Burger operates six locations, including four Boston stores and two in Washington, D.C. The burger chain is alleging that not only are the names very similar but the color scheme and shape of the logos share many similarities as well.

In late 2014, Nike Converse Inc. launched an aggressive attack in the U.S. District Court in Brooklyn against companies including Walmart, Under Armour and Ralph Lauren for infringing upon Converse’s signature Chuck Taylor shoe. Nike Converse sued a total of 31 companies for copying the rubber “bumper” running around the front, a “toe cap” on the top of the shoe above the bumper, and lines or stripes running around the sides of the classic kick. Many of us have either owned or seen the Chuck Taylor and can identify these unique traits.

If the President disapproves of the ruling for policy reasons he has the authority to nullify the determination. The statute specifically explains that upon disapproval of the President an ITC determination “shall have no force or effect.” The problem that President Obama faces is very real and offers no easy way out. He will no doubt be pushed to used his authority under Section 1337(j) to disapprove of the ITC determination in order to assist Apple and AT&T, both important US companies. The trouble is that Apple is a non-practicing entity and could (and probably should) be properly characterized as a patent troll. So will President Obama use his authority under Section 1337 to help a patent troll?