Plot thickens in dispute between HBO and University of Utah

As I mentioned the other day here, the University of Utah has taken issue with the use by HBO of the University’s logo in an episode of the show “Big Love.”

The use at issue involves a scene in which the University’s logo is shown on a fictional report by one of the University’s research laboratories which reportedly authenticates an historical letter from former Church of Jesus Christ of Latter-day Saints President Wilford Woodruff that legitimizes the practice of polygamy.

The Univesity asserts producers used the logo without permission and demands that HBO delete the shot in all future airings of the episode and on the upcoming DVD release.  HBO has taken the position that “nothing in the program vioalates anyone’s rights, and HBO will respond in due course.”

Hair salon threatened with lawsuit agrees to change name

Owners of a salon in Rockaway, NJ, called “Moulin Rouge” have agreed to change the salon’s name after receiving a cease and desist letter from the owner of several federal trademark registrations for the mark MOULIN ROUGE.

According to the Daily Record.com, the change in signage, business cards, etc is expected to cost about $10,000. The attorney for the registrant said she discovered the infringing use by using Internet search engines. Owners of the salon reportedly checked NJ state records to see if the name was available but they didn’t check the US Trademark Office database. The attorney representing the salon said, “It’s not common to look up a patent [sic] when starting a company in New Jersey . . . I think I’ll advise all future clients to do so.” Good advice; especially if they’re going to have a presence on the Internet.  Needless to say, a quick knockout trademark search can be done for much less than $10,000.

University of Utah no love for “Big Love”

According to The Salt Lake Tribune, the University of Utah has demanded that HBO remove part of a scene from the show “Big Love” in which the University’s logo was shown on an official-looking document during an episode that aired in March.

Court abused its discretion by staying patent infringement case

Procter & Gamble v. Kraft Foods, 89 USPQ2d 1085 (Fed Cir 2008).  The district court abused its discretion by effectively denying [by granting Kraft Foods' motion for a stay] Procter & Gamble’s motion for a preliminary injunction without considering and balancing the required factors.

Trader Joe’s v. Trader John’s

According to Forbes.com, Trader Joe’s has sued a renovated grocery store re-opening under the name of Trader John’s.

Perfecting Security Interests in Intellectual Property

From the New Hampshire Business Review:

“In short, in order to perfect a security interest in a domain name, trademark or unregistered copyright, a state UCC-1 filing should be sufficient. For a registered copyright, the security interest should be filed with the U.S. Copyright Office. For a security interest in a patent, the security interest should be filed as a state UCC-1 filing and as a filing with the PTO.”

Concerns Raised Over ICANN’S gTLD Proposal

The gross imbalance between “offense” (cybersquatting) and “defense” (brand protection) is overarching concern if ICANN allows more generic top-level domains.  Read more here.

US Chamber of Commerce Makes Recommendations for USPTO Reform

The Chamber’s recommendations address the need to:

• Improve the quality of US patents;
• Provide adequate resources to do the job;
• Reform the patent examiner production system;
• Improve the timeliness of administrative actions;
• Strengthen the PTO’s relationship with the user community;
• Enhance organizational management;
• Appoint a well-qualified undersecretary and director;
• Permit applicants to defer patent examination;
• Rethink the current fee schedule; and
• Enhance efficiency of the examination process by reforming examiner and applicant incentives.

Stanford University v. Stanford Financial Group v. Stanfordfinancial.net

According to Caribbean Net News, Stanford Financial Group presently is in the midst of two trademark disputes, one as a defendant and the other as plaintiff.

Filing Application for Copyright Registration Does Not Create Presumption Work is Copyrightable

CHM Industries Inc. v. Structural and Steel Products, Inc. (N.D. Tex., No. 4:08-CV-454-Y, 10/24/2008).  The mere filing of a copyright registration application, as opposed to having an actual certificate of registration, does not trigger the presumption that a plaintiff in a copyright action holds a valid copyright interest in the work at issue.  In denying the plaintiff’s motion for a preliminary injunction, the court held that the plaintiff had not demonstrated a likelihood of success on the merits of its copyright claim.