Vol. 1 No. 2 Nov./Dec. 2008:
Egyptian Goddess v. Swisa: Retooling Design Patent Infringement

Egyptian Goddess v. Swisa:
Retooling Design Patent Infringement

By Darrell G. Mottley

Design patents have been recognized as important tools for companies that invest in product development. In the year 2007, the U.S. Patent and Trademark Office (USPTO) issued just over 24,000 design patents, an increase on the order of 15 percent from the 20,965 design patents issued in 2006.1 U.S. design patent protection is available for new, original, and ornamental designs for articles of manufacture.
Egyptian Goddess v. Swisa3 is the first en banc U.S. design patent case litigated before the U.S. Court of Appeals for the Federal Circuit, and it is a significant decision with respect to the question of how best to determine whether a design patent has been infringed. It pertained to whether the so-called point of novelty test should be utilized and whether claim construction should apply to design patent infringement analysis.

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The following articles from
Vol.1 No.2 Nov./Dec. 2008
are available to Section members.

Legislating an Exception to Design Patent Infringement: The Potential Domino Effect of H.R. 5638
By Patricia E. Hong

To the small group of patent attorneys who have a sizable design patent practice, any year that has even one precedential decision from the U.S. Court of Appeals for the Federal Circuit concerning a design patent is considered a big news year. In this landscape, the last few years stand out as a particularly active time in design patent law. As of the time of this writing, every branch of government has a significant design patent law case or issue before it. read more...

Trademarks and Geographical Indications 101: What Should Trademark Owners Know?
By Lynne G. Beresford

One of the most controversial subjects facing the IP world today is the treatment of geographical indications (GIs). Examples of GIs include “Florida” for oranges, “Idaho” for potatoes, and “Vidalia” for onions. Many questions about GIs arise, especially in relation to trademark issues. What level of protection is required for GIs by the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)? What level of protection should GIs have, and does a GI warrant more protection than a trademark? Are GIs business interests or are they something else? Are GIs signs that are source identifying? Are these public or private rights? And finally, what general principles should be observed in setting up a national system that protects GIs or any intellectual property rights? read more...

TIFFANY v. eBay: A Case of Genuine Disparity in International Court Rulings on Counterfeit Products
By Valerie Walsh Johnson and Laura P. Merritt

The ability of trademark owners to knock down knock-offs from the Internet is in flux as courts worldwide issue conflicting rulings on the duty of online sellers and auction brokers to police goods offered on their web-sites. Online retail spending in the United States is increasing exponentially; it is expected to climb from the approximately $5.5 billion in sales in 1998 to an estimated $300 billion by 2010.1 Because growth of the sale of goods on the Internet is only trending upwards, allocating the responsibility for policing trademarks on online retailers’ websites is a high stakes game that increasingly is played on a global field. read more...

Keyword Advertising Remains Unsettled
By David S. Fleming

The Second Circuit is poised to decide an important keyword advertising case, Rescuecom v. Google,1 which will address whether the act of keying a sponsored search advertisement to a trademark owned by someone other than the advertiser constitutes use of that trademark. The court’s decision in Rescuecom probably will resolve the trademark use issue within the Second Circuit, but it will not end the keyword advertising debate. read more...

Patentable Subject Matter:The Debate ReIgnites—Or Did It Ever Really Go Away?
By Q. Todd Dickinson

Some 400,000 or so patent applications are filed in the United States Patent and Trademark Office (USPTO) each year without arousing much interest or notoriety for anyone beyond the inventors themselves or their employers. The application of Bernie Bilski and Rand Warsaw appears destined to be different. It seems innocuous enough. It concerns a method of managing the risk of bad weather on weather-affected commodities through specific trading in those commodities. Yet this application has helped renew a debate about intellectual property law and policy that is one of the longest-running, most contentious, and most interesting to both professionals and laypeople: What can be patented in the first place? read more...

USPTO Issues Final Rules Regarding Rules of Practice Before the BPAI in Ex Parte Appeals
By Peter G. Thurlow and Anthony D. Mustillo

On June 10, 2008, the United States Patent and Trademark Office (USPTO) amended the Board of Patent Appeals and Interferences rules of practice. The new rules affect ex parte appeals and apply to all appeals in which an appeal brief is filed on or after December 10, 2008.1 This article discusses the background and substance of the new rules. read more...

Take-Downs, Put-Backs, Contracts, and Lawsuits: Managing User-Generated Copyright Issues
By Steven J. Metalitz and Matt Williams

In recent years, the Internet has exploded with new services that prominently feature “user-generated content,” or UGC. These services follow myriad business and technology models, but all aim to encourage the creation of online communities by enabling Internet users to make content of their choosing available to other Internet users.1 Inevitably, much of the content that Internet users “generate” and choose to share with one another is not created by them, but instead consists, in whole or in part, of previously created materials to which others hold the copyright and which the users have no license to reproduce, adapt, distribute, or publicly perform or display. This article will discuss ways in which UGC services that respond to complaints made by copyright owners regarding allegedly infringing material can deal with objections put forward by the users who posted that material. read more...

Black Hole or Celestial Jukebox? Section 114 and the Future of Music
By Kevin C. Parks

Envision the nirvana of the “celestial jukebox”—a blissful future in which music lovers enjoy on-demand access to the entire universe of recorded music, from anywhere, at any time, and through any device, all for a reasonable fee. But will this day come? If so, who gets paid, and how and why? read more...

Recent Developments in IP Law
By John C. Gatz

Just to Name a Few
By Gordon Arnold

Lean Years for IP Legislation
By Hayden W. Gregory

Open to Debate

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