Cantor Colburn Year End 2015 Newsletter
Ideas in Intellectual Property Law
Can online search results trigger trademark liability?
Until recently, most lawsuits involving online shopping and search engines have involved keyword advertising, whereby a company buys ads triggered by searches for a competitor’s trademarked good or service. But can a customer’s search results lead to trademark liability for a merchandiser — even in the absence of keyword advertising? This article looks at a recent case in which an appeals court answered this very question. A sidebar looks at the critical role of labeling in e-commerce.
Multi Time Machine, Inc. v. Amazon.com, Inc., No. 13-55575, July 6, 2015 (9th Cir.)
AMF Inc. v. Sleekcraft Boats, No. 76-1744, June 28, 1979 (9th Cir.)
Drawing the line
Court bars further claims against exonerated manufacturer
A recent appeals court decision is good news for manufacturers accused, but exonerated, of patent infringement. These parties need no longer worry about accusers harassing customers with infringement suits after the initial allegations against the manufacturer have failed. This article explores this important ruling, including its application of the seldom-used Kessler doctrine.
SpeedTrack Inc. v. Office Depot, Inc., No. 2014-1475, June 30, 2015 (Fed. Cir.)
Kessler v. Eldred, No. 196, May 13, 1907 (Supreme Court)
Alice rocks the boat once again
Price optimization method isn’t patent-eligible
In 2014, the U.S. Supreme Court’s ruling in Alice Corp. Pty. Ltd. v. CLS Bank Int’l established a two-part test for determining patent eligibility. In its wake, the decision has left many of those seeking patent protection for financial-related methods involving computers feeling a bit queasy. This article describes the most recent Alice-related decision, which addresses whether a computerized price optimization method is patent-eligible.
OIP Technologies, Inc. v. Amazon.com, Inc., No. 2012-1696, June 11, 2015 (Fed. Cir.)
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No. 13-298, June 19, 2014 (Supreme Court)
Time out! Trademark fails for lack of intent to use
If a likelihood of confusion argument made by a party that opposes a trademark application is rejected, the applicant in question isn’t necessarily in the clear. Applicants must also demonstrate the requisite “bona fide intent” to use the mark in commerce. This brief article describes a case illustrating the dire consequences of displaying a lack of demonstrable intent.
M.Z. Berger & Co., Inc. v. Swatch AG, No. 2014-1219, June 4, 2015 (Fed. Cir.)
