What more, Apple is about to be hit by a $38 million fine for continuing to use the name in China. Four years before Apple introduced the iPad in 2010, it bought the trademark “iPad” from Proview Electronics, a Taiwanese display manufacturer, but the rights to use the name were not to extend into China. That didn’t stop Apple, though, so now the company will have to deal with this very large and very expensive headache.

While attack ads are quite common in politics, Huntsmen was particularly offended by this one, because the ad used pictures of Huntsmen’s adopted children to argue that Huntsmen does not hold American values.  In addressing the video, Huntsmen said, “[i]f someone wants to poke fun at me, that’s OK. . .[But] what I object to is bringing forward pictures and videos of my adopted daughters and suggesting there’s something sinister there.”

While everyone agrees that this video was tactless and offensive, the lingering question is: who is behind this distasteful advertisement?

The obvious initial reaction was to place the blame on Ron Paul’s campaign team.  The clip’s final segment endorsed Paul and the video was uploaded on a YouTube account called “New Hampshire Liberty 4 Paul.”  However, that evidence alone does not incriminate Paul.  There is nothing actually linking the account to Paul’s campaign team and further, the “NH Liberty 4 Paul” YouTube account only contains this one uploaded video, which makes it seem like a farce.  Even though Paul’s campaign team has started up with Huntsmen before, they maintain that they have never done anything this offensive.  Putting to bed any remaining doubts as to whether Paul’s campaign was the originator of this ad, Paul’s team filed a defamation and trademark lawsuit against the party who uploaded the unauthorized attack video.

But the suit is unlikely to succeed for several reasons.  The suit alleges false advertising and false designation of origin under the Lanham Act.  The Lanham Act applies to “commercial advertising or promotion” and there seems to be no indication of sale of goods or self-promotion.  Additionally, it is very hard to demonstrate that the advertisement actually defames Paul.  Paul’s legal team must be able to prove that this video alone caused a public change in opinion of Ron Paul.  Proving an opinion-shift about a public figure such as Ron Paul is highly difficult and thus unlikely.

Not only is this suit destined to fail, it also is just kind of odd.  Since the identity of the uploader is unknown, this suit is a “John Doe” suit, where the plaintiff adds the defendant when the identity is revealed, even if it is after the suit is filed.  The defendant is usually identified through a subpoena of on an Internet Service Provider (ISP).  What makes this suit so weird is that Paul is a libertarian, primarily interested in individual liberties and freedom from government.  But forcing an ISP to disclose the identity of a client definitely infringes on the ISP and its users’ right of privacy.  Therefore, John Doe proceedings are not in-line with Paul’s main beliefs.

While the lawsuit is weak and strange, it still does make it quite clear that Ron Paul’s campaign is not the party behind the video.  So our original question remains: who is responsible?

Appealed Tuesday in the Second Circuit Court of Appeals, the judge seemed to show support for the Louboutin side, which would mean a possible overturning of the lower court decision to deny a preliminary injunciton.  Much of the argument is centered on the idea of a single color being a trademark, and if that should be allowed, in fashion.

Read more about the case here and here. And for some insight from Fordham’s own Professor Susan Scafidi click here and here.

Thank you to staffers Tracy Ederer and Kaitlin Keenan for the links!

Meanwhile, the town of Dublin, Texas is worried about losing its identity along with this settlement.”Folks in Dublin are worried about the loss of the town’s namesake soda, which drew 95,000 tourists each year to the soda shop, museum and the plant’s birthday celebration, where the town was renamed ‘Dr Pepper, Texas’ for a week. And many of the 3,800 residents are vowing never to drink any Dr Pepper ever again.”

Click here and here to read more about this story.

At one point in Kodak’s long history it held a near monopoly on film and produced such high margins of return that it would share these profits with its workers on “wage dividend days.” Initiated by Kodak founder George Eastman, on these days, all employees would receive bonuses based on results. One former employee compared Kodak in its heyday to Apple or Google of present. Young, highly talented employees could be found at lunch time watching a movie in the corporate campus’s on-site movie theater, or playing basketball on the company’s courts. It seemed unimaginable at the time that Kodak could ever be on the verge of bankruptcy. Some of Kodak’s most notable technological breakthroughs over the last 100 years or so include the invention of roll-film by George Eastman, the mass production of inexpensive “pocket-cameras,” the first 35 mm color film, the first megapixel sensor capable of producing picture quality prints, the first digital camera, the first organic light-emitting diode (“OLED”) display, and the first Wi-Fi enabled digital camera capable of emailing pictures from the camera itself.

The first digital camera

Despite all of these amazing technological advances Kodak has not been able to capitalize on its inventions or adjust its business model after the decline of its market share in film in the 1980’s. In the last five years, Kodak has become a patent troll. In order to raise money it began enforcing its intellectual property rights and was quite successful. Overall, Kodak made around $1.9 billion between 2008 and 2010 through litigation and licensing of its IP. That money was used to keep the company afloat while it invested in its newest endeavor—printers. Kodak has had a tough time though turning a profit in the printer business and, while sales are up, the printers are still being sold at a loss to the company and income from the IP litigation has begun to run out.

The company is still litigating a major case in front of the International Trade Commission (“ITC”) against Research in Motion (“RIM”), the maker of the BlackBerry cellphone, and Apple over technology in their smart phone cameras. Kodak believes that this case could generate close to $1 billion in licensing revenue if successful. In its complaint, Kodak noted five allegedly infringed patents with two of them relating to the previewing of captured digital images. Kodak specifically requested that the ITC exclude from entry into the U.S. any RIM or Apple mobile device that infringes on these patents. Apple responded by filing patent counter-claims in a U.S. district court and in the ITC. The Commission decided not to review an ITC administrative judge’s ruling that Kodak did not infringe on Apple’s patents, but it affirmed in part, reversed in part, and remanded in part an administrative judge’s conclusion that Apple and RIM did not violate any of Kodak’s patents either. The original court date was set for August of this past year, but due to a judge’s retirement in the case, it has been postponed to September 2012.

No, we didn’t say it’d be “useful,” but we did say funny.

Just before the holidays, on December 22, 2011, Louis Vuitton filed suit against Warner Brothers in federal court in New York alleging that the handbag shown in the movie is a fake.

In this scene from The Hangover Part II, Galifianakis is shown on the far left toting his “Louis Vuitton.”

Louis Vuitton is not claiming that the movie used counterfeit goods, but rather that Warner Brothers used a bag made by Diophy Handbags, amounting to “consumer confusion.”   As for Louis Vuitton’s suit against Warner Brothers, the causes of action are trademark dilution, false designation of origin, and unfair competition.  Louis Vuitton seeks to stop the DVD release of the scenes with the fake handbag.  Additionally, they are seeking a share of the profits from the film.

History of the Film’s Run-Ins with the Law

In addition to the most recently filed suit by Louis Vuitton, Warner Brothers has faced three other suits because of the film.  As mentioned above, Mike Tyson’s tattoo artist Victor Whitmill, settled with Warner Brothers for an undisclosed amount in the copyright case over the use of the tattoo in the movie.  Also, in October of 2011, the producers of the film were sued by screenwriter, Michael Alan Rubin.  Rubin alleged that the storyline about a main character traveling from America to Asia to marry his girlfriend was plagiarized from Rubin’s own idea for a comedy.  This suit was later dismissed.  Lastly, the production studio faced a suit from stuntman, Scott McLean, who alleged he suffered brain trauma in an attempt to complete a stunt for the movie.  Warner Brothers settled with the stuntman.

Despite these numerous suits, the movie has managed to gross over $250,000,000 in the U.S. alone.  I suppose that this gross revenue is enough to cover Warner Brothers legal expenses and any amounts that it might settle for with the various plaintiffs.  Not to mention, the Huffington Post reports that these lawsuits have done nothing to deter the making of Hangover III.

What Will Come of the Louis Vuitton Suit?

My prediction for the outcome of this current suit falls in line with Warner Brothers history of settling these suits outside of court.  With the success of The Hangover Part II and the hope for a trilogy, Warner Brothers will want to avoid any defamation to its series of films.  If this suit does go to trial, a court will look to see if Louis Vuitton’s trademark suffered when Galifianakis’ character, Alan, professed that the fake Louis Vuitton handbag was a real one?  It will have to consider that the movie producers may have purposely wanted Alan’s bag to emulate a fake Louis Vuitton’s bag.  When you think about it, the now famous phrase likely would not have been funny if it were a real Louis Vuitton bag.  It is just my opinion, but the suit likely will not even get to the point of a court deciding these things.  What are a few settlement payouts to individuals and companies when Warner Brothers has created arguably the funniest series of movies that our generation has seen?

“In keeping with the situation”… what better time to recap the exhaustive year of developments in the IP world.  Two thousand eleven saw a great many changes.  The looming presidential election, bickering among political sides, and intense involvement from vocal lobby groups forced a surge of lawmaking; new technologies exploded onto the scene—and, of course, caused some fighting among industry powerhouses; people continued to struggle through the financial crisis, finding ways to muddle through using—or not using for Louboutin and YSL—trademark law.  This was a year of starters, of new beginnings, but also of significant losses.  Only time will tell the extent of the benefits or damage the 2011 changes will have.

Below are ten topics addressed by courts, legislators, and people generally in this eleventh year of the New Millennium that I found particularly interesting…

1. For the first time ever, Americans were encouraged to invent!  President Obama signed the American Invents Act into law on September 16, in the hopes of speeding up the patent process for entrepreneurs and small businesses.  The Act was generally met with praise by commentators, but concerns over confusion, mischief, and stymied institutional research hang overhead.

2. Two proposed anti-piracy acts—the Protect IP and Stop Online Piracy Acts—caused and continue to cause quite a stir as Congress debates the bills.  The Protect IP Act, which would effectively allow the government to halt financial transactions with rogue, infringing websites, elicited strong reactions from left-wing groups bent on protecting civil liberties.  SOPA, a related bill, would require Web hosting companies to police their sites for infringing content.  Not surprisingly, providers of hosting services strongly oppose the bill.  The Senate will vote on the bills on January 24, 2011, before which pirates and privacy hounds will surely continue to join forces to quash their passage.

3. Visions of Louboutins danced in counterfeiters’ heads as S.D.N.Y. Judge Victor Marrero refused to honor the Louboutin’s broad trademark in the color red.  Marrero stated, “[a]warding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants” and compared Louboutin’s attempts to enjoin rival Ives Saint Lauren from utilizing the bright-colored soles to Picasso suing Monet for use of a particular shade of indigo.

4. Google was repeatedly reminded that “with great power comes great responsibility” in a string of various lawsuits filed against the search giant.  Judge Denny Chin set a trial date of July 2012 for the lengthy Google Books litigation.  Oracle sued Google over allegation of patent infringement of its Java and Android platforms.  PayPal filed suit against Google in May for stealing trade secrets.  Feeling left out, the FTC joined in by launching its “most comprehensive antitrust investigation” against the Internet kingpin.   Better luck next year Google.

5. The continued financial crisis motivated some to do-it-themselves.  For $275, individuals can successfully register their own trademarks with the USPTO.  Good news for small businesses in an economy where money is just about as tight as it can be, but not such good news for those trademark attorneys out there.  Never fear attorneys, you are still needed for the complicated stuff, because “not all registrations are created equal.”

6. Occupy Wall Street was big news in 2011.  In fact, organizers of the “movement,” as well as a number of other groups, including one Long Island couple, filed for a trademark of the slogan “Occupy Wall St.”  Because nothing says protest like a new t-shirt.

7. For websites like the Huffington Post, which essentially are online sources composed entirely of refurbished news, a flurry of concerns over the extent of fair use emerged in 2011.  How much copying is too much copying?  Isn’t it enough if you give credit where credit is due?  Does it matter how “hot” the news is?  Questions like these have yet to be answered by any legal authority—and possibly to the benefit of blog sites everywhere, (including this one)—but with the insurgence of more second-hand reporting and blog sites, coupled with the failing print news industry, the scope of fair use is likely to require a clear(er) definition in the near(est) future.

8.  2011 also had its share of losses, notably with the deaths of Steve Jobs and other technology innovators.  Local and national video stores dropped like flies upon the rapid emergence of “Internet subscription services for enjoying movies and TV shows,” like Netflix—which unfortunately has also taken a dive in recent months.  But luckily, the wheels of innovation have kept turning and spitting out new technologies everyday, like Apple’s improved face-recognition software.  Read about other top tech stories here.

9.  The end of an era approaches.  In 2011 the impending return of song rights to musicians made big news.  The 1970s amendments to the Copyright Act provided for termination rights, allowing artists to regain control of works after 35 years. Although this was a huge story in 2011, the amendments to the Copyright Act didn’t take effect until 1978 so they won’t actually affect anything until Jan. 1, 2013.  But it was still worth a mention on this list.  As the New York Times reported: “‘Everyone is adopting a wait-and-see posture. But that can only be maintained for so long, because the clock is ticking.’”

10. And finally, for you sports buffs out there, in case you have forgotten, lots of things happened before Joe Paterno was fired and the NBA started up again.  Out of fear that I will botch the terminology, check out this incredibly detailed recap of the year in sports here.

11. And finally, thanks to all for your contributions, suggestions, and readership over the past months.  We look forward to another fantastic year so keep checking in on the IPLJ in 2012.

We wish you and yours a very Happy New Year!

Coca-Cola’s super secret patented formula has been moved for the first time since 1925.

Read all about it here, here, and here.

Thank you to staffer Heather Crawford for the links!