Archive for the ‘Litigation’ Category

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Peace, Love, and Trademark Infringement

Monday, December 27th, 2010

By: Fernando Torres, MSc

Last week,  The Popcorn Factory LLC, a 1-800-FLOWERS.COM company,  filed a federal lawsuit for trademark infringement and cybersquatting against “Love Peace Popcorn” a Frisco, Texas family store.  The store, run by the Paparella family, has a federal registration for the mark (#77,558,903) based on a first use in commerce since August 2008, and uses illustrations of a heart, a peace sign, and a piece of popcorn:

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The Popcorn Factory has been marketing some of their products and related merchandise as PEACE, LOVE & POPCORN, but we could not find a federal registration at all and it is not claimed as a trademark on their website (no TM).

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The complaint claims The Popcorn Factory began marketing products under the slogan “Peace Love Popcorn” and, curiously enough, illustrated by similar drawings of a peace sign, a heart and a piece of popcorn since the Spring of 2008.

On the face of it, this case will bring into question the rights of  a federal registration (defendant) versus the common law use (plaintiff).  The claim for cyber-squatting seems weak because the plaintiff does not have a registration.  If neither party was aware of the other’s usage, as claimed, then actual damages may be hard to prove and the statutory route under cyber-squatting may be the only monetary award available.  Of course, a damages assessment is necessary these days to support an injunction.

This is an intriguing case we shall follow with interest.  Thanks go to the timeliness of the Chicago Breaking Business site for bringing this case to our attention.

Posted in Case Law, Economic Damages, Infringement, Litigation, Trademarks | Comments Off on Peace, Love, and Trademark Infringement

University Research and IP – A Case in Point

Wednesday, December 22nd, 2010

Recently (12/10/10), Judge Garaufis of the U.S. District Court for the Eastern District of New York denied a motion to dismiss the case brought by St. John’s University against a former professor, Sanford Bolton, his PhD student, Spiridon Spireas, and the company they formed to commercialize four patents (allegedly) improperly concealed from the University.

The opinion notes that, under New York law, St. John’s had sufficiently alleged that Bolton and Spireas breached their contractual obligations to assign patentable inventions to it.

A notable fact in this case is that Bolton retired in 1994 and Spireas completed his PhD in 1993.  Their first patent application was filed two years after Bolton’s retirement and their research at the University allegedly resulted in inventions which are the subjects of at least three additional patents.  Liability in this case is being argued on the basis of contracts used by the University to protect intellectual property rights.

As  James DeGiulio observes on the Patent Docs Blog; “…One piece of evidence that Judge Garaufis pointed to was Spireas’s dissertation, which contains sections literally copied into one of the patents.  The judge also found that Bolton and Spireas were fiduciaries of St. John’s, and owed it a duty to fully disclose material facts relating to their research…”

For instance, St. John’s College of Pharmacy and Allied Health Professions had a Patent Policy that governed the ownership of inventions resulting from research
conducted by St. John’s faculty and students. Under this policy, Bolton and Spireas were allegedly obligated to assign to St. John’s “…all patentable inventions, discoveries, processes, uses, products, or combinations resulting, in whole or in part, from any of (a) the use of the laboratories or other facilities of [St. John’s], (b) services  rendered by faculty to [St. John’s], (c) research conducted by graduate students or doctoral candidates under the direction of [St. John’s] faculty, or (d) any related or predicate research . . .”
The case has wider implications as these are common provisions, not only among universities, but in many research institutions and commercial entities.

Bolstering the University’s interest in enforcing the agreements with the researchers is the commercial success of the venture.  Hygrosol has received at least $100 million in revenue from the licensing agreements, which has been transferred to Bolton and Spireas, according to court documents.

We shall continue to follow this case to draw conclusions about the current case law on the enforcement of invention assignments.

(Thanks to Patent Docs, you can download the memorandum and order here.)

Posted in Case Law, Intellectual Property, Licensing, Monetization, Patents | 1 Comment »

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