Amidst A Pandemic, New York Quietly Implements Its Enhanced Data Security Law
Written by Susan Kohn Ross and Timothy Carter
While much attention and focus has rightly been placed on the California Consumer Privacy Act and the dramatic expansion of privacy rights for California residents that it heralds, a number of other states have quickly followed suit, working to strengthen their respective data security and privacy laws. Signed into law on July 25, 2019 by Governor Andrew Cuomo, New York enacted the Stop Hacks and Improve Electronic Data Security Act (the “SHIELD Act” or the “Act”). The SHIELD Act amends New York State’s data breach notification law, by broadening existing the state’s data breach notification requirements and requires covered businesses to have “reasonable” data security safeguards. Continue reading “Amidst A Pandemic, New York Quietly Implements Its Enhanced Data Security Law”
MSK Minute: Stephen Blaker Reviews Immigration Considerations for Reopening
In this video, MSK immigration attorney Stephen Blaker reviews the various process changes and travel restrictions that have been imposed by the federal immigration agencies in response to COVID-19. What impact could this have on your reopening plans? If you have any questions or would like to discuss further, please contact Stephen at s1b@msk.com. Continue reading MSK Minute: Stephen Blaker Reviews Immigration Considerations for Reopening
MSK Minute: Jonathan Turner Discusses COVID-19 & Liability Regarding Employee Family Members
In this video, MSK partner Jonathan Turner discusses The California Executive Order that created a rebuttable presumption, for purposes of receiving workers’ compensation benefits, that employees who test positive for COVID-19 contracted the virus while at work. Jonathan addresses whether employers should challenge this presumption, and the unforeseen implications that could potentially arise, including whether an employee’s family member could sue the employer for contracting … Continue reading MSK Minute: Jonathan Turner Discusses COVID-19 & Liability Regarding Employee Family Members
Manufacturer Strikes Out on Three IP Theories Asserted to Enforce Its Claimed Rights in Product Design
Written by Mark C. Humphrey
On May 14, 2020, the Federal Circuit Court of Appeals issued a decision in Lanard Toys Limited v. Dolgencorp LLC et al., Case No. 2019-178, affirming summary judgment for the defendants and dismissing claims for design patent and copyright infringement. The claims were grounded in a challenging intellectual property law concept: the level of protection available for objects claimed to have both aesthetic and utilitarian functions. While the decision does little to provide additional clarity on the issue, it offers a useful snapshot of current jurisprudence, particularly in the copyright context in light of the United States Supreme Court’s Star Athletica decision, and identifies the salient distinctions between copyright law, design patent law, and trade dress law as they apply to a product design.
Lanard involves toy chalk holders made to look and function like pencils. Since 2011, Lanard had been making and selling one such product, the “Lanard Chalk Pencil,” to national distributors including Dolgencorp LLC (parent of Dollar General) and Toys R’ Us (“TRU”). Lanard owned patent registrations for its design, as well as a copyright for a work entitled “Pencil/Chalk Holder.” In 2012, Ja-Ru, Inc. (“Ja-Ru”) released a similar toy chalk pencil holder that used the Lanard Chalk Pencil as a design reference. By 2013, Dolgencorp and TRU had stopped ordering the Lanard Chalk Pencil in favor of Ja-Ru’s product. Continue reading “Manufacturer Strikes Out on Three IP Theories Asserted to Enforce Its Claimed Rights in Product Design”
Tracing Concerns
Privacy Protection Acts Introduced in Connection with Contact Tracing
Written by Susan Kohn Ross and Timothy Carter
Across the globe, governments are harnessing surveillance-camera footage, mobile location data, and consumer purchase records to help track the recent movements of coronavirus patients, monitor those potentially exposed, and establish virus transmission chains. In China, for example, the government has installed surveillance cameras outside and inside quarantined individuals’ homes. A few thousand miles away, Israel’s internal security agency is primed to mine a cache of mobile phone location data, initially collected for counterterrorism operations, in order to pinpoint possible COVID-19 exposure among its citizens. Continue reading “Tracing Concerns”
Get Lucky: U.S. Supreme Court Overturns ‘Defense Preclusion’ Ruling in Trademark Lawsuit
Written by Albina Gasanbekova
Edited by Robert H. Rotstein
Last week, the U.S. Supreme Court decided Lucky Brand Dungarees Inc. v. Marcel Fashions Group Inc., No. 18-1086, 2020 WL 2477020 (U.S. May 14, 2020), a trademark case involving the scope of claim preclusion as the doctrine applies to defenses. Although recognizing that claim preclusion can apply to bar defenses, the Court explained that the so-called “defense preclusion” is an invalid application of res judicata when the earlier suit involved different trademarks, different legal theories, and different conduct occurring at different times.
Three Lawsuits and Nearly Twenty Years of Litigation
Lucky Brand and Marcel Fashions Group are competitors in the apparel industry who have been battling each other for decades. The first lawsuit began in 2001, when Marcel, the owner of the trademark “Get Lucky,” accused Lucky Brand of violating trademark law by using the phrase “Get Lucky” in advertisements. That litigation resulted in settlement, in which Lucky Brand agreed to stop using the words “Get Lucky” in their branding in return for Marcel Fashion’s release of certain claims against Lucky Brand. The second lawsuit between the parties began in 2005, when Lucky Brand accused Marcel Fashions of copying its designs and logos for a new clothing line. Marcel Fashions responded with counterclaims, alleging that Lucky Brand had continued to use Marcel’s “Get Lucky” mark in violation of the settlement agreement. Notably, Marcel had not claimed that Lucky Brand’s use of its own marks alone—that is, independently of any use of “Get Lucky”—infringed on Marcel’s “Get Lucky” mark. Marcel ultimately prevailed in the 2005 lawsuit, permanently enjoining Lucky Brand from using a catchphrase “Get Lucky.”
MSK Minute: Jeremy Mittman Covers Workplace Screening
In this video, MSK partner Jeremy Mittman addresses how employers can effectively implement workplace screening and testing as they plan to reopen from COVID-related closures. Continue reading MSK Minute: Jeremy Mittman Covers Workplace Screening
MSK Minute: Su Ross Covers Reopening Considerations
In this video, MSK partner Susan Kohn Ross discusses various policies and recommendations for reopening your business at a time where so many shelter-in-place orders are changing. Continue reading MSK Minute: Su Ross Covers Reopening Considerations
Attorney Fees Are Recoverable in Declaratory Relief Action for Copyright Abandonment, Ninth Circuit Holds
Written by Tiana A. Bey
On May 13, 2020, the Ninth Circuit opened the door for courts to award attorney’s fees to parties seeking or defending against equitable relief actions that may implicate the Copyright Act. In Doc’s Dream v. Dolores Press, Inc., No. 18-56073 (9th Cir. May 13, 2020), the Circuit held broadly that “any action that turns on the existence of a valid copyright and whether that copyright has been infringed” is properly within the scope of attorney’s fees recoverable pursuant to the fee-shifting provision of the Copyright Act. And it applied that holding to the particular claim for declaratory relief before it, namely whether a party had abandoned a copyright.
Section 505 of the Copyright Act, 17 U.S.C. § 505, provides a court with discretion to “award a reasonable attorney’s fee to the prevailing party” as a part of the recoverable cost incurred “in any civil action under” the Copyright Act. Doc’s Dream presented a “first impression” issue: whether a declaratory relief claim concerning the judicially-created “copyright abandonment” doctrine qualifies as an action under the Copyright Act. To address this question, the Circuit had to decide whether a determination of copyright abandonment required a “construction” of the Copyright Act, and it answered in the affirmative. Continue reading “Attorney Fees Are Recoverable in Declaratory Relief Action for Copyright Abandonment, Ninth Circuit Holds”
Judging a Book by Little More than Its Cover: TTAB Finds that Single Book May Meet Trademark-Use Test
Written by Eleanor M. Lackman and Adé Jackson
A recent precedential opinion from the U.S. Patent & Trademark Office Trademark Trial and Appeal Board (TTAB), Shannon DeVivo v. Celeste Ortiz, Opposition No. 91242863 (TTAB Mar. 11, 2020), challenges the well-established concept that a single title of a book cannot be a trademark, leaving a wide opening for those who seek to register terms previously considered non-registerable.
In the DeVivo proceeding, Celeste Ortiz sought to register the term ENGIRLNEER for cups and mugs, lanyards, and shirts and sweatshirts. Shannon DeVivo, the owner of two pending trademark applications for the term for children’s books, notebooks, and a website offering information to young women and girls seeking careers in stem cell research opposed the application, citing likely confusion. On an accelerated case procedure, the TTAB sustained the opposition, partly relying on the fact that DeVivo had used ENGIRLNEER on the cover of a single book, which the TTAB surprisingly found to be a trademark use. Continue reading “Judging a Book by Little More than Its Cover: TTAB Finds that Single Book May Meet Trademark-Use Test”
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