August 19, 2010
The Passing of a Great Inventor
This is a departure from my typical article, but very important to the Intellectual Property Community nonetheless. I received some news late last night that deeply saddened me. A great inventor, Dr. Shalaby W. Shalaby, who happens to be my Godfather, passed away on Wednesday August 18, 2010. Dr. Shalaby was a great man, and you would be hard pressed to find someone who could possibly say otherwise. In fact, you would be hard pressed to find someone who can remember a time when he was not smiling.
Dr. Shalaby W. Shalaby
In the early 90’s, Dr. Shalaby founded Poly-Med, a privately owned company, in Anderson County, South Carolina. Thereafter, a new research and development laboratory facility was opened in April, 1995 at the Center for Applied Technology in Pendleton, SC. Poly-Med describes their core mission as “applying scientific and engineering principles toward developing proprietary polymers analytical testing and fiber spinning services.”
Dr. Shalaby is the named inventor on more patents than you can imagine, and built a business based on research, development, and licensing of Poly-Med’s intellectual property. Take a look at the number of patents that are listed on Poly-Med’s website. As indicated, Poly-Med holds many US and Foreign patents. Poly-Med did not stop at the patent phase. They developed their products, gave them names, and secured trademarks on those names. Take a look at the number of trademarks that are listed on Poly-Med’s website.
Dr. Shalaby and Poly-Med are a great example of the value of intellectual property and the need for patent reform, a reduction in the backlog of patent applications, and the economic impact that intellectual property can have on the economy. When viewing the intellectual property that Poly-Med was responsible for, I begin to ask myself some economic type of questions. How many people did Poly-Med employ? What was the economic trickledown effect of the intellectual property that was developed by Poly-Med? How many technologies were developed using Poly-Med technologies as a springboard?
We can go on and on about the success of Poly-Med and how intellectual property played a big role, but the real point of this short article is to pay tribute to a great man, a great friend, and a great inventor. Dr. Shalaby has left quite a legacy and will be missed by many. He is survived by his wife, Dr. Joanne Shalaby, his four sons, and ten grandchildren.
August 12, 2010
The Naked Cowboy Drags The Naked Cowgirl To Court
Although this happened a few weeks back, I still get a kick out of this story, and I’ve been hearing more and more about it. The Naked Cowboy (Robert Burck) has sued The Naked Cowgirl (Sandy Kane) for allegedly infringing on his trademark. I am not too sure what his trademark is, but I suppose it is a nearly naked person strumming a guitar in the middle of a major metropolitan area and generating revenue by getting television coverage on the likes of The Today Show. Before you ask, the answer is no. I don’t get it! A lot of you ladies out there might get it, but not me.
It sure is cold out here....shrinkage???
The Naked Cowboy earned his fame by walking around New York City in nothing but his cowboy boots, cowboy hat and a pair of draws while strumming his guitar and, in the process, entertaining New Yorkers. He’s not a bad looking man, and he has a body that is ever so slightly nicer than mine (insert fat joke here) so naturally, he was able to make some money off of his bit. As the saying goes, if you’ve got it, flaunt it. I’ll stick to writing these articles. I’ll leave the naked lawyering to someone else.
I don't see why they can't co-exist!
I did a quick bit of research and I did not find a registered trademark for “The Naked Cowboy.” I am truly wondering what the cause of action is here. Mr. Naked Cowboy is likely asserting common law trademark causes of action, and it attempting to stop someone else from profiting from his unique act. At this point, it will be up to a court to decide whether or not trademark protection can be afforded for his act.
July 23, 2010
OZZY OSBOURNE AND TONY IOMMI SETTLE THEIR TRADEMARK DISPUTE OVER THE BLACK SABBATH NAME
The lawsuit between Ozzy Osbourne and Tony Iommi over the Black Sabbath trademark has been “amicably resolved” (source). Ozzy filed a lawsuit in May of 2009 after finding out that Iommi filed a trademark application for “Black Sabbath” with the U.S. Patent and Trademark Office. The lawsuit claimed that Iommi illegally took sole ownership of the trademark when he filed the application with the USPTO. The relief sought in the complaint for a 50 percent interest in the trademark, along with a portion of the profits that Iommi may have realized from use of the trademark. Ozzy claimed that it was his vocals that gave the band it’s extraordinary success. I’d bet that’s the same case for “The Osbournes,” the MTV reality show.
Black Sabbath is an English band formed by Ozzy, Iommi, Geezer Butler and Bill Ward in 1968. The band went through many iterations, but the one constant throughout the years was Iommi. Ozzy left the band in 1979. The original lineup reunited in 1997 and released one album.
Don't we all own the trademark???
This case was kind of interesting to me because it seemed to be a trademark dispute between two guys (Iommi and Ozzy) over a trademark that many people could probably claim an ownership interest in. From what I can see, there were more than 20 members of Black Sabbath over the years. It seems to me that many of those members, or their estates, could be entitled to some of the profits that are derived from the “Black Sabbath” trademark. Without question, Iommi and Ozzy are the most popular members of that band, and probably did lead to most of its success, but this case had every potential to get ugly quick. I am sure that this came up in the settlement discussions, i.e., some attorneys probably sat around a table and advised the two that if the case got dragged out, they should not be surprised if several other members of the Band came out of the woodwork to claim their piece of the pie.
Iommi is welcome to join our family anytime!
Appraently, the possiblity of yet another reunion has not been ruled out. It is a crying shame that “The Osbournes” reality show is not still around. Theycould have had entire episodes based solely on this lawsuit. The ratings would have been through the roof. Wishful thinking!
June 24, 2010
David Ortiz and Jay-Z Settle Trademark Dispute Over the 40/40 Club
If you read this blog at all, you have figured out that I am a sports fan of sorts. I think we all know that I have a slight interest in intellectual property (I had better for the sake of my clients). You could only imagine my excitement when the riveting intellectual property news that I normally follow crossed over into my sports news. Many of you may have heard of the trademark dispute between David Ortiz of the Boston Red Sox and music sensation Jay-Z. I’m not particularly a fan of either one of them, but I certainly found the story to be interesting. Jay-Z and Juan Perez own the 40/40 Club, with locations in New York, Atlantic City, Las Vegas, Chicago, Tokyo and Macau.
Apparently, Ortiz thought it would be a great idea to open a club in his home country of the Dominican Republic called the 40/40 club. It would be nice to attempt to say that he did it without knowing about Jay-Z’s club, but that does not seem to be the case. 40/40 is a term used in baseball to refer to achieving the milestone of hitting 40 home runs and stealing 40 bases. Reports indicate that Ortiz had frequented Jay-Z’s club in the past. It probably doesn’t help that Jay-Z is a Yankee fan and Ortiz plays for the Red Sox…not that there’s any bad blood between those two teams…
Jay-Z filed his lawsuit for trademark infringement in April, demanding $5 Million in damages. Unfortunately, Ortiz apparently decided not to answer the complaint. (Source.) When a judge threatened to enter a default judgment against Ortiz, an attorney representing him informed the judge of Ortiz’s intention to settle the dispute by changing the name of his Dominican Republic club.
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Although none of this was ground breaking IP news, it peaked my interest nonetheless.
May 6, 2010
IP Holding Companies, Part III
In parts I and II of this series, we discussed the importance of setting up an IP holding company where all of your IP is held. We also provided some pretty good examples of the kinds of things that could happen if your IP is not properly titled in your IP holding company, or if you comingle your IP holding company with other assets. That leads us to this post – a brief overview of the requirements that MUST be followed in order to properly protect your IP and shield it from other liabilities.
As we recommended in our previous post, you should set up an LLC that has the purpose of holding your IP and licensing the IP for use by others. This can actually be a rather simple process here in Florida. The website for the Florida Department of State Division of Corporations is sunbiz.org. The filing forms for setting up your LLC are available for printing or, if you have an account set up already, you can simply electronically file the forms. As noted, this can be a simple process, but one that is somewhat easy to do improperly as well. When all else fails, seek the advice of an attorney.
April 26, 2010
IP Holding Companies, Part II
In a previous post, we discussed the importance of forming an intellectual property holding company to own your IP. That previous post established that starting an IP holding company is necessary. This post will focus on the details.
Talk to any lawyer, and one of their primary goals for their clients is managing their liabilities. This generally includes separating assets so that liabilities do not cross over. For example, suppose you own your IP personally, i.e., it is titled in your name personally. Now imagine that a thief breaks into your house, slips on your floor, sues you for having a slippery floor, and somehow gets a judgment against you (here is a story about a burglar that sued the homeowner that shot him). What happens if your homeowner’s insurance does not cover the judgment? (more…)
April 14, 2010
IP Holding Companies – Why You Need One
If you’re running your own small business, and you don’t have a holding company for your intellectual property, you should make an appointment to have your head examined. Creating a separate entity, solely for the purpose of owning your IP, is the quickest, easiest, and cheapest way to insure the goodwill associated with your business.
I realize that the subject matter of this post is a bit drier than what you may have grown to expect from Tactical IP, but I’m hoping that at least a few of our readers are here for free tips on how to make their intellectual property work for them. With that in mind, I’ll try to keep this light and painless.
Liability protection is the name of the game when it comes to creating business entities. Think of it like an insurance policy. If you do it right, assets can be protected from creditors, including judgment creditors who may have prevailed in a lawsuit. As far as the law is concerned, a properly created and maintained business entity is a separate “person” from its owners and employees. The benefit of that treatment is that, if the property created and maintained business entity incurs debts or gets sued, its assets are the only things that may be taken — not the assets of its owners. Let’s look at an example to really hammer this point home.
April 5, 2010
I don’t want to share my Legos!
We here at TacticalIP like to monitor intellectual property news and try to report it to you. You may have noticed that we pride ourselves on pointing out improper enforcement actions taken by trademark owners. For example, we have previously posted a feature called IP Bully Of The Month. (see here and here).
As I was reading through some intellectual property news that I normally watch, I came across a story that I thought I would share. While this doesn’t top my list of overzealous trademark owners trying to enforce rights that they don’t really have, I felt it deserved a mention. Turns out that The Lego Group (yes – the same company that makes the toys we all played with as kids and the toys that I step on in the middle of the night in my house now) has decided to sue Project LEGOS, a community outreach program started by two University of Minnesota alums. The “LEGOS” in Project LEGOS stands for “Leadership, Empowerment, Growth, Opportunity, Sustainability.”
March 30, 2010
Mi iPad, Su iPad
For a company that has blissfully innovated technology in our world that we hold so dear to our hearts, Apple sure does lack innovation in naming of their products. Good thing that Apple is popular and has some deep pockets – we’re talking the kind of deep pockets that compare to Ed Harris’s decent in The Abyss (1989). Using those deep pockets, Apple has managed to attain the trademark “iPad” from Fujitsu, and move to a 3-0 record in name bouts (their battles over the “Apple Inc.” and “iPhone” names coming before).
The iPad, Apple’s newly anticipated product, which seems to fall between their iPhone and iMac products, will allow the user to surf the web, listen to music, browse photos, and access iBooks, just to name a few functions. The name “iPad” was formerly held by the Japan-based company, Fujitsu, for a similar product used in retail stores. However, Fujitsu and Apple recently negotiated the assignment of Fujitsu’s interest in the “iPad” trademark to Apple for undisclosed terms, coming just before the release of Apple’s iPad on April 3, 2010. For the uninitiated, undisclosed terms roughly translates to big, giant settlement dollars!
February 4, 2010
Honda Sued for Trying to Save the Earth!
Honda can probably be considered one of the leaders in making more fuel efficient vehicles. They have always put out some pretty good vehicles, and now, with hybrid technologies, they have been manufacturing some vehicles that get between 40 and 45 miles per gallon. If I were Honda, I would want to boast about that too. Apparently, Honda started an ad campaign that offended Save the Earth Enterprises, an environmental group based here in the U.S. Save The Earth Enterprises sued Honda for trademark infringement over their recent ad campaign.
At first, I could not wrap my brain around this issue. I could not figure out who in their right mind would possibly confuse an environmental group with an automobile manufacturer. We have all heard about the (alleged) global warming issues, and if global warming was not enough of a reason to want to buy a more fuel efficient vehicle, then the price of fuel sure should have been. I also could not figure out what attorney in their right mind would possibly encourage their client, an environmental group, to sue a giant like Honda, who could only possibly be found at fault for manufacturing cars that may be too reliable (if you have had a bad experience with a Honda, please disregard that last comment).
