Publication: First Circuit Prescribes eBay Injunction Treatment For Trademark Cases

Another work published in the World Trademark Review Daily.

James L. Bikoff, David K. Heasley, Phillip V. Marano and Liubov Ebralidze, First Circuit Prescribes eBay Injunction Treatment For Trademark Cases, WORLD TRADEMARK REVIEW DAILY, June 17, 2011.

Comment:

This article briefs a ruling of the United States Court of Appeals for the First Circuit re a motion to preliminarily enjoin alleged trademark infringement in Voice of the Arab World v. MDTV Medical News Now, Inc., Case No. 10-1396 (May 27, 2011).

My original idea for a title was, "First Circuit Asks: Injunction Presumption, What's Your Function?"  However, my attempt at a rare Schoolhouse Rock reference to the song Conjunction Junction, What's Your Function? was lost my co-authors.

Publication: Contributory Cybersquatting and Trademark Dilution Are Valid Causes of Action

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Another work published in the World Trademark Review Daily.

James L. Bikoff, David K. Heasley and Phillip V. Marano, Contributory Cybersquatting and Trademark Dilution Are Valid Causes of Action, WORLD TRADEMARK REVIEW DAILY, February 3, 2011.

Comment:

This article discusses a recent ruling by the United States District Court for the Western District of Washington recognizing two "novel cause[s] of action" for contributory cybersquatting and contributory trademark dilution.  Microsoft Corp. v. Shah, Slip. Op. Case No. C10-0653 RSM (January 12, 2011).

Publication: Credit For Counterfeiting Where Credit Is Due

My first co-authored work in the European Communities Trade Mark Association ("ECTA") Gazette:

James L. Bikoff, David K. Heasley and Phillip V. Marano, Credit For Counterfeiting Where Credit Is Due, EUROPEAN COMMUNITIES TRADE MARK ASSOCIATION GAZETTE (November 23, 2010).

Comment

I am still waiting to hear on publication permissions regarding links to this article.  It covers the facts and settlement of Gucci v. Frontline Processing Corp., Slip op., No. 09 Civ. 6925 (H.B.), 2010 WL 2541367 (S.D.N.Y., June 23, 2010).

Tiffany (NJ) Inc., and Tiffany & Co. v. eBay, Inc.

On August 27, 2010, Tiffany (NJ) Inc., and Tiffany & Co. filed a Petition for a Writ of Certiorari appealing the ruling of the United States Court of Appeals for the Second Circuit.  Tiffany v. eBay, 600 F.3d 93 (2nd Cir. 2010).

Here is Tiffany's Petition:

Petition for a Writ of Certiorari.

Comments:

In addition to an interesting legal argument analyzing Inwood Labs as derrived from Snow Crest Beverages, Inc. and in light of Fonovisa, the Petition also sets forth several pursuaive arguments on public policy:

"The need for th[e Supreme] Court's guidance on the scope of contributory trademark infringement is particularly intense because, as the Second Circuit recognized, the Court most recently addressed the issue in 1982.  The allocation of liability in this context ultimately determines who bears the burden of policing against trademark infringement, yet when the Court last considered the issue, the Internet was pratically nonexistent.  The Internet has since become an effective and widely used tool for counterfeiters to ply their trade, and the magnitude of that infringement on valuable trademark rights could scarcely have been imagined in 1982."  Petition at *12.

"Trafficking in counterfeit goods has become a global economic problem, and the Internet now provides unprecedented opportunities for counterfeiters to market their illegitimate wares.  Courts around the globe have struggled to define the proper scope of contributory liability in this changed world.  This Court's review is likewise warranted to ensure that federal trademark law is adequately calibrated to modern economic and technological reality." Petition at *22.

Quotation: "Cash Cow" or Valuable Credential?

A quotation in the National Law Journal.

Karen Sloan, "Cash Cow" or Valuable Credential; Law Schools Add LL.M Programs, But Their Value May Be Limited, THE NATIONAL LAW JOURNAL, September 20, 2010.

Comments:

On balance, the article offers more critiques than praises for U.S. LL.M programs.  They are "cash cows" for law schools; they are "viewed by graduates of lower-ranked law schools as a way to boost their resumes"; "they don't guarantee entry into a major firm"; etc.  These are the same criticisms I encountered when I began looking at LL.M programs in intellectual property a few years ago.

Accordingly, I made sure to explain that "[t]he value of an LL.M degree is whatever you decide to make it."  I agree that earning an LL.M to merely "boost [your] resume" or impress "a major firm" is ill advised.  However in my case, an LL.M allowed me to pursue my interest in a niche practice area; garner relevant knowledge and work experience; and network with established professionals in the field.  As I explained in a brief narrative provided for the article:

Despite my demonstrated interest and academic achievements, employment opportunities in this intellectual property niche were practically nonexistent given my lack of related work experience.


Faced with the prospect of shelving my passion and accepting offers to work in personal injury litigation or the like, I began looking at LL.M programs in intellectual property as a means to get my proverbial foot in the door.

Despite the article's criticisms, which were reiterated by the Wall Street Journal and explored further by Above the Law, I was pleased to see a smattering of success stories from fellow U.S. LL.M graduates who seem equally dedicated to the various fields of law they have chosen.

I am a firm believer that a genuine passion for one's profession and practice area goes a long way toward establishing a successful career.  It drives perserverance in the face adversity and instills confidence in both employers and clients.  Accordingly, I am proud to hold an LL.M in intellectual property as indicia of my perserverance and confidence.