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Archive for the ‘IP In the News’ Category

Tequila = Whiskey?

by Bruce Jobse

A recent decision from the US District Court for the Western District of Kentucky held that a red wax seal used on top shelf Cuervo brand tequila infringes Maker’s Mark trademark registration for “a wax-like coating…trickling down the neck of the bottle in a freeform irregular pattern” as used with whiskey.  So how do purchasers of an expensive tequila end up confused and purchasing Kentucky bourbon because of a dripping red wax seal?

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In Re Cipro: The Arkansas Carpenters Are Told Not To Come To Dinner But To Come To The Party

by Orlando Lopez

The Second Circuit recently decided a patent reverse payment case.  Reverse payments, between an original drug manufacturer and manufacturers of the generic version of the drug, involve the dropping of an infringement lawsuit by the drugmaker in exchange for the makers of generics not entering or delaying the entering into the market and receiving a portion of the profits from the drug while they are not selling their own generic.  In this type of settlement, both the original and the generic drugmakers profit.  Sounds like a good solution and nobody gets hurt (except the attorneys that did not get to participate in the lucrative patent infringement litigation).  Right?

Not so fast.  The consumer plaintiffs in this case, the health and welfare fund of unions (Arkansas Carpenters and others,) do not get the advantage of the lower cost of the drug in the generics!!  (Some drugstores are also plaintiffs).  In the Second Circuit version of In re Cipro (there is a Federal Circuit version with the same result but without an invitation to en banc), the Second Circuit panel did not want to overrule their prior precedent (Tamixofen) and so did not find that reverse pavements were unlawful, but invited the plaintiffs to apply for en banc rehearing.  The Department of Justice (DOJ), in an invited amicus brief, shifted its position to align itself  with the FTC and had called for finding reverse payments to be unlawful.  We will have to wait until the en banc hearing for the whole story.

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The Rapper and The Slugger

by Bruce Jobse

Can it be that the intense rivalry between two of Major League Baseball’s oldest and most famous teams, the Boston Red Sox and the New York Yankees, which is already global in nature, has spilled over into the world of intellectual property? Apparently so.

Last week notorious Yankee fan and successful rapper/producer Jay-Z brought an action in US District Court in New York alleging that the online advertising of a nightclub named “Forty Forty” in Santo Domingo by David “Big Papi” Ortiz, one of the Red Sox heavy hitters, infringes Jay-Z’s trademark for “40/40 Club” as used on a chain of sports-oriented nightclubs. Seems that Big Papi was photographed a few seasons back, partying at the New York location of the 40/40 Club. That alone was probably enough to irritate local patrons, including New York Yankee Alex Rodriguez. But apparently Mr. Ortiz’s club opening on his native Dominican Republic turf with an alleged confusingly similar mark was more inflammatory to Jay-Z than watching Mr. Rodriguez being called out after slapping the ball from Bronson Arroyo’s glove during the 2004 ALCS playoffs.

So is this high and outside fastball aimed towards Big Papi’s ear really about the Lanham Act and trademark infringement? Although the 40/40 Club has locations in various cities in the US as well as Japan and China, it seems that Ortiz may take a swing at hitting this one out of the US District Court’s jurisdiction. It will be interesting to hear the official call, especially since Jay-Z is seeking an injunction. One thing for sure, the fans will enjoy watching both benches of lawyers rumble.

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You Might Be Novel and Nonobvious, But You Cannot Patent Your Genes

by Orlando Lopez

Unless the Federal Circuit Court reverses, you may not be able to patent your genes.  Isolating DNA does not make it patentable according to a decision by the Federal District Court for the Southern District of New York in a case brought by the ACLU against the US  Patent Office. As an end result, claims in several patents held by Myriad Genetics and the University of Utah Research Foundation were held invalid. A very broad method of use claim was also held invalid.  The effect of this ruling on biotechnology is difficult to assess until the Federal Circuit considers an almost certain appeal.

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