Blog

You are here: Home » Blog

Our Blog

forms

Recently, the companies responsible for organizing retired baseball legend Cal Ripken, Jr.’s baseball camps (“Ripken Companies”) were sued for patent infringement.[1] The Plaintiff in this case is Zito, LLC, a company owned by Arthur J. Zito, Jr. (“Zito”).[2] In its Complaint Zito alleges that it owns two patents which cover a “User-Specific Dispensing System,” namely U.S. Patent No. 7,398,921 and 9,443,369.[3] The Ripken Companies are alleged to conduct baseball camps, clinics and skills training seminars using a baseball practice machine called the “Fungoman® FM-250.”[4] According to its Complaint,... Read more

Last week, the United States Court of Appeals for the Eleventh Circuit (“Eleventh Circuit”) affirmed that in order to bring a copyright infringement lawsuit the Plaintiff must have first obtained a copyright registration.[1] As discussed in a previous blog article, registration is required prior to a copyright owner bringing a lawsuit in court for copyright infringement. The dispute to be resolved by the Eleventh Circuit in Fourth Estate was whether the term “registration” means when the copyright owner files an application to register the copyright with the United States... Read more

Recently, a patent infringement lawsuit filed in the Eastern District of Texas was transferred to the Northern District of Texas.[1] While this news may seem hardly ground-breaking, this may signal that courts are becoming more willing to transfer patent infringement cases away from the Eastern District of Texas. A previous blog article illuminated the current dispute in patent law regarding the proper venue in which infringement lawsuits can be filed. The Supreme Court is currently hearing the case of TC Heartland LLC v. Kraft Food Brands Group LLC, which is likely to decide the proper interpretation of the patent... Read more

Last month, with a smile, I accepted an offer from Nuccia McCormick to become the Parliamentary Chairperson of the Thomas W. McCormick Scholarship Fund.  The Fund is a Florida Not-For-Profit (501(c)(3)) Organization that was named after the late Thomas W. McCormick who was a highly-successful engineer and civic leader. He was a decorated captain in the U.S. Army Corps of Engineers and a U.S. Ranger in France, Germany and Vietnam. His efforts serving our country in combat earned him a Bronze Star. The Thomas W. McCormick Scholarship Fund provided scholarships and “study... Read more

Recently, a patent infringement lawsuit was brought against Uber Technologies, Inc. (“Uber”) by a competing ride-sharing company named Hailo Technologies, LLC d/b/a Bring (“Plaintiff”).[1] The Plaintiff describes itself as a company that develops software intended to service ride-hailing customers interested in bringing their biking equipment when traveling.[2] The Plaintiff alleges that it owns a patent registration for a computer based method/system of calling and dispatching drivers, which enables a user to select a particular Taxi or vehicular transport company from a menu, along with the desired destination and number of... Read more

Recently, the companies responsible for manufacturing and distributing butter under the trademark KERRYGOLD (“Plaintiffs”) filed a trademark infringement lawsuit against Eurogold USA, LLC and Old World Creamery, LLC (“Defendants”).[1] The dispute revolves around Plaintiffs’ allegations that the Defendants plan to sell Irish butter products under the mark IRISHGOLD.[2] According to  Plaintiffs, the parties were in negotiations for the Defendants to package Plaintiffs’ Irish butter products under the KERRYGOLD mark in Wisconsin, but negotiations broke off and Defendants decided to sell their own products under the IRISHGOLD mark.[3] Although... Read more

Congratulations to Catherine Lewin, who just won two 3-day passes to Ultra Music Festival in Miami!  The winner was randomly chosen by a third party vendor to ensure the integrity of the sweepstakes.  Ms. Lewin is not affiliated with the law firm of Santucci Priore, P.L., Save the Twinz: Live Pink! or Ultra Music Festival. The Ultra Music Festival in Miami is one of the largest electronic dance music events in the United States and, at times, has been the largest. It is certainly the most famous EDM... Read more

Emma Bassiri, one of Santucci Priore’s favorite clients and CEO of Meowingtons, without a doubt loves cats. So much in fact, she started an online company dedicated to all-things cats, Meowingtons.com. Established in 2014 and based in Miami, Florida, Meowingtons gives all cat lovers a single-stop site for shopping and sharing cat memes, gossip, and news. Her six wonderfully fluffy employees, Ace, Pistachio, Ginger, Nyan, Nimbus, and Cinammon, help keep the company running smoothly. Cats have shared households with humans for well over 9,000 years and at one point were worshipped by ancient Egyptians. There’s even continued dispute within the scientific community whether cats are truly domesticated or not. Ask almost... Read more

Santucci Priore, P.L.’s immigration law department is committed to keeping the public up to date on President Trump’s executive orders that include travel bans now targeted to travelers from six (6) different countries, and any countries that are added to that list.  The updates will include full text of the pertinent orders and other legal documents so that our immigration clients and other followers have the direct information, free of media spin from either side of the political spectrum.  Stay tuned to www.500law.com and our firm’s Facebook and  Read more

Recently, the National Collegiate Athletic Association (“NCAA”) filed a trademark infringement lawsuit over the use of the term “April Madness” by an online fantasy game.[1] The Defendants are alleged to market and provide online games which award prizes for predicting the results of sporting events, including college basketball games played during the NCAA Men’s Basketball Championship Tournament, also known as “March Madness.”[2] The NCAA’s Complaint alleges that Defendants have been using the terms “Final 3” and “April Madness” to brand college basketball online fantasy games. Read more

¿Hablas español? Haga clic aquí. Santucci Priore, P.L.’s immigration law department is committed to keeping the public up to date on President Trump’s executive orders that include  travel bans targeted now to travelers from six (6) different countries, and any countries that are added to that list.  The updates will include full text of the pertinent orders and other legal documents so that our immigration clients and other followers have the direct information, free of media spin from either side of the political spectrum.  Stay tuned to  Read more

Santucci Priore, P.L.’s immigration law department is committed to keeping the public up to date on President Trump’s Executive Order that included a travel ban targeted to travelers from seven (7) different countries, and any countries that are added to that list.  The updates will include full text of the pertinent orders and other legal documents so that our immigration clients and other followers have the direct information, free of media spin from either side of the political spectrum.  We also maintain our... Read more

Santucci Priore, P.L.’s immigration law department is committed to keeping the public up to date on President Trump’s Executive Order that included a travel ban targeted to travelers from seven (7) different countries, and any countries that are added to that list.  The updates will include full text of the pertinent orders and other legal documents so that our immigration clients and other followers have the direct information, free of media spin from either side of the political spectrum.  We also maintain our commitment to accept applications for free immigration assistance to anyone affected by the travel ban, previously, and as a result of any future execution of the Order.  The issue is not... Read more

The law firm of Santucci Priore, P.L., which represents the owners and operators of the 9 Mile Music Festival, including Bob Marley's brother Richard Booker and Cedella Marley Booker's "Smilin' Island" food brand, is giving away TWO General Admission tickets to the 9 Mile Music Festival in Miami on March 11th, 2017. This giveaway will benefit Florida breast cancer charity Save the Twinz: Live Pink! One winner will be randomly chosen and will receive both tickets/passes... Read more

The law firm of Santucci Priore, P.L., which represents the owners, operators and licensors of the Ultra Music Festival, is giving away TWO (2) THREE (3)-DAY PASSES to the Ultra Music Festival in Miami for March 24th, 25th and 26th to benefit Florida breast cancer charity Save the Twinz: Live Pink! Two years ago the Ultra Music Festival became the largest music festival of any genre of music in the United States. One winner will be randomly chosen and will receive both tickets/passes which will be valid for entry on all three days and... Read more

The law firm of Santucci Priore, P.L. is accepting applications to offer pro bono (free) immigration advice and assistance to anyone affected by Friday's Executive Order signed by President Trump (full text below) which banned people from entering the United States from seven (7) nations (Iraq, Syria, Iran, Sudan, Libya, Somalia, and Yemen) for 90 days.  The Executive Order also blocks refugees from entering the United States for 120 days and stops Syrian refugees indefinitely. Until now, the law firm of Santucci Priore has focused its immigration practice on employment/worker visas, businesses seeking to expand or relocate to the United States and those families fleeing the economic and... Read more

Recently, Gwen Stefani and Pharrell, among other Defendants, (“Defendants”) were sued for copyright infringement over the song “Spark the Fire.”[1] The lawsuit was brought by musician Richard Morrill (“Plaintiff”) who is a songwriter and singer that was formerly part of a band called L.A.P.D.[2] The Plaintiff alleges that the Defendants’ song “Spark the Fire” is substantially similar to Plaintiff’s “Who’s Got My Lightah” song.[3] The Plaintiff alleges that the most significant similarities between the two songs involve musical and lyrical similarities in the choruses of the... Read more

Recently, Viacom, the company responsible for the Sponge SquarePants television show, prevailed in a trademark lawsuit.[1] The dispute resulted from the Defendant’s plans to use the name “Krusty Krab” for a restaurant.[2] The Plaintiff objected and then filed a lawsuit against the Defendant for trademark infringement and other claims under the Federal Lanham Act and common law.[3] The Plaintiff argued that the Defendant’s proposed use of “Krusty Krab” infringed upon its rights since Plaintiff has been using “The Krusty Krab” as the name of a fictional restaurant in the SpongeBob... Read more

Recently, rapper Rick Ross prevailed in a trademark lawsuit filed against him by rapper Raul Caiz.[1] The Plaintiff, Raul Caiz’s (“Plaintiff”) Complaint asserted claims for Federal Trademark Infringement, Dilution, and Unfair Competition.[2] The Plaintiff asserted Rick Ross infringed upon his trademark in the term “Mastermind,” for which Plaintiff owned a federal registration.[3] Specifically, the Plaintiff alleged that Rick Ross infringed upon his rights by releasing an album entitled “Mastermind,” by tilting his tour “Mastermind,” and by creating a “Mastermind” persona. Read more

Recently, the Supreme Court agreed to hear a case which may place restrictions on where patent litigation lawsuits may be filed.[1] The Supreme Court granted a petition for certiorari filed by TC Heartland LLC (“Petitioner”).[2] The petition resulted from a lawsuit in which the Petitioner was sued for patent infringement by a subsidiary of food company Kraft (“Respondent”).[3] The lawsuit was filed by Respondent in Delaware federal court.[4] The Petitioner argued that the lawsuit should have been brought in Indiana, but this argument was rejected by the United... Read more

Recently, Summary Judgment was entered in favor of the Defendants in a lawsuit brought by a production company over the television show “Love & Hip Hop.”[1] The Plaintiffs filed a copyright infringement lawsuit against the Defendants alleging that the “Love & Hip Hop” show infringed upon a similar concept that was pitched to the Defendants by Plaintiffs.[2] The Plaintiffs’ lawsuit revolves around a one-page Treatment submitted to the Defendants which outlined Plaintiffs’ concept of having a reality television show based upon the lives of four women married to famous Hip Hop artists. Read more

Recently, the Trademark Trial and Appeal Board (“TTAB”) refused trademark applications for the terms “POWERED BY JUJU” and “JUJU JOINTS.”[1] The Applicant sought to register both marks for use in connection with vaporizing devices for cannabis or marijuana.[2] The TTAB found that these marks could not be registered because the use of a mark in commerce must be lawful.[3] Since the Applicant’s marks were intended to be used and were used on goods that are illegal under the federal Controlled Substances Act (“CSA”), the TTAB reasoned that the Applicant could not lawfully use its marks... Read more

Recently, Warner Bros. Entertainment, Inc. (“Warner Bros.”) brought a copyright lawsuit against several talent agencies (“Defendants”).[1] The Complaint alleges that Defendants were involved in “an illegal digital distribution platform that copied movies and then distributed copies and streamed public performances of those movies” to insiders and third parties.[2] Warner Bros. is alleging that the Defendants maintained copies of several of Warner Bros. films, which then made their way from Defendants’ platform to third party online piracy websites.[3] It is alleged in the Complaint that... Read more

Recently, former NFL player, LeCharles Bentley’s claim for trademark dilution was dismissed in a lawsuit that he brought against NBC, among other defendants.[1] This dispute revolves around Plaintiffs’ allegations that the Defendants are infringing upon the trademark LB by using a similar logo in connection with the reality television show, “The Biggest Loser.”[2] This case was originally filed in Ohio but then was transferred to the Central District Court of California.[3] The defendants then moved to dismiss Plaintiffs’ causes of action for trademark dilution and infringement. Read more

Recently, the makers of HPNOTIQ liquor (“Petitioner”) successfully petitioned to cancel the trademark registration for HOPNOTIC beer.[1] The Petitioner filed a cancellation proceeding in the Trademark Trial and Appeal Board (“TTAB”) against the makers of HOPNOTIC beer (“Respondent”), seeking cancellation of the Respondent’s HOPNOTIC trademark registration.[2] Petitioner asserted that it has various trademark registrations for the term HPNOTIQ for use in connection with liquor and other products, which has been in use since 2001.[3] The Respondent asserted that it obtained a trademark registration for HOPNOTIC in connection with beer, which has... Read more

Recently a lawsuit brought by Lindsay Lohan against the makers of the “Grand Theft Auto V” video game was dismissed.[1] Lindsay Lohan, along with Karen Gravano of the show “Mob Wives,” each brought lawsuits against the makers of “Grand Theft Auto V” alleging that the Defendants violated their rights of publicity, under New York law, by misappropriating their name and likeness without authorization.[2] New York Civil Rights Law § 51 provides a cause of action to “[a]ny person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without . . . written consent.”[3] Both... Read more

As I’ve mentioned in my previous spotlight post, Santucci Priore, P.L. have the privilege to represent a veritable cornucopia of clients. By far and wide, one of our most charming and talented is hip hop artist and femcee, Stichiz. Stichiz was born in Ottawa, Canada but raised right here in South Florida. Due to her Haitian heritage, she speaks English, Creole, and French fluently. Stichiz is an active member in South Florida’s community. She hosted and performed in the “Crunk City: Stay in School” tour, with a focus on finding and improving one’s passions, education, and health. From 2008 to 2011, Stichiz served as president of the NAACP’s Youth and College... Read more

The debate regarding what to do about “Patent Trolls” has lately been gaining steam and has been brought to the public attention in various ways. The term “Patent Trolls” usually refers to a person or company that attempts to enforce patent rights against accused infringers, despite the fact that the person or company being labeled a “Patent Troll” does not practice the invention by manufacturing products or supplying services. Thus, many “Patent Trolls” are considered non-practicing entities. Many complaints regarding “Patent Trolls” focus in on the practice of “Patent Trolls” filing lawsuits in an attempt to pressure a settlement and/or a licensing deal because the accused infringer has to face the prospect of incurring significant legal... Read more

Recently, Ariana Grande and David Guetta, among other Defendants, were sued for copyright infringement over the song “One Last Time.”[1] The lawsuit was brought by musician Alexander John Greggs, who is professionally known as “Alex Greggs” or “Alex G.”[2] The Plaintiff alleges that the Defendants’ song “One Last Time” is substantially similar to his “Takes All Night” song.[3] The Complaint alleges that the “most immediately apparent similarities” are the chorus and/or “hook” of each song, since the “choruses in the two songs use a similar melodic contour.”[4] The Complaint alleges... Read more

Pictured above: Dr. Harold "Hackie" Reitman with Katie Charron and Michael Santucci Within the walls of Santucci Priore P.L., we’ve seen our fair share of clients from all walks of life, from mild-mannered businessmen to absolute wild cards and everything in between. Some lead lives that are downright inspirational and it is those clients who are remembered with fond admiration. One of our most respected and well-loved clients is Dr. Harold “Hackie” Reitman, who is not only a now-retired orthopaedic surgeon but also a philanthropist... Read more

Recently, the City of Miami Beach prevailed on a motion to dismiss a lawsuit filed against it under the new Defend Trade Secrets Act.[1] In May of this year, Congress passed the Defend Trade Secrets Act, which allowed, for the first time, the filing of a trade secret misappropriation claim under Federal law.[2] This lawsuit is one of the first lawsuits brought in South Florida under the new Defend Trade Secrets Act. The Plaintiff is a construction firm which alleges that the City of Miami Beach wrongly disclosed its confidential payroll information to co-defendant International Brotherhood of Electrical Workers, Local 349 in response to a public records request by Local 349. Read more

Intellectual property attorney Michael Santucci will once again be co-hosting the Broward County Bar Association's radio show, Legal News and Review, with Phillip Bell, Charles A. Morehead, III and Gary Singer. The show highlights BCBA’s attorney members’ practices by conducting in depth, on-air interviews about issues in that particular attorney’s area of practice. Michael Santucci was recently appointed Co-Chair of the Intellectual Property Division of the Broward County Bar Association for 2016-2017. Special guests include: Scott Silver, who specializes in Securities Law and also wrote a popularly accepted primer regarding the... Read more

Recently, the United States Court of Appeals for the Eighth Circuit ruled in favor of the National Football League (“NFL”) regarding the suspension of star running back Adrian Peterson, of the Minnesota Vikings.[1] The appeal resulted out of a suspension handed to Adrian Peterson during the 2014 NFL season by NFL commissioner Roger Goodell.[2] Peterson was suspended by the NFL indefinitely after Peterson entered a plea of nolo contendere in response to a criminal charge of misdemeanor reckless assault of one of his children.[3] Peterson subsequently appealed the suspension to an arbitrator who upheld the NFL’s decision and the fines imposed... Read more

Earlier this week, the Central District Court of California dismissed a lawsuit brought by screenwriters Everette Silas and Sherri Littleton (“Plaintiffs”) against HBO, Dwayne Johnson and Mark Wahlberg, among others (“Defendants”).[1] As discussed in a previous blog entry, Plaintiffs brought a lawsuit against the Defendants claiming that Defendants committed copyright infringement by producing the HBO show “Ballers,” as a result of alleged similarities from Plaintiffs’ trailer, screenplay and treatment entitled “Off Season.” Read more

Recently, Toys “R” Us was sued for patent infringement by the company that makes Crocs brand footwear.[1] The dispute revolves around the sale of “foam clog footwear” entitled “Koala Kids” by Toys “R” Us.[2] The Plaintiff claims that the sale of such footwear by Toys “R” Us infringes upon its patent rights in U.S. Patent Registration Nos. 6,993,858 (for “Breathable Footwear Pieces”) and D610,784 (for “Footwear”).[3] Specifically, the Plaintiff alleges that Toys “R” Us’ “Koala Kids” footwear are too similar to Plaintiff’s Crocband shoes.[4] The Complaint alleges two counts of... Read more

Recently, a company called Uniloc sued Facebook for patent infringement.[1] The Plaintiffs allege to own several patents in the “field of text/voice instant messaging.”[2] The lawsuit revolves around a dispute over whether the Facebook Messenger app infringes upon the Plaintiffs’ patents.[3] The Plaintiffs’ Complaint specifically references five patents that it claims to own which are entitled “SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING” and which allegedly issued on May 19, 2009, June 12, 2012, August, 14, 2012, May 13, 2014, and March 31, 2015, respectively.[4] The Complaint requests injunctive relief and... Read more

Recently, the Supreme Court agreed to hear a case which may have effect on the foreign reach of United States patents.[1] The Supreme Court granted a petition for certiorari filed by Life Technologies, Corporation (“Petitioner”).[2]  The petition resulted from a lawsuit in which Petitioner was held liable for patent infringement for the shipment of a single component of a patented invention to the United Kingdom.[3] Section 271(f)(1) of the Patent act “assigns infringement to anyone who supplies or causes to be supplied ‘all or a substantial portion of the components of a patented... Read more

Recently, the Supreme Court issued an Order announcing that the justices were deadlocked in a case that sought to challenge President Barack Obama’s immigration plan.[1] President Obama’s executive action issued in November, 2014 would have allowed approximately five million undocumented people who were parents of citizens or permanent residents to legally work in the United States.[2] The decision issued no precedent or reasoning, but affirmed a Fifth Circuit Court of Appeals order entering an injunction which blocked the proposed program in President Obama’s executive action.[3] As a result, President Obama’s November, 2014 executive action will... Read more

Recently, Internet Service Provider Vimeo partially prevailed in a copyright infringement lawsuit filed against it.[1] The Plaintiffs in this case alleged that their copyrights were infringed as a result of music videos being posted to Vimeo’s website by its users.[2] Vimeo invoked the safe harbor provisions provided to it under the Digital Millennium Copyright Act, 17 U.S.C. § 512(c).[3] Under the safe harbor provisions, Internet Service Providers, such as Vimeo, can be protected from liability for copyright infringement as a result of their users uploading infringing content on their site if the service provider does not have knowledge of the... Read more

This entry is a follow up to a previous blog article that discussed the Supreme Court’s decision to hear the case of Kirtsaeng v. John Wiley & Sons, Inc., 2016 WL 205944 (Jan. 15, 2016), which sought determination of the proper standard for attorneys’ fees awards in copyright cases. Recently, the Supreme Court entered a decision in this case setting forth specific guidelines.[1] Specifically, the Supreme Court found that when deciding to award attorneys’ fees under the Copyright Act, the district court should give substantial weight to the objective reasonableness of the non-prevailing party’s position.[2] The Supreme Court also found that all other circumstances relevant... Read more

Recently, Sony was awarded legal fees in a copyright infringement lawsuit brought against it relating to the Shakira song entitled “Loca Con Su Tiguere.”[1] The Plaintiff originally prevailed after a bench trial on its claim for copyright infringement.[2] Later, the Defendant successfully moved for a new trial based upon newly discovered evidence which showed that the subject musical composition deposited by Plaintiff in the United States Copyright Office was a cassette tape which was fabricated in 2010 or 2011, and not in 1998 as originally claimed by the Plaintiff.[3] As a result, the Court found that the Plaintiff did not own a valid copyright. Read more

Recently, Madonna prevailed in a copyright infringement lawsuit brought against her.[1] The Plaintiff in the lawsuit alleged that Madonna’s use of a twenty-three second modified “horn hit” in her song “Vogue” constituted copyright infringement.[2] The Plaintiff claimed that Madonna unlawfully sampled the modified “horn hit” from Plaintiff’s disco song “Love Break” and thus, infringed upon the Plaintiff’s copyrights to “Love Break.”[3] The Ninth Circuit Court of Appeals affirmed the district court’s grant of summary judgment in favor of Madonna.[4] The Ninth Circuit expressly held that any... Read more

Earlier this year, the company behind the “Four Loko” flavored malt beverage product sued a competitor for trade dress infringement. In its Complaint the Plaintiff alleges that the Defendant’s “J Series” flavored malt beverage product uses packaging that is confusingly similar to that of the packaging used on Plaintiff’s “Four Loko” product. The Plaintiff alleges that the parties are direct competitors in the alcohol beverages industry and serve similar commercial markets and consumer bases. The Plaintiff is seeking injunctive relief and monetary damages on its claims for trade dress infringement, false designation of origin, unfair competition, and violation of the Illinois Deceptive Trade Practices Act. Trade dress is a related concept to... Read more

Earlier this year, the screenwriter for the television show Empire was sued for copyright infringement, along with other defendants, including production company Twentieth Century Fox Film Corporation. The lawsuit was brought by pro se Plaintiff, Timothy J. Levi who alleges that he owns the copyright for a book he wrote entitled “United Incorporated: The Mastermind.” The Complaint alleges that the Defendants copied elements from the Plaintiff’s book in order to create the television show Empire. Specifically, the Complaint alleges that “[t]he character traits of the lead actor of Empire, Terrence Howard, are strikingly similar to the character traits of Anthony ‘Pee Wee’ Lewis, the lead character of Unity Incorporated: The Mastermind.” The Complaint... Read more

This entry is a follow up to a previous blog article[1] regarding the case of Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015), in which the Sixth Circuit Court of Appeals ruled that designs on cheerleading uniforms are eligible for copyright protection, namely stripes, chevrons, and color blocks incorporated into a uniform. Star Athletica, LLC then filed a petition for a writ of certiorari to the Supreme Court, which recently agreed to hear the case.[2] The Supreme Court agreed to hear only one issue from Star Athletica, LLC’s petition, namely the question: What is the appropriate test to determine when a feature of a useful article is protectable under §... Read more

U.S. Citizenship and Immigration Services (USCIS) announced on April 7, 2016, that it has received enough H-1B petitions to reach the statutory cap of 65,000 visas for fiscal year (FY) 2017. USCIS has also received more than the limit of 20,000 H-1B petitions filed under the advanced degree exemption, also known as the master’s cap. USCIS received over 236,000 H-1B... Read more

  A Warm Welcome To The U.S.A. The United States welcomes the filing of trademark applications by foreign business owners.  …so much so, that Section 44(e) of the Trademark Act does not require that such an applicant make actual use of the mark in the United States. See, Trademark Act, § 44(e), 15 U.S.C. § 1126(e); Also see, Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 223 U.S.P.Q. (BNA) 909, 1984 TTAB LEXIS 22 [15] (TMT App. Bd. 1984)(“Use in commerce over which Congress has control need not be alleged…”).  “Section 44(e) gave such foreign applicant a significant advantage over other applicants in procuring a registration in this country.” Id.; See also, Crocker at [15]-[16]. The treaty... Read more

Recently, Cirque Du Soleil’s corporate entities filed a lawsuit against Justin Timberlake, among others.[1] The Complaint alleges two claims for copyright infringement over Justin Timberlake’s song “Don’t Hold The Wall,” from his double platinum “The 20/20 Experience” album, which sold over two million copies.[2] Cirque Du Soleil alleges in its Complaint that that the “Don’t Hold The Wall” song infringes upon Cirque Du Soleil’s copyrights in the musical composition and sound recording of the song entitled “Steel Dream,” which was a part of Cirque du Soleil’s “QUIDAM” album.[3] Cirque Du Soleil asserts in its Complaint that it... Read more

Recently, the corporation responsible for Donald Trump’s presidential campaign was sued in the United States District Court for the Southern District of New York.[1] The Plaintiffs are professional photographers who allege that the Defendant committed copyright infringement as a result of the Defendant’s alleged use of Plaintiffs’ copyrighted photograph of a bald eagle to promote Donald Trump’s presidential campaign and to otherwise sell merchandise without Plaintiffs’ authorization.[2] The allegedly copyrighted photograph is described in the Complaint as capturing a “piercing, intimate, eye-to-eye moment with this majestic creature with near-perfect symmetry against a flawless sky... Read more

Recently, the companies operating the car company ROLLS-ROYCE obtained a default judgment against rapper Robert D. Davis a/k/a Rolls Royce Rizzy.[1] The Plaintiffs brought a lawsuit against the Defendant for trademark dilution, trademark infringement and unfair competition/false designation of origin under the Federal Lanham Act and for claims under New Jersey statutory and common law.[2] The dispute arose out of Defendant’s use of the name “Rolls Royce Rizzy” in connection with his performance and sale of rap music, including promotion of his music on YouTube and through the sale of shirts that contain the words “Team Rolls Royce.”[3] The... Read more

Below are excerpts from the interview of Santucci Priore, P.L. attorney Michael I. Santucci which aired this week on Legal News and Review, a weekly radio show on 1230 AM which is sponsored by the Broward Bar Association.  Michael Santucci was the featured guest on the show. Audio Transcipt: Announcer:     Welcome back to Legal News and Review. Coming to you recorded... Read more

Annual Reports are due each year between January 1st and May 1st.  All Florida profit corporations, limited liability companies, and limited partnerships will be assessed a $400.00 late fee after May 1st which cannot be waived.  Go to the Division of Corporations' website, www.sunbiz.org and file today. The Annual Report is used to update or confirm the Florida Department of State, Division of Corporations' records. The data displayed on the entity’s online Annual Report form is the most current data on file with the Division of Corporations. An Annual Report must be filed each year for your business entity to maintain an "active status" with the Department of State. The Annual Report is required whether... Read more

By: Michael A. Einhorn, Ph.D. Recent decisions in the Federal Circuit has greatly limited the use of analytic techniques that  experts in patent litigation may use to determine a reasonable royalty due to an infringed patent.  In ResQNet v. Lansa, 594 F. 3d 860 (Fed. Cir. 2010),  the Court disallowed expert testimony that proffered as remedy a royalty rate that was based on benchmark rates drawn from contracts that involved  “similar” patents for technologies that were nonetheless not in suit.  In Uniloc USA, Inc. v. Microsoft Corp., 632 F. 3d 1292 (Fed. Cir. 2011), the Court disallowed expert testimony that based royalty rates upon a 25% partition of defendant profits that was purportedly drawn from general industry results.  A number... Read more

The law firm of Santucci Priore, P.L., which represents the owners, operators and licensors of the Ultra Music Festival, is giving away TWO (2) THREE (3)-DAY PASSES to the Ultra Music Festival in Miami for March 18, 19 and 20th to benefit Florida breast cancer charity Save the Twinz: Live Pink! Last year the Ultra Music Festival became the largest music festival of any genre of music in the United States. One winner will be randomly chosen and will receive both tickets/passes which will be valid for entry on all three days and nights of the... Read more

Recently, Academy of Motion Picture Arts and Sciences, the company responsible for presenting the “Academy Awards” or “Oscars,” filed a lawsuit against a company providing allegedly unauthorized “Oscars” gift bags.[1] The Defendant is Lash Fary, d/b/a Distinctive Assets and Distinctive Assets LLC, who the Complaint alleges is a marketing business that “specializes in ‘celebrity placement’ by promoting the products of third parties through high-profile ‘gift bags’ to celebrities who attend or are nominated for award shows.”[2] The Complaint alleges state and federal claims for trademark infringement, false advertising, and trademark dilution against Defendant. Read more

Recently, a lawsuit was filed by Solid Oak Sketches, LLC (“Plaintiff”) against various companies responsible for creating the “NBA 2K” video game.[1] The Complaint alleges that the Defendants are liable for copyright infringement over the use of tattoos of professional basketball players in Defendants’ “NBA 2K16” video game.[2] The dispute is over tattoos done by artists on various professional basketball players, such as LeBron James, Kobe Bryant, and DeAndre Jordan.[3]  Plaintiff alleges that it is the owner of the copyrights in such tattoo designs as a result of license agreements with the individual artists. Read more

Recently, the Defend Trade Secrets Act was passed by the U.S. Senate Committee on the Judiciary. The Defend Trade Secrets Act is headed by U.S. Senators Orrin Hatch and Chris Coons, who issued a press release stating their case for the bill.[1] The Defend Trade Secrets Act attempts to create a federal cause of action for misappropriation of trade secrets.[2] Currently, trade secret law is governed by state law and is subject to the various differing standards within each state. Having a federal standard would provide clarity, but the passing of a federal law may create concerns about whether the current state laws will be preempted by the proposed federal law. The Economic Espionage Act of... Read more

On January 15, 2016, the Supreme Court agreed to hear a case which requests that the Supreme Court determine the proper standard for attorneys’ fees awards in copyright cases.[1] The party requesting review by the Supreme Court, Kirstsaneg (“Petitioner”) prevailed against Respondent, John Wiley & Sons, Inc. (“Respondent”), who had sued the Petitioner for copyright infringement as a result of allegations that the Petitioner had purchased Respondent’s textbooks and then resold them without authorization.[2] Petitioner prevailed under the “first sale” doctrine which was found to be a complete defense to Respondent’s claims.[3] Having... Read more

Recently, Home Box Office, Inc. (“HBO”), Dwayne Johnson and Mark Wahlberg were sued for copyright infringement over the HBO show “Ballers.”[1] The lawsuit was brought by two writers who allege that the show “Ballers” copies elements from their trailer and treatment entitled “Off Season,” for which the Plaintiffs have submitted copyright applications.[2] The Plaintiffs allege that they pitched their “Off Season” movie to one or more of the Defendants prior to the airing of the show “Ballers.”[3] Plaintiffs also allege that Defendants were interested in producing “Off Season” but a deal was not able to get done since one or more of... Read more

Recently, a lawsuit that was filed against various entities and persons related to the professional ice hockey team, the Orlando Solar Bears, was dismissed.[1] The lawsuit was originally brought in the Western District of New York but was then moved to the Middle District of Florida.[2] The Plaintiff’s complaint alleged causes of action for trademark infringement, unfair competition, trademark dilution, and copyright infringement.[3] The Orlando Solar Bears are a professional ice hockey team in the East Coast Hockey League, which operates as one of the developmental/minor leagues for the National Hockey League (“NHL”). The ECHL is a tier below the... Read more

Recently, Actor/Musician Jared Leto, through his company Sisyphus Touring, Inc., filed a copyright infringement lawsuit against celebrity gossip/entertainment news company TMZ.[1] The Plaintiff alleges in the Complaint that TMZ used video footage of Jared Leto in his home music studio, in which Mr. Leto allegedly critiqued various Taylor Swift songs and otherwise uses profanity.[2] The Complaint alleges that the Plaintiff has filed an application to copyright the video footage and that TMZ obtained the footage without Plaintiff’s consent or authorization.[3] Plaintiff alleges the Defendants obtained the video footage from a former videographer hired by... Read more

Recently, E. & J. Gallo Winery (“Gallo”) opposed the registration of a trademark application filed by Conscious Cultures LLC (“CC”) for the term BAREFOOT BUCHA.[1] CC applied for registration of the mark BAREFOOT BUCHA for use in connection with Kombucha Tea.[2] According to CC’s website, Kombucha Tea is a “naturally carbonated, fermented tea that originated in Eurasia” which is usually drank after a meal and provides digestive benefits.[3] The Kombucha Tea provided by CC does not contain alcohol.[4] In its opposition Gallo alleges that it is the owner of the family of trademarks for the term... Read more

We previously wrote a blog entry on whether copyright protection could be obtained for a “Selfie”. A novel question of copyright law was raised in that blog entry regarding the ability of an Indonesian crested macaque, a type of monkey, to obtain copyright protection in photographs taken by the macaque. Earlier this year a lawsuit was filed by People for The Ethical Treatment of Animals, Inc. (“PETA”), on behalf of the macaque, seeking copyright protection for the photographs.[1] In 2011, the macaque took several photographs of itself with a camera left unattended by photographer and defendant, David John... Read more

Recently, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) denied an opposition, by Boston Athletic Association (“BAA”), to the registration of the mark MARATHON MONDAY by Velocity, LLC (“Velocity”).[1] Velocity filed an application for the mark MARATHON MONDAY for use in connection with “clothing, namely tops, bottoms, headwear, sweatshirts, sweat pants, jackets, pullovers, caps, hats, socks.”[2] Velocity’s application was opposed by BAA, which is the entity responsible for organizing the annual Boston Marathon. BAA objected to registration of the mark MARATHON MONDAY because it created a false association with BAA. Read more

Recently, the creator of the “HONEY BADGER DON’T CARE” YouTube video filed a lawsuit against Kohl’s Department Stores alleging various federal trademark and copyright claims.[1] The Plaintiff published a YouTube video on January 18, 2011 which consisted of his comedic narration describing the traits of a honey badger.[2] The video became popular generating more than 75 million views on YouTube.[3] The Plaintiff subsequently obtained a copyright for the narration of the video and trademarks for the phrase “HONEY BADGER DON’T CARE,” which was repeated often by the Plaintiff throughout the YouTube video.[4]... Read more

Recently, the Supreme Court agreed to hear two cases which involve questions regarding the proper standards for willful patent infringement and the enhancement of damages for infringement.[1] The Patent Act provides that damages in a patent infringement lawsuit may be enhanced where there is clear and convincing evidence that the infringement was willful.[2] Willful infringement may be found where: 1) there was an objectively high likelihood that the infringer’s actions constituted infringement, and 2) this likelihood was either known or so obvious that it should have been known to the accused infringer.[3] Further, “[o]bjective recklessness will not be... Read more

Recently, musician and entrepreneur William Adams, a/k/a will.i.am, who was a member of the musical group Black Eye Peas, was denied a trademark registration for the term “I AM”.[1] I.am.symbolic, LLC, a company affiliated with will.i.am, filed the trademark application for “I AM” for use in connection with various goods, including without limitation cosmetics, makeup remover, massage oils, sunscreen, toothpaste and mouthwash.[2] The trademark application states that these goods are “all associated with Willliam Adams, professionally known as will.i.am.”[3] The trademark examiner rejected the application due to likelihood of confusion with a... Read more

Recently, musicians and entrepreneurs Beyoncé, Jay-Z, Kanye West, Pharrell Williams and Rihanna, filed a lawsuit in the Southern District of New York against French based fashion company ELEVENPARIS for various claims relating to right of publicity violations, unfair competition, and trademark infringement.[1] The lawsuit results from ELEVENPARIS’ alleged unauthorized use of the Plaintiffs’ names, images, likeness and trademarks on various clothing products, “including but not limited to, t-shirts, tank tops, sweatshirts, hats, backpacks and cell phone cases.”[2] For example some of the t-shirts use the slogan “Kanye is My Home” or “Pharrell is My Brotha” or lyrics of famous... Read more

The United States Court of Appeals for the Ninth Circuit recently decided a significant case regarding whether college student-athletes should receive monetary compensation. In O’Bannon v. National Collegiate Athletic Ass’n,[1] a group of current and former college football and basketball players brought a class action lawsuit alleging anti-trust law violations against the National Collegiate Athletic Association (“NCAA”). The dispute primarily focused on the NCAA’s compensation rules which prevent college student-athletes from receiving monetary compensation for the use of a player’s name, images and likeness, such as in video game depictions of college student-athletes. Read more

Recently the Central District Court of California ruled that no copyright protection exists for the popular “Happy Birthday To You” song after several decades of dispute.[1] Marya, involved a class action suit against Warner/Chappell Music, Inc. (“Warner/Chappell”) seeking to invalidate Warner/Chappell’s alleged copyright in the “Happy Birthday To You” song.[2] Warner/Chappell alleged that it owned a copyright for the lyrics of the “Happy Birthday To You” song.[3] Neither party disputed that the melody of the “Happy Birthday To You” song had entered the public domain, thus, the main dispute revolved around a copyright in the... Read more

The United States Court of Appeals for the Ninth Circuit issued a significant ruling this week in the Copyright law realm. In Lenz v. Universal Music Corp.[1], the Ninth Circuit found that a copyright holder who intends to send a Digital Millennium Copyright Act (“DMCA”) takedown notice must first consider whether the potentially infringing material may be considered fair use. The DMCA provides procedures for a copyright holder to request that infringing material be removed from online sources.[2] Under the DMCA, a copyright holder can submit what is called a takedown notice to a service provider, such as YouTube or Google,... Read more

Santucci Priore, P.L. client, Ernest Evans is a legendary musical entertainer known by his stage name "Chubby Checker." CHUBBY CHECKER – The Man – The Entertainer –The Pop Culture Legend Early Years – Origins of the State Name “Chubby Checker” Ernest Evans, p/k/a “Chubby Checker” was born in Spring Gulley, South Carolina and was raised in South Philadelphia where he would sing songs on street corners.  While entertaining his boss “Tony A” with his songs while working in the poultry section of an Italian market, Mr. “A” coined him “Chubby,” a stage name he immediately adopted with courage and pride.  The idea to add “checker” to his original nickname, was inspired by Dick Clark’s wife during a... Read more

Recently, the United States District Court for the Southern District of New York found Costco liable for several trademark related claims brought by Tiffany & Co.[1] The dispute centered around Tiffany’s allegations that Costco sold diamond engagement rings bearing the Tiffany name and trademark in Costco stores.[2] The Court found that Costco had infringed upon Tiffany’s trademarks and otherwise engaged in trademark counterfeiting.[3] The Court supported its holding by finding that the evidence showed that Costco placed signs adjacent to the rings using the Tiffany name when in fact the rings were not manufactured by Tiffany. Read more

Unlike some of the neutral and unbiased articles published on this blog, this article is purely my opinion.  Florida’s new Patent Troll Prevention Act, Florida Statutes §§ 501.991-997, will be a disaster.  Similar to the “tort reform” trend of the prior decade, this Act is another overcompensation by the Florida Legislature to accommodate accused wrongdoers with large lobbying budgets who are in need of far less protection than other segments of the public and business community. Problematic Provisions of the Act The Act states that it prohibits plaintiffs from making “a bad faith assertion of patent infringement.” § 501.993, Fla. Stat.  The Act creates a private right of action for violations, entitling... Read more

Recently the United States Bankruptcy Appellate Panel of the Tenth Circuit found that a Colorado marijuana business owner could not be awarded bankruptcy relief. The Court noted that even though Colorado has legalized the acts of “[p]ossessing, growing, and dispensing marijuana” these acts are still federal criminal offenses. Thus, it was determined that the debtors could not receive any bankruptcy relief under Chapter 7 because administrating the debtors bankruptcy estate would involve the bankruptcy trustee in administering and/or distributing funds derived from activities that violate federal law. The Court also noted that the debtors could not convert the bankruptcy to a Chapter 13 because they could not propose a feasible Chapter 13 repayment plan without... Read more

Is an original trademark abandoned if a subsequent modified version of the mark creates the same, continuous commercial impression?  In a case of first impression, the Federal Circuit answered in a resounding no.  Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 2015 WL 4934553, at *3 (Fed. Cir. 2015).  When Jack Wolfskin applied to register a nonhuman paw print as its mark for a variety of products, New Millennium Sports opposed, arguing that there would be likelihood of confusion.  Id. at *1.  New Millennium Sport’s already registered mark featured the word KELME with an adjacent paw print.  Id. Jack Wolfskin’s counter was to argue 1) that there... Read more

The United States Court of Appeals for the Sixth Circuit recently ruled that designs on cheerleading uniforms are eligible for copyright protection.[1] Varsity Brands, Inc. involved a dispute between two cheerleading apparel and accessory companies regarding whether graphic designs that appear on cheerleading uniforms and warm-ups are subject to copyright protection.[2] The Plaintiff alleged that the Defendant sold cheerleading uniforms that were substantially similar to the cheerleading uniforms sold by the Plaintiff and sued for copyright infringement, among other claims.[3] The Defendant argued that the copyright registrations relied upon by... Read more

Recently, the Federal Trade Commission (“FTC”) issued an official statement about the enforcement principles for policing “Unfair Methods of Competition.” 15 U.S.C. §45(a)(1) declares “unfair methods of competition in or affecting commerce” to be unlawful. The FTC’s statement was the first of its kind on the subject from the FTC and was largely a result of the fact that Congress did not specifically define what constitutes “Unfair Methods of Competition.” The statement attempts to establish guidelines for the FTC’s exercise of authority under 15 U.S.C. §45(a)(1) and states that: -the Commission will be guided by the public policy underlying the antitrust laws, namely, the promotion of consumer welfare; -the act or... Read more

The United States Court of Appeals for the Federal Circuit recently made an important ruling regarding the territorial limits of damages in a patent infringement lawsuit in Carnegie Mellon University v. Marvell Technology Group, Ltd., etc.[1] In this case Carnegie Mellon successfully obtained a jury verdict against Marvell for patent infringement of two patents related to hard-disk drives.[2] The jury awarded Carnegie Mellon approximately $1.17 billion as a reasonable royalty based upon a rate of 50 cents for each “of semiconductor chips sold by Marvell for use in hard-disk drives,” among other damages.[3] The Federal Circuit affirmed the... Read more

The United States Court of Appeals for the Ninth Circuit recently ruled that the Ray Charles Charitable Foundation can proceed with copyright claims it has asserted against the adult children of the late musical great Ray Charles.[1] The Ray Charles Foundation is a non-profit corporation which provides “research and scholarship grants for the benefit of the deaf, blind, and underprivileged youths.”[2] The Foundation is the sole beneficiary of Ray Charles’ estate and relies upon royalties from Ray Charles’ copyrighted work to operate.[3] The Foundation sued seven of Ray Charles’ twelve adult children for allegedly breaching an agreement, made... Read more

Recently, the United States Copyright Office issued a report regarding proposed changes to the Copyright Act in relation to Orphan Works and Mass Digitization.[1] The term Orphan Works refers to works where the copyright owner cannot be identified or located. One of the main problems with Orphan Works is that it prevents a potential user of the work from seeking permission to use the work because it is unclear who to contact. This subjects a user of an Orphan Work to the risk that the previously unknown copyright owner will surface after the use has occurred and file a lawsuit for monetary damages against the user. The main proposed change to the Copyright Act is to introduce a limitation on user liability for those users who... Read more

The legal term Laches is often used to describe a potential defense that a person being sued can assert. Laches encompasses the situation where a Plaintiff has delayed in bringing a lawsuit for an unreasonably long period of time. In some cases Laches can be a complete bar to a lawsuit if the delay is significant enough. In cases involving intellectual property, such as patents, copyrights and trademarks, courts will usually look to see if there is an applicable statute of limitations to determine how long is too long for a Plaintiff to wait to sue. Although patents, copyrights and trademarks are considered to be under the umbrella of intellectual property, the law varies. In the context of trademark law, Laches is an available defense which has the potential to... Read more

In 1996, an amateur artist named Frederick Bouchat designed a logo for the Baltimore Ravens that the club later adopted as a team symbol without his awareness.  The infringing symbol then appeared on Ravens merchandise sold at home football games. After winning on copyright liability in the District Court of Maryland, Bouchat pressed for disgorgement of defendant profits, which is an allowable financial remedy under the Copyright Act. Bouchat got nothing.  The District Court ruled in 2002 that the transacted merchandise payments were based on contracts signed before the actual logo was chosen.[1]  In the District Court’s view, there was no demonstrable causal connection between the later... Read more

In March of this year, a California jury awarded $7.36 million in damages to Marvin Gaye’s family, finding that Pharrell Williams, Robin Thicke, and Clifford Harris, Jr.’s[1] hit song “Blurred Lines” infringed on the Marvin Gaye classic song “Got to Give It Up.” Recently, the Judge in this case made rulings on several post-trial motions.[2] Some of the most significant rulings are that a request for a new trial was denied and that the Judge reduced the jury verdict from $7.36 million to $5.3 million.[3] Also, the Judge found that T.I. was liable, reversing the jury verdict that he was not due to errors in the jury instructions. Read more

On July 8, 2015, the United States District Court for the Eastern District of Virginia upheld the Trademark Trial and Appeal Board’s previous ruling to cancel trademark registrations for the Washington Redskins of the National Football League finding that the trademarks are disparaging to Native Americans. See, Pro-Football, Inc. v. Blackhorse, et. al., No. 14-cv-01043-GBL-IDD, 2015 WL 4096277 at *5-6 (E.D. Va. July 8, 2015). Pursuant to 15 U.S.C. § 1052(a), trademarks that “may disparage or falsely suggest a connection with persons, . . . or bring them into contempt, or disrepute” are ineligible for registration. The Redskins trademarks have been opposed for several years by Native American activists under the belief that the name is... Read more

Michael I. Santucci has been selected to the 2015 Florida Super Lawyers list for Intellectual Property. No more than five percent of the lawyers in the state are selected by Super Lawyers. Super Lawyers, part of Thomson Reuters, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. The annual selections are made using a patented multiphase process that includes a statewide survey of lawyers, an independent research evaluation of candidates and peer reviews by practice area. The result is a credible, comprehensive and diverse listing of exceptional attorneys. The Super Lawyers lists are published nationwide in Super Lawyers Magazines and in leading city... Read more

In Kimble, et. al. v. Marvel Entertainment, LLC[1], the Supreme Court upheld previous precedent[2] which created a bright line rule preventing patent owners from obtaining royalties from sales made after the patent term has expired. The dispute in this case resolved around an agreement between Marvel and Stephen Kimble for the sale of Mr. Kimble’s patent on a toy that allows a person to shot webs (i.e., pressurized foam string) “from the palm of [the] hand” similar to comic-book hero Spider-Man.[3] Pursuant to the agreement Mr. Kimble was to receive a 3% royalty on future sales from Marvel... Read more

Recently the United States District Court for the Northern District of Ohio addressed the question of whether a copyright can protect food recipes. Tomaydo-Tomahhdo, LLC, et. al. v. Vozary, et. al[1], involved a dispute between former business partners in the restaurant business. The Plaintiffs alleged that the Defendants opened up a competing restaurant and were copying Plaintiffs’ recipes and serving the same dishes and menu as Plaintiffs’ restaurant in violation of the federal Copyright act, among other claims.[2] The Plaintiffs also wrote a recipe book containing the subject recipes and sought copyright protection for the book. Read more

With the expanding international scope of business today, business owners need to be aware of ways to ensure that their brand and goodwill is protected internationally. Protection of trademarks is considered territorial, which means that protection over a trademark in one country usually does not provide protection in other countries. For example, a trademark registration in the United States will only provide protection against infringing uses in the United States, but not in Europe or China. To be protected in foreign countries such as those in Europe and in China, registrations must be acquired in those jurisdictions. So is international trademark protection worth the cost? Just ask basketball legend Michael Jordan, who is currently involved in a trademark... Read more

The United States Supreme Court recently decided an important issue regarding Chapter 7 bankruptcy filings. The bankruptcy code provides different types of bankruptcy cases that can be filed by individuals or entities. Two of the most prominent types of bankruptcy for consumers are Chapter 7 and Chapter 13. The primary purpose of a Chapter 7 bankruptcy is to liquidate a debtor’s debts in order to obtain a fresh start. A Chapter 13 bankruptcy is a longer process which allows a debtor to pay creditors pursuant to a court ordered payment plan which typically lasts either three to five years. Many consumers who own real property subject to a mortgage lien that is upside down, i.e., the mortgage debt is greater than the current market value of the home, utilize the... Read more

The late Arthur Conan Doyle is the author of the Sherlock Holmes stories and characters. His estate recently sued several movie production companies, including Miramax, of the movie “Mr. Holmes” and the writer of the book that it was based upon, “A Slight Trick of the Mind,” for copyright and trademark infringement. “Mr. Holmes” is set to be released later this summer and features Sherlock Holmes during the later portions of his life and retirement. The lawsuit was filed in the United States District Court for the District of New Mexico under case number 15-cv-432. The Seventh Circuit Court of Appeals has previously ruled that many of the copyrights in the Sherlock Holmes characters and/or stories have expired. See, Klinger v. Conan Doyle... Read more

Recently, the youngest of the Kardashian-Jenner clan, sisters Kendall and Kylie Jenner applied to trademark their first names with the United States Patent and Trademark Office (USPTO). Kylie Jenner applied to trademark her full name for goods such as hand bags, wallets, cosmetic bags, backpacks, and just “Kylie” for advertising services, entertainment services, endorsement services, personal appearance by a celebrity and the like. Kendall Jenner applied to trademark her name on clothing items, hair accessories, and other fashion items. After this made news last week, the question I received was “how can they trademark their first names? Is that possible?” Using a personal name as a trademark is tricky, but some of the most common trademarks today, think... Read more

Deciding to go to court over a trademark dispute is intimidating enough, and then your attorney tells you that you have three different avenues in which to bring your lawsuit. Or, if you find yourself on the other side of this situation, now being forced to litigate before a Board you’ve never heard of, it can be just as frustrating. This article will attempt to flesh out the pros and cons of various litigation options when faced with a trademark dispute – the Trademark Trial and Appeal Board (TTAB), federal court and state court. Starting with the TTAB, the TTAB is a governing body within the broader United States Patent and Trademark Office (USPTO). Per the USPTO website, the TTAB functions like a court for USPTO matters. The TTAB determines a person’s... Read more

New Net Neutrality rules were approved by the Federal Communications Commission (“FCC”) on February 26, 2015. On April 13, 2015, the rules were published on the Federal Register (see https://www.federalregister.gov/articles/2015/04/13/2015-07841/protecting-and-promoting-the-open-internet#h-147). The new rules currently have an effective date of June 12, 2015. The new rules prohibit broadband and mobile carriers from making efforts to slow Internet traffic or block specific web sites. Paid prioritization, or commercial deals between Internet service providers and content companies for preferential treatment, is also banned. Broadband Internet access has been reclassified as a public utility or common carrier, which is likely to increase regulation on the... Read more

We live in a very litigious society. Each year more and more patent infringement suits are filed. Some say that the over use or abuse of filing patent lawsuits clogs patent process. There are entities that profit from the threat of infringement litigation. Patent trolls are entities or individuals that buy certain patents only to pressure those accused of infringement into settling out of court for fear of tremendous litigation costs[1]. A child of capitalism, patent trolls, do what they can to squeeze every cent out of acquired patents through licensing and assignments. In 2014, MIT professor Catherine Tucker, released finding that patent trolls actually negatively affect innovation. The litigation produced by patent trolls... Read more

This entry is an update on a previous blog entry (link to December 5, 2014 entry called “Trademark Case All Trademark Attorneys and Litigants Need to Watch”) regarding the United States Supreme Court’s pending decision in the case entitled B&B Hardware, Inc. v. Hargis Industries, Inc., et. al.  Recently the Supreme Court announced its ruling in this case. The main issue in this case is whether a finding regarding “likelihood of confusion” entered by the United States Patent and Trademark’s Office’s Trademark Trial and Appeal Board (“TTAB”) can preclude subsequent decisions on the same issue by United States district courts. The answer is yes. Specifically, the Supreme Court found that “[s]o long as the other ordinary elements of... Read more

Congratulations to Louis Carney, entry number 2236, who just won two 3-day passes to Ultra Music Festival in Miami!  The winner was randomly chosen by a third party vendor to ensure the integrity of the sweepstakes.  Mr. Carney is not affiliated with the law firm of Santucci Priore, P.L., Save the Twinz: Live Pink! or Ultra Music Festival. The Ultra Music Festival in Miami is one of the largest electronic dance music events in the United States and, at times, has been the largest.  Recently, it was the largest music event (all genres) in the entire country with its historical event... Read more

After deliberating for two days, a California jury awarded $7.36 million in damages to Marvin Gaye's family, finding that the best selling song of 2013, "Blurred Lines" infringed on the Marvin Gaye classic "Got to Give It Up." The lawsuit stems from a 2013 preemptive suit from Pharrell Williams and Robin Thicke, who sought a declaratory judgment that their song did not infringe on the Gaye chart topper. Gaye's children, who inherited the copyright from their father countersued, and included the record company Universal Music Group and Clifford Harris Jr. (professionally known as T.I.). The week long trial featured testimony from both Pharrell and Robin Thicke. Pharrell testified that he was inspired by music from that time but that the song was completely... Read more

A common question in trademark law is what constitutes “use” in commerce of a service mark. The answer is often complicated and fact driven. This week the Federal Circuit clarified the question in its ruling in David Couture v. Playdom, Inc. On May 30, 2008, Couture filed an application to register the mark PLAYDOM for entertainment services, under Section 1(a) of the Trademark Act. A Section 1(a) registration requires that a mark be “used in commerce”. A mark is used in commerce “on services when [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce, or the services are rendered in more than one... Read more

The 87th Academy Awards are this Sunday, officially wrapping up award season for 2015. Neil Patrick Harris will host this year’s show, and hopefully deliver the same type of enthusiasm and enjoyment from his previous hosting gigs at the 2013 Emmys and Tonys. Red carpet coverage starts at 7:00pm and show time is  8:30 p.m. ETon ABC. If you want seven hours of pre-Oscar festivities, E! Network will start its Countdown to the Red Carpet at 1:30 p.m. For full list of nominees, a print off ballot and the winners, visit Oscars.org, the official site of the Academy of Motion... Read more

By: Justin Maya Even before the United States was formed, businesses already recognized the importance of brands in everyday life.  Today, this is especially true in the Internet and smartphone world where its 3 Billion users worldwide can shop through electronic commerce (“e-commerce”) markets like eBay.com, Amazon.com, Craigslist.com, along with many others.[1]  Indeed, reputations for quality provide strong preferences for consumers when they select which product will function best or which fashion catches the most attention.[2]  With over eighty percent of Americans using the Internet daily,[3] it comes with little surprise the World... Read more

The 57th Annual Grammy Awards will be held on February 8, 2015, at the Staples Center in Los Angeles, California. Who will win this year’s most coveted awards? Find out our picks below: Album of the Year: Nominees: Beck – Morning Phase Beyoncé – Beyoncé Ed Sheeran– X Pharrell– GIRL Sam Smith– In The Lonely Hour Winner: Beyoncé – Beyoncé. Beyoncé's self-titled fifth album was released without warning in December 2013 and changed the industry. She has never won this award, although has been nominated in the past. Sam Smith may prove to be Beyoncé's biggest competition in this category and could easily take... Read more

On February 14, 2015, the Miami-Dade County Fairgrounds will host the 22nd Annual Nine Mile Music Festival. The event is operated by Richard Booker, Bob Marley’s brother, who is a client of Santucci Priore, P.L., and previously, the late Cedella Marley Booker, who was Bob Marley’s mother. The festival’s name comes from the village in Jamaica where Cedella Marley Booker was born, raised and gave birth to her son Robert Nesta Marley, a.k.a. Bob Marley, a.k.a. “Tuff Gong.” He was eventually laid to rest in Nine-Mile. This year, the festival comes one week after what would have been Bob Marley’s 70th birthday on February 6th. The Nine Mile Music Festival celebrates life, love, music and helping out the less fortunate. Over the past 22-years,... Read more

This entry is an update on a previous blog entry regarding the Net Neutrality debate. Federal Communications Commission (“FCC”) Chairman Tom Wheeler recently announced that he plans to circulate a proposal implementing Net Neutrality Regulations, including classifying Internet Service Providers as common carriers under Title II of the Telecommunications Act, provisions blocking broadband providers from charging premiums for faster access or blocking website content, and applying such provisions to wireless providers for the first time. This proposal is likely the strongest open Internet policy proposed by the FCC to date. The full text of the announcement can be found  Read more

The law firm of Santucci Priore, P.L., which represents the owners, operators and licensors of the Ultra Music Festival, is giving away TWO (2) THREE (3)-DAY PASSES to the Ultra Music Festival in Miami for March 27, 28 and 29th! In 2013 the Ultra Music Festival became the largest music festival of any genre of music in the United States. One winner will be randomly chosen and will receive both tickets/passes which will be valid for entry on all three days and nights of the festival in Miami. The contest benefits a local breast cancer awareness organization Save The Twin: Live... Read more

Last week the Supreme Court decided its first substantial trademark case in over ten years. Hana Financial, Inc. v. Hana Bank is a trademark infringement action involving the “tacking” of trademarks. Tacking is “a rule that allows the owner of the mark to make slight changes in the mark, without losing the priority that the trademark owner has based on the date when it first started using the original mark.”[1] The emphasis is on what the court calls a “continuing commercial impression.” Generally, tacking involves three trademarks, the original “senior” trademark, a second “junior” trademark unrelated to the first mark, and a third, modified version of the senior trademark. Read more

The Marvin Gaye estate and Robin Thicke are currently involved in a copyright infringement lawsuit which includes a dispute regarding the similarities of Marvin Gaye’s “Got to Give it Up” song and Thicke’s “Blurred Lines” song. Lawyers for Robin Thicke requested that the Court exclude Gaye’s original recording of “Got to Give it Up” and prevent the song from being played to the jury during trial. This request was recently granted by the District Court Judge. One of the arguments made by the attorneys for Robin Thicke to the Court was that the Marvin Gaye estate only owned a copyright in the composition of the song and not in the actual sound recording. It is important to understand the difference between applying for a  Read more

My law firm, Santucci Priore, P.L. and I would like to express our condolences to the family of Alejandro (“Alex”) Omes who passed away this week. Alex Omes was an important part of South Florida’s music and entertainment industry from the 1990’s forward. Our hearts and prayers go out to his family and close circle of friends. I have, in the past, advertised and even authored a guest article about the EDM artist, The Spacemen, in Alex Omes’ D’VOX Magazine in the late 1990’s. It was D’VOX Magazine that first published my tagline “I’ve Got Your Back,” which my firm now uses as: “We’ve Got Your Back,” at certain conventions and trade shows, like Winter Music Conference. Back then, I helped Alex, and he helped me. With D’VOX,... Read more

Santucci Priore, P.L. client SMS Audio, LLC made some big announcements at the Consumer Electronics trade Show (CES) held in Las Vegas. SMS Audio announced a new partnership with star tight end of the New England Patriots, Ron Gronkowski. SMS Audio is a premier headphone and accessories brand from Curtis “50 cent” Jackson. Commenting on his new partnership, Gronkowski said “As an athlete, I’m always on the hunt for the best fitness gear – and headphones are no exception, the SMS Audio Sport headphones, especially the BioSport heart rate monitoring earbuds, have the features I need when it comes to getting the most out of my workout.” Gronkowski was selected by the New England... Read more

Rock & Roll Hall of Fame inductee, Sylvester Stewart, better known as “Sly Stone,” from Sly & The Family Stone, performed at Woodstock in 1969.  He performed classic hits like “Everyday People,” and “Hot Fun in the Summertime.”  He was one of the first artists to mix soul, funk and elements of psychedelic music in the 1960’s and 1970’s, at about the time the “Godfather of Soul,” James Brown was first doing the same.  Sly & The Family Stone influenced songwriters and musical performers such as Prince, Public Enemy, Parliament, The Red Hot Chili... Read more

Have you ever been concerned about the images you upload to your company’s website, blog or social media profile?  Well, you should be. The United States Copyright Act states that, at least initially, the owner of a “work,” is its author or authors.  17 U.S.C. § 201(a).  The term “work” is used to describe any original material which can be the subject of copyright protection.  That includes photos, video, music, lyrics, literature, dramatic performances and various other creative works.  17 U.S.C. § 102(a).  Some or all the copyrights to a particular work can be transferred to a third party, after they initially vest in the author.  17 U.S.C. § 201(d).  For that reason, seeking the proper party to request authorization to use a copyrighted... Read more

The United States and Cuba have agreed to open diplomatic relations between them, easing travel and business restrictions. On December 17, 2014, President Obama announced a swap of prisoners. Cuba will release American Alan Gross, who has spent the last five years in a Cuban prison on espionage charges, and the U.S. will release three Cubans convicted in 2001 of spying against the United States and contributing to the deaths of four members of the anti-Castro group Brothers to the Rescue. Alan Gross was detained in 2009 after traveling to Cuba to set up internet access that circumvented... Read more

Over the past few months one of the most talked about topics has been net neutrality. What is net neutrality? It is the principle that all content and applications on the Internet should be accessible to users equally, regardless of source, and without service providers being able to restrict access to specific websites or services. This principle would seem ensure basic First Amendment rights. However, the debate has begun as a result of a court ruling in Verizon v. F.C.C., 740 F.3d 623 (C.A.D.C. 2014), which overturned the net neutrality rules of anti-discrimination and... Read more

If you are involved in trademark or unfair competition litigation, you should be asking yourself:  “Will my case come to an abrupt, unexpected end in the next few weeks?” If you are considering filing such a lawsuit, or expecting to be sued, you should be asking yourself:  “Should I try to settle the potential claim or abandon plans immediately?” Prudent risk assessment regarding trademark and unfair competition claims requires your immediate consideration of the issues raised in this... Read more

A message claiming to protect the copyright of users' photos, status updates and other creations shared on Facebook is making the rounds.  There are different variations of the message, but most of them contain something to this effect: Due to the fact that Facebook has chosen to involve software that will allow the theft of my personal information, I do declare the following: on this day, 28th November 2014, in response to the new Facebook guidelines and under articles L.111, 112 and 113 of the code of intellectual property, I declare that my... Read more

Actor Frank Sivero has filed a lawsuit against the creators of "The Simpsons," alleging that Louie, a minor character in the hit cartoon series, is based on his interpretation of the character Frankie Carbone in the 1990 mobster film "Goodfellas" directed by Martin Scorsese. The lawsuit filed Tuesday in Los Angeles Superior Court claims Sivero "is the originator of the idea and character of Louie." The Simpsons co-creator Matt Groening, 21st Century Fox and Fox Television Studios are named as defendants in the case. The lawsuit claims that in or around 1989, Sivero was living in an apartment complex in Sherman Oaks, California, and was a neighbor of writers for the show. Sivero claims that during this time, they "saw each other almost every other day" and... Read more

Conduct some research on the firm at which you seek employment. Some of what you would be asked to do when you are working for a law firm is conduct factual, and legal research. Demonstrating that ability at an interview is impressive. Furthermore, you can ask more intelligent questions about the firm if you have some information in advance. It also shows that you cared enough about the job opportunity to do some searching and reading, and that apparently you think you are a good fit for the firm. You should at least know the areas of practice of a law firm walking into an interview. If you are interviewing and you don’t know whether the firm does personal injury or tax law, you will be embarrassing yourself. You should also know enough not... Read more

This morning, there was a subtle, but very influential set of rulings by the U.S. Supreme Court today which will have the practical effect of legalizing same sex marriage in five states and opening a path for legalization to a total of eleven more states. Today, on its first day in session for the season, the High Court declined various petitions for certiorari from several states seeking the Supreme Court’s review of appellate court decisions striking down laws banning same sex marriage. The effect of the denial of the petitions will be that the prior decisions in the cases in which the ban on same sex... Read more

In recent weeks, “selfies” have dominated internet headlines. From monkeys taking selfies, to one of the biggest celebrity phone hacking scandals involving hundreds of selfies, it seems like the selfie is here to stay. However, what kind of rights do your selfies have? Can they be protected under The Copyright Act? Copyright is a form of protection provided to the authors of “original works of authorship”. Copyright provides protection for the original and creative expression of an idea which is embodied in a tangible medium. Pursuant to the statute governing copyrights, “pictorial works” including,... Read more

This week, Disney Enterprises, Inc. initiated trademark litigation against Ronica Holdings Limited, the company that holds and owns various trademarks for one of the top electronic dance music (“EDM”) artists in the world, DEADMAU5.  DEADMAU5, whose real name is Joel Zimmerman, has been nominated for multiple Grammy Awards in the past five (5) years.  He is a regular performer at the Miami location of the Ultra Music Festival, which has, in recent years, gone worldwide, and has been represented by Santucci Priore, P.L.’s attorney Michael I. Santucci since the inception of the festival in the... Read more

Show Comments