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Indiana Intellectual Property Blog

~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Author Archives: Kenan Farrell

President Obama Announces Members of Science and Technology Advisory Council

28 Tuesday Apr 2009

Posted by Kenan Farrell in Federal Initiatives, Intellectual Property

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American Academy of Arts and Sciences, Christopher Chyba, Craig Mundie, Daniel Schrag, David E. Shaw, Eric Lander, Eric Schmidt, Ernest J. Moniz, Harold Varmus, International Security and Arms Control of the National Academy of Sciences, John Holdren, Mario Molina, Maxine Savitz, PCAST, Proliferation, Richard Levin, Rosina Bierbaum, S. James Gates Jr., Shirley Ann Jackson, Terrorism, William Press

Under my administration, the days of science taking a back seat to ideology are over. Our progress as a nation – and our values as a nation – are rooted in free and open inquiry. To undermine scientific integrity is to undermine our democracy. It is contrary to our way of life.”  – President Barack Obama, 4/27/09

pcastPresident Barack Obama has announced the President’s Council of Advisors on Science and Technology (PCAST).  PCAST will advise President Obama about national strategies to nurture and sustain a culture of scientific innovation.   The list of advisors includes a number of academics, as well as Google CEO Eric Schmidt and Microsoft’s chief research and strategy officer, Craig Mundie.  Let’s hope they give the President some great advice!

Below is the full PCAST roster, with links to full bios:

Rosina Bierbaum, a widely-recognized expert in climate-change science and ecology, is Dean of the School of Natural Resources and Environment at the University of Michigan. Her PhD is in evolutionary biology and ecology. She served as Associate Director for Environment in OSTP in the Clinton Administration, as well as Acting Director of OSTP in 2000-2001. She is a member of the American Academy of Arts and Sciences.

Christine Cassel is President and CEO of the American Board of Internal Medicine and previously served as Dean of the School of Medicine and Vice President for Medical Affairs at Oregon Health & Science University. A member of the US Institute of Medicine, she is a leading expert in geriatric medicine and quality of care.

Christopher Chyba is Professor of Astrophysical Sciences and International Affairs at Princeton University and a member of the Committee on International Security and Arms Control of the National Academy of Sciences. His scientific work focuses on solar system exploration and his security-related research emphasizes nuclear and biological weapons policy, proliferation, and terrorism. He served on the White House staff from 1993 to 1995 at the National Security Council and the Office of Science and Technology Policy and was awarded a MacArthur Prize Fellowship (2001) for his work in both planetary science and international security.

S. James Gates Jr. is the John S. Toll Professor of Physics and Director of the Center for String and Particle Theory at the University of Maryland, College Park. He is the first African American to hold an endowed chair in physics at a major research university. He has served as a consultant to the National Science Foundation, the U.S. Departments of Energy and Defense, and the Educational Testing Service and held appointments at MIT, Harvard, California Institute of Technology and Howard University.

 

John Holdren is serving as co-chair of PCAST in addition to his duties as Director of the Office of Science and Technology Policy in the Executive Office of the President and Assistant to the President for Science and Technology. Prior to this appointment Dr. Holdren was a Professor of Environmental Policy and Director of the Program on Science, Technology, and Public Policy at Harvard University’s Kennedy School of Government. He also served concurrently as Professor of Environmental Science and Policy in Harvard’s Department of Earth and Planetary Sciences and as Director of the independent, nonprofit Woods Hole Research Center. He is a member of the National Academy of Sciences, the National Academy of Engineering, and the American Academy of Arts and Sciences, as well as a former President of the American Association for the Advancement of Science and recipient of the MacArthur Foundation Prize Fellowship.

Shirley Ann Jackson is the President of Rensselaer Polytechnic Institute and former Chair of the US Nuclear Regulatory Commission (1995-1999). She is the University Vice Chairman of the U.S. Council on Competitiveness, a member of the National Academy of Engineering, fellow of the Academy of Arts and Sciences, and past President of the American Association for the Advancement of Science. Dr. Jackson was the first African American woman to earn a doctorate from MIT and chairs the New York Stock Exchange Regulation Board.

Eric Lander is serving as a co-chair of PCAST. He is the Director of the Broad Institute of MIT and Harvard and Professor of Biology at MIT, Professor of Systems Biology at Harvard Medical School and member of the Whitehead Institute for Biomedical Research. He was one of the principal leaders of the Human Genome Project, recipient of the MacArthur Foundation Prize Fellowship and is a member of both the National Academy of Sciences and Institute of Medicine.

Richard Levin has served as President of Yale University since 1993 and is a distinguished economist with interests in industrial organization, the patent system, and the competitiveness of American manufacturing industries, including industrial research and development, intellectual property, and productivity. He is a leader in US-China cooperation, in research and education, and is a member of the American Academy of Arts and Sciences.

Chad Mirkin is Professor of Materials Science and Engineering, Chemistry, and Medicine at Northwestern University, as well as Director of Northwestern’s International Institute of Nanotechnology. He is a leading expert on nanotechnology, including nano-scale manufacturing and applications to medicine. Awarded the Feynman Prize in Nanotechnology in 2002, he is one of the top-cited researchers in nano-medicine, as well as one of the most widely cited chemists.

Mario Molina is a Professor of Chemistry and Biochemistry at the University of California, San Diego and the Center for Atmospheric Sciences at the Scripps Institution of Oceanography, as well as Director of the Mario Molina Center for Energy and Environment in Mexico City. He received the Nobel Prize in Chemistry in 1995 for his role in elucidating the threat to the Earth’s ozone layer of chlorofluorocarbon gases. The only Mexican-born Nobel laureate in science, he served on PCAST for both Clinton terms. He is a member of both the National Academy of Sciences and the Institute of Medicine.

Ernest J. Moniz is a Professor of Physics and Engineering Systems, Director of the Energy Initiative, and Director of the Laboratory for Energy and the Environment at MIT. His research centers on energy technology and policy, including the future of nuclear power, coal, natural gas, and solar energy in a low-carbon world. He served as Under Secretary of the Department of Energy (1997-2001) and Associate Director for Science in the White House Office of Science and Technology Policy (1995-1997).

Craig Mundie is Chief Research and Strategy Officer at Microsoft Corporation. He has 39 years of experience in the computer industry, beginning as a developer of operating systems. Dr. Mundie co-founded and served as CEO of Alliant Computer Systems.

William Press is Professor of Computer Sciences at the University of Texas at Austin, has wide-ranging expertise in computer science, astrophysics, and international security. A member of the US National Academy of Sciences, he previously served as Deputy Laboratory Director for Science and Technology at the Los Alamos National Laboratory from 1998 to 2004. He is a Professor of Astronomy and Physics at Harvard University and a former member of the Harvard-Smithsonian Center for Astrophysics (1982-1998).

Maxine Savitz is retired general manager of Technology Partnerships at Honeywell, Inc and has more than 30 years of experience managing research, development and implementation programs for the public and private sectors, including in the aerospace, transportation, and industrial sectors. From 1979 to 1983 she served as Deputy Assistant Secretary for Conservation in the US Department of Energy. She currently serves as vice-president of the National Academy of Engineering.

Barbara Schaal is Professor of Biology at Washington University in St Louis. She is a renowned plant geneticist who has used molecular genetics to understand the evolution and ecology of plants, ranging from the US Midwest to the tropics. Dr Schaal serves as Vice President of the National Academy of Sciences, the first woman ever elected to that role.

Eric Schmidt is Chairman and CEO of Google Inc. and a member of the Board of Directors of Apple Inc. Before joining Google, Dr. Schmidt served as Chief Technology Officer for Sun Microsystems and later as CEO of Novell Inc.

Daniel Schrag is the Sturgis Hooper Professor of Geology in the Department of Earth and Planetary Sciences at Harvard University and Professor of Environmental Science and Engineering in the School of Engineering and Applied Sciences.  He is also Director of the Harvard University-wide Center for Environment. He was trained as a marine geochemist and has employed a variety of methods to study the carbon cycle and climate over a wide range of Earth’s history. Awarded a MacArthur Prize Fellowship in 2000, he has recently been working on technological approaches to mitigating future climate change.

David E. Shaw is the chief scientist of D. E. Shaw Research, LLC, where he leads an interdisciplinary research group in the field of computational biochemistry. He is the founder of D. E. Shaw & Co., a hedge fund company. Dr. Shaw is a former member of PCAST under President Clinton and a member of the executive committee of the Council on Competitiveness, where he co-chairs the steering committee for the Council’s federally funded High-Performance Computing Initiative. He is a fellow of the American Academy of Arts and Sciences and serves on the Computer Science and Telecommunications Board of the National Academies.

Harold Varmus is the President and CEO of Memorial Sloan-Kettering Cancer Center and co-chair of PCAST. Dr. Varmus served as the Director of the National Institutes of Health from 1993 to 1999 and in 1989 was the co-recipient of the Nobel Prize for Physiology or Medicine for his pioneering studies of the genetic basis of cancer. He is a member of the National Academy of Sciences and Institute of Medicine and recipient of the National Medal of Science.

Ahmed Zewail is Professor of Chemistry and Physics at Caltech and Director of the Physical Biology Center. Dr. Zewail was awarded the Nobel Prize in Chemistry in 1999 for his pioneering work that allowed observation of exceedingly rapid molecular transformations.  He is an Egyptian-American, widely respected not only for his science but also for his efforts in the Middle East as a voice of reason. Dr. Zewail is a member of the National Academy of Sciences, and postage stamps have been issued to honor his contributions to science and humanity.

Indiana Trademark Litigation Update

24 Friday Apr 2009

Posted by Kenan Farrell in Litigation, Trademark

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Days Inn Worldwide, Inc. v. Exhibit Chicago, Inc. (U.S. District Court, N.D. Indiana)
No: 1:08-CV-124-TS.
Before: Springmann

For full opinion:
2009 U.S.Dist.LEXIS 32058
2009 WL 1010843

TRADEMARK; DAMAGES (Treble damages and attorney’s fees are appropriate where defendant willfully infringed trademarks for more than a year.)

Opinion (Springmann): Plaintiff Days Inn Worldwide (“Days Inn”) licensed its trademarks to Defendant Exhibit Chicago (“Exhibit”).  Days Inn later revoked the license.  After revocation, Exhibit continued to use Days Inn’s marks, only replacing the name Days with Huntington on the main sign.  Days Inn sued Exhibit for trademark infringement, and Exhibit defaulted. Because Days Inn alleged that Exhibit willfully infringed and continues to infringe its registered incontestable marks, treble damages and attorney’s fees are appropriate.

Source: Willamette Law Online

days_inn

Indiana Copyright Litigation Update

24 Friday Apr 2009

Posted by Kenan Farrell in Copyright, Litigation

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Brooks-Ngwenya v. Indianapolis Public Schools (U.S. Court Of Appeals, Seventh Circuit)
No: 08-1973 (April 15, 2009)
Before: Posner, Williams, and Tinder

COPYRIGHT; RIGHT TO SUE (Registration denial does not preclude an applicant from initiating a copyright suit.)

Opinion (Per Curiam): Brooks-Ngwenya, a middle school teacher sued the Indianapolis Public Schools (“IPS”) for copyright infringement related to an educational program that she had developed.  The District Court granted summary judgment to IPS, on the ground that Brooks-Ngwenya’s copyright registration was denied prior to the filing of the suit.  The Seventh Circuit disagreed with this reasoning by relying on section 411(a) of the Copyright Act, which allows an applicant to file a copyright suit, even if the registration was denied.  Brooks-Ngwenya claimed that IPS copied the ideas of her program, without proving that IPS copied the documents related to her educational program.  Therefore, on substantive grounds, the Seventh Circuit found that Brooks-Ngwenya’s copyright claim failed due to the lack of evidence that IPS copied the original expression of Brooks-Ngwenya’s idea, since the idea itself is not copyrightable.  Affirmed.

Click here for full opinion.

Source: Willamette Law Online

ips2

Carmel-based Heartland Sweeteners Receives Favorable Patent Ruling

23 Thursday Apr 2009

Posted by Kenan Farrell in Litigation, Patent

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The United States International Trade Commission (ITC) has unanimously upheld an initial ITC ruling that found Heartland Sweeteners, LLC did not infringe Tate & Lyle patents for sucralose.  In an initial determination announced in September 2008, ITC Judge Charles Bullock decisively rejected Tate & Lyle’s infringement allegations against Heartland Sweeteners, LLC.

As a result of this recent decision, which came down on April 6, 2009, Heartland is now the only manufacturer of table top sweeteners to have received an official and unanimous ITC ruling that it does not infringe patents for the manufacture of sucralose.

Carmel, Indiana-based Heartland is the first and largest alternative global manufacturer of high quality table top sucralose sweeteners. The company produces its own Nevella brand and private label products.  In 2008, Heartland introduced a natural sweetener under the Ideal brand. nevella

Heartland products are shipped to customers in the U.S., Canada, Mexico, South and Central America and throughout Europe.

The ITC is issuing limited exclusion orders against 11 sweetener companies that defaulted, admitted infringement, or did not participate in the investigation. Heartland is specifically excluded from that order, because the company responded early in the suit when other companies defaulted or failed to respond.

“The decision to incur the fees and costs necessary to fight this complex litigation has turned out to be the right course of action for Heartland. However, we fully expect that Tate & Lyle will continue its efforts which quash competition to their Splenda brand,” said Gelov.

Heartland was represented by attorney Bill O’Connor from the Indianapolis law firm of Dann Pecar Newman & Kleiman.

Source: Inside Indiana Business

Indiana RV Manufacturers in Trademark Battle

22 Wednesday Apr 2009

Posted by Kenan Farrell in Litigation, Trademark

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7jayco_eagle

Jayco, Inc., headquartered in Middlebury, IN (“Jayco”),  is suing Heartland Recreational Vehicles, LLC, of Elkhart, IN (“Heartland”), for trademark infringement and unfair competitive practices.  The case was brought in the Northern District of Indiana, Case No. 3:2009-cv-00171.

The suit alleges Heartland has violated federal trademark law by adopting the Eagle Ridge name for a line of vehicles.  Jayco claims to hold trademark rights in the EAGLE trademark since at least 1991.  Note that the suit is based on common-law trademark rights, as a federal trademark application was only filed by Jayco on March 9, 2009 (see abstract below).

eagle

Heartland filed an intent-to-use federal trademark application for EAGLE RIDGE on September 26, 2008.  It was published for opposition on February 17, 2009, which was probably the catalyst that brought Heartland’s intentions to the attention of Jayco (or Jayco’s attorney).

eagleridge

Jayco’s complaint demands that Heartland pay them all profits from Eagle Ridge products and stop using the EAGLE RIDGE name immediately.  I didn’t see any Eagle Ridge products on Heartland’s website (please correct me if I’ve missed anything), so the product line was either never initiated or it has already been pulled.

As we learned from Octomom (TM), the first to use a mark in commerce is generally the owner of that mark.  The primary exception is when an ITU application for a similar mark is filed prior to the adoption and use of the mark by another.  However, since Jayco has used the EAGLE mark since 1991, they almost certainly can claim priority rights.  Whether EAGLE RIDGE causes a likelihood of confusion with Jayco’s EAGLE mark will be determined by the court.  The goods (recreational vehicles) are very similar, so my suspicion is that the court would lean toward a conclusion that confusion exists.

I’ll keep you updated as developments occur, although this case feels like a settlement opportunity, particularly since Heartland doesn’t appear to have too much invested in their EAGLE RIDGE product line.

Source: WNDU

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