Seattle Trademark Lawyer

It’s uncool to buy knockoffs. That’s one of the messages in this month’s Esquire magazine.

The ad text states:

“Hearst Magazines salutes the Italian Intellectual Property Rights Office for its tireless campaign against counterfeiting. The Italian Intellectual Property Rights group represents a network of 14 offices in 10 countries, working domestically and internationally to support Italian businesses and protect the ‘Made in Italy’ label and its legacy. For more information, visit FakesAreNeverInFashion.com.”

I’m skeptical this effort will fare any better than your typical “Don’t Do Drugs” PSA, but it’s interesting to see the effort.

All the way from Denmark, the Innovationpartners blog put me onto the Justice Department’s first annual report of the PRO-IP Act. Some may remember the Act’s 2008 enactment (STL posts here and here), which was aimed at slowing counterfeiters, copyright infringers, and other IP wrongdoers.

So how’d it do in its first year?

When compared with FY2007, FY2008 saw fewer investigative matters received by Assistant U.S. Attorneys (to 365 from 426), fewer defendants charged (to 259 from 290), fewer cases charged (to 197 from 217), and fewer defendants sentenced (to 242 from 287). The number of convicted of IP crimes sentenced to 60+ months also decreased (to 3 from 16).

Doesn’t seem like a banner year.

However, it wasn’t all bad. The report credits efforts under the Act for seizing 38,000 tablets of counterfeit Viagra in one bust, 75,000 counterfeit Viagra and Cialis tablets in another, and 500,000 tubes of counterfeit toothpaste in another. Fake cancer drugs and oil pipeline couplings also were seized. Sellers of a lot of counterfeit software were put out of business (mostly selling on eBay), and one gentleman was convicted of selling pirated teleradiological software to hospitals.

There’s also an interesting update on U.S. efforts under the Act worldwide, including reports on China (“A substantial percentage of all counterfeit and pirated goods originate in China.”), Brazil (“It has suffered the effects of IP crime as both counterfeit products and pirated versions of copyrighted works directly impact its citizens and its creative industries.”), and other target countries.

All in all, it’s not a bad read. I’m just a little surprised the stats weren’t better. Hopefully, we’ll see some improvement next time around.

As of Dec. 1, revisions to the Western District’s local rules are now in effect. (See handy redline version here.) Here are the highlights: 

• Motions to shorten time are abolished;
• Motions for relief from a deadline, for a protective order, and to seal are now heard on the second Friday after after filing and service of the motion;
• Except for good cause, motions in limine must be filed as one motion and be noted for consideration no earlier than the third Friday after filing the motion and no later than the Friday before any scheduled pretrial conference;
• Motions in limine must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties in an effort to resolve which matters really are in dispute;
• Motions for a protective order similarly must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties; and
• A party moving for default must give the non-answering party 14 days’ notice if that party has filed a notice of appearance.

As the court stated in an email announcing the changes: “Although parties are responsible for being familiar with all of the local and federal rules, they should pay particular attention to the amendments in Fed. R. Civ. P. 6(a), Fed. R. Cim. P. 45(a) and Local Civil Rule 7.”

In a reversal of fortune, the Eastern District of Tennessee denied motions for preliminary injunction that King Pharmaceuticals, Inc., and other drug manufacturers brought against Seattle-based ZymoGenetics, Inc.

The order was a departure from the way the case began. On Nov. 2, plaintiffs obtained ex-parte temporary restraining orders prohibiting ZymoGenetics from using King’s THROMBIN-JMI trademark as a Google Adword; stating that ZymoGenetics’ RECOTHROM® product is superior to and/or safer than King’s THROMBIN-JMI® product; and stating that one or more lawsuits have been filed against King and/or THROMBIN-JMI® product customers for harm caused to patients who were exposed to King’s THROMBIN-JMI® topical thrombin line of products. (See STL’s Nov. 4 post on the TROs here.)

Four days later, the court granted ZymoGenetics’ motion to dissolve the TROs.

On December 10, it denied plaintiffs’ motions for preliminary injunction. The court found that monetary damages could compensate plaintiffs, and plaintiffs’ one-year delay in filing suit militated against the need for injunctive relief on a preliminary basis.

With regard to plaintiffs’ specific requests for relief, the court concluded:

• “Regarding the Adword, ZymoGenetics stated that it has ceased using King’s trademark and that it would not do so in the future. Thus, King cannot establish irreparable injury without the injunction, the second factor in the analysis. This weighs heavily in ZymoGenetics’ favor.”
• “Regarding the lawsuit prevarications, ZymoGenetics claims that non were made or will be made. It states that it has taken affirmative steps with its sales representatives to make sure none will be made. This Court cannot find that King is likely to succeed on the merits, for this issue is hotly contested.”
• As for the comparative promotional superiority and safety claims, “This is sue is hotly contested. Both parties filed many declarations and documents and presented testimony at the November 16, 2009 hearing. From this vast volume of evidence on both sides, which this Court has read and considered, this Court cannot find that King is likely to succeed on the merits. The issue is very scientific and technical, and there is a wealth of evidence on both sides. This factor weighs against King.” 

The case cite is King Pharmaceuticals, Inc. v. ZymoGenetics, Inc., No. 09-244 (E.D. Tenn.).

It may not happen soon, but if and when it does, this article from the ABA IP law section’s Landslide magazine will help you get up to speed on ICANN’s process for releasing new generic top-level domain names.

Why aren’t brand owners excited about this potential development?

As authors Anthony J. Biller and Jennifer Bisk put it:

“Owners of famous marks and large, brand portfolios are understandably and particularly unenthusiastic about expanding the TLD landscape. They view the past as prologue. Intellectual property rights (‘IPR’) management on the Internet has not been easy, and in some respects is becoming increasingly problematic. Cybersquating, typosquatting, worldwide distribution of pirated goods, peer-to-peer file sharing of protected content, unreliable WHOIS information, and proxy registrations have caused continual problems for businesses. Many of these corporations built their businesses and brand portfolios before the commercial exploitation of the Internet and see that medium as much of a hassle as a marketing and distribution asset. Cybersquatting may cost brand owners $1 billion worldwide each year from diverted Internet traffic, loss of goodwill, defensive domain registrations, and enforcement expenses.”