James Stewart

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Supreme Court: Trademark Owners Cannot Reject Licenses in Bankruptcy

On Monday, May 20, 2019, the United States Supreme Court issued an 8-1 decision holding that a bankrupt company’s decision to reject an existing license of its trademarks does not terminate a licensee’s right to continue using the licensed trademarks.  This decision settles a longstanding split among circuit courts, which has been one of the … Continue Reading

Who owns your IP?

By: Victoria Lee This post originally appeared on DLA Piper Accelerate, DLA Piper’s dedicated online resource for entrepreneurs.  When a company’s intellectual property is core to its business, investors and prospective acquirers want to know that the company owns all the rights to that intellectual property. In most cases, owning intellectual property is preferable to … Continue Reading

Federal Supreme Court of Germany Confirms Title Protection for Smartphone-Apps

By: Dr. Ulrike Grübler This post originally appeared in the IPT Germany Blog The German Federal Supreme Court (BGH) held for the first time that not only names of websites but also designations of smartphone-apps may be protected under the German Trademark Act (MarkenG). Section 5 of the German Trademark Act provides for a protection of … Continue Reading

Big Changes Ahead: European Trademark Reform Package Adopted

By: Dr. Ulrike Gruebler Significant changes to European trademark law will be coming into effect in 2016. Just before the turn of the year the European Parliament adopted a very substantial reform package for EU trademarks. The revised laws aim to make EU trade mark law fit for the challenges of business in the 21st … Continue Reading


By David Kramer & James Stewart In a landmark decision on December 22, 2015, the Federal Circuit ruled that the provision of the U.S. Trademark prohibiting “disparaging” trademark applications from registering is a violation of the First Amendment of the United States constitution. This provision of U.S. trademark law has gained relative notoriety in recent … Continue Reading


By Dr. Erica Pascal and Shuzo Maruyama The scenario is familiar. Your company is expanding product sales worldwide or restructuring to form subsidiaries outside the US. New entities – whether third parties or corporate affiliates – need patent rights. Your company may think that a global license with distribution rights will accomplish this result. But … Continue Reading


By Licia Vaughn   DLA Piper’s Intellectual Property and Technology group hosted its ninth annual Women in IP Law CLE Luncheon at the Four Seasons Silicon Valley in late September. More than 200 guests registered to attend, 70 percent of whom were leading IP counsel for some of the Bay Area’s largest tech companies. Showcasing … Continue Reading


By Adam Sak The outsourcing industry is experiencing a game-changing technological advance that will challenge the status quo of transaction pricing models and fees. Service providers globally are realigning their workforce by rapidly removing expensive human resources (FTEs) and replacing them with robotic equivalents at a fraction of the cost. This adoption of Robotic Process … Continue Reading

Five Best Practices in Advertising Law

By Heather Dunn This post originally appeared in the American Marketing Association’s Marketing News Journal This past year, the FTC issued an extensive Q&A ​on its endorsement guides, which the FTC uses to evaluate whether an endorsement or testimonial is deceptive. Importantly, it is very clear that any “material connections” between endorsers and a brand must … Continue Reading

Eleventh Circuit Rules District Court Did Not See The Forest For The Trees When It Came To Copyright Protectability Of Laminate Maple Flooring

By Tamar Duvdevani This past Wednesday, April 29, the Eleventh Circuit reversed and remanded an underlying grant of summary judgment by the Northern District of Georgia that invalidated a copyright in a laminate wood flooring design.  In Home Legend, LLC v. Mannington Mills, Inc., defendant and counterclaimant Mannington Mills, Inc. asserted claims of copyright infringement … Continue Reading


By Melinda Upton and Matthew Evans  The Federal Court has ordered Coles Supermarkets to pay a $2.5 million AUD penalty for making false and misleading claims regarding its bakery range in contravention of section 18 of the Australian Consumer Law (ACL). Coles promoted its bread products as ‘Freshly Baked In-Store’, ‘Baked Today, Sold Today’, ‘Baked … Continue Reading


By James Stewart and David Kramer Following the publication of the article titled .SUCKS: A Questionable Future?, posted on April 13, 2015, the author received an unsolicited email from John Berard, CEO of Vox Populi Registry, Ltd. (“Vox”), the registry responsible for the controversial .SUCKS gTLD, responding to the article.  In an email, Berard shares … Continue Reading

A Questionable Future for .SUCKS Domain Names?

By James Stewart  In response to a veritable deluge of concerns from brand owners over the .SUCKS domain name registry’s pricing structure, the Internet Corporation for Assigned Names and Numbers (“ICANN”) sent a letter to the U.S. Federal Trade Commission (“FTC”) and Canada’s Office of Consumer Affairs (“OCA”) on Thursday, April 9, 2015.  ICANN has … Continue Reading

Laughter: It’s The Best Medicine, But Not The Cure For False Advertising

By Tamar Duvdevani Couch potatoes everywhere have had a chuckle over DirecTV’s campaign featuring Rob Lowe’s “cool” and creepy/awkward/dorky personas, wherein “cool Rob” is equated to DirecTV, and the less fortunate Rob is equated to a competitor.  One example of the campaign is a commercial wherein beloved heartthrob, well dressed, successful Rob Lowe states that … Continue Reading


By James Stewart In 2011, the Internet Corporation for Assigned Names and Numbers (“ICANN”) made waves by approving the first adult entertainment industry-specific top-level domain (“TLD”), “.XXX,” administered by the ICM Registry.  At that time, many brand owners sought to protect their trademarks from cybersquatters on the .XXX registry by obtaining .XXX domain name registrations … Continue Reading

Mark Feldman of DLA Piper LLP Wins Trademark Industry Award

November 13, 2014 – DLA Piper LLP is proud to announce that the International Trademark Association (INTA) honored Mark Feldman with the Volunteer Service Award (VSA) in the Advancement of Committee Objectives category. INTA is a global member-based organization dedicated to supporting trademarks and related intellectual property in order to protect consumers and to promote … Continue Reading

Unregistered Design Rights: The Karen Millen Case

by Stefania Baldazzi The recent decision of the CJEU in the Karen Millen case provides important guidance to fashion designers and retailers who rely on unregistered design rights in their designs according to the Council Regulation (EC) No. 6/2002 on Community Design. The CJEU ruled in favor of Karen Millen in the proceedings, which concerned … Continue Reading

Gucci / Guess – The Italian Appeal: Gucci’s half victory against Guess on the ground of unfair competition

By: Elena Varese *This post originally appeared in IPT Italy Blog The Milan Court of Appeal has overturned the first instance decision and partially upheld Gucci’s claims, stating that Guess has committed an act of unfair competition, by parasitically copying a number of products of the well-known fashion house of Florence. A comparison between two products of Gucci … Continue Reading

GLOBAL: Mobile apps – increasing privacy transparency is on top of your to-do list!

This post originally appeared in DLA Piper’s Sports, Media and Entertainment Blog By Patrick Van Eecke & Elisabeth Verbrugge The Global Privacy Enforcement Network (GPEN) recently released the results of the global privacy sweep of mobile applications it conducted in May 2014. More than 25 privacy commissions around the world examined a total of 1,211 … Continue Reading

Surviving a Trademark Opposition Challenge: Do You Have a True ‘Intent-to-Use’? 5 Key Tips

By: Thomas E. Zutic and John M. Nading  Unlike the vast majority of jurisdictions around the world, under the US Trademark Act, only someone “who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register.” … Continue Reading