Publications

Article Published by Collen IP Attorney Appears in Intellectual Property Strategist
March 2014 — Kyle-Beth Hilfer analyzed the battle between POM Wonderful and Coca-Cola pending before the Supreme Court. This analysis was published in the March, 2014 edition of Law Journal Newsletter's Intellectual Property Strategist. Here is an abstract from the article:

POM v. Coke Could Create a Juicy Precedent on Food Labels

Food companies will be watching closely a Supreme Court case this spring that could establish the fate of private causes of action challenging food labeling. In a case brought by POM Wonderful (“POM”) against Coca-Cola Co., Inc. (“Coke”), the Supreme Court will decide “whether the court of appeals erred in holding that a private party cannot bring a Lanham Act claim challenging a product label regulated under the Food, Drug, and Cosmetic Act.” While the case focuses around a federal Lanham Act claim, it also has implications for state law causes of action. In particular, the class action bar has been prolific in its challenges to food labels, and this case could affect the viability of such actions in the future.

The Supreme Court granted POM’s petition and heard argument in this case in April,  2014.  The case is likely to set an important precedent as to the reach of federal regulations and their ability to impede private Lanham Act causes of action as well as state law causes of action. If the Supreme Court upholds the Ninth Circuit holding, it will establish the FDA’s authority clearly, and food and beverage manufacturers may see a decrease of challenges to their labels from competitors and class actions. If, on the other hand, the Supreme Court finds in POM’s favor and reverses the Ninth Circuit, depending on the scope of its holding, this precedent could keep manufacturers in the line of fire for private lawsuits.

In addition, none of the briefs filed in this case have focused on Coke’s health claims on its product label. Purportedly, these are some of the claims that could face challenge under the Lanham Act, regardless of FDA label requirements. If the Supreme Court decides in dicta to address health claims and substantiation requirements, that action could help guide an industry that faces a slew of class action challenges and regulatory investigation. In short, this juice litigation will result in important precedent for food and beverage companies. The Supreme Court holding may influence broadly marketing efforts in the industry for years to come.

For more, click here.  

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Branding in the Collaborative Economy
Legal Implications for Intellectual Property and Consumer Outreach February 4, 2014 – The "Collaborative Economy" describes an economic system where consumers prefer to share, rather than purchase, goods and services. It seeks to empower consumers and free them from the burdens of ownership. This White Paper explores the tension between intellectual property and the collaborative philosophy. We suggest how brand owners can maintain and protect their valuable intellectual property assets and remain relevant players in the collaborative marketplace without violating the law. We also offer practical advice for branding in the collaborative economy and best practices in the following areas: Trademarks, Copyrights, Advertising & Marketing, Counterfeit and Grey Market Goods, and Patents.
Download the PDF here

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Kyle-Beth Hilfer Publishes Article in the WCBA Newsletter
February 2013 – Kyle-Beth Hilfer's article, "Hot Topics in Advertising Law in 2013," was published as the lead article in the February edition of the Westchester County Bar Associatio's newsletter. The full article can be read here: http://wcbany.affiniscape.com/associations/9830/files/2013-02-NL.pdf

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Kyle-Beth Hilfer Publishes Article in The Social Media Monthly
February 2013 – Kyle-Beth Hilfer's article, "Fearless Marketing: Key Legal Issues in Branding on Social Media," has been published in the January/February 2013 issue of The Social Media Monthly.

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Kyle-Beth Hilfer Publishes Article in The Intellectual Property
January 2013 – Kyle-Beth Hilfer’s article, – "’Buckyballs’ Lawsuit May Limit Use of Celebrity Name,” has been published in the January 2013 edition of The Intellectual Property Strategist. The article can be accessed and downloaded here.

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Jeffrey Lindenbaum Publishes Article in Pace Law Review
November 2012 - Partner Jeffrey Lindenbaum's article, "Catch Me if You Can: An Analysis of New Enforcement Measures and Proposed Legislation to Combat the Sale of Counterfeit Products on the Internet," has been published in the Summer 2012 edition of the Pace Law Review (published November 2012). The article discusses new approaches to address the seemingly insurmountable volume of counterfeit websites and the veil of protection created by the anonymity of the counterfeit website owners. The article can be accessed and downloaded at http://digitalcommons.pace.edu/plr/vol32/iss3/1/.

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Kyle-Beth Hilfer's Article to be Included in WESTLAW Database
August 2012 -- Kyle-Beth Hilfer's article, "Minimizing Risks for Clients Using Social Media to Advertise and Market Their Brands," has been selected for inclusion in the WESTLAW database. The article, which provides an overview of legal risk and strategies for engagement in social media, was featured in the Westchester County Bar Association Winter/Spring 2012 Westchester Bar Journal.

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Collen IP Posts White Paper on PMA's Site
July 13, 2012 -- Kyle-Beth Hilfer's white paper on "Why Brands Need to Conduct Background Checks Before Choosing their Sweepstakes and Contest Winners" is now available online at the Promotion Marketing Association's (PMA) website: http://www.pmalink.org/?whitepapers.

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Read Jess Collen's Weekly Blog, What's Your Trademark?, Featured on Forbes.com
Collen IP co-founder Jess M. Collen has a new weekly blog being featured on Forbes.com. The blog, What's Your Trademark?, focuses on all aspects of intellectual property, including trademark, patent, copyright, social media, privacy and advertising law. To read the blog, or subscribe to it, visit http://blogs.forbes.com/jesscollen/.

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Kyle-Beth Hilfer Publishes Article in The Intellectual Property Strategist
June 2012 - Kyle-Beth Hilfer's article, "Damages Soar from False Advertising About Skydiving," appeared in the June, 2012 edition of The Intellectual Property Strategist. This article explores a Ninth Circuit decision upholding a $6.6 million judgment for trademark infringement, false advertising, and cybersquatting. The case is important for its outline of appellate review standards and insights on how to prove a Lanham Act and cybersquatting case.

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Follow Collen IP's Brands in Social Media blog
With the continued growth of social media, Collen IP also has a new blog, Brands in SM, focusing on how brands are using the various social mediums to speak directly with their target audience. Posts will feature not only the ways that brands can benefit from social media, but also how it can negatively impact them. For the latest blog entry, or to sign up to have new posts delivered to your e-mail inbox, visit www.brandsinsm.com.

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Mitchell Radin Quoted in The Licensing Letter
January 2, 2012 – Mitchell Radin was quoted in the Licensing Letter's lead article, "Promises for 2012: Develop Deeper Retail Relationships, Embrace Globalization, Respond to Social Movements."

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How to Draft a Social Media Policy: Lessons from the United States Constitution
December 16, 2011 - Kyle-Beth Hilfer was a guest blogger on the Social Business News website. Her blog post explains how the structural framework of the Constitution and its crafted writing can serve as a guide for any enterprise drafting a social media policy. Read full article at http://bit.ly/uNIyU6

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Jess M. Collen and Kyle-Beth Hilfer Publish Article in Restaurant Management
September 28, 2011 – Jess Collen and Kyle-Beth Hilfer wrote a by-lined article, "A Menu of Intellectual Property Strategies," which appeared in the online edition of Restaurant Management magazine. The full article can be found here.

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Kyle-Beth Hilfer and David Ewen Publish Article in "The Intellectual Property Strategist
August 2011 - Kyle-Beth Hilfer and David Ewen's article "Internet Counterfeiters and Pirates Beware! Your Domain Names are Subject to Seizure" was published in the August, 2011 edition of the Intellectual Property Strategist.

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Kyle-Beth Hilfer publishes in "The Intellectual Property Strategist"
March 2011 – Attorney Kyle-Beth Hilfer's article "Privacy Policies and Data Collection: Recent Trends to Ensure Legal Compliance," was published in The Intellectual Property Strategist.

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Kyle-Beth Hilfer publishes in "The Employment Law Strategist"
March 2011 – Attorney Kyle-Beth Hilfer's article "Managing Employees on Social Media" was published in the March 2011 edition of The Employment Law Strategist.

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Jeffrey Lindenbaum's Article to be Published in Consulegis Newsletter
Spring 2010 – Partner Jeff Lindenbaum's Article, "VISIT THE WAYBACK MACHINE AND JOURNEY BACK IN TIME ON THE INTERNET" on the admissibility of evidence from archive.org will be published in the upcoming Consulegis IP Newsletter.

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Oren Gelber publishes article in Consulegis Newsletter
October 2009 – Collen IP's Oren Gelber published an article in the Consulegis IP Newsletter entitled "Trademark Infringement on Social Networking Sites".

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Oren Gelber Publishes in the "Intellectual Property Strategist"
August 2009 – Collen IP Attorney Oren Gelber published her article "Virtual Worlds, Current and Impending IP Issues" in the Intellectual Property Strategist.

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Oren Gelber Publishes "Virtual Worlds" Article
April 2009 – Attorney Oren Gelber's article "Virtual Worlds" was published in journal New Matter 1.

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Oren Gelber's Article Published in Consulegis Newsletter
October 2008 – Collen IP Attorney Oren Gelber has her article "Pro-IP Act Amends Copyright and Trademark Laws" in the Consulegis General Newsletter.

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PUBLICITY RIGHTS: "15 Minutes of Fame"
2008 - Collen IP Partner, Jeffrey A. Lindenbaum, recently submitted an AWARD WINNING article entitled, "Fifteen Minutes of Fame Can Generate Fifteen Decades of Royalties: An International Comparative Analysis of Rights of Publicity and Trademark Laws that Create a Monopoly of Economic Benefits Deriving from an Individual's Name, Image and Likeness" in the writing competition of the Consulegis International Law Firm Network. He was presented with his prize at the Annual General Meeting in Manchester,
England.

The full article can be found at www.collenip.com/newsletter/publicityrights.

Whether an individual is entitled to claim rights to a separate economic property interest in his name, image and likeness has been the subject of increasing legal debate. A relatively recent body of jurisprudence, a "right of publicity" was first recognized in the United States, and has since been adjudicated by nations throughout the world. Revenues created from enforcing and licensing such rights generates millions of dollars annually. Given recent technology, the challenges of protecting these rights continue to grow. Today, an individual's image and likeness can be instantaneously broadcasted throughout the world by anyone who owns a computer. As satellite broadcasts and internet sites such as YouTube are not restricted by national borders, an international understanding of these rights is vital. This paper analyzes the rapidly evolving right of publicity laws in the United States, and offers a novel comparison of some of the similarities and differences with how these rights are recognized or rejected in Germany, the United Kingdom and Australia. The ideological issues inherent in protecting, as an economic right, one's name, image and likeness is examined.

Particular attention is paid to the highly contested extension of these rights to individuals, postmortem. Post-mortem rights have been widely accepted by several governing bodies, and staunchly opposed by others. This paper studies how new legislation and court decisions from this past year have done little to offer uniform guidance, and to the contrary, have served to only fuel more controversy.

The second half of the paper presents an original view of how trademark law in the United States, as well as Germany, the United Kingdom and Australia has served as a means for either acquiring otherwise non-existent rights in a name, image or likeness, or to compliment and expand such rights. The research reveals that trademark law may be effective in overcoming certain recognized hurdles of right of publicity laws, particularly term limitations and restrictions on transfer. However, as ultimately concluded in the paper, the fundamental principles of trademark law, most notably that a trademark must serve the function of identifying source, will undoubtedly limit the ultimate impact trademarks will serve as a means of protecting an individual's right to the exclusive exploitation of their name, image and likeness. The paper ultimately postulates that until the right of publicity secures additional international recognition and uniformity, parties will likely rely on a combination of these doctrines to secure this ever-expanding property right.

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"Virtual Worlds" Article
Collen IP recently published an article entitled "Virtual Worlds" in IP NewMatter, The Intellectual Property Law Section of the State Bar of California. Below is a summary of the article. The full article can be found at www.collenip.com/newsletter/virtualworlds.

Virtual worlds have rapidly grown in popularity. Virtual world participants assume fanciful identities in the form of so-called avatars, and engage in transactions and commerce. Wherever people congregate in search of entertainment, or where they may have needs such as clothing or adornments, commerce will emerge. Thus, branding and identity—trademarks—become very important in the virtual world, just as in the real one.

Many of the objects within virtual worlds such as Second Life, owned and operated by Linden Research, Inc. are created entirely by users. Once an object has been created, it can be sold to other users for "Linden Dollars," an online currency that can be exchanged for U.S. dollars at a rate of approximately 260:1. With approximately twenty million transactions between residents each month, Second Life has a significant economy.

The presence of monetarily valuable user-created content creates an interesting question about the rights of users. Intellectual property disputes arise in the virtual world given the ease with which infringement can be accomplished. Recently, U.S. Courts and administrative bodies have begun applying U.S. law in the metaverse.

Most recently, the United States Patent and Trademark Office issued a registration for a Second Life avatar as a design mark. However, the extent to which the user really owns any content he or she creates is debatable. User-generated content is subject to copyright protection, but only to the extent this usergenerated content contributes something new to the original work (the software code of Second Life's virtual world). Thus, Second Life participants can never own all the intellectual property rights in their usergenerated content.

Counterfeiting is also a common issue in the metaverse. Within the virtual world, users are almost effortlessly able to recreate objects. A wide range of products are available in virtual worlds like Second Life, bearing well-established real world trademarks and litigation stemming from counterfeiting of virtual goods has already been filed in U.S. federal courts.

In Second Life, brands such as Porsche, Chanel, Rolex, Gucci and others are in frequent and highly visible use, despite the fact that their real world corporate owners do not have an official presence in Second Life. Ordinarily, trademark owners facing infringement have recourse under the Lanham Act. However, some businesses have devised means of turning this infringement into successful promotion and marketing campaigns.

For example, Coca-Cola has explicitly asked Linden Research not to police its intellectual property. The company publicly allows non-detrimental use of the Coca-Cola trademark in Second Life, and has issued a free license for the use of its mark. This open approach to intellectual property earned Coca-Cola positive reviews and may have benefited the company's public relations, particularly among Second Life users.

Virtual worlds offer new possibilities as well as potential pitfalls. Companies operating both in the real world and in the virtual world should approach intellectual property enforcement in the virtual realm innovatively. Creative strategies can be employed in conjunction with or in alternative to infringement actions. Rather than focus on potential recourse, companies subjected to potential trademark infringement might do better to find ways to use this publicity in their favor.

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