Gibbons Law Alert

Gibbons Law Alert Blog

New Guidance on How to Calculate Statutory Damages Awards in Counterfeiting Cases

Posted in Trademark Counterfeiting / Trademarks

On August 11, 2014

Judge Koeltl of the United States District Court for the Southern District of New York recently adopted a recommended statutory damages award of $6.6 million dollars in a case involving trademark counterfeiting. Richemont Int’l S.A. et. al. v. Montesol Ou, et. al., 2014 WL 3732919, at *1 (S.D.N.Y. July 28, 2014). The plaintiff sellers of luxury goods had initially sought $78 million or $2 million per counterfeit mark per type of good counterfeited in connection with 88 domain names operated by the defendants. Richemont Int’l S.A. et. al. v. Montesol Ou, et. al., 2014 WL 3732887, at *4 (S.D.N.Y. May 13, 2014). But Magistrate Judge Pitman recommended instead an award of $6.6 million, including $6.3 million under the Trademark Act and $300,000 under the Anticybersquatting Consumer Protection Act.

New Executive Orders Impact Government Contractors in Their Capacity as Employers

by Richard S. Zackin

Posted in Discrimination

On August 11, 2014

President Obama recently signed two Executive Orders that impact government contractors in their capacity as employers. Executive Order 13672 (July 21, 2014) amends Executive Order 11246 (September 24, 1965) by adding “sexual orientation” and “gender identity” to the list of personal characteristics that cannot be used by government contractors to discriminate against any employee or applicant for employment. As originally issued, Executive Order 11246 proscribed discrimination on account of race, color, religion, sex, and national origin – characteristics protected by Title VII of the Civil rights Act of 1964 (Title VII). Sexual orientation and gender identity are not specifically identified in Title VII as protected characteristics. These Executive Orders also apply to subcontractors and vendors of government contractors. Executive Order 13672 leaves in tact an earlier amendment to Executive Order 11246 that granted an exemption for government contractors qualifying as religious organizations in terms of the ability of these organizations to hire individuals of a given religion. The Department of Labor is charged with issuing regulations within 90 days implementing the new Executive Order.

Gibbons Director Installed as Secretary of the Land Use Section of the New Jersey State Bar Association

by Gibbons P.C.

Posted in Development/Redevelopment

On August 6, 2014

Howard D. Geneslaw, a Director in the Gibbons Real Property & Environmental Department, was installed as Secretary of the Land Use Section of the New Jersey State Bar Association (NJSBA) at the section’s annual meeting, held during the NJSBA’s Annual Meeting and Convention in Atlantic City in mid-May. This position places Mr. Geneslaw in line to become Vice Chair of the section next year, and Chair of the section the following year.

McDonald’s Triumphs over BioMcDiesel

by Gibbons P.C.

Posted in Trademarks / USPTO

On August 4, 2014

On July 14, 2014, the United States Trademark Trial and Appeal Board (TTAB) found the trademark “BioMcDiesel” for biodiesel fuel likely to cause confusion with McDonald’s Corporation’s (“McDonald’s”) famous family of MC-formative trademarks. McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential]. The applicant, Joel Joseph, appeared pro se to defend his application, which was based on intent to use. McDonald’s challenged the application on three bases under the Lanham Act, namely, likelihood of confusion under Section 2(d), dilution under Sections 13 and 43(c), and on the basis that Mr. Joseph filed the application in bad faith, in that he lacked a bona fide intent to use the mark and solely filed the application for the purpose of selling or licensing the mark to McDonald’s. The TTAB’s decision addressed only the likelihood of confusion claim, and found the “BioMcDiesel” mark was not entitled to registration.

David J. Freeman to Chair Panel on Brownfield Reform at New York State Bar Association Environmental Law Section Fall Meeting

by Gibbons P.C.

Posted in Development/Redevelopment / Environmental and Green Issues

On August 4, 2014

David J. Freeman, a Director at Gibbons P.C., will chair a panel on reform of New York State’s Brownfield Cleanup Program at the Fall Meeting of the Environmental Law Section of the New York State Bar Association. The panel will discuss the Governor’s and Legislature’s actions this year―passage of an extension of the tax credit aspects of the Program, without enacting underlying reforms―and what is likely to happen next year. It will feature such prominent experts as Edward McTiernan, General Counsel of the New York State Department of Environmental Conservation; Christopher Goeken, Director of Public Policy and Governmental Relations of the New York League of Conservation Voters; Darren Suarez, Director of Governmental Affairs of the New York State Business Counsel; Jody Kass, Executive Director of New Partners for Community Revitalization; Philip Bousquet, Partner at Bousquet Holstein; and Linda Shaw, Partner at Knauf Shaw.

New Jersey Supreme Court Formally Adopts and Defines the Scope and Application of the Common Interest Rule

by Gibbons P.C.

Posted in General Litigation

On July 30, 2014

In a matter of first impression, the New Jersey Supreme Court in O’Boyle v. Borough of Longport expressly adopted the common interest rule in New Jersey as articulated in LaPorta v. Gloucester County Board of Chosen Freeholders. Although previously addressed and analyzed by lower courts within New Jersey, the Court’s ruling clarifies the boundaries of the rule and offers guidance in resolving the scope of its application.

California High Court Holds That Federal Arbitration Act Preempts Arbitration Agreements with Class Action Waivers

by Gibbons P.C.

Posted in Class Action Defense

On July 28, 2014

The California Supreme Court, in Iskanian v. CLS Transportation Los Angeles, LLC, recently overturned precedent holding that class action waivers in arbitration agreements are unenforceable in California. Citing AT&T Mobility LLC v. Concepcion et ux, California’s high court strengthened the enforceability of class action waivers in arbitration agreements by holding that the Federal Arbitration Act (FAA) preempts the state’s refusal to enforce such a waiver on grounds of public policy or unconscionability.

AIA Post Issuance Proceedings – Patent Owner Challenges Standing of United States Entities to Bring PGR Review of CBM Patent

by Wendy R. Stein and Thomas J. Bean

Posted in Patent

On July 28, 2014

The United States Court of Federal Claims recently deferred decision on whether to stay a litigation brought in 2011 by a patent owner against the United States. In the case, captioned Return Mail, Inc. v. United States, patent owner Return Mail seeks compensation under 28 U.S.C. § 1498(a) for what it alleges to be use and manufacture by or for the U.S. Postal Service (USPS) of its patent related to methods and systems for providing address change services. The government’s stay motion in the Return Mail litigation was filed on the same day that it filed a petition with the Patent Trial and Appeal Board (PTAB) for post-grant review (PGR) of the patent-in-suit, which it claims is a covered business method (CBM) patent under the America Invents Act. The government’s petition and related stay motion come more than three years into the litigation.

EEOC Issues Enforcement Guidance on Pregnancy Discrimination

by Gibbons P.C.

Posted in Discrimination

On July 22, 2014

On July 14, 2014, the Equal Employment Opportunity Commission (“EEOC”) — the agency responsible for the enforcement of federal anti-discrimination laws — issued Enforcement Guidance on Pregnancy Discrimination and Related Issues (“the Guidance”). The Guidance primarily discusses the requirements of the Pregnancy Discrimination Act (PDA) and the Americans with Disabilities Act (ADA), but also addresses additional federal laws that touch upon pregnancy and related conditions, including the Family and Medical Leave Act (FMLA), the Genetic Information Nondiscrimination Act (GINA) and the Patient Protection and Affordable Care Act (ACA).

New Jersey Supreme Court Clarifies Whistleblower Law

by Richard S. Zackin

Posted in Whistleblower

On July 10, 2014

In June 2014, the New Jersey Supreme Court, in Hitesman v. Bridgeway, Inc., affirmed the decision of a lower appellate court dismissing a claim brought by a healthcare worker under the New Jersey whistleblower law, the Conscientious Employee Protection Act, N.J.S.A. § 34:19-1 et seq. (CEPA). The decision is significant because the Supreme Court clarified the role of a trial court on the issue of whether a plaintiff has sufficiently identified a rule of law or a public policy that provides the necessary foundation for a CEPA claim.