New York Intellectual Property Law Review

By Miranda, David P. | Albany Law Review, Winter 2011 | Go to article overview

New York Intellectual Property Law Review


Miranda, David P., Albany Law Review


I. INTRODUCTION

This review of New York appeals in the area of intellectual property law covers copyright, trademark, and patent cases. Since federal statutes control many legal issues involving intellectual property law, the most significant decisions emanate from federal courts. This discussion will address intellectual property cases in the Second Circuit and their impact beyond this jurisdiction.

In the area of copyright law, the Second Circuit Court of Appeals' decision in Barclays Capital, Inc. v. Theflyonthewall.com, Inc., addresses the issue of copyright preemption as it is applied to New York's common law doctrine of "hot news" misappropriation. (1) The Second Circuit's decision in Salinger v. Colting modifies the standard for obtaining a preliminary injunction in a copyright infringement case, making it consistent with the standard applied by the U.S. Supreme Court in patent infringement cases. (2) Federal district courts in New York also rendered copyright decisions addressing termination of transfer of rights, as well as standards for bringing a motion to dismiss a copyright infringement claim. (3)

In the area of trademark law, the Second Circuit addresses the issue of contributory trademark infringement for the sale of counterfeit goods by online auction site eBay in Tiffany (NJ) Inc. v. eBay Inc. (4) The case highlights the difficulties faced by companies doing business in the online marketplace. (5) Although patent cases are tried in district courts throughout the country, patent appeals are decided only by the United States Court of Appeals for the Federal Circuit. In a case arising out of the Southern District of New York, the Federal Circuit addressed the issue of whether certain DNA molecules would be considered patentable subject matter in the case of Ass'n for Molecular Pathology v. U.S. Patent & Trademark Office. (6) Another case arising from the Southern District of New York is Public Patent Foundation, Inc. v. GlaxoSmithKline Consumer, Healthcare, L.P., which addresses the issue of damages when there is a claim for false patent marking. (7)

II. COPYRIGHT

A. Barclays Capital Inc. v. Theflyonthewall.com, Inc. (8)

In June 2011 the Second Circuit Court of Appeals addressed the issue of whether a claim for "hot news" misappropriation under New York's common law is preempted by federal copyright law. (9) Several financial services firms, including Barclays Capital Inc. and Merrill Lynch, commenced a lawsuit in the U.S. District Court for the Southern District of New York against the Theflyonthewall.com, Inc., an Internet based subscription news service, alleging claims of copyright infringement, as well as "hot news" misappropriation under New York law, with regard to plaintiffs securities recommendations. (10) Although the district court granted judgment on both claims in favor of the plaintiff, (11) the Second Circuit held that federal copyright law preempted the plaintiffs misappropriation claim. (12)

The plaintiffs, Barclays and Merrill Lynch, are securities brokers with a public clientele. (13) As part of their business, the plaintiffs perform "extensive research" into the securities markets and make "recommendations as to the wisdom" of particular investment strategies. (14) The firms generally circulate their reports and recommendations each day prior to the opening of U.S. securities markets, providing clients and others with the opportunity to act upon the recommendations when the markets open. (15) The plaintiffs' efforts in providing these reports result in "brokerage commissions" when clients use their firm to act on the recommendations. (16) Defendant, Theflyonthewall.com, owns an electronic news service. (17) Defendant was not disseminating the research of plaintiffs, but rather is briefly reporting on the recommendations of the plaintiffs. (18) Theflyonthewall.com electronically streamed hundreds of headlines each day, including a category entitled "recommendation. …

The rest of this article is only available to active members of Questia

Already a member? Log in now.

Notes for this article

Add a new note
If you are trying to select text to create highlights or citations, remember that you must now click or tap on the first word, and then click or tap on the last word.
One moment ...
Default project is now your active project.
Project items

Items saved from this article

This article has been saved
Highlights (0)
Some of your highlights are legacy items.

Highlights saved before July 30, 2012 will not be displayed on their respective source pages.

You can easily re-create the highlights by opening the book page or article, selecting the text, and clicking “Highlight.”

Citations (0)
Some of your citations are legacy items.

Any citation created before July 30, 2012 will labeled as a “Cited page.” New citations will be saved as cited passages, pages or articles.

We also added the ability to view new citations from your projects or the book or article where you created them.

Notes (0)
Bookmarks (0)

You have no saved items from this article

Project items include:
  • Saved book/article
  • Highlights
  • Quotes/citations
  • Notes
  • Bookmarks
Notes
Cite this article

Cited article

Style
Citations are available only to our active members.
Buy instant access to cite pages or passages in MLA, APA and Chicago citation styles.

(Einhorn, 1992, p. 25)

(Einhorn 25)

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Cited article

New York Intellectual Property Law Review
Settings

Settings

Typeface
Text size Smaller Larger Reset View mode
Search within

Search within this article

Look up

Look up a word

  • Dictionary
  • Thesaurus
Please submit a word or phrase above.
Print this page

Print this page

Why can't I print more than one page at a time?

Help
Full screen

matching results for page

    Questia reader help

    How to highlight and cite specific passages

    1. Click or tap the first word you want to select.
    2. Click or tap the last word you want to select, and you’ll see everything in between get selected.
    3. You’ll then get a menu of options like creating a highlight or a citation from that passage of text.

    OK, got it!

    Cited passage

    Style
    Citations are available only to our active members.
    Buy instant access to cite pages or passages in MLA, APA and Chicago citation styles.

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn, 1992, p. 25).

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn 25)

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences."1

    1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

    Cited passage

    Thanks for trying Questia!

    Please continue trying out our research tools, but please note, full functionality is available only to our active members.

    Your work will be lost once you leave this Web page.

    Buy instant access to save your work.

    Already a member? Log in now.

    Oops!

    An unknown error has occurred. Please click the button below to reload the page. If the problem persists, please try again in a little while.