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IP PROFESSORS NOT SHY ABOUT THEIR BEEF WITH THE COURTS What do Elvis Presley, Dwight Eisenhower and Victoria’s Secret have in common? They’ve all been at the center of recent intellectual property storms that have changed the landscape of IP law. A trio of renowned IP professors — Donald Chisum, J. Thomas McCarthy and Paul Goldstein — pointed to these and other cases as a sign the courts have become less favorable to the owners of patents, copyrights and trademarks. The three, who are of counsel to Morrison & Foerster, spoke at a MoFo seminar on IP legal trends last week. Their presentation will be available on MoFo’s Web site later this month. McCarthy, author of the treatise “McCarthy on Trademarks and Unfair Competition,” criticized the U.S. Supreme Court’s rejection of Victoria’s Secret’s trademark infringement claim against an apparel store called “Victor’s Secret,” and later “Victor’s Little Secret.” The Supreme Court’s oral argument in V Secret Catalogue v. Moseley, 537 U.S. 418, “sounded like a �who’s on first?’ routine,” McCarthy said. “The court didn’t get it.” The lower courts found that the store blurred and tarnished the Victoria’s Secret trademark. But the Supreme Court unanimously reversed, finding that there had to be evidence that the famous mark was diluted. “In my 40 years of writing and teaching,” McCarthy said, “trying to explain what �dilution’ means is one of the most difficult things.” McCarthy, a professor at the University of San Francisco School of Law, also disagreed with a Supreme Court decision from 2003 that someone may copy material in the public domain without giving credit to the source. The case — Dastar Corp. v. Twentieth Century Fox Film Corp., 123 S.Ct. 2041 — involved use of footage from a 1949 television series based on a book by President Dwight Eisenhower. Goldstein, a professor at Stanford Law School and author of several treatises, including “Copyright,” said that despite the Sonny Bono Copyright Term Extension Act, which tacked on another 20 years to the term of copyrights, and the Digital Millennium Copyright Act, which prohibits circumvention of anti-copying devices, the rights of copyright owners have actually been restricted by recent court decisions. He pointed to the Ninth Circuit U.S. Court of Appeals ruling last year in Kelly v. Arriba Soft Corp., 280 F.3d 934, that thumbnail reproductions of photographs do not infringe the photographer’s copyright since they are transformative of the original work. And he cited the court’s holding in Elvis Presley Enterprises Inc. v. Passport Video, 349 F.3d 622, that snippets of interviews and photos of Presley could be used in a video biography under the “fair use” doctrine. Chisum, author of the 19-volume “Chisum on Patents,” criticized the Federal Circuit U.S. Court of Appeals for its conflicting approaches to interpreting the meaning of words in a patent claim. In some cases, he said, the court takes a “literalist approach,” emphasizing the dictionary definition of a word, while in other cases it looks at the meaning of a word in the context of the invention. “The Federal Circuit is a bit out of control on claim construction,” he said. A large number of appeals hinge on this issue, and the outcome is “totally a flip of the coin.” — Brenda Sandburg THAT ANSWER’S TOAST Maybe lawyers should read more comics. Michael Yaki, a former member of the San Francisco Board of Supervisors and a partner at Jeffer, Mangels, Butler & Marmaro, had a chance at fame and fortune recently when he appeared on the TV game show “Who Wants to Be a Millionaire.” But while Yaki, a self-described trivia buff, sailed through the first nine questions without breaking a sweat, he was stumped by the $32,000 question, which asked about the origin of the word milquetoast. “The thing about all these shows,” says Yaki, “is that there might be one question that you just don’t know the answer to, and I got hit with that question.” Milquetoast, a label that’s used today to describe an unassertive, hapless fellow, is derived from the 1920s comic strip character Caspar Milquetoast created by Harold T. Webster. Yaki guessed that it was originally a brand of cookie. Yaki auditioned for “Millionaire” on a lark last summer while he was in New York. He made the cut after undergoing a written trivia exam and an interview, along with about 150 other candidates. The show, which was taped in October, aired April 15. The milquetoast mistake was particularly costly because answering the question correctly would have bumped Yaki into the next bracket, guaranteeing him a $32,000 payout. Instead, he received a $1,000 check in the mail the following month, which, he says, paid for his airfare. Still, Yaki is stoic about his defeat. “I think you always sit back and dream about the beachfront property in Hawaii that you’re going to buy, but luckily I didn’t quit my day job.” — Alexei Oreskovic IF YOU’RE LOOKING FOR A JOB… Colorado billionaire Philip Anschutz has a thing for lawyers. After purchasing the San Francisco Examiner in February, Anschutz appointed Bob Starzel, who began working for Anschutz as a lawyer in the 1970s, as the newspaper’s chairman. Now, Anschutz has reached into O’Melveny & Myers to get a leader for his growing film empire. Last month, O’Melveny attorney David Weil stepped down from his role as the managing partner of the firm’s Century City office to take the chief executive job at the newly formed Anschutz Film Group. AFG is the parent company of a pair of movie studios dedicated to producing family-oriented productions such as “Around the World in 80 Days,” which is scheduled for release in June. As an entertainment lawyer at O’Melveny for the past 25 years, Weil has played an important role within many movie studios, cable networks and talent agencies. For the past year, he has served as a key adviser on Anschutz’s film investments. Weil says he took the job because of Anschutz’s commitment to the motion picture business and his unusual motivations, such as educational outreach and bringing families back to theaters. Although Weil will remain a partner at O’Melveny, he has transferred all of his client work to other attorneys. “Technically, I’m still a partner,” says Weil. Anschutz “is essentially paying the firm for 100 percent of my time for a period of time.” But is a J.D. required to make it to the top of an Anschutz business? Not exactly, says Weil. “I guess the good news is he’s had positive experiences of having lawyers join his companies,” says Weil. “I hope I can maintain the track record.” — Alexei Oreskovic

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