Ransomware attacks are on the rise, with the Federal Bureau of Investigation reporting a nearly 21% increase in reported ransomware cases and a 225% growth in associated losses from 2019-2020. ��On September 21, 2021, the U.S. Department of the Treasury’s Office of Foreign Assets Control (OFAC) issued an����to highlight the sanctions risks associated with ransomware payments to malicious cyber actors and proactive steps that companies can take to mitigate those risks.

OFAC has designated some malicious cyber actors in its cyber-related sanctions program and other sanctions programs to discourage payments of cyber ransom or extortion demands to these parties.

According to the advisory, U.S. persons are generally prohibited from engaging in transactions with those on OFAC’s Specially Designated Nationals and Blocked Persons List (SDN List), other blocked persons, and those covered by country or region embargoes. Furthermore, any transaction that may violate the International Emergency Economic Powers Act (IEEPA), including a transaction by a non-U.S. person that causes a U.S. person to violate an IEEPA-based sanction prohibition, is also banned.

In response to sanctions violations, OFAC may hold such persons civilly liable even if they were unaware that the transaction was prohibited under sanctions laws and OFAC’s regulations at the time. The OFAC’s Economic Sanctions Enforcement Guidelines describe the department’s enforcement policies, as well as mitigating factors that may be considered by OFAC, including:

1. meaningful measures taken to improve cybersecurity practices and reduce the risk of extortion by sanctioned actors; and
2. the reporting of ransomware attacks to government agencies and cooperation with law enforcement.

If those factors are present, OFAC’s resolution could be limited to a “no action” or a “cautionary” letter, rather than a public response. Businesses that fall under OFAC’s regulation should aim to revise their cybersecurity incident response plans to better align with the recommendations in the updated advisory.��

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Photo by Chris Reid ()

Tiffany Wang is an IPilogue Writer, Intellectual Property Journal Editor, and a 2L JD Candidate at Osgoode Hall Law School.

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A could rejuvenate Gordon Moore’s famous law of electronics. Moore’s Law suggests that .

ASML, a Dutch company, pioneered an extreme ultraviolet (EUV) lithography machine capable of churning out microchips with unprecedented levels of precision. In their August 20 , the company indicated that its projects will . This technology allows

. ASML’s The ultra-precise light enables the machine to ��

Given microchips’ status in the , ASML’s technology carries significant weight. In fact, Washington has already

Does preventing the sale of the $150-million machine give the American economy a long-term advantage in the technological cold war? Perhaps not.

For one. Chips of 10 nm and above represent the dominant market share. Meanwhile, the Sino-American semiconductor industry accounts for approximately . It may be dangerous for Washington to lose sight of the forest for the trees.

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Tiffany Wang is an IPilogue Writer, IP Innovation Clinic Fellow, and a 2L JD Candidate at Osgoode Hall Law School.

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Former President Donald Trump changed U.S. Intellectual Property Law on December 27, 2020. Months before leaving the White House, he signed into law the . The Act significantly changes American copyright and trademark laws.

Changes to Copyright Law

The Copyright Alternative in Small-Claims Enforcement Act of 2020 (the “2020 Copyright Act”) protects copyright owners’ rights in two ways: .��

Under the 2020 Copyright Act, or for-profit network based on unauthorized downloading or distribution of copyrighted material is criminal. This echoes the U.S. government’s protectiveness over copyright holders in the digital era.����

By creating a small-claims tribunal for copyright matters, the 2020 Copyright Act also addresses access to justice concerns. The Copyright Claims Board (the “Board”) consists of a which hears claims regarding copyrighted material and awards damages or relief as necessary. disputes in a federal court.

Changes to Trademark Law

The Trademark Modernization Act of 2020 (the “2020 Trademark Act”) contains two major developments:

Pursuant to the 2020 Trademark Act, trademark examiners enjoy greater flexibility in setting response times to the “” procedure. This is the process through which third parties submit evidence to refute the registration of a trademark. Additionally, . Despite granting increased flexibility in time, the 2020 Trademark Act simultaneously introduced additional fees. These changes suggest that flexibility in timing comes at a cost.

The 2020 Trademark Act allows third parties to formally submit evidence into the record of an application of a trademark registration Third parties are given more authority to challenge a trademark registration if they are able to provide formal, relevant evidence that on or before the date of filing.

Intellectual Property Law and the Pandemic

Protecting intellectual property remains a priority during the unsettling times of a pandemic. Stronger copyright and trademark laws foster intellectual vibrancy; however, the Act, through imposing fees upon response-time extensions, may undermine any newly implemented flexibility.

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Photo Credit: Prof Pina D'Agostino

Prof Giuseppina D’Agostino is the Founder & Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. She is also very proud of her new book!

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I am excited to share that I just published a collection on Artificial Intelligence (AI) and the law, Leading Legal Disruption: Artificial Intelligence and a Toolkit for Lawyers and the Law (Thomson Reuters 2021). Co-edited with Dr. Aviv Gaon and Carole Piovesan, the book provides a provocative analysis on the emerging terrain of AI and how it interrogates various areas of the law. The book, that features a foreword from the Hon. Marshall Rothstein (formerly of the Supreme Court of Canada), is an international collaboration of thought leaders in AI, with contributors from Canada, the USA, Europe and Israel. Issues discussed include intellectual property, privacy, contract law, regulation, governance, ethics, business and more. Importantly, such issues merit a toolkit of practical and international perspectives as they are increasingly complex and ajurisdictional. ����

In many ways this book is also a reflection of Osgoode’s strengths in AI. My co-editors, Dr. Aviv Gaon, Director at IDC Herzliya of Experiential Programs, is a PhD graduate (class of 2019) publishing several other books on AI and emerging technology, and Carole Piovesan (class of 2009) has co-founded her own firm, INQ Law. ��I am myself an LL. B graduate from Osgoode (class of 1999), eventually returned as faculty to found and run IP Osgoode and I am currently co-chairing the 91��ɫ AI & Society Task Force, among many other initiatives in this space.

I am particularly thankful to the Osgoode JD students who provided helpful research assistance: Elif Babaoglu, Daniel Joseph, Joseph Simile, Rachel Marcus, Christopher Tsuji, and Julianna Felendzer.

I am most grateful for the enthusiastic endorsements by Prof David Vaver (Professor of Intellectual Property Law, Osgoode; Emeritus Professor of Intellectual Property & Information Technology Law, University of Oxford), Prof Jane Ginsburg (Morton L. Janklow Professor of Literary and Artistic Property Law, Columbia University School of Law), Justice Michael Manson (Federal Court of Canada), and Dan Bereskin (Partner, Bereskin & Parr LLP) all which can be read on the back cover.

They say you can’t judge a book by its cover, but I particularly like this one, inspired by an AI and suggestive of our youth, our future ultimately grappling with AI and other emerging technology, that will iterate in every generation.

I look forward to hearing from you on your thoughts on the book (and the cover!). You may order your copy��here.

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Leonard is a��photographer whose����is using an electron microscope to capture images of some of the smallest things imaginable, including cells, crystals, and tiny creatures. Stemtech is��a multi-level marketing organization with a����using adult stem cells.��The����by Leonard alleged that Stemtech initially approached him to licence one image for use in their publications, which Leonard agreed to, but that he was never fully paid for its use. Also, the agreement was for use only in their publications, and not on their website.

The����further alleged that Stemtech used two images entitled "Scanned Electron Microscopy of Human Bone Marrow Stem Cells Images" on their website, and made them available to their sales and distribution network for use on their websites as well. When Leonard discovered the use by Stemtech, he sent them a cease and desist letter.�� Stemtech took��down the images, but refused to compensate Leonard. As such, Leonard started the action against Stemtech for copyright infringement.

The main form of relief sought by Leonard was damages suffered by him, and an accounting of profits by Stemtech. Or in the alternative, statutory damages.

The case was heard by a jury, which returned a����in Leonard's��favour��on all counts. In addition to a finding of liability for direct infringement, the jury also found Stemtch vicariously and contributorily liable for the infringement of Leonard's copyrights in both works. In this case, Stemtech was found vicariously liable for the use of Leonard's images by the company's independent contractors. The jury found that Stemtech had the right or ability to stop or limit their infringement, but��failed��to do so, while also having a direct profit or financial interest in the independent distributor's infringement. Furthermore, the jury found Stemtech had knowledge its distributors were directly infringing the works and intentionally induced them to do so.

Apart from the facts, the most interesting aspect of this case was the massive award of $1.6 million to the photographer. Leonard pled for actual damages, which would have been a combination of damage suffered by him as well as an accounting of��profits��by Stemtech. Under , Leonard could have elected for statutory damages, but was not able to do so, as he had not registered his works at the time of infringement. ��extends copyright protection to unregistered works, but requires registration upon commencement of an infringement action.

Damages under Canadian Law

The Canadian����operates in very much the same way. Under��, an infringer of copyright is liable for damages suffered by the owner, in addition to an accounting of profits not otherwise accounted for. Similarly to��, Canadian law allows for the copyright holder to elect for statutory damages instead of real damages at any time in the proceedings under��. The range of statutory damages in Canada is between $500 and $20,000 for all infringements by a commercial infringer of a single work. Unlike America, statutory damages are available in Canada without registration, and starting an action for infringement does not require registration of a work.

Implications

Without details of how the jury calculated the amount, it is difficult to comment on its appropriateness. However, another recent American decision resulted in a����for copyright infringement of another photograph, this time under statutory damages. These decisions beg the question of whether we will see a trend in enforcing copyright of photographs and if we will be seeing them enter the Canadian courts.

Alex Buonassisi is an IPilogue Editor and a JD Candidate at the University of British Columbia.

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This announcement comes at a time when copyright law is being challenged by the digital revolution. The current copyright regime does not provide legal certainty to controversial issues such as the digitization of and increased virtual access to books. (IPilogue posts about this topic can be found and .) There is also legal uncertainty as to who is liable for infringing content posted on public access networks, and for the storing and sharing of supposedly illegal content through mechanisms of . The Megaupload saga is one prime example of a that is testing the limits of copyright law (see for IPilogue’s coverage of that story).

In light of the importance of the internet and these new challenges, the US Committee on the Judiciary is attempting to address the interests of various stakeholders by proposing solutions that will ensure effective protection and enforcement of copyright in the US. The US authorities, however, are not the only parties interested in modernizing the copyright system in their respective jurisdictions.

The adoption of the Intellectual Property Strategy in May 2011 (see "") outlined the main objectives of the European Union with respect to Intellectual Property Law. The European Commission (EC) later announced in December 2012, within��, its intention to proceed with modernizing copyright law in the digital economy. Through dialogue with various stakeholders and elaboration of market studies and legal drafts, the EC is hoping to achieve rapid progress in problematic fields such as: cross-border portability of content; user-generated content; data- and text-mining; private copying levies; access to audiovisual works; and cultural heritage. The Canadian legislative authorities have also attempted to find solutions to the new challenges to copyright law. The approval of Bill C-11 in June 2012 and its implementation are examples of steps being taken by the Canadian legislature to address these issues. (Further information on copyright reform in Canada can be found .)

The announcement by the US Committee on the Judiciary, however, does not effectively clarify the extent to which the changes will affect the current copyright regime in the US. ��In my view, by solely focusing on concerns about compensation for the use of protected works and the effectiveness of copyright enforcement, the Committee is neglecting review of the prevailing dogmatic standards for the protection of intellectual property. ��By virtue of the advent of the digital economy and significant public interest, copyright law has experienced a transition, in which a reassessment of its justification and legitimacy is required. The social and economic functions of copyright - especially in view of the economic exploitation of rights by the music industry and by collective societies - should be discussed under a new lens. This would not only��focus on the protection and enforcement of copyrights, but also on issues related to access to information, access to cultural elements, and the interests of creators and consumers alike.

In my opinion, if the review by the US Committee on the Judiciary does not take the above into account, it is unlikely that further legislative attempts will be justified and legitimized or provide legal certainty and solutions to the problems with the current system, and may in fact suffer the same fate as the SOPA and PIPA. ��Effectively considering the point of view of all stakeholders is essential for the modernization and advancement of copyright law.

Pedro Henrique Dias Batista is an IPilogue Editor and a PhD student at Ludwig Maximilian University of Munich.

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In the , the Association for Molecular Pathology v Myriad Genetics (Myriad), Myriad Genetics alongside the University of Utah, isolated two genes, BRCA 1 and BRCA 2, which are associated with breast and ovarian cancers.�� Furthermore, it developed a test that examines the DNA extracted from the genes�� for mutations that signify risk of developing breast or ovarian cancer.�� The patent of the two genes grants Myriad Genetics a monopoly on testing for mutations and thus prevents other laboratories from performing such tests.

An action brought by the American Civil Liberties Union and the Public Patent Foundation on behalf of various medical groups, patients and researchers that Prometheus’ patent on the human genes were invalid as they were products of nature, and the ensuing monopoly granted prevented women from garnering confirmatory tests. A United States District judge in New 91��ɫ conceded and the patents in 2010.�� Nonetheless, this victory for the American Civil Liberties Union and association was short lived, as the Court of Appeal for the Federal Circuit the ruling, holding that the DNA isolated from the body was patentable since it was “markedly different” in a chemical structure from the DNA within the body.�� On appeal to the Supreme Court, the case was remanded to the Court of Appeal for the Federal Circuit for review.

On review, the Federal Court will be required to resolve whether isolating genes BRCA 1 and BRCA 2 merely describes a law of nature or whether it is “.”��As mentioned earlier, and pursuant to Section 101 of the , laws of nature, natural phenomena, and an abstract idea are not patentable.�� This provision is one that is seemingly simple to grasp, however, upon further interpretation, becomes complicated and abstract.�� Patents sought by individuals who are able to demonstrate that their particular invention involves a of an abstract idea or law of nature are entitled to patent protection.�� Therefore, Section 101 patent analysis is oriented towards what constitutes an application.�� In Prometheus, patent protection for the diagnostic test that looked for chemicals formed when drugs used to treat gastrointestinal diseases were broken down in the body was�� since the test merely recited and applied a law of nature. The future success or failure of Myriad Genetics’ patent may be foreshadowed utilizing the lesson learned from Prometheus, with greater accuracy depending on the degree of alignment between both cases.��

Perspectives on whether the fate of the Prometheus patent foretells a grim tale for�� Myriad are rather varied and stratified. lawyers and patent experts believe that the ruling in Prometheus is not easily transferable to the present case since Myriad’s patents are compositions of matter while Prometheus’ were methods of testing. Dr. Robert Cook-Deegan, director of the program on genome ethics, law and policy at Duke University the logic to be different since the present case is about a thing, as opposed to a method.�� believe that the ruling in Prometheus is opposed to the rationale used by the appellate court to uphold Myriad’s patents.�� Daniel Ravicher of the Public Patent Foundation opined, “the isolation of DNA is a trivial, well-understood step…A unanimous Supreme Court has now undeniably declared that a trivial noninventive transformation” is not sufficient to obtain patent protection.

Irrespective of outcome, both Prometheus and Myriad have generated useful dialogue about the ethical and economic challenges facing the Unites States patent system in an age of biotechnology and the increasing monetization and exploitation of genetics.

Tracy Ayodele is a JD Candidate at Osgoode Hall Law School.

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A recent case, , came through the US Court of Appeals, Federal Circuit, which highlighted potential conflicts between findings of validity that arise from re-examination on the one hand and an invalidity action on the other. This case appeared to be rather odd: the Federal Circuit confirmed the validity of certain patent claims in a matter in 1998, and then under subsequent re-examination, found that the same claims were invalid due to issues of obviousness 9 years later. The re-examination was appealed to the Federal Circuit.

On first glance, this is problematic: the same issues seem to be re-litigated, with a different result – was this simply the re-litigation of an issue that was already litigated to finality in prior judicial proceedings? Would this be a situation where the PTO overstepped its authority during the re-examination and ignored a final judgement of the Court?��If so, should the principles of res judicata or abuse of process prevent the reconsideration of these issues?

For those of us unfamiliar with re-examination proceedings (they are seldom applied in Canada, but the more popular ex parte re-examination in the United States is very similar to the Canadian re-examination), re-examination is a relatively summary and expedient proceeding whereby a party files a request to the USPTO to re-examine an already-granted patent. The re-examination is limited in focus, only considering anticipation and obviousness challenges based upon published documentation, patents and patent applications that should have been considered during the initial examination of the patent prior to granting. This is in contrast to determinations of patent validity in full-blown court actions, where parties may challenge patent claims on a broader range of grounds, undergo discovery and the Court conducts hearings where the evidence is subject to examination and cross-examination.��The majority decision was very short and is silent about the prior invalidity action and the potential for an issue of res judicata or abuse of process, upholding the finding by the Board of Patent Appeals and Interferences (BPAI)��that the patent claims were obvious.

However, a fiery dissent was lodged by Newman J. who considered the case to be one where the principles of res judicata and issue preclusion should have prevented Powerscreen from requesting re-examination. In her dissent, she considered the various policy reasons involved: the public interest in finality, the conservation of scarce judicial resources, and the ability of an administrative agency to override a judicial adjudication.

These are all valid concerns – but let’s look carefully to see whether this situation should trigger these principles. Here, the same prior art is cited against the same patent, and the challenge is also on obviousness grounds. However, there is a key difference: The prior art, while considered previously, was applied in a different way than in the previous litigation in an obviousness challenge. In light of these circumstances, it may be interpreted as Newman J. proposing that, in the interests of finality, where prior art has been raised in prior proceedings, it should not be open to re-litigation. As Professer Vaver notes in his book, this line of thinking is similar to the current English rule and thus, similarly fails to take into consideration the countervailing public interest in intellectual property litigation.

As such, instead of applying a res judicata��in this situation, it may be better to consider the abuse of process doctrine when determining when an issue is open to reconsideration. The abuse of process doctrine is, similar to res judicata,��designed to provide finality in litigation and is a broader remedy where a court will preclude re-consideration of an issue where not only is there re-litigation but also an additional serious element where it is shown that the process which is to serve justice is being abused to work an injustice.

In this scenario, there is a strong public interest in ensuring that patentees are not granted exclusive rights against the public where their patent claims were either obvious or anticipated. If we accept the reasoning in Newman J.’s dissent, in the interests of finality, the patent system could reward unworthy claimants and penalize defendants who did not or could not exhaustively investigate their assertions.��As such, while Newman J. does have some strong policy concerns, a more nuanced approach should be taken rather than instituting a complete bar on re-litigating on already-considered prior art.

There are certain situations where the courts should refuse to re-litigate, but these should only apply where there is a clear abuse of process, for example, where the parties are attempting to re-litigate on exactly the same issues, with arguments that do not provide any more merit than those already argued. While this may open the doors to some overlapping arguments in litigation, a less mechanistic approach to re-litigation would nonetheless help ensure that strong invalidity arguments are not unnecessarily barred simply because the prior art had already been considered in another light. Given the facts of this case, it appears that the balance is in favour of re-considering these issues.

Details of the Case

The original invalidity action and subsequent re-examination proceedings concerned US patent 5,234,564, a patent owned by the Construction Equipment Company (CEC) concerning a vehicle for screening rocks and plant matter (among other things).

In 1998, CEC sued Powerscreen for infringement. The Federal Circuit court confirmed the validity and corresponding willful infringement of certain claims in the ‘564 patent.

In 2007, a third party requester (possibly Powerscreen) requested an ex parte re-examination of the ‘564 patent, raising questions of patentability based upon previously considered prior art from the 1998 decision, applying the prior art in a different way than was alleged in 1998 (citing the same references and additional references, but placing strongest reliance on the same references that had been cited in the litigation). The PTO began a re-examination, finding that the request raised a substantial new question and in spite of amendments and submissions by CEC, the examiner rejected all the claims as obvious. CEC then appealed to the BPAI, who upheld the decision of the PTO. CEC then appealed to the Federal Circuit.

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On October 27, 2011, the High Court of Justice Chancery Division ruled in favour of British Sky Broadcasting Group PLC et al. (Sky) on a against Digital Satellite Warranty Cover Limited et al. (Defendants).

The Defendants were held liable on four separate counts of infringement, including the infringement of Sky’s database rights pursuant to Article 7 of the , [Directive] which has since been. Article 7 of the Directive allows for the protection of a database which demonstrates a “[s]ubstantial investment in either the obtaining, verification or presentation of the contents …” either qualitatively or quantitatively.

Sky, a provider of satellite broadcasting services, communications and television equipment claimed that the Defendants “extracted substantial parts” of their client databases containing information on roughly 9.7 million clients’ names, addresses, email addresses, phone numbers, equipment and installations dates. Further, Sky established that they had invested £250 million on the development of and £300 million annually to maintain and verify their client lists.

The Defendants, citing , argued that Sky’s data was created rather than obtained, verified or presented. In that case, it was held that creation of new “independent materials” – otherwise the underlying data - is not a valid subject for protection under the Directive because the “[p]urpose of the protection by the sui generis right… is to promote the establishment of storage and processing systems for existing information and not the creation of materials capable of being collected subsequently in a database”. An individual who can show that a substantial investment “[i]ndependent of the resources used to create those materials” was made, could obtain protection. The Court held that Sky had not created new information (except for the installation date) and instead held that they “[s]imply record[ed] pre-existing information in a systematic way” and therefore qualified for protection.

In a 2005 , it was noted that the European Commission recognized that “[c]opyright protection based on the standard of “originality” alone might not be an adequate tool to protect these often considerable investments” due in part to the varying standards of originality between the Member States, and specifically between the common law and droit d’auteur jurisdictions. The Directive provides for two levels of database protection: i) copyright protection involving the intellectual effort of selection or arrangement, and ii) sui generis protection once a substantial investment is made in obtaining, verifying or presenting the data.

Databases are not protected per se via sui generis protection or explicitly in the Canadian Copyright Act. However, a database may as a ‘compilation’ – which is defined under of the Copyright Act as the arrangement or selection of data - qualify for ‘thin’ copyright protection as long as the selection or arrangement satisfies the originality standard of “skill and judgement” as enunciated in CCH Canadian Ltd v Law Society of Upper Canada. In CCH, the Supreme Court of Canada implicitly rejected the ‘sweat of the brow’ industriousness standard recognized in the United Kingdom because it “[t]ip[s] the scale in favour of the author’s or creator’s rights, at the loss of society’s interest in maintaining a robust public domain that could help foster future creative innovation”.

Similarly, a database can be protected as a ‘compilation’ under of the United States Code which defines it as “[t]he collection and assembling of pre-existing materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship”.

In , the United States Supreme Court��held that a phone book directory arranged in alphabetical order was missing the “[m]inimal creative spark” of originality required for copyright protection. Further, the Court held that the sweat of the brow standard had dangerous consequences, “[t]he most glaring being that it extended copyright protection in a compilation beyond selection and arrangement — the compiler’s original contributions — to the facts themselves.”

Protection in both jurisdictions exists in the arrangement or selection of the databases alone and not in the underlying data or facts, although protection for the original expression of those facts could be copyrightable.

In , , Professor at the University of Ottawa, Faculty of Law argues that databases that are created based on labour, investment, “whole of the universe”, or arranged in an obvious manner lack the requisite level of originality for protection in Canada and the United States (Scassa, 578-579). Therefore Sky’s database of names, addresses and telephone numbers would not qualify for protection in these jurisdictions based on the industriousness, ‘sweat of the brow’ standard of ‘substantial investment’ alone.

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Ever since Madonna launched her clothing line, , in August 2010, it has been plagued by a trademark infringement suit. Two weeks after the line went on sale exclusively at Macy’s Department Stores in the United States, LA Triumph Inc against Madonna’s company, MG Icon LLC, claiming the rights to the Material Girl trademark. In the latest development, the US District Court made by MG Icon to dispose of the suit and ordered that the suit should proceed to trial.

Under rule “the court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law”. However, Judge James Otero’s revealed that the case is fraught with factual disputes.

MG Icon argued that summary judgment should be granted as Madonna is the senior user of the Material Girl trademark. They reasoned that Madonna is the senior trademark user because Madonna created and first used the Material Girl trademark by releasing the song “Material Girl” in 1985, releasing a corresponding music video, and selling “Material Girl” merchandise since 1985. ��Judge Otero disagreed with MG Icon stating that the singing of a song does not create a trademark and pointed out multiple factual disputes related to the validity of the trademark that the 80s “Material Girl” merchandise may create.

MG Icon also argued that summary judgment should be granted as there is no evidence of confusion between the two Material Girl brands. To determine whether confusion exists, the Court examines a list of eight factors, which are: (1) strength of the mark, (2) proximity of the goods, (3) similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used, (6) type of goods and degree of purchaser case,�� (7) intent in selecting mark, and (8) likelihood of expansion of the products lines (). Judge Otero found that the case had material factual disputes that could affect a majority of the eight factors. The factual disputes he cited included LA Triumph’s and MG Icon’s respective target markets and the price range of both Material Girl lines.

Lastly, Judge Otero also found that there was controversy as to whether LA Triumph abandoned the trademark. LA Triumph’s predecessor company registered the Material Girl trademark in the State of California in January 1997 and subsequently advertised and sold material girl merchandise across the US from 1997 to 2003. However, the California trademark was not renewed after it expired in 2007. LA Triumph argued that they “simply forgot to renew its application” but also provided contradicting evidence. Such disputes need to be resolved at trial. MG Icon filed a with the (USPTO) on December 4, 2009.�� LA Triumph nor its predecessor company, OC Mercantile Corporation, have made an application to the USPTO.

The trial is expected to begin in October 2011, but Madonna will not be vogue-ing her way into the courtroom as the Court dismissed her as an individual defendant in the action in November 2010.

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