Association Intellectual Property LawBy Daniel KeganIntellectual Property, June 2024An overview of some of the legal issues that may impact associations.
Bankruptcy Sale or Termination of Copyrights. Which One Rules?By Beverly A. Berneman & Victoria R. LiebermanCommercial Banking, Collections, and Bankruptcy, June 2024A battle between a record company and the members and heirs of a famous rap group is brewing in the Southern District of Florida. The primary issue is whether an author’s ability to terminate a transfer of rights under the Copyright Act is negated by a bankruptcy court order permitting a sale of the author’s works.
Bankruptcy Sale or Termination of Copyrights. Which One Rules?By Beverly A. Berneman & Victoria R. LiebermanCorporate Law Departments, June 2024A battle between a record company and the members and heirs of a famous rap group is brewing in the Southern District of Florida. The primary issue is whether an author’s ability to terminate a transfer of rights under the Copyright Act is negated by a bankruptcy court order permitting a sale of the author’s works.
Intellectual Improbabilities™By Daniel KeganIntellectual Property, June 2024An eclectic gathering of recent intellectual property developments.
Marching Forward: How NIH’s Proposed Framework Could Reshape the Bayh-Dole Act’s Use of March-in RightsBy Anthony J. Wenn, Frank Brefo, & Sarah DunkleyIntellectual Property, June 2024In December 2023, the National Institute of Standards and Technology released a draft framework that includes price as a factor for encorcing "march-in" rights under the Bayh-Dole Act. If implemented, this framework marks a significant policy shift, making it clear that the government can effectively recapture the exclusive rights of technology derived from federally funded research if the price of a product is deemed too high.
USPTO Issues New Artificial Intelligence Guidelines for PractitionersBy Kristen Brooks & Aaron BrooksIntellectual Property, June 2024The U.S. Patent and Trademark Office recently issued its Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office.
Bankruptcy Sale or Termination of Copyrights. Which One Rules?By Beverly A. Berneman & Victoria R. LiebermanCommercial Banking, Collections, and Bankruptcy, May 2024A battle between a record company and the members and heirs of a famous rap group is brewing in the Southern District of Florida. The primary issue is whether an author’s ability to terminate a transfer of rights under the Copyright Act is negated by a bankruptcy court order permitting a sale of the author’s works.
Bankruptcy Sale or Termination of Copyrights. Which One Rules?By Beverly A. Berneman & Victoria R. LiebermanIntellectual Property, March 2024A battle between a record company and the members and heirs of a famous rap group is brewing in the Southern District of Florida. The primary issue is whether an author’s ability to terminate a transfer of rights under the Copyright Act is negated by a bankruptcy court order permitting a sale of the author’s works.
Don’t Plan to Win, Plan to Avoid LitigationBy Daniel KeganIntellectual Property, March 2024When contract negotiations seem stuck, it can be helpful to temporarily ignore the differing preferred provisions and reflect on the negotiation process and what might be causing the conflict.
Intellectual Improbabilities™By Daniel KeganIntellectual Property, March 2024An eclectic gathering of recent intellectual property developments.
Intellectual Improbabilities™By Daniel KeganIntellectual Property, December 2023An eclectic gathering of recent intellectual property developments.
Legacy Intellectual PropertyBy Daniel KeganIntellectual Property, December 2023Creatives, entrepreneurs, and startups create intangible assets. Many people and too many national media confusedly intermix trademarks, copyrights, patents, and trade secrets. Each is quite different, with different requirements, ease of creating, registration requirements, costs, durations, and rules for transfer.
Old MacDonald Discovers ChatGPTBy Steve Baron & Shira BaronIntellectual Property, December 2023A cartoon of Old MacDonald discovering artifical intelligence.
The FTC Takes on Fake Consumer Reviews and Auto-Renewal of SubscriptionsBy Steven L. Baron, Jonathan LA Phillips, & Leah HallIntellectual Property, September 2023The Federal Trade Commission is engaging in rulemaking on issues that impact consumer transactions online, namely reviews and endorsements of goods and services and automatic renewals of subscriptions. The proposed rules crack down on deceptive practices relating to reviews and endorsements and make it easier for consumers to know about and terminate automatic renewal of subscriptions.
Intellectual Improbabilities™By Daniel KeganIntellectual Property, September 2023An eclectic gathering of recent intellectual property developments.
Jack Daniels v. Bad Spaniels: Trademarks Are Not Abstract and Free Speech Doesn’t Mean You Can Say Anything You WantBy David C. BrezinaIntellectual Property, September 2023The U.S. Supreme Court was presented with a parody dog toy emulating the Jack Daniels whiskey trademarks and packaging. When presented with the question of whether the First Amendment defense always applied to parody use, the Court decided the case should be narrow: Where the accused use is use in commerce as a trademark—indicating the source of the goods—traditional trademark law applies and it is unnecessary to address application of a rule for artistic use.
Intellectual Improbabilities™By Daniel KeganIntellectual Property, June 2023An eclectic gathering of recent intellectual property developments.
Royalty Payments Treated as Dischargeable Debt in BankruptcyBy Beverly A. BernemanIntellectual Property, June 2023In a bankruptcy reorganization case, an obligation to pay royalties for the use of intellectual property is usually covered by a license. However, royalties paid after the sale of intellectual property require a different analysis. In Sanofi-Aventis U.S. LLC v. Mallinckrodt PLC, the U.S. District Court determined that royalties were a pre-petition debt that was dischargeable in bankruptcy.
Solicitor General to Advise Supreme Court on Issues of Estoppel in Inter Partes Review ProceedingsBy Anthony Wenn & Daniel HessIntellectual Property, June 2023Over the past decade since the Leahy-Smith America Invents Act (AIA) went into effect in 2012, the most widely discussed—and often criticized—aspect of the AIA was the creation of modern inter partes review proceedings. Inter partes review (IPR) is an administrative proceeding to challenge the validity of an issued U.S. patent before the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office. Any entity may file an IPR petition at the PTAB to challenge the validity of any issued patents.[1] The PTAB, in its discretion, may then grant or deny the petition to institute a trial to reassess the validity of the issued patent. Statistically, petitioners have a high likelihood of invalidating a patent owner’s patent by instituting an IPR. The current petition to the Supreme Court for certiorari in Apple, Inc. v. California Institute of Technology may affect the scope of the estoppel afforded to patent owners by 35 U.S.C. § 315(e)(2).
Ukraine Adopts New Copyright LawBy Oleh KarpenkoIntellectual Property, June 2023A new law on copyright and related rights entered into force in Ukraine on January 1, 2023. This is the first major copyright legislation change in Ukraine since 1993, introducing numerous important changes. Most of the novelties are intended to harmonize local legislation with that of the EU. The new law meets modern requirements and international standards and is, in some provisions, even ahead of the current practice in Ukraine. Important details summarized.
Federal Trade Commission Rule to Make Non-Compete Agreements Unfair Trade Practices Comments to Proposed Rule Due March 20, 2023By David C. BrezinaIntellectual Property, February 2023Non-compete agreements have arisen in courts since 1711. On January 5, 2023, the Federal Trade Commission published a Notice of Proposed Rulemaking (NPR) for a rule to ban non-compete clauses. Among other provisions, a company has to identify whether it has a non-compete, and if so, tell the contracting worker that it is no longer in effect. The NPR cites economic literature that banning non-competes enhances competition and lowers prices. Comments to the proposed rule are due March 6, 2023.
New Illinois Law Bans Third Parties From Using Merchant Marks Without PermissionBy Jonathan LA PhillipsIntellectual Property, February 2023With enactment of Illinois’ Fair Food and Retail Delivery Act, the General Assembly barred third parties from using restaurants’ and bars’ trademarks and other intellectual property without their permission. How the defense of nominative fair use will apply under this law, meant to curb food delivery app misbehavior, is unclear.
Ways to Avoid Having to Pay USPTO’s $400 Non-DOCX PenaltyBy Carl OppedahlIntellectual Property, February 2023There are two ways a patent applicant or practitioner might be able to avoid the profound malpractice risk of filing in Microsoft Word format when filing a patent application.
Copyright Damages and the Statute of LimitationsBy Beverly A. BernemanIntellectual Property, December 2022The Copyright Act limitations to file suit for infringement is three years. Some plaintiffs aren’t quickly aware of the infringement, so some districts apply a “discovery rule” to extend the permitted filing time. Whether a plaintiff is entitled to damages for the gap between the initial infringement date and the complaint filing is neither clear nor consistent.
Counseling Businesses Trademarking Digital AssetsBy Ahad SyedIntellectual Property, December 2022Intellectual property recognizes intangible property, expanding from books and words to include software, architectural works, name-image-likeness, and now non-fungible tokens, and more. Guidelines for applying to register trademarks for digital assets are give, especially whether the asset if within trademark Class 9 services or Class 42 services.
Intellectual Improbabilities™By Daniel KeganIntellectual Property, December 2022An eclectic gathering of recent intellectual property developments.
Taped Banana as Art: Morford v. Cattelan (SD FL 2022)By Lizzie ScottIntellectual Property, December 2022Can a banana duct-taped to a rectangular green board be art? Registered with the U.S. over $390,000, would the registration support a federal suit for copyright infringement? Judge Scola denied the motion to dismiss. Artist Lizzie Scott offers an artist’s perspective.
U.S. Trademark Office Halves Response TimesBy Margo Lynn HablutzelIntellectual Property, December 2022Effective Dec. 3, 2022, the current standard six months due date to respond to a trademark office action is halved to three; for post-registration matters the cleavage is effective Oct. 7, 2023. A three-month extensions to the initial three-month due date may be available for $125. <www.federalregister.gov/d/2022-22217>
