Section Newsletters

Articles on Intellectual Property

Media creation & consumption is challenging traditional legal notions By David Adler Intellectual Property, May 2015 Fair use continue hard to predict. Fox News Network infringes the now iconic photograph of firefighters raising the American flag on the ruins of the World Trade Center, 9/11/2001. Fox denied copyright infringement against TVEyes, which provides subscribers a searchable database based on indexed and organized data from its 24/7 recording of many tv and radio broadcasts. The additional features TVEyes provides were sufficiently transformative to find fair use.
Preclusion and the TTAB—Why B&B Hardware matters to trademark owners: Can a TTAB decision determine a court judgment on trademark use and infringement damages? By David Adler Intellectual Property, May 2015 So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before a district court, issue preclusion should apply. B&B Hardware, Inc v Hargis Industries, Inc, 575 US ___ (24 Mar 2015).
Save the Date—Protecting and Preserving Author Rights: Contracts, Digital Publishing, & Literary Estates Intellectual Property, May 2015 Join us for a special all-day joint Continuing Professional Education Program co-sponsored by Science Fiction Writers of America and the Intellectual Property Law and Trusts & Estates Sections of the Illinois State Bar Association, aimed at both authors and their attorneys. Topics include a review of rights and contract provisions, especially authors’ rights in the digital age, self-publishing, and (particularly for the less well-known authors) the creation of literary estates. Lawyer-author Scott Turow has agreed to be one of the speakers. Space in the room is limited, so early registration is strongly recommended. Concurrent with the SFWA’s annual Nebula Awards weekend—the professional SF authors (not the fans) honoring their own. Register at www.isba.org/cle/upcoming. CLE pending.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, January 2015 Recent news and developments of interest to intellectual property law practitioners.
Major hidden IP costs of mergers and acquisitions By Volker Spitz Intellectual Property, January 2015 A look at the potential IP pitfalls that could befall a company involved in a merger or acquisition.
Practice tips By Lynne R. Ostfeld International and Immigration Law, January 2015 Next time your case involves intellectual property, surrogacy, or international probate, you may want to consider these ideas.
SCOTUS to decide a tacky situation By Denny Esford Intellectual Property, January 2015 The U.S. Supreme Court has already heard oral arguments in the case of Hana Financial, Inc. v. Hank Bank and Hana Financial Group.
What the media isn’t telling you about the Redskins trademark lawsuit By Kay Weiler Human and Civil Rights, January 2015 While the media and a significant number of supporters of Native Americans have expressed outrage at the Eastern District of Virginia's recent decision, it is clearly aligned with U.S. law.
What’s happening at the PTO By Andrew Byrnes Intellectual Property, January 2015 Read the remarks from Andrew Byrnes, Chief of Staff of the U.S. Patent & Trademark Office. 
The CTM: then and now, and why national trade mark registrations are still important By Rachel Havard International and Immigration Law, December 2014 The European Community Trademark system still provides excellent value for the money. To seek EU wide registration is relatively inexpensive compared with the cost of filing individual national trade mark applications in 28 countries.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, November 2014 Recent news and developments of interest to intellectual property law practitioners.
No copyright infringement for using photograph of Madison’s mayor on t-shirt By Steven L. Baron & Alyssa V. Newswanger Intellectual Property, November 2014 A discussion of the recent case of Michael Kienitz v. Sconnie Nation, LLC and Underground Printing-Wisconsin, LLC.
PTO report to Congress on virtual marking, executive summary, September 2014 Intellectual Property, November 2014 To assess the effectiveness of virtual marking, Congress directed the United States Patent and Trademark Office to produce an analytical report.
The CTM: then and now, and why national trade mark registrations are still important By Rachel Havard Intellectual Property, September 2014 The European Community Trademark system still provides excellent value for the money. To seek EU wide registration is relatively inexpensive compared with the cost of filing individual national trade mark applications in 28 countries.
Hot news item Intellectual Property, September 2014 The USPTO is seeking feedback from U.S. trademark owners, practitioners, and other interested parties about a proposal to allow amendments to identification of goods and services due to technology evolution.  
Is your mark REALLY in use on EVERYTHING? By Joseph T. Nabor Intellectual Property, September 2014 When a trademark owner says the mark is in use on everything in the trademark registration, they really only mean it half of the time.
Lessons in timing from the Washington Redskins trademark cancellation By Kay Weiler Intellectual Property, September 2014 The controversy surrounding the trademarks and logos associated with D.C.’s beloved football team is not new. So why did it take so long for the trademark to be canceled, and can the Redskins organization overcome the decision on appeal? The answer is complex and uncertain.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, June 2014 Eclectic selective summaries of IP agency changes, IP cases, noteworthy events, and curiosities.
Intellectual property indemnification—A licensee’s perspective By Mark Weis Corporate Law Departments, June 2014 One provision that a customer, or Licensee, should look for in technology agreements is the intellectual property indemnification clause.
Me and my Shadow—World-famous magician, Teller, wins summary judgment against copycat magician By Steven L. Baron & John D. Fitzpatrick Intellectual Property, June 2014 Magician Teller prevailed on a summary judgment motion for copyright infringement against Dogge, a Dutch performer who re-enacted Teller’s famous “Shadows” illusion. Although the technique of a magic trick is often unprotectable by copyright, Teller registered his act as a “dramatic pantomime,” protecting his exclusive right to perform the illusion. Defendant’s pro se defenses were unpersuasive.
Seventh Circuit affirms Google’s right to ANDROID trademark and rejects “naked licensing” issues raised by Specht By Nicole Kopinski Intellectual Property, June 2014 Plaintiff Specht abandoned his ANDROID DATA trademark when it ceased operations in 2002 and failed to reclaim it before Google Inc's 2007 launch of its ANDROID operating system. Google's open source software deemed not naked licensing.
Should there be a presumption favoring awards of attorney fees in copyright litigation? By William T. McGrath Intellectual Property, June 2014 Section 505 of the Copyright Act allows courts to award attorney fees to the prevailing party in a copyright case. Twenty years ago, the Supreme Court in Fogerty v. Fantasy, Inc. held that courts should assess fees using an “evenhanded” approach rather than one favoring a prevailing plaintiff. The Court emphasized the importance of the “equitable discretion” of the district courts in awarding fees. But in recent years, the Seventh Circuit has called for “presumptive entitlement” of attorney’s fees to the prevailing party. This paper points out the number of problem with such a presumption, including the difference between a  presumption and an inference and the chilling effect on plaintiffs with legitimate claims.
Spot the error Intellectual Property, June 2014 People make mistakes, even judges. Not differences of opinion or judgments, but simple facts. Two recent federal cases offer, to IP professionals, the opportunity to spot a glaring error in each.
Creatives, entrepreneurs, and startups By Daniel Kegan Intellectual Property, May 2014 While Creatives, Entrepreneurs, and Startups follow unique paths, there typically are a few major pitfalls to minimize. Here are 19 brief guidelines; some are helpful reminders for established endeavors.
Da Bears “Shufflin’ Crew” sues over alleged unauthorized use of the Super Bowl Shuffle By Denny Esford Intellectual Property, May 2014 In 1985 two dozen Chicago Bears football players made a music video hit, the "Super Bowl Shuffle.” In January 2014 many of the “Shufflin’ Crew” sued the record producer’s widow for breaching the recording contract by selling licenses to third-parties.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, May 2014 Eclectic selective summaries of IP agency changes, IP cases, noteworthy events, and curiosities.
ISBA Newsletter Archived Abstract from July 1993 Intellectual Property, May 2014 ISBA Newsletters from 1999 now Web-archived with abstracts and author-title index available to the public.
Lexmark clarifies Lanham False Advertising Test By Joseph T. Nabor Intellectual Property, May 2014 Zone of interest and proximate cause required for Lanham Act false advertising claim. Lexmark Int’l, Inc. v. Static Control Components, Inc., US No.12-873. 
Careers in IP Law—Book review By Joseph T. Nabor Intellectual Property, February 2014 The second of two reviews of the ABA's Careers in IP Law: Avenues and Opportunities, April 2013, from the perspectives of a new attorney and an experienced supervising attorney.
The dangers corporations face with assignments of intent-to-use trademark applications By Robert A. Cohen Intellectual Property, February 2014 The Lanham Act has strict rules for assigning intent-to-use trademark applications. A recent precedential TTAB decision confirms that these rules apply to assignments between independent companies, as well as parent-subsidiary families.

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