Beware: Damages for pursuing baseless claim constructionBy Brian R. MichalekIntellectual Property, March 2012The Court of Appeals for the Federal Circuit affirmed a District Court's award of $4.6 million in attorney's fees and expert fees based on Plaintiff MarcTec's frivolous litigation. The Federal Circuit found MarcTec's assertion of infringement baseless given its untenable initial claim construction position and untestable expert theory. MarcTec's pursuit of infringement, even after the District Court's unfavorable claim construction order, further reflected its bad faith and ultimately resulted in the Court's affirmation of attorney and expert fees.
The debate is on: Is the Federal Judicial Center’s patent tutorial video too pro-plaintiff?By John D. GillelandIntellectual Property, March 2012Mock jury research at TrialGraphix qualitatively measured jurors’ top impressions after watching the Federal Jury Center’s patent tutorial video concludes that the video strongly improves juror’s understanding of patents, increases their awareness that patents can be invalidated, may have a slight pro-plaintiff/patentee bias, but significantly also educates jurors on key defense principles.
Hyperlinks not defamatory according to Supreme Court of CanadaBy Emir Aly Crowne & Arif A. MahmoodIntellectual Property, March 2012The Supreme Court of Canada held hyperlinks to defamatory material is not “publication” of the material, but a neutral reference to the material’s existence without communicating or exerting control over the destination content, like a footnote. Crookes v. Newton, 2011 SCC 47. Freedom of expression and the information linking function of the Internet weighed against the application of a traditional publication rule.
PTO notesBy Daniel KeganIntellectual Property, March 2012News updates regarding the U.S. Patent & Trademark Office.
Trademark scam warningBy Daniel KeganIntellectual Property, March 2012Be aware that private companies not associated with the United States Patent and Trademark Office often use trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations.
Canadian Federal Court of Appeal provides direction for patentability of business methods in CanadaBy Kent Daniels, Brett Slaney, & Anil BholeIntellectual Property, December 2011While Canada's Federal Court of Appeals declined to determine the patentability of the “one-click” technique used by Amazon.com, Inc., it held that “there is no basis to determine conclusively that a business method should not be patentable subject matter.”
Expiration of biotech crop patents—Issues for growersBy Roger A. McEowenAgricultural Law, December 2011The patent expiration of the first generation of Roundup Ready soybean trait in 2014 will be the first time that a major biotech trait will become potentially subject to competition with generic traits.
Expiration of biotech crop patents—Issues for growersBy Roger A. McEowenIntellectual Property, December 2011The patent expiration of the first generation of Roundup Ready soybean trait in 2014 will be the first time that a major biotech trait will become potentially subject to competition with generic traits.
PTO focuses on feedbackBy Daniel KeganIntellectual Property, December 2011While the dedicated attention and oft’ times quick responses of Craig Morris and his team at the PTO are making communicating with the Trademark Office much more efficient, it still requires an experienced trademark professional to know the meaning of the diverse electronic choices and to efficiently evaluate how to respond to the non-automated examiners’ office actions.
Covenants not to compete in Illinois—The muddle of the legitimate business interest testBy Harold B. OakleyIntellectual Property, September 2011This article first examines Steam Sales and Reliable. It then addresses what these decisions, which dealt with sales positions wholly unrelated to the health care industry, may nevertheless mean for health care providers in Illinois.
En banc decision provides guidance for evaluating modified products within a contempt proceedingBy Brian R. MichalekIntellectual Property, September 2011On April 20, 2011, the Court of Appeals for the Federal Circuit, sitting en banc, vacated a $110 million award against Echostar Corporation and implemented a new test for evaluating product redesigns within a contempt proceeding. The en banc Court overruled and modified the KSM test, effectively merging the old two-step test into one. Under the new test, the Courts are to inquire as whether the newly accused product was so different from the infringing product so as to create a fair ground of doubt as to the wrongfulness of the defendant's conduct.
Immigrants beware—Trademark counterfeiting Is aggravated felony INA §101By Joseph T. NaborIntellectual Property, September 2011Criminal trademark counterfeiting is counterfeiting, and an aggravated felony under INA § 101(a)(43)(R), 8 USC § 1101(a)(43)(R), and supported Immigration judge's removal order. Ninth Circuit rejects argument "counterfeiting" referred only to currency. Rodriguez-Valencia v. Holder, 99 USPQ2d 1476 (9th Cir. 2011).
Trust meBy Shannon A.R. BondIntellectual Property, September 2011“Trust me” is a phrase that often presages disaster. Many times, when trust is involved in contractual agreements, the family that does business together winds up in court together. Eva’s Bridal Ltd. discovered that the hard way when a naked trademark license got between trusting family members and the failure to hash out all the details resulted in a loss of trademark protection. Similarly, trusting property buyers lost millions and learned the importance of reading all the terms of an agreement after realizing that the Trump name had been merely licensed to the property developers.
Two new procedural options for trade mark infringement claims in the Federal Court of CanadaBy Joshua W. SpicerIntellectual Property, September 2011Two recent decisions of the Federal Court of Canada and the Federal Court of Appeal offer new procedural options to pursue trade mark infringers in Canada. Typically an action, protreacted discovery and interlocutory motions and a trial were required to seek an injunction, damages, lost profits, or other substantive relief. However, in Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada June 2011) the Federal Court for the first time granted judgment under new summary trial provisions of the Federal Court Rules, setting a meaningful precedent for the expedited procedure. In BBM Canada v. Research in Motion Limited the Federal Court of Appeal held that an application—a summary procedure akin to a motion with no discovery—may be used to pursue an injunction and damages for trade mark infringement and that such claims are not confined to proceeding as an action.
What do Chicago’s Grant Park, moral rights, the Seventh Circuit and wildflowers have in common?By Kristin L. LingrenIntellectual Property, September 2011This article examines the decision by the Seventh Circuit Court of Appeals in the case of Kelley v. Chicago Part District within the context of the federal Visual Artists Rights Act of 1990 ("VARA"). The court considered whether a wildflower garden planted and maintained in a public park was a protected "work of visual art" under VARA and whether the park district's reduction and modification of the garden constituted a violation of the creators moral right of integrity. It concluded that the garden did not fall within the purview of VARA because it did not qualify as copyrightable within the meaning of the Copyright Act, lacking the elements of "authorship" and "fixation" required to support copyright and eligibility for protection under VARA. In dicta, the Seventh Circuit questioned the First Circuit's position in Phillips v. Pembroke Real Estate that VARA provided no protection for site-specific art.
Department of Commerce takes on trademark bulliesBy Joseph T. NaborIntellectual Property, June 2011The Department of Commerce recently released its report which studied whether or not some trademark owners are using their trademark rights in an overly aggressive enforcement effort—commonly known as the Trademark Bullies report.
ICANN likely to open new general top-level domain names this yearBy John AmbrogiCorporate Law Departments, May 2011The Internet Corporation for Assigned Names and Numbers (ICANN) is a not-for-profit corporation formed in 1998 that is dedicated to keeping the Internet stable, secure and interoperable. The new top level domain (TLD) offerings will enable businesses, governments, and organizations to own and operate a TLD of their choosing.
The break upBy Shannon A.R. BondIntellectual Property, April 2011This past August, Starbucks offered $750 million to Kraft in an attempt to “break up” with the distributor and exercise more control over the Starbucks retail products. Reports conflict about whether Starbucks’ decision was foreseeable or completely unexpected, and there are a lot of allegations about who caused the break up.
Intellectual Improbabilities™By Daniel KeganIntellectual Property, April 2011News updates affecting intellectual property attorneys.
“Obama Pajamas” trademarks laid to restBy Steven L. Baron & Rebecca A. EdwardsIntellectual Property, April 2011Time will tell if other applicants attempt to register trademarks such as “Clinton’s Mittens” “Sotomayer’s Attire” or “Emanuel Flannels” without permission. But for now, this USPTO decision seems to have put this issue to bed.
