Publications

Section Newsletter Articles on Intellectual Property

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 Kaylea 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 and 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.
EU jurisdiction: Law applicable to disputes arising from commercial agency agreements By Claire Perez Intellectual Property, February 2014 The Court of Justice of the European Union (17Oct2013) ruled on the question of the law applicable to international commercial agency contracts, specifically, whether the governing law elected by the parties to a commercial agency contract can be disregarded in favor of the law of the forum.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, February 2014 Eclectic selective summaries of IP agency changes, IP cases, noteworthy events, and curiosities.
Seventh Circuit questions usefulness of trademark surveys By Eric Waltmire Intellectual Property, February 2014 Defendant, restaurant operator planned to expand its restaurant sales to food products in grocery stores under its CRACKER BARREL & Design logo. Kraft, maker of CRACKER BARREL cheese, won an injunction, affirmed by the Seventh Circuit, which questioned consumer survey utility in trademark disputes.
Surveys, science & skepticism By Daniel Kegan Intellectual Property, February 2014 Expert witnesses are used in diverse areas of the law, including intellectual property, and are typically paid for their work, as attorneys commonly are. A skilled expert may find consistent employment helping fact finders understand the evidence and implied facts.
The dangers corporations face with assignments of intent-to-use trademark applications By Robert A. Cohen Corporate Law Departments, December 2013 The Lanham Act has very strict rules concerning the assignment of 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.
Breaches of privacy and data—New risks, new insurance By Daniel Kegan Intellectual Property, October 2013 The Internet makes everything much easier, including breaches of privacy and data. Federal and state laws now create employer and data-custodian liability for such breaches. An information audit is suggested. Insurance targeted for these liabilities is now available.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, October 2013 Brief summaries or comments on interesting or important IP developments.
Torrent Wars: Copyright trolls, legitimate IP rights, and the need for new rules vetting evidence and to amend the Copyright Act By Jeffrey Antonelli Intellectual Property, October 2013 The problems caused by the current wave of BitTorrent copyright litigation flooding the federal courts is a classic case of the law needing to catch up to the current state of technology. In the article Torrent Wars the writer describes the Litigation abuses need to be curbed to avoid the continued burdening of innocent individuals and families becoming defendants to federal copyright litigation. Amendments to the Copyright Act are suggested to minimize the cap on statutory damages to $5,000 for consumers who infringe without a monetary purpose, rather than $150,000, as well as to screen complaints based on the Maryland District Court’s special Master process.
Trademark Trial and Appeal Board not flip about the bird By Steven L. Baron and Natalie A. Harris Intellectual Property, October 2013 The Lanham Act forbids registration of "immoral" and "scandalous" trademarks. Some decisions appear arbitrary. Luxuria's beverage bottle with raised middle finger was refused registration.
How to stop a competitor from getting a patent By Eric R. Waltmire Intellectual Property, June 2013 A review of the options to consider in light of a known or suspected pending patent application.
Intellectual property issues involved in the sale or purchase of a business—A checklist By Eugene F. Friedman Business Advice and Financial Planning, June 2013 This checklist is abstracted from materials associated with a speech given by the author on behalf of the Business Advice and Financial Planning Section Council earlier this year.
Joint CLE in Colorado? Intellectual Property, June 2013 If a CLE session in Boulder, CO in 2014 sounds appealing, make sure your voice is heard! 
Seventh Circuit addresses trademark confusion in movie title By Steve Mandell, Steven L. Baron, and Elizabeth Morris Intellectual Property, June 2013 The Seventh Circuit recently affirmed a Northern District of Illinois court’s dismissal of a trademark case where a movie title allegedly infringed upon the name of a musical group.