Publications

Section Newsletter Articles on Intellectual Property

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.
U.S. Copyright Office: The Register’s call for updates to U.S. copyright law Intellectual Property, June 2013 Statement of Maria A. Pallante, Register of Copyrights, before the U.S. House of Representatives on March 20, 2013.
After ReDigi: Contrasting the EU and U.S. approaches to the re-sale of second-hand digital assets By David Naylor Intellectual Property, May 2013 An overview of the ReDigi and UsedSoft decisions and contrasts what appear to be increasingly divergent approaches in the EU and the U.S.
Insurance coverage for IP-related business claims By Dale R. Kurth Corporate Law Departments, May 2013 It is important to have some understanding of what is covered, what is not, and what the basics of making an insurance claim are.
Joint CLE in Colorado? Intellectual Property, May 2013 If a CLE session in Boulder, CO in 2014 sounds appealing, make sure your voice is heard! 
Superman’s copyright kryptonite—And Sherlock Holmes finds it’s less than elementary By Margo Lynn Hablutzel Intellectual Property, May 2013 The longrunning saga of copyright ownership of Superman and his family may finally be ending, just as a case around the copyrights for Sherlock Holmes is beginning.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, March 2013 Eclectic snippets from recent events.
IP USA Federal Date Answers By Daniel Kegan Intellectual Property, March 2013 The answers to the questions posed in the second article of this issue.
IP USA federal date quiz By Daniel Kegan Intellectual Property, March 2013 Can you name the intellectual property events associated with these events?
Plaintiff’s covenant moots counterclaim of trademark invalidity By Eric R. Waltmire Intellectual Property, March 2013 Already LLC v. Nike Inc., deals with whether a plaintiff trademark holder can easily moot a case when a defendant challenges the validity of the trademark and what impact the mooting will have on the plaintiff’s trademark rights.
Intellectual property: Do you own it and consequences of not owning it By David H. Levitt Business and Securities Law, February 2013 In patent law, the owner of the work is the inventor. In copyright law, the person who fixes the expression in a tangible medium is the creator of the work—and the owner of the copyright.
Cloze & Flesch vs. Jarndyce: In re comprehension & readability vs. legalese By Daniel Kegan Intellectual Property, December 2012 How readable is your brief, how comprehensible? Cloze and Flesch tests give objective measures.
An examination of software patents: Under Secretary of Commerce for IP & Director of the USPTO David Kappos’ November 20, 2012 
Center for American Progress 
keynote address By David Kappos Intellectual Property, December 2012 PTO Director David Kappos discusses how intellectual property (IP) is a key driver of economic growth, exports, and job creation, the global currency for creating value. Software patents, like all patents, are a form of innovation currency and ecosystem enablers. Those who invest in breakthrough innovation deserve respect for their IP. Usually key players agree to pro-consumer solutions via licenses or joint development. Patents are enshrined in the Constitution, one of the few, if not only, clauses giving Congress the right to create personal property.
Fifty shades of counsel: Fan fiction in 2012 By Shannon A.R. Bond Intellectual Property, December 2012 Fan fiction—sincere flattery or copyright infringement. Stephanie Meyer's Master of the Universe, E.L. James, Fifty Shades of Grey, and avoiding trouble.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, December 2012 Eclectic snippets from recent events. PTO warns of insolicitous solicitations; INTA launches teen ed UnrealCampaign.com; ND CA issues ESI Guidelines; FTC recommends truth telling; Academia IP; Ars Gratia Artis; EU; etc.
T-T-A-B By John L. Welch Intellectual Property, December 2012 TTAB writes VILLAGE PEOPLE (singers of famed Y-M-C-A aerobic song) not generic; John Welch sings T-T-A-B.