Articles on Intellectual Property

Bankruptcy Sale or Termination of Copyrights. Which One Rules? By Beverly A. Berneman & Victoria R. Lieberman Intellectual Property, March 2024 A 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 Litigation By Daniel Kegan Intellectual Property, March 2024 When 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 Kegan Intellectual Property, March 2024 An eclectic gathering of recent intellectual property developments.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, December 2023 An eclectic gathering of recent intellectual property developments.
Legacy Intellectual Property By Daniel Kegan Intellectual Property, December 2023 Creatives, 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 ChatGPT By Steve Baron & Shira Baron Intellectual Property, December 2023 A cartoon of Old MacDonald discovering artifical intelligence.
The FTC Takes on Fake Consumer Reviews and Auto-Renewal of Subscriptions By Steven L. Baron, Jonathan LA Phillips, & Leah Hall Intellectual Property, September 2023 The 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 Kegan Intellectual Property, September 2023 An 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 Want By David C. Brezina Intellectual Property, September 2023 The 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 Kegan Intellectual Property, June 2023 An eclectic gathering of recent intellectual property developments.
Royalty Payments Treated as Dischargeable Debt in Bankruptcy By Beverly A. Berneman Intellectual Property, June 2023 In 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 Proceedings By Anthony Wenn & Daniel Hess Intellectual Property, June 2023 Over 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 Law By Oleh Karpenko Intellectual Property, June 2023 A 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.
A Debate With ChatGPT About Its Intellectual Property Rights By Aaron W. Brooks Intellectual Property, February 2023 Who owns the copyright to OpenAI ChatGPT AI-written material? See ChatGPT response; spot the legal analysis gaps.  
Federal Trade Commission Rule to Make Non-Compete Agreements Unfair Trade Practices Comments to Proposed Rule Due March 20, 2023 By David C. Brezina Intellectual Property, February 2023 Non-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.
Federal Trade Commission Rule to Make Non-Compete Agreements Unfair Trade Practices Comments to Proposed Rule Due March 20, 2023 By David C. Brezina Labor and Employment Law, February 2023 On January 5, 2023, the Federal Trade Commission published a Notice of Proposed Rulemaking for a rule to ban non-compete clauses. 
New Illinois Law Bans Third Parties From Using Merchant Marks Without Permission By Jonathan LA Phillips Intellectual Property, February 2023 With 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 Penalty By Carl Oppedahl Intellectual Property, February 2023 There 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 Limitations By Beverly A. Berneman Intellectual Property, December 2022 The 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 Assets By Ahad Syed Intellectual Property, December 2022 Intellectual 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 Kegan Intellectual Property, December 2022 An eclectic gathering of recent intellectual property developments.
Taped Banana as Art: Morford v. Cattelan (SD FL 2022) By Lizzie Scott Intellectual Property, December 2022 Can 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 Times By Margo Lynn Hablutzel Intellectual Property, December 2022 Effective 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>
Does Your U.S.-Based Client’s Website Need a Cookie Consent Banner? By Aaron W. Brooks Intellectual Property, September 2022 The internet has become afflicted with a scourge of bothersome popup windows and dialogue boxes purporting to give us more control over how we’re tracked online. These mechanisms seem to have done little more than clutter up our screens and create a global click-through-loophole around regulations. The European Commission itself has acknowledged that cookie laws have “resulted in an overload of consent requests for internet users” and is currently considering sweeping changes to these laws. Lawyers who advise US-based clients on their online presence should carefully consider their use of cookies. This article provides a basic analysis of cookie-related regulations and offers practical suggestions.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, September 2022 An eclectic gathering of recent intellectual property developments.
.KIDS: Participating in the Sunrise Period Is a Moral Duty By Emmanuel Gillet Intellectual Property, September 2022 The DotKids Foundation registry aims to create and promote a digital universe adapted to the well-being of children. The Foundation registry aims to create and promote a digital universe adapted to the well-being of children—a world population of 2.4 billion under 18, about one-third the world’s population.  To this end, the registry has adopted guiding principles based on the 1989 Convention on the Rights of the Child, <ohchr.org>. The new Global Top Level Domain (gTLD) differs from most other gTLDs; it is dedicate to a population of vulnerable Internet users. Brand owners are urged to file their trademarks with the Trademark ClearingHouse (TMCH), <www.trademark-clearinghouse.com>, and register the corresponding domain name as early feasible. One must fight against .KIDS cybersquatting.
Quick Look Intellectual Property Audit By David C Brezina Intellectual Property, September 2022 A guide to reviewing company documentation and procedures, especially where there have been significant management and/or ownership changes. The purpose is not to find errors, but rather to find out what is “there” and what might help develop the business, particularly where a bit of a different direction might be indicated. There can be many valid business reasons for not taking action in the past—most decisions weigh risk and expense—that might provide opportunities for future growth.  
USPTO Oddball Fun Fact By Sam Castree, III Intellectual Property, September 2022 Using the PTO’s Trademark ID Manual, <idm-tmng.uspto.gov/id-master-list-public.html>, can ease examiner acceptance of an application’s goods and services description. And if the exact description you want to use isn’t in the current online manual, you can suggest an addition, usually decided within days, <TmIdSuggest@USPTO.gov>. Too general a description may encroach on prior registrations; too narrow may unnecessarily limit an applicant’s registration rights. Every wonder how oddly specific a trademark goods or services description can get?  
DuPage County Bar Association – USPTO Ethics Assessing Attorney Misconduct & Introduction to the Diversion Pilot Program By Kenneth Matuszewski Intellectual Property, June 2022 The USPTO will be assessing attorney misconduct and also initiating a diversion pilot program.
Getting to Know Judge Jackson: Quotes and a Trademark Case By Catherine M. Goe Intellectual Property, June 2022 During her Supreme Court confirmation hearing, Sen. Diane Feinstein asked Judge Jackson to talk briefly about one or two cases that “have made a deep impression on you and have really enabled you to progress as you have.” Judge Jackson discussed Yah Kai World Wide Enterprises, Inc. et al, v. Geoffrey Napper, 292 F.Supp.3d 337 (D.D.C. 2018).

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