Section Newsletter Articles on Intellectual Property

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; 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.
The truth, nothing but the truth—And the threat to the First Amendment By Steven Helle Intellectual Property, December 2012 Plaintiffs plead for regulation of truthful speech plucked from the Internet's powerful potential for privacy invasion. Nieman v. Versuslaw; Martin v. Hearst Corp.
Contract litigation expense insurance By Kenneth T. Teglia Intellectual Property, September 2012 Contract Litigation Insurance (CLI) allows individuals and businesses to insure a significant portion of the financial risk —having to pay the winners’ attorneys’ fees—that arises concomitantly with the initiation of contract dispute litigation. Plaintiffs and defendants can apply, even after the complaint is filed. Simpler than most other insurance, there is no complicated claims adjustment or issues interpreting coverage or exclusionary language—the court's official ruling activates policy coverage.
Intellectual improbabilities™ By Daniel Kegan Intellectual Property, September 2012 Short summaries and comments on recent IP cases, Government requests for comment, and other notices.
Presentation on the proposed amendments to the EU Data Privacy Directive By Eric Goldman Intellectual Property, September 2012 The CONSENT project is a multi-year, multi-million dollar research project, funded by the European Union, to conduct empirical research on consumer privacy issues in Europe. Ultimately, the research findings should feed into the EU's evaluation of proposed amendments to the 1995 EU Data Privacy Directive. Eric Goldman summarizes and comments on the project participants' meeting in Romania.
Recap of the Fourth Trademark Scholars Roundtable at DePaul University By Eric Goldman Intellectual Property, September 2012 The fourth Trademark scholars Roundtable discussed trademark boundaries at its DePaul University meeting: how trademark law abuts other legal doctrines such as copyright, patent, publicity, and legally unregulated areas. Summary of discussion and Eric Goldman's neo-classical economical perspective.
Did Bosch v. Pylon change the landscape for permanent injunctions? By Natasha White Intellectual Property, June 2012 Although the federal Circuit's Bosch v. Pylon decision eliminated the presumption of irreparable harm, it also affirmed the lack of a presumption against irreparable harm and weaved the exclusive right of a patentee into the injunctive relief analysis factors. Practical effects are discussed.
Intellectual improbabilities™ By Daniel Kegan Intellectual Property, June 2012 An eclectic gathering of recent intellectual property news and cases.
LLC members in online store Venture Bound by Partnership Fiduciary Duties—Health and Body Store v. Justbrand Limited By Venkat Balasubramani Intellectual Property, June 2012 Another group of people attempt a Web venture with zero documentation and end up in court. One of the many perennial themes of this blog is that people must spell out the terms of any Web venture in advance. This includes everything from a joint blogging arrangement to a jointly operated online store or a simple Web development agreement.
Tea Partiers wage war against each other over a Google Groups account—Kremer v. Tea Party Patriots By Eric Goldman Intellectual Property, June 2012 It's crucial for newly formed organizations to definitively address the ownership of trademarks and other virtual assets from day one, when everyone still loves each other. When the ownership issue comes up later, it's usually because the principals are locked in a death-match and are beyond the point of reaching sensible compromises.
Small and medium enterprises considering exporting to China should be mindful of protecting their intellectual property rights By John J. Tufano Business and Securities Law, April 2012 For small and medium enterprises considering exporting to China, understanding how to protect intellectual property rights abroad is a key component to due diligence.
Beware: Damages for pursuing baseless claim construction By Brian R. Michalek Intellectual Property, March 2012 The 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. Gilleland Intellectual Property, March 2012 Mock 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 Canada By Emir Aly Crowne and Arif A. Mahmood Intellectual Property, March 2012 The 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 notes By Daniel Kegan Intellectual Property, March 2012 News updates regarding the U.S. Patent & Trademark Office.
Trademark scam warning By Daniel Kegan Intellectual Property, March 2012 Be 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 Canada By Kent Daniels, Brett Slaney, and Anil Bhole Intellectual Property, December 2011 While Canada's Federal Court of Appeals declined to determine the patentability of the “one-click” technique used by, 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 growers By Roger A. McEowen Agricultural Law, December 2011 The 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 growers By Roger A. McEowen Intellectual Property, December 2011 The 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 feedback By Daniel Kegan Intellectual Property, December 2011 While 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.
Trademark Specimens 101: When can a small business demonstrate use of its mark in commerce to qualify to register a federal trademark? By Steven L. Baron and Cameron E. Robinson Intellectual Property, December 2011 In order to register a federal trademark, it is necessary to show use in commerce of the mark. This article addresses the meaning of “use in commerce” for the purpose of federal registration and pays particular attention to when use of a mark on a web site constitutes use in commerce.  
Covenants not to compete in Illinois—The muddle of the legitimate business interest test By Harold B. Oakley Intellectual Property, September 2011 This 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 proceeding By Brian R. Michalek Intellectual Property, September 2011 On 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 §101 By Joseph T. Nabor Intellectual Property, September 2011 Criminal 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 me By Shannon A.R. Bond Intellectual 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 Canada By Joshua W. Spicer Intellectual Property, September 2011 Two 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.