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Intellectual Property
The newsletter of the ISBA’s Section on Intellectual Property Law

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Newsletter Articles From 2011

The break up By Shannon A.R. Bond April 2011 This 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.
Canadian Federal Court of Appeal provides direction for patentability of business methods in Canada By Kent Daniels, Brett Slaney, and Anil Bhole 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.”
Chair’s column By Dale R. Kurth June 2011 A farewell message from Outgoing Chair Dale R. Kurth.
Chair’s column By Dale R. Kurth April 2011 A note from Intellectual Property Section Chair Dale R. Kurth.
Covenants not to compete in Illinois—The muddle of the legitimate business interest test By Harold B. Oakley 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.
Department of Commerce takes on trademark bullies By Joseph T. Nabor June 2011 The 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.
En banc decision provides guidance for evaluating modified products within a contempt proceeding By Brian R. Michalek 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.
Expiration of biotech crop patents—Issues for growers By Roger A. McEowen 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.
The Federal Circuit annihilates the 25% rule of thumb for calculating a reasonable royalty By Gregory A. Lewis April 2011 Damages experts will now need to base their royalty rates on licenses and other information tied to the facts of the case at hand.
Immigrants beware—Trademark counterfeiting Is aggravated felony INA §101 By Joseph T. Nabor 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).
Intellectual Improbabilities™ By Daniel Kegan June 2011 News updates affecting intellectual property attorneys.
Intellectual Improbabilities™ By Daniel Kegan April 2011 News updates affecting intellectual property attorneys.
“Obama Pajamas” trademarks laid to rest By Steven L. Baron and Rebecca A. Edwards April 2011 Time 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.
PTO focuses on feedback By Daniel Kegan 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.
Too few Internet matchmaking lonely hearts jurisdictionally trump default judgment: be2 LLC v Ivanof (7th Cir. 2011) By Joseph T. Nabor June 2011 In the recent case of be2 LLC v. Ivanov, the decision of the District Court was reversed and the court was instructed to dismiss the case for lack of personal jurisdiction.
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 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.  
Trust me By Shannon A.R. Bond 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 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.
Viskase—Testing prior art not required to prove anticipation April 2011 A summary of the recent decision involving Viskase, an Illinois-based company and its competitor, World Pac International USA.
What do Chicago’s Grant Park, moral rights, the Seventh Circuit and wildflowers have in common? By Kristin L. Lingren September 2011 This 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.
Winning chances? Client relations, math, and ethics By Daniel Kegan June 2011 Clients and others often ask attorneys for the chances of winning a dispute. Attorneys often answer, but they should not. Mathematically the wrong question is asked; numerical answers likely violate legal ethics by incompetently providing incorrect and often deceptive information. A better response provides both valid case evaluation and client emotional support without fabricating false certainty.