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Intellectual Property


Can I Copyright My “Knight in Shining Armor” Story?

The short answer is—perhaps, at least parts of it.  Copyright law protects “original works of authorship fixed in a tangible medium of expression.” 17 U.S.C. §102.  This protection attaches from the moment at which the expression is recorded—in other words, from the moment the pen hits the paper.

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Another Domino? The Conundrum of Antitrust Policy vs. Patent Rights

Are we on the brink of another domino falling in the battle to protect patent rights? It might seem so, considering a recent Third Circuit Court of Appeals' ruling that appears to elevate commercial antitrust law above the interests of patent holders.

On July 16, 2012, in the K-Dur case, the Third Circuit Court of Appeals ruled that a "finder of fact must treat any payment from a [pharmaceutical] patent holder to a generic patent challenger who agrees to delay entry into the market, as prima facie evidence of an unreasonable restraint of trade." In re K-Dur Antitrust Litig., No. 10-2077, 2012 WL 2877662, at *16 (3d Cir. July 16, 2012). The opinion was the latest salvo in the heated debate between the Federal Trade Commission (FTC) and pharmaceutical companies regarding so-called "reverse payments." Not only did the opinion reverse a long string of circuit court opinions upholding such payments as a proper exercise of patent rights, it supported the FTC's view that such payments are inherently anti-competitive. 

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The Most Important Thing Your Clients Need to Know About Copyright Law

As an IP attorney with a transactional and litigation practice, I am often in the position of advising clients with respect to protection of their copyrightable works. I have found that a majority of new clients do not understand who owns works created by independent contractors they've hired. Specifically, clients do not know that if they hire an independent contractor to create copyrightable works for them, in the absence of a written agreement vesting ownership of the works in the client, the independent contractor – and not the client – owns the copyright to the works.

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Good Things Do Not Always Come to Those Who Wait: The Use of the Laches Defense in 5th Circuit Trademark Litigation The time-tested adage, "good things come to those who wait," extols the virtue of patience and has been used throughout pop culture to explain phenomena ranging from love to job prospects. But in the context of trademark protections, the concept of "waiting" can be fatal to a plaintiff's claim for relief when a defendant asserts the affirmative defense of "laches." view more
<i>Apple v. Samsung</i> - What Happened - What's Next?

On Friday, August 24, a nine member jury entered a verdict in favor of Apple and awarded almost $1.05 billion in damages.  Apple filed suit against one of its largest competitors, Samsung Electronics, in April 2011, and alleged that Samsung’s Galaxy line of smartphones and tablets infringed seven of Apple’s patents covering the iPhone and iPod products.  In turn, Samsung countersued alleging that Apple infringed Samsung’s patents covering various wireless software components of its products.  After more than a year of highly contentious litigation and following a trial that began at the end of July and lasted the better part of August, the jury deliberated for less than three days before delivering the verdict in favor of Apple. 

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When a Good Defense May be an Unlikely Offense: State Court Litigation of IP-Related Issues Many lawyers automatically assume federal jurisdiction over all patent or copyright claims. It is a fundamental legal concept that federal courts have exclusive subject matter jurisdiction over patent validity or infringement lawsuits, pursuant to 28 U.S.C. § 1338. Similarly, copyright validity and infringement claims are expressly reserved for federal resolution under the same statute. Despite this basic premise, there are several residual matters that may nonetheless be asserted in state courts. Although not a common occurrence, attorneys should be mindful of the potential option, and the possible advantages, of bringing these types of claims in a state-court setting. Conversely, an attorney defending IP-related claims should be aware of these jurisdictional issues and the fine line that is involved. view more
Your Client’s Been Sued for Downloading Porn: The Ongoing Struggle Between Technology and the Law Your client comes in to your office and asks for a private meeting. He’s visibly embarrassed. You’ve known this client a long time and you’re surprised that he’s tentative about talking to you. Blushing, he hands you a letter he received from his cable company regarding his Internet usage. And suddenly you’re introduced to a new form of copyright infringement litigation. view more
Off to the Races: Litigating in the Fast-Paced International Trade Commission The International Trade Commission ("ITC") is an increasingly popular forum for patent and trademark litigation, with a record number of 70 unfair competition cases filed in 2011 alone. There are currently 73 cases pending in the ITC, and the statutory vehicle for this growing litigation is 19 U.S.C. § 1337, which prohibits "unfair methods of competition and unfair acts in the importation of articles. view more
The Danger That Lurks Within: Preventing Employee Misappropriation of Trade Secrets Trade secret litigation can be tumultuous. Take, for example, the recent decision In the Matter of the Binding Arbitration between Dr. Mao, Western Digital Corporation, and Western Digital Technologies, Inc. and Seagate Technology, LLC. Case No. 65 160-00129-07 (2011), in which a former Seagate Technology, LLC employee accused of providing trade secrets to Western Digital Corporation may end up costing his new employer $630 million. Mao is a cautionary tale for hiring employees who present a company with the risk of misappropriating trade secrets from a former employer. view more
Circuit Clarifies Injunction Requirements in a Patent Case In Bosch v. Pylon Manufacturing Corp., 2011-1096 (Fed. Cir. October 13, 2011), the United States Court of Appeals for the Federal Circuit provided further clarification to patent holders of the circumstances under which a permanent injunction for infringement of a United States patent might be granted. In a reversal of the District Court of Delaware's decision denying the patentee's injunction request, the Federal Circuit remanded with instructions to enter a permanent injunction against the infringer. The decision in Bosch is significant because it rejects an analysis, adopted by the District Court of Delaware from several other district courts, which focused on the nature of competition between the patentee and the infringer in the relevant market to determine the traditional factors of irreparable harm and the adequacy of monetary damages. view more
America Invents Act of 2011 – What Does It Mean To Me? Anyone handling patent litigation is undoubtedly aware that the Leahy-Smith America Invents Act ("AIA") was signed into law on September 16, 2011.  The AIA ushers in a new era of patent law and reflects a significant shift in a number of areas.  Many of the provisions will have a profound impact on patent prosecution, including the most widely publicized move from the current first-to-invent system, to what is essentially a "first-to-file" system.  Other changes implemented through the AIA include increases in most patent fees, some discounts for "micro" entities, prioritized examination, and the easing of requirements for inventor oaths and declarations.   view more
Whither False Patent Marking Litigation? False patent marking litigation has seen dramatic swings over the past few years in the number of cases filed.  Before recent changes occurred, anyone in the U.S. could bring a case against a patent holder, and any awarded damages were split between the plaintiff and the U.S. government.  After the Forest Group case, where the Federal Circuit determined that fines for false marking should be on a "per article" basis, with courts determining the appropriate fine, (maximum of $500 per article), there was a dramatic spike in the number of cases.  590 F.3d 1295 (Fed. Cir. 2009).  view more
Federal Circuit Clarifies Injunction Requirements in a Patent Case In Bosch v. Pylon Manufacturing Corp., 2011-1096 (Fed. Cir. October 13, 2011), the United States Court of Appeals for the Federal Circuit provided further clarification to patent holders of the circumstances under which a permanent injunction for infringement of a United States patent might be granted.   In a reversal of the District Court of Delaware's decision denying the patentee's injunction request, the Federal Circuit remanded with instructions to enter a permanent injunction against the infringer.  The decision in Bosch is significant because it rejects an analysis, adopted by the District Court of Delaware from several other district courts, which primarily focused on the nature of competition between the patentee and the infringer in the relevant market to determine the traditional factors of irreparable harm and the adequacy of monetary damages.  view more
Whither False Patent Marking Litigation? False patent marking litigation has seen dramatic swings over the past few years in the number of cases filed.  Before recent changes occurred, anyone in the U.S. could bring a case against a patent holder, and any awarded damages were split between the plaintiff and the U.S. government.  After the Forest Group case, where the Federal Circuit determined that fines for false marking should be on a "per article" basis, with courts determining the appropriate fine, (maximum of $500 per article), there was a dramatic spike in the number of cases.  590 F.3d 1295 (Fed. Cir. 2009).  view more
The Slow Adoption of eBay into Copyright Law On May 15, 2006, the U.S. Supreme Court’s eBay decision overturned the Federal Circuit’s “general rule” that permanent injunctions should be ordered as an automatic remedy for patent infringement. eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 393 (2006). The unanimous decision reinstated the importance of district court judges using the traditional multi-factored test, which states that an injunction “may” be granted if an intellectual property owner proves (1) a likelihood of irreparable harm will accrue to the patent holder absent the injunction, (2) that legal remedies available are inadequate to compensate for the harm, (3) the balance of the hardships between the parties favors the owner (this factor includes consideration of harm of an injunction to the infringer), and (4) the public interest would not be disserved (this factor includes consideration of harm of an injunction to third parties).  view more
Franchising in the Middle East Franchising continues to be the preferred model by which international businesses can quickly expand into the rapidly developing economies in the Middle East, without the risk and significant capital investment traditionally associated with directly establishing company-owned stores. Similarly, the franchise model is also appealing for newer regional businesses that are based in only one or two countries in the Middle East and that wish to extend their footprint either across the six states of the Gulf Co-operation Council ("GCC") (the United Arab Emirates, Bahrain, Qatar, Kuwait, Oman and Saudi Arabia), or worldwide. view more
<i>Global-Tech v. SEB</i>: Out of the Frying Pan, Into the Deep Fryer - A New Standard for Induced Infringement In an 8-1 decision authored by Justice Alito, the Supreme Court addressed induced patent infringement under 35 U.S.C. 271(b). Section 271(b) states, rather tersely, that "[w]hoever actively induces infringement of a patent shall be liable for infringement." The brevity of the statute has left its metes and bounds somewhat uncertain since it was enacted in 1952.    At issue in Global-Tech was to what extent knowledge of the infringed patent can be imputed to an accused infringer who did not know of the patent and took steps not to learn of the patent's existence.  view more
<i>Microsoft Corp. v. i4i Limited Partnership</i>: The Supreme Court Affirms That Patent Invalidity Claims Must Be Proven by Clear and Convincing Evidence In a case of particular importance to patent owners and litigators, the Supreme Court confirmed in a unanimous decision written by Justice Sotomayor that parties challenging the validity of a patent claim have the burden to prove invalidity by clear and convincing evidence. The Court’s decision affirmed the Federal Circuit and upheld the finding that Microsoft failed to prove the patent claims in suit were invalid. Justice Breyer filed a concurring opinion, and Justice Thomas filed an opinion concurring in judgment. Chief Justice Roberts took no part in the decision. view more
Who Needs IP Lawyers? A recent article from Bloomberg News discusses the effect a company called Trademarkia has had on IP attorneys that are generally hired to file patent requests.  Bloomberg reports “While entrepreneurs can file trademark applications with the U.S. Patent and Trademark Office (USPTO) on their own, many pay attorneys $150 to $500 per hour to handle the complex process. Since Trademarkia made its debut in 2009, the legal website has streamlined and made the task cheaper.”  Trademarkia -- it is not about "angering IP lawyers," but rather it is about the disservice to unknowing and unsuspecting applicants who save a little money at the start but miss out on opportunities to obtain really valuable intellectual property rights that can add significant value to their business' bottom line. Treating the trademark filing and registration process as a mere "task" misses a major component of legal advice to clients.  Foresight is the key to success.  view more

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