#IPLSpring Review: Trademark Litigation Committee Meeting

By: Janinda Gunawardene

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Last Friday, I attended the Trademark Litigation Committee Meeting. The Meeting was led by Chair Rick Biagi, who was joined by Vice Chairs Christina Frangiosa and Naresh Kilaru. The Trademark Litigation Committee Meeting focuses on practice in the state and federal trial courts in cases involving trademarks, trade dress, trade identity and related unfair competition claims, proposals for improvements in such practice, including decreasing costs and length of pendency of lawsuits.

Mr. Biagi discussed an upcoming project aimed at enabling Committee Members to be apprised of the most recent developments of trademark law and practice. This project will consist of short summaries of key U.S. trademark decisions by circuit. Participants would e-mail fellow Committee Members with short summaries featuring the facts, issue, holding, and reasoning. This project would especially be a great opportunity for law student members to keep current with the latest developments in trademark law as well as make connections with fellow Committee Members passionate about trademark law. Join the Trademark Litigation Committee Meeting today to get in on all the action!

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters.

Image Credit: DanCooperLaw

#CLE Recap: Are the Trolls Really Out of Control? Reflections on Recent Efforts to Limit “Abusive Patent Litigation”

By Stacy Yae (@stacypyae)

Are “trolls” creating real problems with widespread demand letters to small businesses? With NPE patent assertions? With all patent assertions generally?

These were a few questions that opened up the highly anticipated panel presentation on Friday, April 4. Brian Carroll, General Counsel at LevelUP (SCVNGR, Inc.), a Boston-based company revolutionizing mobile payments, moderated the event. Program speakers included high-profile individuals: Attorney General William Sorrell, Vermont, Suzanne Michel, Senior IP Counsel at Google, Phyllis Turner-Brim, Chief IP Counsel at Intellectual Ventures, Rich Rainey, IP Counsel at GE, and Dean Watson, IP Counsel at Dura Automotive

Discussion extended beyond these opening questions, delving into the more complex issue of how the present patent enforcement system enables and encourages “patent trolling.”

One particular key factor that encourages “patent trolling” is the proliferation of patents with vague, obvious, and overbroad claims. Rich Rainey spoke to this issue, saying that our patent enforcement system needs to adopt stricter specificity requirements to prevent clutter in the federal dockets.

What’s your take on the “patent trolling” phenomenon? Join the conversation on Twitter with the hashtag #IPLSpring. Whether the post-grant provisions of the AIA will contribute to reducing poor-quality patent litigation will remain to be seen.

If you didn’t attend the 29th Annual Intellectual Property Law Conference, you can catch up on all that you missed by reviewing the tweets and blog entries of the ABA-IPL’s Law Student Reporters, who covered all the Conference events on Twitter. You do not have to sign up for Twitter to follow the Law Student reporters. Just visit this link.

#IPLSpring Copyright Policy Committee

By Phillip Turner

Inside the McLean Room on the Second Floor last Thursday April 3rd at 10:00 AM was an informal meet and greet of the Copyright Policy Committee (CPC).  The CPC is in the Copyright Division of the ABA’s Section of Intellectual Property Law.

The informal-style meet and greet was led by CPC’s Vice-Chair, Walt Lehmann of Lehmann Strobel PC (Baltimore, MD).  One of CPC’s topics included comments on “orphan works.”  Orphan works are those still under copyright but whose owner cannot be identified or located.  Since the meeting was one of getting acquainted there were no official decisions relating to discussion topics made on Thursday.  Other general topics included the CPC’s future involvement with politicians in an advisory role and the recent and increasingly quick rise of administrative employees at American universities.

If you are not entirely familiar with the CPC, their webpage  includes more information and the option to join their email subscription.  Once you sign-up for the email subscription, you will be emailed updates of the CPC including meeting/conference call info.  If you like what you see and hear (and I’m sure you will!) you can sign up to become a voting member.  This is limited to lawyer members, so students will need to wait.  Student ABA members can still become general members of the CPC.

I enjoyed meeting other members, as well as listening and discussing CPC topics of the day, and look forward to future participation.

Here are some upcoming CPC Programs, Meetings and Events:

Learning the Lessons of Significant Recent Cases in Digital Media and Publishing

April 10, 2014

Location: N/A

Format: Webinar/Teleconference

Protecting Product Designs Through Overlapping IP

April 15, 2014

Location: N/A

Format: Webinar/Teleconference

The Economics of Hot Antitrust-IP Issues

April 18, 2014

Charles River Associates

Washington, DC

Format: Live/In-Person

The CPC meeting was covered by the following Law Student Reporter: Phillip Turner (@phillip__turner) of Belmont University College of Law.

f you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters.

#IPLSpring CLE Review: Ethics: Tough Calls: Exploring Gray Areas in Withholding Documents from Production Pursuant to the Attorney Client Privilege or Work Product Doctrine

By: Janinda Gunawardene

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Last Friday, Sarah Guske of Cooley LLP moderated a panel discussing the ethical issues associated with withholding documents from production while showcasing the limits between professional conduct and privilege laws. Ms. Guske led the panel consisting of Honorable Francis Allegra of the U.S. District Court for the District of Columbia, Claire Hass of Google, and e-discovery counsel of Redgrave LLP. The panel highlighted the complexities presented by new technologies during discovery of information that was traditionally maintained on paper records only.

The presentation opened up with a discussion of cloud computing and how current laws do not directly address the reach of discovery requests for critical information stored on virtual devices. Hon. Allegra, the author of the recently released "Plugged In: Guidebook to Software and the Law," emphasized the risk of storing private, privileged, or confidential information being made available for both a cloud customer and the customer’s client. You may read an excerpt from Hon. Allegra’s book here. One such inherent risk is the how a cloud provider may backup data or how long this data is kept after a cloud customer deletes this data. Hon. Allegra urged attorneys to familiarize themselves with the internal policies regarding the backup and deletion procedures and not assume every cloud computing provider has the same privacy and security policies. As a partner Ms. Guske echoed this sentiment and explained how such concerns played out as a software and electronics patent litigator.

Hon. Allegra then discussed the importance of the Rule 16 pretrial conference and advised counsel to identify specific issues in the case, the general, scientific principles, and the kinds of evidence likely to be offered by the parties on the issues. As an in-house attorney, Ms. Hass spoke about the merits of drafting a broad 502(d) claw back agreement, which protects against the waiver of privilege or other protections upon the disclosure of protected information in discovery. The panel also brought up the use of privilege logs during the discovery process. Ms. Hass noted the increasing practice of the categorical over the itemized format of privilege logs. The presentation ended with a question from the audience discussing the spoliation of evidence and the basis of issuing sanctions under Federal Rule 37.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters. 

Image Credit: Janinda Gunawardene

#CLE Recap: Better, Faster, Cheaper: Patents Issued in about One Year for Less Cost

By Stacy Yae (@stacypyae)

How long does it take to push a patent application through the U.S. Patent and Trademark Office (USPTO)?

The common perception is that this is a long, costly, and tedious process. But there are tactics to get your patents issued within six months.

At this packed event on Wednesday, April 2, experienced panelists shared their tactics for getting patents issued within less than one year and at low costs. Kate Gaudry from Kilpatrick Townsend & Stockton moderated the event. Panelists included: Thomas Franklin, Kilpatrick Townsend & Stockton, Angel Lezak, Former Examiner at the USPTO, Timothy K. Wilson, SAS Institute Inc., and Dion Messer, Limelight Networks, Inc.

Prioritized Examination and the First Action Interview Program are two avenues that can speed up applications through the USPTO. Angel suggested that patent prosecutors can never go wrong with a First Action Interview, the takeaway being to help the examiner help you.

Examiners look at numerous patent applications every day. When an examiner can put a face to an application or have an applicant explain the application in person, the advantage is more than circumstantial.

What are your opinions on frequent interviews and interaction with the USPTO to speed up your patent application? Join the conversation on Twitter with the hashtag #IPLSpring.

If you didn’t attend the 29th Annual Intellectual Property Law Conference, you can catch up on all that you missed by reviewing the tweets and blog entries of the ABA-IPL’s Law Student Reporters, who covered all the Conference events on Twitter. You do not have to sign up for Twitter to follow the Law Student reporters. Just visit this link.

#CLE Review: Characters and the Law

By Phillip Turner

Great Cesar’s Ghost Batman!…Your Batmobile can be protected under copyright law.  I learned many new things including the need to protect characters is a good thing. As speaker and VP of noted, “If no one is infringing our characters, then no one is caring about our characters.”  Well said.  

Thursday Afternoon’s CLE prevented the usual after-lunch nap with a series of great, entertaining presentations that covered all aspects of “Characters and the Law.”  To recap, here were the moderator and speakers:

Moderator:
David Postolski, Day Pitney LLP, Parsippany, NJ

Speakers:
Thomas Crowell, Lane Sash & Larrabee LLP, White Plains, NY
Jay Kogan, DC Entertainment, New York, NY
Cydney Tune, Pillsbury Winthrop Shaw Pittman LLP, San Francisco, CA

The packed crowd was enthusiastic and attentive throughout the CLE.  On Twitter there were lively commentary from audience members. 

If we weren’t awake before this panel, we are now! Scream noise played with Frankenstein images; tv themes, etc.

OMG Jay Kogan talking about recent Conan Doyle lawsuit argument, greatly discussed in my Note, I’m geeking out so hard right now

Jay Kogan on characters & law: Do any law schools offer Family Guy & the Law yet?

Cyndy Tune - Grant of rights in characters must include terms on distribution channels, territories, platforms

Consider giving approval rights to bare bones screenplay as a way to appease subject of bio

 The best resource I found for a detailed re-account of the cases highlighted during the CLE is Legal Protection Available to Characters and Character Licensing Objectives.  Cyndey Tune added a great perspective on protection of your characters to prevent unwanted uses (e.g. children characters in adult movies) as well as using contracts as a protection tool.  Thomas Crowell delivered a great presentation concentrating on real-life people as characters.  I think reality TV stars may be characters before they sign the contracts, but Thomas informed us that clients need to read over all the provisions of the contracts.  Some shows may want to “embarrass” people on purpose. 

It was also a pleasure and delight to have David Postolski as moderator.  Check out his interview with me to learn more about David.  Overall, Characters and the Law was a nice escape, but superbly informative and extremely relevant.  I look forward to the next great character - real or fictional - that will fight for their copyright.

The Characters and the Law CLE was covered by Phillip Turner, a first-year law student at Belmont University College of Law in Nashville, Tennessee.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters.

ABA-IPL USPTO Trademark Ex Parte & Inter Partes Joint Committees

By Sean Cooper

Last week, I joined the United States Patent and Trademark Office (USPTO) Trademark Ex Parte and Inter partes committees at their joint committee meeting at 29th Annual ABA Intellectual Property Law Section Spring Conference. Chair of the Ex parte committee, Francine D. Ward (@Francineward) of the Law Offices of Francine D. Ward,  and Chair of the Inter partes committee, Erik Pelton (@tm4smallbiz) of Erik M. Pelton & Associates, were both kind enough to let me sit in on the joint meeting.  Both committees are very active and have been instrumental in furthering the presence of Trademark attorneys within the Section of Intellectual Property Law.

The Ex parte committee covers practice before the USPTO “with respect to the preparation, filing, and prosecution of trademark applications, the registration of trademarks, and other ex parte trademark matters not within the scope of other committees.” Some of those matters include the administration of trademark examination of the USPTO and ex parte appeals to the Trademark Trial and Appeal board (TTAB). Similarly, the Inter partes committee covers various aspects of inter-parties proceedings before the USPTO TTAB, “including the administration of the Board and its fees and services,” and issues relating to the TTAB Manual of Procedure and the Trademark Rules of Practice.

At the meeting, both committees discussed their recent actions and policy initiatives as well as a few upcoming events. One of those events is the “ABA-IPL Trademark Day: Behind the Scenes at the USPTO” on September 18, 2014. “The program will feature presentations from Trademark Office officials on topics such as electronic application filings, USPTO website tools, TTAB filings and procedures, and more, as well as a live TTAB hearing in the afternoon.“ More information on this and other committee events are available to members of these committees.

Follow these links to view each committee’s web page and learn more about the Ex parte and Inter-parties committees:

The USPTO Trademark  Ex Parte & Inter Partes joint meeting was covered by the following Law Student Reporters:  Sean Cooper (@CoopsIPLawBlog) from Widener University School of Law - Harrisburg and Phillip Turner (@phillip__turner) from Belmont University College of Law.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters. 

#CLE Review: Non-traditional Trademarks and the Entertainment & Sports Industries

By Phillip Turner

From Europe to North America there is no shortage of non-traditional trademarks, or is it trade marks or trade-marks!?!  Any way your country spells it, one thing is for sure…the Friday morning crowd at Non-Traditional Trademarks was fully engaged, informed, and entertained.  Here are just a few Tweets during the CLE:

“Who dat? Who dat? Who dat?” Is it protectable?

Douglas Rettew: Sheet music without a sound clip found insufficient as a specimen of use for a sound mark!

Smell of fresh cut grass - Distinctive tennis balls bounce - Olfactory mark

I attribute the great participation to the moderator and speakers of the CLE.  To recap, we were blessed to have four great presenters:

Leonard Glickman, Cassels Brock & Blackwell LLP (Toronto, Canada)
Anastasia Danias, National Football League (New York, NY)
Manuela Macchi, Keltie LLP (London, United Kingdom)
Douglas (Chip) Rettew, Finnegan, Henderson, Farabow, Garrett & Dunner LLP (Washington, DC)

Manuela Macchi spoke on “the strong smell of dark beer” as an olfactory trade mark and other “bizarre examples” from the EU.  When I asked how did IP became part of her professional career? Manuela said she “Took the IP module at University, then when I was a trainee, I assisted a senior lawyer in a large commercial deal that involved IP and became more interested. The rest is history, as they say.”  I continued to inquire about her favorite (or favourite) IP case, and she replied “There is not one case in particular. I think the most exciting thing about my job is talking to creative and business people, helping them protect their IP from the start and then seeing the brands on the market and feeling I have had a little part in it.”  As a student it is nice to know that attorneys still have a passion for their work and clients.  Plus, when I asked if she liked cars or trucks more, Manuela replied with “Motorbike”…what’s not to like!

Len Glickman opened the CLE with a great Audio/Visual Presentation Friday morning.  I think the coffee I brought with me was not needed because the speakers did such a great job of keeping everyone’s interest peaked.  Maybe Len’s sense of humor with answering my questions translated into a great CLE experience.  When asked what is one thing you want everyone to take away from your part of the CLE? Len said “That Toronto and Canada have more to offer than Rob Ford and Justin Bieber headlines.”  I agree…they have Len Glickman!  However, I could tell from his dedication to IP that there is something that Len may want to help change or influence.  He told me that he would “Change copyright law in Canada to make it more creator-friendly.” 

Though I did not catch-up with Douglas (Chip) Rettew or Anastasia Danias, I do know that they share the same passion for non-traditional trademarks by the excellent presentations they gave an eager audience in a packed hotel salon Friday morning in Arlington, VA.  Check out a couple of the presentations from the CLE:

The Non-Traditional Trademarks and the Entertainment & Sports Industries CLE was covered by Phillip Turner, a first-year law student at Belmont University College of Law in Nashville, Tennessee.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters. 

8 Reasons to Tweet, with Examples from #IPLSpring

By Law Student Reporter Rachael Dickson (@LegallySparkly

This week at the ABA-IPL Conference, 11 Law Student Reporters live-tweeted a variety of panels on patent, trademark, copyright, social media, and ethics. Many attendees followed along and become involved in discussions with the LSRs on twitter as well.

Why? What is this Twitter thing? What exactly can it do for you? I’ll be using examples from Twitter during various panels during the conference to illustrate what live-tweeting is and why it can be so valuable to you.

1. You can get involved in intellectual discussions about the topic at hand.

During the Fair Use Panel on Friday, San Francisco lawyer Hannah Poteat tweeted out a link with some background information about artist Richard Prince (of Prince v. Cariou). I teased her about it, which actually led to an interesting conversation about different artists’ purposes.

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That one conversation ended up turning into a question for the panel. Twitter affecting real life.

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2. You can gain more background information on the discussion at hand.

LSAG Communications Subcommittee Chair Franklin Graves (@FranklinGraves), a 3L at Belmont, tweeted out some extra information about a modern case relating to Fair Use.

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When the Fair Use Panelists got so passionate about a current case that they forgot to mention the name of a case, the local LSRs got help from a friend.

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3. You can benefit from the experience of others.

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I hadn’t heard of the Righthaven cases before Hannah mentioned them on twitter. I’ve looked them up now and she’s totally right, these were big Fair Use victories that are incredibly valuable to the discussion. I may have never heard of them without her experience

4. Sometimes you can interact with the panelists themselves, while they’re on stage.

Some of the panelists had a lot of fun getting into the social media side of the conference.

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Other conversations with panelists during their own panels got into more serious discussions. For example, here’s an exchange between a panelist and I during the First Amendment and Social Media discussion of the Lions, Tigers, and Friends: Social Media Roundup Panel on the first day. Perry Sofferman had just started discussing state legislative efforts to restrict or ban sex offenders from social media. imageimage

5. Sometimes things can get silly and fun.

Such as when haikus are written in tribute to panels.

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Inspired by Paul’s beautiful poetry and the Fair Use Panel discussion of Bridgeport Music, Inc. v. UMG, Inc., et al., I tried my own hand at haiku writing.

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Occasionally you can find some rather odd alliterative entertainment.

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6. Also, selfies.

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7. It’s a great way to network.

At one point during the conference, I gathered up my courage and walked up to the well known Internet Lawyer Joe Gratz (@DreamWord), who spoke on the Fair Use Panel. I was extremely pleased when he actually recognized me from my photo on Twitter. He has since used Twitter to suggest I connect with a fellow internet law loving friend of his in Chicago.
As another great example of twitter-assisted networking, Paul Donovan of Canada has been tweeting at @braunovan for several ABA-IPL conferences now. His tweets are so prolific that his name was known to numerous past Law Student Reporters, who jumped at a chance to meet him in person when we talked him into coming out to the Thursday night Hospitality Suite.

8. You can follow along even if you’re not present.

Whether you’re in another panel at the same conference, or whether you’re in another state, you can use twitter to keep in touch with what’s going on at the event you’re missing.

LSRs interested in more than one panel going on at the same time could follow along even while covering their own. While the Fair Use panel was going on, I was also following the tweets of Dana Broughton and Anna Oakes at the Non-Traditional Trademark Panel.

LSAG Vice Chair Micah Ascano (@PainIntheAscano), who wasn’t able to attend #IPLSpring this year due to his debut as a teacher at a law school, said that he managed to get some networking calls set up just through his interactions on Twitter with conference attendees.

And, of course, if you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters. 

All screencaps are from Twitter, which hopefully should qualify for Fair Use since this is both educational and a news context. :D

CLE Recap: The Rise of Design Protection: From Spoons & Carpets to Smartphones & Cars

Reporting and Photography by Dewight Flinch Jr.

"Come learn about design patents. In five years, you’ll wish you had." -Hannah Poteat

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(Above: Panelists, from left to right, Philippe Signore, Andrew Rawlins, Damian Porcari, and Hannah Poteat.)

This panel discussed a healthy mix of design patent law, policy and best practices. It  recent case decisions, claim structure, and globalization. They also contrasted design patents to other forms of intellectual property.

The panelists agreed that good design lawyers make good design patents. Damian Porcari of Ford Global Technologies explained that drawings need to be good for both validity and enforcement. This can be challenging because unlike utility patents, design patents do not have flexible claim scope in the United States. Further, drawings cannot be changed once filed. Dr. Philippe Signore, partner at Oblon, Spivak, McClelland, Maier & Neustadt said that applicants must prepare drawings prepared carefully and have at least 1 generic drawing for each design.

Next, the panel discussed Richardson v. Stanley WorksIn this case the Federal Circuit held that in an infringement analysis, it must separate out those particular elements that are “driven purely by utility” from those that are strictly ornamental. The court then relied on the ordinary observer test to say the designs produced different “overall visual effects” and were thus very different. While Porcari agreed with the court’s result, he questioned the rationale and approach. "I think if they looked at the items as art, they would have gotten the right decision" said Porcari. The panelists were averse to 'forcing' utility patent approaches into design patent analyses. "That’s not how designers think" said Signore.

Procuring design patent protection demands strategy, says Andrew Rawlins, partner at Foley & Lardner. This is partly because you can’t have designs directed at specific inventions. Hence, classifications with 100 applications, consolidated renewals, consolidated changes, WIPO, and other international applications come into play, he continued. However, one must be deliberately ensure that designs that comply with foreign regulations serve the desired U.S. purposes as well.

Moderator Heather Poteat asked the panelists which protection they prefer and why: Copyrights, Trade Dress, or Design Patents. Signore shared the benefits and limitations of each, such as developing secondary meaning for trade dress, and tying copyrights to functions. He favored design patents for their wide range of applications.

To conclude, the panel debunked several myths about design patents. Rawlins and Porcari explained that design patent litigation is sometimes just as expensive as utility patent litigation. Porcari also explained that while it is easy to get an unenforceable design patent, a valuable design patent requires considerable skill. FInally, Rawlins asserted that design can patents have a broad scope.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters. 

#IPLSpring CLE Review: Anatomy of an International Trademark License Agreement

By: Janinda Gunawardene

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Last Thursday, Tricia Thompkins of Perry Ellis International moderated a panel discussing the legal rights and economic interests in international trademark license agreements from a licensor and licensee perspective. The panel also presented best business and negotiation practices involving franchising, distribution, licensee’s use of a sub-licensees, enforcement of trademark and license registration, and implications of varying tax laws. The panel led by Ms. Thompkins consisted of highly knowledgeable speakers from around the world: Matthias Berger of Field Fisher Waterhouse from Germany, Tony Hickey of Cummins, Inc. from Indiana, Mariano Municoy of Moeller IP Advisors from Argentina, and Michelle Cooke of Steptoe & Johnson LLP from California.

The panel provided several #IPLProTips for practitioners who draft and enforce trademark license agreements with international entities. Mr. Berger discussed the framework of a trademark license agreement from a European perspective and emphasized the importance of having specific terms in the scope of rights section regardless of whether the party to the agreement is a domestic or foreign company. You may access his full presentation here. All the attorneys echoed this sentiment. Specifically, Ms. Thompkins warned that vague terms of an agreement will be the central point of litigation.

Another highly neglected area of the trademark license agreement is the series of boilerplate provisions. Ms. Hickey and Ms. Cooke discussed law firm and in-house counsel’s common issue of ignoring boilerplate provisions without realizing the detrimental effects such provisions may have on the agreement. For example, choice of law and forum clauses in some agreements may be blatantly advantageous and thus, unreasonable to one party, but not the other. Another key clause that the panelists emphasized each agreement should have was the quality control clause regardless of whether the licensee is a manufacturer or distributor.

Further, Mr. Municoy discussed the importance of understanding the work culture of the parties you are working with. Mr. Municoy explained antitrust laws and key trademark distinctions of Latin American countries. For example, naked licenses are allowed in Latin America given the importance of promoting strong consumer protection laws to promote quality control. U.S. attorneys who are unaware of such distinctions may be blindsided by the trademark license agreement and should draft and review the agreement accordingly.You may access Mr. Municoy’s full presentation here.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters.

Image Credit: Anna Oakes

#Committee Recap: International Copyright Treaties and Law Committee

By Stacy Yae (@stacypyae)

The International Copyright Treaties and Law Committee focuses on copyright issues arising out of differences in the laws of different countries. Issues of interest include:

  • The rights of U.S. citizens to obtain copyright protection in foreign countries.
  • The rights of exportation and importation of copyrighted works in the U.S. and in foreign countries.
  • International conventions and treaties involving copyright.

The Committee is led by Chair Daniel Gervais and Vice-Chair Mark Edward Davis. The Committee works closely with other Committees of the ABA and also the Section of International Law.

The next section webinar and teleconference is scheduled for April 10, 2014 on the topic “Learning the Lessons of Significant Recent Cases in Digital Media and Publishing.” A second upcoming webinar and teleconference is scheduled for April 15, 2014 on the topic “Protecting Product Designs Through Overlapping IP.”

If you did not attend the 29th Annual Intellectual Property Law Conference, you can catch up on all that you missed by reviewing the tweets and blog entries of the ABA-IPL’s Law Student Reporters, who covered all of the Conference events on Twitter. You do not have to sign up for Twitter to follow the Law Student reporters. Just visit this link.

#IPLSpring #CLE Recap: Best Practices in Brand Protection in the New gTLD Era.

By Michal-Ane McIntosh

Last Wednesday, Leslie Nettleford, Associate General Counsel at the AARP, moderated a panel discussing the rise of the registration of new generic Top Level Domains (gTLD). After showing an informational video, the panelists weighed in on prevention strategies.

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L to R: Moderator, Leslie Nettleford, and panelists Claudia Ray and Anjali Hansen

Anjali Hansen gave one example that caught the attention of everyone in the room. One company registered the gTLD “.xxx”. Since that gTLD has been delegated, several companies have registered their BRAND.xxx so that no one else will be able to use their mark with that gTLD, and potentially associate their brand with that image. This, I learned, is called a defensive registration, and the owners of “.xxx” have made upward of $26 million from these defensive registrations.

Available also to brand owners is a blocking registry. Donuts Inc. is a quickly growing domain name registry that is leading the world’s largest expansion of namespace since the inception of the Internet. Donuts, Inc. has been delegated several new gTLDs, and at a premium of $3000 per mark, a company can ensure that their BRAND.[Donuts-owned gTLD] will be blocked from use on the internet for 5 years.

Aside from these strategies, Claudia Ray, partner at Kirkland & Ellis LLP, pointed out that there are several enforcement procedures available to companies, aside from traditional trademark infringement, dilution, and cyber-squatting claims. These include registering your client’s trademark with the Trademark Clearinghouse. This provides a presumption of the validity of the trademark in cyber-squatting actions and also alerts you to possible infringers. The other enforcement procedures include the URS, UDRP, PDDRP, and RRDRP (whew, that’s a lot of acronyms). The panelists agree that companies should register their trademarks with the Trademark Clearinghouse, and that attorneys should become educated about the enforcement procedures and educate their clients about these options in order to effectively protect their brands in the new gTLD era.

Claudia Ray’s PowerPoint Presentation is available here.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters.

Image Cred: Michal-Ane McIntosh

#CLE Recap: Promoting Progress in Social Media: Patentability and Copyrightability Issues

By:  Dana L. Broughton, Ph.D. 

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This year at the 29th Annual (ABA) Intellectual Property Law Conference, attendees had the opportunity to attend “Promoting Progress in Social Media:  Patentability and Copyrightability Issues.” 

The panel was led by Erik Bertin of the U.S. Copyright Office, Robert Hulse of Fenwick & West LLP, and Joshua L. Simmons of Kirkland & Ellis LLP.  Conference attendees were engaged in the conversation and gave feedback throughout the workshop. 

A little known fact is that “Seventy-three percent of online adults use social media.”  Attorney Joshua L. Simmons gave a broad overview of social media, terms used in social media, and how social media is commonly used.   Erik Bertin presented copyright issues and common concerns.  For example, one of the major issues seen in copyright applications is that most applicants are not clear on what they are registering with the copyright office.  Additionally, the applicant/ owner of the copyright also need to be clear in copyright applications.  Robert Hulse continued the conversation from the patent perspective.  Hulse spoke on four things that can be protected in social media including:   the building blocks, the features that drive growth, the techniques for monetization, and the mobile applications.  Hulse also touched upon the interplay between copyrights and patents and why they both are needed, how to build a patent portfolio, subject matter eligibility of software patents, and trends in what is being patented. 

The areas of copyrightability and patentability protection are still growing; however, this CLE provided a great educational foundation on the concerns and issues.  

Photo Credit:  Dana L. Broughton

ABA-IPL Patent Litigation Committee

By Stacy Yae (@stacypyae)

The Patent Litigation Committee is one of the most active committees in the ABA-IPL Section with 11 subcommittees and numerous volunteers. It is also one of the largest committees with 518 members on its roster as of April 5, 2014.

The Committee focuses on federal trial court practice in cases involving patent issues and proposals for improvements in the practice area, such as decreasing costs and lengths of pendency of lawsuits. The Committee actively cooperates with other committees and ABA entities on issues in relation to the Federal Rules of Civil Procedure, federal and local trial court rules, and other trial practice issues.

Chair Paul Richard Morico, along with Vice-Chairs Matthew Kemp Blackburn and Richard Stephen Stockton opened up the meeting by passing around a Supreme Court Docket Update, put together by the committee members. The Docket Update broke down important Supreme Court patent cases, the question presented in each case, status of the case, and past actions taken by the ABA-IPL. The committee further discussed important developments in patent litigation cases by calling upon each subcommittee to report on additional developments. These subcommittees include: 101 (Patent Eligibility), Damages/Remedies, Patent Exhaustion, 102/103 Invalidity Issues, 112, Inequitable Conduct, Infringement, NPE Litigation, E-Discovery, and Willful Infringement.

Several members at the meeting noted that volunteers were never in short supply – when a call for volunteers is issued, the Committee usually finds itself with many willing hands within minutes. The Patent Litigation Committee is vibrant, active, and current.

Committee conference calls are scheduled for the first Tuesday of each month at 3PM EST.

If you did not attend the 29th Annual Intellectual Property Law Conference, you can catch up on all that you missed by reviewing the tweets and blog entries of the ABA-IPL’s Law Student Reporters, who covered all of the Conference events on Twitter. You do not have to sign up for Twitter to follow the Law Student reporters. Just visit this link: http://bit.ly/IPLSpring.