Posts Tagged: "Guest Contributor"

A recent trademark infringement case between Stork Market Inc v. 1736735 Ontario Inc. (Hello Pink Lawn Cards Inc), 2017 FC 779 has resulted in a win for the plaintiff and retribution in the amount of $30,000.  The copyright and trademark case deals with competitors in the business of renting and installing lawn signs for special occasions such as birthdays, anniversaries, and graduations. The trademark infringement case is based on claimed infringement of Stork Market Inc. and its registered trademarks of two images of a stork holding a baby above its head and under a banner that states the sex of the baby

A Couple of weeks ago, the Trump administration formally launched a “Section 301” investigation into the “theft of intellectual property” by China.  According to US Trade Representative Robert Lighthizer, the investigation will “look into Chinese laws, policies, and practices which may be harming American intellectual property rights…”  China is a large market for many American companies, not only for production, but also sales.  Chinese laws and policies with regard to trademarks may be confusing to many, but there are some key concepts to know and consider regarding trademarks in China.

“I can tell you that my work in China and Japan and Korea tells me that the companies there are quite delighted to pick up the slack where American companies don’t have quite the protections that they do under their law,” Judge Vader said.  These concerns about American companies not being able to compete with Asian companies echoed the message that Donald Trump frequently expressed during the presidential campaign. During the interview, Judge Rader also mentioned “a really excellent paper from a Hoover scholar and it said they had never found an instance of a strong, growing economy that didn’t correlate with a strong protective patent system.”

My intuition is that the judge came to the correct conclusion, but that the Supreme Court test ultimately did little to guide her thinking.  As I mentioned in my previous IPWatchdog article, determining the contours of the useful article is a metaphysical exercise that likely will require other “tests” to resolve.  Why, for instance, does the useful article not consist of the lighting elements, sockets, wires and covers, which the judge admits also serve important utilitarian functions?  What factors caused her to draw the line so that the covers were not included within her concept of the useful article?  My guess is that it came down to the fact that in her view, “The primary purpose of the cover is artistic; once the covers are removed, the remainder is a functioning but unadorned light string.” 

To get the case off the ground, the court will decide whether Equifax can be sued in the first place – it’s tricky, because different federal circuits disagree about when this can happen. So, courts in Delaware, Illinois and Washington DC (for example) would allow the plaintiffs to proceed merely because their data is at risk after a hack. This is pretty easy to show. On the other hand though, New York, Conneticut and North Carolina would need to see not just a leak, but that the leaked data has actually been misused afterwards. Equifax HQ is in Atlanta, the 11th circuit. Although those courts have a history of recognising that difficulty (and so supporting data victim lawsuits), it hasn’t yet come down firmly on the question of risk vs misuse.

Law firm partners are no longer safe in their positions once they attain equity partnership.   That security is a thing of the past.   If you are a law firm partner, I provide below 7 questions that you can answer that will help you determine if you are about to be de-equitized. This article discusses how to determine whether you are at risk of losing your partnership interest and if so, some steps to strengthen your position.   My next article will give you ways to protect yourself should you be in a situation where your equity partnership share could be taken away.

In 2012, the American Invents Act established three new administrative procedures: post grant review (PGR), inter-partes review (IPR), and covered business method patent (CBM) review. In each of these proceedings, anyone may file a petition challenging the validity of an issued patent. Patent practitioners have long been trained to draft patents that survive litigation. It is no secret that most asserted patents now end up before the PTAB, and the PTAB tends to use different rules that favor the challenger. As we approach the five year anniversary of the PTAB, patent practitioners should reconsider long-held strategies. BRI and evidence standards adopted by the PTAB make surviving post-grant proceedings especially challenging. Pursue a narrowly-focused patent with clear and unambiguous terms, to avoid post-grant proceedings or survive them when instituted. A robust prosecution that addresses a range of issues, corrects Examiner’s errors, and places evidence on the record helps achieve the same goals.

Since the Supreme Court’s decision in Halo, there have been approximately 100 cases analyzing whether the adjudged infringer acted egregiously/willfully en route to a determination of whether to enhance a damages award (and, if so, to what degree damages should be enhanced). The issue of egregiousness/willfulness and/or enhanced damages has been the subject of Federal Circuit opinions on seven occasions since Halo. With two exceptions noted herein regarding the availability of enhanced damages for infringement occurring after suit has been filed, these cases do not provide much in the way of additional guidance other than re-tracing the evolution of the law governing egregiousness/willfulness and enhanced damages through Seagate and Halo and re-iterating the standards discussed in Halo. In five of the seven relevant post-Halo cases the Federal Circuit remanded for further consideration in light of the new standards set forth in Halo.

As we mark the fifth anniversary of the effective date of Patent Trial and Appeal Board trials on September 16, we find that the early years of the practice have been a learning experience both for the PTAB and for PTAB practitioners.  Reflecting on the past five years, three key lessons emerge for practitioners, from practice and directly from the APJs presiding over these cases when they have spoken on topic: Follow the rules, including those that are explicit and those that are unspoken, know your audience, and focus on the facts.  

In 2008, as the financial markets crumbled in the largest economic crisis the world has seen since the 1930s, Satoshi Nakamoto published a white paper describing his Bitcoin network and the blockchain technology that was used to enable it.  Since then, while markets have recovered, Nakamoto’s creation has flourished and spawned countless other “altcoins” along with new uses and applications for his blockchain technology and its derivatives. Because the Bitcoin network and blockchain technology have become key components of today’s digital economy, it is important for attorneys and others to understand the basic terminology and features of this technology.  This article provides high-level explanations for this purpose.

An increasing trend in copyright infringement suits filed in the United States has tattoo artists bringing suit against entertainment entities, and in some cases against the tattoo bearer themselves, for the reproduction or recreation of tattoos they created. Most commentators would likely conclude that tattoos are eligible for copyright protection under the Copyright Act. However, it is important to note that a distinction can be made between the copyright in the design of the tattoo and the copyright in the tattoo as it is reproduced on the body of a person

While it is possible to copyright the design of a band logo, the band name itself is not copyrightable (see here and here). Band names are protectable under trademark law, because like brand names they allow us to distinguish one band’s music and identity from another. They are what enable us to distinguish between a “Beatles” record on the one hand, and a “Chipmunks” record on the other… The more unique the name, the greater the degree of trademark protection, but also the more the name will stand out and set the band apart from others, which is generally the goal.

The basement inventor is increasingly rare, although I am old enough (and lucky enough) to know several. Invention in the “real world” is often a messy, team effort of multiple inventors, employers, contracts, research agreements, and funding agreements. As the complexity of invention multiplies, so do opportunities for unintentionally losing or jeopardizing intellectual property rights… There is often more than meets the eye when it comes to ownership of inventions. The benefits of collaboration far outweigh the disadvantages. However, you can take steps to ensure a smooth collaboration by keeping a few legal principles in mind…

As the old saying goes: Ignorance of the law is no excuse. So there seems to be no good reason that the Examining corps’ inability to apply the law to the facts in ex parte appeals should be costing applicants this much money yearly. We should not have 2X higher reversal rates for novelty and obviousness than statutory subject matter. However, until something changes about how the USPTO decides to take cases to the board, it is apparent that patent applicants will continue to have to be patient and pay.