Posts Tagged: "Guest Contributor"

Employers should think twice before including the unenforceable provisions in employment contracts merely for their deterrent effect. Such a practice is risky. If an employer terminates an employee who refuses to sign an agreement that contains an unenforceable non-compete provision, such action would constitute a wrongful termination in violation of public policy and would entitle the employee to recover tort damages, including punitive damages, as well as economic damages… Given the strong protections against non-competes in California, it is too risky to require employees to sign employment agreements that contain these provisions. All employment agreements entered into with employees who live or work in California should be carefully reviewed to ensure compliance.

Even though traditionally valuation professionals have used a combination of cost-based and market-based valuation, more and more practitioners are using income-based valuation in combination with market data.  The income-based model focuses on what potential monetization or potential impact on business a patent portfolio might have, and as such, it is much more dynamic and reliable… For patent portfolios of potential future value, technology risk is preferred over market risk and one could use current market data to benchmark future value while building an income-based valuation model.

Under the Federal Rules of Civil Procedure, a party waives its right to assert a defense of improper venue when it fails to raise the defense in a pleading or with other Rule 12 motions.  Importantly, however, that waiver only takes effect if the defense was “available” to the party at the time of filing either the pleading or motion.  Many circuits, including the Federal Circuit, interpret that requirement by recognizing an intervening law exception to the waiver of a defense, whereby an intervening change in law makes available a defense that had not previously been available.  Does the Supreme Court’s decision in TC Heartland constitute a change in the law?  Was the defense of improper venue unavailable until May 22, 2017?

“Filing a trademark application with the goal of claiming a right to a particular term – with nothing more – is a fundamental misunderstanding of our trademark laws,” Alston & Bird partner Jason Rosenberg, explained. “Individuals and corporations rushing to design t-shirts and coffee mugs with phrases like ‘What the covfefe?’ on them aren’t likely to be able to claim ownership of the term, or stop anyone else from using it. You cannot simply hear a word you like, file a trademark application, and claim it as your own.  In the United States, the law requires more.”

Equitable estoppel may be appropriate for the defendant in SCA v. First Quality since the plaintiff was silent for years after the defendant asserted invalidity (possibly fulfilling the misleading conduct through inaction and reliance on that conduct). But can equitable estoppel be relied upon as a defense against a dormant plaintiff in the example illustrated above? Below, we consider the two elements of equitable estoppel that replace the unreasonable delay element of laches: misleading conduct and reliance.

The news headlines are becoming ever more populated with stories of big brands trying and failing in some instances to register a trade mark for their product. Lindt infamously failed to register their signature gold foiled chocolate bunny in Germany, similarly Rubiks lost its bid to register the EU trademark for the puzzle. The latest addition to this string of companies was Nestlé who attempted and failed to register the KitKat design. Nestlé’s application for trade mark registration failed on the ground that the four finger chocolate bar design was not distinctive enough. This raises the question in the world of intellectual property law as to just what will surpass the trade mark test, and indeed what this test consists of within the UK.

However, what if the Board refuses to terminate an IPR despite a joint request by both parties based on a settlement and proceeds to a final written decision? As indicated in Section 317, a joint request for termination may not be granted if the Office has decided the merits of the proceeding before the request for termination is filed. Although the section does not specifically list or explain the criteria for determining the merits of the proceeding to a final written decision, there are cases providing us with a number of considerations… From the cases above, it can be seen that even when the Board terminates an IPR as to a petitioner, it may nevertheless proceed to a final written decision when the trial issues have been fully briefed and argued at the time the parties move to terminate an IPR. The Board may also proceed to a decision on the merits when there is a large number of existing district court cases involving the patent at issue.

There are not many things an employer can do to prevent unfettered competition by a former employee. B&P Section 16600 states that “every contract by which anyone is restrained from engaging in a lawful profession, trade, or business of any kind is to that extent void.” The statute provides three exceptions, none of which apply to the typical employer/employee relationship: (1) a person who sells the goodwill of a business or sells substantially all of its operating assets may lawfully agree to refrain from carrying on a similar business; (2) a partner may, upon the anticipation of the partnership dissolution or disassociation from the partnership, lawfully agree not to carry on a similar business; and (3) any member of a limited liability company may lawfully agree not to carry on a similar business.

IP-skeptics charge that these inventions are little more than a way for pharmaceutical companies to cynically prolong patent life and maximize profits, without providing any meaningful innovation. This rather simplistic view misunderstands how the patent system works, and the role of patents in incentivizing drug discovery and development. In reality, many of today’s most significant medicines owe their existence to the ability of medical innovators to secure patents for novel new forms and new uses of existing treatments.

When it comes to television shows, it not always clear what is “copyrightable.” Sometimes, filmmakers and screen writers can get into serious trouble if they don’t follow specific television copyright laws accordingly. Austin-based filmmaker Lex Lybrand watched the June 4th episode of the hit HBO series “Silicon Valley” to shockingly find strong similarities between the episode “The Patent Troll” and his own film “The Trolls.” Jed Wakefield of Fenwick & West recently sat down with IPWatchdog to discuss Lybrand’s case and the impact of copyright infringement when it comes to movie scripts.

The Supreme Court ruled that the anti-disparagement clause in the Lanham Act violates the Free Speech Clause in the First Amendment. Matal v. Tam. As a result, the United States Patent and Trademark Office may no longer deny registration of a federal trademark application on the ground of disparagement. Several states, including Massachusetts and New Hampshire, have anti-disparagement trademark provisions that will no longer be enforceable either… The statute does not define ‘scandalous’, but like the restriction against disparaging marks, the courts and the PTO focus on whether a mark is offensive.

I took Gene’s request to heart and really tried to capture my top 25 songs. To be honest, however, I had a very difficult time narrowing the list to “all time” top songs. There are no true 25 best songs as proven by the various music Halls of Fame. I even had a hard time listing my top bands/artists. I enjoy many different genres and the list changes as I discover, or re-discover, music. In a pinch, however, I tend to gravitate to classic rock stations playing songs from the 70’s and 80’s. These are the songs that I grew up with. With that as a preface, here is my list for this July 4th!

Blockchain technology has already disrupted the financial sector and new blockchain use cases are emerging every day — from corruption-proof land registries to licensing digital assets, to tracking individual diamonds. In fact, there are many who say that blockchain technology has the potential to be as disruptive as the Internet… To stop patent trolls, the Chamber of Digital Commerce launched the Blockchain Intellectual Property Council (BIPC) this year. BIPC’s goal is to develop a global, industry-led defensive patent strategy that will nip blockchain patent trolling in the bud. Its first meeting on March 30th attracted 40 participants. In the next meeting in April, that number rose to 70. The BIPC executive committee members are the “who’s who” list of blockchain stakeholders, including Chain, Digital Asset, IBM, Microsoft, CoinDesk, Blockstream, Bloq, Civic, Cognizant, Deloitte, Digital Currency Group, Ernst & Young, Gem, Medici Ventures, T0.com, TMX and Wipfli.

Earlier this month, Kiss frontman Gene Simmons filed to trademark the “Devil Horns” hand gesture, but this unusual application was soon after abandoned. The application listed the date of first use as November 14, 1974, and the specimen of use was a photograph of Simmons flashing the hand gesture alongside Foo Fighters’ Dave Grohl. Just two weeks later, Simmons reconsidered if he had valid trademark rights to the hand gesture, as he abandoned the application.

The Supreme Court of Canada has just released a decision (Douez v. Facebook, Inc., 2017 SCC 33) that provides a framework for assessing the enforceability of forum selection clauses. The decision continues the trend of affording protection to consumers in the face of considerations of uneven bargaining power in un-negotiated online contracts referred to as “contracts of adhesion”… A few years ago, Facebook released an advertising product that used the name and picture of Facebook users, allegedly without their consent. BC’s Privacy Act offers a cause of action for breach of privacy rights. The Plaintiff in this case sought to adjudicate the alleged infringement of her privacy rights in BC courts (as part of a class action comprising Facebook users).