Features
You're Going to Serve Someone, But Will You Have Jurisdiction?
When is a proceeding not a proceeding, or more precisely, when is a proceeding affecting a mark not a proceeding affecting a mark? No mere word game, the answer can have a profound impact on foreign trademark owners who routinely (and perhaps unthinkingly) appoint their U.S. attorneys as agents to accept service in proceedings affecting their marks. The answer ' or at least an answer ' recently was provided by the U.S. District Court for the Eastern District of California in <i>E&J Gallo Winery v. Cantine Rallo, S.p.A.</i>, slip op. 1:04 cv 5153 (OWW) (Aug. 17, 2005), where just such a profound impact faced an Italian winery with a long history whose American counsel accepted service of a summons and complaint in an infringement suit, but made only fleeting efforts to alert his foreign client. The court vacated a default judgment that threatened to terminate a 50-year business in this country because the domestic attorney designated by the foreign trademark applicant under 15 U.S.C. §1051(e) to receive service in "proceedings" affecting the mark was deemed not authorized to receive service in a "litigation" affecting the mark. (The defendant's failure to answer was also deemed excusable neglect. Following the default, the author is now representing the defendant.)
Sarbanes-Oxley and Licensee Fiduciary-Based Tort Liability for Breach of Contract: City of Hope National Medical Center v. Genentech, Inc.
Over the years, courts frequently have been called upon to determine the nature and extent of the diligence required of licensees, assignees and other parties granted exclusive rights to exploit intellectual property. Dating back to Justice Benjamin N. Cardozo's opinion in <i>Wood v. Lucy, Lady Duff-Gordon</i>, 222 N.Y. 88, 118 N.E. 214 (1917), the courts consistently have held such parties to an implied promise to exercise some measure of diligence to commercialize the transferred property in those cases in which the grantor was completely reliant upon the productivity of the intellectual property user to generate royalties or other consideration.
Offers of Judgment and Copyright Litigation
Rule 68 of the Federal Rules of Civil Procedure provides a defendant with a means to encourage parties to settle their litigation before trial. A defendant may serve a plaintiff with an "an offer to allow judgment to be taken against [defendant] for the money or property or to the effect specified in the offer, with costs then accrued." F.R.C.P. 68. If the offer is not accepted by the plaintiff, and the "judgment finally obtained by the offeree is not more favorable than the offer, the offeree must pay the costs incurred after the making of the offer." <i>Id.</i>
Features
IP News
Highlights of the latest intellectual property news from around the country.
NTP v. RIM: Developments in Infringement Liability Where a Significant Component Is Located Outside the U.S.
Companies involved with technologies that use components located both within and outside the United States will be interested in a recent decision in the patent infringement action brought by NTP, Inc. ("NTP") against Research In Motion, Ltd. ("RIM"). In August 2005, the U.S. Court of Appeals for the Federal Circuit distinguished between infringement of "system" and "method" patent claims in "out of country" situations. The Federal Circuit held that if a component is located outside the United States, a <i>system claim</i> would be infringed if there is beneficial use of the patented system in the United States, while a <i>method claim</i> would not be infringed.
Ambush Marketing: Here to Stay?
Ambush marketing," a term coined by Jerry Wexler, manager of global marketing efforts for American Express in the 1980s, refers to the marketing activities of companies that manage to associate themselves, or their products or services, with high-profile events without paying to become an "official sponsor.
Federal Circuit Finds an Absence of Utility in DNA Sequences, ESTs: Encumbrance of Patentability Holds Ramifications for Agricultural Industry
On Sept. 7, 2005, the Federal Circuit issued a hard-hitting decision for mavens of the agricultural sciences. The ruling touches on the patentability of a large portion of naturally occurring, protein encoding nucleotide sequences, referred to as "expressed sequence tags" or "ESTs."
September 2005 IP Litigation Quarterly Supplement in PDF Format
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