The Intellectual Property Strategist

In <i>Johnson &amp; Johnston Assocs. v. R.E. Service Co.</i>, 285 F.3d 1046 (Fed. Cir. 2002) the Federal Circuit turned at least one aspect of patent drafting practice on its ear. Before <i>Johnson</i>, generally accepted patent drafting techniques encouraged the disclosure of alternative subject matter in the specification, particularly for claimed elements of the invention, in order to possibly broaden the scope of the claims of the resultant patent. Post Johnson, such practices may clearly backfire as the court held that subject matter disclosed in a patent's specification, but not claimed, is dedicated to the public. Although Johnson may well have a major impact on claim drafting techniques, this case will likely have a greater impact on techniques used for drafting the patent specification.

Trademark fair use under the common law and '33(b)(4) of the Lanham Act has long permitted a defendant to use terms descriptively to refer to the defendant's own product or service; in contrast, the doctrine of nominative fair use permits a defendant to use a plaintiff's mark to describe the plaintiff's product or service. Unlike the common law and statutory fair use defense, the nominative fair use doctrine is a judicially created defense of relatively recent vintage. Prior to the development of the nominative fair use defense, courts occasionally declined to enjoin the copying of nondescriptive marks used to refer to the plaintiff's products or services, however, a true doctrinal basis for that result was not expressly articulated until New Kids on the <i>Block v. News America Publishing, Inc.</i>, 971 F.2d 302 (9th Cir. 1992).

First Amendment theory triumphed over celebrity right of publicity and trademark rights this past summer. The Sixth Circuit Court of Appeals upheld a dismissal of Tiger Woods' damages claims for use of his likeness in limited edition prints of a painting titled "The Masters of Augusta." <i>ETW Corporation v. Jireh Publishing, Inc.,</i> 332 F.3d 915 (6th Cir. 2003).

Highlights of the latest intellectual property news and cases from around the country.

Nothing should be left to chance when drafting patent licenses. Indeed, the parties on both sides of the transaction have a keen interest in eliminating ambiguities. This is particularly true with respect to the scope of the license grant. The licensor must be reasonably assured that it has not inadvertently given away more than what was bargained for. On the other side, the licensee must be reasonably assured that it may use the patent as it intended without being sued for infringement.

Highlights of the latest intellectual property cases from around the country.

Features

The law governing package licensing of patents is currently undergoing a significant change. Historically, package licenses were subject to a 'per se' liability under the controlling legal doctrines. Using this per se test, a package license could be rendered unenforceable absent any inquiry into the actual market effects of the license. The recent case of <i>United States v. Microsoft,</i> 253 F.3d 34 (D.C. Cir. 2001), marks, however, the emergence of an antitrust doctrine called the 'rule of reason' that is likely to become the dominant legal doctrine for testing package licensing of patents. This is a significant change because the rule of reason is a market-based approach that balances the anticompetitive and pro-competitive benefits of the licensing practice. Thus, a package license may be held to be enforceable even if it would have failed the traditional per se test of the patent misuse doctrine or antitrust laws.

One of the most important issues faced by commercial purveyors of content on the Internet is how to protect their content. Much coffee and ink have been spilled over the question of how copyright, contract and tort law may be marshaled to maximize protection (or may be circumvented to minimize it).