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May 26, 2006
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IP News
April 28, 2006
Recent rulings of importance to you and your practice.
Supreme Court to Decide Standing Issue
April 28, 2006
On Feb. 21, 2006, the Supreme Court granted certiorari to review <i>MedImmune, Inc. v. Genentech</i>, 427 F.3d 958 (Fed. Cir. 2005). The question presented is: 'Does Article III's grant of jurisdiction of 'all Cases ... arising under ... the Laws of the United States,' implemented in the 'actual controversy' requirement of the Declaratory Judgment Act, 28 U.S.C. '2201(a), require a patent licensee to refuse to pay royalties and commit material breach of the license agreement before suing to declare the patent invalid, unenforceable, or not infringed?' Whether the Court affirms or reverses the Federal Circuit, which answered in the affirmative, undoubtedly will affect the balance of power between patentees and their licensees and, perhaps, the willingness of licensors to grant licenses.
Is 'No Use' Always a 'Fair Use'?
April 28, 2006
In order to avoid liability for trademark infringement relating to the sale of keywords corresponding to trademarks, search engines, including Google, are attacking the concept that trademark owners should be able to protect the 'commercial magnetism' of their marks. Recently, in <i>Rescue.com v. Google, Inc.</i>, No. 5:04-CV-1056 (N.D.N.Y.), Google argued that the trademark laws 'are not meant to protect consumer good will [sic] created through extensive, skillful, and costly advertising.' Google's Reply Brief at 4 n.4 (2005) (citing <i>Smith v. Chanel, Inc.</i>, 402 F.2d 562, 566 (9th Cir. 1968)).
'Da Vinci Code' Case Stretched Legal Thinking On What Can Be Protected By Copyright
April 28, 2006
The common wisdom before, and during, the London copyright infringement trial over Dan Brown's book 'The Da Vinci Code' (DVC) was that the plaintiffs Michael Baigent and Richard Leigh would lose because an idea cannot be copyrighted. And the plaintiffs did lose. <i>Baigent v. Random House Group</i>. Some even suggested the plaintiffs sued only to bolster the sale of their own book, 'Holy Blood, Holy Grail', which is what happened ' though High Court Justice Peter Smith ordered the plaintiffs to pay $1.75 million in legal costs. The number of additional copies the authors will have to sell to earn enough royalties to pay that amount is high. Still, the case was one of those signal attempts to reconsider exactly what authorship is for copyright law purposes.
Trademark Protection for Characters After Copyright
March 30, 2006
As the copyright terms of many iconic, character-based works of the 20th century near closure, owners of these works face the question as to what extent they can enjoy exclusive rights in the characters they have created. Included is Disney's Mickey Mouse, first introduced in the short animated film 'Steamboat Willie' in 1928. Enterprising third parties raise the related question: Does the expiration of copyright mean these works and characters can be freely exploited? Once a copyright term lapses, an original work is said to pass into the public domain, available for all to freely copy and exploit. However, continued trademark protection for a character may delay or complicate the character's passage into the public domain. A careful analysis of fundamental principles of trademark and copyright law and relevant case law illuminate certain legal guideposts for navigating through the complexities of character protection.
IP News
March 30, 2006
Highlights of the latest intellectual property news from around the country.
Tips for Facilitating Patent Prosecution
March 30, 2006
As many patent practitioners are well aware, prosecution of patent applications has become a slow, tedious process. The U.S. Patent and Trademark Office ('PTO') acknowledges a large backlog of cases in many of its art units, with some art units having a pendency of at least 3 or 4 years. For many fields of technology, including computer and telecommunications, it is imperative to obtain a patent as soon as possible; otherwise, the patented technology will become stale by the time the patent issues, thereby making the patent practically worthless. This article discusses several ways by which a patent practitioner can speed up the patent prosecution treadmill.
Nuts and Bolts of ITC Investigations
March 30, 2006
In recent years, the International Trade Commission ('ITC') has become an increasingly popular venue for parties seeking to enforce patent rights. There are several reasons for this trend. First, the ITC is a high-speed venue. The ITC's investigation of a patentee's allegations of infringement is typically completed within 12 to 15 months, far more quickly than cases in most U.S. district courts. Second, the ITC offers a powerful remedy: exclusion of infringing products from the United States. The U.S. Customs Service enforces the exclusion order. Of course, this remedy is available only when the infringing products are being imported. However, there are many industries in which most, if not all, manufacturing takes place overseas. As a result, resort to the ITC is often available even with respect to domestic competitors. Third, although the ITC does not award damages, the patentee has the option of seeking damages in a parallel case in federal district court. Thus, the patentee can obtain both damages and an exclusion order by pursuing relief before the ITC and a district court.
