IP News
September 01, 2006
Highlights of the latest intellectual property news from around the country.
Can a Workforce IP Training Program Limit Liability Under the Uniform Trade Secrets Act?
September 01, 2006
When a lower-level employee uses a former employer's trade secrets after taking a new job, the plaintiff often sues the new employer itself and demands exemplary damages under the Uniform Trade Secrets Act ('UTSA') — even if the new employer was unaware of, and disapproves of, the employee's conduct. Taking a page from the law of employment discrimination, we believe that companies that provide intellectual property training for their workforce can use the fact of such training during litigation to avoid exemplary damages for the solitary wrongdoing of non-executive-level employees and perhaps avoid vicarious liability altogether. Companies, especially technology startups, can reduce trade secret litigation and liability risks by implementing such programs — programs which today are very rare, even in Silicon Valley.
Copyright Grantees Served Sour Grapes in Steinbeck Dispute
August 31, 2006
In 1976 and again in 1998, Congress extended subsisting copyrights, by 19 and 20 years respectively. <i>See</i> Pub. L. 94-553, 90 Stat. 2541 (1976) (extending renewal term for pre-1978 works to 47 years, for 75 years total protection); Pub. L. 105-298, 112 Stat. 2827 (1998) (extending renewal term for pre-1978 works an additional 20 years, for 95 years total protection). Seeking to allow authors and their kin to share in the benefits of the newly extended terms, Congress afforded them a mechanism known as statutory termination. <i>See</i> 17 U.S.C. '304(c) and (d). The mechanism allows abrogation of contracts executed prior to Jan. 1, 1978, otherwise valid under state law, by which an author (or certain other specified persons) had transferred away copyright interests. To bolster and protect this termination right, Congress mandated that it may be effected 'notwithstanding any agreement to the contrary.' 17 U.S.C. '304(c)(5); <i>see also</i> 17 U.S.C. '304(d)(1).
Litigating the Business Method Patent: Pitfalls for Unwary Defendants
August 31, 2006
The lion's share of business method and e-commerce patents is grouped in the now infamous Class 705 at the U.S. Patent and Trademark Office ('USPTO'). This specialized class that encompasses data processing involving financial, business practice, management, and cost/price determination has experienced a surge in popularity rivaled only by the likes of nanotechnology. From 2001 to 2005, more than 5000 U.S. patents were issued in Class 705. Growth in 705 patenting has been so pronounced that this 5-year period has produced about the same number of new patents as the previous 15-year period.
The Computer Fraud and Abuse Act
August 31, 2006
In a recent decision written by Judge Richard Posner, The United States Court of Appeals for the Seventh Circuit determined that the Computer Fraud and Abuse Act (CFAA) may be used to bring a private cause of action against a former employee who permanently erased confidential data from his company-issued laptop before returning it to the company. <i>International Airport Centers, L.L.C. v. Citrin</i>, (Slip Op.) No. 05-1522 (7th Cir. March 8, 2006). In so holding, the Seventh Circuit has joined the current tide of federal courts that have permitted companies to use the CFAA as a means with which to defend themselves against the malicious and competitive acts of departing employees.
IP News
August 01, 2006
Highlights of the latest intellectual property news from around the country.
Use It or Lose It: Can Residual Goodwill Avert Abandonment?
August 01, 2006
The notorious legal battle over the right to use the MUSTANG RANCH trademark for legal brothel services illustrates the 'use it or lose it' adage as applied to trademark rights and the difficulty of establishing an excuse for nonuse. <i>Burgess v. Gilman</i>, 78 U.S.P.Q.2d 1773 (D. Nev. 2006). Because U.S. law does not permit the warehousing of trademarks, the owner of a trademark typically must use the mark in commerce or lose the ability to prevent others from using it. For this reason, '8 of the Lanham Act requires trademark owners to file a declaration of use between the fifth and sixth year after registration and with renewals. 15 U.S.C. '1058.
Patent Injunctions: Quo Vadis ' What Is the Expectation of a Patentee After eBay?
August 01, 2006
Whither goest thou?' Or, in plain English: Where are you going? That is the question that must be asked of the courts in the wake of the Supreme Court's recent decision in <i>eBay, Inc., v. MercExchange, LLC</i>, 126 S. Ct 1837 (2006), in which the Court reversed the long-standing practice in the Court of Appeals for the Federal Circuit (the 'Federal Circuit') of granting permanent injunctions in patent cases absent a persuasive reason for not doing so.
