Intellectual Property & Franchising Law

Locking a Domain Name During a UDRP Proceeding

August 9, 2013, 3:41 PM

The Internet Corporation for Assigned Names and Numbers (ICANN) recently posted recommendations for locking a domain name subject to a domain name proceeding under the Uniform Dispute Resolution Policy (UDRP). On August 1, 2013, the GNSO Council unanimously adopted the report and its recommendations, but before the recommendations can be considered by the ICANN Board, the public has an opportunity to comment on the proposed policies. Such recommendations were posted on August 2, 2013, and the public has until August 23, 2013 to provide public comment.

No Irreparable Harm, No Injunction Design Patent Dangers

July 26, 2013, 9:22 AM

Under 35 U.S.C. 283, a patentee may seek a preliminary injunction against an alleged infringer. The issuance of a preliminary injunction can be significant in a design patent case since the alleged infringer is often producing and profiting from an actual product to the detriment of the patent holder. In order to obtain a preliminary injunction, a patentee must show that: (1) his infringement suit is likely to succeed on the merits, (2) he is likely to suffer irreparable harm absent preliminary relief, (3) the balance of equities is in his favor, and (4) an injunction is in the publics interest. Titan Tire Corp. v. Case New Holland, Inc., 556 F.3d 1372, 1375-76 (Fed. Cir. 2009).

Recent Patent Troll Developments

July 25, 2013, 4:11 PM

The well-known problems posed by patent trolls also commonly referred to as non-practicing entities (NPEs) or patent assertion entities (PAEs) have recently prompted responses beyond the moans and groans of targeted companies who receive their patent infringement demand letters.

Prospective Franchisee Due Diligence Part 3

July 19, 2013, 9:55 AM

This post, and the posts that preceded it (Part 1 and Part 2)and the ones that will follow it, will outline the due diligence that we recommend for prospective franchisees.

New Domain Names Reach the Home Stretch

July 11, 2013, 1:46 PM

On July 3, 2013, the last contractual hurdle was cleared for the new generic top-level domain names (gTLD) as the Board of Directors of the Internet Corporation for Assigned Names and Numbers approved the 2013 Registry Agreement. For those applicants which applied for gTLDs and were approved, the new names should go live soon.

Court Orders Transfer of Domain Name

June 24, 2013, 2:15 PM

In Civil Action No. 1:12cv1375-TSE-JFA, Plaintiff Entrepreneur Media, Inc. (EMI), filed a complaint seeking injunctive relief under the Anticybersquatting Consumer Protection Act against a defendant who registered (Domain Name). After the defendant failed to respond to the complaint, EMI filed a motion for default judgment which was referred to the magistrate judge. In a report and recommendation which later was adopted by Judge T. S. Ellis, III on May 6, 2013, the court entered judgment by default against defendant and ordered that VeriSign, Inc. change the registrar record for the Domain Name to EMIs registrar of choice. The Court noted that the Anticybersquatting Consumer Protection Act provides that the Court has discretion to cancel a domain name registration or order it transferred to the trademark owner. Based on the evidence presented by EMI, the Court held that transfer of the Domain Name was warranted.

Standing on Substantial Rights

June 18, 2013, 1:08 PM

Often in patent cases, courts are faced with the issue of whether the assignee of a patent possesses all substantial rights to the patent such that the assignee has standing to sue potential infringers. Generally, for a patent assignee to have standing to sue, the patentee must have conveyed all substantial rights under the patent to the transferee. Propat Int'l Corp. v. RPost, Inc., 473 F.3d 1187, 1189 (Fed. Cir. 2007). Furthermore, [t]o be an exclusive licensee for standing purposes, a party must have received, not only the right to practice the invention within a given territory, but also the patentees express or implied promise that others shall be excluded from practicing the invention within the territory as well. Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1317 (Fed. Cir. 2010).

Trademark Monitoring Services

June 14, 2013, 12:26 PM

We have on more than one occasion used this blog to warn about uninvited solicitations for services relating to U.S. federal trademark registrations.

Prospective Franchisee Due Diligence Part 2

June 6, 2013, 10:18 AM

This post, the post that preceded it, and the ones that will follow it, will outline the due diligence that we recommend for prospective franchisees. For the prior blog post on this topic, click here.

Who Gives a Bean about Patent Exhaustion?

June 3, 2013, 8:46 AM

In a rare unanimous decision, the United States Supreme Court held that the patent exhaustion doctrine, while viable, does not allow a famer to use genetically modified soybeans to make new seeds to reuse in later planting seasons. The decision, issued on May 13, 2013, in Bowman v. Monsanto, 569 U.S.____, No. 11-796, 2013 U.S. LEXIS 3519 (U.S. May 13, 2013) [add link to case], while specifically limited to the facts of the case, is significant in that it illustrates the Supreme Courts willingness to extend patent protection to later generations of self-reproducing biological inventions in the biotechnology industry.

Social Media Terms of Use Clickwrap or Browsewrap?

May 22, 2013, 2:53 PM

Do you use a clickwrap agreement to notify users of your terms of use, or do you simply rely on the users continued use as a manifestation of their intent to be bound by your terms of use? A clickwrap agreement displays the terms of use and then requires the user to click an I Agree or Accept button to affirmatively manifest their intent to be bound by the terms. On the other hand, a browsewrap agreement is typically accessible through a hyperlink at the bottom of a web page and no affirmative acceptance is required by the user. The theory is that with continued use of the website, the user agrees to be bound by the terms of use.

The Supreme Court Issues Another Ruling on the First Sale Doctrine

May 16, 2013, 8:06 PM

In a 6-3 decision issued on March 19, 2013, the Supreme Court of the United States reversed and remanded a decision by the Court of Appeals for the Second Circuit, holding that the first sale doctrine applies to copies of a copyrighted work lawfully made abroad. The case involves a lawsuit filed by John Wiley & Sons, Inc. (Wiley) against Supap Kirtsaeng (Kirtsaeng) regarding foreign textbooks for which Wiley is the copyright owner. While studying in the United States, Kirtsaeng asked his friends and family in Thailand to purchase copies of inexpensive foreign edition English language textbooks and mail them to him in the United States where he sold them for a profit. Wiley filed a federal lawsuit against Kirtsaeng for copyright infringement, claiming that the unlawful import and resale of these books constituted infringement. In response to the claims, Kirtsaeng argued that the books were lawfully made and that the first sale doctrine permitted him to resell or dispose of them without further permission from the copyright owner.

Choice of Forum and Non-Practicing Entities

May 13, 2013, 10:02 AM

When a patent infringement litigant is choosing a forum the court in which the lawsuit will be filed it is important to remember that in analyzing the propriety of venue, district courts will look principally to four factors: (1) the plaintiffs initial choice of venue; (2) witness convenience and access; (3) the convenience of the parties; and (4) the interests of justice. JTH Tax, Inc. v. Lee, 482 F. Supp. 2d 731, 736 (E.D. Va. 2007). Although all four factors are important, the first factor, a plaintiffs choice of forum, is typically given substantial weight. However, the weight a court ultimately chooses to give this choice may vary depending on the significance of the contacts between the venue chosen by plaintiff and the underlying cause of action. Pragmatus AV, LLC v. Facebook, Inc., 769 F. Supp. 2d 991, 994-95 (E.D. Va. 2011).

Copyright Ownership in Works Created For You by Others

May 3, 2013, 5:32 PM

An unfortunate scenario we see repeated too often is the one in which someone pays someone else to create copyrightable material for them, and later learns that they did not end up owning everything they thought they paid for.

Patenting the Basic Building Blocks of Life?

May 1, 2013, 10:21 AM

Will patents extend to DNA, the basic building blocks of life? Attempting to unravel this helix-laden, complex conundrum, the Supreme Court of the United States recently heard argument in the case of Association for Molecular Pathology v. Myriad Genetics Inc., U.S., No. 12-398 (argued 4/15/13). At stake in Molecular Pathology is the scope and reach of the controversial section of Patent Law, 35 U.S.C. 101, the section of that law that determines what qualifies for patent protection. That section excepts from patent protection laws of nature, natural phenomena, and abstract ideas, and, according to Diamond v. Chakrabarty, 447 U.S. 303, 206 (1980), a product of nature as well. The petitioners primary argument throughout the case has been that all patent claims on DNA as a composition of matter fall under that exception, and should not be patentable.

Content Posted to Your Companys Social Media Page

April 18, 2013, 4:15 PM

If your company has a social media page, such as Facebook or Twitter, or you are registered with a travel or company listing and review service, such as TripAdvisor, you should be aware of your rights with respect to content posted about you as well as content that you post. Each platform will have terms that govern the use and content posted to your page. For example, in your company has a Facebook page, the terms of use that you establish for that page may not conflict with Facebooks Statement of Rights and Responsibilities, Data Use Policy and Page Terms. Since each platform has different terms of use, you will need to customize your companys terms of use to the particular platform. In addition, almost all will have a statement that you grant a non-exclusive, royalty-free and perpetual right to use, reproduce, modify, distribute and publish posted content throughout the world, the rights granted to other users may vary. If your company maintains a page on any platform, you should be aware of the terms of use, your rights and the rights of other users. --Nicole J. Harrell

Disney Tale Offers Patent Litigation Lessons

April 4, 2013, 11:09 AM

Disney Enterprises filed a lawsuit pursuant to 35 U.S.C. 145 in the Alexandria division of the Eastern District of Virginia, challenging the United States Patent and Trademark Offices (USPTOs) rejection of Disneys patent application. Disney Enters., Inc. v. Kappos, 2013 U.S. Dist. LEXIS 17977 (Brinkema) (E.D. Va. Feb. 11, 2013). Disneys patent application was primarily rejected because of obviousness in view of admitted prior art. When Disney attempted to offer a supplemental expert opinion to support its arguments, the USPTO filed a motion in limine and argued that the expert opinion should be precluded since it was untimely produced. Disney argued that the supplemental expert report was proper under Federal Rule of Civil Procedure 26(e) and was merely offered in response to the USPTO experts opinion.Id. at *11. The district court rejected Disneys argument and explained that [c]ourts distinguish true supplementation (e.g., correcting inadvertent errors or omissions) from gamesmanship, and have therefore repeatedly rejected attempts to avert summary judgment by supplementing an expert report with a new and improved expert report. Id. at *14 (internal citations omitted). The United States Supreme Court has made clear that applicants bringing civil actions challenging a USPTOs patent application decision are free to introduce new evidence to support their arguments; however, the admission of such evidence will be subject to the rules applicable in all civil proceedings (namely, the Federal Rules of Evidence and Federal Rules of Civil Procedure). Kappos v. Hyatt, 132 S. Ct. 1690, 1699-1700 (2012). Therefore, the Alexandria district court concluded that Disney would not be permitted to offer its experts supplemental opinion at trial since the report was not produced in accordance with the discovery scheduled to which it had agreed. Id. at *17-18.

Lawyers as Cyberpirates? Say it Ain't So.

March 28, 2013, 3:36 PM

While many companies have tried to further their competitive positions by purchasing competitors names and trademarks as adwords on Google and other search engines, such activity does not seem to be particularly prevalent in the legal profession.