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On March 19, 2013, in a case closely followed by buyers and sellers alike, the Supreme Court reversed the Second Circuit’s decision that the first-sale doctrine only applies to copyrighted materials manufactured in the United States. Kirstaeng v. John Wiley & Sons Inc., No. 11-697, slip op. (U.S. March 19, 2013). This decision resolves a long-standing ambiguity in the Copyright Act and makes clear that a copyright owner can only profit from the original authorized sale of a product regardless of where the product was manufactured.
April 9, 2013
Advisories
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The Internet Corporation for Assigned Names and Numbers (ICANN) will soon significantly expand the number of generic top-level domains (gTLD). As part of the gTLD expansion process, ICANN launched the Trademark Clearinghouse (“Clearinghouse”) last week, which is designed to provide trademark owners early registration opportunities in the new gTLDs, as well as notice regarding potentially infringing domain name applications. This advisory explains how to register important trademarks with the Clearinghouse to take advantage of the early registration and notification benefits.
April 3, 2013
Advisories
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This advisory discusses new Federal Trade Commission (FTC) guidance for advertising online. Entitled “.com Disclosures: How to Make Effective Disclosures in Digital Advertising,” the new guidance comes in response to consumers’ growing use of mobile devices and social media applications, and advertisers’ efforts to reach consumers via these new devices and media. The FTC’s guidance emphasizes that the same consumer protection laws that apply to traditional advertising also apply to online advertising. The FTC issued the guidance, however, to address some of the unique advertising issues that arise in advertising on mobile devices and in social media.
March 26, 2013
Advisories
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Any US patent application filed on or after March 16, 2013 will be subject to the new first-to-file system mandated by the America Invents Act, while any application filed prior to March 16 will still be subject to the old first-to-invent system.
March 2013
Publications
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As you may be aware, the America Invents Act of 2011 (AIA) will soon bring significant change to U.S. patent law. Notably, any patent application filed on or after March 16, 2013, will be subject to the new First-to-File system. In contrast, any patent application filed prior to March 16, 2013, will still be subject to the old First-to-Invent system.
January 28, 2013
Advisories
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The advisory discusses the Supreme Court’s holding that a sufficiently broad covenant not to sue can divest a federal court’s jurisdiction to hear trademark invalidity counterclaims. In Already, LLC v. Nike, Inc., No. 11-982, slip op. (U.S. Jan. 9, 2013), the Court held that a covenant not to sue issued by the plaintiff, Nike, Inc., after it filed suit against the defendant, Already, LLC, mooted Already’s counterclaim to cancel Nike’s mark. We believe the Supreme Court’s holding will have relatively limited significance in trademark or patent litigation because of the unique fact pattern of the case. Nevertheless, the decision provides some guidance to intellectual property owners on how to terminate litigation, including invalidity counterclaims, if discovery reveals that the facts of a case are not what the IP owner understood them to be at the time of filing.
January 15, 2013
Advisories
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On December 5, 2012, the U.S. House of Representatives passed Senate Bill S.3486, Patent Law Treaties Implementation Act of 2012, in part to implement the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs (“the Hague Agreement”). The Hague Agreement is an international treaty that allows the filing of international design applications eligible for protection in all of the currently 60 member states and intergovernmental organizations, including the European Union. Ratified by the Senate five years ago, the bill is expected to be signed by President Obama before the end of the year. Although the provisions of the new law would not take effect for another 12 months, the promise of a more unified system for obtaining international design protection is a welcome change for those frustrated with the time, cost and inconvenience of filing multiple national design applications across the globe.
December 10, 2012
Advisories
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Historically, there has been a tension between making post-issuance patents too hard or expensive to challenge and making such patents so easy to challenge that they create harassment opportunities for those who wish to extract undue settlements. Prior to the passage of the America Invents Act (AIA), ex parte and inter partes reexamination were often used as a tool to prolong or complicate litigation. When an alleged infringer was being sued, the reexamination process offered a quick way to increase the transaction cost for the patentee, perhaps effect a stay in the corresponding litigation and, with luck, invalidate some claims in the process. While a post-grant system that encourages the review of patents for legitimate reasons is an important tool to guarantee high-quality patents, the system must also discourage its use for mere harassment purposes. One of the significant goals of the AIA was the rebalancing of the post-grant processes to better address this problem.
This advisory discusses another provision of the AIA that could have the unintended consequence of nullifying much of the gains made in rebalancing the review process, as well as a possible solution to this issue.
September 17, 2012
Advisories
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This advisory discusses the Second Circuit Court of Appeals’ reversal of a district court’s determination that a single color can never function as a trademark in the fashion industry. Christian Louboutin S.A. v. Yves St. Laurent Am. Holding, Inc., No. 11- 3303-cv (2d Cir. Sept. 5, 2012) (“Louboutin”). The appeals court also held that the signature red lacquered sole of Christian Louboutin’s shoes constitutes a valid and enforceable trademark—but only when used as a contrasting color to the remainder of the shoe (known as the “upper”).
September 10, 2012
Advisories
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This advisory discusses a recent, highly fractured en banc decision where the Federal Circuit ruled 6-5 that inducement of patent infringement no longer requires proof that a single entity directly infringes the patent. Limiting its analysis to method patents, and overruling a 2007 decision, the court held “that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.” This new rule eases a patentee’s burden for proving induced infringement and is already having an immediate and dramatic impact on patent litigation. The new standard will affect claim drafting as well, as earlier concerns about structuring method claims to capture infringement by a single party are now less worrisome.
September 6, 2012
Advisories
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‘Patent trolls’ may have awakened many in the industry to the power and importance of IP rights, but today’s sophisticated financial institutions have developed institutional programs to identify and protect their IP rights. This is vastly important to the development of new systems, as solid IP protection, and avoidance of IP rights of third parties, are necessary to safeguard major investments in business platforms and new products and services.
August, 2012
Interviews
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This advisory discusses what companies need to know about the most recent list of approximately 2,000 applications for new generic top-level domain names (gTLDs) that the Internet Corporation for Assigned Names and Numbers (ICANN) released on June 13, 2012. This advisory also lists four ways to stop approval if your company discovers problematic applications. Top-level domains are the letters to the right of the dot in Internet addresses, such as “.com,” “.biz,” and “.edu.” Prior to today, there were only 21 generic top-level domains and 273 country code top-level domains. Now, however, there are over 2,000 gTLDs that could be approved for use as early as March 2013. The applied-for gTLDs include brands, geographic locations and industries.
June 18, 2012
Advisories
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This advisory discusses the U.S. Supreme Court’s unanimous decision in Mayo Collaborative Services, et al. v. Prometheus Laboratories, Inc., which reversed the Federal Circuit and held that Prometheus Laboratories, Inc.’s (“Prometheus”) personalized medicine dosing processes were ineligible for patent protection under 35 U.S.C. § 101. The Court held that “[i]f a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.” Slip Op., at 8-9. The Court ruled that Prometheus’s processes were directed essentially to laws of nature, and the claims did not add enough to qualify them as patent-eligible processes that apply natural laws.
March 27, 2012
Advisories
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January 17, 2012
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September 26, 2011
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September 19, 2011
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September 14, 2011
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September 8, 2011
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August 17, 2011
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July 6, 2011
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June 22, 2011
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June 13, 2011
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June 10, 2011
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April 22, 2011
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April 12, 2011
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April 6, 2011
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March 18, 2011
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March 8, 2011
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January 4, 2011
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November 12, 2010
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October 18, 2010
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October 5, 2010
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September 15, 2010
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August 26, 2010
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June 30, 2010
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June 22, 2010
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June 9, 2010
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Summer 2010
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February 25, 2010
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January 22, 2010
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January 19, 2010
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January 15, 2010
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December 23, 2009
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December 15, 2009
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November 13, 2009
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November 10, 2009
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November 9, 2009
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October 21, 2009
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September 28, 2009
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August 26, 2009
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August 25, 2009
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August 2009
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July 28, 2009
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July 27, 2009
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June 8, 2009
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May 2009
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May 12, 2009
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April 20, 2009
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March 24, 2009
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March 13, 2009
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March 3, 2009
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March 2, 2009
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“Royalty Rate Trends and Valuation in Patent and Technology Licensing,” 2009 Licensing Update, Aspen Law & Business, March 2009 and prior editions 1999-2008.
March 2009
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February 19, 2009
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January 2009
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December 15, 2008
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December 2008
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November 4, 2008
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November 3, 2008
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26 September 2008
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August 19, 2008
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12 August 2008
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5 August 2008
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July 23, 2008
Advisories