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Patents, Trademarks, Copyrights & Related Transactions : Newsstand
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K&L Gates Welcomes Boston Intellectual Property Partner, August 11, 2010.
K&L Gates has added John Garvey as a Boston partner in the firm's intellectual property practice.
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Breaking News in Patent Law, K&L Gates Webinar Recording, by Stephen C. Glazier, Jeffrey L. Snow. July 9, 2010.
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Supreme Court Rejects Bilski Patent Application, but Leaves the Door Open for Other Business Method and Software Patents, Intellectual Property Alert, by Mark G. Knedeisen, Christopher G. Wolfe. June 29, 2010.
On Monday, June 28, the Supreme Court handed down its long-awaited Bilski decision. The Court affirmed the rejection of the petitioner's business method patent application, holding that the claims were directed to an abstract idea and, therefore, did not recite patent eligible subject matter. The Court also stated that the Federal Circuit's machine-or-transformation test is a "useful and important clue" to subject matter eligibility, but is not the sole test for determining subject matter eligibility. Contrary to some expectations, the Court did not eliminate business method patents entirely and did not explicitly reach the issue of software patents. In fact, the decision is arguably more favorable to patentees than the Federal Circuit's en banc decision below. In view of the decision, claims that meet the machine-or-transformation test are probably still patent eligible. It is possible that some claims may fail the machine-or-transformation test and still be patent eligible, although the Court provided little guidance for identifying such claims.
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All together now? Moving towards centralized EU patent enforcement, European Patent Litigation Alert, by Rebecca Halford-Harrison. 28 June 2010.
While patent applicants have been able to file and prosecute patents in a shared European Patent Office (EPO) since 1977, patents allowed by the EPO must still be validated in individual countries. Enforcement of patents remains a national matter making multi-jurisdictional patent litigation expensive and time-consuming. Discussions of a single EU patent and merged patent enforcement proceedings have been ongoing seriously since 1999. If, and/or when, a centralized EU patent and related court system (EEPC) is created, those filing or enforcing patents in Europe will need to re-think strategy swiftly and completely.
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Hot Topics in Patents and IP for Life Sciences Companies, K&L Gates Webinar Recording, by Thomas A. Turano, Tara C. Clancy, David J. Byer, Christine C. Vito, Ph.D., John J. Cotter. June 16, 2010.
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Hot Topics in Patents and IP for Technology Companies, K&L Gates Webinar Recording, by David J. Byer, Tara C. Clancy, John J. Cotter, Thomas F. Holt, Jr., Thomas A. Turano. June 8, 2010.
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10 Trends In Patent Law To Watch For, Law360, by Stephen C. Glazier. May 19, 2010.
Posted with permission.
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K&L Gates Again Among Top Three Law Firms for Trademark Issues, Filings, May 7, 2010.
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Executive Summary: U.S. Patent Commissioner Speaks: Current Developments in Patents, K&L Gates Presentation, by Stephen C. Glazier. April 28, 2010.
On April 28, 2010, we had the opportunity to host a webinar and luncheon titled “U.S. Patent Commissioner Speaks: Current Developments in Patents.” Remarks were presented by the U.S. Commissioner for Patents, Robert L. Stoll, and we then had the opportunity to interview him with questions from the audience.
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U.S. Patent Commissioner Speaks: Current Developments in Patents, K&L Gates Webinar, by Stephen C. Glazier. April 28, 2010.
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Ninth Circuit Requires Insurers to Defend Patent Infringement Claim Under “Advertising Injury” Coverage of Liability Insurance Policy, Insurance Coverage Alert, by Christopher C. French, Patrick J. McElhinny. April 14, 2010.
Companies concerned about the costs of defending against patent infringement claims and other intellectual property claims such as trademark and trade dress infringement and unfair competition should take note of a recent Ninth Circuit decision that sets a significant and encouraging precedent for coverage claims for intellectual property infringement cases. In Hyundai Motor America v. National Union Fire Ins. Co. of Pittsburgh, PA, No. 08-56527, 2010 WL 1268234 (9th Cir. Apr. 5, 2010), the Ninth Circuit, applying California law, held that the insurers had a duty to defend a patent infringement case brought against the policyholder because the claim potentially was covered under the "advertising injury" clause in a liability insurance policy.
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The Written Description Requirement is Alive and Well, Intellectual Property Alert, by Michael H. Brodowski, Ph.D., Jeffrey D. Bears. April 8, 2010.
In an en banc decision, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) recently held in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. (2008-1248) that 35 U.S.C. § 112, first paragraph, does contain a written description requirement separate from the enablement requirement. In a case involving biotechnology, the Federal Circuit sided with Eli Lilly and held the asserted claims invalid for failure to meet the statutory written description requirement. While confirming interpretation of the statute, the decision particularly highlights the value of a well-prepared patent application that is focused and adequately describes the claimed invention to meet all the requirements of patentability.
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STOP PRESS - European Trade marks Alert - Google wins European adwords case, Intellectual Property Alert, by Dominic J. Bray. March 23, 2010.
The ECJ rules today that Google was not liable for selling trade marks as key words. Advertisers could be if internet users cannot easily determine who is advertising the goods or services.
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K&L Gates Boosts Corporate Practice with Palo Alto Partner Addition, February 18, 2010.
K&L Gates welcomes David Frazee as a corporate partner in its Palo Alto office.
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Patent Marking and Qui Tam in the Age of Trolls, Intellectual Property Alert, by Thomas A. Turano. January 7, 2010.
Patent marking, the placement of the U.S. patent number on a product covered by the patent, was something a company typically thought about, if at all, only when the company received a new patent covering the company’s product. But a recent case before the Court of Appeals for the Federal Circuit (CAFC), coupled with an apparently growing number of "marking trolls," may change how companies view the marking of their products with patent numbers.
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Federal Circuit Changes Design Patent Invalidity Standards, Intellectual Property Alert, by Alan L. Barry, Heather A. Boice. December 23, 2009.
Since the Federal Circuit issued its landmark decision in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), the legal test for determining invalidity under 35 U.S.C. §§ 102 or 103 for a design patent has been unclear. Before Egyptian Goddess, the law was well established that the Gorham Co. v. White, 81 U.S. 1 Wall. 511, 528 (1871), ordinary observer test and the point of novelty test for design patent infringement also applied to design patent anticipation under 35 U.S.C. § 102. See Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1312 (Fed. Cir. 2001) (citing Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889)). Patent invalidity for anticipation is often the flipside of the infringement coin because of the well-known axiom “that which infringes, if later, would anticipate if earlier.” Id. For invalidity of a design patent under 35 U.S.C. § 103 for obviousness the central inquiry was “whether the design would have been obvious to ‘a designer of ordinary skill who designs articles of the type involved.’” In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996) (citations omitted).
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Patent Office Accelerates Examination of Certain Cleantech Patent Applications, Intellectual Property Alert, by Charles D. Holland. December 17, 2009.
On December 8, 2009, Commerce Secretary Gary Locke announced with immediate effect the Green Technology Pilot Program for accelerated examination of patent applications claiming inventions which “materially enhance[] the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements”; or “materially contribute to (1) the discovery or development of renewable energy resources, (2) the more efficient utilization and conservation of energy resources; or (3) the reduction of greenhouse gas emissions.” The pilot program is a welcome development for companies with certain clean technologies, which often rely on patents to help protect their developing businesses from copyists or to raise further funds to commercialize the technology.
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Patent Office Accelerates Examination of Certain Cleantech Patent Applications, Intellectual Property Alert, by Charles D. Holland. December 11, 2009.
Yes you can … get expedited patent examination under a new pilot program if your application qualifies and you file a petition to accelerate examination. Commerce Secretary Gary Locke announced the Green Technology Pilot Program on December 8, 2009 for accelerated examination of patent applications claiming inventions which:
- "materially enhance[] the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements"; or
- "materially contribute to (1) the discovery or development of renewable energy resources, (2) the more efficient utilization and conservation of energy resources; or (3) the reduction of greenhouse gas emissions."
This is especially good news for start-up companies, which can benefit significantly from early patent protection. Patent and claiming strategy should therefore be reviewed and potentially changed to take advantage of the Patent and Trademark Office’s pilot program.
Click here for the full text.
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Cloud Computing: Emerging Legal Issues, Data Flows, and the Mobile User, Landslide, by Mark H. Wittow, Daniel J. Buller. November/December 2009.
Posted with permission.
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K&L Gates’ Global Government Solutions Help Businesses Deal with Government’s Expanding Role, October 21, 2009.
K&L Gates has launched a Global Government Solutions initiative to assist clients in managing the threats and opportunities presented by government authorities around the world.
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No splitting-up of rights of use for online purposes, District Court of Munich I, decision of June 25, 2009, Kommunikation & Recht p. 658 f., by Dr. Martin von Albrecht. October 2000.
The article deals with a decision of the District Court of Munich in which the court held that the online rights for a streaming video portal like YouTube could not be split up into a reproduction and right of public access. Therefore, CELAS could not enforce its reproduction rights in the EMI repertoire against the video portal since these rights still vested with German collecting society GEMA. The author agrees with the decision and outlines that it is well founded also under European law with respect to the so-called GEMA-decision of the Commission from 1972. This is a German-language article. Posted with permission.
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STOP PRESS: European Trade Mark Alert - Google AdWords, Intellectual Property Alert, by Dominic J. Bray. September 30, 2009.
Search engines' sale of trade marks as keywords does not infringe trademark owners' rights, according to the ECJ Advocate General's opinion released last week in three cases brought by various trade mark owners against Google. Advertisers should also be free to bid on trade marks as keywords, but still need to be careful to ensure that the text of any link, and advert and the websites that they link to, do not infringe trade mark owners' rights.
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Federal Circuit Rules the TTAB’s "Should Have Known" Standard Insufficient to Prove Fraud in Connection with Federally Registered Trademarks, Intellectual Property Alert, by Kimberly N. Reddick, James R. Kyper, Adam L. Marchuk, Joy J. Royes. September 8, 2009.
The Court of Appeals for the Federal Circuit has made it more difficult to prove fraud in the procurement or maintenance of a trademark registration by narrowing the standard of proof. In re Bose Corp., Appeal No. 2008 – 1448, *7 (Fed. Cir. 2009). In its Bose opinion, the Federal Circuit overturned the standard established by the Trademark Trial and Appeal Board (“TTAB”) in Medinol v. Neurovasx, 67 USPQ2d 1205, 1209 (T.T.A.B. 2003), and held that “a trademark is obtained fraudulently under the trademark act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO” (emphasis added).
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FCC Surveys the Wireless Scene, Telecom, Media and Technology Alert, by Marc S. Martin, Lauren Bergen Pryor. September 1, 2009.
The FCC recently issued two Notices of Inquiry seeking public comment on the state of competition and innovation in the wireless industry. The Commission will review such comments to determine how best to encourage further growth and investment in the rapidly-changing mobile world. A number of wireless operators, consumer advocacy organizations and other stakeholders have already welcomed the opportunity to participate as the Commission considers new policies and rules in these areas. Comments are due by September 28th.
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K&L Gates Adds to Intellectual Property Practice with Palo Alto Partner, August 19, 2009.
K&L Gates welcomes Chuck Holland as a partner in the firm's intellectual property practice.
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Considerations in Choosing a Brand Name, Trademarks Alert, by Kathryn M. Wheble, Allen J. Baden. August 5, 2009.
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2009 Business Method Patent Partnership Meeting at the U.S. Patent and Trademark Office: Highlights, Class 705 (Business Method) patents issued in 2008 increased by 23.3%, new applications increased 11.9%, despite recession, Intellectual Property Alert, by Stephen C. Glazier. August 5, 2009.
On Wednesday, July 15, 2009, the U.S. Patent and Trademark Office (“PTO”) held the “2009 Business Method Patent Partnership Meeting” to discuss various current topics regarding the Patent Office and trends for software, computer-related, and business method patents.
The Business Method Patent Partnership Meeting is an annual meeting that the management of the PTO has been holding for the last few years, by invitation to senior members of the U.S. patent bar, to develop two-way communication on this topic. About 200 lawyers from industry and private practice attended this year's half day affair.
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ECJ Ruling on Look-alikes, Comparative Advertising and Unfair Advantage, European Trademark Alert, by Dominic J. Bray, Stuart Baker. July 3, 2009.
Retailers selling look-alike products, and those advertising goods or services by way of lists comparing their products with those of trade mark owners, will have to think very carefully about what they do following the recent (18 June) decision by the European Court of Justice (the 'ECJ') in the case of L'Oreal v Bellure and others. In an important ruling on trade mark principles of 'unfair advantage', and comparative advertising, the ECJ ruled that 'free-riding' on the coat tails of the investment made by the owners of well-known trade marks can be unlawful, even where there is no damage to the trade mark, and where there is no confusion between the original and the imitation product. The ECJ further ruled that advertising imitation products by comparing them with the real thing was unlawful, and also confirmed that the role of a trade mark was more than just to indicate the origin of goods or services - it has a number of other functions that should be protected by trade mark law.
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Industry Publications Rank K&L Gates Among Top Trademark Firms, May 15, 2009.
Intellectual property publications IP Today and CSC Trademark Insider recently named K&L Gates among the top three law firms in trademark registrations and applications in 2008.
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Google Book Search Settlement – Authors and Publishers of Copyrighted Books and Inserts Must Act Quickly To Preserve Online Rights, Intellectual Property Alert, by Franklin B. Molin. April 23, 2009.
Google and author and publisher industry groups have agreed to a settlement of the class action lawsuits against Google relating to Google’s digitization and creation of online searchable databases of printed books. This settlement may affect you if you are an author, publisher, or copyright owner of a copyrighted book or certain contributions to a book, even if you have had no involvement in the case.
Copyright holders of books must act by May 5, 2009 if they wish to opt out of the Google Book Settlement (“Settlement”) entirely in order to preserve their right to separately sue Google for copyright infringement for works covered by the Settlement. Such copyright holders who are participating in the Settlement but who wish to submit objections to the specific terms of the Settlement must also act by May 5, 2009. For those who wish to participate in the Settlement and avail themselves of the benefits of the Settlement, such as removing certain books from the database, limiting Google’s distribution rights, and collecting income from the use of their books, further action will be necessary at later dates.
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Regulating the Conduct of Medical Device and Drug Manufacturers: Beware the Massachusetts Health Care Practitioner, Life Sciences Alert, by Suzan Onel, Ronda P. Moore. April 22, 2009.
Massachusetts medical device and pharmaceutical companies will soon become subject to the most stringent sales and marketing activity regulation in the country. On July 1, 2009, a Massachusetts regulation entitled, “Pharmaceutical and Medical Device Manufacturer Code of Conduct” goes into effect. The regulation implements a 2008 Massachusetts law that requires companies to report to the state government the value, nature, purpose, and recipient of any payment or economic benefit to a health care practitioner that is valued at $50.00 or more. The regulation also: (1) enumerates prohibited conduct for sales and marketing activities,
(2) mandates that certain gift, payment, and reimbursement activity be conducted under a formal written agreement, (3) requires the adoption of a code of conduct in compliance with the regulation, and (4) requires annual monitoring and certification of compliance. Penalties apply for each transaction that does not comply.
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FDA to Review Classification of 25 Medical Device Categories, FDA Alert, by Suzan Onel, Anthony T. Pavel. April 16, 2009.
The Food and Drug Administration (“FDA” or the “agency”) announced the issuance of an order on April 8, 2009, requiring manufacturers of twenty-five (25) types of Class III preamendment medical devices to submit safety and effectiveness information to the agency by August 7, 2009. Affected device types include cranial electrotherapy stimulators, electroconvulsive therapy devices, intra-aortic balloon and control systems, implantable pacemaker pulse generators, implanted blood access devices, and shortwave diathermy and iontophoresis devices. A complete list appears below. Failure to comply with the FDA order could result in charges of misbranding and possible seizure, injunction, civil penalties, and criminal prosecution. See 74 Fed. Reg. 16214 (April 9, 2009).
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District Court Tightens Requirements for Applying Entire Market Value Rule in Cornell's Patent Infringement Damages Case Against Hewlett-Packard, IP Litigation Alert, by James R. Kyper, Roberto Capriotti. April 16, 2009.
Following a jury verdict in the Northern District of New York awarding to Cornell University patent infringement damages of $184 million, Federal Circuit Judge Rader, sitting by designation as the trial judge, granted Hewlett-Packard’s Motion for Judgment as a Matter of Law and reduced Cornell’s damages award to $53 million. In support of his ruling, Judge Rader found that Cornell’s damages evidence failed to meet the requirements of the Entire Market Value Rule (“EMV Rule”). Specifically, Cornell failed to offer “credible and sufficient economic proof that the patented invention [consisting of processing technology that works within a buffer] drove demand” for the Hewlett-Packard products, namely CPU bricks, that Cornell had identified as the royalty base for its reasonable royalty damages calculation. The result reached by the court in this case suggests a tightened evidentiary approach to the entire market value rule and, if upheld on appeal, this approach may lead to lower patent infringement damage awards where the infringed technology is only a small aspect of the defendant's alleged infringing products.
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Federal Circuit Upholds Three Out of Four Controversial New PTO Rules Aimed at Reducing Application Backlog and Improving Patent Quality, But Litigation Remains Pending, Intellectual Property Alert, by Elaine Y. Chow. March 27, 2009.
On March 20, 2009, the Federal Circuit in Tafas v. Doll ruled 2-1 that three of four controversial new U.S. Patent & Trademark Office ("PTO") rules aimed at reducing the backlog of patent applications and at improving patent quality were within the PTO’s procedural rulemaking authority and valid, thus reversing an earlier district court decision that those rules were improperly substantive and invalid. The court also upheld 3-0 the district court’s finding that one of the rules, which limited continuation and continuation-in-part applications, was inconsistent with 35 U.S.C. § 120 and therefore invalid.
This decision is not the final word, however. The Federal Circuit remanded the case, instructing the district court to determine whether the rules might be invalid based on other grounds. The rules are currently on hold, but patent applicants should continue to monitor the status of this litigation and be aware of the ramifications should the rules ultimately be put into effect.
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Strategies for Managing a Patent Portfolio, The San Diego Daily Transcript, by Stephanie L. Seidman, Ph.D.. March 26, 2009.
Posted with permission.
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Patent Monopolies — Uses and Abuses, European Patent Litigation Alert, by Rebecca Halford-Harrison. January 26, 2009.
The Directorate General for Competition of the European Commission has produced a preliminary report into the €138 billion a year European pharmaceutical sector. Originator pharmaceutical companies, namely those with research and development expenditure in the region of 17% of turnover, are heavily dependent on monopolies created by patents and data exclusivity. Those monopolies are essential to ensure substantial private investment into medicines with such companies stating their main purpose as being to fulfill unmet medical needs. The report also looks at generic companies, namely those manufacturing largely off-patent drugs — many also producing alternative formulations and forms of existing drugs. Litigation between originators and generics has been fierce, not least because the value of winning is so substantial in the battles that are fought. The Commission suggests that there has been significant abuses of the system and uncovered some very unfortunate comments and documents. Unsurprisingly, the report has occasioned a great deal of discussion and debate.
In addition, the Enlarged Board of Appeal of the EPO has issued a decision refusing a patent for an early stem cell technology filed by WARF. The Board's refusal of the application included a finding that the state of the art at the time was that to work the patent would have required the inevitable destruction of human embryos, which was contrary to morality.
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Bell Boyd Elects New Partners, A Bell, Boyd & Lloyd press release, January 26, 2009.
Bell, Boyd & Lloyd has elected six firm associates to partnership. Holby M. Abern (Patents), Timothy J. Grant (Real Estate), Joel C. Griswold (Litigation/Public Law), Abram I. Moore (Litigation), Sven T. Nylen (Bankruptcy) and Kathryn M. Starshak (Intellectual Property) are all resident in Bell Boyd's Chicago office.
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ECJ Reins in Protection for Famous Trade Marks, European Trade Mark Alert, by Dominic J. Bray, Stuart Baker. December 3, 2008.
Last week, in the much anticipated Intel v Intelmark decision, the ECJ dealt a blow to the owners of well known trade marks seeking to prevent dilution of their marks in Europe through unauthorised use by third parties. The attached alert summarises the protection available to 'well known' marks in Europe (and in the UK in particular) , and examines the rationale of the case and the implications for the owners of well known marks.
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What to Do When Your Competitor Gets Software and Business Method Patents, Intellectual Property Memorandum, by Stephen C. Glazier. November 19, 2008.
Recent developments in law and practice have led to a population explosion in patents for software, business processes, and related technology. This has led to the introduction of patents into service industries that never before had patent issues, such as financial services, mortgage banking, investment management, telecommunication services, the software industry itself, and others. With this population explosion of software patents, more competitors are flogging each other with newly-issued software and business method patents, raising for the first time a number of patent questions in industries where patents had not been a concern.
Nine basic questions for defensive patent analysis are presented here, to apply when your competitor gets a problematic patent.
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The Changing Legal Landscape for Intellectual Property, Washington Legal Foundation, by Dick Thornburgh. Fall 2008.
This edition of Washington Legal Foundation's CONVERSATIONS WITH examines the ongoing evolution of intellectual property rights in America's free enterprise system. Former Attorney General of the United States and Pennsylvania Governor Dick Thornburgh leads an informative discussion with Senior Vice President and General Counsel of Eli Lilly and Company, Robert A. Armitage; Executive Vice President, General Counsel, and Secretary of Viacom Inc. Michael D. Fricklas; and Brad Smith, Senior Vice President, General Counsel, Corporate Secretary, Legal & Corporate Affairs for Microsoft.
Posted with Permission. Originally printed in Washington Legal Foundation, Fall 2008 issue. http://www.wlf.org/
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The Federal Court Restructures The Subject Matter Eligibility Test For Process Inventions, Intellectual Property Alert, by Steven M. Bertone, David H. Binney, Stephen C. Glazier, Mark G. Knedeisen. November 5, 2008.
In its recent en banc decision in In re Bilski, the U.S. Court of Appeals for the Federal Circuit attempted to reconcile inconsistencies between its prior decisions addressing the subject matter eligibility constraints for process inventions and Supreme Court precedent. In the Bilski decision, a majority of the Federal Circuit abandoned its prior "useful-concrete-and tangible" test in favor of a new "machine-or-transformation" test gleaned from a trilogy of Supreme Court cases. The machine-or-transformation test requires that the claimed process either (i) is tied to a machine or (ii) physically transform an article or substance to be patent eligible. The majority decision is an apparent attempt to provide an objective, simpler framework for analyzing subject matter eligibility for process inventions, such as business methods and software-enabled processes. The result of the Federal Circuit’s attempt to reconcile the disparate precedents, however, is a test having metes and bounds that are less than clear.
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Patents for Business Methods and Software: In Re Bilski and Patents for Business Methods and Software, Intellectual Property Memorandum, by Stephen C. Glazier. November 2008.
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Farewell to the Point of Novelty Test: The Egyptian Goddess Case Changes the Rules for Design Patent Infringement - Webinar, K&L Gates Webinar, by Andrew L. Reibman, Frederick L. Medlin. October 29, 2008.
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KSR's Unintended Consequences: More Inequitable Conduct Claims in Patent Litigation?, Washington Legal Foundation, by Robert D. Yeager. October 2008.
Posted with permission.
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Model Railroad Case Supports Enforceability of Open Source Software Licenses and Provides Guidance for Licensors, World Intellectual Property Report, by Eric A. Prager, Mark H. Wittow, Jeffrey E. Harmes. October 2008.
Article by Jeff Harmes, Eric Prager and Mark Wittow
The United States Court of Appeals for the Federal Circuit recently issued an opinion that bolsters the enforceability of open source software licenses.
Reprinted with permission.
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Ethical Issues in Everyday IP Practice, by George D. Dickos. September 29, 2008.
Carolinas Patent Trademark Copyright Law Association
Annual Meeting
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Model Railroad Case Supports Enforceability of Open Source Software Licenses and Provides Guidance for Licensors, Licensing and e-Merging Commerce Alert, by Eric A. Prager, Mark H. Wittow, Jeffrey E. Harmes. September 5, 2008.
The United States Court of Appeals for the Federal Circuit recently issued an opinion that bolsters the enforceability of open source software licenses. In Jacobsen v. Katzer, the Court held that a licensor providing free open source software properly can limit the further distribution of the software through terms in the open source software license requiring attribution credits to the original author. The decision is important because the Court held that the party failing to provide credit required under the license violated copyright law.
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Forming a Lasting Bond with Clients, Chicago Lawyer, August 2008.
Chicago Lawyer Magazine has featured Bell, Boyd & Lloyd partner Carol Genis in its August 2008 issue in a profile that begins "When Carol Genis' clients describe her, one word pops up numerous times during each conversation – trust."
Posted with permission
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Bell Boyd Expands Washington Office IP Practice, A Bell, Boyd & Lloyd press release., July 29, 2008.
Benita P. Collier has joined Bell, Boyd & Lloyd (now K&L Gates) as an associate in the firm's Intellectual Property Group resident in the Washington, D.C. office. She joins the firm from the Washington office of Ballard Spahr Andrews & Ingersoll, LLP.
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Bell Boyd Adds Attorneys Across Practice Areas, A Bell, Boyd & Lloyd press release., July 16, 2008.
Bell, Boyd & Lloyd (now K&L Gates) has added attorneys in the firm's Intellectual Property, Labor, Tax and Corporate practice groups. David B. Fournier joins Bell Boyd as a partner in the firm's Intellectual Property Group from Howrey LLP; Melissa A. Siebert returns to Bell Boyd as a partner in the Labor and Employment Group; Sharon L. DeVault comes to the firm from Mayer Brown LLP as a partner in the Estates and Trusts Group; and Brent E. Williams joins as an associate in the Corporate Group from Mayer Brown LLP.
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Managing Risks Associated With IP, 16(7):30, The Metropolitan Corporate Counsel, by Michael H. Brodowski, Ph.D., Mark D. Pomfret, Thomas A. Turano, John E. Edwards. July 2008.
This article reviews the current intellectual property compliance and risk issues that all companies should be aware of. The authors provide an overview that addresses how to manage the risks related to patents, trademarks, copyrights and trade secrets that often arise in a company's business on a regular basis. The article also provides a perspective from both the employment side, where many issues arrive, to the insurance side, where its vital to make sure you have the proper provisions in your coverage.
*Posted with permission
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A Global IP and Business Strategy, Sino-American Pharmaceutical Professionals Association – New England, SAPA-NE 10th Annual Conference 2008, “From Test Tube to Pharmacy Shelf, the Opportunity and Challenges for Biopharmaceutical Industry,”, by Michael H. Brodowski, Ph.D.. June 14, 2008.
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U.S. Supreme Court's Decision Limits Patent Owners from Claiming Infringement by Downstream Customers, Intellectual Property Alert, by Mark H. Wittow, Patrick J. McElhinny, Ellen M. Klann. June 13, 2008.
On June 9, 2008, in Quanta Computer, Inc., v. LG Electronics, Inc., No. 06-937, 553 U.S. ___, the U.S. Supreme Court limited the ability of a patent owner to collect royalties from customers downstream of the patent owner's licensee. In a unanimous opinion delivered by Justice Thomas, the Court reaffirmed and extended the patent exhaustion doctrine, explaining that "that the initial authorized sale of a patented item terminates all patent rights to that item." Rejecting arguments to the contrary, the Court specifically held that the patent exhaustion doctrine may apply to (1) method (process) claims and (2) authorized sales of components that "substantially embody" a patented system even though they must be combined with additional components to practice the patent.
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Patent Commissioner Seeks More Examiners to Cut Backlog, Intellectual Property Alert, by Stephen C. Glazier. May 20, 2008.
Commissioner John J. Doll spoke on Tuesday, May 13, 2008 in our Washington, DC office. Some of the interesting topics related to the backlog of patent applications, the wait time to first actions, the growing annual volume of patent applications, the rate of hiring new patent examiners, the fees of the Patent Office, and the interaction of all these factors.
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K&L Gates Again Recognized as Top Ten Trademark Firm by Intellectual Property Today, May 16, 2008.
For a fifth consecutive year, K&L Gates is ranked among the top 10 law firms in number of trademark registrations issued, according to Intellectual Property Today.
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U.S. Patent Commissioner Speaks: Current Developments in Patents, presented via teleconference, John J. Doll, U.S. Commissioner of Patents, Moderated by Stephen Glazier, K&L Gates Washington DC office.., May 13, 2008.
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Bell Boyd Named #1 in Chicago for Trademarks, A Bell, Boyd & Lloyd press release, April 2008.
Trademark Insider has named Bell, Boyd & Lloyd (now K&L Gates) the #1 Chicago Law Firm and one of the nation's Top 25 Law Firms for achievement in the trademark industry in its 2007 Annual Report. The highly regarded industry publication has also honored Bell Boyd partner Sana Hakim as one of the nation's Top 25 Trademark Attorneys. The Trademark Insider awards annually recognize leading U. S. trademark law firms and individual trademark attorneys.
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2008 Risk Management and Compliance Overview — Key Issues Every Company Needs to Know, K&L Gates Webinar, by Michael H. Brodowski, Ph.D., Mark D. Pomfret, Thomas A. Turano, John M. Edwards. April 16, 2008.
This K&L Gates webinar reviewed the current compliance and risk issues of which all companies should be aware.
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TV Interview about Patents and Shareholder Value, FedEdTV.com, April 2008.
Stephen Glazier discusses patent-related strategies and issues for the IP Communications industry.
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Intellectual Property: Biotechnology Patents, Carnegie Mellon University Tepper School of Business, by Christine R. Ethridge. April 1, 2008.
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Global Green, New Eco-Patent Commons Initiative Provides Incentives for Environmentally Friendly Technology Exchange, A Bell, Boyd & Lloyd alert, March 2008.
A group spearheaded by IBM Corp. has established a forum called the "Eco-Patent Commons" to provide a central repository where companies can donate and view patents that provide "environmental benefits" to the public.
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Bell Boyd Elects 5 Associates to Partnership, A Bell, Boyd & Lloyd press release, January 2008.
Bell, Boyd & Lloyd (now K&L Gates)named five associates to membership in the firm effective January 1, 2008. Heather Boice (Intellectual Property), Jason Engel (Intellectual Property), Dawn Johnson (Litigation), Marcus Lee (Real Estate) and Dan Rosenberg (Litigation) are all resident in Bell Boyd's Chicago office.
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Best Practices for Patent Strategies, K&L Gates presentation, by Stephen C. Glazier. December 3, 2007.
K&L Gates partner Stephen Glazier and others discuss best practices and benchmarks for patent strategies including:
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How many patents to budget for next year and at what costs?
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How many patent litigations, offensive and defensive, to budget for?
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What impact on shareholder value is correlated with a patent program?
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How to handle a patent troll?
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Patent due diligence to change price and terms in M&A.
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How to encourage and compensate inventors?
Speakers include:
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Carmen Adams, Assistant General Counsel, Wachovia
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Moshe Malina, Chief Patent Counsel, Citigroup
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Michael A. Springs, Assistant General Counsel, Bank of America
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Matt Banet, Ph.D., CEO Triage Wireless, Inc., and former CEO, Network Car, Inc.
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USPTO Adopts New Rules for Patent Continuation and Claims Practice, Patents, Trademarks, Copyrights & Related Transactions Alert, by Mark G. Knedeisen, Ellen M. Klann. September 11, 2007.
The U.S. Patent and Trademark Office (“USPTO”) recently published final rule changes that restrict the number of continuation applications that may be filed based on an initial patent application and the number of claims that may be concurrently presented for one invention. The effective date of the rules is November 1, 2007. The new rules are complex and very detailed. The impact of these rules on your patent portfolio and its strategic development will be known only after a review of the portfolio. To determine whether any action should be taken now, you are encouraged to contact your K&L Gates lawyer so that we can help you navigate the new rules and advise you with respect to your particular patent portfolio.
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15 New Associates Join Bell Boyd, A Bell, Boyd & Lloyd press release, September 2007.
Bell, Boyd & Lloyd LLP (now K&L Gates) welcomes 15 new first year associates to the firm, in both the Chicago and Washington, D.C. offices. They join practice groups throughout the firm, including Antitrust, Bankruptcy, Corporate, Intellectual Property, Litigation and Real Estate.
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KSR Int’l Co. v. Teleflex Inc.: The United States Supreme Court Strikes Down The Federal Circuit's Application of Patentability Standards, Patents, Trademarks, Copyrights & Related Transactions Alert, by Christopher G. Wolfe. May 2007.
This Alert is a brief description of the recent Supreme Court decision in the KSR case as well as the USPTO's initial reaction to it.
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KSR International Co. v. Teleflex Inc., The Supreme Court Rejects the Federal Circuit's Test for Obviousness, A Bell, Boyd & Lloyd alert, May 2007.
In a major new patent law decision, the Supreme Court unanimously rejected the Federal Circuit's rigid application of its "teaching-suggestion-motivation" test for obviousness challenges to patent validity, holding that it is contrary to the patent statute and Supreme Court precedent. The ruling could have far reaching effects, both for litigation and patent prosecution before the U.S. Patent and Trademark Office, in that it may prove to be easier to show that an invention is not patentable.
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Federal Circuit Eliminates Test for Declaratory Judgment Jurisdiction in Patent Infringement Case, A Bell, Boyd & Lloyd alert, March 2007.
The United States Court of Appeals for the Federal Circuit appears to have expanded the scope of declaratory judgment jurisdiction in a patent infringement case.
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Bell, Boyd Elects Associates to Partnership, A Bell, Boyd & Lloyd press release, January 2007.
Bell, Boyd & Lloyd LLP (now K&L Gates) has elected fourteen of the firm's associates to partnership effective January 1, 2007. Twelve of the associates are resident in the Chicago office and two are resident in Washington DC.
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A Comprehensive Conference on Mastering Complex IP Transactions, Strategies for Mutually Successful Deals, presented at LSI Complex IP Transactions Conference, by Marc S. Martin. October 16, 2006.
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False Advertising Under the Lanham Act, presented at PBI’s Legal Issues in Advertising, by Franklin B. Molin. June 6, 2006.
This presentation discusses the role the Lanham Act—which contains the federal statutes governing trademark law in the United States—in false advertising.
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Preston Gates Ellis & Rouvelas Meeds 2005 Annual Highlights, Preston Gates & Ellis Publication, March 28, 2006.
Click above to download the Preston Gates Ellis & Rouvelas Meeds 2005 Annual Highlights brochure.
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Let’s Play “Name that Security Violation!”, Preston Gates & Ellis Electronics in Commerce Alert, by Holly K. Towle. February 10, 2006.
The idea of requiring security protections for data relating to individuals is now upon us, but its scope is often unknown and perhaps unknowable by ordinary businesses.
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Merger & Acquisition Due Diligence in an E-Information Age, Preston Gates & Ellis Electronics in Commerce; Telecom and Media; and Intellectual Property Transactions Alert, by Holly K. Towle. September 26, 2005.
Doing any part of business electronically is increasingly impacted by legal developments. This Alert is one in a series from our Electronics in Commerce group intended to increase awareness of new or changing legal rules.
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Preston Gates & Ellis Welcomes Patent Litigator Stephen Everett, Former Limbach & Limbach Partner Joins Growing Patent Litigation Practice, September 7, 2005.
Stephen Everett has joined Preston Gates & Ellis LLP's San Francisco office as a partner in the firm’s patent litigation practice.
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Employment Law - Taking a Fresh Look in the E-Information Age, Preston Gates & Ellis Electronics in Commerce and Intellectual Property Transactions Alert, by Holly K. Towle. August 4, 2005.
Doing any part of business electronically is increasingly impacted by legal developments. This Alert is one in a series from our Electronics in Commerce group intended to increase awareness of new or changing legal rules.
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Proliferation of Information Security Breach Notification Statutes, Preston Gates & Ellis Electronics in Commerce and Intellectual Property Transactions Alert, by Holly K. Towle. July 21, 2005.
Doing any part of business electronically is increasingly impacted by legal developments. This Alert is one in a series from our Electronics in Commerce group intended to increase awareness of new or changing legal rules.
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In Grokster The Supreme Court Reinstates Infringement Claim While Performing a Balancing Act, Copyrights Alert, by David J. Byer. July 2005.
In one of its last decisions of the term, the United States Supreme Court reinstated the entertainment industry's copyright infringement lawsuit against two companies that provided users with file sharing software. The following client alert looks at this high-profile case and explains how the Court reached its decision and the effect the decision may have on content providers and technology companies.
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Summary of the Supreme Court’s Decision in Metro-Goldwyn-Mayer v. Grokster, presented at Strafford Legal Publishing Conference, by Franklin B. Molin. July 2005.
The paper is a summary of the Supreme Court's decision and the two concurring opinions in MGM v. Grokster.
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The Grokster Decision: U.S. Supreme Court Rules Companies Promoting Infringing Uses of a Product or Service as Principal or Primary Use are Liable for Copyright Infringement, Preston Gates & Ellis Telecom and Media, Intellectual Property Transactions and Intellectual Property Litigation Alert, by Mark H. Wittow. June 27, 2005.
The U.S. Supreme Court’s decision today in Metro Goldwyn Mayer Studios v. Grokster, Ltd., vacates the Ninth Circuit’s determination that the operators of peer-to-peer (P2P) file-sharing technology services were not contributorily liable for copyright infringement by users of their technology because the P2P technology also was capable of substantial non-infringing uses. Today’s decision also clarifies the Supreme Court’s landmark decision in Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984) (Sony-Betamax), which determined that the maker of a product "capable of substantial non-infringing uses" was not liable for contributory copyright infringement.
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Digital Signatures: Searching for a “Safe” Electronic Signature, Preston Gates & Ellis Electronics in Commerce and Intellectual Property Transactions Alert, by Holly K. Towle, Carrie T. Valladares. June 9,2005.
Last month, our Electronics in Commerce group issued an E-alert discussing some of the issues surrounding electronic signatures (see http://beta2.klng.com/newsstand/Detail.aspx?publication=3304). That prompted several questions regarding electronic signatures supported by public key infrastructure (PKI), which are commonly referred to as "digital signatures." Carrie Valladares, an attorney in our group, volunteered to tackle that subject this month. After this E-alert, we’ll eschew electronic signatures for awhile!
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Broadband over Power Line, Electricity Journal, by Martin L. Stern, Scott L. David, Holly K. Towle. June 2005.
A three-article series.
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Electronic Signatures — Increasing Use Means Increasing Questions, Preston Gates & Ellis Electronics in Commerce, Telecom and Media, and Intellectual Property Transactions Alert, by Holly K. Towle. May 9, 2005.
Doing any part of business electronically is increasingly impacted by legal developments. This E-Alert is one in a series from our Electronics in Commerce group intended to help you avoid running afoul of new or changing legal rules.
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On Trademark and Copyright, Northern California Association of Business Trial Lawyers Journal, by Kathryn M. Wheble. Spring 2005, 2006, 2007, 2008 (Annual Column).
A lucrative practice for online networks is the sale of keywords, which when typed into a search engine will bring up the purchaser's Web site. This practice of selling trademark words has become very controversial, with trademark owners crying foul and seeking legal remedies. Posted with permission.
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Open Source Issues in Business, Preston Gates & Ellis Publication, by Holly K. Towle. April 1, 2005.
Open source software presents issues of increasing significance for businesses. If you are not already familiar with these issues and your business is using or considering the use of open source software, it’s time to take note. This article analyzes considerations that businesses should keep in mind when deciding whether to use this type of software. As with any licensed technology, open source is governed by the terms of the open source license. Actively copying, modifying, developing products with, or distributing open source software without understanding those terms can jeopardize a company’s business endeavors. On the other hand, businesses that take the time to research and investigate open source licensing models and that are familiar with the issues described in this article are more likely to be successful in deciding whether and when to use open source.
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Intellectual Property Issues in Open Source Software, Open Source Software Licensing, by Franklin B. Molin. March 10, 2005.
This article outlines how copyright law provides the foundation for open source concepts and identifies copyright, patent, trade secret, and constitutional issues in open source software.
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Getting to "Yes" in an Electronic Age, Preston Gates & Ellis Electronics in Commerce, Telecom and Media, and Intellectual Property Transactions Alert, by Holly K. Towle. January 24, 2005.
Doing any part of business electronically is increasingly impacted by legal developments. This E-Alert is one in a series from our Electronics in Commerce group intended to help you avoid running afoul of new or changing legal rules.
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Information Security Statements Can Become Obligations, Electronics in Commerce Practice Group E-News, by Holly K. Towle. December 9, 2004.
Doing any part of business electronically is increasingly impacted by legal developments. This alert is one in a series from our Electronics in Commerce group intended to help you avoid running afoul of the new legal rules.
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Court strikes infringement of attorney-client privilege, Mass High Tech, by Thomas F. Holt, Jr., Joyce C. Hersh. October 11-17, 2004.
This article discusses the implications of a recent Federal Court rejection of earlier cases that required an accused patent infringer to get an opinion of counsel that its products do not infringe and then turn that opinion over to the court to avoid a ruling of willful infringement. Posted with permission.
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Patent Pending: Structured Products Patents as a Profit Center for Financial Dealers, Structured Products Association Newsletter, by Stephen C. Glazier. Fall 2004.
Now that new types of investment contracts are patentable, the securities industry is adopting business practices that are long-established in manufacturing industries that patent their new products. This includes the use of both offensive and defensive patent-oriented procedures prior to the offer of new investment products.
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K&L Continues Bay Area Growth with Addition of Trademark Partner, Kathryn Wheble, May 26, 2004.
K&L continues its growth in Northern California with the addition of Kathryn (Kate) Wheble, a versatile copyright and trademark partner.
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Back to the Future: Ninth Circuit Directs Courts Back to Likelihood of Confusion Standard to Determine Whether Internet Advertising Keyed to Trademarks is Infringement, Trademark Update, by Kimberley J. Geary, Jeffrey Gitchel. February 2004.
This is an alert discussing a recent decision by the Ninth Circuit that suggests what may be a shift in the law regarding advertising over the internet.
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Dealing with Possible "Open Sores" of Open Source Software, Information Technology Alert, by Bruce H. Nielson. February 2004.
More and more businesses and other entities are turning to Linux and other open source software programs for a variety of reasons, including cost, control and security. Companies using or considering using Linux or other open source software should be aware of -- and may want to take steps to protect against -- the risk of being sued for copyright or other intellectual property infringement relating to Linux or other open source programs. That risk, which until recently may have been deemed remote, has increased significantly because of lawsuits the SCO Group has brought against IBM and Novell, and because of the SCO Group's threats to bring similar actions against other Linux users.
K&L has prepared an Alert that gives a brief overview of contractual and other protections companies may want to implement, or make sure they already have in place, against claims of copyright or other intellectual property infringement relating to their use of Linux and other open source software programs.
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Congress Passes New Anti-Spam Legislation, K&L Alert, by Henry L. Judy, Melanie H. Brody, Marc S. Martin, Angela Ball. December 2003.
This Alert gives an overview of the recently passed Controlling the Assault of Non-Solicited Pornography and Marketing Act (the "CAN-SPAM Act of 2003" or "Act"), which became effective January 1, 2004.
A key effect of the Act is the establishment of criminal and civil penalties for senders of "spam," or unsolicited commercial email messages, using deceptive or misleading tactics. Additionally, over a two-year period following enactment, the Federal Trade Commission ("FTC") is required to issue various regulations and recommendations to implement and interpret the Act. The Act also authorizes the Federal Communications Commission ("FCC") to adopt rules to protect subscribers to wireless services such as cellular and Blackberry from receiving unwanted commercial emails.
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K&L's Michael S. Greco and R. Charles Miller Elected to the American Law Institute, November 24, 2003.
K&L partners Michael S. Greco and R. Charles Miller have been elected to the American Law Institute (ALI). Their election brings the number of K&L’s active members in ALI to 21.
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Kirkpatrick & Lockhart’s New York Office Welcomes Intellectual Property Partner, October 17, 2003.
K&L is pleased to announce that Anthony H. Handal has joined K&L as a partner in the New York office. With the addition of this distinguished intellectual property practitioner, K&L adds an important new discipline to its growing New York office.
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Court Considers Copyright Extension, Mass High Tech, by Thomas F. Holt, Jr., Tara C. Clancy. October 14, 2003.
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The "New" Trademark Registration - Simplifying International Trademark Protection for U.S. Trademark Owners, Trademarks Update, by Franklin B. Molin, Kimberly L. Nash. October 2003.
This K&L Update discusses the adoption and implementation by the U.S. of the Madrid Protocol, which is a multi-national treaty that allows U.S. entities to file for and obtain a single international registration for a trademark in up to 58 other countries. The applications can be filed starting November 2, 2003, so it is timely to consider whether an international registration would be the best protection for a trademark.
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Make Them Prove It, Natural Products Industry Insider, by Robert E. Feyder, Matthew G. Ball. September 15, 2003.
This article reviews strategies for makers and sellers of dietary supplements facing private attorney general claims under California's Unfair Competition Law, Business & Professions Code Section 17200, et seq. and Section 17500, et seq. Posted with permission.
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California Privacy Law Sets Highest Information Protection Standard Yet, Privacy & Information Management Alert, by Melanie H. Brody, Laura A. Johnson. August 2003.
This alert discusses the newly enacted California Financial Information Privacy Act, which sets the highest financial privacy standard in the nation because of its establishment of an opt in standard for the sharing of nonpublic personal information with nonaffiliates.
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California Privacy Law Sets Highest Information Protection Standard Yet, Mortgage Banking Commentary, by Melanie H. Brody, Laura A. Johnson. August 2003.
This alert discusses the newly enacted California Financial Information Privacy Act, which sets the highest financial privacy standard in the nation because of its establishment of an opt in standard for the sharing of nonpublic personal information with nonaffiliates.
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New Law Requires Businesses in California to Report Electronic Break-Ins, Preston Gates & Ellis Technology - Intellectual Property Department E-News., July 3, 2003.
In the wake of a security breach at one of its own data centers, the State of California has enacted legislation that requires businesses to disclose computer security breaches. The stimulus for the legislation occurred in April 2002, when California's Steven P. Teale data center in Rancho Cordova suffered a security breach of the state's payroll application system, resulting in the compromise of confidential information, including names, social security numbers, and payroll information, of over 250,000 state employees. Although the breach was discovered by the State Controller's office on May 7, the affected employees and public were not notified about the attack until May 24, thereby leaving the state employees' information open to misuse for weeks.
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Cruz v. PacifiCare Health Systems: The California Supreme Court's Decision on Section 17200 Arbitration has Something for Everyone…to Dislike, California Litigation Alert, by Matthew G. Ball. July 2003.
This Alert summarizes the positive and negative impacts on plaintiffs and defendants that a recent California Supreme Court decision has created with regard to the requirements for a "private attorney general" to arbitrate a claim brought under California Business and Professions Code Section 17200.
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New California Law Requires Disclosure of Security Breaches, Privacy & Information Management Alert, by Jonathan D. Jaffe, Benjamin Hayes, Jeffrey Ritter. July 2003.
A new California law requires any business "doing business" in California that experiences information system security breaches containing personal information to give notice of that event to affected California residents under certain circumstances. The law presents significant challenges and compliance is not easy to implement. This Client Alert summarizes the new law, its applicability and suggests a range of compliance strategies. The Alert is relevant both with respect to consumers and employees.
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Kirkpatrick & Lockhart Partner Jerry S. McDevitt Profiled in National Law Journal's Annual "Winning" Section, June 3, 2003.
Jerry S. McDevitt has been profiled by The National Law Journal ("NLJ") in its annual "winning" feature describing the accomplishments of ten of the top trial lawyers in the country. McDevitt was chosen because of his established record of obtaining favorable jury verdicts during his career.
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Revised UCC Articles Erect New Hurdles for E-Commerce, Legal Backgrounder, Washington Legal Foundation, by Holly K. Towle. May 9, 2003.
Holly Towle, a partner in the Preston Gates Seattle office, recently published this article with the Washington Legal Foundation. Following is an excerpt, please use the link below to access the entire article. Posted with permission.
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Telemarketing: The FTC's Nationwide Do-Not-Call Registry, Mortgage Banking Alert, by Melanie H. Brody. May 2003.
On January 29, 2003, the Federal Trade Commission published an extensive set of amendments to its Telemarketing Sales Rule. The linchpin of the amendments is a new, nationwide do-not-call registry that will enable consumers to register their phone numbers in a national database of telephone numbers that most telemarketers will be prohibited from calling. On April 3, 2003, the FTC announced that the do-not-call registry requirements will become effective on October 1, 2003. Accordingly, all covered parties will need to access the registry for the first time between September 1 and September 30, 2003. This Alert summarizes the do-not-call registry requirements.
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Three New Cases Assist With Defense of Section 17200 Suits, Daily Journal, by Matthew G. Ball. April 18, 2003.
This article focuses on California's Unfair Competition Law, California Business and Professions Code Section 17200.
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California Legislators Introduce a Plethora of Proposed Amendments to the Unfair Competition Law (B&P §§ 17200, et seq.), California Litigation Alert, by Matthew G. Ball. April 2003.
This Alert introduces proposed amendments seeking to alter the UCL in significant ways.
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The Law of Electronic Commercial Transactions, published by A.S. Pratt & Sons, by Holly K. Towle. March 19, 2003.
This book is an "information rich" treatise that is part of the Pratt & Sons respected series on U.S. commercial law.
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Top 10 Legal Issues in Technology, Ecommerce, and Information Management Outsourcing Agreements, ACCA Docket, by Bruce H. Nielson, Martin Byrne. February 2003.
This article discusses the legal issues surrounding the use of outside vendors for technology services. Posted with permission.
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Content Owners, Open-Access Camp On To Next Round, The Boston Globe, by Thomas F. Holt, Jr.. January 19, 2003.
This article discusses the U.S. Supreme Court’s ruling that Congress did not Copyright Term Extension Act, which extends the term of copyright protection for both new and existing copyrights for 20 years.
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California Legislature to Amend the Unfair Competition Law (B&P §§ 17200, et seq.) in Wake of Publicized Private Attorney General Abuses, California Litigation Alert, by Matthew G. Ball. January 2003.
This Alert analyzes recent proposed amendments to California's Unfair Competition Law -- especially its "private attorney general" features.
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Conflict Over Copyright Extension Will Only Deepen, The Boston Sunday Globe, by Thomas F. Holt, Jr.. November 17, 2002.
This article discusses the extent to which Congress can extend the term of copyright protection.
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Records Management of E-Mail by Securities Firms: Legal Compliance Technology Issues, Wall Street Lawyer, by Henry L. Judy, Benjamin Hayes. October 2002.
This article discusses the legal issues faced by securities firms in regards to retaining and organizing their e-mail communications.
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Large and Small Business Owners Take Note: ‘Private Attorney General’ Actions Under California’s Unfair Competition Law, California Litigation Update, by Robert E. Feyder, Matthew G. Ball, Jonathan Cohen, Dylan B. Carp. September 2002.
Discusses the "private attorney general" provisions of California's Unfair Competition Law, codified as Section 17200 of California's Business and Professions Code, which allows private plaintiffs to bring actions on behalf of the general public seeking restitution and injunctive relief, even if the "private attorney generals" themselves have suffered no injury. This Update also discusses limitations and available defenses to suits brought under the "private attorney general" provisions of Section 17200.
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Congress Declares War on Illegal Hacking by Joining the Crowd, The Internet Lawyer, September 2002.
The article discusses the Peer-to-Peer Piracy Prevention Act (HB 5211). This controversial proposal would make it legal for copyright holders to hack into, disrupt and even disable peer-to-peer networks on which their protected materials are being illegally traded. The bill enjoys the backing of the Motion Picture Association of America and the Recording Industry of America.
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Don't Tread on Me - Spammers Beware, E-Commerce Law Report, by Paul W. Sweeney, Jr.. July 2002.
Discusses the nature and increased number of suits being filed in California against e-mail "spammers" and distributors of unwanted advertising.
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Posting a Web Site is Publication, U.S. Court Rules, The National Law Journal, by Franklin B. Molin. May 13, 2002.
The article is about the publication of works under copyright law, and specifically discusses the recent Getaped.com v. Cangemi case, which held that posting a web page on the internet constitutes publication of that web page under the copyright laws.
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Don’t Tread on Me-Spammers Beware, California Litigation Alert, by Paul W. Sweeney, Jr.. April 2002.
Discusses the nature and increased number of suits being filed in California against e-mail "spammers" and distributors of unwanted advertising.
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Blocking Incoming E-Mails and Internet Postings-The Empire Strikes Back, E-Commerce Law Report, by Paul W. Sweeney, Jr.. February 2002.
Recaps two significant California court rulings concerning the availability of remedies for employers when their internal corporate e-mail systems and Internet message boards are besieged by incoming e-mails and postings by disgruntled former employees.
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The New Technologies of Customer Identification (Part 1), Currents, a publication of the National Society of Compliance Professionals, by Diane E. Ambler, David Mishel, Jeffrey Ritter. January/February 2002.
The USA PATRIOT Act requires that the Secretary of the Treasury to issue regulations by October 26, 2002, imposing "know your customer" procedures for financial institutions, including broker-dealers, to follow in opening customer accounts. This article introduces some of the questions these new requirements raise about what technologies may be required for use and the increased attention to customer identification and record keeping procedures.
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Should the Beamer Foundation own ‘Let’s Roll’?, CNN Talkback Live, by Thomas F. Holt, Jr.. January 31, 2002.
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End Game: The Ex Parte Seizure Process and the Battle Against Bootleggers, Vanderbilt Journal of Entertainment Law & Practice, by Mark A. Rush, Lucas Paglia. Winter 2002.
This article discusses the growing problem of trademark counterfeiting in the sports and entertainment industries, particularly live events, and the ex parte seizure process as an effective weapon in the fight against counterfeiting.
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Blocking Incoming E-Mails and Internet Postings-The Empire Strikes Back, California Employment Law Alert, by Paul W. Sweeney, Jr.. January 2002.
Recaps two significant California court rulings concerning the availability of remedies for employers when their internal corporate e-mail systems and Internet message boards are besieged by incoming e-mails and postings by disgruntled former employees.
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Publish or Perish, The National Law Journal, by Franklin B. Molin, Jesse Busch. December 24, 2001.
This article describes how Section 303 of the Copyright Act includes an incentive for the copyright holders of certain older unpublished works whose authors died before 1977 to publish those works before the end of 2002.
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Balancing Privacy, Public Safety and Network Security Concerns Under the USA PATRIOT Act of 2001, K&L Alert, by Mark A. Rush, Lucas Paglia. November 2001.
This article summarizes the most significant, salient features of the PATRIOT Act as they relate to computer network integrity and the prevention of cyberterrorisum; discusses various business, legal and practical issues that private industry is likely to face in the coming months and years under the Act; explores the ways in which businesses can ensure full comprehension of and compliance with the PATRIOT Act's many provisions and mandates; and concludes with a discussion of the many federal resources available to businesses as they prepare to address the concerns noted above arising from passage of the Act.
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New Identity Theft Law Limits Use of Social Security Numbers, Mortgage Banking Commentary, by Jonathan D. Jaffe. October 17, 2001.
Summarizes a new identity theft bill that was recently signed into law in California. Senate Bill 168 limits the ability of a business to use social security numbers for purposes of identifying customers in California. These new limitations may impact some lenders' bill and receipt practices and Internet operations.
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Bracing to Do Battle with Squatters in New Domains, Mass High Tech, by Thomas F. Holt, Jr.. October 9, 2001.
This article discusses the implications of the creation of the new .biz and other domain names for trademark holders.
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Top Ten Legal Issues in Outsourcing Contracts for Technology, TheBankingChannel, by Bruce H. Nielson. September 10, 2001.
Despite recent changes in the economy--and perhaps because of them--many companies are relying on outside vendors to provide e-commerce and technology services. In this article, we present a "Top 10" list of legal issues to be considered for outsourcing contracts in e-commerce and technology
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Preventing, Investigating and Prosecuting Computer Attacks and E-Commerce Crimes: Public/Private Initiatives and Other Federal Resources, Published as a two-part article in e-Business Law Bulletin & White-Collar Crime Reporter, by Mark A. Rush, Lucas Paglia. August/September 2001; July/August 2001.
This article is the first of a two-part series discussing the growing phenomenon of cyber-crime and resources to fight it. In the first part, the authors discuss the growth of e-commerce and its susceptibility to attendant network service disruptions resulting from hacker attacks, economic espionage, and other causes. They then provide an overview of developing statutory law aimed at punishing cyber criminals and maintaining network integrity. In the second part, the authors examine various cooperative efforts between the public and private sectors designed to aid business owners in the battle against cyber-crime. The focus here is on prevention and early detection, as well as aggressive prosecution of e-commerce and related crimes. The authors provide a case study for how a typical twenty-first century business owner may respond to a computer attack.
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Legal Battles Over File Swapping Rage On, Mass High Tech, by Jeffrey L. Snow. July 9 2001.
Discussion of copyright infringement lawsuits filed between AbovePeer, Inc. and a number of recording industry companies over AbovePeer's Internet file-swapping service called Aimster, following the analogous legal battle about Napster.
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Federal Court Halts Attempted Extension of False Implied Endorsement Doctrine, Vol. 21, Advertising Compliance Service, by David S. Versfelt. June 18, 2001.
This article reports on a ruling of the U.S. Court of Appeals for the Second Circuit affirming summary judgment under the Federal Lanham Act against a vocal performer who challenged an advertisement because it included a recording of the performer as background music. Claims asserted by the performer were dismissed for possible refiling in state court because after entry of the summary judgment there was no further Federal jurisdiction.
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U. S. Supreme Court Holds That Electronic Databases Infringe Copyrights of Freelance Authors, e80 Newsletter, by Franklin B. Molin. June 2001.
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Second Circuit Ends Vocal Performer's Federal Challenge to Advertising, Libel Defense Resource Center LibelLetter, by David S. Versfelt. June 2001.
This note reports on a decision of the United States Court of Appeals for the Second Circuit affirming dismissal of a vocalist's claim under the Lanham Act for alleged misuse of a recording in an advertisement.
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Top Ten Legal Issues in Technology and E-Commerce Outsourcing Contracts, E-Commerce Alert and (Mortgage Banking Alert - 7/9/01), by Bruce H. Nielson. May 2001.
This alert is an overview of major issues to consider in drafting and negotiating technology outsourcing contracts.
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E-Sign Act Prompts Beginning of Transition to ‘Cyberdeals, Boston Business Journal, by Thomas F. Holt, Jr., Tracy Thomas. April 27, 2001.
A commentary on some of the issues that have arisen in the early days of the federal e-signature law.
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What Happens When Transactional Websites Go Down?: Understanding and Avoiding the Consequences of Website Outages for Online Brokerages, CyberSecuritiesLaw, by Bruce H. Nielson, Ivan Knauer. April 9, 2001.
This article reviews a recent case in which the NYSE fined an on-line brokerage for the repeated unavailability of its trading website over a period of time. The article addresses the securities laws governing the operation of on-line trading websites and provides suggestions on how businesses can use technology and insurance and contractual provisions to protect against and avoid losses from unplanned website outages.
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Insurance Law: Coverage for E-Commerce Risks, California Lawyer, by David P. Schack. April 2001.
This article discusses the risks to businesses engaging in e-commerce, the availability of coverage for those risks under a traditional CGL policy and the new insurance products available to cover the e-commerce risks.
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Emerging Trends in International Privacy Law, Emory International Law Review, by Henry L. Judy, Benjamin Hayes, Jeffrey Ritter. April 1, 2001.
The heart of this paper is the fundamental design issue that is faced by all global corporations -- what data protection compliance model to use.
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Web Site Outages and Online Brokerages: Don't Talk the Talk if You Can't Walk the Walk, Electronic Banking Law and Commerce Report, by Bruce H. Nielson. April 2001.
This article reviews a recent case in which the NYSE fined an on-line brokerage for the repeated unavailability of its trading website over a period of time. The article addresses the securities laws governing the operation of on-line trading websites and provides suggestions on how businesses can use technology and insurance and contractual provisions to protect against and avoid losses from unplanned website outages.
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U.S. Supreme Court Mulls the Right of Freelance Authors to Be Compensated for Electronically-Published Works, e80 Newsletter, by Franklin B. Molin. April 2001.
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Between a Rock and an Unsafe Harbor-Options for Compliance with the EU Data Protection Directive, Electronic Banking Law and Commerce Report, by Henry L. Judy, Benjamin Hayes. March 2001.
This article describes the various options that U.S companies have for compliance with the Data Protection Directive of the European Union and assesses the advantages and disadvantages of each. It suggests that, in general, a contractual model based on notice and consent of the data subject is more advantageous than the Safe Harbor.
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Standard Contract Clauses under the EU Data Protection Directive, Electronic Commerce Alert, by Henry L. Judy, Benjamin Hayes, Jeffrey Ritter. February 26, 2001.
This alert outlines a "clear and present danger" to any company that transfers personal information from Europe to the U.S. or other countries. The European Union appears poised to try to force businesses to use a set of onerous standard contract clauses that extends the scope of the Data Protection Directive and the power of the Data Protection Authorities. The alert examines the issue and provides companies with legal arguments for disputing the proposed action.
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Media Law Roundup--Copyrights and Trademarks, Prepared for the 9th Annual Media Lawyers Conference, by Franklin B. Molin. January 30, 2001.
An outline review of selected recent developments in copyright and trademark law of interest to the print media industry.
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The ABA’s Project on Jurisdiction and the Internet: Banking and Payment Systems, Electronic Banking Law and Commerce Report, by Henry L. Judy. December 2000/January 2001.
The American Bar Association published an extensive report on the law jurisdiction in cyberspace, both generally and as it applies in various specific areas such as securities, telemedicine, and taxation. This article briefly describes the overall report and describes in some detail the sections of the report dealing with Banking and Payment Systems. The authors were co-chairs of the Working Group that prepared the Banking and Payment Systems sections.
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The Regulation of Online Profiling, Electronic Commerce Update, by Thomas F. Holt, Jr.. September 2000.
This article describes the FTC's recent endorsement of certain regulations for online profiling. It applauds the industry's self-regulation until this point but urges legislative action enforcing that regulation.
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FTC Issues Guidelines for Advertisements and Disclosures in the E-Marketplace, The Metropolitan Corporate Counsel, by Thomas F. Holt, Jr.. September 2000.
This article is a summary of the Federal Trade Commission's recently issued guidelines on appropriate advertisements and disclosures in the world of online retail.
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The Children's Online Privacy Protection Act, San Diego Daily Transcript Law Journal, by Dirk Michels. September 2000.
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Protecting Trade Secrets From Dumpster Divers and Other Snoops: The Law Protects Those That Protect Themselves, Mealey’s Litigation Report: Intellectual Property, by Mark A. Rush, Mark D. Feczko, Thomas Manganello. August 7, 2000.
This article highlights the need for corporations with proprietary and trade secret information to zealously guard their secrets by adequately securing their trades secrets at the office and beyond. The article also recommends certain practices for trade secret holders to consider in guarding the secrecy of their information.
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Electronic Signatures in Global and National Commerce Act, Mortgage Banking Commentary, by Eric J. Edwardson. July 11, 2000.
Discusses the recently enacted federal E-SIGN Act, highlighting its application to mortgage lending activities.
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When Is Infringement of Corporate Names Covered by Insurance?, Journal of Insurance Coverage, by Philip H. Hecht. Summer 2000.
Insurance coverage disputes concerning copyright and trademark infringement claims have become increasingly common in the courts. This article explains that alleged infringement of even a single-word title or slogan may be covered if the title or slogan connotes a substantive quality about a product or service.
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Guidelines Established to Protect Firms from 'Cybersquatters', Boston Business Journal, by Thomas F. Holt, Jr.. June 30, 2000.
This article describes the practical problems posed by cybersqatters and the remedies afforded by the Anticybersqatting Consumer Protection Act. It is written in "non-legalese" and is targeted at the business community in the New England region.
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Copyright and Trademark Compliance on the Web: Are Device Makers Vulnerable?, Medical Device and Diagnostic Industry Magazine, by Suzan Onel. June 2000.
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Electronic Publishing Rights in Freelance Material - Publishers Beware!, Media Law Update, by Franklin B. Molin, Thomas Manganello. June 2000.
This article discusses the impact of the Tasini case, which found that publishers of freelance articles do not have the right to subsequently license such works to electronic databases. Publishers are encouraged to obtain "electronic publication rights" when negotiating with freelance writers.
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Recent Developments in European e-Commerce Law, San Diego Daily Transcript Law Journal, by Dirk Michels. May 2000.
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Protecting the Open Seas: Fighting Cyberpiracy, Cyberspace Lawyer, by Mark A. Rush, jeffrey Gitchel. March 2000.
The article discusses cybersquatting generally and focuses on possible criminal sanctions for such illegal activity. The article includes an analysis of several possible "traditional" crimes that may fit the bill, including extortion and wire fraud.
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Protecting Your Computer Systems: The Federal Response, Cyberspace Lawyer, by Mark A. Rush, Lucas G. Paglia. September 1999.
This article describes resources the federal government has made available to the private sector to aid in the fight against unauthorized computer system intrusions. After discussing the disturbing growth of economic espionage and its effects on an increasingly wired business environment, the authors set forth various legislative and executive branch responses, including Congress's passage of the Economic Espionage Act, the President's creation of the National Infrastructure Protection Center, and the federal government's funding and oversight of Carnegie Mellon University's Computer Emergency Response Team Coordinator Center. Kirkpatrick & Lockhart LLP can assist in taking advantage of these invaluable resources as this battle intensifies.
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Two Legal Developments That May Determine the Future of Gaming Advertising, Advertising Compliance Service, by David S. Versfelt. July 5, 1999.
This note reports on a federal study and a decision of the Supreme Court of the United States to evaluate their respective effects on development of gaming advertising.
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“Copyright and Trademark Compliance on the Web: Is your Association Vulnerable?, Association Law and Policy Newsletter, by Suzan Onel. April 1999.
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Understanding Basic Copyright Law, Practicing Law Institute, 1997.
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Domain Name Protection and Trademark Infringement on the Internet, Practicing Law Institute, 1996.
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Developments Relating to Investment Companies, Banks, and Mutual Funds, Bankers Magazine, by Diane E. Ambler. Mar-Apr 1995.
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Developments in Cyberspace: Copyright and Trademark the Internet, Practicing Law Institute, 1995.
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The Right of Privacy for Business Entities, Santa Clara Law Review, by David P. Schack. 1984.
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