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Litigation of IP (Copyrights, Patents or Trademarks) Lawsuits: sometimes, it is not about the Technology or the Experts, but a simple Motion to Stay and Change Venues!

So, very recently, I was involved in a very heated and contentious Intellectual Property (“IP”) dispute with both sides taking entrenched positions.  Some abstract concepts were involved and there were

Apple’s new product venture-smart headphones and patents on headphones! What are they?

Apple has filed patents for smart headphones that play music you want based on your mood, feelings, heart rate, sweat, and your exercise routines. When you lift weights and are

Design Patents-What are they? Are they worth getting?

Design Patents are a form of patent that covers the nonfunctional creative and design aspects of a product. They are valid and can be used to exclude others from practicing

Copyright Infringement, Misappropriation of Likeness, violation of the Illinois Right of Publicity Act and DMCA Take Down Requests-Oh My!

In many cases involving the use of a photograph concerning the image or likeness of a person, there are multiple methods of seeking a removal and seizure of the photographs.

Understanding Trademark Trials and Appeals Board Proceedings: Trademark Cancellation and Opposition Practice!

The United States Patent and Trademark Office (“USPTO”) has a Trademark Trials and Appeals Board (TTAB) that allows individuals to contest and oppose the rights of Trademark Applicants and Holders.

Litigation of IP (Copyrights, Patents or Trademarks) Lawsuits: sometimes, it is not about the Technology or the Experts, but a simple Motion to Stay and Change Venues!

So, very recently, I was involved in a very heated and contentious Intellectual Property (“IP”) dispute with both sides taking entrenched positions.  Some abstract concepts were involved and there were some nuanced issues relating to our clients’ ability to estalish valid IP rights.  I received the case from a prior business attorney, and my team and I were able to re-plead the Answer, and raise some new affirmative defenses; but purposely, raised no counterclaims (were not required to raise them).

Next, we set out to complete written and oral fact discovery for all the major issues, or key depositions, within the next three (3) months. Hell of a three months, let me tell you.  However, despite having attorneys examine and question them for the full seven (7) hours allowed under the FRCP; the clients, remained entrenched in the same positions.  Ok, so, like any good defense attorneys, we draft, research and prepare a motion for summary judgment (“SJ”) to try and get our clients IP rights recognized and enforced, as a matter of law.

Next, we wait for about six to nine (6-9) months for a Ruling on the Summary Judgment Motion.  All the while our clients are able to continue their business operations and revenue generation activities (no injunctions were issued).  The time for trial is soon, upon us, and we have not received a Ruling on our summary judgment motion. We prepare a motion to continue trial, and gently, remind the court clerk of the pending and fully briefed motion for summary judgment.

You know what happens next, right?  Our motion requesting a Ruling is granted and the trial dates are rescheduled.  However, within less than, thirty (30) days our motion for summary judgment is denied in a five (5) page opinion that makes a blanket statement that “genuine issues of fact exist for trial.”  There are no citations to the records, exhibits or the legal authority in the parties’ briefs, and for that matter legal authority supporting the opinion’s Rulings or SJ standards.

We prepare a motion to reconsider, and assert an error of law, in application of the SJ standard, and that we had met our burden of proof and production on the issues relating to our clients’ valid IP rights and affirmative defenses.  We identify, the lack of admissible evidence at trial in the responding party’s briefs, and the failure to raise a genuine issue of material fact requiring a trial.  We limit our focus to issues that are dispositive establish the validity of our IP rights and the affirmative defenses permitted on an SJ motion.   We remind the court clerk of the responding party’s obligation to produce admissible evidence that creates a genuine issue of trial (thank god for Celotex and its progeny).

Within, twenty one (21) days, we get a Ruling (1-2 page opinion) that denies our motion for reconsideration, and essentially, says see our prior opinion.  We (our clients and us) believe, that we can prevail at trial, but want to avoid the burden and expense of a trial or the risk of potential adverse factual findings.  The the thing about IP claims, whether, they involve copyright, patent or trademark infringment; there are often, interested third parties (not required just generally interested).  You never know, how the factual findings in one case may, impact your clients rights vis-a-vis these interested third parties.

So, how do we get an interlocutory appeal or writ for mandamus relief, in this situation? Is that even worth it?  Can the clients afford the appeal and/or writ, and the trial if, our SJ is denied on remand? Then, it hits me changing the decision maker, does not require an appeal or a writ of mandamus and that is what we really want to do.  So, how do I change the decision maker for our case?  Ah ha–some claims between the parties that are tangentially related, but not barred could be brought in a different venue.

In fact, we could file in the other venue, and seek a stay in the venue, where we got adverse Rulings on our motions for summary judgment and reconsideration.  We start preparing the clients for this possibility, and we discuss how to get the stay granted, and it looks good.  Plus, this decision maker or court clerk does not appear to want to dig through our briefs or motions–so, we believe there is an incentive to grant our motion to stay and avoid having us go to trial.

We were in the process of executing on this strategy, but it turns out that we may be able to resolve the dispute, without even having to file the tangentially related claims in the new venue.  Never forget, the value of changing the decision maker or court clerk that gives you adverse Rulings. Not all of these situations require an appeal or mandamus relief, sometimes a simple re-pleading of some tangential, but new claims in a different venue, may save you, and your clients, the burdens and costs of an appeal and/or writ, or a trial.

That will definitely have go into the file bank for future use.   Want to know more, or hear more similar stories, then check out:  www.bipeblawg.com or www.vrplawgroup.com

Apple’s new product venture-smart headphones and patents on headphones! What are they?

Apple has filed patents for smart headphones that play music you want based on your mood, feelings, heart rate, sweat, and your exercise routines. When you lift weights and are looking to max out–the headphones scroll through your playlist and play eye of the Tiger from Rocky.

If you are performing yoga, then it plays forest and water sounds from your playlists. If you want to meditate it plays-chant, ok not all of us will want to listen to a chant, as we try to meditate.  The point is Apple has redefined the concept of providing customized products.  This concept is not new and the idea of creating smarter products is not new, nor is providing customers customized goods-so, what is so great or innovative about Apple’s headphones?

Like anything else it is extension of the concept of providing customized goods and execution and delivering a set of headphones that automatically customize themselves to each consumer.  Plus, Apple is developing technology that does not require a user to select from a category of options for headphones or require user intervention to provide the consumer what he or she may want in real time!

Now, that is something a product that is able to keep track of your prferences, tastes in music, sense what you may want and self select it to customize itself to give the consumer what he or she wants. Apple’s ability to execute will determine how many Smart Headphones they will sell.  However, their design and utility patents will enable Apple to protect its ability develop these innovative Smart Headphones.

Do you see some other potential applications for this technology?  Of course you do, why stop at headphones? How about watches, heart rate monitors, glucose monitors, headbands, cell phones, shoes, clothes, necklaces, bracelets, literally anything that a consumer wears, uses or may do can use a Smart Product or Service!  Apple’s ability to profit and protect its licensing, sales and prevent others from copying its product will determine the keys to its success.  Apple’s ability to increase and monitor infringement of its patent, trademark, and copyright portfolios will be a crucial party of that success.

Want to know more about Smart Products, then call Apple, IBM, or Google. Want to know how to protect your product, brand or technology, then contact us at: www.vrplaw.com or www.vrplawgroup.com

Design Patents-What are they? Are they worth getting?

Design Patents are a form of patent that covers the nonfunctional creative and design aspects of a product. They are valid and can be used to exclude others from practicing your invented design. However, design patents do not cover the useful or functional aspects of your product design.

Although you can combine a utility and a design patent, this would allow you to protect both the useful and aesthticaly pleasing aspects of your invention. This may allow you to protect the functionality and cool look of your invention. Apple and Steve Jobs were masters of using this form of layered intellectual property protection to take advantage of trends and consumer preferences.

However, you could still add more layers of intellectual property protection by registering the product packaging as a trade dress and/or coprights on the original aspects of your product design. This allows for the creation of a portfolio of IP rights to give you a greater advantage in the market place.

This form of tiered IP protection strategy also helps against the expiration of IP rights. For example, design patents last for 14 years, utility patets are good for 20 years, copyrights last for the life of the author plus 70 years, and trade dress rights are notlimited by time. If you have any concerns or questions, then please contact us at: www.vrplawgroup.com

Copyright Infringement, Misappropriation of Likeness, violation of the Illinois Right of Publicity Act and DMCA Take Down Requests-Oh My!

In many cases involving the use of a photograph concerning the image or likeness of a person, there are multiple methods of seeking a removal and seizure of the photographs.  In IL, there is an IL Right of Publicity Act that many individuals, advertising, marketing or sales professionals and even attorneys fail to consider or utilize.

The IL Right of Publicity Act, provides for statutory damages and legal fees, and it can be just as if, not more effective, than a DMCA Take Down Notice.  However, it is a relatively unknown right provided for based on the common law tort of misappropriation of likeness arising out of the First Amendment.

Believe it or not, the First Amendment has a Right of Privacy that provides for a number of tort claims, such as, false light, public disclosure of private facts, and misappropriation of likeness.  This common law misappropriate likeness claim has been codified in IL under the IL Right of Publicity Act.  Thus, IL citizens have more options for preventing someone from using their photographs or images without their written permission.

Often times, copyright and DMCA claims suffer from a failure to register the Works and this allows the Infringer to continue to dispute your copyright.  However, the Right of Publicity cannot be disputed and provides for relief, where Copyright Law may not allow for a quick remedy.

If you have any concerns or questions, then please contact us at: www.vrplawgroup.com

Understanding Trademark Trials and Appeals Board Proceedings: Trademark Cancellation and Opposition Practice!

The United States Patent and Trademark Office (“USPTO”) has a Trademark Trials and Appeals Board (TTAB) that allows individuals to contest and oppose the rights of Trademark Applicants and Holders.  The TTAB’s cancellation and opposition practices are often, viable alternatives to filing a full blown trademark infringement lawsuit against competitors, counterfeiters, copycats or duplicate trademark application filers.

The cancellation and opposition proceedings permit for discovery and motion practice similar to what is provided for under the Federal Rules of Civil Procedure and Federal Rules of Evidence.  However, there are some important differences that you should be aware of before deciding to file a trademark infringement lawsuit in Federal Court or filing an opposition or cancellation proceeding with the TTAB.  First, the TTAB cannot award money damages, they can sanction individuals for violations of discovery, but cannot provide monetary relief.

In addition, the TTAB can only, rule upon the particular application numbers and registrations numbers involved in the opposition or cancellation proceeding.  They cannot make a final determination of trademark rights.  They can only make a determination of allowing or cancelling trademark applications or registrations.  However, depending on what evidence is considered by the TTAB and the factual findings it makes–A District Court may be required to give deference to the TTAB’s findings.

However, the TTAB is never the final authority on issues relating to interpretation and application of trademark law.  Federal Courts will always review all legal findings that the TTAB makes de novo.  In addition, the trial proceedings are drastically different and of a more limited nature than Federal Court Trials.  If you or someone you know is trying to figure out if, they should file for a trademark cancellation or opposition proceeding, then feel free to have them contact us at: www.vrpawlgroup.com