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Category: Licensing


USPTO To Require U.S. Licensed Attorney for Trademarks
July 02, 2019
Post by Luke T. Mohrhauser
Luke T. Mohrhauser On July 2, 2019, the United States Patent & Trademark Office (USPTO) released a rule related to foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (TTAB) proceedings. The rule, which takes effect on August 3, 2019, states that all foreign-domiciled parties must be represented at the USPTO by an attorney who is licensed to practice la.......
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Drafting the Fine Print: Every Word is Significant in a License Agreement
June 28, 2019
Post by Tina G. Yin Sowatzke, Pharm.D.
Tina G Yin-Sowatzke Licensing agreements can be both complex and extensive, however, diligence must be exercised in ensuring that the scope of rights to be transferred are clearly defined. The failure to do so may result in disputes over the interpretation of licensing agreements, where each word and phrase may be painstakingly scrutinized in court. Such disputes arose in the case of Sköld v. Galderma Lab.......
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IP License Audits – Iowa LES Chapter Tackles the Issues
May 09, 2019
Post by Jill N. Link, Pharm.D.
Jill N. Link The Licensing Executive Society (LES) Iowa Chapter met on Monday April 29th in Coralville, Iowa, and took a deep dive into issues with auditing Intellectual Property (IP) license agreements. Other issues of IP valuation were also discussed by two accounting experts from Sikich. The discussions brought to the forefront issues commonly associated with IP license agreements – namely, what ha.......
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Can I Use This Song In My Podcast? It Depends.
March 20, 2019
Post by Brandon W. Clark
According to Podcast Insights, there are currently over 660,000 podcasts in existence and over 28 million episodes available to listen to. This number is certainly growing as are the legal concerns and issues associated with hosting or producing a podcast. This article will provide some general guidelines and outline some of the rules around using copyrighted material in a podcast. MVS attorneys are incr.......
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Rapper Sues the Makers of Fortnite Claiming Copyright Infringement of Dance Moves
December 07, 2018
Post by Brandon W. Clark
Rapper 2 Milly has filed a copyright and right of publicity lawsuit against the makers of the Fortnite video game claiming that they are illegally using a dance move that he created in their wildly popular video game. The Brooklyn-based rapper, whose real name is Terrence Ferguson, alleges that Fortnite-maker Epic Games is misappropriating his dance moves without permission, compensation, or credit........
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Music Modernization Act Signed Into Law
October 11, 2018
Post by Brandon W. Clark
Earlier today, the Music Modernization Act (MMA) was signed into law. The MMA is a sweeping reform to music licensing and copyright related royalty payments and marks the first significant copyright legislation passed in decades. The House unanimously approved the bill in April followed by the Senate unanimously approving the legislation in September. The MMA then returned to the House for approval of th.......
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CRISPR: Broad Institute Holds onto its Piece of Pie, and it’s Delicious!
September 13, 2018
Post by Oliver P. Couture, Ph.D.
On Monday, September 10th, the Court of Appeals for the Federal Circuit (CAFC) upheld the decision from the Patent Trial and Appeal Board (PTAB) on the interference between the Broad Institute and the University of California. The PTAB held, and the CAFC upheld, that given the difference between prokaryotic and eukaryotic cells, one skilled in the art would not have had a reasonable expectation of succes.......
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Just Because It’s Nanoscale, Doesn’t Mean It’s Not a Big Deal
March 09, 2018
Post by Jonathan L. Kennedy
Nanotechnology has been taking innovation by storm for decades now and its only increasing its footprint. This is reflected in the growing number of granted patents and published applications directed to nanotechnology inventions. For example, according to StatNano (an organization that monitors and publishing information regarding nanotechnology global developments), more than 20,000 granted patents and patent .......
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Music Publishing Company Sues Spotify for $1.6 Billion
January 03, 2018
Post by Brandon W. Clark
Spotify has a growing copyright problem and as previously discussed on this blog (here and here) they are no stranger to copyright infringement lawsuits. Wixen Music Publishing Inc. recently filed a complaint seeking $1.6 billion in damages alleging copyright infringement. On December 29th, Wixen filed suit in California federal court claiming Spotify has repeatedly failed to obtain necessary statutory, .......
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Hollywood Studios Prevail Against Family-Friendly Video Streaming Site
September 14, 2017
Post by Brandon W. Clark
In a 3-0 ruling, a federal appeals court sided with Disney, Warner Bros., and Twentieth Century Fox by affirming an injunction that shut down movie filtering service VidAngel, Inc., saying that a ruling to the contrary would “create a giant loophole in copyright law”. VidAngel is a video filtering service that lets users stream films without nudity, violence, and alcohol and drug use. The company buys DVDs o.......
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Spotify Settles Class Action Lawsuit for $43.4 Million
May 31, 2017
Post by Brandon W. Clark
In February of last year, I wrote a blog discussing the filing of a class action lawsuit against Spotify seeking $150 million in unpaid mechanical royalties (Read the previous post here). In a settlement announced on Friday, Spotify has agreed to set up a fund worth $43.4 million to compensate songwriters and publishers whose compositions were used without paying mechanical royalties. Mechanical royalties are a .......
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Prepping for Protection: First Steps to Developing an IP Strategy
May 16, 2017
Post by Blog Staff
Whether you are an individual, a start-up company, or an existing business, two of the hardest (and most important) questions are: “Do I have intellectual property?” and “How do I protect it?” First, having a qualified attorney will help make answering these questions significantly easier and they can help guide you through the development of an IP strategy that not only protects your current IP, but allow.......
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Spinal Tap Goes To 11 As Co-Creator Sues Vivendi for $125,000,000
October 19, 2016
Post by Brandon W. Clark
Brandon W. Clark It is nearly impossible to be backstage at a concert and not hear at least one quote from, or a reference to, the mockumentary This Is Spinal Tap. The film, first released in 1984, has gone on to be considered one of the most popular and successful films of all time. It has been included on numerous "best ever"lists and in 2002 the National Film Registry of the Librar.......
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Attorneys Granted Motion for Increased Fees in "Happy Birthday" Copyright Suit
August 28, 2016
Post by Blog Staff
Recently a California U.S. District Judge found that Warner/Chappell Music, Inc. did not hold a valid copyright on the song "Happy Birthday To You‚¬, and the song was held to be in the public domain. As part of the judgment, Warner/Chappell Music, Inc. was ordered to pay $14 million to reimburse members of the class action law suit ho had previously paid to use the song "Happy Birthday To You‚¬. .......
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Does Spotify Owe You Money? Streaming Service Sued for $150 Million in Unpaid Royalties
February 24, 2016
Post by Brandon W. Clark
Brandon W. Clark David Lowery, the frontman of Cracker and Camper Van Beethoven, has recently filed a class action lawsuit seeking at least $150 million dollars in damages against Spotify. Lowry alleges Spotify knowingly, willingly, and unlawfully reproduces and distributes copyrighted compositions without obtaining mechanical licenses. According to the complaint, which was fil.......
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Political Campaigns & Unauthorized Music
January 18, 2016
Post by Brandon W. Clark
Brandon W. Clark As the presidential caucuses approach so do the opportunities for political candidates to end up in the headlines for using unauthorized music in their campaigns. In nearly every campaign cycle you hear about a recording artist upset that a politician or campaign used the artist's music without authorization. A list of notable disputes include Bruce Springsteen vs. Ro.......
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Kimble v. Marvel-SCOTUS Declines to Overturn Brulotte
June 26, 2015
Post by Blog Staff
            Patent portfolios are often a substantial asset to business associations, and even for the individual inventor an issued patent or two can be Big Business. Patent assignments (i.e. wholesale buying and selling of patents and patent applications) are not the only ways to trade in the commodity. Many transactions take the form of licenses or assign.......
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Supreme Court Rejects Patent Exhaustion Defense for Patented Bean Replanting
May 13, 2013
Post by Blog Staff
The Supreme Court has handed down its much anticipated decision in Bowman v. Monsanto Co., holding that the defense of patent exhaustion does not apply to the practice of planting and harvesting patented seeds through planting and harvesting without the patent holder's permission. The case centers on the Roundup Ready gene, which confers resistance to glyphosate herbicides such as Roundup. Monsanto owns U.S. .......
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New and Useful - January 31, 2013
January 29, 2013
Post by Blog Staff
· In Soverain Software LLC v. Newegg Inc. the Federal Circuit vacated in part and reversed in part an Eastern District of Texas decision finding Newegg Inc. liable for infringement of U.S. Patent Nos. 5,715,314, 5,909,492, and 7,272,639, all relating to electronic commerce. The Federal Circuit offered clarifying insight on the obviousness doctrine. The background facts are as follows: Soverain Soft.......
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Bayh-Dole Patent Ownership Dispute to be heard by Supreme Court
November 08, 2010
Post by Blog Staff
Last week, the Supreme Court announced it will review the Federal Circuit decision in Stanford v. Roche, addressing patent ownership under the Bayh-Dole Act, after granting Stanford's petition for a writ of certiorari. The Court will decide an interesting patent ownership dispute involving the contractual obligation of a University inventor to assign rights to the University and the same inventor's prior a.......
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Ninth Circuit: AutoCAD purchasers are licensees, so first sale doctrine does not apply to resale
September 15, 2010
Post by Blog Staff
In a decision last week, the Ninth Circuit held the purchaser of a copy of AutoCAD software was not an owner of the copy, but instead a licensee. As a result, the purchaser did not have the protection of the first sale doctrine (codified in 17 U.S.C. § 109(a)) when attempting to resell the software to a third party. The declaratory judgment plaintiff was attempting to sell used copies of AutoCAD on eBay. A.......
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Supreme Court: NFL collective licensing of trademarks not immune from Section 1 antitrust scrutiny
May 26, 2010
Post by Blog Staff
Monday the Supreme Court unanimously held the NFL's practice of collectively licensing the trademarks of all 32 individual teams is not immune from antitrust scrutiny under Section 1 of the Sherman Act. The NFL argued that because the marks are all licensed through a single entity, NFL Properties, there was no "contract, combination, . . . or conspiracy" under § 1, and therefore there could .......
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En banc Federal Circuit to address potential patent misuse issues in license practices
October 20, 2009
Post by Blog Staff
The Federal Circuit has agreed to hear en banc an interesting issue with regard to the potential for patent misuse in licensing. The case is Princo Corp. v. ITC. At issue is the patent pool related to the technology used for CD-R and CD-RW discs. The alleged infringer, Princo, admitted infringement before the ITC, but asserted the patents unenforceable due to patent misuse. The ITC originally rejected this de.......
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In license agreement, right to "have made" implicitly granted with right to make
June 15, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's dismissal of a patent licensor's claims for breach of a license agreement and patent infringement. The non-exclusive licensee arranged to have third parties manufacture the licensed product, but the product was sold by the licensee. The patent owner argued this was a breach of the license because the license stated the only rights gran.......
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Sales of products by party under unconditional covenant not to sue exhaust patent rights
April 13, 2009
Post by Blog Staff
In a decision Wednesday, the Federal Circuit affirmed a district court's finding that a patentee's claims for patent infringement were barred by patent exhaustion in view of a settlement agreement between the patentee and a previous defendant in an infringement suit. The patentee previously sued a third party, and the suit was resolved by a settlement agreement granting the third party a covenant not to .......
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Existence of other licenses under patent does not preclude finding of irreparable harm
January 05, 2009
Post by Blog Staff
In a decision Tuesday, the Federal Circuit affirmed a district court's grant of a permanent injunction. The district had previously granted a permanent injunction after a jury found willful infringement. In a previous appeal, the Federal Circuit affirmed the finding of willful infringement, but vacated the permanent injunction because the district court did not consider the four-factor test mandated by the S.......
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Ninth Circuit: Copyright owner's ambiguous reservation of rights clarified with extrinsic evidence
December 08, 2008
Post by Blog Staff
In a recent decision, the Ninth Circuit reversed a district court's grant of summary judgment that a copyright holder did not have standing to sue for copyright, trademark, unfair competition, and related declaratory judgment claims. The case involved the film Gone in 60 Seconds, produced and directed in 1974 by H.B. "Toby" Halicki, and remade in 2000. The key issue was the construction of a 1995 .......
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Second Circuit: Copyright license of indeterminate term improperly read to be perpetual
November 07, 2008
Post by Blog Staff
In this appeal from the United States District Court for the Northern District of New York, the Second Circuit reversed the dismissal of a copyright claim based on ambiguity in a contract, but affirmed dismissal of the antitrust claims because the plaintiff's proposed market definition was not plausible.The district court dismissed the copyright claims based on a contract granting the defendants the right to .......
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Second Circuit: MLB collective trademark licensing does not violate Sherman Act
September 26, 2008
Post by Blog Staff
In a recent decision, the Second Circuit affirmed a district court's summary judgment to the defendant in an antitrust case regarding trademark licensing. The case involved the collective licensing setup of Major League Baseball Properties ("MLBP"). The plaintiff was a licensee of MLBP. The court held the centralized licensing agent for all Major League Baseball teams did not violate § 1 of.......
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Ninth Circuit: Absent evidence of intent to the contrary, custom software purchaser retains license
September 25, 2008
Post by Blog Staff
In a recent decision, the Ninth Circuit affirmed a district court's decision that a software developer's delivery of customized software includes a grant of an unlimited, non-exclusive, implied license to use, modify, and retain the source code of the programs in the absence of written agreements to the contrary. The Ninth Circuit also affirmed the district court’s determination that the license.......
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Patent exhaustion does not create a cuse of action; dismissal affirmed
September 24, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's decision dismissing a case for lack of subject matter jurisdiction. The plaintiff brought suit when it believed the patent holder had fraudulently concealed a second licensee of the same patents. The plaintiff was a licensee of the defendant patent holder and therefore could not seek a declaration of noninfringement, so instead brought.......
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Federal Circuit: Breach of open source license conditions can lead to copyright infringement
August 16, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit addressed some of the copyright issues involved with the open source movement. Often open source software is distributed under a so-called copyleft license, which permits others to use the work, subject to certain restrictions. The GNU general public license is the most well-known of these licenses. The license at issue in this case was the Artistic License. The distri.......
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Consent judgment with no explanation of how claim construction affected noninfringement vacated
July 17, 2008
Post by Blog Staff
In a decision Tuesday, the Federal Circuit vacated a consent judgment entered by a district court and remanded the case for clarification. The district court entered a consent judgment, stipulated by the parties, stating the defendants' products did not infringe under the district court's claim construction of several terms, but that the plaintiff could still appeal the claim construction.The Federal Circ.......
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Ninth Circuit: Termination of rights allows Lassie to come home to author's heir
July 17, 2008
Post by Blog Staff
In a decision last week, the Ninth Circuit reversed a district court's denial of summary judgment in a copyright case. The district court held the heir of an author had, by agreement, "given away" the termination right granted by 17 U.S.C. § 304(c).The Ninth Circuit reversed, stating that the district court had gone against the express language of § 304(c)(5), Congress's intent of pro.......
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Ninth Circuit: Patent law terms in employment agreement should be given patent law definitions
June 19, 2008
Post by Blog Staff
In a recent decision, the Ninth Circuit held a district court's jury instructions regarding construction of the patent ownership provisions of an employment agreement erred in applying contract law rather than patent law. The court determined that jury instructions defining the terms "conceive," "reduce to practice," and "Work of Dr. Yu" (a possible coinventor) required applicat.......
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Roundup of media coverage of Quanta v. LG decision
June 10, 2008
Post by Blog Staff
The media and legal blogs have begun to weigh in on yesterday's decision in Quanta Computer, Inc. v. LG Electronics, Inc. , holding method claims can be exhausted by the sale of a product substantially embodying the claim. Click below for a sampling of the coverage from various sources. MediaNew York Times Wall Street Journal ($) Washington PostLaw.com Guardian (UK)Associated PressReuters San Jose Mercury.......
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Quanta v. LG: Method claims can be exhausted; harder to assert infringement later in distribution
June 09, 2008
Post by Blog Staff
The Supreme Court today decided Quanta Computer, Inc. v. LG Electronics, Inc., dealing with the doctrine of patent exhaustion (also called the first sale doctrine). In a nutshell, the Court made it more difficult for patent holders to maintain a claim for infringement down the distribution chain of a product. There were three main aspects to the decision:Method claims, like product claims, are subject to exhaus.......
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Today's opinion in Quanta v. LG now available
June 09, 2008
Post by Blog Staff
The opinion of the Court in Quanta Computer, Inc. v. LG Electronics, Inc. is now available here.Thanks to SCOTUSBlog for making a copy of the decision available online.Update (10:45): The closing paragraph of the decision is a good, concise summary:The authorized sale of an article that substantially embodies a patent exhausts the patent holder’s rights and prevents the patent holder from invoking patent .......
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Suprme Court provides unanimous decision in Quanta v. LG: Federal Circuit reversed
June 09, 2008
Post by Blog Staff
This morning the Supreme Court decided Quanta v. LG, reversing the Federal Circuit's decision. We'll post a link to the decision (written by Justice Thomas) as soon as it's available.....
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No lost profits when patent owned by parent but practiced by subsidiary
June 04, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit affirmed a district court's grant of summary judgment in the damages phase of a patent infringement case denying recovery for lost profits. The patentee's wholly-owned subsidiary actually practiced the claimed invention, but the subsidiary paid a standard license royalty to the patentee for use of the invention, and the subsidiary's profits did not "f.......
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License under method patent not limited to use with licensor's products absent express limitation
April 18, 2008
Post by Blog Staff
In a decision Wednesday, the Federal Circuit affirmed-in-part, vacated-in-part, and reversed-in-part a district court's decision regarding two patents. The district court held the broadest claims of both patents invalid and not infringed, and dismissed claims of inequitable conduct relating to the patents.The Federal Circuit affirmed with respect to one patent, but vacated and reversed with respect to the ot.......
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Assignee of patent not bound by previous assignee's agreement to arbitrate
April 17, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a finding by a district court that a party may not be compelled to arbitrate as provided in a patent license agreement when the party was not a signatory party to the agreement but merely an assignee of the patent covered by the agreement. As a result, the infringement case continues before the district court.More detail of Datatreasury Corp. v. Wells Fargo &.......
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Wal-Mart learns a lesson in copyright licensing the hard way
April 10, 2008
Post by Blog Staff
A story in yesterday's Wall Street Journal (via Bill Patry) illustrates how important it is for parties to a transaction to know what they're getting up-front.Starting way back in the 1970s, Wal-Mart hired an outside company, Flagler Productions, to document various aspects of Wal-Mart's operations. Flagler produced videos of Wal-Mart corporate officers and directors, "often in unguarded momen.......
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Ninth Circuit: "Exclusive" license from only one copyright co-owner really a nonexclusive license
March 05, 2008
Post by Blog Staff
In a decision last week, the Ninth Circuit affirmed a district court's dismissal of a copyright infringement claim for lack of standing, as well as several related claims. The plaintiff obtained an "exclusive" license for one of the exclusive rights from a single co-owner of several copyrighted works. However, because the plaintiff only obtained the license from one co-owner, and not from all co-ow.......
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Seventh Circuit: Operating agreement permitted license of marks, so no trademark infringement
February 25, 2008
Post by Blog Staff
In its second trademark decision Friday, the Seventh Circuit clarified what is required for a party to be authorized to use another entity's trademarks. In this case, the plaintiff—one of four founders of two LLC's designed to manage and control a restaurant in Chicago—alleged trademark infringement against the three other co-founders based on the co-founders' use of the trademarks and tr.......
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Mandamus inappropriate unless no other way to get relief, even if result is unnecessary trial
February 04, 2008
Post by Blog Staff
In a precedential order last week, the Federal Circuit denied a petition for a writ of mandamus seeking to direct a district court to vacate its summary judgment order in favor of a patent infringement plaintiff and to enter judgment in favor of the alleged infringer. The district court's order did not completely resolve the case, but did prevent the alleged infringer from presenting several defenses, includ.......
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Roundup of media coverage of oral arguments in Quanta v. LG
January 21, 2008
Post by Blog Staff
After the Supreme Court heard oral argument last week in Quanta Computer, Inc. v. LG Electronics, Inc. (No. 06-937), the media and blogosphere have begun to weigh in on the arguments. You can find our take on the arguments in this post, or click below for a sampling of the coverage from other sources. A decision is not expected until late spring. Media outlets Associated Press ReutersCNNWall Street Journal ($.......
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Sixth Circuit: Some claims relating to license agreement with arbitration clause not arbitrable
January 21, 2008
Post by Blog Staff
In a recent decision, the Sixth Circuit considered the scope a mandatory arbitration clause in a software license agreement, and specifically whether the clause mandated arbitration of certain copyright infringement and other claims arguably related to the agreement. The district court entered an order compelling arbitration.The Sixth Circuit partially reversed. According to the court, given the broadly-worded n.......
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Oral argument in Quanta v. LG - some highlights
January 18, 2008
Post by Blog Staff
On Wednesday, the Supreme Court heard oral argument in Quanta Computer, Inc. v. LG Electronics, Inc. (No. 06-937), a case regarding the scope of the concept of patent exhaustion, also known as the first sale doctrine. While the entirety of the arguments is worth a read (the transcript is available here), click below for our impressions of the arguments.A bit of background is necessary in order to best understan.......
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Eleventh Circuit: Trademark licensee liable for infringement when deviating from license
January 17, 2008
Post by Blog Staff
In a decision Tuesday, the Eleventh Circuit affirmed a district court's finding of trademark infringement against a trademark licensee. The alleged infringer was actually licensed to use the mark owner's trademark, but did not use the mark as described in the license, instead using an abbreviated form. As a result, the court affirmed the jury's finding of infringement and the associated damages awar.......
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Tomorrow at the Supreme Court: Oral argument in Quanta v. LG
January 15, 2008
Post by Blog Staff
Tomorrow the Supreme Court will hear oral argument in Quanta Computer, Inc. v. LG Electronics, Inc. (No. 06-937). The case will determine whether patent owners who sell products embodying their patents conditionally are able to recover damages for patent infringement if the products are subsequently sold beyond the scope permitted by the original sale.The question presented is:Whether the Federal Circuit erred by.......
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Ninth Circuit: Karaoke is audiovisual work, so not fully covered by - 115 compulsory license
January 03, 2008
Post by Blog Staff
In a decision yesterday, the Ninth Circuit affirmed a district court's dismissal of a complaint for declaratory judgment by a karaoke device manufacturer without leave to amend for failure to state a claim. The complaint sought a declaration that a compulsory license under § 115 of the Copyright Act was a sufficient license for a karaoke device to not only play music, but also display the lyrics in re.......
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AUTM releases 2006 annual licensing survey
December 27, 2007
Post by Blog Staff
The Association of University Technology Managers (AUTM) has released its summary report for the 2006 AUTM U.S. Licensing Activity Survey. The yearly survey is an ongoing effort of the organization to assist in informing the public about academic technology transfer professionals in order to improve public understanding of their activities. The 2006 Annual Report reflects numerous changes and improvements over.......
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Sixth Circuit: Internet downloads not "manufactured," so logo placement agreement inapplicable
December 10, 2007
Post by Blog Staff
In a recent decision, the Sixth Circuit held that several agreements relating to logo placement on media incorporating songs by Meat Loaf did not encompass internet downloads. The court reached this decision based on a key paragraph in the most recent agreement:Sony Music will continue to place the Cleveland logo (in the design currently used on the tape configuration of "Bat Out of Hell") on albums, C.......
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First wave of amicus briefs filed in Quanta v. LG, argument set for January 16
November 26, 2007
Post by Blog Staff
Earlier this month, amicus briefs either supporting the Petitioner or neither party were filed with the Supreme Court in connection with Quanta Computer, Inc. v. LG Electronics, Inc (No. 06-937). Our previous coverage of the case can be found in these three posts. The Court also set oral argument for January 16, 2008.Some discussion of the amicus filings and links to the briefs after the jump.The question pr.......
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Eighth Circuit: Fantasy Baseball service need not pay for use of athletes' names and stats
October 16, 2007
Post by Blog Staff
In a decision today, the Eighth Circuit held that a provider of a fantasy baseball service did not need to pay either Major League Baseball or the Major League Baseball Players Association for the right to use the names and statistics of professional baseball players in connection with its service. While this usage met the requirements of a right of publicity claim under Missouri law, the court held that the Fi.......
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Second Circuit: retroactive assignment cannot cure past infringement claim by co-author
October 08, 2007
Post by Blog Staff
The Second Circuit yesterday issued a decision regarding whether an action for infringement brought by one co-author of a song can be defeated by the grant of a "retroactive" transfer of ownership to the infringer from a co-author who is not party to the infringement action. The case involved licensing and litigation regarding authorship of two tracks on Mary J. Blige's 2001 album, ironically named .......
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Supreme Court to hear patent exhaustion case
September 25, 2007
Post by Blog Staff
In its first conference of this Term, the Supreme Court today granted certiorari in Quanta Computer, Inc. v. LG Electronics, Inc. (No. 06-937). Our previous coverage of the case can be found in these two posts.The question presented is:Whether the Federal Circuit erred by holding, in conflict with decisions of this Court and other courts of appeals, that respondent's patent rights were not exhausted by it.......
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If you just have the right to sue under a patent, don't expect to actually be able to sue anyone
September 20, 2007
Post by Blog Staff
Yesterday, the Federal Circuit clarified the requirements for a party to attain standing to bring a patent infringement suit when the party does not hold all substantial rights in the patent. In defining what constitutes an "injury in fact" under the constitutional standing requirement, the court held that, when a party does not have all substantial rights to a patent, injury in fact would only exist w.......
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Seventh Circuit: Noncompete provision in license agreement reasonable, not patent misuse
September 19, 2007
Post by Blog Staff
In what the court described as "one of those non-patent patent cases," the Seventh Circuit yesterday affirmed a grant of summary judgment to a patentee who, in its license agreement, included a noncompete provision. The licensee had terminated the license, and argued the noncompete constituted patent misuse, and was therefore void.The court rejected this argument. Applying rule of reason analysis, the.......
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Government recommends Supreme Court hear patent exhaustion case
September 06, 2007
Post by Blog Staff
In a filing on August 24 (that got put on the back burner with the hubbub about the new continuation and claim limit rules), the government has recommended that the Supreme Court grant certiorari in Quanta Computer, Inc. v. LG Electronics, Inc. (No. 06-937). Detail about the Federal Circuit's decision may be found in this post. The question presented is:Whether the Federal Circuit erred by holding, in conf.......
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Supreme Court asks for Government's view on yet another patent case
April 16, 2007
Post by Blog Staff
In its order list released today, the Supreme Court has indicated that it may accept yet another appeal in a patent-related case, as it has invited the Office of the Solicitor General to file a brief stating the position of the United States on the case. The case is Quanta Computer, Inc. v. LG Electronics, Inc., and deals with the first sale doctrine in patent law. Specifically, the question presented in the .......
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Federal Circuit considers DJ jurisdiction post-MedImmune: Is an offer of license now enough?
March 26, 2007
Post by Blog Staff
In a very interesting opinion, the Federal Circuit today addressed what is required to support jurisdiction for a declaratory judgment by a party under threat of a possible patent infringement lawsuit. This is the first substantive discussion of the issue since the Supreme Court's decision in MedImmune, where the Court held that a patent licensee need not breach the license in order to challenge the validity .......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

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