Articles on Intellectual Property | Illinois State Bar Association

Department of Commerce takes on trademark bullies By Joseph T. Nabor Intellectual Property, June 2011 The Department of Commerce recently released its report which studied whether or not some trademark owners are using their trademark rights in an overly aggressive enforcement effort—commonly known as the Trademark Bullies report.

Ethical issues for business and intellectual property lawyers—Part 1 By Eugene F. Friedman Business Advice and Financial Planning, June 2011 The first installment in this series on ethics for business lawyers.

Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, June 2011 News updates affecting intellectual property attorneys.

Too few Internet matchmaking lonely hearts jurisdictionally trump default judgment: be2 LLC v Ivanof (7th Cir. 2011) By Joseph T. Nabor Intellectual Property, June 2011 In the recent case of be2 LLC v. Ivanov, the decision of the District Court was reversed and the court was instructed to dismiss the case for lack of personal jurisdiction.

Trademark protection—Practice points to consider By Elliott C. Bankendorf & Melaina D. Jobs Corporate Law Departments, June 2011 A general overview of the trademark registration process.

ICANN likely to open new general top-level domain names this year By John Ambrogi Corporate Law Departments, May 2011 The Internet Corporation for Assigned Names and Numbers (ICANN) is a not-for-profit corporation formed in 1998 that is dedicated to keeping the Internet stable, secure and interoperable. The new top level domain (TLD) offerings will enable businesses, governments, and organizations to own and operate a TLD of their choosing.

The break up By Shannon A.R. Bond Intellectual Property, April 2011 This past August, Starbucks offered $750 million to Kraft in an attempt to “break up” with the distributor and exercise more control over the Starbucks retail products. Reports conflict about whether Starbucks’ decision was foreseeable or completely unexpected, and there are a lot of allegations about who caused the break up.

The Federal Circuit annihilates the 25% rule of thumb for calculating a reasonable royalty By Gregory A. Lewis Intellectual Property, April 2011 Damages experts will now need to base their royalty rates on licenses and other information tied to the facts of the case at hand.

Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, April 2011 News updates affecting intellectual property attorneys.

“Obama Pajamas” trademarks laid to rest By Steven L. Baron & Rebecca A. Edwards Intellectual Property, April 2011 Time will tell if other applicants attempt to register trademarks such as “Clinton’s Mittens” “Sotomayer’s Attire” or “Emanuel Flannels” without permission. But for now, this USPTO decision seems to have put this issue to bed.

Viskase—Testing prior art not required to prove anticipation Intellectual Property, April 2011 A summary of the recent decision involving Viskase, an Illinois-based company and its competitor, World Pac International USA.

Discovering Electronically Stored Information (ESI): Self-Reliance and FRCivP 26* By Daniel Kegan Intellectual Property, December 2010 Federal Rule of Civil Procedure 26 (b)(2)(B) now requires an early conference among attorneys to discuss and plan discovery, including Electronically Stored Information (ESI). Attorneys cannot simply delegate to clients or commercial services the responsibility of understanding ESI and ESI discovery planning. The attorney has a non- delegable responsibility to know, not only traditional discovery relevance but also enough about email, computers, file archiving, the client’s business, and human nature to competently supervise others. This article presents an efficient procedure for self-reliant attorneys and firms to successfully manage the ESI discovery process. Guidelines are presented for both Macintosh and Windows computers.

Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, December 2010 Sad Sap $1.65b verdict favoring Oracle for admitted copyright liability. Judge should refer even clearly meritless mandamus writ when his spouse is on defendant's board (In re Specht, trademark suit). Baha'i organizational divorce 40 years later, where's the contempt. Judge Posner clarifies "exceptional Lanham Act cases."

Toy Story: The battle of Barbie versus the Bratz By Dale R. Kurth Intellectual Property, December 2010 A look at the recently decided case of Mattel, Inc. v. MGA Entertainment, Inc.

7th Circuit’s trade dress regrets By Shannon A.R. Bond Intellectual Property, October 2010 Attorneys should keep the Jay Franco & Sons, Inc. v. Clemens Franek case in mind when approached by a client about protecting product design trade dress.

Pennywise and pound foolish: Compilation copyrights and the limits of administrative deference By Daniel Kegan Intellectual Property, October 2010 Copyright claimants should consider registering their commercially important works individually, rather than relying on derivative copyrights, such as compilations, collective works.

Supreme Court ruling leaves window open for business method patents By Brian R. Michalek Intellectual Property, October 2010 This past June, the Supreme Court issued the much-anticipated opinion in Bilski et al. v. Kappos. The 5-4 majority opinion held the claims of the patent application at issue were directed to an abstract idea and therefore were not patentable under 35 U.S.C. Section 101.

The value of strategic counsel By Barbara B. Bressler Intellectual Property, October 2010 Laypeople do not understand the nuances of trademark law, and the U.S. Patent and Trademark Office Web site does not do those people a service by making it appear easy to do it themselves.

Licensing: The simplest form of collaboration is not so simple By William H. Venema Corporate Law Departments, August 2010 A discussion of the complex issues involved in licensing another's property.

The © Hawk: Illinois anti-piracy law is sunk by copyright preemption By Dale R. Kurth Intellectual Property, June 2010 Even today, sound recordings fixed prior to 1971 do not qualify for federal copyright protection.

Google Books: The future is now? By Dale R. Kurth Intellectual Property, June 2010 The case of The Author’s Guild, et al. v. Google, Inc. will go a very long way in deciding how society as a whole makes its tentative way down the path of an increasingly technological terrain.

Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, June 2010 Recent developments in intellectual property law.

Don’t let pharmaceutical product trademarks be a pain By Shannon A.R. Bond Intellectual Property, March 2010 The process involved in filing a trademark registration for a pharmaceutical product.

The grammar of intellectual property: Copyright is a noun, trademark is an adjective By Daniel Kegan Intellectual Property, March 2010 Clarifying the definitions of patent, trademark, and copyright, and how to use each term properly.

Happy 300th birthday, Statute of Anne and Copyright Intellectual Property, March 2010 A brief history of the first copyright law, which became effective in 1710.

NDIL adopts Local Patent Rules Intellectual Property, March 2010 The Local Patent Rules apply to all cases filed in or transferred to the district after October 1, 2009 involving a claim of utility patent infringement, non-infringement, invalidity, or unenforceability.

No just desserts for jus tertii defense in Illinois By Steven L. Baron & Rebecca A. Edwards Intellectual Property, March 2010 A review of the landmark case of The Jim Mullen Charitable Foundation v. World Ability Federation, in which a jus tertii defense used in a trademark infringement case is rejected for the first time in Illinois.

Dangerous delusions: Do it yourself, or don’t By Daniel Kegan Intellectual Property, November 2009 Many once-arcane intellectual property (IP) procedures are now accessible to lay businesspersons and citizens.

President Obama names Victoria Espinel as Intellectual Property Enforcement Coordinator By Pradip K. Sahu International and Immigration Law, November 2009 On September 25, 2009, President Obama appointed Victoria Espinel as the new Intellectual Property Enforcement Coordinator of the United States (the “IPEC”).

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