By: Audrey A. Millemann

In Marine Polymer Technologies, Inc. v. HemCon, Inc., 2012 U.S. App. LEXIS 5567 (Fed. Cir., March 15, 2012), the Federal Circuit Court of Appeals reversed an earlier decision by a panel of the court that had created uncertainty as to the rights of an infringer resulting from patent reexamination proceedings.  The court held in a sharply split en banc decision that intervening rights arise in a patent reexamination only when the claims have been amended or are new.  The decision overturned the panel’s September 2011 decision that held intervening rights arise even if the patent owner does not amend the claims, but merely even makes an argument that changes the meaning of the claims.  The decision also reinstated a $29.4 million jury verdict for the plaintiff.

Marine Polymer owned a patent that covered a composition that was used in biomedical and pharmaceutical applications, including the treatment of wounds.  The claims contained the limitation that the compositions were “biocompatible” (i.e., that the compositions were not highly reactive with living cells.  

Continue Reading Intervening Rights Resolved by Federal Circuit

By: Scott Hervey

Brand licensing transactions can be structured in a wide variety of ways.  However the fundamental purpose remains the same; to give a third party the right to benefit from the goodwill and economic value associated with an established mark.  Regardless of the structure of the transaction, there are key deal terms that all brand owners need to consider in all licensing transactions. 

1.         Consider Equity.           Most licensing transactions take the form of a contractual relationship whereby the brand owner (licensor) grants the licensee the right to use a brand for a specific purpose in exchange for a royalty.  Although this arrangement is fine for most instances, in certain circumstances it may be more advantageous to the licensor to take a different approach.   For example, the licensor and licensee can form an entity and then have the entity enter into a license agreement with the licensor, which has certain advantages.  First, if the venture is one that lends itself to possibly being acquired by a third party, by virtue of having an equity position, the licensor can participate in the purchase or any other liquidity event.  Obviously a license agreement could also be structured to protect against a licensor not participating in the sale of the licensee. There are however other good reasons to consider running the transaction through an entity.

Continue Reading Six Key Points in Negotiating Brand Licensing Agreements

By: Nathan Geronimo

A few months ago I wrote about the dangers of posting information online that contradicted your own contentions when involved in litigation.  I cited to cases where posts on social networking sites were used as evidence against plaintiffs in civil cases.  A recent case involving blogs and social networking sites illustrates yet another legal issue associated with internet posts in the modern times: Posts affecting a third party’s privacy, and the possibility that such posts can be considered harassment.

Johnson v. Arlotta is a classic “jilted lover” story with a modern twist.  Andrew Arlotta and Ann Marie Johnson had a romantic relationship for just under a year.  After this relationship terminated, Arlotta continued to contact Johnson, who did not welcome Arlotta’s communications.  In late December 2009, Johnson obtained a six-month harassment restraining order against Arlotta, which prohibited Arlotta from committing any acts intended to adversely affect Johnson’s safety or privacy, and from having any contact with Johnson by email or by other means or persons.

Continue Reading Don’t Blog on Me

By: James Kachmar

The Ninth Circuit recently addressed the availability of a wide variety of damages in a trademark infringement case. In Skydive Arizona, Inc. v. Quattrocchi  (2012 U.S. App. LEXIS 5100), the Court analyzed the various types of damages that are available to litigants in a trademark infringement action.

Skydive Arizona, Inc. (“Skydive”) operates one of the largest skydiving operations in the world.  Defendants operated an internet and telephone based advertising service which made skydiving arrangements for its customers as well as offered coupons for various skydiving centers.  Defendants operated several internet domain names that were strikingly similar to Skydive’s trademark and apparently falsely advertised that it was the owner of several skydiving centers in Arizona.  In addition, Defendants sold skydiving certificates that allegedly misled customers into believing that Skydive Arizona would accept them for their skydiving center.

Continue Reading Skydiving and Trademark Infringement Damages

By: Zachary Wadlé

On April 14, 2012 in Cleveland, Ohio, iconic rock band Guns N’ Roses will be inducted into the Rock and Roll Hall of Fame.  The induction comes 25 years after original members Axl Rose (lead vocals), Saul Hudson aka “Slash” (lead guitar), Izzy Stradlin (rhythm guitar), Duff McKagan (bass), and Steven Adler (drums) released their debut album, Appetite for Destruction, which sold more than 28 million copies worldwide and ranks as the best-selling debut album ever.  After a meteoric rise in popularity, the original lineup began to break up in the early 1990’s due to problems with substance abuse by various band-members and acrimonious infighting over the creative direction of the group.  This ultimately led to Axl Rose gaining sole control of all Guns N’ Roses intellectual property and its musical catalog, but also becoming estranged from the original members.  Today, Rose tours as Guns N’ Roses along with a group of new musicians who perform many of the band’s original tunes, along with the band’s new material from its most recent album, Chinese Democracy.

Rock and Roll Hall of Fame inductees traditionally perform a short set during the induction ceremony.  In years past, long-separated bands such as The Police and The Eagles have put aside their differences during the ceremony for a one-time-only reunion performance.  News of Guns N’ Roses’ induction has naturally produced speculation that the original lineup may reunite for the ceremony, which would be a highly anticipated event among the 30 and 40-something rock music crowd.  The only stumbling block appears to be continued animosity between Rose and Slash, which has resulted in multiple public spats and lawsuits over the years. 

Continue Reading All we need is just a little (more) patience — Sync license dispute threatens to derail any hope of Guns N’ Roses Reunion Show