by David Muradyan

 

When a creditor provides a loan to a debtor, the debtor will often grant to the creditor a security interest in the debtor’s collateral, including the debtor’s intellectual property. A creditor who receives a security interest in the debtor’s intellectual property, usually by a security agreement, must perfect the security interest so that subsequent purchasers and creditors are on notice of the creditor’s security interest in the collateral. Rules relating to the creation, attachment, perfection and priority of security interests in personal property, including “general intangibles” which include intellectual property, are governed by Division 9 (Secured Transactions) of the California Uniform Commercial Code (“Article 9”), unless federal law preempts Article 9. In order to determine where to perfect a security interest for each type of intellectual property, and since copyrights, trademarks, and patents are all governed by different statutes and case law, it is important to review and analyze not only Article 9 but also the Copyright Act of 1976, 17 U.S.C. § 101 et. seq. (the “Copyright Act”), the Lanham Trademark Act of 1946, 15 § 1051 et. seq. (the “Lanham Act”), and the Patent Act of 1952, 35 U.S.C. § 101 et. seq. (the “Patent Act”).

 

Continue Reading How to Perfect a Security Interest in Intellectual Property (Copyrights, Trademarks and Patents)

by David Muradyan

A copyright is a form of protection afforded to owners of “original works of authorship” for the owner’s literary, musical, artistic and other works. Owners of copyrights have a number of exclusive rights, including the right to reproduce the copyrighted work in copies, to prepare derivative works based upon the work, and to distribute copies of the work to the public by sale or other transfer of ownership. One who uses another’s copyrighted material without permission from the copyright owner may be liable for copyright infringement, unless that person can demonstrate that the use was “fair use,” which is an affirmative defense to copyright infringement.  

Continue Reading “Fair Use”: An Affirmative Defense to “Copyright Infringement”

by Audrey Millemann

In ABB Inc. v. Cooper Industries, LLC, 97 U.S.P.Q. 2d 1885 (Fed. Cir. 2011), the Federal Circuit resolved an open question concerning subject matter jurisdiction of declaratory judgment actions based on patent infringement. 

Cooper Industries owned several patents covering electrical equipment containing dielectric fluid.  ABB manufactured a type of dielectric fluid called “Biotemp.”  Cooper sued ABB for patent infringement.  Cooper and ABB later settled the case, and Cooper granted ABB a non-exclusive license to make, have made, sell, or import the Biotemp product.  The license stated that it did not include any rights of third parties to make the Biotemp product.  In the license, ABB admitted that Cooper’s patents were valid and that the claims of the patents covered the Biotemp product. 

Continue Reading Jurisdiction in Declaratory Judgment Actions – Federal Circuit Resolves Open Question

By Scott Hervey           

Early this year, the Ninth Circuit issued its opinion in Network Automation v. Advanced Systems Concepts and clarified that the use of another’s trademark as a search engine keyword to trigger one’s own product advertisement is “use in commerce” and may violate the Lanham Act. Prior to its decision in this case, the Ninth Circuit assumed without expressly deciding that the use of a trademark as a search engine keyword that triggers the display of a competitor’s advertisement is a “use in commerce.” For a time, it wasn’t always so clear that such use was an improper attempt to profit from the good will of another’s trademarks; certain jurisdictions held that such use was not commercial (trademark) “use” and therefore no infringement.

Continue Reading Ninth Circuit Clarifies Position on Keyword Advertising Liability

By James Kachmar

On February 23, 2011, the Ninth Circuit issued its opinion in a case involving the Betty Boop cartoon character titled: Fleischer Studios, Inc. v. A.V.E.L.A., Inc., et al. In that case, heirs of the creator of the Betty Boop cartoon claimed that defendants, which were marketing products with Betty Boop’s image, were liable for copyright infringement. (The case also involved claims of trademark infringement which will not be discussed in this article.)

Continue Reading Betty Boop and Chain of Title Issues