2010-08-05T00:00:00-07:00 http://www.fenwickwest.com/rss/Default.asp http://www.fenwick.com/docstore/Publications/IP/IP_Bulletins/IP_Bulletin_Summer_2010.pdf 2010-08-05T00:00:00-07:00 2010-08-05T00:00:00-07:00

A unanimous decision is not always what it seems. On June 28, the U.S. Supreme Court upheld without dissent the U.S. Court of Appeals for the Federal Circuit’s ruling that a patent application for hedging against price changes was not patentable.

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Spring_2010.pdf 2010-04-23T00:00:00-07:00 2010-04-23T00:00:00-07:00

In the opening weeks of 2010, Parliament in London took up a bill to consider whether company directors might be held personally liable in certain areas implicating health and safety of workers.

http://www.fenwick.com/docstore/Publications/IP/2010-03-17_Facing_Off_Facebook.pdf 2010-03-17T00:00:00-07:00 2010-03-17T00:00:00-07:00

The increasing prevalence and popularity of social networking and similar sites raise new issues for brand owners and celebrities.

http://www.fenwick.com/docstore/Publications/IP/2010-03-17_Is_There_A_Second_Life.pdf 2010-03-17T00:00:00-07:00 2010-03-17T00:00:00-07:00

Recent years have seen the development of online communities through which massive numbers of users can interact with each other and with the environment itself in ways that increasingly approach real-world interactions.

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Winter_09-10.pdf 2009-12-24T00:00:00-07:00 2009-12-24T00:00:00-07:00

Recent years have seen the development of online communities through which massive numbers of users can interact with each other and with the environment itself in ways that increasingly approach real-world interactions.

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Fall_2009.pdf 2009-10-06T00:00:00-07:00 2009-10-06T00:00:00-07:00

A recent ruling in a highly publicized case in the United States District Court for the Central District of California rejected an aggressive legal theory that could have led to broad criminalization of the breach of terms conditioning access to websites and other computerized information.

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Summer_2009.pdf 2009-07-07T00:00:00-07:00 2009-07-07T00:00:00-07:00

The Patent Prosecution Highway (PPH) began in July 2006 as a pilot, one-year cooperative agreement between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO).

http://www.fenwick.com/docstore/Publications/Litigation/Litigation_Alert_06-22-09.pdf 2009-06-22T00:00:00-07:00 2009-06-22T00:00:00-07:00

The California Court of Appeal's recent opinion in FLIR Sys., Inc. v. Parrish, ___ Cal. App. 4th ___, 2009 Cal. App. LEXIS 943 (2d Dist. June 15, 2009) reinforces the need for careful deliberation in determining when and where to seek injunctive relief against trade secret misappropriation by former employees

http://www.fenwick.com/docstore/Publications/IP/Transfer_IP_Rights.pdf 2009-05-15T00:00:00-07:00 2009-05-15T00:00:00-07:00

We Americans take for granted the fact that intellectual property rights can be transferred from one person to another. A small "garage" inventor can sell patent rights to a manufacturing company. Two sparring competitors can settle their disputes by a cross-license of rights. Franchises can be built by licensing out trade secrets to local operators....

http://www.fenwick.com/docstore/Publications/IP/Top_Ten_Patent_Issues.pdf 2009-05-15T00:00:00-07:00 2009-05-15T00:00:00-07:00

Imminently, the Obama Administration will be naming a new Director of the U.S. Patent and Trademark Office ("PTO"). The PTO, which used to be a quiet backwater of a niche area of law, has recently found itself front and center in some high profile debates. From congressional efforts aimed at fixing a "broken" patent system to Supreme Court cases considering whether Internet Age innovations deserve the same patent protection as Industrial Age innovations, the work of the PTO is increasingly important to our society.....

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Spring_2009.pdf 2009-03-20T00:00:00-07:00 2009-03-20T00:00:00-07:00

A bipartisan quartet of senators and representatives held a press conference on March 3, 2009 announcing yet another push at patent law reform. Hearings commenced the following week...

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Winter_2008_2009.pdf 2008-12-23T00:00:00-07:00 2008-12-23T00:00:00-07:00

Personalized medicine companies should implement new strategies to deal with the challenges associated with protecting their inventions...

http://www.fenwick.com/docstore/Publications/IP/Blurry_Trademark_Dilution.pdf 2008-10-20T00:00:00-07:00 2008-10-20T00:00:00-07:00

In 2006, Congress passed the Trademark Dilution Revision Act, or "TDRA." Hailed by some and criticized by others, the TDRA was widely expected to make it easier for the owners of famous trademarks to prevail in claims for trademark dilution...

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Fall_2008.pdf 2008-10-17T00:00:00-07:00 2008-10-17T00:00:00-07:00

In Fisher Tool Co., v. Gillet Outillage, 530 F.3d 1063 (9th Cir. 2008), the Ninth Circuit adopted the Federal Circuit's standard requiring a showing of bad faith in order to maintain Lanham Act and state law claims premised on allegedly false representations of patent infringement made by a patentee, its distributors, agents and/or attorneys to third parties...

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Summer_2008.pdf 2008-07-15T00:00:00-07:00 2008-07-15T00:00:00-07:00

Rejecting the authority of a trio of more recent Ninth Circuit cases on the ground that their holdings could not be reconciled with an earlier Ninth Circuit decision, a Washington District Court has held a transfer of computer software to represent a sale, not a license...

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Spring_2008.pdf 2008-05-19T00:00:00-07:00 2008-05-19T00:00:00-07:00

Just as a semiconductor clean room aims to exclude airborne particles that could contaminate wafer layers, so the legal software clean room has sought to protect computer software developers from contaminating "access" to earlier works they might be charged with copying...

After unanimous approval by the California Assembly and the California Senate, Governor Arnold Schwarzenegger signed S.B. 771 into law on October 10, 2007, amending California Civil Code section 3344.1. 2008-03-03T00:00:00-07:00 2008-03-03T00:00:00-07:00

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Fall_2007.pdf 2007-10-12T00:00:00-07:00 2007-10-12T00:00:00-07:00

Disclosures to government regulators have always posed risks to trade secrets and other proprietary information.

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Spring_2007.pdf 2007-04-02T00:00:00-07:00 2007-04-02T00:00:00-07:00

The Supreme Court has ruled that patent licensees do not need to breach their license agreements before seeking a declaratory judgment in federal court that the underlying patent is invalid, unenforceable, or not infringed.

http://www.fenwick.com/docstore/Publications/Litigation/Litigation_Alert_07-25-06.pdf 2006-07-25T00:00:00-07:00 2006-07-25T00:00:00-07:00

On July 19, 2006, the Ninth Circuit held in Miller v. Glenn Miller Productions, Inc., No. 04-55874 (9th Cir. 2006) that a licensee of trademark and related publicity rights does not have the right to sublicense those rights to third parties without the licensor's express permission.

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Summer_2006.pdf 2006-06-30T00:00:00-07:00 2006-06-30T00:00:00-07:00

A patent gives its owner the right to exclude others from making, using and selling the claimed invention. Thus, patent rights give a patentee great control over who uses his or her invention.

http://www.fenwick.com/docstore/Publications/IP/fair_use_palooza.pdf 2006-04-19T00:00:00-07:00 2006-04-19T00:00:00-07:00

Statutory, or classic "fair use"—the use, other than as trademarks, of common words, in their ordinary descriptive sense—has long been a seemingly straightforward, not particularly controversial aspect of trademark law.

http://www.fenwick.com/docstore/Publications/IP/Trademark_Dilution.pdf 2006-03-22T00:00:00-07:00 2006-03-22T00:00:00-07:00

Three years ago, in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003) ("Victoria's Secret"), the Supreme Court held that the Federal Trademark Dilution Act of 1995...

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Winter_0506.pdf 2006-03-21T00:00:00-07:00 2006-03-21T00:00:00-07:00

In today's global marketplace, patent protection continues to be an important part of a company's overall business and intellectual property strategy. However, protection provided by any one patent is limited to within the country in which it was granted.

http://www.fenwick.com/docstore/Publications/IP/IP_Articles/Copyright_Basics.pdf 2006-02-21T00:00:00-07:00 2006-02-21T00:00:00-07:00

Copyright refers to the rights of authors in works of authorship — as distinguished from patents (whose subject matter is inventions), trademarks (which concern symbols of an enterprise's reputation and goodwill) and trade secrets (information whose value derives from being kept secret).

http://www.fenwick.com/docstore/Publications/IP/TM_Selection_for_HighTech.pdf 2006-02-07T00:00:00-07:00 2006-02-07T00:00:00-07:00

Among a company's most valuable assets are the symbols by which that company and its products or services are known to the public.

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Fall_2005.pdf 2005-11-22T00:00:00-07:00 2005-11-22T00:00:00-07:00

On November 7, 2005, the Recording Industry Association of America issued a press release announcing settlement of the longstanding file-sharing dispute with Grokster.

http://www.fenwick.com/docstore/Publications/IP/IP_Articles/Strategic_IP_Planning.pdf 2005-08-25T00:00:00-07:00 2005-08-25T00:00:00-07:00

The recognition of intellectual property as an intellectual asset, and an asset generally, is paramount to successful strategic intellectual property planning. Intellectual property should be thought of as having the characteristics of an asset, and should be so managed.

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Spring_2005.pdf 2005-06-14T00:00:00-07:00 2005-06-14T00:00:00-07:00

CoStar Reopens Settled Fixation Issue/Trademark Infringement and the Fair Use Defense/Changes in Store for "Ailing" Patent System/Family Entertainment and Copyright Act Becomes Law.

http://www.fenwick.com/docstore/Publications/IP/Trademark_Infringmnt_and_Fair_Use.pdf 2005-06-14T00:00:00-07:00 2005-06-14T00:00:00-07:00

In a December 8, 2004, decision, the Supreme Court resolved a split in the appellate courts on the significance of likelihood of confusion in a fair use defense to a trademark infringement claim.

http://www.fenwick.com/docstore/Publications/IP/IP_Articles/IP_Strategist_0605.pdf 2005-06-01T00:00:00-07:00 2005-06-01T00:00:00-07:00

Initial Interest Confusion and 'Post-Initial Confusion'.

http://www.fenwick.com/docstore/Publications/IP/IP_Articles/Correct_Inventorship.pdf 2005-05-23T00:00:00-07:00 2005-05-23T00:00:00-07:00

Although companies race to the U.S. Patent and Trademark Office to build their patent portfolios, technically, a company is not granted a patent.

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Winter_04-05.pdf 2004-12-28T00:00:00-07:00 2004-12-28T00:00:00-07:00

Trademarks on a Shoestring for Start-Ups/Circuit Courts Narrow the Reach of the DMCA's Anti-Circumvention Provisions/Quick Updates

http://www.fenwick.com/docstore/Publications/Corporate/Raising_Initial_Funding.pdf 2004-09-15T00:00:00-07:00 2004-09-15T00:00:00-07:00

This is a brief summary of the process for raising initial funding in the Bay Area for high technology companies.

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Fall_2004.pdf 2004-09-10T00:00:00-07:00 2004-09-10T00:00:00-07:00

Federal Circuit Whacks the Doctrine of Equivalents Again/The Role of Dictionaries in Patent Claim Construction/ Quick Updates.

http://www.fenwick.com/docstore/Publications/IP/UDRP_Versus_ACPA.pdf 2003-09-29T00:00:00-07:00 2003-09-29T00:00:00-07:00

One of the most frequent sources of conflict on the Internet has resulted from the unauthorized registration and use of domain names containing other parties' trademarks or company names, a practice commonly referred to as cybersquatting.

http://www.fenwick.com/docstore/Publications/IP/Domain_Name_Dispute.pdf 2003-06-04T00:00:00-07:00 2003-06-04T00:00:00-07:00

Providing a new forum for brand promotion, the Internet has significantly impacted both the use and abuse of trademarks.

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Spring_2003.pdf 2003-05-15T00:00:00-07:00 2003-05-15T00:00:00-07:00

Put It in Writing/Federal Trademark Dilution Law: The New Landscape/Quick Updates

http://www.fenwick.com/docstore/Publications/IP/Trademark_Law_On_The_Internet.pdf 2002-05-07T00:00:00-07:00 2002-05-07T00:00:00-07:00

I. Trademark Infringement / II. Likelihood of Confusion on the Internet / III. Trademark Dilution / IV. Cyberpiracy Relief

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Fall_2001.pdf 2001-12-15T00:00:00-07:00 2001-12-15T00:00:00-07:00

Are Borderline Generic Domain Names Such As e-cards.com and cards.com Protectable Trademarks?/ European Block Exemptions and What They Mean for California Lawyers/Quick Updates

http://www.fenwick.com/docstore/Publications/IP/IP_bulletins/IP_Bulletin_Spring_1999.pdf 1999-05-15T00:00:00-07:00 1999-05-15T00:00:00-07:00

Private Information For Sale: The Coming of Online Privacy Regulations/Avoiding International Trademark Disputes On The Internet/Quick Updates

http://www.fenwick.com/docstore/Publications/IP/Trademark_in_Cyberspace.pdf 1998-07-21T00:00:00-07:00 1998-07-21T00:00:00-07:00

Cyberspace raises a variety of thought–provoking trademark and trademark-related issues.