Volume 11 - Number 11 | August 2005
| August issue in PDF format … |
| MGM v. Grokster: Inducement Theory Leaves Unanswered Questions By Howard J. Shire, Michael Kelly and Daniel P. Margolis In MGM Studios, Inc. v. Grokster, Ltd., No. 04-480 (June 27, 2005), the Supreme Court decided that the defendants could be held liable for copyright infringement perpetrated by the users of their respective software. Rather than clarifying the "significant noninfringing use" standard from Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984), to determine whether the defendants could be held liable for distributing a product with knowledge that it could be used to infringe, the Court utilized an alternative approach of finding liability. Turning to common law precedent and patent law, the unanimous Court held that liability may be based on purposeful, culpable expression under an inducement theory of secondary infringement. While some of the potential implications of this decision can be predicted, the full effect will not likely be clear for some time. |
| Merck KGaA v. Integra Lifesciences I, LTD Uncertainty in the Scope of the Section 271(e)(1) Exemption By Gary H. Levin, Patrick J. Farley and Chad Ziegler On June 13, 2005, the Supreme Court in Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. ___, 2005 WL 1383624 (2005) ruled that the safe-harbor infringement exemption of 35 U.S.C. §271(e)(1) may apply to non-clinical research on a patented compound as long as there is a reasonable basis to believe that the compound tested could itself be the subject of an FDA submission or that experiments with the compound will produce the kinds of information relevant to an Investigational New Drug Application ("IND") or a New Drug Application ("NDA"); the exemption may apply even though the patented compound never itself becomes the subject of an FDA submission or the experimental results arising from its use never reported in a submission. The decision reversed the holding of the Federal Circuit (331 F.3d 860 (Fed. Cir. 2003)) that the exemption applies only to research used to obtain information that is submitted to the FDA as part of an application for regulatory approval. The Court expressly refused, however, to consider whether §271(e)(1) might exempt "research tools" from infringement liability. Although the Court interpreted the reach of the §271(e)(1) exemption broadly, the issue of whether use of patented research tools falls within it remains unresolved. |
| Registration of Nontraditional Trademarks in the U.S. and EU By Katrine A. Levin In recent years, innovative approaches toward brand creation and marketing have given rise to a new family of trademarks, referred to as nontraditional marks, which include, among others, color, motion and non-visual marks. Trademark laws in both the United States and Europe are being clarified to accommodate these new marks. Many such provisions are harmonious across both regions, but there are some procedural and substantive differences that should be considered before a company invests its time and resources into the creation of an international nontraditional brand. Further, registration of most nontraditional marks often requires a showing that the mark acquired distinctiveness through extensive use, which can be a heavy burden to meet under the law of both jurisdictions. |
| IP News By Compiled by Eric Agovino Highlights of the latest intellectual property news from around the country. |
