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The recent decision, Fuji Kogyo Co. v. Pacific Bay Int'l, Inc., 461 F.3d 675 (6th Cir. 2006), confronts the question deliberately left unresolved in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), of whether a product design claimed in a prior utility patent can ever be protectable trade dress under the Lanham Act. Although setting a high bar to protectability, indeed a 'presumption' and 'heavy burden' that material claimed in a utility patent is functional and hence unprotectable once the patent term ends, the Supreme Court, of course, expressly elected not to foreclose such protection entirely. Thus, it refused the invitation of defendant TrafFix, and 'some of its amici,' to rule that 'the Patent Clause of the Constitution, Art. I '8, cl. 8, of its own force, prohibits the holder of an expired utility patent from claiming trade dress protection.' 532 U.S. at 35. Without itself addressing the constitutional question of how narrowly 'limited times' means 'limited times,' Fuji Kogyo does nothing to ease the burden in establishing trade dress protection for once-patented subject matter; it offers as well a new (if, perhaps, less than fully developed) analytical approach for applying the TrafFix presumption, asking whether the claimed trade dress would have infringed the expired patents.

Whether calculating lost profits or performing a 'reasonable royalty' analysis under the Georgia-Pacific factors, a damages expert in a patent case is required to consider a large variety of data ' not just data from the plaintiff or the defendant, but also data from third-party sources, such as trade industry publications or market analyst reports. The admissibility of an opinion based on third-party information, however, has been a source of conflict since 1993, when the U.S. Supreme Court decided Daubert v. Merrell Dow Pharms., Inc.

Highlights of the latest franchising news from around the country.

Highlights of the latest franchising cases from around the country.

The enforceability of franchise arbitration agreements took center stage in the Ninth Circuit Court of Appeals en banc decision in Nagrampa v. Mailcoups, Inc., American Arbitration Ass'n. (2006) __ F.3d __, 2006 WL 3478345 ('Nagrampa II'). In a 7-4 ruling reversing the decision of the three-judge panel upholding arbitration ('Nagrampa I,' 401 F.3d 1024), the Nagrampa II court struck down the arbitration clause under California principles of unconscionability. Along the way, the court made significant holdings and observations that should garner the attention of franchise practitioners on both sides of the aisle.

Franchise law has long characterized franchise agreements as adhesion contracts (see, Ticknor v. Choice Hotels Int'l, 265 F.3d 931 (9th Cir. 2001) (Montana law); Bolter v. Superior Court, 87 Cal. App. 4th 900 (2001) (California law)). While no empirical data exist on the percentage of franchisors that will negotiate the terms of their franchise contract with prospective franchisees, it is fair to conclude that they remain a minority. To start the pre-sale disclosure process, a franchisor must present a prospect with the terms of its bona fide offer for the sale of a franchise. Frequently, these are the only terms the franchisor is prepared to accept.

Part One of this series discussed the two types of reduction to practice: constructive and actual. This installment continues the discussion of satisfying the second prong of the actual reduction to practice test.

When entering into a patent license, the most time is often spent on two issues: 1) how much money, and 2) what am I getting or granting for the money. Several recent appellate court decisions remind us that attention also needs to be paid to other provisions, as they can drastically affect one's rights. This article discusses three such decisions that address declaratory judgment actions, arbitration, and termination, that collectively remind us that the devil is in the details.