When Winning Might Also Be Losing: The Preclusive Effects of Defending a Trademark Application or Registration
December 29, 2006
Last summer, the Third Circuit Court of Appeals in <i>Jean Alexander Cosmetics, Inc. v. L'Oreal USA, Inc.</i>, 458 F.3d 244 (3rd Cir. 2006), joined a majority of the courts of appeal in holding that it would give full preclusive effect to any of the alternative holdings of a prior adjudication. In so doing, the court further highlighted the necessity of thinking both offensively and defensively at the earliest stages of a trademark dispute, including during proceedings before the Trademark Trial and Appeals Board ('TTAB').
Protecting Trade Dress in Once-Patented Subject Matter
December 29, 2006
The recent decision, <i>Fuji Kogyo Co. v. Pacific Bay Int'l, Inc.</i>, 461 F.3d 675 (6th Cir. 2006), confronts the question deliberately left unresolved in <i>TrafFix Devices, Inc. v. Marketing Displays, Inc.</i>, 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,' <i>Fuji Kogyo</i> 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 <i>TrafFix</i> presumption, asking whether the claimed trade dress would have infringed the expired patents.
The Use of Market and Industry Data in Patent Damages: The Two Approaches under Federal Rule of Evidence 703
December 29, 2006
Whether calculating lost profits or performing a 'reasonable royalty' analysis under the <i>Georgia-Pacific</i> 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 <i>Daubert v. Merrell Dow Pharms., Inc.</i>
News Briefs
December 29, 2006
Highlights of the latest franchising news from around the country.
Court Watch
December 29, 2006
Highlights of the latest franchising cases from around the country.
Appeals Court: Courts Decide Enforceability of Franchise Arbitration Provision
December 29, 2006
The enforceability of franchise arbitration agreements took center stage in the Ninth Circuit Court of Appeals en banc decision in <i>Nagrampa v. Mailcoups, Inc., American Arbitration Ass'n.</i> (2006) __ F.3d __, 2006 WL 3478345 ('<i>Nagrampa II</i>'). In a 7-4 ruling reversing the decision of the three-judge panel upholding arbitration ('<i>Nagrampa I</i>,' 401 F.3d 1024), the <i>Nagrampa II</i> 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.
Observations on Negotiating Franchise Agreements in Today's Legal Environment
December 29, 2006
Franchise law has long characterized franchise agreements as adhesion contracts (<i>see, Ticknor v. Choice Hotels Int'l</i>, 265 F.3d 931 (9th Cir. 2001) (Montana law); <i>Bolter v. Superior Court</i>, 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.
Litigating Reduction to Practice: Traps for the Unwary
December 28, 2006
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.
Patent Licenses: The Devil Is in the Details
December 28, 2006
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.
Jury Trials in Patent Cases: Practical and Legal Considerations
December 28, 2006
One of the most important questions facing a party going to trial in a patent action is whether a jury will help or hurt the party's chance of winning. Recent Federal Circuit and Supreme Court decisions confirm that patentees actually have considerable control over whether a judge or a jury decides the disputed facts. These decisions hold that the Seventh Amendment does not require a jury trial in patent cases where the relief sought is purely equitable, and the right to a jury trial can be lost if damages claims are dismissed. This article explores some of the legal and tactical considerations behind deciding whether to seek a jury trial.
