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IP Litigation for the Everyday Lawyer Seminar 2012
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IP Litigation for the Everyday Lawyer Seminar 2012

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A seminar presented for Virginia CLE on how non-IP lawyers can deal with and gain a basic understadning of the issues in intellectual property litigation matters.

A seminar presented for Virginia CLE on how non-IP lawyers can deal with and gain a basic understadning of the issues in intellectual property litigation matters.

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IP Litigation for the Everyday Lawyer Seminar 2012 IP Litigation for the Everyday Lawyer Seminar 2012 Presentation Transcript

  • The basics of litigating various types of intellectual property matters,including a brief overview of specialty procedures. By Tom Dunlap Dunlap, Grubb & Weaver, PLLC
  • 1. Overview2. Copyright Litigation3. Trademark Litigation4. Trade Secrets Litigation5. Patent Litigation6. Questions & Answers © 2012 Dunlap, Grubb & Weaver PLLC
  • Patent © Trade Secrets ® TM SM © 2012 Dunlap, Grubb & Weaver PLLC
  •  What is copyright?  Original works of authorship that are fixed in any tangible medium of expression.  NOT brand or ideas How to secure copyrights?  Automatic on creation or registration with U.S.C.O. © 2012 Dunlap, Grubb & Weaver PLLC
  •  Exclusive Rights of Owner  Reproduce or make copies of the original work.  Prepare derivative works.  Sell or distribute the work.  Perform or display the work. Term  Life of author + 70 years  Work-for-hire = publication + 95 years or creation + 120. © 2012 Dunlap, Grubb & Weaver PLLC
  •  Jurisdiction  Federal courts only Venue  Where defendant is found or where infringing acts occur Infringement—show: 1. Ownership of valid copyright. 2. Copying of protected elements © 2012 Dunlap, Grubb & Weaver PLLC
  •  A valid copyright is  an original work independently created with a modicum of creativity fixed in a tangible means of expression. It is infringed when  work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner within the US © 2012 Dunlap, Grubb & Weaver PLLC
  •  No mens rea required Three year statute of limitations Indirect liability via  contributory infringement  vicarious infringement If no registration then  injunctive relief and actual damages only © 2012 Dunlap, Grubb & Weaver PLLC
  •  Fair use for criticism, comment, news reporting, teaching, scholarship, or research:  purpose and character  nature  amount used  effect of the use Parody (excluding satire) De minimis use U.S. government works Computer software backup © 2011 Dunlap, Grubb & Weaver PLLC
  •  Invalidity Independent creation Equitable defenses  Misuse  Abandonment  Equitable estoppel  Innocent intent  Unclean hands © 2011 Dunlap, Grubb & Weaver PLLC
  •  Preliminary and permanent injunctions  Irreparable harm is NOT presumed. Impoundment and destruction Actual damages Infringer’s profits Statutory damages  $750 to $30,000 per infringement;  up to $150,000 for willful Attorney’s fees Customs seizures © 2012 Dunlap, Grubb & Weaver PLLC
  • What is trademark?  Brand that identifies products or services to show they originate from a unique source, and distinguish those products or service from those of othersHow to secure?  Automatic with use in commerce or registration with USPTO. © 2012 Dunlap, Grubb & Weaver PLLC
  •  Exclusive Rights of Owner  right to use (or authorize use)  right to register Term  Potentially indefinite © 2012 Dunlap, Grubb & Weaver PLLC
  •  Jurisdiction  Concurrent in state and Federal courts Venue  Where defendant is found or where acts occur Infringement—show:  Reasonable likelihood of confusion (MFLOCC or USPTO test) Dilution – show:  Famous mark is being diluted © 2012 Dunlap, Grubb & Weaver PLLC
  •  Reasonable likelihood of confusion  MFLOCC - 4th Cir = Pizzeria Uno Corp. v. Temple (8 factors) – infringement  USPTO = In re E.I. du Pont de Nemours & Co (14 factors) – registration/ TTAB/ Fed Cir. It is infringed when  Confusingly similar opposing mark used in commerce in connection with the sale, offering for sale, distribution, or advertising of goods and services in a manner likely to confuse consumers © 2012 Dunlap, Grubb & Weaver PLLC
  •  TDRA for distinctive famous marks Infringed when  opposing mark used in commerce dilutes famous mark  similarity gives rise to an association; and  association impairs the distinctiveness © 2011 Dunlap, Grubb & Weaver PLLC
  •  Discovery of evidence of actual confusion Expert discovery & surveys:  Telephone Survey  Mall Intercept  Online Survey Important concepts in surveys  Defining the target population, methods of calculation, questionnaire design © 2011 Dunlap, Grubb & Weaver PLLC
  •  Pitfalls & Defenses  Appropriate target population?  Small sample size?  Lack of adequate control?  Biased or leading questions?  Data collection method appropriate for the issue?  Misleading or confusing survey instructions?  Reliable methods of tabulation/analysis?  Does data support expert’s conclusions? © 2011 Dunlap, Grubb & Weaver PLLC
  •  Inter partes proceeding with TTAB  No damages & cheaper Statute of limitations, laches or follows state trademark law (in Virginia – 2 years – tort) Indirect liability via  contributory infringement  vicarious infringement If no registration then  injunctive relief and actual damages only © 2012 Dunlap, Grubb & Weaver PLLC
  •  Fair use Parody Generic or descriptive Functional mark Equitable defenses  Laches  Unclean hands  Equitable estoppel © 2011 Dunlap, Grubb & Weaver PLLC
  •  Defendant’s profits Damages sustained by the plaintiff  Plaintiff’s lost profits, and  Harm to business reputation / goodwill. Treble damages  extreme willful conduct = courts discretion  willful use of counterfeit mark Attorney’s fees:  Usually only willful infringement or bad faith conduct  Mandatory fee shifting for willful use of a counterfeit mark Injunctive Relief Destruction of Infringing Articles Customs Seizure © 2011 Dunlap, Grubb & Weaver PLLC
  • What is a trade secret? Intellectual property created by State Law - Virginia Uniform Trade Secrets Act (VUTSA) Defined by statuteHow to secure?  Create and maintain secrets in a manner reasonable under the circumstances © 2012 Dunlap, Grubb & Weaver PLLC
  •  Exclusive Rights of Owner  To derive exclusive economic benefit for the purpose of exploiting the secret information Term  Potentially indefinite (unlike patent). . . © 2012 Dunlap, Grubb & Weaver PLLC
  •  Jurisdiction  State court only Venue  8.01-261 et seq. (state) Claim for theft when  Improper means to acquire knowledge or  At the time of disclosure knew or had reason to know that knowledge of the trade secret was: ▪ from or through a person who had utilized improper means to acquire it; ▪ acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use ▪ derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use or ▪ acquired by accident or mistake © 2012 Dunlap, Grubb & Weaver PLLC
  •  “derives independent economic value”  does not have to be substantial or significant, but more than de minimis. e.g. compilations of public facts “not being generally known”  knowledge of other members in that industry “not being readily ascertainable by proper means”  must be a secret but not be absolute for licensee’s etc. “efforts that are reasonable under the circumstances to maintain its secrecy”  reasonableness is key © 2012 Dunlap, Grubb & Weaver PLLC
  •  Court duty for mandatory preservation of trade secrets  see statute for examples Do a protective order at the outset of all trade secret cases. VUTSA displaces conflicting existing law providing for remedies for misappropriation of trade secrets but does not affect:  contractual remedies;  other civil remedies not based on misappropriation of trade secrets; and  criminal remedies. © 2012 Dunlap, Grubb & Weaver PLLC
  •  Fair use Parody Generic or descriptive Functional mark Equitable defenses  Laches  Unclean hands  Equitable estoppel © 2011 Dunlap, Grubb & Weaver PLLC
  •  Injunctive relief  NO requirement to prove irreparable injury or inadequacy of monetary damages Reasonable royalty  if a complainant can’t prove a greater amount of damages by other methods Actual damages  and/or unjust enrichment (if not duplicative of actual loss). Punitive damages  capped at $350,000. Attorney’s fees  for willful, malicious or bad faith © 2011 Dunlap, Grubb & Weaver PLLC
  • o Intellectual property is important  5% of total legal market with a 6% growth rate – leading all legal practice areas in percentage growth  The importance of knowing something about intellectual property increases with the expansion and reliance on computerized information systems and the interneto Intellectual property is pervasive  Every business in the United States relies on intellectual property as a primary asset, in the form of brand if nothing else  Every individual has written an e-mail, posted an original text or had an idea to make something better Lawyers must know intellectual property  Even in the broadest sense to identify issues so they know when to get a practice area expert.
  • Tom DunlapDunlap, Grubb & Weaver, PLLCtdunlap@dglegal.comwww.dglegal.com