Intellectual Property & Franchising Law

    Misuse of Social Media Photographs Can Lead to Costly Copyright Infringement January 10, 2014, 2:48 PM
    Anyone who has ever had Getty Images lawyer send them a letter demanding payment of retroactive fees for trivial usage of copyrighted photographs on their website will see the irony in a recent federal court decision granting a photographer $1.2 million in damages for misuse of his photographs by that company and another who took eight of his photographs from a Twitter account and subsequently published them and licensed them for use by others.
    Hidden Trap in Confidentiality Provisions in Settlement Agreements Entered into by Franchisors January 02, 2014, 2:52 PM
    Franchisors entering into settlement agreements must be certain that the settlement agreements give the franchisor the right to make any disclosures required by the Franchise Disclosure Document ("FDD"), without breaching any confidentiality provisions in the settlement agreement.
    What is UCITA? December 11, 2013, 2:52 PM
    UCITA is the Uniform Computer Information Transactions Act promulgated by the National Conference of Commissioners on Uniform State Laws. UCITA has only been adopted by two states Virginia and Maryland. For the most part, the UCITA provisions can be waived or varied by contract. Although UCITA was developed to provide basic default rules for licensing, it is widely contested and debated. Many consumer advocacy groups, as well as numerous state attorney generals, have opposed the adoption of UCITA because they argue that UCITA is biased in favor of the software industry. - Nicole J. Harrell
    Patent Reform or Toll the Troll December 09, 2013, 2:53 PM
    In my continuing quest to report on legal developments that may portend real change to the patent trial practice within the Eastern District of Virginia, today we tackle the Innovation Act (H.R. 3309) recently passed by the United States House of Representatives. That act, a mlange of politically appeasing fixes was aimed at making procedural changes that would curb the patent litigation abuses wrought by so-called trolls under the America Invents Act.Since the passage of the America Invents Act, there has been an increase in companies acquiring broad patentparticularly business method patentsand asserting them against all forms of business and not so much to enforce patent rights but rather to extract licensing fees from companies that infringe the patents. Despite contending that the broad patents are invalid, many companies end up settling for a modest license fee rather than incur the substantial costs of litigation and, in particular, the liberal discovery now afforded under the Federal Rules of Civil Procedure. To combat this growing issue, the House, by a 325 to 91 vote, passed the America Invents Act on December 5, 2013. According to the Washington Post, the chief provisions may be summed up as follows:
    No Trademark for Generic Term December 06, 2013, 2:54 PM
    The Eastern District of Virginia was recently asked to review whether the Patent Trademark Office (PTO) and the Trademark Trial and Appeal Board (TTAB) properly refused to grant a trademark application based on a terms generic usage. When a party seeks review of a TTAB decision in federal district court, rather than appealing to the Federal Circuit, the parties are allowed to introduce new evidence not considered by the TTAB.
    Sweepstakes, Contests, Games of Chance November 27, 2013, 2:54 PM
    Increasingly, businesses are using promotions, including sweepstakes, contests and games of chance, in marketing their businesses or products. Such promotions are highly regulated and can raise significant compliance issues. Businesses should consider consulting counsel familiar with sweepstakes, contests and similar promotions, to ensure their sweepstakes and other promotions are fully compliant with all applicable laws.
    Works Made for Hire November 15, 2013, 2:56 PM
    Did you recently discover that you do not own something you thought you did, like your software, website or logo? The basic rule is that if your employee creates something for you as the employer, that is within the scope of his or her employment, then you as the employer own that work. If, however, you contract with an independent third party, then that third party owns the work unless you have agreed otherwisein writing. When engaging a third party to write code, design a website, or create copy, a logo or other materials, the terms of your engagement should be in writing and clearly state that the works are being created specifically for you and are considered works made for hire. In addition, the third party should specifically assign and transfer to you all rights, title and interest in and to the work that is being created. Without this written agreement and specific language, you don't own the work that you otherwise paid for. - Nicole J. Harrell
    More Limitations on Patent Litigation November 08, 2013, 2:57 PM
    As this blog has noted in the past, there is a move afoot to limit the abuses of expensive patent litigation. From the Federal Rules of Civil Procedure (Amendments effective this December) and various District Court Local Rules that limit discovery to proactive judges that currently use Rule 16 Pretrial Conferences to shape the course of discovery, efforts are being made to reduce the expense and burden of these lawsuits. Now, the Senate can be named among those bodies championing this cause. According to his website, Senator John Cornyn of Texas has proposed a bill to amend Title 35 to provide:
    Prospective Franchisee Due Diligence Part 5 October 29, 2013, 2:57 PM
    This post, and the posts that preceded it (Parts 1-4) outline the due diligence that we recommend for prospective franchisees. For the prior blog posts on this topic, click Part 1, Part 2, Part 3and part 4.