May 14, 2020

Intellectual Property

Intellectual Property

Recent Changes in Employee Ownership Laws: Employers May Not Own Their Inventions and Confidential Information
      Ronald B. Coolley, 41(1): 57–75 (Nov. 1985) This Article analyzes recent state legislation and judicial decisions affecting employment agreements and discusses items to consider in reviewing or revising current employment agreements and in drafting new employment agreements.

Trade Secrets: Important Quasi-Property Rights
      Ramon A. Klitzke, 41(2): 555–70 (Feb. 1986)
Trade secrets increase in importance as a business gains experience in a particular area. This Article is designed to alert the business lawyer to the broad legal protection available to owners of trade secrets. The description of a trade secret is tied to the kind of conduct that will precipitate a cause of action.

Analyzing the New Dangers of Potential Patent Controversies: A General Guide
      Bill Schuurman and D.C. Toed III, 41(3): 727–45 (May 1986)
Two recent judicial trends—willful patent infringement and the so-called fraud on the Patent and Trademark Office—have increased the need for early attention to potential patent infringement controversies. This Article offers general guidelines for analyzing potential patent infringement controversies in view of these trends. A glossary is provided.

Guidelines for the Permissible Photocopying of Newsletters and Newspapers for Corporate Use
      Karen Gantz, 41(4): 1327–39 (Aug. 1986)
Corporations today must reconcile the rights of authors and publishers under the copyright laws with technological improvements in copying techniques. This Article sets forth guidelines for the permissible photocopying of newsletters and newspapers by corporate users.

What's in a Name? Establishing and Maintaining Trademark and Service Mark Rights
      David A. Westenberg, 42(1): 65–89 (Nov. 1986)
A trademark or service mark is a unique proprietary right for several reasons. A mark never wears out; a mark becomes more valuable with use; and a mark is a reasonably liquid asset. Used properly, a trademark or service mark can become an intangible asset of incalculable value, but careless usage can result in the loss of all rights. This Article presents guidelines for establishing and maintaining registrable and protectible rights in trademarks and service marks.

The EEC Patent Licensing Regulation—Practical Guidelines
      Michael L. Coleman and Dieter A. Schmitz, 42(1): 101–19 (Nov. 1986)
The long-awaited Patent Licensing Regulation of the European Economic Community now allows parties to draft patent license agreements that are exempt from some of the EEC competition rules. Beginning with a general overview of Article 85 of the Rome Treaty, this Article briefly reviews the historical background of licensing under the case law of the EEC Commission and the European Court and then analyzes the new Regulation. Finally, the Article offers some practical recommendations for the person who faces an EEC licensing situation.

The Concept of Reasonableness in the Protection of Trade Secrets
      Patrick P. Phillips, 42(4): 1045–51 (Aug. 1987)
The time for a company to take steps to protect its trade secrets is not when an alleged act of misappropriation comes to light. Claiming to have a trade secret absent adequate protection can often result in the loss of the "trade secret." Although this Article provides a minimal amount of theory, its primary purpose is to provide a nuts-and-bolts discussion of how to protect trade secrets.

Protecting Trade Secret Information: A Plan for Proactive Strategy
      Michael A. Epstein and Stuart D. Levi, 43(3): 887–914 (May 1988)
This Article reviews strategies that companies can use to protect important and competitively sensitive information under trade secret law. It provides a methodology for establishing or evaluating an information protection plan and details specific actions that companies should take to maintain the confidentiality of important information.

Intellectual Property Licenses in Bankruptcy: New "Veto Power" for Licensees Under Section 365(n)
      Stuart S. Moskowitz, 44(3): 771–90 (May 1989)
Although technology licenses have been found to constitute executory contracts under the bankruptcy law, parties to such contracts attempting to understand their rights have often been left floundering as courts have applied varying standards and reached different conclusions when licensees sought to reject such contracts in recent bankruptcy cases. In an attempt to reduce uncertainty, Congress amended the Bankruptcy Code in October 1988 to allow for special treatment of intellectual property licenses. Although the legislation goes far to establish rules on a number of key issues, it also raises questions which may require congressional attention in the near future.

Licensing Intellectual Property and Technology from the Financially Troubled or Startup Company: Prebankruptcy Strategies to Minimize the Risk in a Licensee's Intellectual Property and Technology Investment
      Richard M. Cieri and Michelle M. Morgan, 55(4): 1649–98 (Aug. 2000)
In today's new economy, intellectual property and technology industries are booming. As a result, companies and financial institutions increasingly are presented with new business and investment opportunities with high-tech companies. Although the potential return on such a business relationship or investment may be high, so also is the risk that the high-tech company will experience financial difficulties. A company or financial institution considering a business relationship or investment with a high-tech company thus should recognize this risk and take steps to protect its intellectual property and technology investment. This Article summarizes the potential risks facing a company or financial institution doing business with a high-tech company and suggests actions that may be taken to protect this intellectual property and technology investment.

The Effect of Corporate Acquisitions on the Target Company's License Rights
      Elaine D. Ziff, 57(2): 767 (Feb. 2002)
Mergers and acquisitions are increasingly driven by the desire to obtain the target company's intellectual property rights-namely, patents, copyrights, and trademarks. Where, however, such rights are merely licensed to the target company, the acquirer must consider whether such rights will survive the transaction intact. The transferability of intellectual property license rights is not is not governed solely by general contract principles, due to federal policies that support authors and inventors. This Article examines the specialized body of precedent dealing with the assignability of intellectual property license rights under a variety of acquisition structures, including asset sales, mergers, and stock purchases. Understanding the factors that have influenced courts in this area will assist practitioners in assessing the risk of whether the target company's license rights will be adversely affected by the consummation of the transaction.

The Guilty Eye: Unauthorized Access, Trespass and Privacy
      Peter A. Winn, 62(4): 1395—1438 (August 2007)
Statutes forbidding unauthorized access to computers have become a mainstay of the legal protections governing networked computer systems, both in the United States and throughout the world. Courts have interpreted the concept of unauthorized access in the light of the common law of trespass, taking its meaning beyond the simple idea of computer hacking, and using it to protect computer-based information in general. This process has been very controversial; it is perceived to be creating a new property right in electronic information. This article contends that the debate about the so-called "new property" in electronic information has overlooked the flexibility in common law trespass, which maintains a natural balance between over-protection and under-protection of any given resource. While the writ of trespass has traditionally protected property and privacy rights, resource users who conform to objective standards of reasonableness have rarely been held liable for trespass. The balance inherent in common law trespass is illustrated by the famous two-part "reasonable expectation of privacy" test, used to decide Fourth Amendment search and seizure cases. This article proposes a similar test should be used when deciding computer trespass cases, formulated as follows: First, the access must take place without the (subjective) permission of the rights-holder. Second, the access objected to must be of a kind that a reasonable person (objectively) would expect to be unauthorized. Use of this test allows for a doctrine of computer trespass which protects property and privacy interests in electronic information, while still being flexible and dynamic enough to permit the free flow of ideas and information in open computer networks like the internet.

Trademark Licensing in the Shadow of Bankruptcy
     James M. Wilton and Andrew G. Devore, 68(3): 739-780 (July 2013)
When a business licenses a trademark, transactional lawyers regularly advise that if the trademark licensor files for bankruptcy, the licensee could be left without a right to use the mark and with only a bankruptcy claim for money damages against the licensor. Indeed, the ability of a trademark licensor to reject a trademark license and to limit a licensee’s remedies to a dischargeable claim for money damages has been a significant risk for licensees for twenty-five years based on the Fourth Circuit case, Lubrizol Enterprises, Inc. v. Richmond Metal Finishers, Inc. This result is grounded in the Bankruptcy Code prohibition on remedies of specific performance for non-debtor parties to rejected contracts and is in accord with Bankruptcy Code policy of affording debtors an opportunity to reorganize free of burdensome contracts. In the summer of 2012, however, the Seventh Circuit, in its decision Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, held that a non-debtor trademark licensee retains rights to use licensed trademarks following rejection of the contract by the debtor-licensor. The decision, derived from a pre-Bankruptcy Code paradigm for understanding the rights of non-debtors under rejected executory contracts that convey interests in property, creates a circuit split over the implications of trademark license rejection. This article asserts that the Sunbeam Products case misconstrues the rights of a trademark licensee as a vested property right and is therefore incorrect under both the holding of the Lubrizol case and the pre-Bankruptcy Code paradigm on which the Sunbeam Products case relies.

Task Force Introductory Report and Background Considerations Model Intellectual Property Security Agreement
     Model Intellectual Property Security Agreement Task Force, Commercial Finance committee and Uniform Commercial Code committee, ABA Business Law Section, 771(3): 849-932 (Summer 2016)