No You Can't Contract Your Way Around the FAA: Supreme Court Decides Hall v. Mattel
Here's the opinion: comment soon.
Help! Your Federal Judges and Settlement Officers
Check out Federal Judges Speak Out On Intellectual Property Litigation at the Guiding Rights Blog.
by Mark VB Partridge.
Mark conveys the advice of three federal court judges: Virginia Kendall, Rebecca Pallmeyer, and Matthew Kennelly as follows:
1. Too many exhibits. Focus on what you need to prove your case.
2. Useless discovery. You can get by with less.
3. Lack of focus. Make judgments about what is truly significant. Be cost effective.
4. Assuming that questions mean the judge doesn't understand. Visit court and observe the judge.
5. Missing the forest for the trees. Look at jury instructions to know what you need to prove to win. Draft jury instructions early.
6. Too much hyperbole. Give the facts and the law.
Except for "too many exhibits" (as a federal settlement officer I never get enough) I second all these failures as failures in the settlement conference as well as in the courtroom.
Listen, come at least as prepared to a settlement conference as you do to a motion hearing. You might actually settle the thing. The only day that's more important is the one set for trial.
And while I'm at it, here is a list of items your settlement officer could use to assist him/her in diminishing your opponent's expectations of victory. After that's done (quickly) everyone can move into the necessary distributive bargaining session or to brain-storming interest-based solutions to your IP dispute.
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charts
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graphs
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statistics
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photographs
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drawings
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schematics
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demonstrative exhibits
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and your three to six best killer trial exhibits.
If you need discovery, tell your settlement officer what you need during the pre-mediation telephone conference and she/he can attempt to get it for you before the session convenes.
Here's the beauty part of settlement conferences -- there are no rules. You can ask the settlement officer to help you play it anyway you want.
Go for it!
And please.
Help me help you. (see my federal settlement officer profile here!)
Frankly, We're Surprised This Didn't Happen Earlier: Class Action Seeks to Stop RIAA Bullying
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As the folks at Recording Industry v. The People note, the 109-page complaint begins by invoking the RIAA's statement that it sometimes catches dolphins when fishing.
It is a bold way to show the possible callousness of the RIAA and MediaSentry . . . but seems a bit reliant on the "see they are evil" idea rather than solid causes of action.
I have only scanned the complaint but the other claims could pose problems for the RIAA.
The RICO claims and the trespass to chattels claim offer chatter fodder. If nothing else the chattels doctrine which has been questioned if not mocked may end up protecting individuals in these cases.
Furthermore, the privacy claims seem to go to property ideas in that once the plaintiff thought something was on her computer (based on alleged acts by the defendants) she spent money to protect her property. With 109 pages there is more to think on but those alone catch attention.
For remainder of post click here.
USC IP Institute 17 and 18 March 2008
Mike Young writes to tell us that the USC IP Institute is coming up on March 17 and 18. See brochure below.
Mike is moderating a panel on fair use with a a group of experts, including Tony Falzone. Tony is with Stanford's Fair Use Project, and is currently in hot litigation with J.K Rowling over a publisher's right to publish a "reference guide." The case is set for trial on March 25th in New York.
At the special interactive in-house counsel forum on March 17, the panelists will ask -- while in-house counsel have led the charge for ADR and mediation in other fields, why are they reluctant to take their IP disputes to an ADR forum, mediation in particular?
The Rowling litigation may also be worth a mention at this forum.
Mike asks why not mediation?
Don't know what to offer a world famous billionaire author? How about an enhanced reputation or donating some of the boooks' proceeds to charity? How about establishing a Rowling Fellowship for an aspiring author with a disadvantaged childhood, similar to Rowling's. Just because someone is not motivated by money doesn't mean she is not motivated. Mediation allows the parties to explore just what that motivation might be.
The Rowling docket sheet is here.
The Rowling motion for injunction is here.
The RDR Books opposition is here.
The Court decided to turn the injunction hearing into a trial on the merits.
IP Forum - Get more free documents
IP Mediator Michael Young's "Girls Gone Wild" Commentary Catches Court's Attention
UPDATE: DESPITE MEDIATION RELATED INCARCERATION, GIRLS GONE WILD FOUNDER IS HEADED FOR MORE ADR
A federal judge has rejected a recusal motion from the maker of the Girls G
one Wild videos, who challenged the judge’s impartiality for first ordering mediation, and then sending the producer to jail for contempt based on his ADR conduct. That means the civil case against still incarcerated Joseph Francis will proceed. And, surprisingly, the case will go back to mediation.
In an order accompanying the . . . . opinion . . . U.S. District Court Judge Richard Smoak . . . told the parties to try mediation again. Smoak ordered . . . . mediation by June 27, with a “mediation report” deadline six days later.
In his 22-page opinion, Smoak strongly defends his record as a mediation supporter, and rejects claims that he tried to force Francis to settle before sending Francis to jail for contempt. The defense charges stem from a suit brought by Francis’ video subjects. . . . .
The support for the defense motion included Los Angeles attorney Michael Young’s 2007 Alternatives article, “Mediation Gone Wild: How Three Minutes Put an ADR Party Behind Bars,” 25 Alternatives 97 (June 2007) (available at WileyInterscience. com). Young wrote that Smoak’s moves intruded into the mediation process and hurt ADR.
Court's opinion below:
Court Opinion re Girls Gone Wild Producer Joe Francis - Get more free documents
Prepare to Celebrate World IP Day
“Never before in history has innovation offered promise of so much to so many in so short a time.”
"Intellectual property has the shelf life of a banana."
These two quotes from world-class innovator and IP rights owner, Bill Gates, say it all about the state of intellectual property today. While most people are aware of the intellectual property concept - of copyright, patents, industrial designs and trademarks - many still view them as business or legal concepts with little relevance to their own lives. To address this gap, WIPO’s Member States decided in 2000 to designate an annual World Intellectual Property Day. They chose April 26, the date on which the Convention establishing WIPO originally entered into force in 1970.
Speedy Patent Trials? Check Out the Northern District of California
We mediators long for the day when we can no longer use the expense, delay and uncertainty of trial as a good reason to settle your patent litigation. Why? Because mediation, as Diane Levin recently wrote, is simply an alternative -- not necessarily the "appropriate" -- means of resolving your clients' dispute. (See the Mediation Channel's post Debating the Meaning of "A" in ADR here)
It gives mediators no pleasure, and does our profession no good, for litigants to walk away from meritorious lawsuits because the chance to obtain justice through the justice system is not a genuine option anymore.
So we're pleased to bring you the good news that the Northern District of California is making a serious effort to get your patent case to trial with fewer delays (and less cost) than has been the rule of late.
Excerpt of a recent Duane Morris Client Update on the new Northern District Rules with a link to the full article below.
New Rules in the N.D. of California Seek to Accomplish More Efficient Patent Trials, with the Help of KSR
Patent litigants, patent rocket dockets, and entities seeking a more streamlined patent litigation should take notice of the U.S. District Court for the Northern District of California’s recent modification of its patent trial rules. Much is at stake in choosing where to file a multimillion-dollar patent litigation. Salient factors in selecting a forum include the court's docket backlog and its perception of patents. Now, the local rules are playing a much more prominent role and should be analyzed lest a patent party be beset with frustration and major setbacks. Here, the Northern District of California's recent actions in revising its local rules demand scrutiny by in-house and outside counsel in formulating a patent litigation strategy.
To read the full text of this Alert, please click here.
You Have Coverage for that IP Dispute? Follow the Money!
How important is insurance coverage to your clients' decision to bring or defend or negotiate the resolution of a commercial dispute? It's usually the difference between having options and being entirely out of luck.
And when that decision concerns catastrophic losses? Unless you are an insurance coverage specialist, you make coverage decisions at your peril.
Where do you go? To Dickstein Shapiro of course!
Daily Journal article announcing that Steve Goldberg, insurance recovery attorney extraordinaire -- and my main squeeze -- has left Heller Ehrman and joined Dickstein Shapiro below.
LOS ANGELES - Longtime Heller Ehrman attorney Stephen N. Goldberg has left the firm for Dickstein Shapiro in Los Angeles, the latest in a string of departures from San Francisco-based Heller Ehrman. . . . . Goldberg . . . . had been with Heller since 1973 and was a partner in its Los Angeles office. . . . .
Goldberg, who practices insurance recovery and complex commercial litigation, was part of Heller Los Angeles managing partner Nancy Cohen's successful insurance practice, an area of focus for the firm, according to firmwide managing partner Robert Hubbell. . . . .
Goldberg has handled insurance coverage in areas such as product liability claims, asbestos liability, environmental damage, first-party property and business interruption losses, director and officer liability and insurer bad-faith claims. His clients have included Texaco, Johns-Manville Corp., Atlantic Richfield Corp., Millennium Hotels and GMAC Commercial Mortgage Corp., according to Heller's Web site.
Goldberg's practice is well-suited to fit with Dickstein Shapiro's strong insurance coverage practice. Dickstein opened its Los Angeles office in 2005, when it acquired insurance recovery firm Pasich & Kornfeld. Linda D. Kornfeld is now managing partner of Dickstein Shapiro's Los Angeles office, and Kirk A. Pasich serves on the firm's executive committee.
The Moment an Idea is Divulged, It Forces itself into the Possession of Everyone
This is the sort of statement I simply cannot resist. Thanks to TechDirt!
If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. . . . He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me.
That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density in any point, and like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation. Inventions then cannot, in nature, be a subject of property.
-- Thomas Jefferson, courtesy of TechDirt's post On the Constitutional Reasons Behind Copyright and Patents -- click here for the full post.
Rule 408 No Bar to Proving Settlement in Trademark Case
See No do-overs, no take-backs over at Likelihood of Confusion, excerpt below:
Hypothetical: We are negotiating a trademark dispute. During those negotiations — which we both agree are being undertaken for purposes of settling our dispute — I, trademark user, promise not to object to (i.e., not to sue for) a certain use by you, other user, but we never actually incorporate that into any kind of agreement.
Five years later I sue you for making just that use. You try to introduce proof of that promise as evidence that I acquiesced to your use, and should be estopped (barred) from suing because of that acquiescence.
And I get down from my pony and scream: “You can’t use that! Those are settlement communications protected under Federal Rule of Evidence 408 — not admissible!”
Click here for the solution to the not-so-hypothetical problem in PRL U.S.A. Holdings vs. U.S. Polo Association.
Until the California Supreme Court decides Simmons v. Ghaderi, the result in PRL would not be the same here if the parties were mediating under the California Rules of Evidence. See here, here and here.
Not Breaking News: A Trademark Tutorial from Lindquist and Vennum
(image from the U.K. Trademark Application Blog)
What's the difference between an IP arbitrator or mediator and a general commercial arbitrator and mediator? Some of us -- like Les Weinstein and Michael Young -- have devoted substantial parts of their careers to patent (Les) and trademark (Michael) litigation.
The rest of us -- the Hon. John Leo Wagner (Fed. Magistrate, Ret.), Eric van Ginkel, the soon-to-be-added Jay McCauley and I -- have litigated patent, trademark, copyright and other IP cases in the course of our more general commercial litigation careers.
What unites us is an avidity for the topic and an interest in keeping up with the law. So in addition to being the quick studies that all general commercial litigators are, we're already all the way (Les, Mike) or half way there when you lay your fabulously instructive briefs on us.
To help our clients and ourselves, we print tutorials from time to time by law firms who our statistics page tells us are reading our blog. Today we excerpt and link to Lindquist and Vennum's terrific Trademark tutorial -- The Trademark Dilution Act of 2006 -- A Summary of Changes Affecting Trademark Owners
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When is a mark famous?
A mark is famous if the general consuming public of the United States widely recognizes it as a designation of a source of goods or services.
In determining whether a mark is famous enough to merit protection under the Trademark Dilution Revision Act, a court may consider all relevant factors, including:
- The duration, extent, and geographic reach of advertising and publicity of the mark, including whether the mark is advertised or publicized by the owner or third parties
- The amount, volume, and geographic extent of sales of goods or services offered under
the mark- The extent of actual recognition of the mark
- Whether the mark was registered
Because no registry of famous marks exists, determining whether a particular mark is famous requires the court to evaluate these factors on a case-by-case basis.
What constitutes tarnishment and blurring?
Dilution by tarnishment is an association arising from the similarity between the famous mark and the diluting mark that harms the reputation of the famous mark—that is, when the diluting mark is used in connection with undesirable or inferior goods or services that could create a negative association with the use of the famous mark.
Dilution by blurring is an association arising from the similarity between the famous mark and the diluting mark or trade name that impairs the distinctiveness of the famous mark. Dilution by blurring reduces the connection in the minds of consumers between the famous mark and the goods and services for which it is used.
In determining whether a mark is likely to cause dilution by blurring of a famous mark, a court may consider all relevant factors, including:
- The degree of similarity between the mark or trade name and the famous mark
- The degree of inherent or acquired distinctiveness of the famous mark
- The extent to which the owner of the famous mark is engaging in substantially
exclusive use of the mark- The degree of recognition of the famous mark
- Whether the user of the mark or trade name intended to create an association with the
famous mark- Any actual association between the mark or trade name and the famous mark
For the remainder of this excellent article, click here.
Why an IP ADR Blog? Because We Aggregate IP Settlement Information for You!
Someone once asked me whether IP ADR was too narrow a topic to justify an entire blog(!!!!)
Any regular reader will chuckle in response. Check out, for instance, the IP Blogs listed on the ABA Blawg site. This week's featured blog, Patently O, is one of the best IP blogs in the world. And it doesn't hurt Dennis Crouch's readership one bit that he hosts Patent Law Job listings here.
The ABA lists 151, count 'em, 151 separate IP Law Blogs! Those bloggers read and link to their IP Sister Blogs and are not simply repeating what each has to say but adding the unique perspectives that arise from a decade or more of active IP practice (younger specialty bloggeres are rare). .
You can pick up our RSS feed at the ABA Blawg site as well. While there are 150 IP Blogs, there's only one IP ADR Blog and, with all due modesty, it's a valuable one to add to your daily, weekly or monthly reading list.
Why? Because we search the IP Blawgosphere for you to come up with information useful to the settlement of IP cases. Below, for instance, is a chart from Patently O (thanks to David Schwartz!) showing the reversal rate of claim construction decisions. Why is this important to settlement? You know the answer -- the cost benefit analysis or decision tree process you're preparing to help you and your client find just the right price for the "sale" of your lawsuit to your opponent.
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