by Kathleen Lynch | Aug 6, 2015 | Entrepreneurship, Innovation, IP Management, Patent Prosecution
(I have to admit I picked this case in part on the name, Fuzzy Babba. )
Walmart sells a similar fuzzy slipper under the mark “Fuzzy Babba™.” Buyer’s Direct sued Walmart and others for infringing their design patent directed to a slipper that Buyer’s Direct sells under the mark “Snoozies”. In their defense, Walmart and others claimed that the patent was invalid because it was an obvious variation on slipper designs in existence at the time the patent application was filed.
A Federal District Court in New York City found in favor of the accused infringers, Walmart, Sears and High Point Design. The court found that the differences between the design patent and other slipper designs were obvious variations and that the patent was invalid.
What’s the take away here? Be very sure of the strength of your patent when you assert it against an alleged infringer. The first defense is often an attack on the patent itself. If the accused infringers prevail, your patent may be invalidated and any rights associated with it are lost.
Advising on intellectual property issues is critical to any organization. Having the right person to help you make that decision is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Jul 14, 2015 | Innovation
A California jury awarded a cardiologist $200 million dollars against Boston Scientific. The jury heard the patent infringement and licensing lawsuit filed by Dr. David Jang who developed two cardiac stents for Boston Scientific. The jury found in favor of Dr. Jang and awarded him $200 million dollars in damages. The jury determined that the medical device company breached its contract with Dr. Jang and infringed two patent claims.
In 2002, Dr. Jang licensed two stent patents to Boston Scientific in exchange for $50 million upfront and an additional $110 million contingent on sales of stents that incorporate his patents. In 2005, Dr. Jang sued Boston Scientific for breaching the license agreement and claimed that Boston Scientific failed to make payments required by the terms of the agreement. Dr. Jang alleged the company owed him just under $100 million for using his patented products, and with interest at about 12 percent a year, would bring that amount to more than $200 million.
What’s the take away here? First, a patent is only as good as your ability to enforce it. Here, the good doctor was able to stand his ground against a large opponent and prevail. Second, your ability to prevail in an infringement action may take longer than you would ever want. But patience may be a virtue in patent infringement actions, especially if the facts favor your cause.
Protecting your innovative developments is critical to any organization. Having the right person to help you through that process is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Jun 30, 2015 | Innovation, IP Management
Recently, the U.S. Supreme Court confirmed a lower court ruling for Marvel Entertainment relating to a patent royalty dispute for a Spider-Man toy. The majority, written by Justice Kagen, found that Marvel did not have to pay the agreed to royalties to the inventor of a web-shooting toy after the patent term expired. “Patents endow their holders with certain superpowers,” Kagan wrote, “but only for a limited time.”
The decision is a loss for the Spider-Man toy inventor Stephen Kimble. Mr. Kimble obtained the patent in 1990 for a toy that shoots foam string from a gloved hand, imitating the web spun by a spider person. Kimble sought to market the toy to Marvel’s predecessor, which at the time made its own “Web Blaster” toy without paying Kimble.
In 1997, Kimble sued Marvel and the parties settled for a fixed payment to Kimble, along with a 3 percent royalty on sales of the toy with no cutoff date. Marvel later sought a declaratory judgment that it no longer needed to pay royalties after the end of the patent term in 2010.
What’s the take away here? If you are entering into a license agreement for intellectual property rights, be sure to fully understand your obligations as well as your rights. Capitalizing on innovative developments is critical to any organization. Having the right person to help you make those decisions is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Nov 13, 2014 | Copyright, Intellectual Property
This is one in a series of posts covering some basic aspects of intellectual property law. Previous posts touch on patents (parts 1 and 2) and trademarks (parts 3 and 4). This post will cover the general elements of copyright law.
Copyright law protects the expression of an idea fixed in a tangible medium. Thus, the protection is more limited than other aspects of intellectual property law. However, if copyright infringement is found, relief to the copyright owner can include an order against further infringement as well as money damages which can range from between $200 and $300,000 per act of infringement. Damages may also include attorneys’ fees and costs. Infringers may also be subject to criminal prosecution and may be imprisoned if found guilty.
Types of works covered by copyright law include:
- literary;
- musical;
- dramatic;
- pantomimes and choreographic works;
- pictorial, graphic, and sculptural works;
- audiovisual works;
- sound recordings;
- derivative works;
- compilations; and
- architectural works.
In order to proceed with a copyright infringement action, you must register your work with the United States Copyright Office. This can be done online on their website.
Copyright notice is given by using “©” followed by the year or years in which the work was published and the owner. In addition, a statement such as “all rights reserved” or “no unauthorized use permitted” may follow the notice. This puts the public on notice of your intent to enforce your rights via copyright law.
Protecting your innovative developments is critical to any organization. Having the right person to help you make that decision is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Jul 7, 2014 | Business Name, Trademarks
A client of mine came to me recently lamenting the fact that someone in her industry was using an almost identical business name and service mark. She was given to understand that because the name is a family name, she was powerless to do anything about it. Not so.
Just because your name is McDonald, doesn’t mean you can sell hamburgers. And if your name is Guinness, you can’t open up a brewery. There are limits on your ability to use your name in connection with your business. These limits are established by the present landscape of what marks are being used. The test of infringement in trademark law is “likelihood of confusion.” Would a potential purchaser of goods or services be confused as to the source of those goods or services between your mark and your competitor’s mark? If the answer is yes, then there is a problem.
Trademarks, service marks and logos gain strength through use. Use of a mark is accomplished through sales of goods or services associated with that mark. It typically follows that the longer your business has been using a particular mark, the stronger the mark becomes.
In the case of my client, once she understood that she had significant strength in her mark, she was able to assert her rights against her competitor and force a change in the competitor’s mark. In addition, with her surname in use in her industry, her mark continues to gain strength.
If you are aware of any competitor’s mark that is similar, look at your options. Even if there are no problematic marks at present, keep an eye out for new marks and assert your rights where appropriate.
