BY OLIVER HERZFELD, FORBES IP COUNSEL, JULY 10, 2013 - Contractual counterparties often negotiate and agree upon the key terms of a commercial transaction in a term sheet, leave other terms for further negotiation in due course, and agree to negotiate such other terms in good faith with the intention of entering into a definitive agreement based upon the initially agreed key terms. The question is, are such agreements to negotiate in good faith enforceable? And if so, what is the proper measure of damages if such an agreement is breached? Is the aggrieved party entitled to expectation damages (which would put such party in the position it would have been in had the agreement been fulfilled), or is its remedy limited solely to reliance damages such as attorney’s fees and other out-of-pocket expenses (which would only put such party in the position it would have been in had the agreement never happened)? The Delaware Supreme Court’s recent decision in SIGA Technologies v. PharmAthene provides some important guidance regarding the answers to these questions.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, JUNE 25, 2013 - In a prior article, I reviewed the laws of trademark licensor liability for injuries caused by defective licensed products. In a similar vein, the recent case of Gibson Guitar v. Viacom presents an excellent opportunity to review the laws of licensor liability for a licensee’s infringement of a third party’s trademarks.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, JUNE 12, 2013 - In my prior two installments of this three-part series (available here and here), I reviewed protections available for 3D printing designs and objects under U.S. copyright and patent law. I will conclude with a review of such protections under U.S. trademark, trade dress, and trade secret law.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, JUNE 5, 2013 - In my first installment of this three-part series (available here), I commenced a review of protections available for 3D printing designs and objects under U.S. intellectual property law with a focus on copyrights. I will continue with a review of such protections under U.S. utility and design patent law.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, MAY 29, 2013 - The popularity of 3D printing has been increasing dramatically while the prices for such printers have been rapidly decreasing. In addition to toys and gadgets, real-world practical uses include a virtually unlimited number of potential devices and replacement parts for the aerospace, automotive, medical, military and other industries. Not surprisingly, this relatively new technology has raised many legal issues. For example, Senator Charles E. Schumer has called for legislation banning 3D printed guns since manufacturing such plastic weapons could easily circumvent background checks, registration requirements and metal detectors. And a new type of 3D printer could use chemical inks to quickly print legal and useful chemical compositions such as authorized pharmaceuticals and vaccines, but also illegal drugs and chemical weapons such as ricin or chlorine gas. An important category of legal issues relating to 3D printing involves the protection of 3D designs and objects under intellectual property laws. This series of three posts will review and summarize such protections under US intellectual property law starting with copyrights.
Read MoreBY MICHAEL STONE, FORBES CMO NETWORK, APRIL 22, 2013 - Like an awkward Hollywood love triangle, the J.C. Penney, Martha Stewart and Macy’s saga continued last week as the three fought over Justice Jeffrey K. Oing’s April 5th decision to temporarily allow J.C. Penney to sell Martha Stewart-designed products under the JCP Everyday label.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, MARCH 19, 2013 - Sport and lifestyle brand Oakley recently commenced a lawsuit against Rory McIlroy and Nike, claiming McIlroy entered into a broad “head to toe” equipment, apparel and footwear endorsement agreement with Nike in breach of the right of first refusal provision in his prior endorsement agreement with Oakley that expired on December 31, 2012.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, FEBRUARY 28, 2013 - In the recent case of Abraham v. Alpha Chi Omega, the Fifth Circuit Court of Appeals issued an opinion regarding a fascinating dispute that involved a failure to enforce trademarks for more than 40 years.
Read MoreBY MICHAEL STONE, FORBES CMO NETWORK, FEBRUARY 12, 2013 - In a recent interview with MSN’s “The Grio,” Kimora Lee Simmons stated she and former husband Russell Simmons “laid the blueprint” for celebrity designed clothing lines. I think I speak for others when I say, really? Ms. Simmons has definitely carved out a place for herself in the fashion world, and I applaud her for that, but to proclaim she is a founding father of sorts in celebrity fashion is a bit presumptuous.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, JANUARY 29, 2013 - Following cyclist Lance Armstrong’s recent, but less than fully contrite, admission to Oprah Winfrey that for more than a decade he (i) used performance enhancing drugs, and (ii) repeatedly made false public statements denying that he did so, on January 22, 2013, a federal class-action lawsuit was filed in California against Armstrong and his book publishers, Penguin and Random House.
Read MoreBY MICHAEL STONE, FORBES CMO NETWORK, JANUARY 23, 2013 - From products based on the heart-pumping novel 50 Shades of Grey, to Band-Aid’s use of an app to create augmented reality featuring the Muppets, to HGTV-branded live plants, 2012 was chock-full of innovative brand extensions. So, before 2013’s brand innovations steal the limelight, let’s take one last look at last year’s best licensed partnerships.
Read MoreBY OLIVER HERZFELD, FORBES IP COUNSEL, JANUARY 22, 2013 - Have you ever wondered whether online agreements that are not signed in ink are enforceable? How about website “Terms of Use” that are available solely via a homepage link and are not explicitly agreed to by users? Are such Terms of Use legally enforceable against website visitors? In the recent case of Schnabel v. Trilegiant Corp., the Second Circuit Court of Appeals provides some important guidance that can be readily applied to the enforceability of website Terms of Use and other online agreements.
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