1 2015 acc-socal in-house counsel conference #ihcc15 what non ip in-house counsel need to know about...
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12015 ACC-SoCal In-House Counsel Conference
#IHCC15
WHAT NON IP IN-HOUSE COUNSEL NEED TO KNOW ABOUT IP LAW; NEGOTIATING IP
PROVISIONS IN CONTRACTS; MANAGING IP PORTFOLIOS AND ENFORCING IP RIGHTS
January 14, 2015Universal City, California
Sponsored by Sidley Austin LLP
#IHCC12
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#IHCC152015 ACC-SoCal In-House Counsel Conference
Moderator – Jeffrey M. Olson– Sidley Austin / Partner / [email protected]
Panelist – Jonathan Losk– Knobbe Martens / Partner / [email protected]
Panelist – Wayne M. Smith– Warner Bros. Entertainment Inc. / SVP, Sr. Litigation & Chief
Patent Counsel / [email protected]
Panelist – Glenn G. Nash– Sidley Austin / Partner / [email protected]
Panelist – Bradley H. Ellis– Sidley Austin / Partner / [email protected]
Panelists
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Jonathan Losk
IP Portfolio Assessment and Management
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Competitive Advantages– Exclusivity
– Product/feature differentiation
– Increased market share
– Sustained price premiums
Growth– Adjacent technologies/markets
– New/emerging markets
– Spin-out(s)
Industry Leadership– Brand recognition
– Key opinion leaders
– Attract top talent
A Strong Patent Portfolio Supports …
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#IHCC152015 ACC-SoCal In-House Counsel Conference
Patenting decisions are business decisions– Not technical
– Not legal
– Driven by leadership’s vision of where the business is headed
– Executed by counsel
Inventors must know the company’s goals– Provide regular communication on business objectives
– Define problems worth solving
– Conduct directed innovation events
– Recognize contributions
Alignment With Business Strategy
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Understand what you’re investing in– Strategic/Tactical/Defensive?
– Aligned with business objectives?
– Disruptive to the competition?
– Likely to secure strategic claims?
– Can infringement be proved?
How will the business use it?
How does it relate to the portfolio as a whole?
Evaluation Criteria
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#IHCC152015 ACC-SoCal In-House Counsel Conference
Earn a seat at the table
Forge relationships with key business functions
Be the bridge between the board room and the development labs
Technical staff are motivated to contribute– Make it easy to submit disclosures
– Provide visibility into the invention review process
– Deliver clear & timely feedback as to why an invention was rejected
Actively develop the content of your company’s patent portfolio
Significant Take-Away Points
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#IHCC152015 ACC-SoCal In-House Counsel Conference
Wayne M. Smith
IP Portfolio Monetization and Litigation
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DVD6C and BD Premier optical disc patent pools
Cross-licenses with other major optical disc technology owners
Licensing complementary to business deals
Licensing agency agreement with Thomson Licensing
Warner Bros. Passive Patent Licensing
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Institutional reluctance to enforce patents against companies in our industry
Two patent lawsuits filed in past 15 years
Most enforcement against companies that refuse to take pool licenses
Patents leveraged to obtain cross-licenses/favorable business terms
Warner Bros. Patent Enforcement
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#IHCC152015 ACC-SoCal In-House Counsel Conference
95% of claims/lawsuits are by NPEs against multiple parties
Approach to claims vs. lawsuits
Defense group considerations
IPRs (Inter Partes Review)
First one out or last man standing?
Warner Bros. Patent Defense
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Strategically consider licensing opportunities
Cautiously approach offensive litigation
Cooperation and coordination with co-defendants and offensive tools can be used to lessen the impact of NPE litigation
Significant Take-Away Points
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Glenn G. Nash
IP Licensing Considerations
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Draft in the present tense
Know default rules that impact the scope of the license
Understand warranties, indemnities, damages disclaimers and caps on liability holistically
Three Licensing Tips
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#IHCC152015 ACC-SoCal In-House Counsel Conference
Use present tense for license grant/assignment of IP rights:– “Licensor hereby grants” NOT “Licensor agrees to grant”
– “Assignor hereby assigns” NOT “Assignor agrees to assign”
Don’t want the licensor or assignor to later claim you do not have the rights
Don’t want a third party to later claim you do not have the rights
License and assignment language can be important for many reasons, especially in future litigation (i.e., it may affect standing to sue)
Obtain benefit of § 365(n) Bankruptcy Code which applies to present licenses
Draft In The Present Tense
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#IHCC152015 ACC-SoCal In-House Counsel Conference
Licenses are personal – they do not extend to third parties. No extension of license to subsidiaries/affiliates
Perpetual, revocable and irrevocable licenses
Assignability/transferability/sublicensability of IP licenses
– Non-exclusive patent, copyright & trademark licenses cannot be assigned without consent
– Exclusive licenses more nuanced
Know Default Rules that Impact the Scope of the License
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#IHCC152015 ACC-SoCal In-House Counsel Conference
Warranties: scope, duration, remedies
Indemnities– “A will defend, indemnify and hold harmless B from and against
any action, claim, demand, suit, proceeding, loss, liability or damage arising out of third party claims that A's product infringes the intellectual property rights of such third party.”
How do the warranty and indemnity obligations interplay with the damages disclaimer and caps on liability?
Limitation of Liability: address appropriate exclusions
Understand Warranties, Indemnities, Damages Disclaimers and Caps on Liability Holistically
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#IHCC152015 ACC-SoCal In-House Counsel Conference
Draft in the present tense
Closely review the words of the license grant and make sure they align with other provisions, e.g., termination, assignability
Don’t assess warranties, indemnities, damages disclaimers and caps on liability in isolation from each other
Read the fine print!
Significant Take-Away Points
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Trademarks and Advertising:
Bradley H. Ellis
Nominative Fair Use
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“A trademark is a limited property right in a particular word, phrase or symbol.” New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 306 (9th Cir. 1992).
Trademark law aims to prevent consumer deception respecting the source, quality or genuineness of a product or service.
The limited property right in a trademark comes at a cost – removal of the word, phrase or symbol from the language for certain purposes.
Therefore, trademark law must accommodate free speech principles.
Trademarks
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#IHCC152015 ACC-SoCal In-House Counsel Conference
Plaintiff must establish that (1) it has a valid mark that is entitled to protection under the Lanham Act; and that (2)(a) the defendant used the mark, (b) in commerce, (c) in connection with the sale or advertising of goods or services, (d) without the plaintiff's consent; and that
The alleged infringer’s use of that mark is likely to cause consumer confusion as to the origin, sponsorship, or approval by the trademark owner of the alleged infringer’s goods, services, or commercial activities.
Elements of TM Infringement
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#IHCC152015 ACC-SoCal In-House Counsel Conference
“Where the defendant uses a trademark to describe the plaintiff’s product, rather than its own, [] a commercial user is entitled to a nominative fair use defense provided that [the defendant] meets the following three requirements:
– First, the product or service in question must be one that is not readily identifiable without use of the trademark;
– Second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and
– Third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” New Kids on the Block, 971 F.2d at 308.
Nominative Fair Use
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Levi Strauss v. Papikian
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Levi Strauss v. Papikian
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A TM is a limited property right
“Fair” use of another’s mark is permitted
Consumer confusion over source/sponsorship is the key test
To avoid confusion use a disclaimer
Significant Take-Away Points
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11th Annual In-House Counsel ConferenceJanuary 14, 2015 (Universal City, CA)
#IHCC1526
www.acc.com/chapters/socal/