On February 27th, a proposed bill was introduced in Congress to curb such tactics by NPEs. If passed, the SHIELD Act, H.R. 845, would significantly reduce litigation by NPEs. The bill would require NPEs to pay the entire litigation costs, including reasonable attorneys’ fees, if the NPE fails to prove is patent is valid and infringed. The bill also requires that for the NPE plaintiff to bring a lawsuit, it has to show that it is either a university, the original inventor of the patent, or a company that is making a substantial investment in the commercial exploitation of the invention covered by the patent.

Although the bill may not be the perfect solution in stemming the unnecessary litigation brought by NPEs, it sends a strong message to NPEs that there is bipartisan support in Congress to address the tactics used by NPEs to extort money from businesses.

If you have questions about patent litigation or other intellectual property matters, please contact Janet Phipps Burkhead at 515-246-4531 or jphipps@dickinsonlaw.com

While the Executive Order is not geared toward general commercial businesses, private industry will be affected. Within 150 days of the signing of the Executive Order, the Homeland Security Secretary is to identify critical infrastructure, to include private industry infrastructure, where a cybersecurity disruption could reasonably result in “catastrophic regional or national effects on public health or safety, economic security or national security.” Financial institutions are mentioned several times in the Executive Order as part of the critical infrastructure to guard against cyber-attacks.

It remains to be seen how this unfolds as to the baseline and best practices standards that are developed, as well as the voluntary adoption of these practices by those identified with “critical infrastructure.”

If you have questions about cybersecurity, protecting intellectual property, or other intellectual property matters, please contact Janet Phipps Burkhead at 515-246-4531 or jphipps@dickinsonlaw.com.

Hallmark and Murley entered into a negotiated separation agreement whereby Murley agreed not to work in the greeting card or gift industry for 18 months, solicit Hallmark employees, disclose or use any proprietary or confidential information, or retain any business records or documents relating to Hallmark. Murley also agreed to release Hallmark from any claims arising from her termination. In exchange, Hallmark offered Murley a $735,000 severance payment, 18 months of paid COBRA benefits, executive outplacement services, and paid tax preparation services for two years.

After the expiration of the non-compete agreement, Murley became a consultant for Recycled Paper Greetings (“RPG”) for $125,000. In 2009, American Greetings purchased RPG. During American Greetings acquisition due diligence, it contacted Hallmark to review RPG records to ensure none of Hallmark’s confidential information was in RPG’s possession. It was discovered Murley gave a number of Hallmark documents and other confidential information to RPG, including Hallmark’s business model, consumer buying process, and market research. Hallmark filed suit against Murley alleging breach of contract, misappropriation of trade secrets, conversion of Hallmark’s confidential information, and unjust enrichment.

During the course of the litigation, Murley admitted she had retained and disclosed Hallmark’s confidential information to RPG. Additionally, Hallmark’s computer expert testified that Murley had deleted several documents, including Hallmark files, from her computer two days before a forensic computer expert made a copy of her hard drive. Based on this destruction, Hallmark sought an adverse inference instruction to the jury allowing the jurors to infer that the contents of the destroyed documents would have been detrimental to Murley. The jury ruled in favor of Hallmark awarding a full refund of the $735,000 severance pay plus the $125,000 from her assignment with RPG.

Murley appealed the adverse inference instruction given to the jury as improper and that the total award of $860,000 was excessive. The Eighth Circuit upheld the return of the entire severance pay of $735,000 ruling the award not to be excessive or unwarranted based on the evidence in light of Murley’s clear violation of the terms of her agreement with Hallmark. However, the Court declined to uphold the award of the $125,000 reasoning that this would put Hallmark in a better position than it would have been before Murley’s breach.

This case highlights the importance of monitoring and enforcing severance agreements and taking the necessary steps to protect a company’s intellectual property.

If you have questions about severance agreement, protecting intellectual property, or other employment matters, please contact Janet Phipps Burkhead at 515-246-4531.

The creator of an original work is given exclusive rights to prevent the use of a work by others. This protection exists the moment a work is produced in a fixed, tangible form of expression. This includes information found on the Internet. A work does not have to be registered with the U.S. Copyright Office to give the creator exclusive rights to the creative work.

To protect against a claim of copyright infringement, here are some tips:

• Get permission! If you have information regarding the owner of the work, contact the owner directly. If you are not certain, you can search the database of the Copyright Office for such information. In the absence of permission, err on the side of not using the material.
• Verify that you are getting permission from someone who is authorized to grant permission.
• Request the permission in writing.
• Be prepared to pay a fee for the use.
• Give credit to the author/artist.

There are four classifications of trademarks and associated strength. The stronger the mark, the greater protection is afforded the mark.

Fanciful marks are the strongest and are afforded the strongest protection. A fanciful mark is a made-up word that only functions as a trademark or service mark. Since the term is a made-up term, consumers are more likely to associate these new terms with your company. Some well-known fanciful marks include XEROX, POLAROID, REEBOK, EXXON, and GOOGLE.

Arbitrary marks are real words which have no relationship to the good or service. The pairing of the word with a particular good or service is random. Again, these types of marks are afforded strong protection. Some well-known arbitrary marks include APPLE for computers, IVORY for bar soap, BEEFEATER for gin, and JAGUAR for a car.

Suggestive marks ‘suggest’ rather than describe a feature or characteristic of the good or service. These marks require thought, imagination and perception to reach a conclusion about the good or service to which it applies. Some well-known suggestive marks are COPPERTONE for suntan products, GREYHOUND for bus services, CHICKEN OF THE SEA for tuna, and LIQUID PAPER for correction fluid.

Descriptive marks describe a characteristic, ingredient, quality, feature, or purpose of the good or service. These marks are not afforded a great deal of protection unless they acquire distinctiveness through secondary meaning. Secondary meaning may be acquired through long-term use and a showing of a considerable amount of money or marketing of the good or service in conjunction with the descriptive mark. Some well-known descriptive marks that have attained federal registration are BUFFERIN for analgesics, COMPUTERLAND for maintenance and repair of computers, NATURE’S MEDICINE for nutritional and dietary supplements, and WORLD BOOK for books.

The selection of your mark is just one step in the process of using and seeking registration of your mark. However, this is an important step in creating a valuable asset and establishing goodwill for your company. If you have any questions about this process, please contact Janet Phipps Burkhead at 515-246-4531.

Phipps Burkhead practices primarily in intellectual property law, providing advice to employers and businesses regarding the protection of proprietary information and trade secrets. She joined Dickinson Law in the fall of 2010.

Two years prior, in 2008, Phipps Burkhead became the second woman in the history of the Iowa National Guard to reach the rank of brigadier general. An Iowa native, she followed in her father’s footsteps by entering the military, and received her commission as a first lieutenant with the U.S. Army Reserve after graduating from Iowa State University. She earned her law degree from Drake University Law School.

“We are delighted that Janet has received this well-deserved honor,” said Dickinson Board Member Howard Hagen. “We’ve known for years that she is an outstanding attorney and leader.”

For the past 11 years, the Business Record has recognized women with its Women of Influence Awards. A special reception honoring Phipps Burkhead and the other 2012 recipients will be held August 9 at the Des Moines Marriott Downtown.

Click here to read the full article.

From a review of the list, more than 500 businesses and organizations applied for 1,930 generic TLDs at the cost of approximately $185,000 each.  More than half of the applications come from U.S. companies – 883 total. European applications numbered 675; Asia-Pacific region numbered 303; and Africa 17.

Some well-known companies that applied for new addresses include Apple, Amazon, Google, Microsoft, American Express, Macy’s, Wal-Mart, Yahoo!, and General Motors – as well as many notable others. Some interesting statistics regarding the applications:

• Google applied for more than 100 domains including .google, .youtube, .lol, .boo, and .dad.
• Amazon applied for 76 names including .amazon and .zappos
• Coca-Cola and Kellogg abstained from applying, protesting the process
• No applications were submitted by Facebook or Twitter
• Multiple applications were filed for names such as .inc, .home, .llc, .blog, .movie, and .music.

In total, ICANN collected some $350 million for the new applications. Some organizations are trying to withdraw applications: 150 refunds totaling $3.5 million are pending.

What Happens Now?

According to ICANN, it will receive objections to any of the applications for the next seven (7) months. Simultaneously, panels will begin reviewing the applications for similarity of applied-for generic TLDs to another TLD, whether the application meets the technical requirements, and other factors. The first set of new domains is anticipated to go live in March 2013.

For domains for which there were multiple applications, the process is still under development. However, there is some indication that auctions may occur – this might prove lively!

Chambers & Partners, which publishes the annual guide, bases its rankings on in-depth interviews with attorneys and clients, giving greater weight to clients’ comments. Chambers published the following comments about Dickinson Law:

“They have always been spot-on with their legal guidance.”

“(The firm) communicates well, is accessible and has great knowledge of the regulatory landscape.”

This year, Chambers recognized the following attorneys as leading individuals in their respective areas of law:

Howard O. Hagen (Corporate/M&A: Banking & Finance)

(Hagen received special recognition as a “Star Individual” and the only Iowa attorney to be named a “Star Individual” in the area of Corporate/M&A: Banking & Finance)

Jill Jensen-Welch (Labor & Employment)

Ann Holden Kendell (Labor & Employment)

Jeffrey A. Krausman (Labor & Employment)

F. Richard Lyford (Litigation: General Commercial)

Richard A. Malm (Corporate/M&A)

Mollie M. Pawlosky (Litigation: General Commercial)

Bridget R. Penick (Labor & Employment and Labor & Employment: Immigration)

Russell L. Samson (Labor & Employment)

Jon P. Sullivan (Real Estate)

Paul R. Tyler (Real Estate)

(Tyler received special recognition as “Senior Statesmen” for his “impressive handling of transactional matters” and “expertise on estate planning and trusts.”)

J. Marc Ward (Corporate/M&A)

The complete 2012 Chambers USA rankings, along with researchers’ commentary on the Dickinson law firm and its attorneys, can be found online at chambersandpartners.com.

According to the complaint, Obama for America v. DemStore.com and Washington Promotions & Printing, Inc., 1:12-cv-00889, U.S. District Court for the District of Columbia, the campaign sent several cease and desist letters without satisfaction.
Obama for America alleges that the defendants’ use of the registered mark is a deliberate and willful attempt to draw on the goodwill and commercial magnetism of the trademark and the campaign. Additionally, as is typically plead in trademark infringement matters, Obama for America  alleges that DemStore’s use of the registered logo is likely to create confusion among
consumers, as well as hurt fundraising by the campaign.

DemStore CEO Steve Schwat said in an interview that he didn’t understand why the campaign was attempting to enforce its trademark against his company when “there are hundreds, if not thousands, of companies selling material with the Obama sunrise on it” without official permission. This age old, but unsound, “reasoning” is not uncommon. Just because others are doing it, doesn’t make it right!