Highlights from AccelPro IP Law - Volume III
With Bobby Ghajar, Kristen Osenga and Joshua Simmons | Interviews by Neal Ungerleider
Listen on Apple Podcasts, Spotify and YouTube.
Welcome to AccelPro IP Law, where we provide expert interviews and coaching to accelerate your professional development. And thank you to the hundreds of new members who have joined the last few weeks.
Today, a chance to catch up on what you’ve missed: we are featuring excerpts from recent AccelPro interviews with experts in the IP Law field. Stay up to date with new podcast episodes along with supplemental materials, back again next week.
For the full audio and transcripts:
Cooley’s Bobby Ghajar on Copyright, Trademarks and Due Diligence
Richmond School of Law’s Kristen Osenga on Predatory Infringement and Patent Law
Kirkland and Ellis's Joshua Simmons on the Server Test and the Ninth Circuit
And here are the prior highlight collections from AccelPro IP Law: Volume I and Volume II
Listen on Apple Podcasts, Spotify and YouTube.
I. On Copyright, Trademarks and Due Diligence
With Bobby Ghajar, Partner at Cooley
NU: Can you walk us through some of the issues that companies who are either going public, or going through large funding rounds, face in regards to copyright, trademark and IP?
BG: We engage with this quite a bit at my firm and we have a fantastic team of people who do this, day in and day out.
When a company is raising money, considering a sale of assets, a spinoff or acquiring another company, IP due diligence is a critical part of the process. What that means is you need to know what you're getting or you need to know what you're getting into.
Part of that involves disclosures from the company that you may be acquiring or disclosures by the company that we're representing. And we get involved to help with those disclosures.
I think the fun part of what we do is when we get to dig in and do diligence of the IP that a company purportedly owns.
That involves looking to see what kind of trademarks, copyrights, and patents they've registered. What kind of trademarks they've used without registration. Finding out whether third parties might own similar trademarks in the same space, whether there are any pending disputes between the company, and others. And learning more about those cases.
Are they real risks? Are they cases that are going to go away? Have they gone away? How did they settle?
Listen to the Full Episode Now
II. On Predatory Infringement and Patent Law
With Kristen Osenga, Professor of Law at University of Richmond School of Law
NU: What strategies can patent holders use to help protect against efficient infringement, and how effective are these measures?
KO: One way that patent owners should protect against efficient infringement is to support efforts to overrule the eBay opinion. There have been various proposals as far as I understand–there's even a proposed bill–and over the last few years there has been talk of supporting a bill to overrule the eBay case from the Supreme Court and instead put into play a presumption that injunctive relief will issue anytime patent infringement is found.
Anytime that bill is proposed, patent owners should get behind that bill and focus on legislative efforts to return the presumption of injunctive relief. It's going to need to be a legislative fix because of the Supreme Court opinion in eBay. There's no way to fix that other than to get the Supreme Court to overrule it. They are not going to do that, so it's going to have to be a legislative fix.
Another thing to think about is other jurisdictions, specifically Europe, have been much better about not looking at infringement by SEPs in a monolithic way. In the United States, if you're an SEP owner, you just don't get injunctive relief.
In Europe, there's a little more flexibility. In those sorts of cases in Europe, courts have been more willing to grant injunctive relief–even for standard essential patents. To the extent that you do have an infringer who could be deemed an unwilling licensee under the European framework, taking them to court in Europe might be a way to get injunctive relief, which is different than the United States.
The United States courts have not really jumped on this idea of the unwilling licensee, even though it's been brought up in some cases. It just hasn't really been adopted in the same way that the European courts have. So go to Europe instead of the United States if you have the option.
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III. On the Server Test and the Ninth Circuit
With Joshua L. Simmons, Partner at Kirkland & Ellis
NU: Can you walk us through some of the connotations of the server test for creators, brands, and social media services?
JS: Before the recent cases called it into question, the advice a lot of companies would rely on would be, “I can use any photograph I want. As long as I am pointing back to where it resides on someone else's server.” So you would have someone using a photograph that appears on one website, on a different website.
And the photographers were very upset about that because they wanted to have authorization and payment for the use of their photographs. After the new cases in New York and Texas, I think many publications have cut back on that practice and have gone back to licensing photographs they're using. Or relying on fair use - which of course is still a viable doctrine.
But again, it is a lot easier for the publications to say, “Oh, I'll just embed an image. Or otherwise make it look like it's coming from my website.” When it's actually coming from somewhere else, and not seek that authorization or pay the photographer.
Listen to the Full Episode Now
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