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Patent and Trademark
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Trademark Legal Literature
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Blog
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Trademark Legal Literature
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Toward Non-Neutral First Principles of Private Law: Designing Secondary Liability Rules for New Technological Uses , by Thomas C. Folsom
Fetched: March 4th, 2010, 8:40am EST
3 Akron Intellectual Property Journal 43 (2009) -
States Turn a Dear Ear to the Constitution in an Effort to Promote "Truth in Music", by William L. Charron
Fetched: March 4th, 2010, 8:40am EST
9 Virginia Sports and Entertainment Law Journal 1 (2009) -
The Requirements for Registration and Protection of Non-Traditional Marks in the European Union and in Tanzania, by Jacob Jaconiah
Fetched: March 4th, 2010, 8:40am EST
40 IIC: International Review of Intellectual Property and Competition Law 756 (2009) -
Consumer Investment in Trademarks, by Deborah R. Gerhardt
Fetched: February 20th, 2010, 11:01am EST
88 North Carolina Law Review 427 (2010) -
NOTE, Why Coca-Cola's Fictional Lawsuit Against Coke Zero for Taste Infringement is a Losing Battle , by Jessica Nicole Cox
Fetched: February 20th, 2010, 11:01am EST
17 Journal of Intellectual Property 121 (2009) -
NOTE, A Trademark Holder's Hangover: Reconciling the Lanham Act with the Alcohol and Tobacco Tax and Trade Bureau's System of Designating American Viticultural Areas , by Julia Lynn Titolo
Fetched: February 20th, 2010, 11:01am EST
17 Journal of Intellectual Property 173 (2009) -
Getting the Word Out: The Informational Function of Trademarks , by J. Shahar Dillbary
Fetched: February 20th, 2010, 11:01am EST
41 Arizona State Law Journal 991 (2009) -
An Empirical and Consumer Psychology Analysis of Trademark Distinctiveness , by Thomas R. Lee, Eric D. DeRosia and Glenn L. Christensen
Fetched: February 20th, 2010, 11:01am EST
41 Arizona State Law Journal 1033 (2009) -
NOTE, Does It Really Suck? The Impact of Cutting-Edge Marketing Tactics on Internet Trademark Law and Gripe Site Domain Name Disputes, by Mindy P. Fox
Fetched: February 20th, 2010, 11:01am EST
20 Fordham Intellectual Property, Media and Entertainment Law Journal 225 (2009) -
Embracing Marketplace Realities: Rediscovering Section 18 of the Lanham Act on the Twentieth Anniversary of Its Revival, by Timothy A. Lemper and Linda K. McLeod
Fetched: February 16th, 2010, 1:27am EST
99 Trademark Reporter 1299 (2009) -
Twenty Years of Rogers v. Grimaldi: Balancing the Lanham Act with the First Amendment Rights of Creators of Artistic Works, by David M. Kelly and Lynn M. Jordan
Fetched: February 16th, 2010, 1:27am EST
99 Trademark Reporter 1360 (2009) -
Family Feud: The Tension Between Family Names and Trademarks , by Christopher P. Bussert
Fetched: February 16th, 2010, 1:27am EST
99 Trademark Reporter 1388 (2009) -
The Effect of Consumer Surveys and Actual Confusion Evidence in Trademark Litigation: An Empirical Assessment, by Dan Sarel and Howard Marmorstein
Fetched: February 16th, 2010, 1:27am EST
99 Trademark Reporter 1416 (2009) -
Standing and Joinder Considerations in Trademark Litigation and Licenses , by Kim J. Landsman, Daniel C. Glazer, and Irene C. Treloar
Fetched: February 16th, 2010, 1:27am EST
99 Trademark Reporter 1437 (2009) -
Constitutional Law as Trademark, by Pamela S. Karlan
Fetched: February 6th, 2010, 5:21am EST
43 UC Davis Law Review 385 (2009) -
Copyright, Trademark and Secondary Liability After Grokster , by Mark Bartholomew
Fetched: January 21st, 2010, 5:40pm EST
32 Columbia Journal of Law and the Arts 445 (2009) -
SYMPOSIUM, Panel III: Trademark Dilution and Its Effects on the Marks of Big and Small Business, by Hugh Hansen, Barton Beebe, Dennis McDooe and Eric A. Prager
Fetched: January 21st, 2010, 5:40pm EST
19 Fordham Intellectual Property, Media and Entertainment Law Journal 1025 (2009) -
NOTE, The New Black: Trademark Protection for Color Marks in the Fashion Industry, by Sunila Sreepada
Fetched: January 21st, 2010, 5:40pm EST
19 Fordham Intellectual Property, Media and Entertainment Law Journal 1131 (2009) -
NOTE, The UDRP, ADR, and Arbitration: Using Proven Solutions to Address Perceived Problems with the UDRP, by Elizabeth C. Woodard
Fetched: January 21st, 2010, 5:40pm EST
19 Fordham Intellectual Property, Media and Entertainment Law Journal 1169 (2009) -
NOTE, Holdover Trademark Licensees and the Counterfeiting Loophole , by Travis R. Wimberly
Fetched: January 21st, 2010, 5:40pm EST
88 Texas Law Review 415 (2009) -
Trademarks and the Boundaries of the Firm, by Dan L. Burk and Brett H. McDonnell
Fetched: January 21st, 2010, 5:40pm EST
51 William and Mary Law Review 345 (2009) -
NOTE, Rescuecom Corp. v. Google Inc.: The Second Circuit Finds Trademark Use in Meta Elements, by Katie Atkinson
Fetched: January 21st, 2010, 5:40pm EST
12 Tulsa Journal of Technology and Intellectual Property 303 (2009) -
NOTE, Federal Circuit Tightens Standard for Proving Intent to Deceive in Trademark Fraud Cases: In re Bose Corp., by Brandon L. Harrell
Fetched: January 21st, 2010, 5:40pm EST
12 Tulsa Journal of Technology and Intellectual Property 313 (2009) -
NOTE, The United States' Adoption of the Well-Known Foreign Mark Exception, by Rachel Brook
Fetched: January 21st, 2010, 5:40pm EST
36 Fordham Urban Law Journal 889 (2009) -
Trademarks as a Media for False Advertising , by J. Shahar Dillbary
Fetched: January 8th, 2010, 9:31pm EST
31 Cardozo Law Review 327 (2009) -
NOTE, Coffee Trademark Licensing for Fanners: Brewing a Farmer-Owned Brand , by Maria Brownell
Fetched: January 8th, 2010, 9:31pm EST
14 Drake Journal of Agricultural Law 291 (2009) -
Rethinking the Parameters of Trademark Use in Entertainment, by Elizabeth L. Rosenblatt
Fetched: December 19th, 2009, 10:38pm EST
61 Florida Law Review 1011 (2009) -
NOTES, Use It or Lose It! Burdens of Proof in Non-Use Cancellation Actions: A Call for Balance in the Trademark Laws of Thailand, Indonesia, and India , by Robin N. Brenner
Fetched: December 19th, 2009, 10:38pm EST
27 Cardozo Arts and Entertainment Law Journal 485 (2009) -
One Trademark Per Source, by David W. Barnes
Fetched: November 21st, 2009, 11:00pm EST
18 Texas Intellectual Property Law Journal 1 (2009) -
No Trolls Barred: Trademark Injunctions After eBay , by David H. Bernstein and Andrew Gilden
Fetched: November 21st, 2009, 11:00pm EST
99 Trademark Reporter 1037 (2009) -
Delay in Filing Preliminary Injunction Motions: 2009 Edition , by Sandra Edelman
Fetched: November 21st, 2009, 11:00pm EST
99 Trademark Reporter 1074 (2009) -
Genericness Surveys in Trademark Disputes: Evolution of Species , by E. Deborah Jay
Fetched: November 21st, 2009, 11:00pm EST
99 Trademark Reporter 1118 (2009) -
Space Pirates, Hitchhikers, Guides, and the Public Interest: Transformational Trademark Law in Cyberspace, by Thomas C. Folsom
Fetched: November 21st, 2009, 11:00pm EST
99 Trademark Reporter 1166 (2009) -
The Identification of Trademark Filing Strategies: Creating, Hedging, Modernizing, and Extending Brands, by Philipp G. Sandner
Fetched: November 21st, 2009, 11:00pm EST
99 Trademark Reporter 1257 (2009) -
Things are Worse than We Think: Trademark Defenses in a "Formalist" Age, by Michael Grynberg
Fetched: November 21st, 2009, 11:00pm EST
24 Berkeley Technology Law Journal 897 (2009) -
COMMENT, Searching for a "Use": Search Engines, Keywords, and Trademark Law , by Chris Page
Fetched: November 21st, 2009, 11:00pm EST
28 Temple Journal of Science,Technology and Environmental Law 93 (2009)
Patent and Trademark
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Personal Liability for Patent Infringement
Posted: October 26th, 2009, 3:27pm EDT by Editor
“They can’t sue me personally! Can they?”
How is it possible that you can be personally liable for patent infringement even though you have a company? We all recognize that the whole point of incorporating is to shield individuals from personal liability. Unless a plaintiff can “pierce the corporate veil” and show that an individual and the company are really “alter egos” of one another, one’s individual assets cannot be touched. At least, that’s the common perception of the protection of incorporation. Not necessarily so with patent infringement.
Under a theory of inducing infringement, a corporate officer could be personally liable for inducing a corporation to infringe a patent. Inducement to infringe is a type of indirect infringement claim [35 USC Section 271(b)] - the idea being that the direct infringement [Section 271(a)] of a corporation was aided and abetted by the corporate officer. This claim of indirect infringement does not require a plaintiff to pierce the corporate veil, which would be required in a direct infringement claim.
Inducement to Infringe
Proving inducement to infringe comes with its own challenges. As a threshold, the plaintiff must prove direct infringement by the corporation. If there’s no direct infringement, there can be no indirect infringement.
Assuming the corporation committed direct infringement, the plaintiff has the burden of showing that the accused “inducer”:
>knew of the patent, and
>possessed specific intent to encourage another’s infringement.
The intent element has been described as more than mere knowledge of a direct infringer’s activities. A defendant must have intended to cause the acts that constitute the direct infringement and must have known or should have known that its action would cause the direct infringement.”
How to Protect Yourself from Personal Liability for Patent Infringement
So, what can corporate officers do to protect themselves from personal liability?
First, avoid being a one man company. Surround yourself with other corporate officers and a competent board of directors if possible. It’s harder to prove any one person encouraged a corporation to commit direct infringement if the decision-making process involves a group or at least a few different people.
Second, get an exculpatory legal opinion. If you are aware of a patent, or perhaps more importantly, an aggressive patent owner that might present issues, invest in a well thought out non infringement and/or invalidity opinion letter. Competent legal opinions could serve as evidence that a corporate officer did not possess specific intent to encourage another’s infringement. Furthermore, though willful infringement has a different legal standard, such opinion letters also reduce the risk of a finding of willfulness, which could otherwise result in paying the other side’s attorney’s fees and/or enhanced money damages.
Trademark Legal Literature
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NOTE, The New Edition of New Edition: Boybands, Trademarks, and Shifting Goodwill , by Julia Riehm McGuffey
Fetched: October 22nd, 2009, 5:14pm EDT
47 University of Louisville Law Review 167 (2008) -
NOTE, A Safe Harbor for Trademark: Reevaluating Secondary Trademark Liability after Tiffany v. eBay, by Elizabeth K. Levin
Fetched: October 15th, 2009, 7:51am EDT
24 Berkeley Technology Law Journal 491 (2009) -
Protection of trade marks against dilution: a semiotic perspective, by Katya Assaf
Fetched: September 29th, 2009, 1:40am EDT
4 Journal of Intellectual Property and Practice 643 (2009)