Posts by Kristie Prinz
Pitfalls in Negotiating and Drafting Exclusive Licensing Deals: Lessons from Macy’s Dispute with JcPenney’s Over its Martha Stewart Product Line
When a new client contacts me for assistance in negotiating a licensing deal, the client almost always informs me that the deal is going to be an exclusive licensing arrangement. However, when I engage the client further to tell me more about the proposed exclusivity deal, in most cases the proposed terms on the table…
Read MorePractical Tips on Choosing your Start-Up’s Name
Given my Silicon Valley location, I often am consulted by entrepreneurs and start-ups who have just started a business and are seeking advice on how to protect their trademarks. However, more often than not, I quickly determine that the name that the entrepreneur or start-up has selected is a poor mark and my advice ends…
Read MoreRecent Interview of Kristie Prinz for World Trademark Review
I wanted to share with blog readers a recent interview I had with World Trademark Review following up on the media coverage regarding the shutdown of TwitPic. Click here to view the World Trademark Review story.
Read MoreChallenges of Negotiating a Licensing Deal with a Start-Up
I recently gave a webinar on Negotiating License Agreements with Start-Ups, and wanted to follow up on that program with some comments for Silicon Valley IP Licensing Law Blog readers on some of the challenges that companies may face when negotiating an IP licensing deal with a start-up. In the years that I have worked…
Read MoreSuccessfully Managing Intellectual Property Disputes as an Early-Stage Start-up
TechCrunch posted an article this afternoon written by attorney David Soofian, which caught my attention, addressing the issue of what to do as a young start-up if you are sued for patent infringement. In particular, the article addressed the challenges posed by so-called patent trolls, who use “weak patents to go after young tech…
Read MoreTrademark Commissioner Resigns over Allegations of Nepotism Law Violations
Trademark Commissioner Deborah Cohn was reported by The Washington Times to have announced her resignation today after allegations were reportedly made against her that she had violated nepotism laws. A Federal Times article from July provides some additional background on the reported scandal. This particular Washington scandal has received virtually no coverage outside of the…
Read MoreGetty Images Copyright Dispute Against Microsoft to Challenge Legality of Recently Released Widget
Getty Images made news in the copyright world this week by filing a complaint against Microsoft Corporation in the Southern District of New York for “infringing and facilitating the massive infringement of [its] copyrights” through its release of the new Bing Image Widget service. To review the full complaint, click here. The case is significant…
Read MoreTwitpic’s Abrupt Announcement to Shut Down over Trademark Dispute: Convenient Excuse or Full Story?
Twitpic announced in a blog posting today that it will be shutting down on Sept. 25th over a trademark dispute with Twitter regarding the use of the name “twitpic.” Various media outlets have also covered the announcement such as Wall Street Journal and Time. The reporting on this story has thus far not raised many…
Read MoreLandmark Copyright Verdict Against Media Companies Serves as Cautionary Tale to All
In case you missed the headlines late last year, freelance photographer Daniel Morel was awarded a $1.2 million damage verdict against Agence France-Presse (“AFP”) and Getty Images after it was found that they willfully infringed Mr. Morel’s photos of the 2010 earthquake in Haiti. The verdict caught my attention given the fact so many clients…
Read MoreSupreme Court Rules that Patent Owner Bears Burden of Proving Infringement in Licensing Dispute
The U.S. Supreme Court recently issued a decision in the licensing dispute case of Medtronic Inc. v. Mirowski Family Ventures, LLC, where the Court held that the patent owner had the burden of proving infringement when the licensee files a declaratory judgment action in a patent licensing dispute. What are the facts in this case?…
Read MoreSteering Clear of Marketing Traps Around Milestone Events
If you are in the marketing/advertising business, your success depends largely on coming up with innovative new ways to promote a customer’s product or event offering. Thus, when a milestone event arises in the sports, music, or film worlds, you may be inspired to try to capitalize on those events by tying your marketing efforts…
Read MoreSupreme Court to Hear Streaming TV Over the Internet Case
Like many cable and satellite TV consumers these days, I have been closely following the new options on the market for streaming TV service and hoping that the day will soon come when I can significantly reduce my monthly subscription costs without cutting off my access to live TV. With the cost of living…
Read MoreCopyright Office Seeking Comments on Possible Change to Small Claims Remedies
As an attorney who largely represents small businesses and entrepreneurs, I have often found myself in the tough position of explaining to someone with limited resources just how difficult it was going to be to go after an infringer. Either it is simply too cost-prohibitive to go after an infringer, or the client has the…
Read MoreGoogle Reaches Settlement with Book Publishers in Copyright Infringement Case
Google has reached a settlement with several major American publishing companies, including but not limited to McGraw-Hill, Pearson Education and Penguin, John Wiley & Sons and Simon & Schuster in a copyright infringement case challenging Google’s decision to scan the book collections of many major universities. The Los Angeles Times is reporting that the settlement…
Read MoreGoogle Announces Controversial Decision to Factor Receipt of DMCA Notices into Ranking of Websites
Google has just made a controversial announcement that it will now be factoring the number of “valid” DMCA notices that it receives on a particular website into how it ranks that website in its search results. The Wall Street Journal reported: Google’s move comes as Google itself is attempting to become a major seller and…
Read MorePayPal Launches New Internet Controversy over Decision to Censor Erotica Content Sold through Platform
PayPal has set off a new controversy on the Internet by advising e-book sellers that they must remove all erotica content off their websites or PayPal will stop doing business with them. In particular, PayPal is apparently concerned with content dealing with erotica fiction containing rape, incest, and bestiality, reported Technolog on MSNBC’s website. According…
Read MoreApple Trademark Dispute with Proview Becomes a Global Fight
Apple’s trademark dispute with Proview is now being fought on two fronts: at the local level in China and here in Silicon Valley. The Wall Street Journal is reporting that Proview has filed a lawsuit in Santa Clara County Superior Court claiming that Apple committed fraud when it used a company called IP Application Development…
Read MoreSOPA Blackout Protesters Succeed in Tabling SOPA and PIPA Bills; Focus Shifts to OPEN Act
To follow up on my blog posting about the SOPA blackout, the SOPA blackout protesters achieved their desired result: SOPA and its companion bill PIPA were tabled after its co-sponsors withdrew their support of the bills, as the L.A. Times reported. The focus of Congress will now shift to consideration of the Online Protection and…
Read MoreLessons for Silicon Valley Companies in Apple Trademark Dispute
In case you have not been following the story, Apple has found itself in the middle of a trademark dispute in China over the use of its mark “iPad,” as MSNBC reported on its website yesterday. You might wonder how in the world this happened, given Apple’s large, IP savvy legal department and the fact…
Read MoreSilicon Valley Prepares for SOPA Blackout Day Observation
The Silicon Valley cyberspace community is currently preparing for tomorrow’s observation of SOPA Blackout Day. Organizers are requesting that participants make their websites go black for at least 12 hours tomorrow in observation of the blackout. As I reported on the Silicon Valley Software Law Blog, Mozilla, Reddit, Word Press, Boing Boing and the English…
Read MoreWhat does Patent Reform mean for Silicon Valley Entrepreneurs?
The recent passage of the long-awaited Patent Reform bill was heralded by many around the country as great accomplishment; however, the bill was not without controversy, particularly in the Silicon Valley, where many who work with start-ups and tech companies expressed concern about the new legislation. In my recent blog posting on the California Biotech…
Read MoreAmazon, Google, Wall Street Journal Move to Modify Applications on Apple App Store
Moves by Amazon, Google, and the Wall Street Journal today to modify their applications on the Apple App Store suggest that Apple is taking steps to enforce its new royalty policies on companies selling on its App Store. In my recent posting to the Silicon Valley Software Law Blog, I report on this new move…
Read MoreThe Prinz Law Office Launches the Silicon Valley Software Law Blog
The Prinz Law Office is pleased to announce the launch of its newest content offering: the Silicon Valley Software Law Blog. Our latest blog will address legal issues of interest to members of Silicon Valley’s software industry. The purpose of the new blog is to enable the firm to focus on the narrow topic of…
Read MoreHow Does an Entrepreneur Protect His or Her Ideas for Launching a New Start-Up?
When an entrepreneur calls me with questions about launching a new start-up, he or she is inevitably concerned about a single issue: protecting his or her ideas. Most are a little disappointed to learn that ideas alone are not something that you can protect with an IP filing. So, if ideas alone are not protectable,…
Read MoreHiring a Third Party to Create for You? Don’t Forget the Copyright Assignment
In this day and age, it is very easy to find someone to create almost anything for you or your business at the mere click of the mouse; however, what most people forget when they make that easy hiring decision: paying for the work does not mean that you OWN what was created–it merely means…
Read MoreTrying to Save Money with Do-It-Yourself Trademark Filings? How to Avoid Creating a More Expensive Headache for Yourself
I have been working with a number of start-ups in this recession tried to save money by filing their own trademarks, and ultimately ended up creating a more expensive headache for themselves because of mistakes they made in the application. If your start-up is one of those businesses that is trying to cut corners in…
Read MoreNew Start-Ups Should Consider Collaboration Agreement as Alternative to Equity Agreement
Given my Silicon Valley location, I often receive calls from start-ups who want to “give equity” to a developer that they’ve just started working with. When I receive these calls, I inevitably have a talk with the client or prospective client urging them to consider an alternative: entering into a collaboration agreement with the developer…
Read MoreSilicon Valley IP Licensing Law Blog Author Kristie Prinz Profiled in TheSciTechLawyer
I recently sat down with TheSciTechLawyer’s Clara Cottrell to discuss some of the challenges of starting a law firm and my advice for other lawyers starting firms or just trying to maintain their practices during the current recession. I wanted to share the article with the readers of this blog. Click here to view the…
Read MoreSilicon Valley IP Licensing Law Blog Author Kristie Prinz Discusses Intellectual Property Licensing with IP Society’s Patrick Reilly
I recently sat down with IP Society’s Patrick Reilly to talk about my firm’s intellectual property licensing practice. The video interview is now posted for viewing. Click here to view video.
Read MoreTechnology Transfer Tactics Interviews Kristie Prinz on Tech Transfer Commercialization Dilemma
I wanted to share with blog readers an interview that I recently had with Technology Transfer Tactics on the issue of whether poster presentations jeopardize a tech transfer office’s commercialization offices. While the issue does not have much application to the business world and is really very specific to the intellectual property which is developed…
Read MoreSeventh Circuit Court of Appeals Issues Ruling Which Affirms Rights in an Exclusive License to Joint Intellectual Property
I just spent about five hours on the phone with multiple clients over the last few weeks explaining to them the ins and outs of exclusively licensing joint intellectual property, so I was pleased to see the decision of the Seventh Circuit Court of Appeals in the Wisconsin Alumni Research Foundation v. Xenon Pharmaceuticals, Appeal…
Read MoreFTC’s Suit Against Intel: What Will Be the Impact on the Silicon Valley?
The Federal Trade Commission (“FTC”) just filed suit against Intel this week, on the grounds that Intel’s “anti-competitive tactics have stifled innovation and harmed consumers.” The FTC’s press release on the suit states as follows: “The FTC’s administrative complaint charges that Intel carried out its anti-competitive campaign using threats and rewards aimed at the world’s…
Read MoreKristie Prinz Interview with Patrick Reilly on Technology Licensing
Patrick Reilly’s interview of Kristie Prinz on technology licensing recorded in 2009.
Read MoreSeries on ALI Software Contract Principles: Clarify Rules on Implied and Express Warranties in Software Contracts
We continue today with our series on the new American Law Institute Principles of the Law of Software Contracts with a discussion of what software companies need to know about the Principles’ treatment of warranties. Again, for any of you who have not read our earlier postings on this subject, the importance of the Principles…
Read MoreElectronic Frontier Foundation Launches New Site to Track Modifications to Online Terms and Conditions
The Electronic Frontier Foundation (“EFF”) has just launched a new website to track companies’ modifications to their terms and conditions: TOSback.org. According to an explanation on the website, TOSbackup.org was launched with the intention of increasing public awareness about online terms of service, and to help the public monitor changes to the terms of service…
Read MoreSupreme Court Agrees to Hear Bilski Case: Decision to Have Broad Implications for Silicon Valley Companies
The Supreme Court agreed this week to hear the Bilski Case. Given the issues at the heart of Bilski, this case will be closely watched by the Silicon Valley business community, since any decision could have a far-reaching impact on the patentability of intellectual property developed by Silicon Valley businesses. What are the issues to…
Read MoreAssociated Press Interview Offers Some Insight on its Plans to Police Blogosphere
As the Silicon Valley IP Licensing Blog has been reporting, the Associated Press has already initiated an effort to impose its view of what constitutes fair use on the blogosphere. However, I came across today an interesting interview by Ars Technica, which offers some insight on how the Associated Press plans to go about policing…
Read MoreSeries on ALI Software Contract Principles: Changes Default Rule from Implied Warranty to Implied Indemnification Against Infringement
As we posted yesterday, the American Law Institute has just approved its Principles of the Law of Software Contracts. As promised, we are launching today the first in a series of postings on the new Principles to educate our blog readers in the software industry on the practical implications of these Principles. If you have…
Read MoreAmerican Law Institute Approves Principles of the Law of Software Contracts
The American Law Institute (“ALI”) recently approved at its 86th Annual Meeting the proposed final draft of the Principles of the Law of Software Contracts. For those blog readers who are not familiar with the ALI, this is a legal professional organization, which is known for publishing authoritative restatements of the law. It is considered…
Read MoreCopyright Office Issues Response to Backlog Reports
The Copyright Office has issued a response to last week’s reports of a backlog at the Copyright Office. In an email sent out to Copyright Office subscribers, the Copyright Office stated as follows: A recent Washington Post article focused on the lengthy processing times the Copyright Office is experiencing in wake of its transition from…
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