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…

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Practical 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…

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Challenges 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…

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Trademark 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…

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Getty 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…

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Steering 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…

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Supreme 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…

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Google 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…

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PayPal 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…

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Apple 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…

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Silicon 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…

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What 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…

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Technology 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…

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Seventh 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…

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FTC’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…

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Electronic 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…

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Series 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…

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