• Tips for Protecting Cannabis Trademarks

    In most industries, federal trademark registration is seen as an attractive form of protection, because federal registration converts what would normally be localized common law trademark rights into national rights covering all 50 states. However, businesses in which the products or services involve the manufacture, distribution or consumption of cannabis—aka “plant-touching” businesses—face an uphill battle seeking to build and protect their brands. This is because all “plant-touching”…

    Continue Reading ...
  • Sue First, Negotiate Later

    Just a brief post this week, as I have a perfect storm of non-work related happenings. So, I’ll just say that I’m please to announce that my draft article Sue First, Negotiate Later will be published by the Arizona Law Review. The draft is on SSRN, and the longish abstract is below. I may blog about this in more detail in the future, but this is an introduction:

    One of the more curious features of patent law is that patents can be challenged by anyone worried about being sued. This challenge right allows potential defendants to file a declaratory relief lawsuit in their local federal district court, seeking a judgment that a patent is invalid or noninfringed. To avoid this home-court advantage, patent owners may file a patent infringement lawsuit first and, by doing so, retain the case in the patent owner’s venue of choice. But there is an unfortunate side effect to such preemptive lawsuits: they escalate the dispute when the parties may want to instead settle for a license. Thus, policies that allow challenges are favored, but they are tempered by escalation caused by preemptive lawsuits. To the extent a particular challenge rule leads to more preemptive lawsuits, it might be disfavored.

    This article tests one such important challenge rule. In MedImmune v. Genentech, the U.S. Supreme Court made it easier for a potential defendant to sue first. Whereas the prior rule required threat of immediate injury, the Supreme Court made clear that any case or controversy would allow a challenger to file a declaratory relief action. This ruling had a real practical effect, allowing recipients of letters that boiled down to, “Let’s discuss my patent,” to file a lawsuit when they could not before.

    This was supposed to help alleged infringers, but not everyone was convinced. Many observers at the time predicted that the new rule would lead to more preemptive infringement lawsuits filed by patent holders. They would sue first and negotiate later rather than open themselves up to a challenge by sending a demand letter. Further, most who predicted this behavior—including parties to lawsuits themselves—thought that non-practicing entities would lead the charge. Indeed, as time passed, most reports were that this is what happened: that patent trolls uniquely were suing first and negotiating later. But to date, no study has empirically considered the effect of the MedImmune ruling to determine who filed preemptive lawsuits. This Article tests MedImmune’s unintended consequences. The answer matters: lawsuits are costly, and while “quickie” settlements may be relatively inexpensive, increased incentive to file challenges and preemptive infringement suits can lead to entrenchment instead of settlement.

    Using a novel longitudinal dataset, this article considers whether MedImmune led to more preemptive infringement lawsuits by NPEs. It does so in three ways. First, it performs a differences-in-differences analysis to test whether case duration for the most active NPEs grew shorter after MedImmune. One would expect that preemptive suits would settle more quickly because they are proxies for quick settlement cases rather than signals of drawn out litigation. Second, it considers whether, other factors equal, the rate of short-lived case filings increased after MedImmune. That is, even if cases grew longer on average, the share of shorter cases should grow if there are more placeholders. Third, it considers whether plaintiffs themselves disclosed sending a demand letter prior to suing.

    It turns out that the conventional wisdom is wrong. Not only did cases not grow shorter – cases with similar characteristics grew longer after MedImmune. Furthermore, NPEs were not the only ones who sued first and negotiated later. Instead, every type of plaintiff sent fewer demand letters, NPEs and product companies alike. If anything, the MedImmune experience shows that everyone likes to sue in their preferred venue. As a matter of policy, it means that efforts to dissuade filing lawsuits should be broadly targeted, because all may be susceptible

    Continue Reading ...
  • Internet Companies File Latest Brief in Support of Google in Fight with Oracle at Supreme Court

    Mozilla, Mapbox, Medium, Patreon, Etsy, and Wikimedia have filed an amicus brief in support of Google in its case against Oracle at the U.S Supreme Court. The platforms disagree with the Federal Circuit’s March 27, 2018, ruling that Google’s use of Oracle’s Java application programming interface (API packages) was not fair as a matter of law, reversing the district court’s decision on the matter. The brief is the latest of 14 that have been filed in the last week in support of granting the…

    Continue Reading ...
  • Internet Companies File Latest Brief in Support of Google in Fight with Oracle at Supreme Court

    Mozilla, Mapbox, Medium, Patreon, Etsy, and Wikimedia have filed an amicus brief in support of Google in its case against Oracle at the U.S Supreme Court. The platforms disagree with the Federal Circuit’s March 27, 2018, ruling that Google’s use of Oracle’s Java application programming interface (API packages) was not fair as a matter of law, reversing the district court’s decision on the matter. The brief is the latest of 14 that have been filed in the last week in support of granting the…

    Continue Reading ...
  • Uganda’s Movie Collecting Society to be disbanded

    As the movie industry in Uganda continues to grow, so do the squabbles among some of the players that feed into and out of that industry. However, as an optimist, I can say that there does seem to be a faint light at the end of the tunnel that keeps glowing brighter. Ordinarily, a Collecting Society is meant to make the job of collecting royalties easier for its members. Basically, if one cannot realistically go around collecting royalties for his or her hard-earned work in the creative arena, then let the Collecting Society for which he or she is a member undertake that responsibility. In return, the Collecting Society must jealously guard the member’s copyright assigned to it; ensure efficient accountability of funds collected; and periodic remission of those funds to its members. All this time, the Uganda Registration Services Bureau (URSB), which is the Ugandan government’s Intellectual Property Office, is meant to play the role of “Big Brother” by ensuring that the Collecting Societies and their members abide by their obligations as spelt out in the Copyright and Neigbouring Rights Act of 2006 (CNRA). This, at least, is what some members of Uganda Federation of Movie Industry (UFMI) explained as their expectation from UFMI and URSB – an expectation which, in their view, was not being fulfilled.


    Early in 2018, a group of seventeen artists in Uganda’s Movie Industry, led by Julius Bwanika and Gerald Sserunjogi, filed a case against UFMI and URSB in the High Court of Uganda (Bwanika Julius and Ors v. Uganda Registration Services Bureau & Uganda Federation of Movie Industry, Misc. Cause. No. 083 of 2018). The case was filed by way of an application for judicial review to compel a Government Institution to abide by its duties. In a nutshell, the prayers before Court were for URSB to fulfill its statutory obligations as a supervisory body over Collecting Societies in Uganda and reign in on UFMI; and for UFMI to furnish accountability over its activities as well as terminate illegal issuance of licenses to audio-visual vendors. Opportunities for resolving the matter through mediation were explored without success and towards the third quarter of 2018, the parties went back to Court. On the face of the case, it was clear that UFMI had been flouting some of its obligations under the law (CNRA). For instance, there was no record of audited accounts; no records on income and expenditure; no establishment of a Provident and Benevolent Fund; and, no provision of a security device on all audio-visual recordings under its membership. Meanwhile, URSB too, had not been cracking the whip on UFMI.


    In its defense, UFMI argued that it has been going through turbulent times over the past few years with a lot of infighting, disorganization and limited operational funds. As such, it is only beginning to stabilize itself in the murky waters of Uganda’s entertainment industry to take care of all the concerns of its members. As part of its efforts in re-establishing itself, a General Assembly of its members was held in January of 2018 and new Leaders were brought on board to run the Society. The ‘elephant in the room’ over that matter was that the Seventeen artists that instituted the Court proceedings considered themselves as members of UFMI but were not recognized as such by the current UFMI leaders. These Seventeen, therefore did not recognize the General Assembly of January 2018 and were demanding for a fresh General Assembly in which they can also come in and contest for leadership of the Society. Not only that, they also contended that UFMI was wrongly constituting itself as a Collecting Society for all artists in the Visual entertainment industry and thus stifling growth and expansion of the creative industry into other areas. As such, the argument was that Performers – inclusive of standup comics – and producers, should not all be bundled up together under UFMI.


    In his judgment delivered in mid February 2019, his Lordship Justice Musa Ssekaana pointed out that although it was clear that UFMI has not been able to comply with the law, blame games do not help to resolve the current impasse between the parties. The judgment goes on to add that the “1st Respondent (URSB) should render guidance to the 2nd Respondent (UFMI) on how to make or amend the Constitution that would govern and include all the members. The membership should [be][sic] open to any person who is a stakeholder of the Film and Movie Industry. Once a person is admitted as a member of the organization, he/she should always remain a member but is supposed to pay annual subscription fees to activate his or her membership or be able to take part in the affairs of the organization. . .” The judgment states further that “it was wrong to merge a federating body with a Collecting Society because the two institutions do totally different works and as such, cannot be merged whatsoever. The single role of a Collecting Society is to collect royalties and distribute them on behalf of their members. The membership for a Collecting Society of Audio Visual Society [sic] in this case should be restricted to either producers or performers.”


    The final nail on the UFMI coffin is when the judgment states that: “The 1strespondent (URSB) should consider separating societies like in some jurisdictions by having a Society for Authors, performers and Producers because the nature of interests from the rights holders is normally different and, as such, requiring the separation of Copyright holders and related rights holders. This is buttressed by the fact that it is only authors, producers and performers who are entitled to equitable remuneration as provided under Section 31 of the Copyright and Neighbouring Rights Act of 2006. The solution in this case would be that URSB which is the one that issues Collecting Society licenses, calls on fresh applicants with knowledge and experience in copyright management to take on the roles of a Collecting Society for the Film Industry.” Essentially, Justice Ssekaana was agreeing with the Petitioners that UFMI needs to be disbanded because in its current format, it cannot play the role of Collecting Society for different categories of artists within the movie industry.  


    The Court then granted the prayers of the applicants and ordered URSB to guide the stakeholders in getting a competent and qualified Collecting Society for the Film Sector in accordance with the law. This ruling on the disbandment of UFMI thus leaves Uganda with currently only two Collecting Societies – the Uganda Performing Rights Society for music artists and producers of audio-visual works, and the Uganda Reproductive Rights Organization for book publishers and authors. It will be interesting to see how the film industry re-aligns itself to get back on track in the collective management of royalties. Hopefully, with the help of URSB, this will be sooner than later because of the promising nature of the film industry. In the meantime, thanks to this judgment, URSB itself is now cognizant of the fact that it must up its game as “Big brother” in the supervision of Collecting Societies in Uganda.


    The writer is a legal scholar and Intellectual Property law practitioner at Sipi Law Associates.

    Continue Reading ...
  • Federal Circuit Deems Written Description Requirement Satisfied if Specification Identifies the Claimed Invention in a Definite Way

    The United States Court of Appeals for the Federal Circuit recently issued a ruling reversing a district court’s grant of summary judgment of non-infringement and invalidity for failure to satisfy the written description requirement. See CenTrak, Inc. v. Sonitor Techs., Inc., 2019 U.S. App. LEXIS 4442 (Fed. Cir. Feb. 14, 2019) (Before Reyna, Taranto, and Chen, Circuit Judges) (Opinion for the Court, Chen, Circuit Judge). The Court said the written description requirement does not require that…

    Continue Reading ...