IN THIS DAY AND AGE, NEWS TRAVELS FASTER THAN EVER BEFORE.
Jordan Sigale Quoted in Bloomberg BNA Article re Apple v. SamsungPosted Sep 23, 2015 at 9:16 am See More
Bloomberg BNA reported on September 18, 2015, that “Samsung must remove or replace Apple-patented features from its smartphones and tablets, according to a Sept. 17 decision by the U.S. Court of Appeals for the Federal Circuit (Apple Inc. v. Samsung Elecs. Co., Fed. Cir., 2014-1802, 9/17/15).” The court was divided in this ruling, offering three separate opinions. The majority, however, held that Apple had shown a connection between the patented feature and downstream sales, noting that the patent features were important to consumers. In a concurring view, Judge Jimmie V. Reyna “said that a patentee’s reputational harm will “certainly” occur “when customers find the patentee’s innovations appearing in a competitor’s products.””
Jordan Sigale said, “The real crux of the majority’s opinion is its holding that to prove irreparable harm the patentee need not prove in a multi-featured product that the infringing feature was the sole feature driving consumer demand for the product.”
Disputes between Apple and Samsung include two cases tried in the U.S. District Court for the Northern District of California on different sets of patents, according to Bloomberg. “The U.S. Supreme Courot in eBay, Inc. v. MercExchange LLC, 547 U.S. 388, 78 U.S.P.Q. 2d 1577 (2006) (72 PTCJ 50, 5/19/06), chastised the appeals court for defaulting to an injunction for patent infringement, absent a “sound” reason for denying it.” In the case at hand, “[u]nderlying the three opinions is a dispute in the Federal Circuit about injunctions generally.”
Sigale put the differing views in perspective, as to how eBay addresses the circumstances of cases like this specifically. “As much as the Supreme Court made clear in eBay that injunctive relief should not automatically follow every finding of patent infringement, the Federal Circuit made clear today in Apple IV that not every infringing feature in a multi-feature product should receive an automatic pass on irreparable harm either.”
Bloomberg noted that the Federal Circuit, should it decide to take the case en banc, “may have more to resolve than what to do with injunctions on multi-featured products specifically. The court’s decision vacates the denial of a permanent injunction and remands for further proceedings.”
Dunlap Codding Director Jordan A. Sigale Quoted in Law360 on Michael Jordan VerdictPosted Aug 27, 2015 at 11:42 am See More
Jordan Sigale was quoted in a Law360 article by Zachary Zagger on August 24, “Jordan Verdict A Warning For Advertisers On Image Use.” The article commented on the verdict in Jordan et al. v. Dominick’s Finer Foods, LLC, in which lawsuit Jordan was awarded $8.9 million in damages by a jury “in a trial over a full-page advertisement in Sports Illustrated taken out in 2009 by former Chicago-area grocery chain Dominick’s Finer Foods LLC, now owned by Safeway Inc., without the superstar athlete’s approval.” The ad offered a coupon for $2 off a steak and depicted and congratulated Jordan, saying “you’re a cut above the rest.” Jordan’s likeness was used without his approval and he testified in trial that he does not take less than $10 million for advertising deals using his image or likeness, and that he would not have approved this use at any price because it was not in keeping with his strategy.
Sigale was quoted as saying the case forced the jury to decide what the true fair market value of the ad was in 2009 and that it says a lot about how a “jury of our peers” views the way in which we compensate people for their right of publicity. He went on to observe, “While this jury was clearly comfortable with the notion that some people’s right of publicity can be extremely valuable, it wasn’t willing to completely side with Mr. Jordan.” Dominick’s had argued that the fair market value was closer to $100,000. Sigale noted that the jury didn’t award Jordan the full $10 million, but also didn’t go as low as Dominick’s sought.
Dunlap Codding Shareholders Selected For Inclusion In The Best Lawyers In America® 2016Posted Aug 17, 2015 at 22:17 pm See More
OKLAHOMA CITY, OKLAHOMA —August 17, 2015—Dunlap Codding is pleased to announce that Marc A. Brockhaus, Nicholas D. Rouse and Douglas J. Sorocco have been selected by attorney peers for inclusion in The Best Lawyers in America® 2016, the oldest and most respected peer–review publication in the legal profession. Firm managing shareholder Nick Rouse said, “We’re delighted to be included in the publication. We have always worked to provide excellent service and value to our clients and to uphold the reputation of our industry.”
Marc Brockhaus was listed in The Best Lawyers in America® 2016 for Patent Law. Marc leads Dunlap Codding’s Electrical Engineering & Systems group. His practice includes all areas of intellectual property, including technology, computer and patent law, and extends to counseling, transactions, litigation, and prosecution before the United States Patent and Trademark Office. He is ranked in the top band of Oklahoma’s top intellectual property practitioners by the highly regarded Chambers USA: America’s Leading Lawyers for Business. Marc has been an adjunct faculty member at the University Of Oklahoma College Of Law and received his J.D. and his Masters of Business Administration from the University of Oklahoma in 1997, where he was inducted into Beta Gamma Sigma. He received his B.S. in Electrical Engineering from the University of Oklahoma in 1993.
Nick Rouse, listed in The Best Lawyers in America® 2016 in the fields of Patent Law and Trademark Law, has served as Dunlap Codding’s managing shareholder since 2007 while continuing an active practice. In its inaugural coverage of intellectual property law in Oklahoma, the highly regarded Chambers USA: America’s Leading Lawyers for Business ranked Nick in the top band of leading practitioners, and he continues to be ranked in the top band. Nick provides a broad range of patent counseling to clients ranging from individual inventors to large multinational manufacturing companies. His practice includes patent preparation and prosecution, patent portfolio management, validity and infringement opinions, evaluations of new designs, and licensing strategy. Nick graduated from the University of Oklahoma in 1987 with a B.S. in Petroleum Engineering, and received his J.D. from the University of Oklahoma College of Law in 1990. He is a member of the Intellectual Property Law Section of the Oklahoma Bar Association, and served as its president in 2006.
Doug Sorocco is listed in The Best Lawyers in America® 2016 in the field of Technology Law. He practices in the areas of intellectual property, technology, licensing, life sciences and patent law and is involved in counseling and transactional work involving all aspects of intellectual property. He is registered to practice before the United States Patent and Trademark Office. Doug regularly counsels clients in all aspects of intellectual property including acquisition and commercialization of intellectual property, portfolio management, licensing and transactional matters. He is ranked in the top band of Oklahoma’s top intellectual property practitioners by the highly regarded Chambers USA: America’s Leading Lawyers for Business. Doug was also selected by attorney peers for inclusion in Oklahoma Super Lawyers–Rising Stars Edition (2010). He is an adjunct faculty member at the Oklahoma City University School of Law and in the Physiology Department at the University of Oklahoma’s Health Sciences Center.
Since its inception in 1983, Best Lawyers has become universally regarded as the definitive guide to legal excellence. Because Best Lawyers is based on an exhaustive peer–review survey on the legal abilities of other lawyers in their practice areas, and because lawyers are not required or allowed to pay a fee to be listed, inclusion in Best Lawyers is considered a singular honor. Corporate Counsel magazine has called Best Lawyers “the most respected referral list of attorneys in practice.”
Dunlap Codding P.C., with offices in Austin, Chicago, Oklahoma City, Wilmington, and Washington, D.C., serves sophisticated international, national, and regional clients. Established in 1957 as Oklahoma’s original intellectual property firm, Dunlap Codding remains the state’s largest and most versatile IP boutique law firm.
Dunlap Codding is a member of Primerus, an International Society of Law Firms.
Julie L. Langdon Selected As An Emerging Lawyer in IllinoisPosted Aug 13, 2015 at 10:38 am See More
Julie L. Langdon, a senior associate in Dunlap Codding’s Chicago office, has been selected as an Emerging Lawyer in Illinois by Leading Lawyers, a division of Law Bulletin Publishing Company, which recognizes the top two percent of lawyers who are under the age of 40 or who have been practicing law for fewer than ten years. Julie’s practice encompasses a number of areas of intellectual property law, including litigation, licensing, counseling, and asset protection of copyrights, trademarks, patents, and trade secrets. Her primary practice is patent litigation with a concentration in the areas of biotechnology and life sciences, chemical, and pharmaceutical arts. Julie represents plaintiffs and defendants in patent-related litigations involving infringement and other disputes arising over patent rights.
Emily Campbell Quoted in Bloomberg BNA’s Patent, Trademark & Copyright Journal on Trademarks and Likelihood of ConfusionPosted Aug 11, 2015 at 13:54 pm See More
On August 7, Bloomberg BNA covered DC Comics v. Gotham City Networking, Inc., T.T.A.B., No. 91194716, 7/17/15. The case involves a trademark application filed by Gotham City Networking Inc. for “Gotham Batmen” with a stylized bat-like logo to be used in networking referral services and “entertainment in the nature of amateur softball games.” According to Bloomberg, “DC Comics, which owns the rights to Batman and numerous trademarks related to the superhero, opposed the registration on dilution and likelihood of confusion grounds.” The Trademark Trial and Appeal Board ruled on July 17, that the use of the name “Gotham Batmen” was likely to cause confusion with a number of different marks owned by DC Comics.
Administrative Judge Jyll Taylor provided a dissenting opinion, noting that DC Comics had failed to establish that “Batman” was a famous mark, having not proven the connection between DC and Warner Bros. Studies. According to BloombergBNA, “[t]he majority had found “Batman” to be famous, largely because of the films.
Gotham City argued that its trademark constituted a parody. Dunlap Codding Shareholder Emily Campbell was quoted as saying that “for a parody defense to succeed in trademark law, the parodist has to walk a “fine line” between resembling the parodied mark and making a point…. [A] poster of a pregnant woman wearing a Girl Scout uniform with the Scouts’ slogan “Be Prepared” written underneath qualified as an example of an outrageous joke that worked as a trademark parody.” She explained that the “Batman” – “bat men” softball joke was not nearly as obvious and therefore did not bode well for Gotham City’s chances that its mark was a parody and would not cause confusion.
Campbell also said that Judge Taylor’s concerns were valid, and the majority’s famous mark analysis could be an issue on appeal. “The dissent is interesting because there does seem to be a hole in the evidence. The majority filled in the blanks to come to the conclusion that we all recognize the Batman name, but I think to adhere to the law [the board needed to make a fuller analysis.]”
Dunlap Codding Receives a Beacon Award for Charitable InfluencePosted Aug 11, 2015 at 8:44 am See More
Dunlap Codding was honored by The Journal Record, receiving a Beacon Award for Charitable Influence on July 17. The award recognizes organizations for demonstrating a company culture that encourages and supports volunteerism, charitable giving, and community involvement by its members.
Nearly all of Dunlap Codding’s team members dedicated their time and resources to charitable and community causes since 2013, when the firm began offering the use of DC on Film Row—an events and community space—to local creative, civic, and charitable organizations. In 2014 alone, the firm volunteered more than 1,000 hours and contributed $150,000 to hosting, supporting, and funding nearly 150 such events.
Nicholas Rouse, the firm’s managing partner, said the firm started its civic and charitable work with the concept that “community doesn’t need a place, but it doesn’t hurt to have one.” The Journal Record noted, “Dunlap Codding is redefining what it means to be actively engaged in the Oklahoma City community.”
One Year Anniversary of AlicePosted Jun 30, 2015 at 11:36 am See More
Directors Marc Brockhaus and Jordan Sigale were guest bloggers on IP Frontline, a web magazine about intellectual property. Our post, “What would Alice and its progreny look like as word jumbles?” ran on June 29, 2015.
Managing Intellectual Property Ranks Dunlap Codding In Tier 1; Names Ip StarsPosted Jun 25, 2015 at 12:10 pm See More
Dunlap Codding is pleased to announce that Managing Intellectual Property magazine ranked the firm in its top tier—Highly Recommended—and named five firm attorneys to its IP Stars 2015 list: Marc A. Brockhaus, Nicholas D. Rouse, Jordan A. Sigale (Illinois), Douglas J. Sorocco, and Joseph P. Titterington. More Dunlap Codding lawyers were named to the list of IP Stars than from any other firm in Oklahoma.
Marc Brockhaus leads the firm’s Electrical Engineering & Systems group. He received his J.D., M.B.A., and B.S. in Electrical Engineering from the University of Oklahoma. Nick Rouse is the firm’s Managing Director and the head of its Mechanical Engineering group. He received his J.D. and his B.S. in Petroleum Engineering from the University of Oklahoma. Doug Sorocco heads the firm’s Life Sciences practice and received his J.D. from the University of Dayton and his B.S. in Chemistry from Butler University. Jordan Sigale is a Co-Chair of the firm’s Litigation practice and offices in Chicago. He received his J.D., magna cum laude, and B.S. in Electrical and Computer Engineering from the University of Illinois. Joe Titterington is also a Co-Chair of the firm’s Litigation practice. He received his J.D. from the University of Oklahoma and his B.S. in Psychology from Oklahoma State University.
Managing Intellectual Property’s IP Handbook ranks leading intellectual property agencies and law firms worldwide, highlighting the country’s prominent intellectual property attorneys. Results are based on a research process comprising more than 1,000 interviews of and surveys from peers and in-house counsel active in the United States.
Dunlap Codding Director Jordan A. Sigale Quoted in Articles Analyzing the U.S. Supreme Court’s Ruling in Kimble v. MarvelPosted Jun 25, 2015 at 12:06 pm See More
Jordan A. Sigale was quoted in Donna Young’s recent article in Scrip Intelligence, “Patent ‘superpowers’ time limits upheld: Biopharma implications.” Young wrote that Kimble v. Marvel “may help patent holders and those that enter into licensing rights deals, including biopharmaceutical makers, better understand and be more aware of a nearly half-century old case law rule.”
The U.S. Supreme Court, in a split decision, declined to overturn the 1964 standard set in Brulotte v. Thys, which ruled that patent holders cannot demand royalties for the use of their inventions after the patent terms have expired.
Sigale said, “Big biopharmaceutical firms are well-represented in patent law and intellectual property matters, so they already know their way around the Brulotte rule….If anything, the Supreme Court’s ruling in the Marvel case makes it clearer the Brulotte rule is narrow and that there are ways to draft around it….But for those who are unsophisticated about Brulotte, the opinion is unfortunate….It would be much better to knock out this rule. It doesn’t make economic sense…and any standard that gives the advantage to those who can afford the best legal representation is bad for society.”
Ryan Davis, writing for Law360, on June 22, 2015, also quoted Sigale. Davis wrote, “The Kimble case arose because neither party knew about the [Brulotte] rule when Marvel agreed to license Kimble’s patent for use in a Spider-Man Web Blaster toy in perpetuity.” Sigale was quoted as saying, “The decision explains that the Brulotte rule really is as narrow as we thought it was….If you make it clear there are no royalties for the patent after it expires, you can do anything you want.”
“Sigale said it was helpful that the court expressly gave its blessing to later payments of royalties accrued during the life of the patent,” said Davis. Sigale said, “Before today, people were a little nervous that the court would say that’s just putting form over substance.”
Dunlap Codding Senior Associate Julie L. Langdon Quoted in Law360—“6 Ways Associates Are Falling Short”Posted Jun 2, 2015 at 13:36 pm See More
Julie Langdon was quoted by Cara Salvatore in an article published by Law360 on June 1, 2015, entitled “6 Ways Associates Are Falling Short.” The article noted the following ways associates are stumbling and offered steps to improve:
- They Aren’t Visible Enough
- They Don’t Take Ownership
- They’re Not Thorough
- They’re Not Friend Material
- They Don’t Know How to Talk on the Phone
- They Don’t Sow the Seeds for Business Development
Discussing ownership, Langdon noted that it was important to follow up relentlessly and to know what to do when mistakes occur. When they do, as they inevitably will, it’s important to own the problem quickly and take steps to correct it. “Unfortunately, it happens: A document that was supposed to be filed under seal that was, by mistake, filed publicly, and you’re calling the clerk at 8 a.m. the next morning…’take this off the docket.’” She went on to note, “All things are fixable.”