The Chicago IP Colloquium has another strong line up for its 2009 edition.  The Colloquium jointly sponsored by Chicago-Kent and Loyola Chicago began yesterday at Kent with Professor Joseph Miller of Lewis & Clark Law School presenting his paper Hoisting Originality. Papers from past Colloquia are available here.

The leaders of the Colloquium are Professor Graeme Dinwoodie, Director, Program in Intellectual Property Law, Chicago-Kent College of Law and Professor Cynthia Ho, Loyola law School.  Mark your calendars for the remaining sessions of the 2009 Colloquium:

February 10, Loyola University Chicago School of Law, Room 1103
Professor Colleen Chien, Santa Clara University Law School

Paper: Patent Detente – Solutions to the Patent Arms Race

February 24, Chicago-Kent College of Law, Room 305
Professor Anupam Chander, UC Davis School of Law

Paper: Youthful Indiscretion & Digital Memory

March 24, Loyola University Chicago School of Law, Room 1103
Professor David Adelman, The University of Arizona

Paper: Visualizing Patent Domains: Emerging Empirical Methods & Their Implications for Patent Policy

April 7, Chicago-Kent College of Law, Room 305
Professor Lisa Ramsey, University of San Diego School of Law

Paper: Free Speech and International Obligations to Protect Trademarks

April 21, Loyola University Chicago School of Law, Room 1103
Professor Frank Pasquale, Seton Hall University School of Law

Paper: Search, Copyright, and Speech

Magistrate Judge Mason’s term ends on September 28, 2009.  As part of considering reappointing Judge Mason for an additional eight year term, the Northern District is establishing an advisory panel of Northern District citizens.  Additionally, the Northern District Clerk is accepting written comments to regarding Judge Mason to assist the panel until March 20, 2009 at the following address:

Magistrate Judge Advisory Panel

c/o Mr. Michael W. Dobbins

Clerk of Court

U.S. District Court

219 South Dearborn St. – Rm. 2050

Chicago, IL 60604

Along with the IP ADR Blog’s Victoria Pynchon, I am giving an ALI-ABA continuing legal education teleconference discussing alternative dispute resolution as a low-cost alternative for intellectual property disputes — click here to register.  The program is at 11 am CT on February 18.  Here are ALI-ABA’s program highlights:
Why Attend?

In a difficult economy, intellectual property protection and assertion is more important than ever. The combined stressors of a poor fiscal climate and shrinking legal budgets place a significant strain on any business dependent upon IP assets. as companies face difficult economic decisions, it is increasingly difficult to fit the expense and extended uncertainty of copyright, patent and trademark litigation into a forward looking business plan. This one-hour seminar explores the use of alternative dispute resolution as a means of protecting intellectual property and business activity, while minimizing the expense and devotion of time related to traditional IP litigation.

What You Will Learn

This program examines how to move an IP dispute toward alternative dispute resolution; best practices for controlling the expense and length of the process; and best practices for successful alternative dispute resolution. Whether you are an experienced IP practitioner or simply one grappling with IP issues in your general commercial practice, knowing how to offer your clients a wide array of ADR options might make the difference between a practice that survives and one that thrives. The seminar will cover the following topics:

  • How to choose between litigation and ADR.
  • The most successful strategies for guiding your dispute into the best ADR forum at the most productive time.
  • The five basic rules of “distributive” or “fixed sum” bargaining that will give you the “edge” in all future settlement negotiations.
  • The five ways to “expand the fixed sum pie” by exploring and exploiting the client interests underlying your own and your opponents’ legal positions.
  • The Ten Mediation/Settlement Conference Traps for the Unwary.

Invest just 60 minutes at your home or office to learn about alternative dispute resolution in the IP field from this duo of experts. This audio program comes to you live on Wednesday, February 18, 2009, 12:00-1:00 pm CST, via your phone or your computer. Materials corresponding to the course may be downloaded or viewed online.

Planning Chair

R. David Donoghue, Esquire, Holland & Knight LLP, Chicago, IL

Faculty

Victoria Pynchon, Esquire, Settle It Now Dispute Resolution Services, Beverly Hills, CA

Here are several IP-related stories and news items that I found valuable or interesting:

  • The Maryland IP Law Blog reports that Patent Secrecy Act activity was down in 2008, with a significant reduction in issuance of new secrecy orders — down to 68 in 2008 from 128 in 2009 — and existing secrecy orders down about .5% to 5,023 total in FY 2008 — click here to read the post.
  • Daily Writing Tips warns against genericide — the death of a trademark caused by using the mark as a generic term — and gives numerous examples.
  • A sincere thank you to Patent Baristas; Rush on Business; and Securing Innovation.  I do not buy into the blog awards  or best blog lists, but it is an honor  to be nominated for Blawg Review of the year by such accomplished bloggers and lawyers.  My 2008 Blawg Review was an ode to world record swims and America’s favorite Olympic son Michael Phelps — click here to read it.

Kingsbury Int’l., Ltd. v. Trade the News, Inc., No 08 C 3110, Slip Op. (N.D. Ill. Oct. 28, 2008) (Lindberg, Sen. J.).

Judge Lindberg denied defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s copyright infringement claim and defendant’s alternative Fed. R. Civ. P. 12(e) motion for a more definite statement of the claim. Plaintiff alleged that it owned a copyright in its Chicago Business Barometer monthly business index; that it specifically informed its subscribers that the index was copyrighted and that it could not be reproduced or rebroadcast in any manner until plaintiff publicly released the index at 8:45 AM; and that defendant released unidentified “parts” of the May 2007 issue of the index at 8:42 AM, three minutes before plaintiff’s public release. The Court held that these allegations met the Fed. R. Civ. P. 8(a) pleading standards, without specifically identifying which parts of the index were copied, noting that copyright claims did not require Fed. R. Civ. P. 9(b) heightened pleading. Furthermore, defendant’s defense that, if anything, it copied only unprotected facts was not appropriate for a Rule 12(b) determination on the pleadings.

Finally, the Court held that the complaint was not “so vague or ambiguous” that it warranted requiring a more definite statement.

Publications Int’l. Ltd. v. LeapFrog Enters., Inc., No. 08 C 2800, Slip Op. (Dec. 4, 2008) (Guzmán, J.).

Judge Guzmán granted declaratory judgment defendant LeapFrog’s Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff Publication International’s (“PIL”) claim for declaratory relief regarding the POINGO mark used in association with a pen-like electronic reading device. PIL alleged, and LeapFrog admitted, that LeapFrog used the POINGO mark for a pen reader system in one presentation to a retailer, but never marketed or sold a pen reader using the name and never sought to register the mark with the PTO. PIL also alleged that LeapFrog sent PIL cease and desist letters warning that LeapFrog’s earlier use of the POINGO mark gave it priority in the mark. The Court held that PIL had not met its burden because it had not alleged that LeapFrog had used the mark on products in commerce or that LeapFrog had sufficient intent to use the mark in commerce. Without a use in commerce or an intent to use, the immediacy required for a declaratory judgment action was not present.

While I head out to watch Chicago’s adopted son, President-elect Barack Obama become the nation’s next president, I thought it was appropriate to provide some thoughts on where the new administration might lead the IP community.  I am an IP litigator and fortunate enough to be able to watch one of the most amazing spectacles of our democracy, the peaceful transfer of power, but I do not pretend to be either a prognosticator or political expert.  So I will leave the predictions to those who feel qualified to make predictions:

[UPDATE:]  Duncan Bucknell’s weekly podcast, which is always worth your time, discussed how the Obama administration might impact US IP policy — click here to listen to it.

Please join me this Friday, January 23 at the Chicago Bar Association’s annual Practice Management and Legal Technology Conference.  I will be presenting from 1:30-2:30 CT with Evan Brown of Internet Cases fame.  We will be discussing the broad topic of using the internet and social media, in particular blogs, to network and develop your practice.  The conference promises to be a great day of learning about new technologies from a wide array of experts.  The cost is $99 dollars for CBA members and $199 for non-members both pay an extra $10 for registration at the event.  Click here for more information on the seminar and registration forms.

Brinks Hofer’s Robyn Bowland is the winner of the 2008 George Hutchinson Writing Competition, Hutchinson was the first Federal Circuit Chief Clerk. The competition honors an excellent articls or paper from a law student. Bowland’s article — Distress Signals: Considering the Patentability of Signals in Light of Nuijten considered whether electromagnetic signals were patentable focusing on In re Nuijten.  It is expected to be published later this month in the Federal Circuit Bar Journal.   It is great to see another strong writer joining the Chicago IP bar.

*  Hat tip to the Chicago Lawyer for identifying this story — click here to read the Chicago Lawyer story.

2008 was another busy IP year for the Northern District of Illinois.  Once again, there was an increase in patent case filings, and the Northern District continues to be among the top five patent dockets in the country and the most active district court in the Seventh Circuit by far.  Trademark cases were steady, with only two fewer filings than in 2007.  And as with its patent docket, the Northern District’s trademark docket continues to be one of the five most active in the country.  Finally, copyright cases continued a relatively steep decline.  But despite the decline, the Northern District maintains one of the most active copyright dockets outside of California and the Southern District of New York.  This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2008 (data gathered from the Stanford IP Clearinghouse):

2008 Northern District IP Case Filings
Case Type 2006 2007 2008
Patent 126 141 151
Trademark 136 130 128
Copyright 194 123 81