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MARCH 2019

 

Bitcoin Meets Bricks and Mortar

All of us in the legal field have likely been invited to a conference or webinar or CLE event devoted to cryptocurrency, blockchain, or some other aspect of things technological, financial, and legal that none of us had heard of when we were studying law.  Depending on one’s attitude towards technology and, arguably, to new modes of finance, these may seem like wonders of tomorrow or like some unfortunate piece of technology-run-amok out in the farther reaches of the interwebs.  However, this conjunction of the worlds of computers, money, and law has hit a milestone in a seemingly mundane transaction:  the sale of shares in a series of real estate partnerships to purchasers paying not in dollars or euros or yen but in cryptocurrency.

For the benefit of those less-than-totally knowledgeable about the world of “cryptocurrency” and “blockchain,” let’s begin with a (very) brief primer on what these terms refer to.  Cryptocurrencies, the most well-known of which is bitcoin (though thousands of other such digital currencies exist), are digitally generated and stored units of exchange.  Unlike conventional currencies, such as the dollar, they are not issued by a government.  To protect the value of each unit of cryptocurrency, the issuance of new units is governed by complex algorithms (mathematical formulas); persons executing the computer operations needed to generate these new units of currency are known as “miners.”  Each new unit of currency is timestamped, and its existence and location are stored in records, known as “blocks,” on a network of computers; the storing of these blocks on such a large number of computers reinforces the security of the underlying records, as the network is highly resistant to efforts to improperly modify any individual record.  So, for example, one cannot alter the number of bitcoins in a particular account, as one would need the entire network of computers to accept the modification, a highly unlikely event.  This continuously-growing, mutually-reinforcing ledger of verified blocks, distributed across an entire network -- and thus known as a “distributed ledger” -- is collectively referred to as a “blockchain.”

One difficulty with cryptocurrencies, from the perspective of investors, has been finding assets, particularly large-scale assets, where this new form of value is accepted as payment.  As a result, for many, if not the majority, of investors, investments in bitcoin and the like have essentially treated the currencies as commodities rather than as units of exchange.  In this sense, cryptocurrencies have been what, say, dollars are to currency traders.  Currency traders are primarily interested in the value of dollars relative to other currencies -- euros, or pounds, or renminbi.  They are only incidentally interested in the use of dollars to buy bananas, cars, or houses.  Similarly, bitcoin investors have largely been in the business of betting on the value of their bitcoins relative to dollars (or any other “regular” currency).  Investors looking to use cryptocurrencies to make more conventional investments, in ordinary, real-world assets, had relatively few places to turn.

However, things are starting to change.  This past February, New York-based financial tech firm Inveniam Capital Partners led the first sale of a series of securitized real estate investments allowing investors to purchase using cryptocurrencies stored on a blockchain.  The sales in question were in some sense unremarkable:  investors were being offered shares in the purchase of a We Work office building in Miami, in a housing development in southwest Florida, in student housing in Fargo, North Dakota, and in a water pipeline, also in North Dakota.  While one could invest in dollars if one chose to, one could also invest using cryptocurrency, acquiring “security tokens” reflecting the amount of the investment, which are themselves stored in blockchain form.  The value of the cryptocurrency relative to dollars was fixed, with a minimum investment of $500,000 worth of currency.  I spoke with Manny Crespo, a Miami-based partner from my firm, Greenspoon Marder, who represented Inveniam in the sale of the investments in the Miami We Work building, and he noted that this new form of investment presents a mix of law both familiar (an offering of shares in a real estate investment) and novel (dealing with a unit of exchange with little history -- legal, financial, or otherwise).  As litigators, we address what happens when financial transactions break down: when partnerships fail, when investors sue.  But how will our work be affected when the unit of investment itself is new, and its values and risks not yet clarified by layers of regulations and years of common law decision making?  In more quotidian terms, would you call on a lawyer who specializes in real estate litigation or in computer law?  Most likely, multiple skill sets will be required.  Cooperation across legal disciplines will be necessary.

I hope to hear from any other FDCC members who have been involved in similar matters.  We’ll all be learning this as we go.

*          *          *

David Jaroslaw

 

DECEMBER 2018

 

This is a first report from what I hope will become a newly-revived -- as well as newly-named -- Section of Intellectual Property, Science, and Technology.  Given that the FDCC contains relatively few lawyers whose primary workload concerns copyrights, trademarks, or patents, but many whose work involves the intersection of these disciplines with other aspects of science and technology, I thought it best that we expand the remit of the section to include more things that we actually do, day to day.  Many of us have had to deal with expert witnesses addressing arcane scientific, medical, or technological subjects, and have had to develop a mini-expertise in those areas.  I know.  Just part of being a litigator.  Further, as science and technology become increasingly routine aspects of legal lives, the related IP issues intersect with the underlying scientific concepts.

We have discussed at various FDCC meetings the impact of artificial intelligence on the mechanics of legal practice, but what is its impact on the law itself?  How will our evolving understanding of genetics affect cases involving exposures said to cause one or another disease?  What about the impact of driverless vehicles on both liability cases and on the transportation sector generally?  Who will “own” these technologies, and who will bear responsibility for them?  What are the implications for insurers (and whose insurers, at that)?  Now we are into the bread-and-butter aspects of many of our practices, and I would like to invite any FDCC lawyer interested in these subjects to join our section, and to provide insight into the way these changes have affected your own practice.

At our upcoming Winter Meeting in Austin, the Intellectual Property, Science, and Technology Section will be participating in a presentation regarding current “hot topics” in the more scientific side of the law.  Our section’s topics will include two things much in the news lately:  e-cigarettes and the use of CBD and other cannabis-related products.  These are matters of great interest to Congress and the FDA as well as to state legislatures and other regulatory bodies.  In addition, the plaintiffs’ bar has taken notice of these developments, and the inevitable lawsuits have followed.  How will these issues play out in the courts?  Come to the session to get what are at least some preliminary answers.  After all, the law covering these topics, like many involving science and technology, is evolving rapidly, and may be different by the time we get to Texas.  Stay tuned.

JULY 2018

 

2018 Annual Meeting -- Maui


Please make plans to attend our section programming on Wednesday, August 1st from 7:00 – 8:00 a.m.  Section Vice-Chair David Jaroslaw has prepared a fascinating presentation on cannabis law. The program "Up In Smoke:  Marijuana Law and Liability in IP, Employment, and Insurance" includes David, as well as speakers from the Employment and International Law and Practice Sections.


Monthly E-Newsletter

 

The Section Chair is always happy to consider submissions for this newsletter.  Submissions are due by the 10th of the month, so feel free to send your submissions before then.  


Membership


We're always on the lookout for new members for the FDCC and, especially, our section.  Please pass on the names of any prospects you may have. To date, I have not received any suggestions for new members.  Please put some thought into this over the next few weeks so that we can meet our section obligation for submitting prospective names for membership.


Retirement/New Section Chair & Focus


This is my final newsletter as Section Chair.  I've very much enjoyed my three years in this job and getting to know so many of you.  I wish you all the best.


The new leader of the Intellectual Property section is David Jaroslaw.  I know that David already has plans for some changes to the section, including changing its name and focus.  Going forward the section will be known as the Intellectual Property, Science, and Technology Section. Hopefully, this will expand the focus of the section and offer greater opportunities for participation among our members.


2019 Winter Meeting – Austin


One of David's first tasks as Section Chair will be to prepare the section's presentation at the 2019 Winter Meeting in Austin.  Please reach out to him if you have any ideas for this presentation or just want to help out.


 


 

March 2018

Submitted by: Michael Q. Walshe, Jr.

 

2018 Winter Meeting – Amelia Island

 

We had a great presentation at the Winter Meeting.  Neil Hartzell and Bill Demlong outlined intellectual property issues relating to insurance policies and patent trolls.  We had a great turnout for a 7:45 am meeting.  It was good to see so many of you and spend some time together.

 

2018 Annual Meeting -- Maui

 

Work is proceeding on our cannabis presentation for the Annual Meeting in Maui.  David Jaroslaw is leading the charge for our section.  We've partnered with the International Section and have a guest speaker from the Employment Section.  If anyone is interested in helping out with this presentation, please contact David or me. 

 

Monthly E-Newsletter

I'm also happy to consider submissions for this newsletter.  Submissions are due by the 10th of the month, so feel free to send your submissions before then. 

 

Membership

 

We're always on the lookout for new members for the FDCC and, especially, our section.  Please pass on the names of any prospects you may have.  To date, I have not received any suggestions for new members.  Please put some thought into this over the next few weeks so that we can meet our section obligation for submitting prospective names for membership. 

 

 


 


January 2018

Submitted by: Michael Q. Walshe, Jr.

 

 

Insights Article

 

On January 1st our section submitted its required Insights article.  The article, IP in the Cannabis Industry:  Where Laws Collide, was prepared by section vice-chair David Jaroslaw and his colleague Justin McNaughton.  Be sure to review this fascinating article when it is published.

 

2018 Winter Meeting – Amelia Island

 

We'd like to plan a section social event at the 2018 Winter Meeting.  Please let me know if you have any ideas or preferences (e.g., breakfast meeting, lunch meeting, cocktails, etc.) for this event.

 

2018 Annual Meeting -- Maui

 

We've already started planning our section presentation for the 2018 Annual Meeting in Maui.  Our topic will be an expansion of the Insights article that is being prepared on cannabis law.  We expect several other sections to want to participate.  If you would like to help plan the presentation and participate, please let me know.  I can be reached at mwalshe@stonepigman.com.

 

Monthly E-Newsletter

 

I'm also happy to consider submissions for this newsletter.  Submissions are due by the 10th of the month, so feel free to send your submissions before then. 

 

Membership

 

We're always on the lookout for new members for the FDCC and, especially, our section.  Please pass on the names of any prospects you may have.  To date, I have not received any suggestions for new members.  Please put some thought into this over the next few weeks so that we can meet our section obligation for submitting prospective names for membership.

 

Closing Thought

 

Moses had the first tablet that could connect to the cloud.





December 2017

Submitted by: Michael Q. Walshe, Jr.

 

Interesting IP Cases

 

It's been an interesting few weeks in the literary and music worlds.

 

A California federal judge recently declined to dismiss a lawsuit by Dr. Seuss Enterprises LP seeking to block a parody book titled "Oh, the Places You'll Boldly Go."  The book is a mash up of Star Trek and Dr. Seuss.  The defendants' claim that their actions were protected by a fair use defense, but the court disagreed.  This case bears watching as the number of parody mash ups continues to grow.  The case is Dr. Seuss Enterprises, LP v. ComicMix LLC, case no. 3:16-cv-02779, U.S. District Court for the Southern District of California.

 

A Nevada writer brought suit last week in Illinois federal court claiming that the author of the novel "Gone Girl" and producers of the movie stole ideas from her unproduced screenplay "Out of the Blue."  The case is Leslie Weller v. Gillian Flynn, et al., case no. 1:17-cv-08799, U.S. District Court for the Northern District of Illinois, Eastern Division.

 

The estate of the late artist Prince recently brought suit against a man who posted video recordings of six Prince songs to YouTube.  YouTube immediately removed the allegedly infringing videos from its site.  Comerica Bank & Trust N.A. v. Kian Andrew Habib, case no. 1:17-cv-12418, U.S. District Court for the District of Massachusetts.

 

2018 Winter Meeting – Amelia Island

 

We'd like to plan a section social event at the 2018 Winter Meeting.  Please let me know if you have any ideas or preferences (e.g., breakfast meeting, lunch meeting, cocktails, etc.) for this event.

 

We will be having a section call in advance of the meeting.  More information on that in next month's newsletter

 

2018 Annual Meeting -- Maui

 

We've already started planning our section presentation for the 2018 Annual Meeting in Maui.  Our topic will be an expansion of the Insights article that is being prepared on cannabis law.  We expect several other sections to want to participate.  If you would like to help plan the presentation and participate, please let me know.  I can be reached at mwalshe@stonepigman.com.

 

Monthly E-Newsletter

I'm also happy to consider submissions for this newsletter.  Submissions are due by the 10th of the month, so feel free to send your submissions before then. 

 

Membership

 

We're always on the lookout for new members for the FDCC and, especially, our section.  Please pass on the names of any prospects you may have.  To date, I have not received any suggestions for new members.  Please put some thought into this over the next few weeks so that we can meet our section obligation for submitting prospective names for membership.

 

Closing Thought

 

Always borrow money from a pessimist.  He won't expect it back.

 

I hope that each of you has a very happy holiday season and a Happy New Year.

 

 



November 2017

Submitted by: Michael Q. Walshe, Jr.

 

Interesting IP Cases

 

Medtronic, Boston Scientific, St. Jude Medical S.C., Inc., and Biotronik, Inc. succeeded in having lawsuits brought against them by Imran Niazi alleging infringement of a cardiac catheter patent dismissed because none of the defendants had a regular place of business in the Western District of Wisconsin.  The judge saw no reason to deviate from the rule recently pronounced by the Supreme Court in TC Heartland despite the fact that all the defendants had sales representatives living in the district.  The court noted that while the defendants may be doing business in the district, they did not maintain a place of business in the district.  See Niazi v. St. Jude Medical S.C., Inc., No. 3:17-cv-00183; Niazi v. Boston Scientific Corp., No. 3:17-cv-00184; Niazi v. Biotronik, Inc., No. 3:17-cv-00185; and Niazi v. Medtronic, Inc., No. 3:17-cv-00283.

 

A Nevada federal judge recently ruled that Johnny Love Vodka was not entitled to a jury trial in its trademark infringement lawsuit against Beam, Inc. regarding Beam's use of lipstick imprint on its Pucker flavored vodka products.  The court noted that the only potential jury issue was for an accounting of profits and that a request for accounting and disgorgement did not give the plaintiff the right to a jury trial.  JL Beverage Co., LLC v. Beam, Inc. and Jim Beam Brands Co. et al, No. 2:11-cv-00417, United States District Court for the District of Nevada.

 

2018 Winter Meeting – Amelia Island

 

We'd like to plan a section social event at the 2018 Winter Meeting.  Please let me know if you have any ideas or preferences (e.g., breakfast meeting, lunch meeting, cocktails, etc.) for this event.

 

We will be having a section call in advance of the meeting.  More information on that in next month's newsletter.

 

Insights Article

 

As reported last month, our section is responsible for an Insights article in January 2018.  The approximately 1200-word article should focus on a practical topic.  Section vice-chair, David Jaroslaw, is planning a fascinating article on cannabis regulation.  I'm sure that David would be willing to accept assistance with this article.  Please let me or David know if you would be interested in helping out with the article.  I can be reached at mwalshe@stonepigman.com, and David can be reached at david.jaroslaw@gmlaw.com.

 

Monthly E-Newsletter

 

I'm also happy to consider submissions for this newsletter.  Submissions are due by the 10th of the month, so feel free to send your submissions before then.

 

Membership

 

We're always on the lookout for new members for the FDCC and, especially, our section.  Please pass on the names of any prospects you may have.

 

Closing Thought

 

Haikus are easy.

But sometimes they don't make sense.

Refrigerator.

 

 

 

 

October 2017

 

Interesting IP Case

 

On October 4, 2017, legendary crooner Meat Loaf was sued for copyright infringement in California federal court.  The plaintiff, Enclosed Music LLC, claims that Meat Loaf's stole his hit "I'd Do Anything for Love" from songwriter Jon Dunmore Sinclair.  The case is Enclosed Music LLC v. Steinman et al., No. 2:17-cv-07304 in the United States District Court for the Central District of California.

 

2018 Winter Meeting – Amelia Island

 

At the 2018 Winter Meeting, the Intellectual Property Section will be presenting with a new partner – the Life, Health, and Disability Section.  Neil Hartzell from the IP Section and Bill Demlong from Life, Health, and Disability will present:  "Intellectual Property Issues Every Insurer Should Consider."  Topics will include copyrights for insurance policies and patent troll litigation.  Please plan to attend this session in Amelia.

 

Writers Needed

 

Our section is responsible for an Insights article in January 2018.  The approximately 1200-word article should focus on a practical topic.  Please let me know if you would be interested in writing this article.

 

I'm also happy to consider submissions for this newsletter.  Submissions are due by the 10th of the month, so feel free to send your submissions before then. 

 

You can reach me at mwalshe@stonepigman.com or at (504) 593-0881.

 

Membership

 

We're always on the lookout for new members for the FDCC and, especially, our section.  Please pass on the names of any prospects you may have.

 

Closing Thought

 

The meaning of opaque is unclear.



SEPTEMBER 2017


As More States Legalize Marijuana, Legal Sellers Look for Ways to Protect Their Trademarks

By the end of 2016, marijuana was either fully or medically legal in 29 states.  But sellers that want to enter the industry have had issues with registering their marks.  Trademarks for "unlawful" uses are barred from registration by the Lanham Act.  This means that marks used in connection with the sale of marijuana cannot be registered because marijuana remains a controlled substance that is illegal under federal law.


So far, the United States Patent & Trademark Office has upheld this ban.  In a case arising out of Washington, where marijuana is fully legal, the Trademark Trial and Appeal Board (the "TTAB") upheld the examining attorney's refused to register the mark HERBAL ACCESS for "retail store services featuring herbs."  The applicant had not specifically listed marijuana as an herb being sold, but the TTAB found that it was proper for the examining attorney to rely on evidence from the applicant's website regarding its marijuana sales to support rejection of the application.


In a later case, another applicant from Washington was equally unsuccessful despite taking a different position regarding registration of its mark.  The applicant, a company called JuJu, argued that even though marijuana was illegal, because the Department of Justice had decided not to prosecute marijuana businesses in legal jurisdictions, that was sufficient to make marijuana legal for trademark purposes.  The TTAB rejected that argument, finding that the Department of Justice's position, which had been outlined in a document known as "The Cole Memo" did not supersede the Controlled Substances Act.


Proponents of allowing registration of marijuana marks argue that allowing registration of the marks protects not only the businesses selling marijuana, but also protects consumers from purchasing fraudulent or dangerous imitations.


This is certainly an issue to watch in the future.

 

JULY 2017


Supreme Court Finds the Lanham Act’s Disparagement Clause Unconstitutional

On June 19, 2017, the Supreme Court issued its decision in Matal v. Tam, No. 15-1293.  The case involved a challenge by the Asian rock band The Slants to the United States Patent & Trademark Office’s (“PTO”) denial of registration of the band’s name as a trademark.  Section 2(a) of the Lanham Act (15 U.S.C. Sec. 1052(a)) authorized the PTO to refuse registration of any mark that the trademark examiner found to be disparaging.  The Slants contend that they had chosen their name in order to reclaim what had become a derogatory term for Asian-Americans and argued that Section 2(a)’s disparagement clause was unconstitutional infringement on free speech.  The Supreme Court agreed, holding that the disparagement clause violates the free speech clause of the First Amendment.

This is an issue that the Intellectual Property Section has followed for some time.  The more well-known case involving the disparagement clause involved the PTO’s decision to cancel six trademarks owned by the Washington Redskins.  At the 2015 Winter Meeting, the Intellectual Property section presented on the Redskins matter and discussed the case law under the disparagement clause at some length.  Interestingly, at that time, the majority of courts had rejected First Amendment challenges to the disparagement clause.  There is no doubt that the Tam decision is a positive result for the Washington Redskins.  It will be interesting to see if the decision encourages others to seek registration of what may be considered disparaging terms or phrases as trademarks.

 

JUNE 2017

 

On May 22, 2017, the Supreme Court issued its decision in TC Heartland LLC v. Kraft Food Group Brands LLC.  The case involved an interpretation of the venue provision for patent infringement lawsuits, 28 U.S.C. Section 1400(b).  The statute provides that patent infringement lawsuits “may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.”  In 1957, in Fourco Glass Co. v. Transmirra Products Corp., the Supreme Court held that, for purposes of Section 1400(b), a domestic corporation resides only in its state of incorporation.  At issue in TC Heartland was whether amendments to the general venue statute, 28 U.S.C. Section 1391, necessitated a change in the Fourco decision, which several lower courts had endorsed.  Ultimately, the court decided that no change was needed and affirmed its earlier decision in Fourco.

 

Commentators discussing TC Heartland believe that it will limit the ability of so-called “patent trolls” to bring patent infringement lawsuits in what they perceive to be favorable venues instead of the defendant’s state of incorporation.



MAY 2017


Lost Profit Calculations in Patent Cases Clarified In Recent Federal Circuit Decision

 

In March 2017, The Federal Circuit issued its decision in Mentor Graphics Corp. v. EVE-USA, Inc. 851 F.3d 1275 (Fed. Cir. 2017). This decision provides some needed guidance on how lost profits are calculated in patent cases, an area where there had been conflicting decisions in the district courts. The underlying dispute concerns a patent for a feature of an emulator, a machine that tests for bugs in computer chips.


This was a complex case with a long history. In the district court, the jury found that the defendant had infringed on two features of the plaintiff’s patent and awarded the plaintiff $36 million. On appeal, the defendant argued that the $36 million damage award was improper as it should have reflected an apportionment analysis that factored in non-infringing features for product sales. In other words, defendant argued that plaintiff was not entitled to the lost sales, but only the value attributable to plaintiff’s features of the emulator. The Federal Circuit disagreed and held that once the four Panduit test factors are met,[1] apportionment is taken into consideration as lost profits are tied to “specific claim limitations and ensure that damages are commensurate with the value of the patented features.” 851 F.3d at 1288. Thus it upheld the jury damages award. 

 

The defendant has sought a rehearing before the full panel. Stay tuned.



[1] A patentee is entitled to lost profits if it can establish (1) a demand for the patented product; (2) absence of acceptable non-infringing alternatives; (3) manufacturing and marketing capability to exploit the demand; and (4) the amount of profit it would have made. Panduit Corp. v. Stahlin Bros. Fibre Works, 575 F.2d 1152, 1156 (6th Cir. 1978)

 

more Calendar

11/6/2019 » 11/8/2019
2019 Insurance Industry Institute (I-3)

3/3/2020 » 3/8/2020
2020 FDCC Winter Meeting

7/26/2020 » 8/2/2020
2020 FDCC Annual Meeting

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