IPLAC Newsletter – November 2020

I.  President’s Corner

Dear IPLAC Members,

At this time of year, thoughts usually turn to Thanksgiving, the holidays and the New Year.  However, this is no ordinary year.  We are still caught in the post-election whirlpool of politics.  While we await the final, final, final outcome, what better way to celebrate our Democracy than to learn more about politics and intellectual property.  On November 11th, our Patent Agents committee hosted an evening of IP and Election games.  On November 17th, our Trademarks and Advertising Committee is hosting a panel on IP and Political Campaigns, from which we can learn who owns that slogan on your T-shirt.  On December 8th, our Patents Committee is hosting a panel on Artificial Intelligence, technology which can lead to more secure electronic voting innovations.  On December 9th, our Biotech Committee is hosting a panel on Antivirals and Covid-19 therapies, which was a pivotal issue in the election. 

Our big event, however, is the Annual IP symposium, which will be held virtually on December 3rd.  We will have a panel of District Court Judges, and fireside chats with TTAB and PTAB Judges, and offering up to 2.5 hours of CLE credit.  Please make every effort to attend, and share the news with your colleagues and friends.  For a change of pace, I guarantee this event to be free of politics and an update on the new realities of the day-to-day business of IP litigation.

As you can see, IPLAC committees have been busy in the background cooking up big plans for our members.  And we have more events on the calendar, in this newsletter and in the works.  We are proud of the variety of virtual online offerings for CLE and social interaction.  Please take advantage of these events, which are often complimentary for paid-up members.  If you have ideas for events, please reach out to our President-Elect Erin Lothson, who can match you up with the right committee to host the event.  We also welcome your feedback on how we can make IPLAC better.

Please share your enthusiasm for IPLAC with your friends and colleagues and encourage them to join.  As we huddle in our homes for a long winter ahead, IPLAC will be there for you to keep you connected and engaged.

Committee leaders are listed on www.iplac.org.  You can also send an email to [email protected] for more information on how to get involved, or contact me directly at [email protected]

Warmest wishes for this holiday season.  Be safe and stay healthy! 

Marc V. Richards
137th President

Get Involved in IPLAC Committees!  Sign Up for Committees or Change Your Committee Assignments Here!

 

II.  IPLAC Files an Amicus Brief in Jack Daniel’s Properties, Inc. v. VIP Products LLC

On October 19, 2020, IPLAC filed an amicus brief at the United States Supreme Court, in support of a grant of a petition for a writ of certiorari in a trademark case, Jack Daniel’s Properties, Inc. v. VIP Products LLC, Case No. 20-365.  Several other parties also filed amicus briefs in support of the Petitioner Jack Daniel’s Properties, including the International Trademark Association, the Alcohol Beverage Industry Associations, Campari America LLC, Constellation Brands, Inc., and Campbell Soup Company.  Read about the Questions Presented in Jack Daniel’s Properties’ petition and IPLAC’s position on each of the issues here.  Thank you to our IPLAC Amicus Committee authors, Thomas Key, Margaret Duncan, and Robert Resis; Marc Richards, President of IPLAC; and Joseph Jonas, for obtaining approval by the IPLAC Board.

The questions presented in Jack Daniel’s Properties’ petition are:

  1. Whether a commercial product using humor is subject to the same likelihood-of-confusion analysis applicable to other products under the Lanham Act, or must receive heightened First Amendment protection from trademark-infringement claims, where the brand owner must prove that the defendant’s use of the mark either is “not artistically relevant” or “explicitly misleads consumers;” and
  2. Whether a commercial product’s use of humor renders the product “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Lanham Act.

IPLAC’s position on the first issue is that the U.S. Court of Appeals for the Ninth Circuit’s decision in this case creates a split in the circuits, which is ripe for the Supreme Court’s review. A mark or trade dress used in conjunction with the sale of a commercial product, even one that purports to be funny, should be subject to the same likelihood of confusion analysis for trademark infringement under the Lanham Act. Several circuits, including the Seventh Circuit, have so held, finding that this analysis will take into account any First Amendment protection for marks that convey a humorous message.

IPLAC’s position on the second issue is that the humorous use of a famous mark on a commercial product should not automatically render the use “noncommercial.” Such uses should be subject to claims of dilution by tarnishment under 15 U.S.C. § 1125(c)(3)(C) in appropriate circumstances. IPLAC also pointed out that the law regarding dilution by tarnishment by arguably humorous marks is in disarray and therefore the Court should grant cert. to provide uniformity in the law.

 

III.  Save the Date – IPLAC 2020 Annual IP Symposium:  An Afternoon with the Judges

The IP Law Symposium Committee, including Co-Chairs Jim Muraff of McDonald Hopkins LLC and Matt Marrone of McAndrews, Held & Malloy, Ltd., and Vice Chair Viren Soni of the CME Group, invites you to a series of fireside chats and panels where you will hear directly from Judges across the country about current patent and trademark litigation topics, trends, and insights.  Join us for fireside chats with Judge Linda Kuczma, Trademark Trial and Appeal Board, and Chief Judge Boalick, Patent Trial and Appeal Board.  Further, join us for a Federal District Court Panel with Chief Judge Rebecca R. Pallmeyer and Judge Virginia M. Kendall of the U.S. District Court for the Northern District of Illinois and Judge Alan D. Albright of the U.S. District Court for the Western District of Texas.

When:  Thursday, December 3, 2020, 3:00 pm – 5:30 pm Central Time
Where:  Zoom Event link will be sent after registration
Registration:  Free for IPLAC Members, $30 for Non-Members.  Click here to register.
(2.5 CLE credits, pending approval)

 

IV.  US Bar – EPO Liaison Committee Seeks Your Input

IPLAC’s delegates to the US Bar – EPO Liaison Committee, Elias Soupos and Joe Shipley, have been asked to solicit input from IPLAC Members for an upcoming meeting with the President and other managing officials of the EPO on the following topics:
1.)    The use of video conference/teleconference in USPTO oral proceedings (PTAB) and the use at the EPO – discuss good/bad experiences;
2.)    Subject Matter Eligibility – plants, software, biologics; and
3.)   Quality – As stakeholders in EPO processes, bring frank, honest opinions regarding any sub-optimal processes.

Please click on the survey link here to provide your input on these topics, or any others that you would like to address.  We would like to provide as much input as possible from our members.  The meeting is scheduled for November 19, 2020, so prompt responses will be appreciated.

 

V.  Register for the INTA Saul Lefkowitz Moot Court Competition by November 20

Law Students:  Registration is now open for the INTA Saul Lefkowitz Moot Court Competition!  Now in its 30th year, the Lefkowitz Moot Court Competition is the only competition in the United States focused on trademark and unfair competition law.  This year, Oral Arguments will be heard virtually – Regionals are scheduled for February 6, 2021.  We encourage you to enter via your law school.  Competition materials can be found here.  Registration forms are due November 20, 2020.

 

VI.  Women in IP Committee – Virtual Cocktail Class on December 2

The Women in IP Committee is hosting a virtual cocktail class on Wednesday, December 2, 2020, from 6 – 7:30 pm. Guests will learn to make two holiday-themed cocktails.  There will also be a networking portion, with the hope to disperse guests across break-out rooms to discuss various topics.  Sign up and registration details are forthcoming.  Stay tuned!

 

VII.  Patents Committee – Discuss Machine Learning and Artificial Intelligence on December 8

The Patents Committee invites you to an engaging discussion on Machine Learning and Artificial Intelligence, and how to protect and enforce intellectual property rights in these technologies.  The panel will take place on Tuesday, December 8, 2020, from 12 – 1 pm.  Get more information on the panel discussion here, which will include various perspectives, including:

  • Kris Hammond, Northwestern Professor of Computer Science;
  • Sara Duda, In-House Innovation Attorney at AllState; and
  • Ben Bradford, Litigation Partner at Jenner & Block.
 

VIII.  Biotechnology Committee – The COVID-19 Big 3:  Antivirals, Antibodies, and Anti-Inflammatories

On December 9, please join the Biotechnology Committee’s webinar, which will focus on a topic that is in the news a lot lately:  the three most promising areas for dealing with the coronavirus.  The webinar will describe the frontrunner potential antiviral injectables, explaining what they are and how they are expected to work.  The webinar will also cover some of the therapeutics, such as Remdesivir, which has just received full FDA approval.  In addition, the webinar will touch on the anti-inflammatory treatments that have been used, like dexamethasone.  Further, the webinar will cover the pitfalls of drafting and prosecuting biotech patent applications and how this affects the COVID-19 crisis.  Get more information on this webinar here.

 

IX.  Special Feature – Get to Know an IPLAC Member: Kenneth Matuszewski

Kenneth, Associate Counsel at Neal, Gerber & Eisenberg LLP, is currently a Co-Chair of the Membership Committee and the Chair of the Mentoring Committee.  Kenneth has been a member of IPLAC for seven years, since his first year of law school, but says that “it’s even more difficult to imagine what those years would have been like if I was not part of IPLAC.”  Previously, Kenneth has served as a Co-Chair of the CLE Committee, and a Vice Chair of the Membership Committee.  

Kenneth has been practicing patent law since 2016, and has developed experience in both patent prosecution and patent litigation over the course of his career.  Kenneth credits IPLAC with helping him realize the true meaning of networking since he began law school.  To Kenneth, networking “includes working with your peers to develop fantastic CLE programs for areas of the law that you are passionate about,” as well as drafting amicus briefs, and helping to improve IPLAC’s processes, procedures, and programming, even simply by volunteering to pick up ice immediately prior to an event.  Kenneth thanks IPLAC for his networking skills:  “Overall, IPLAC helped me realize that networking, more than anything, is about coming together to share common experiences and, in some cases, solve problems together.

Kenneth credits the IP practitioners and other individuals whom he has met through IPLAC for providing him rare opportunities to lead, excel, and fully understand the practice of IP law.  Kenneth recalls being invited to attend the International Trademark Association’s (“INTA’s”) Annual Meeting in Orlando, Florida, after winning the INTA Ladas Memorial Writing Competition during his third year of law school.  “Hearing that over 100,000 people all over the world would attend was intimidating at first,” he recalls.  “However, I wanted to take advantage of any opportunities available to me, so I reached out to several people I met through IPLAC.  Surprisingly enough, every single person I reached out to invited me either to a firm INTA reception, or to parties hosted by clients.  I was shocked by everyone’s generosity at the time, but I soon realized how much of an honor it was, and how much they trusted me to invite me to such intimate settings.”  In fact, Kenneth received feedback from the other law student attendees at the conference, who told him that his composure and ability to talk to senior attorneys was impressive. 

To Kenneth, IPLAC offers multiple benefits to members in addition to the networking opportunities.  First, IPLAC provides opportunities to develop leadership abilities, teamwork, and emotional intelligence.  As a Committee Chair or Vice Chair, a member has to cooperate with follow Co-Chairs and members to successfully plan an event, understand individuals’ styles and preferences, determine when it is best to make compromises, and learn what to do when met with unresponsive colleagues.  IPLAC therefore provides a safe, low-risk environment to develop the management skills that are of the utmost importance to advancement in firm leadership.  Second, IPLAC allows its members to improve their writing and research abilities.  For example, the Amicus Brief Committee wrote five amicus briefs to the Supreme Court in the 2019-2020 bar year, and anyone who participates in the Committee may help, no matter how much experience a Member may have, or how much work a Member feels comfortable handling.  IPLAC Members have served as lead brief authors, researchers, and even cite checkers.  The Claim Construction Committee includes attorneys with diverse experience who work together to summarize Federal Circuit cases.  The Committee provides a fantastic opportunity to learn more about and master a very important issue in patent litigation, and to learn from some of the top practitioners in the practice area.  Kenneth confirms, “Through my work in IPLAC, I have felt more comfortable speaking up or sharing my ideas at my firm’s team meetings, which has only helped me.”

As Kenneth advances in his career, he believes that “IPLAC will also help me refine my ability to creatively solve problems affecting everyone.  I hope to give back and share the many opportunities IPLAC has given me over the years to law students and young lawyers.”

To those who might consider joining IPLAC, Kenneth believes that “IPLAC is an organization that understands its roots and traditions but also innovates and pivots when necessary.”  He appreciates the willingness of the IPLAC leadership to listen to and seriously consider any Member’s ideas for a new program or improvements to the organization.  Kenneth also believes that IPLAC is uniquely positioned as a first point of entry to the Chicago Intellectual Property community.  As a local bar association, IPLAC can directly impact and educate the community on important issues and develop close relationships with important decision makers.  Kenneth notes that IPLAC Members have helped local inventing organizations, served on high-profile judicial committees, and found students jobs that changed the entire course of those students’ career trajectories.  “By focusing on local issues, IPLAC members have excelled and created lasting change to both the Chicago IP community and the city of Chicago as a whole.”

In terms of IPLAC’s events, Kenneth has always looked forward to the rooftop Rose tasting at the end of summer.  “The tasting always had fantastic weather, gorgeous rooftop views, and opportunities to reconnect with friends and colleagues in a casual setting outside our offices.”

In the upcoming months, Kenneth looks forward to enjoying the IPLAC Book Club events.  “Recently, the Book Club has focused on racial justice, and how we can work as leaders in our firms, companies, and communities to turn preconceived notions on their head and advance diversity & inclusion within the legal profession.  I have come away from each discussion learning a lot from everyone, and admire our members’ commitment to civility, open discourse, and vulnerability.  I cannot wait to see how our discussions will continue to evolve.”

During the pandemic, in addition to reconnecting with friends and family safely,  Kenneth has been focusing on his physical fitness by taking frequent walks and biking.  “During my walks, I will also visit record stores if they’re open.  There are many hidden gems in Chicago, and I have found some excellent and rare records at very reasonable prices.”  Additionally, Kenneth recently bought himself a set of golf clubs and he tries to get to a nearby driving range at least once weekly, which allows him to focus and reduce stress.

 

X.  IPLAC Trivia Question

Which Chicago-raised hip hop artist was briefly involved in a trademark dispute in early 2014 after a cryptocurrency decided to adopt his likeness for their mascot, and what was the name of the cryptocurrency?

(Big thanks to our Trivia Expert, Rachel Miller) 

Answer:  Kanye West.  The name of the cryptocurrency was “Coinye West”.  Read more about it here!

 

 

IPLAC welcomes submissions of material for its e-newsletter. 

Please forward information to Adam Sussman of Brinks Gilson & Lione.