Intellectual Property Insights
Analysis and practical guides on intellectual property.
446 articles, checklists, and guides on intellectual property law, written by the attorneys at MC Law. Every piece is general information, not legal advice—for a specific matter, contact the firm.
The Copyright Statute of Limitations After Warner Chappell v. Nealy: Discovery, Separate Accrual, and How Far Back Damages Reach
This article explains how far back a copyright plaintiff can reach under the 23 words of 17 U.S.C. § 507(b). It reads Petrella, Sohm, Warner Chappell v. Nealy, and Justice Gorsuch's dissent closely, then tracks what appellate courts have done since, including the Second Circuit's rulings on sophisticated plaintiffs and constructive discovery and the Supreme Court's refusals to take up the discovery rule. It separates infringement claims, which accrue again with each act, from ownership claims, which accrue once on repudiation. It explains what happens at the server level when an image stays online for years, why tolling and laches rarely rescue a late claim, and how registration timing limits the money even when the claim is timely. Worked examples cover a sampled 1983 song and an old blog photo. Lawyers, judges, rights owners, and accused businesses will each find the practical consequences spelled out.
Lateral Hire Toolkit: Candidate Certifications, Onboarding Instructions, and Cease-and-Desist Responses
This toolkit gives hiring companies and former employers working papers to copy for a competitor hire: a risk tier worksheet, recruiter instructions, an interview briefing, a candidate certification, offer letter clauses, a good leaver letter, a day-one instruction memo, a firewall memo, and an IT control sheet. It also includes the papers for a dispute, including an incident intake form, a quarantine protocol, an interview warning, a hold notice, a hash exchange protocol, a response to a cease-and-desist letter, and a set of indemnification questions. For the other side of the table, it provides a claim evaluation sheet and a demand letter to a new employer. Each paper states its purpose, owner, and timing, and is followed by drafting notes tied to authority. Bracketed text should be adapted with counsel for the jurisdiction and the facts.
Image Copyright Demand Response Checklist: A Practical Checklist
This checklist turns the response to an image copyright demand into ordered, check-off tasks, from the day a letter, portal notice, complaint, or Copyright Claims Board notice arrives to the day the settlement is signed and the image policy is in place. Each phase lists specific actions with the governing statute, rule, or case linked and a short practical note. The phases cover intake and calendaring, preservation and removal, verification of ownership and standing, the registration and Section 412 timing analysis, the license search, the defenses, any copyright management information claim, exposure calculation, insurance and vendor tenders, the first response and negotiation, the Board opt-out decision, early litigation steps, and the settlement and release. Red-flag boxes mark the points where responses most often go wrong. A deadlines table, a list of common failure points, and a short worked example involving a coffee roaster close the checklist.
Brand Ownership Toolkit: Assignment Agreements, Founder IP Clauses, and Ownership Evidence Files
This toolkit collects the documents that prevent trademark ownership disputes and the documents used to resolve them, each introduced by its purpose, its owner, and when to use it, and each followed by drafting commentary tied to the governing authority. It begins with an ownership analysis memo outline, then provides a confirmatory (nunc pro tunc) trademark assignment with a goodwill recital, a founder IP assignment clause with a pre-formation contribution, a band partnership name clause, and a distributor agreement trademark clause. Further templates supply an ownership evidence file index, practical notes for preparing a recordation cover sheet in the USPTO's Assignment Center, a demand letter to a departing co-owner, and a settlement term sheet for surrender, transfer, and transition. The templates follow a running example involving a coffee roaster whose co-founder filed the trademark application in his own name. A deadline tracker, an FAQ, and takeaways close the toolkit.
Conducting Freedom-to-Operate Analysis for New Products
A company that launches a product infringing someone else's valid patent risks injunctions, ruinous damages, and trebled awards for willful infringement—so the responsible course is to assess that risk before launch through freedom-to-operate (FTO) analysis. This guide walks the entire process in plain language, following a fictional startup as it clears a mobile-payments app: distinguishing FTO from patentability, defining the product's technical scope, searching the patent landscape, triaging the results, reading and construing claims under Phillips and Markman, building claim charts, assessing literal infringement and the doctrine of equivalents, and weighing validity defenses under Sections 101, 102, 103, and 112. It explains how willfulness law after Halo and Section 298 make opinions of counsel valuable but optional, why a non-infringement opinion usually beats an invalidity opinion, and how privilege waiver, design-arounds, licensing, and patent-assertion entities reshape the calculus. It closes with how to document the work and communicate risk to decision-makers as a calibrated judgment rather than a false promise of safety.
Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide
This guide takes brand owners, accused online sellers, and platforms through online trademark enforcement in the order it actually happens. For brand owners, it covers the foundation (registrations, marketplace brand programs, Customs recordation, and genuine exemplars), monitoring and triage, test purchases with a chain of custody, sorting counterfeit from gray market from lawful resale, platform notices and escalation, identifying sellers through INFORM disclosures and subpoenas, demand letters, and the choice among a single-defendant suit, a Schedule A case, a claim against the platform, and border and domain remedies. For accused sellers, it explains how to read a takedown, appeal with documents, answer a demand letter, and defend a Schedule A case on authenticity, personal jurisdiction, joinder, and the scope of an asset freeze. For platforms, it describes the notice-handling record that Tiffany v. eBay rewards and the seller verification the INFORM Consumers Act requires. It explains the decisions that shape each step, including Tiffany, Omega v. 375 Canal, Y.Y.G.M. v. Redbubble, NBA Properties v. HANWJH, and Gucci America v. Weixing Li, with timelines, costs, and the evidence each stage demands. A worked example follows a water filter brand through three marketplaces and a Schedule A case, and the guide closes with common mistakes, an FAQ, and practical takeaways.
Filing a UDRP Domain Name Complaint: A Practical Checklist
The Uniform Domain-Name Dispute-Resolution Policy is a fast, low-cost administrative route for recovering a domain name from a cybersquatter. This checklist walks a trademark owner and its counsel through the entire process: confirming the case is a clean fit, gathering and dating evidence by element, choosing a provider, drafting a complaint that proves all three required elements, handling the mutual-jurisdiction statement and registrar lock, and managing the post-decision transfer window. It explains the three cumulative elements—identical or confusingly similar, no rights or legitimate interests, and bad-faith registration and use—and flags reverse-domain-name-hijacking risk and when ACPA litigation is the better tool. WHY notes and traps accompany each phase. Verify current provider fees and rules before filing.
Trade Secret Cybersecurity Incident Response Checklist: A Practical Checklist
When a breach hits, the incident-response machine almost always points itself at personal data and the notification clock, while the theft of trade secrets—often far more financially devastating—goes unrecognized until the window for protective action has closed. This checklist folds intellectual property protection into incident response across three time horizons. Before the breach: a current crown-jewels inventory and the right contractual notices. During the breach: a triage question that flags an IP incident, parallel containment and preservation, forensic documentation built to litigation rather than regulatory standards, and a privilege structure that avoids the trap that snared Capital One. After the breach: preserving trade secret status through prompt visible action, pursuing or documenting DTSA remedies, coordinating notifications to manage the disclosure paradox, and protecting whatever insurance coverage exists. Each step is paired with the reason it matters and the case law that makes the stakes concrete.
Trademark Statement of Use Checklist: A Practical Checklist
A checklist for completing an intent-to-use trademark application by filing a Statement of Use after the Notice of Allowance, including the timeline math for extensions of time. It covers when to file an SOU versus an Amendment to Allege Use, the per-class requirements (fee, specimen, dates of first use, verified declaration), the six-month extension cadence capped at 36 months from the Notice of Allowance, the request-to-divide option when use is partial, and how all of it preserves the constructive-use priority that dates back to the application filing date under 15 U.S.C. 1057(c). WHY notes, trap warnings, a common-mistakes list, and primary authority are included. Educational, not legal advice.
The Evolution of Design Patent Functionality: Clarifying the Muddle
Functionality in design patent law is two doctrines wearing one name, and confusing them is the source of most of the "muddle." The first is a validity rule: under 35 U.S.C. § 171 a design is unprotectable only if its appearance, judged for the article as a whole, is "dictated solely by function." The second is a claim-construction and infringement question: how individual functional features within a valid design affect the scope of what the patent covers. This article traces the doctrine from the early "dictated by function" test through the modern multi-factor inquiry of Berry Sterling and PHG Technologies, and through the Federal Circuit's course correction in Ethicon Endo-Surgery v. Covidien and Sport Dimension v. Coleman away from "factoring out" functional elements. It examines Automotive Body Parts Ass'n v. Ford and the rejection of an "aesthetic functionality" defense, connects functionality to the "article of manufacture" damages question of Samsung v. Apple, situates the doctrine after the en banc LKQ decision on obviousness, and offers worked examples plus prosecution and litigation guidance.
How to File a UDRP Complaint for Domain Name Disputes
A complete, practitioner-grade guide to recovering a domain name from a cybersquatter through the Uniform Domain-Name Dispute-Resolution Policy. It walks through the three required elements—identical or confusingly similar, no rights or legitimate interests, and bad-faith registration and use—anchored in the WIPO Overview 3.0 and leading panel decisions such as Telstra. It explains provider selection (WIPO, FORUM, and the other ICANN-accredited centers), complaint drafting under the UDRP Rules, the registrar lock, mutual-jurisdiction statements, GDPR-redacted WHOIS, the respondent's defenses, and reverse domain name hijacking. A dedicated section contrasts the UDRP with federal litigation under the ACPA, 15 U.S.C. § 1125(d), including its nine bad-faith factors, statutory damages, and in rem jurisdiction. Written for trademark owners recovering domains and the attorneys who represent them. Not legal advice.
Defending or Bringing a Biometric Privacy Claim: A Practical Guide
This guide walks plaintiffs' and defense counsel step by step through a biometric privacy case, from the first client call to settlement approval, with the Illinois Biometric Information Privacy Act as the main focus and other state and local laws covered where they create claims. It begins with decision points for each side and then covers intake and fact capture, preservation (including the tension between a litigation hold and BIPA's destruction duty), mapping claims to the five statutory duties, limitations and accrual, the forum fight over CAFA removal and Article III standing, arbitration and mass arbitration, and the threshold defenses: labor preemption and the health care, financial institution, and government contractor exemptions. Later steps address pleading motions, discovery of time-clock and vendor data, class certification, damages after the 2024 amendment and the Seventh Circuit's 2026 retroactivity ruling in Clay v. Union Pacific, insurance tenders, and settlement approval after the Seventh Circuit vacated the Clearview AI settlement. A timeline and cost table, an extended worked example involving a logistics company with hand-geometry time clocks, common mistakes, an FAQ, and takeaways close the guide.