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.
Protecting a Trademark Abroad: The Madrid Protocol, Territoriality, and Abitron v. Hetronic
A U.S. trademark registration stops at the border, and this article explains what a brand owner has to do to hold the same mark in other countries and what U.S. law will and will not do about infringement abroad. It walks through the treaty architecture (the Paris Convention, TRIPS, and the Madrid Protocol) and how the Lanham Act implements it through Section 44 and Sections 60 to 74, including priority claims, the five-year dependency period, central attack, and transformation. It then tells the story of Abitron Austria GmbH v. Hetronic International, the 2023 Supreme Court decision confining the Lanham Act's infringement provisions to domestic use in commerce, and traces what remains of Steele v. Bulova and the older effects tests. The article explains the circuit split over the famous-marks doctrine, from Grupo Gigante in the Ninth Circuit to ITC v. Punchgini in the Second, and the Belmora and Meenaxi line on foreign owners suing in the United States. It closes with trademark squatting in first-to-file countries, especially China, an extended worked example, common mistakes, an FAQ, and takeaways for owners on both sides of the border.
Data Scraping After hiQ v. LinkedIn: Copyright, Contract, and Computer Fraud Claims
The AI industry's appetite for training data has turned web scraping into one of the most consequential battlegrounds in technology law, implicating computer-fraud, contract, and copyright doctrines that point in different directions. This article explains the landscape in plain language for the two audiences who need it—data collectors and the websites they scrape—following the practices through a single recurring example. It traces the six-year hiQ v. LinkedIn saga and its paradoxical ending, the Supreme Court's narrowing of the CFAA in Van Buren, the contract cases that followed (Meta v. Bright Data and X v. Bright Data), the copyright status of raw data under Feist, and the wave of AI-training copyright suits, including Bartz v. Anthropic, Kadrey v. Meta, Thomson Reuters v. ROSS, and the Andersen and New York Times litigation. It covers robots.txt, DMCA Section 1201, trespass to chattels and other common-law theories, and closes with practical risk guidance for both sides plus a detailed FAQ.
Lanham Act Attorney's Fees Under 15 U.S.C. § 1117(a): A Practical Guide
The Lanham Act lets a court award attorney's fees to the prevailing party in "exceptional cases," and since the Supreme Court's 2014 decision in Octane Fitness the meaning of that phrase has been transformed. This guide explains, in plain language for both lawyers and business owners, when a trademark case is "exceptional" enough to shift fees, how the Octane Fitness standard works and why a patent case governs trademark disputes, and how the Second Circuit applies it. It covers the two routes to an exceptional-case finding—the substantive weakness of a party's position and the unreasonable manner in which the case was litigated, including discovery misconduct—who qualifies as a prevailing party, whether fees can be awarded for partial victories, and how a reasonable fee is calculated under the lodestar method with adjustments for degree of success and apportionment to the Lanham Act claims. It closes with worked examples, a FAQ, and practical takeaways for the party seeking fees and the party resisting them.
The Shield of Good Faith: How Trademark Clearance Searches, Attorney Opinions, and USPTO Approval Protect Against Willful Infringement Claims
Willfulness no longer operates as an absolute precondition to disgorging an infringer's profits after Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020), but a defendant's intent remains the single most important equitable factor courts weigh when deciding whether to award profits, treble damages, and attorney's fees under 15 U.S.C. 1117. This article explains what willful trademark infringement means, why it controls the remedies a brand owner can recover, and how three layers of pre-adoption diligence—a comprehensive clearance search, a reasoned opinion of counsel, and USPTO examination and registration—combine to establish good faith and rebut claims of willful conduct. It catalogs the equitable factors courts actually weigh before ordering disgorgement, examines the privilege-waiver tradeoff that comes with asserting reliance on counsel, the evidentiary weight courts give USPTO determinations, the Tea Rose-Rectanus good-faith junior user doctrine, and the willful-blindness limits that prevent businesses from burying their heads in the sand. The discussion is anchored in primary authority, illustrated with a worked hypothetical, and connected to clearance-search and enforcement best practices that brand owners and their counsel can implement before adopting any new mark.
Bringing or Defending a False Endorsement Claim: A Practical Guide
This guide walks a claimant, a defendant, and a marketing team through a false endorsement dispute in the order decisions actually arrive. Claimants get steps for preserving proof, calendaring short state limitations periods, testing the claim, building recognizability evidence, commissioning a survey that will survive Rule 702, and modeling damages. Defendants get a sequence for preservation and takedown, insurance tender, vendor recourse, Rogers and pleading motions, survey attacks, and clean settlement offers. A clearance section covers releases, stock images, sound-alikes, and AI voices before anything runs. Sample language, trade-offs, worked hypotheticals, and common mistakes are included for both sides.
Overcoming a Failure-to-Function or Ornamental Refusal: A Practical Guide
This guide walks an applicant and its counsel, step by step, from the day a failure-to-function or ornamental refusal arrives to registration, appeal, or a better-planned refiling. It starts with the decisions to make before drafting anything: which refusal is really driving the case, what the client actually needs from a registration, and which cures are available for that refusal. The numbered steps cover docketing, auditing the specimen against the drawing and goods, classifying the refusal, gathering facts and analyzing the examining attorney's third-party evidence, choosing among substitute specimens, amendment to an intent-to-use basis, inherent distinctiveness and secondary source arguments, Section 2(f), and the Supplemental Register, and building declarations and other evidence. Later steps cover drafting and filing the response, handling a final refusal by reconsideration and ex parte appeal to the TTAB, review in the Federal Circuit or district court, and refiling with a better mark or specimen, plus the tools available to third parties who want to stop a message from being registered. A timeline and cost table, an extended worked example involving an outdoor apparel and guiding business, common mistakes, an FAQ, and takeaways close the guide.
Utility Patent Basics
A utility patent is the workhorse of the patent system—the kind most people mean when they say "patent"—and this guide explains what it covers, what it costs, and how to get one. We walk through the four statutory categories of patentable subject matter under 35 U.S.C. 101, the requirements of usefulness, novelty (Section 102), non-obviousness (Section 103), and adequate disclosure (Section 112), all in plain English with worked examples. We dissect the anatomy of a real utility patent—specification, claims, and drawings—and explain why the claims are the part that actually matters. We compare provisional and nonprovisional applications, walk through examination and the 20-year term, and contrast utility patents with design patents, plant patents, and trade secrets. The goal is a single, trustworthy primer a founder, an inventor, or a curious judge can read start to finish.
Who Owns the Brand: Trademark Ownership Disputes Between Co-Founders, Bands, Licensees, and Distributors
This article explains who owns a trademark when the people who built a brand stop agreeing, and why the answer so often surprises them. It starts from the rule that ownership flows from use and control of quality, not from coining the name, paying for the logo, or filing the application, and then shows what happens to a registration filed by the wrong person. The core of the article tells the stories of the leading disputes: bands from the Kingsmen and New Edition to the Platters, the Drifters, Exposé, and the Commodores; founders who filed in their own names; distributors who claimed a foreign maker's mark; and licensees, franchisees, and joint venturers who tried to keep a brand after the relationship ended. Separate sections cover employees and social media accounts, domain names, bankruptcy after Mission Product Holdings v. Tempnology, divorce and death, and priority and tacking after Hana Financial. An extended worked example, common mistakes, an FAQ, and practical takeaways close the article.
Assessing and Reducing Secondary Copyright Liability: A Practical Guide
This guide walks a service operator or a rightsholder through a secondary copyright liability problem after Cox Communications v. Sony Music Entertainment. Operators map their functions, test direct, inducement, tailoring, and vicarious exposure in turn, and decide what to keep of a DMCA program and why. It covers marketing and internal communications review, responding to demand letters and injunctions, and early defense motions. Rightsholders learn how to select defendants, gather the evidence that matters now, plead each theory, and use notices, subpoenas, and injunctions. Worked hypotheticals cover a host, a print-on-demand marketplace, an AI coding tool, and a photographer. It closes with common mistakes on both sides and a realistic account of cost and timing.
Trade Secrets in the Age of Remote Work and Cloud Computing
The shift to distributed workforces and cloud collaboration dissolved the corporate security perimeter and reshaped the "reasonable measures" requirement at the heart of trade secret law. This article analyzes how courts apply that requirement under the Defend Trade Secrets Act and the Uniform Trade Secrets Act when employees access proprietary information from personal devices, home networks, and cloud platforms the employer cannot control, drawing on a deep bench of authority from PepsiCo v. Redmond through a wave of 2022–2025 remote-work decisions. It translates the case law into a working protection program spanning access controls, multifactor authentication, data-loss prevention, contracts, onboarding, offboarding, departing-employee forensics, and incident response. It explains the DTSA's whistleblower-immunity notice and civil-seizure remedy, the inevitable disclosure doctrine, and the 2025 collapse of the FTC's non-compete rule. Written for in-house counsel, IP and employment practitioners, and the executives responsible for protecting confidential information in hybrid environments.
Bench Trial vs. Jury Trial Issues in Trademark Litigation: A Practical Guide
A single trademark case is often part jury trial and part bench trial—some issues go to a jury, others to the judge—and which is which is fixed by the Seventh Amendment line between legal and equitable claims. This guide explains, in plain language for lawyers and business owners alike, how that line is drawn and why it shapes trial strategy from the first draft of the complaint. It maps which trademark issues are jury-triable (actual and statutory damages, and the confusion and validity facts that underlie them) and which are bench-triable (injunctions, the accounting of profits, cancellation, and the equitable defenses), works through the Supreme Court trilogy—Beacon Theatres, Dairy Queen, and Curtis v. Loether—that forces shared facts to the jury first, and confronts the genuinely unsettled question of whether disgorgement of profits carries a jury right after Hard Candy v. Anastasia. It surveys the equitable relief available and the burdens to obtain it (the eBay factors and the Trademark Modernization Act's presumption of irreparable harm), explains how courts bifurcate trials and police that bifurcation, and closes with a worked example, a strategic playbook for each side, and an FAQ.
Understanding Patent and Trade Dress Marking Requirements: A Comprehensive Guide for Businesses and Practitioners
This guide puts the marking and notice regimes that govern every major category of U.S. intellectual property side by side, so a business owner, an attorney, and a judge can all follow the analysis. It covers utility and design patents under 35 U.S.C. § 287 (constructive notice, the "substantially all" rule, actual notice, virtual marking, and licensee compliance), the false-marking prohibition of § 292 after Forest Group v. Bon Tool and the America Invents Act, federal trademark and trade dress registration notice under 15 U.S.C. § 1111, the TM and SM symbols for unregistered marks, and copyright notice under 17 U.S.C. §§ 401-402 after the Berne Convention. It explains how each regime affects a rights holder's ability to recover damages or profits, the penalties for over-marking, and how the three logics differ. The article then synthesizes everything into a unified marking-compliance program and a fully worked example of a single branded product carrying a utility patent, a design patent, registered trade dress, and copyrighted works, showing exactly how each notice should appear. Primary statutory and case authority is cited throughout.