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.
Patent Eligibility After Alice: Strategies for Protecting Software and Business Method Innovations
More than a decade after the Supreme Court's decision in Alice Corp. v. CLS Bank, software and business method patents still face a brutal invalidity rate under 35 U.S.C. Section 101. Yet meaningful patent protection for software, fintech, cybersecurity, and AI innovations remains achievable for those who understand the rules. This guide walks through the Alice/Mayo two-step framework and its statutory and historical roots (Chakrabarty, Diehr, Bilski, Mayo), the Federal Circuit guideposts that mark the narrow path to eligibility (Enfish, DDR Holdings, McRO, BASCOM, Finjan, and the factual twist of Berkheimer), and the USPTO's evolving examination guidance, including the 2019 Patent Eligibility Guidance, the 2024 AI update, and the precedential Desjardins decision. It then turns practical: claim-drafting and prosecution strategies grounded in labeled hypotheticals, a layered-protection portfolio plan that pairs patents with trade secrets, copyright, and design patents, the status of Section 101 reform through PERA, and a working checklist. The goal is to give judges, practitioners, and inventors alike a clear, usable map of where claims live and where they die.
Legal Protection of Software: Copyrights, Patents, Trade Secrets, and Contracts
Proprietary software is often a company's single most valuable asset, yet no one legal doctrine fully protects it, because software is at once a literary work, a functional machine, a confidential secret, and a bundle of contract rights. This guide explains the four pillars of software protection—copyright, patent, trade secret, and contract law—in plain language, following a fictional startup's routing engine from the keyboard to the courtroom. It shows what each pillar covers, where each one fails, and how experienced counsel layer them so that one tool's blind spot becomes another tool's strength. It walks through the governing statutes and the landmark cases that shape them, from *Altai* and *Alice* to *Google v. Oracle*, *Vernor*, and *Van Buren*. It addresses who actually owns software, why a missing assignment can quietly sink a multimillion-dollar deal, and how to combine the four pillars into a coherent program. By the end, a reader with no legal training should understand not just the rules but the strategy behind them.
Image Copyright Demand Letters: How Photo Licensing Enforcement Works and What Claims Are Really Worth
Image copyright demand letters arrive by the thousands each year, usually generated after a crawler matches a photograph on a business website to a photographer's or agency's catalog. This article explains how that enforcement business works, who sends the letters, and how the claims move from automated notice to negotiation, federal lawsuit, or Copyright Claims Board proceeding. It then walks through the legal levers that determine what a claim is really worth: ownership and standing, the registration prerequisite and the Section 412 timing rule, actual and statutory damages, fee shifting, copyright management information claims, the limitations period after Warner Chappell v. Nealy, and the defenses of license, fair use, de minimis use, embedding, and the DMCA safe harbor. Key cases are told as stories, including Fourth Estate, Kirtsaeng, Warhol, Perfect 10, Hunley, Goldman, Brammer, and Mango. An extended worked example values a single claim from both sides, and the article closes with common mistakes, an FAQ, and practical takeaways for recipients and rights holders.
Work Made for Hire Determination Checklist: A Practical Checklist
Whether a work is "made for hire" decides who is the author and owner of a copyright from the very moment of creation, and getting it wrong is one of the most common and damaging mistakes in copyright practice. This checklist walks an author, hiring party, or counsel through the two and only two routes into work-for-hire status, the employee route under the CCNV v. Reid agency test and the commissioned route limited to nine enumerated categories with a signed writing, and explains the belt-and-suspenders assignment that closes the gap when work-for-hire fails. It flags the consequences for registration, ownership, and the non-waivable termination right, and the special context of contributions to a collective work. Confirm the analysis against current authority for your facts.
Entertainment and Media Production Toolkit: Rights, Talent, and Distribution
A production is a copyright, and its value depends entirely on whether the producer can prove ownership of every element inside it. A distributor's counsel reviews the chain of title document by document, and an errors and omissions insurer declines to write a policy on a picture with gaps—which means a film nobody can insure cannot be distributed regardless of its quality. This toolkit follows a production chronologically: acquiring underlying rights and building chain of title, engaging writers and talent, financing and entity structure, the clearances that must be completed before delivery, distribution and sales agreements, delivery itself, and the residual and reporting obligations that survive the production. It runs the production arc from underlying rights and option agreements through talent deals, clearance, delivery, and distribution.
Biometric Data Compliance Checklist: A Practical Checklist
This checklist gives companies a phase-by-phase program for collecting, using, sharing, and destroying biometric data lawfully, built around the Illinois Biometric Information Privacy Act and extended to Texas, Washington, Colorado, California, New York City, Portland, and the Federal Trade Commission. It starts with an applicability screen and a full inventory of biometric systems, including systems that are easy to miss such as identity-verification vendors, voice authentication, virtual try-on tools, and AI training datasets. It then covers the public retention and destruction policy, written notice and release before collection, vendor contract flow-downs, time-clock deployments, facial recognition, voiceprints, AI training data, security, and executing the destruction schedule. Red-flag boxes, a deadlines table, and a list of common failure points drawn from litigated cases help prioritize the work. Each item links the governing authority and notes how courts have treated it.
Gray Market Goods and the First Sale Doctrine: Parallel Imports, Material Differences, and Exhaustion
Gray market goods are genuine products, made by or for the brand owner, that reach a market through channels the brand owner did not authorize. Because the goods are real, the usual trademark claim fails: the first sale doctrine exhausts the owner's rights once it puts the goods into commerce. The exception that swallows a great deal of the rule is the material differences test, under which genuine goods that differ materially from the authorized domestic version are treated as different products and their sale is infringement. This article explains the three structural varieties of gray market trade identified in K Mart v. Cartier, the material differences and quality control theories developed in the First, Second, Third, Eleventh, and D.C. Circuits, the customs regime under 19 U.S.C. section 1526 including the Lever rule labeling exception, and the very different exhaustion rules that now govern copyright after Kirtsaeng and patents after Impression Products v. Lexmark. It then turns to what actually works commercially: distribution controls, serialization, product differentiation, warranty policy, and authorized dealer programs, with attention to the antitrust limits on resale price maintenance. It closes with a worked example, a program checklist, an FAQ, and related reading.
IP Due Diligence Checklist for Mergers and Acquisitions: A Practical Checklist
In a technology or brand acquisition the intellectual property often is the deal, and the most expensive diligence findings are not infringement risks but ownership gaps. This checklist runs the diligence in the order that surfaces those gaps early: building the inventory, tracing chain of title back to every individual creator, and confirming that contractors and founders actually assigned what everyone assumes they assigned. It then covers registrations and their maintenance status, inbound and outbound licenses and the assignment and change of control provisions that decide whether the target's rights survive closing, open source obligations, trade secret hygiene, encumbrances, and pending disputes. The final phases translate findings into deal terms: what to fix before closing, what to cover with representations and indemnity, and what belongs in a purchase price adjustment.
Trademark Basics
A warm, plain-English primer on trademarks for founders, creators, and anyone curious about how brands become legal rights. It explains what a trademark actually is (a source identifier, not ownership of a word), the surprising range of things that can be marks, and the all-important "distinctiveness spectrum" that decides whether your name is strong, weak, or legally hopeless. It walks through how trademark rights are born from use, what the TM, SM, and R symbols really mean, the likelihood-of-confusion test that powers every infringement fight, and the concrete advantages of federal registration with the USPTO. It closes with practical dos and don'ts for picking a mark, the duty to use and police your brand, a full worked example, an FAQ, and cross-links to deeper guides on the trademark process and registration.
Trademark Enforcement and Litigation Toolkit: From Watching to Verdict and Appeal
This toolkit maps the full arc of protecting a trademark against infringers, from routine watching and policing through cease-and-desist letters, domain-name disputes, TTAB proceedings, federal infringement litigation, surveys and damages, and appeal. At each stage it links mclaw.io's practical checklists and litigation articles alongside the controlling Lanham Act provisions, key cases, and the research tools (PACER, CourtListener, WIPO) practitioners actually use. It explains the substantive heart of most disputes—likelihood of confusion—and the evidentiary battles over consumer surveys and damages that decide them. It is written for brand owners deciding how aggressively to police, and for litigators building or defending a case. Citations are provided to statutes and leading authority; verify current procedural deadlines and local rules before filing.
Indirect and Divided Patent Infringement: Inducement, Contributory Liability, and the Akamai Problem
Most modern patent cases accuse someone who never performed the whole invention: a software vendor whose customers run the claimed method, a component supplier whose part only infringes once a downstream buyer installs it, or a drug maker whose label tells physicians what to do. This article explains the three doctrines that reach those defendants, inducement under section 271(b), contributory infringement under section 271(c), and attribution of divided performance under section 271(a) after Akamai, together with the export and import provisions of sections 271(f) and 271(g). It walks through the knowledge and intent requirements set by Global-Tech and Commil, the substantial noninfringing use test, the direction-or-control and joint-enterprise standards, the pleading rules after Twombly, the pre-suit versus post-suit knowledge split in the district courts, and the skinny-label pharmaceutical cases. It then covers damages, willfulness, customer suits, notice letters, discovery, expert proof, summary judgment, jury instructions, and the full menu of defenses. Two worked examples, a SaaS vendor whose customers perform claim steps and a chipmaker shipping a component abroad, show how the doctrines combine in practice.
Registering a Copyright in a Song: A Practical Checklist
Every recorded song contains two distinct copyrights, the musical work (the composition) and the sound recording (the master), and each must be registered separately. This checklist walks a band, songwriter, or adviser through sorting out authorship and ownership, papering the producer and session players, registering both copyrights through the eCO system using the single, standard, GRAM, and unpublished-works options, preparing the right deposit, and timing the filing to preserve statutory damages and attorney's fees. It also flags the royalty-collection registrations, the PRO and the MLC for the composition and SoundExchange for the master, that legal registration alone does not handle. Verify current fees, group caps, and royalty rates at copyright.gov and with the collecting organizations.