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Frequently asked questions about business and business litigation.
My company has been sued in a State where it has never been and does not transact business. Can the case against my company be dismissed or transferred to a more convenient forum?
You may be able to move to dismiss or transfer the case on the basis of lack of personal jurisdiction and improper venue.
In order to succeed in a motion to dismiss for lack of personal jurisdiction you need to show that your company lacks sufficient general and specific contacts with the forum such that the court’s exercise of jurisdiction over your company would not comport with traditional notions of fair play and substantial justice.
It is generally sufficient for the plaintiff to show that the accused knew that the plaintiff resides in and would likely be harmed in the forum state. However, if the defendant’s sole contacts with the forum are tenuous or it had no reasonable expectation of being haled in to the forum to defend a claim, the case against it should be dismissed or transferred to a proper venue.
Preserve all documents relating to the accused infringement. This includes, but is not limited to accused products, product specifications, sales records, profit statements, correspondence with customers, emails, invoices, advertisements and bank statements. Failure to do this could result in claims of spoliation and sanctions for destruction of evidence.
Depending on your business insurance, you might also be able to file a claim with your insurer.
Depending on the circumstances you may want to cease sales of the accused infringing products, but this is not always required or the best strategy.
Your supplier or the original seller may have a duty to indemnify you.
There are many things to consider. For example, in no particular order you may: 1) form a legal entity to limit your liability; 2) register your intellectual property; 3) structure your business so it qualifies for government programs and grants; 4) have a written agreement with business partners or associates as to how the business will be conducted and owned; 5) verify that your business is properly licensed and does not infringe the intellectual property of others; 6) seek financing; and/or 7) register your business with the Internal Revenue Service.
Forming a new business is a simple process, but implicates many legal issues that are dependent on the specific business being formed. A business lawyer can guide you through these processes and help you establish a strong legal foundation for your new business. Consequently, it is important to consult with an experienced business attorney early in the business formation process. Failing to do so may result in lost opportunities and costly errors that may or may not be correctable later.
With the exception of small claims litigation, arbitration and some administrative claims, for most lawsuits, only a licensed attorney can represent your company in court. Even though it is not always required, even in small claim cases, administrative actions, and arbitration it often makes good sense to retain an attorney.
I have seen arbitration involving millions of dollars, and small claims cases where the non-prevailing party had to pay tens of thousands of dollars in fees, interest and costs. Having experienced trial counsel that is familiar with the law and rules of court can save you a great deal of time, money and stress.
The best practice is to talk to a business litigation attorney as soon as you learn of a lawsuit or legal action, so that the attorney can advise as the best steps to protect you and your interests. Many attorneys provide a free initial consultation. Most cases resolve without going to trial.
You may or may not want to pursue patent and/or trade secret protection. Time is of the essence for applying for patent protection. You may forfeit your right to patent your invention if your invention is publicly disclosed, another inventor files first, or you do not otherwise timely file.
While there are many attorneys throughout the United States, only Registered Patent Attorneys are authorized to provide legal advice and file patent applications before the United States patent and trademark office. Registered patent attorneys account for less than 3% of lawyers. They are required to have at least: a bachelor’s of science degree in core science; engineering; or, the equivalent; received a Juris Doctorate degree from a state approved law school; passed their respective state’s highest bar; and, passed the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office – which is frequently called the patent bar.
If you have an invention that you want the right to exclude others from making, selling, offering to sell or importing -- you should speak with an experienced patent attorney.
Someone purchased a domain name confusingly similar to my name, my business name, or brand name and is offering to sell it to me. Should I buy it from them?
The Internet Corporation for Assigned Names and Numbers Uniform Domain Name Dispute Resolution Policy (the "UDRP") and United States Anticybersquatting Consumer Protection Act (the "ACCPA") provide remedies against bad faith registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name.
In many cases, an UDRP proceeding is faster and less expensive for trademark owners than an ACCPA lawsuit. However, many trademark owners prefer to bring ACCPA claims over an UDRP arbitration because the U.S. federal court is empowered to provide remedies other than the cancellation or transfer of the domain name.
Only pursuant to an ACCPA action may a trademark holder recover statutory damages, attorneys’ fees and injunctive relief. Statutory damages include up to one hundred thousand dollars per domain name for bad faith registration, and two million dollars for the use of a counterfeit mark. Additional remedies may be available.
It depends upon your agreement the customer. Many of these types of cases can be resolved by a simple demand letter to the customer from an attorney. In other cases, it may require the filing of a lawsuit.
You may want to consider requiring in your contracts and forms that your customers agree to pay all reasonable attorneys’ fees in the event they fail to pay you timely as agreed. Call Mr. Koziol to discuss the benefits and disadvantages of including attorneys' fees and cost provisions in your contracts.
I need someone to implement a website, develop software or design a prototype for my invention. What contracts do I need?
Each situation is different. You will likely need a work-for-hire, intellectual property assignment, non-disclosure and non-solicitation agreement.
You will need to decide if you want to hire the person as an employee or if it makes more sense for them to work as an independent contractor. This decision depends on a number of factors. Your hiring decision can impact: your tax liability; insurance requirements; intellectual property rights; and, rights and obligations as an employer or contractor.
Cross licensing, equity, joint venture and partnership agreements are some alternative possibilities.
I am a defendant in a lawsuit. I have no counterclaims and the other side is being unreasonable. Is there a way I can have an entitlement to recover at least my attorneys’ fees and litigation costs?
In most cases, each party pays its own attorneys’ fees. However, attorneys’ fees may be recoverable as provided for by law or contract. For example, attorneys’ fees can be recoverable in copyright, patent, trademark, misappropriation and other cases.
Even when not otherwise provided for by statute, for frivolous cases Florida law provides a mechanism that can require the plaintiff and the plaintiff’s attorney to equally pay the defendant’s attorneys’ fees and costs.
Where the case is not frivolous, but a plaintiff is seeking more than the amount which they are entitled, in some cases an offer of judgment can shift the liability for costs and attorneys’ fees. With regard to Florida claims, a plaintiff can also make a demand for settlement which can shift the attorneys’ fees and costs if a defendant refuses to accept a reasonable settlement demand.
Generally, an original seller of goods warrants that the goods they are selling are free from colorable claims of infringement.
The seller is exempted from the implied warranty if they expressly disclaim the warranty, or if the goods were made to an express specification of the buyer.
If the buyer promptly and properly notifies the seller of a colorable claim of infringement the seller must agree to vouch in for defense of the lawsuit and satisfy any adverse judgment or the seller will be bound by any adverse decision.
The other-side lied in their pleadings or states a frivolous claim or defense is there anything I can do?
If the case is in Federal Court and was initiated without a reasonable pre-suit investigation there may be a basis for sanctions, which could include require payment of attorneys’ fees.
If it is a state law claim there may be an independent basis for sanctions, or a Motion to Strike Sham pleadings.
Generally, these types of motions for sanctions should only be brought after clear consideration and where there is no colorable basis for the other side’s claims.
If a person gives false testimony in deposition, under oath, or in a declaration subject to perjury it is a crime.
Depending on the circumstances you might be able to: appeal; request a rehearing; or, reconsideration of the judges’ decision.
Each possibility has a different legal requirements and strict filing deadlines. Mr. Koziol can advise which if any course of action is appropriate under the circumstances of your particular case. Generally, each possibility for has a better chance at success the more promptly action is taken.
Most lawsuits are properly brought where the defendant resides. However, some cases should be brought in the venue where the subject property is situated, the injury occurred, or the plaintiff resides.
Different courts have different rules and may be statistically more plaintiff or defendant friendly.
Some causes of action may only be brought in specific courts with subject matter jurisdiction. Also, some cases may be subject to mediation or arbitration.
It is only after considering all relevant facts, that Peter A. Koziol, with knowledge of the different jurisdictional considerations, can best advise: where; how; and, when to bring a lawsuit.
The other side published my bank account number, social security number, or other private information in the lawsuit or online. Can I do anything?
Lawsuit filings are generally considered public record.
State and federal rules protect against the publication of private information and filing of it in the public record.
Depending on the circumstances, the party publishing the information should immediately withdraw or redact the offending papers and may be liable for any damages occurred because of their negligence or intentional disregard for the law.
The sooner action is taken, the more likely harm and damage can be limited or averted. Many states also have data breach and privacy laws that could subject a company to substantial penalties for unauthorized dissemination of private information.
If the information was published or distributed through a third party website or service provider, a properly channeled and prompt demand letter can often result in the immediate redaction or expeditious take down of the offending materials.
Another person or business is causing my business harm. I want immediate relief and do not want to wait for an action to go to trial. What can I do now?
Depending on the circumstances you may be able to seek a Temporary Restraining Order ("TRO"), Preliminary Injunction ("PI"), or ex parte seizure of infringing goods.
Typically, these types of actions require the posting of a bond, and a showing of four required factors: 1) irreparable harm; 2) likelihood of success on the merits; 3) that the balance of the interests favors the sought relief; and, 4) that the relief is not contrary to public policy.
A PI can result in a substantial prompt victory for the Plaintiff and may resolve a case very early on, but it also front loads much of the litigation expense and therefore is not appropriate for cases where the expense is not justified. Although hearsay is generally admissible at a PI hearing, it generally is not advisable to seek a PI unless there is substantial credible evidence to support the four required factors.
Registration is only required to create patent rights.
However, registration of copyrights and trademarks provides for many benefits including presumption of validity and ability to bring statutory causes of action in court.
Depending on the circumstances registration prior to infringement or within 90 days of publication may create an entitlement to statutory damages and enable recovery of attorneys’ fees and costs.
Consequently, although it is not required, it is generally recommend that a person or company register their copyrights and trademarks as soon as possible.
Copyrights provide the right to exclude others for a limited time from copying the creative expression of original works of authorship fixed in a tangible medium. They extend to books, art, music, movies, plays, software and expressive arts. Copyrights generally last for the life of the author plus 70 years and when registered provide for statutory damages.
Patents provide the right to exclude others from making, selling, offering to sell or importing patented inventions and new ornamental designs. Inventions are new and useful machines, processes, methods of manufacture, compounds and a-sexually reproduced plants. Utility patents and plant patents generally last for 20 years from the date of filing, and design patents 14 years from issue.
Trademarks are source identifiers and protect consumers against confusion and trademark owner’s investment and good will associated with their brand. Trademarks last indefinitely as long as they remain distinctive and are used to identify the source of goods or services.
Frequently asked questions about copyrights.
A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed.
Copyright, a form of intellectual property law, protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.
Copyright protects original works of authorship, while a patent protects inventions or discoveries. Ideas and discoveries are not protected by the copyright law, although the way in which they are expressed may be. A trademark protects words, phrases, symbols, or designs identifying the source of the goods or services of one party and distinguishing them from those of others.
No. In general, registration is voluntary. Copyright exists from the moment the work is created. You will have to register, however, if you wish to bring a lawsuit for infringement of a U.S. work.
Registration is recommended for a number of reasons. Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney's fees in successful litigation. Finally, if registration occurs within 5 years of publication, it is considered prima facie evidence in a court of law.
The United States has copyright relations with most countries throughout the world, and as a result of these agreements, we honor each other's citizens' copyrights. However, the United States does not have such copyright relationships with every country.
My ISP has been subpoenaed and my IP address is accused of downloading copyrighted works online. What should I do?
Contact Peter A. Koziol. Some cases are worth fighting while many others can be resolved for a relatively small amount or no payment which is often less than it would cost to respond in court.
If you contact Mr. Koziol early enough, it is possible in some cases to settle bit-torrent and file sharing cases without revealing your actual identity. This cannot be done once your ISP answers the subpoena.
If Mr. Koziol is representing multiple defendants in the same case on the same issue, depending on the circumstances, fees and expenses can be split among multiple defendants.
If you do not timely respond your identity will likely be revealed and lawsuit filed against you.
If you fail to respond to a lawsuit a default and final judgment may be entered against you.
It is important to consult with and retain Mr. Koziol or another attorney to properly document any settlement, and defend you in a copyright infringement lawsuit.
Frequently asked questions about patents.
They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the United States Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.
Is there any danger that the USPTO will give others information contained in my application while it is pending?
Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published. After the application has been published, however, a member of the public may request a copy of the application file. After the patent is issued, the Office file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Unit for inspection by anyone, and copies of these files may be purchased from the Office.
The Office will answer an applicant’s inquiries as to the status of the application, and inform you whether your application has been rejected, allowed, or is awaiting action. However, if you have a patent attorney or agent of record in the application file the Office will not correspond with both you and the attorney/agent concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent.
No. Most business with the Office is conducted by written correspondence. Interviews regarding pending applications can be arranged with examiners if necessary and are often helpful.
If each had a share in the ideas forming the invention as defined in the claims – even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.
If a first person furnishes all of the ideas to make an invention and a second person employs the first person or furnishes the money for building and testing the invention, should the patent application be filed by the first and second persons jointly?
No. The application must be signed by the true inventor, and filed in the USPTO, in the inventor’s name. This is the person who furnishes the ideas (e.g. the first person in the above fact pattern), not the employer or the person who furnishes the money.
No. However, the Patent Cooperation Treaty provides a means to preserve the right to register a patent in multiple nations with a single application.
A PCT patent application can share the benefit of an earlier filed applications’ filing date provided that the PCT is filed within a year of the prior U.S. or foreign application and shares substantially the same disclosure.
In most countries, an applicant has either 30 or 31 months from the earliest priority date to file a “national” phase patent application based upon the PCT application.
Frequently asked questions about trademarks.
A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.
A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks.
A certification mark is any word, phrase, symbol or design, or a combination thereof owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a certification mark is to indicate that certain standards have been met, use of the mark is by others.
A collective membership mark is any word, phrase, symbol or design, or a combination thereof which indicates that the user of the mark is a member of a particular organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by members.
A collective mark is any word, phrase, symbol or design, or a combination thereof owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services.
No. You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several important benefits.
Owning a federal trademark registration on the Principal Register provides several advantages, including:
If you claim rights to use a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim of a “common-law” mark. No registration is necessary to use a "TM" or "SM" symbol and you may continue to use these symbols even if the USPTO refuses to register your mark. Those symbols put people on notice that you claim rights in the mark, although common law doesn't give you all the rights and benefits of federal registration.
You may only use the federal registration symbol "®" after the USPTO actually registers a mark, not while an application is pending. And it may only be used on or in connection with the goods/services listed in the federal trademark registration and while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Although there are no specific requirements on where the symbol should be placed relative to the mark, most businesses use the symbol in the upper right corner of the mark. Note: Because several foreign countries use “®” to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.
The basic difference between these two filing bases is whether you have used the mark on all the goods/services. If you have already used your mark in commerce, you may file under the “use in commerce” basis. If you have not yet used your mark in commerce, but intend to use it in the future, you must file under the “intent to use” basis. An “intent to use” basis will require filing an additional form and fee that are unnecessary if you file under “use in commerce.”
No. The examining attorney will review the application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2.
For a discussion of these and other possible refusals, see Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP).
The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application.
The registration is valid as long as you timely file all post registration maintenance documents. You must file a “Declaration of Use under Section 8” between the fifth and sixth year following registration. In addition, you must file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” between the ninth and tenth year after registration, and every 10 years thereafter. If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated.
There are no specific requirements on where the “®” symbol should be placed relative to the mark, but most businesses use the symbol in the upper right corner of the mark. The “®” symbol indicates that you have federally registered your trademark with the United States Patent and Trademark Office. It puts the public on notice that your mark is registered and that you have nationwide rights in it. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration and while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Note: Because several foreign countries use “®” to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.
here are three important restrictions on use of the “®” symbol: (1) it may only be used after the mark is registered (you may not use it during the application process); (2) it may only be used on or in connection with the goods and services listed in the federal registration; and (3) it may only be used while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Note: Because several foreign countries use “®” to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.
Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.
For goods, "interstate commerce" generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" generally involves offering a service to customers in another state or rendering a service that affects interstate commerce (e.g., restaurants, gas stations, hotels).
There is no such thing as an international trademark registration.
However, the Madrid Protocol provides an efficient and cost effective means to apply to register a trademark in multiple nations with a single application.
Frequently asked questions about trade secrets.
Generally, any confidential business information which provides an enterprise a competitive edge may be considered a trade secret. Trade secrets may encompass manufacturing or industrial secrets and commercial secrets. The unauthorized use of such information by persons other than the holder is regarded as an unfair practice and a violation of the trade secret. Depending on the legal system, the protection of trade secrets forms part of the general concept of protection against unfair competition or is based on specific provisions or case law on the protection of confidential information.
The subject matter of trade secrets is usually defined in broad terms and includes sales methods, distribution methods, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes. While a final determination of what information constitutes a trade secret will depend on the circumstances of each individual case, clearly unfair practices in respect of secret information include industrial or commercial espionage, breach of contract and breach of confidence.
Florida and many other U.S. states have adopted the Uniform Trade Secrets Act.