How to Reduce a Copyright Liability from Major to Minor

A client recently had the good fortune to reduce its financial exposure for copyright infringement from $3 million to a little over $75,000. Still, $75,000 is a lot of money to pay for unauthorized reproduction of twenty photos that belonged to someone else. But on the down side, in addition to statutory damages of up to $150,000 per photo, there also was the possibility of an award of attorney’s fees, and because the facts as known pointed to the conclusion that this client was aware that the photos were not its to borrow, it was quite likely a jury would have found the infringement to be willful and would, and could, have awarded $150,000 per photograph.  Continue reading

Unlawful Use of a Trademark in Commerce and the Affirmative Defense to Infringement

The Lanham Act imposes on a trademark’s owner the requirement that the mark be used lawfully in commerce. If it is not, the USPTO should refuse to register it, and if registered the registration should be canceled. As well, unlawful use of a trademark in commerce has been applied as an affirmative defense to infringement in the case of registered marks, and there is no basis to distinguish, for this purpose, registered and unregistered marks. It’s just that the tested cases have been with registered marks.

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Licensee Estoppel and Naked Licensing

Federal courts are prone to apply licensee estoppel to prevent a trademark licensee from challenging its prior licensor’s rights in the mark. If, of course, a licensee can establish that the prior licensor has no rights in the mark-at-issue, that licensor will not be able to enforce its rights in the mark. Those circumstances will often arise when the prior licensor sues it prior licensee because the latter continues to use the mark following expiration of the license.

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Kaitlin Corey Named in The Daily Record’s Leading Women Under 40

Congratulations to our partner Kaitlin Corey on being named among The Daily Record’s Leading Women Under 40 for 2022.

The Daily Record’s Leading Women awards honor women who are 40 years of age or younger for the accomplishments they have made so far in their careers. Winners were selected for the honor based on their professional experience, community involvement, and commitment to inspiring change.

 

Kaitlin Corey named to 2022 Leading Women Under 40A partner at Goodell DeVries, Kaitlin Corey represents a wide range of clients in intellectual property law and litigation and tax law. Her practice spans everything from trademark litigation to multi-million dollar business transactions and tax controversy work. She speaks regularly on copyright and trademark law and is an adjunct professor at the University of Baltimore School of Law, where she co-teaches Trademarks and Unfair Competition Law with Jim Astrachan. She is immediate Past Chair of the Intellectual Property Section of the Maryland State Bar Association.

Kaitlin also serves as General Counsel for the Annapolis Police Foundation and as a Dean of the Lawyers’ Campaign for CollegeBound. 

Jim Astrachan to Lead Baltimore Bar Foundation and Ethics Committee

Jim Astrachan - Intellectual Property Lawyer

Goodell DeVries partner and intellectual property lawyer Jim Astrachan has been appointed to two leadership roles this month. He was named President of the Baltimore City Bar Foundation and will serve a one-year term. 

Jim was also appointed Chair of the Bar Association of Baltimore City’s Professional Ethics Committee, a role in which he will serve until May 2023. 

Jim represents clients in intellectual property law and litigation, mediation, and business, regulatory, and transactional matters. He is a Life Fellow of the Baltimore City Bar Foundation, the Maryland Bar Foundation, and the American Bar Foundation. He has been an adjunct professor since 1979, teaching IP courses at the University of Maryland and University of Baltimore Schools of Law and University of Baltimore Graduate School of Communications Design, and taxation subjects at Loyola’s Sellinger School of Business.