KB-IP Law Firm

Category: News

  • Bruce Chapman

    Bruce Chapman

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    Karish & Bjorgum are happy to announce that Attorney Bruce Chapman is now working as Counsel to the firm. We’ve known Bruce for many years as a friend and as a respected member of the Los Angeles IP community. He’s been a partner at major firms and has tried patent cases in the Central District of California and around the country. We look forward to working with Bruce and offering the benefits of his experience to our clients.

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  • KB Client Barry Marder and Seinfeld

    KB Client Barry Marder and Seinfeld

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    Congratulations to our client Barry Marder on the collaboration with his friend and co-writer Jerry Seinfeld announced today for Netflix.  It will be a feature-length film entitled Unfrosted about the origins of Pop-Tarts.  Jerry and Barry will be writing with Spike Feresten.  All three wrote on Seinfeld’s Bee Movie film.   Seinfeld famously contributed forewords to the Ted L. Nancy “Letters from a Nut” series of books.  Mr. Nancy is a discrete gentleperson residing in or around Glendale, California, and is often associated with Barry.

    https://deadline.com/2021/06/jerry-seinfeld-netflix-movie-deal-unfrosted-creation-of-pop-tart-directing-starring-cowriter-1234780032/

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  • The Clinical Trial Process and Covid-19 Vaccines

    The Clinical Trial Process and Covid-19 Vaccines

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    By Daniel Kimbell*

    Fear surrounding Covid-19 has gripped the globe, and researchers are diligently searching for a magic bullet in the form of a vaccine.  Not surprising, there is a lot of news coverage surrounding new vaccine development in the UK, the US and China.  It may be that several different vaccines will eventually be needed to bring this pandemic under control and to allow the world to return to some kind of normal.

    While there is a great need for Covid-19 vaccines to be developed and brought to market quickly, history has shown that when shortcuts are taken with medical clinical trials, people are placed at an untenable risk.  Following safe clinical trials norms need not and must not be shortchanged in process.  Therefore, before vaccines can be approved and offered to the public, their developers must follow well-established clinical trial processes to prove that experimental vaccines are both safe and effective.  In the U.S., this process is carried out under the auspices of the U.S. Food and Drug Administration (FDA).

    Approval of vaccines follow a clinical trial pathway that includes at least three “Phases”, which are described below.  Before, during, and especially at the conclusion of each Phase, researcher questions and clinical findings are presented to the FDA for their input and consent to move onto the next Phase.

    In an optional Phase 0 trial, the pharmacodynamics (how a vaccine affects the body) and the pharmacokinetics (what the body does to the vaccine) are studied.  For a vaccine under study, the Phase 0 trial looks into the absorption, distribution, metabolization, excretion of the vaccine, and the vaccine’s interactions within the body, all to confirm that nothing is amiss.

    Phase I clinical trials primarily involve screening a vaccine for safety.  Phase 1 clinical trials are generally small and involve testing in humans to evaluate safety, determine safe dosage ranges, and identify possible side effects.  Failure to pass Phase I means the clinical development stops.

    Assuming that the findings of the Phase I clinical trial are that the experimental vaccine is safe and does not have serious side effects, the researchers can move to Phase II clinical trials.  Phase II clinical trials are larger than Phase I clinical trials and are used to preliminary establish the efficacy of a vaccine in a “treatment group” compared to in a “placebo control group.”  Phase II trials can also include dose-finding to optimize the dose.  Phase II trials are usually run as a double-blind trial where the study participants and the researchers do not know if a study participant is receiving the experimental vaccine or a placebo.  Sometimes because of ethical concerns, clinical trials forego having a placebo group and instead compare the results from participants receiving the experimental vaccine against the results from the general population.

    If the experimental vaccine shows promising safety and efficacy in Phase II trials, Phase III clinical trials follow, and involve a larger group of study participants to confirm efficacy, evaluate effectiveness, and further tease out possible side effects.  The FDA requires that the Phase III trials take place at multiple test locations (often around the world) and with different patient populations, e.g., young, old, all genders, various races, etc.  The FDA prefers to have at least two separate Phase III trials before granting marketing approval.  However, with overwhelmingly positive Phase III results, this requirement is often relaxed.

    Once the Phase III studies are completed and all hurdles are cleared, the applicant applies to the FDA for marketing approval.  Assuming the FDA agrees that the drug is safe and effective, the FDA will work with the applicant to determine what public information will be provided with the vaccine (the “label”) so that the vaccine can be safely and properly administered.

    Here is to the day when we can be protected from Covid-19 by a safe and effective vaccine!

    *Dan Kimbell, patent attorney and member of Karish & Bjorgum, co-founded Emmaus Life Science in 2000.  He helped establish and manage Emmaus’s Phase II clinical trial and had broad interaction with the FDA.  After many years, Emmaus completed the clinical trial process and in 2019 was granted marketing approval for its drug Endari (L-glutamine oral powder) for sickle cell disease.

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  • Supreme Court Clarifies Law on Trademark Infringement Damages

    Supreme Court Clarifies Law on Trademark Infringement Damages

    On April 23, the United States Supreme Court issued an opinion that significantly changes trademark infringement damages. The case is Romag Fasteners v. Fossil. Under the law (15 U.S.C. §1117), a victim of trademark infringement (the plaintiff) can recover: (1) the infringer’s profits, (2) the victim’s own damages caused by the infringement, and (3) the costs of the lawsuit.  However, there was a split of authority among the various appeals courts about whether the plaintiff had to prove that the infringer acted willfully to be awarded the infringer’s profits. The Supreme Court held that a plaintiff does not have to prove willful trademark infringement to be awarded the infringer’s profits.

    Although judges have some discretion in awarding damages, this decision will likely make it easier for plaintiffs to get an infringer’s profits even in cases of innocent or negligent infringement.  Also, it is often difficult for plaintiffs to prove their own damages caused by infringement. The increased ability to get an infringer’s profits will likely increase the amount of damages awarded. This may in turn lead more plaintiffs to file lawsuits.

  • Understanding the Coming Wave of Force Majeure Litigation

    Understanding the Coming Wave of Force Majeure Litigation

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    With the COVID-19 epidemic, it is expected that contracting parties will be invoking force majeure clauses more frequently than at any time in recent memory.  ”Force majeure” is the part of contract law devoted to “Act of God” events characterized by extreme rarity and severe impact.  The force majeure clause is a contractual provision that relieves the contracting parties from performance when certain extreme circumstances beyond their control occur, making performance literally impossible, commercially impracticable, illegal or highly inadvisable.  In California, Cal. Civ. Code Section 3526 expresses the principle succinctly: “no [wo]man is responsible for that which no [wo]man can control.”  In the absence of a force majeure provision, the parties are left to common law or state statutory law regarding impracticability, frustration of purpose and other doctrines to determine who bears the risk of non-performance.

    Force majeure clauses will play a vital role in sorting out the financial impact of the COVID-19 virus and related widespread shutdown of commercial activity.  The COVID-19 pandemic has wreaked havoc on commercial relationships and supply chains, caused the cancellation of concerts, and the closure of movie theaters, restaurants and all manner of other businesses.  In the modern world, written contracts often govern the complex inter-relationships between these businesses and allocate the risk of non-performance between the parties.  Force majeure clauses, which are often part of the overlooked contractual provision found in the boilerplate provisions at the end of a contract, will prove essential in determining whether a party will be found liable for breaching a contract during the COVID-19 crisis. 

    We have already been contacted by  clients seeking advice related to COVID-19, business interruption and force majeure clauses.  We expect that force majeure related cases will flood the courts as they begin to reopen in the coming weeks.  As discussed below, obtaining advice from experienced commercial counsel will be extremely important in assessing the impact of force majeure on your business and developing strategies to resolve force majeure issues.  In addition, we  advise that all businesses consider retaining counsel to evaluate the current risk majeure provisions in their agreements and recommend potential changes to ensure the clauses provide the maximum protection available under the law.

    The most important preliminary issue will be the venue for any litigation because contract is a matter of state law.  Litigating force majeure clauses in California raises unique issues and challenges, and California law takes a different approach to force majeure than other jurisdictions.

    The Need for Experienced Counsel

    Force majeure clauses are not frequently  a primary focus of negotiation or drafting in many commercial agreements.  Boilerplate force majeure language is often cut and pasted into the “standard” portion of a contract with little thought.  Humans tend to underestimate and under-plan for relatively rare events like pandemics or terrorist attacks, and many business lawyers focus most of their efforts on drafting the material “business terms” of a contract and rely on more-or-less standard language for the remaining terms.  As any litigator will tell you, however, the “standard” and often overlooked provisions are often the most essential and important provisions in litigation.  Because they excuse performance and thus liability for breach, the application of a force majeure clause can prove outcome determinative in a lawsuit or dispute.

    Commercial litigators have special expertise and experience interpreting and litigating contracts.  Seeking counsel from a qualified professional is essential to assessing a force majeure related claim.  Among other things, the litigator must: determine whether a contract has a force majeure provision; predict how a court would likely interpret that provision; design a litigation strategy and accurate estimate of expected fees and costs; and spot other issues that typically arise in commercial litigation and bear on force majeure, such as choice of law, venue, integration and proximate cause.  After evaluating the force majeure provision, the litigator will then design an overall strategy aimed at resolving disputes in a way consistent with the client’s business goals and resources.  Litigators can also be indispensable resources in designing and drafting force majeure provisions to better protect businesses, as well as examining and advising on the scope and application of existing force majeure provisions.

    Any business evaluating the impact of a force majeure provision on a contract governed by California law will need advice tailored specifically to California law.  California has unique interpretive principles applicable to force majeure, and generally takes a less restrictive approach to the clauses than other jurisdictions.  In many other jurisdictions, the failure of a force majeure clause to expressly name the specific force majeure at issue can prevent recovery.  In such jurisdictions, for example, if the contract does not include language stating that a pandemic is a force majeure event, the clause would not be triggered by a pandemic.  See, e.g., Kel Kim Corp. v. Central Markets, Inc., 70 N.Y.2d 900, 903 (1987) (force majeure clause inapplicable where it did not “specifically include” party’s inability to procure and maintain liability insurance on a roller skating rink).  (Of course, there may be creative ways to argue the application of the clause in these jurisdictions.)   This does not mean that California courts will apply force majeure clauses as a matter of course.  The California Supreme Court has recognized that, even where a force majeure clause applies, the mere fact that performance has become more expensive or involves greater hardship than anticipated at the time of contract does not excuse a contractual obligation.  Rather, the party obligated to perform must show “extreme and unreasonable difficulty, expense, injury or loss involved.”  San Mateo Community College Dist. v. Half Moon Bay Ltd. Partnership, 65 Cal.App.4th 401, 415 (1998).  As well, California law requires that the party seeking to excuse performance via force majeure must show “sufficient” or “reasonable” efforts to avoid the consequences of the “Act of God” event.  See, e.g., Butler v. Nepple, 54 Cal.2d 589, 598-599 (1960) (drilling company not excused by force majeure clause where it could not obtain tools from a supplier due to a strike because it could have sourced the tools from another supplier).  For this reason, a business seeking to rely on a force majeure clause should work with counsel to create an appropriate record of the things it did to try to perform the contract.

    California also has specialized statutes that codify equitable principles relevant to force majeure clauses, and a large body of decisional law interpreting those statutes.  See, e.g., Board of Supervisors v. McMahon, 219 Cal.App.3d 286, 300 (1990) (interpreting Cal. Civ. Code § 3531 on impossibility); FPI Development, Inc. v. Nakashima, 231 Cal.App.3d 367 (1991) (examining the frustration of purpose defense).  The doctrines of frustration of purpose and impossibility are closely related to force majeure and may also excuse performance.  Any force majeure analysis will likely consider the applicability of these doctrines.  Making matters even less certain, California does not yet have a substantial body of case law (or even a single published case) that interprets force majeure and related concepts in the context of a virus or global pandemic.  This is another reason to retain experienced counsel.

    Karish & Bjorgum Has Broad Experience Litigating Commercial Contracts

    At Karish & Bjorgum, we have deep experience drafting, interpreting and litigating commercial agreements.  The breadth of our experience brings familiarity with the common types of issues and arguments in commercial litigation.  We combine that deep experience with creative approaches to commercial litigation, and a competitive pricing structure that allows us to represent a wide variety of business types and sizes.  You will be hard-pressed to find more qualified and talented lawyers at a lower price anywhere, and certainly in California.  Please contact us immediately if you would like to consult over potential force majeure or other contractual issues.

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  • Flavor Flav and Chuck D Reunite in Public Enemy

    Flavor Flav and Chuck D Reunite in Public Enemy

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    Congratulations to Karish & Bjorgum client Flavor Flav for reuniting with Chuck D in Public Enemy.  It was the sort of long and twisted tale one might expect in a dispute involving two groundbreaking artists, but the result will be worth the wait.

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    LA Times Article

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  • KB Client Prevails at Ninth Circuit on Fair Use Defense

    KB Client Prevails at Ninth Circuit on Fair Use Defense

    On March 24, 2020, the Ninth Circuit Court of Appeals issued a decision finding that a licensor of copyrights must pay attorneys’ fees to KB’s client, the Burbank High School Vocal Music Association, a boosters club, and its parent volunteer board members.  Along with the choir director, the boosters club had been sued for allegedly infringing copyrighted music in creating a show choir piece that involved the song “Magic” by Olivia Newton John.  The District Court  had granted summary judgment on behalf of KB’s clients, but had denied fees. The choir director had prevailed on a theory of qualified immunity.  Cross appeals were filed, and the Ninth Circuit unanimously found that not only should KB’s client be awarded fees, but that the case should be affirmed on the fair use defense, which had not been expressly ruled upon by the trial court.  The case provides valuable precedent for other schools and choir groups around the country facing similar issues.  The opinion in the case, Tresona Multimedia, LLC vs. Burbank High School Vocal Music Association, et al., Case No. 17-56006, can be found here: https://cdn.ca9.uscourts.gov/datastore/opinions/2020/03/24/17-56006.pdf.  Commentary from the Stanford Copyright and Fair Use Center can be found here: https://fairuse.stanford.edu/case/tresona-multimedia-llc-v-burbank-high-school-vocal-music-assn/.

  • U.S. Attorney Now Required On All Trademark Applications

    U.S. Attorney Now Required On All Trademark Applications

    On July 2, 2019, the U.S. Patent and Trademark Office announced a new rule requiring all foreign trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the United States.  “The requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These applicants, registrants, and parties are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters.”

    The requirement is aimed at combating fraud by foreign citizens interacting with the USPTO.  Disciplinary measures against foreign lawyers and parties are typically limited.  The USPTO is hoping that the threat of discipline to U.S.-licensed attorneys will force those attorneys to police their foreign clients and prevent fraud.

    This new trademark rule takes effect on August 3, 2019. At Karish & Bjorgum, we regularly practice before the U.S. Patent & Trademark Office and handle all phases of domestic and international trademark prosecution.  If you are in need of a U.S. attorney to represent you, feel free to contact us. 

    More information on this new rule can be found here: https://www.uspto.gov/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us

     

  • KB Defeats Motion for Preliminary Injunction Sought Against Famed Musician Mark Farner

    KB Defeats Motion for Preliminary Injunction Sought Against Famed Musician Mark Farner

    Grand Rapids, Michigan — On March 14, 2019, the U.S. District Court for the Western District of Michigan ruled in favor of KB’s client Mark Farner (former guitarist, singer and songwriter for Grand Funk Railroad) and denied a motion for preliminary injunction brought against Farner by his former band mates.  In denying Plaintiff’s motion, the Court ruled that Farner could not be enjoined from using the name MARK FARNER’S AMERICAN BAND in connection with his new group.  The members of Grand Funk Railroad, who at one time registered a trademark on THE AMERICAN BAND, filed a suit for trademark infringement, claiming that the name of Farner’s band causes confusion with that mark.  Through his counsel at KB, Farner argued that there was no showing to justify the proposed injunction, noting particularly that U.S. Patent and Trademark Office had already allowed Farner to register his new name.

    The Court agreed with KB’s position.  In a lengthy opinion balancing the law relevant to trademark infringement in the Sixth Circuit, the Court summed up its findings, writing “GFR fails to show a strong likelihood of success that Farner’s use of MARK FARNER’S AMERICAN BAND creates a likelihood of confusion among consumers.”  Farner continues to tour nationally and around the world under MARK FARNER’S AMERICAN BAND.  Trial is set for December, 2019.

  • USPTO Trademark Expedited Cancellation Pilot Program, a New, Quicker Way to Clear the Register

    USPTO Trademark Expedited Cancellation Pilot Program, a New, Quicker Way to Clear the Register

    Many of those who try to register trademarks in the US quickly discover that things are already crowded on the US Trademark Register, making it difficult to find and then register word marks.  While some of this is due to a healthy business environment, much is also due to companies and individuals filing for and obtaining registrations that include goods and services not actually used in interstate commerce.

    The Trademark Office largely relies on the honesty and integrity of trademark owners, and when this doesn’t happen, there are serious repercussions.  Indeed, in a recent random audit, the USPTO found that over half of active trademark registrations include some goods or services for which the registered mark is not actually being used.  This unfairly blocks new users from obtaining their own registrations.

    To partially address this problem, in November 2017 the USPTO begun to conduct random audits of post-registration maintenance filings.  As a further response, the Trademark Trial and Appeals Board (TTAB), which handles oppositions and cancellation actions, began a pilot program in 2019 to explore the effectiveness of an expedited cancellation proceeding for challenges to registrations of allegedly unused marks.

    Under this pilot program, the TTAB identifies newly filed cancellation proceedings limited to abandonment or nonuse claims that may benefit by some form of the Board’s existing Accelerated Case Resolution (ACR) procedures.  The standards of proof in an ACR proceeding remain the same as those in a traditional proceeding, and a final decision rendered under ACR may be appealed in the same manner and under the same time frames as non-ACR decisions.

    Once an Answer is filed by the trademark owner/respondent, the TTAB will invite the parties to participate, and if they agree, an assigned TTAB Interlocutory Attorney and an Administrative Trademark Judge will participate in the mandatory discovery conference.  In addition to the usual subjects covered during a discovery conference, these conferences explore potential stipulations of fact, evidentiary stipulations, ways to limit discovery, and the possible use of the “summary judgment ACR model” to abbreviate the proceeding by having the Board treat summary judgment motion filings and accompanying evidence as the final record and briefing and decide disputed factual issues.

    The TTAB makes every effort to issue final decisions in ACR cases within 50 days once they are ready for decision.  By reducing the length and complexity of the case, ACR provides a more efficient and economical alternative to the traditional full cancellation proceeding, thus offering to save the parties a lot of time and money compared to a traditional cancellation proceeding.