Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. The State of New York finally passed legislation establishing a post-mortem right of publicity permitting heirs and estates of individuals with commercially valuable images and likenesses to protect those images and likenesses (and commercially benefit from them) after the famous person’s death. California passed similar legislation 35 years ago in the Celebrities Rights Act. Interestingly, a Ninth Circuit decision regarding the post-mortem right of publicity of Marilyn Monroe, found that no such rights existed because Marilyn Monroe was a domiciliary of New York when she died, even though she died in California. This is not only an interesting IP-related issue, but one that should be considered by estate planning attorneys for clients to whom this new law may apply.

2. The Federal Circuit issued an opinion holding that certain broad language in an assignment provision of an employment agreement was invalid under California law. Specifically, the Federal Circuit determined that an assignment provision in an employment agreement that required inventions conceived post-employment, but related to the employee’s work for the employer, to be assigned to the employer even if no confidential information of the company was used to conceive the invention, violates California Business & Professions Code Section 16660 (contracts that restrain lawful employment are void). The case pertained to an employee of an artificial wave technology company (i.e., for surfing venues) who then left the company, formed his own entity, conceived an invention for wave technology, and filed for patent protection. The employer then filed suit to have the resulting patents transferred to it. The district court (S.D. Cal.) upheld the assignment provisions and ordered the patents to be transferred. The Federal Circuit reversed and stated among other things that, “The restraining effect of these requirements is evident.” The takeaway here is that client contracts should be reviewed for overbroad assignment provisions, and care should be taken before one attempts to enforce such provisions. An important fact here was that the inventions at issue were conceived after the employment ended.

3. This Takeaway updates a post from several weeks ago discussing a recent opinion from the Northern District of Illinois in which the Court granted summary judgment of patent invalidity based on collateral estoppel. The grant of summary judgment was based on the Patent Trial and Appeal Board (PTAB) finding that several related patents owned by the plaintiff were invalid for obviousness, and its subsequent affirmance by the Federal Circuit. The update is based on a decision out of the District of New Jersey in which the Court denied a motion to strike invalidity contentions based on collateral estoppel. More specifically, the declaratory judgment plaintiff filed an inter partes review (IPR) that resulted in the challenged claims in a patent relating to skin cancer detection and treatment being upheld by the PTAB. The challenger appealed the PTAB determination. The patentee then moved in the district court to strike the accused infringer’s invalidity contentions based on collateral estoppel. The district court denied without prejudice the motion to strike stating that it would not give collateral estoppel effect to the PTAB validity determination until the Federal Circuit decided the appeal of the PTAB final written decision. Relative to the Northern District of Illinois noted above, the District of New Jersey decision is consistent in requiring a Federal Circuit decision before collateral estoppel effect is available for a PTAB validity determination.