IP Law Alert : Intellectual Property Lawyers & Attorneys : Gibbons Law Firm : Copyrights, Patent Infringement, Unfair Competition

On Wednesday, the Supreme Court heard oral argument in the case of Already, LLC d/b/a Yums v. Nike, Inc. As we reported previously, that case arose from an appeal of the Second Circuit’s decision affirming the Southern District of New York’s holding that a covenant not to sue entered in a trademark dispute ended the case and controversy between the parties. We enclose the full transcript of the oral argument. 

During oral argument, at which this author was present, Already, LLC d/b/a Yums’ (“Yums”) attorney argued that the covenant would force it to be the "involuntary licensee" of Nike. He analogized the challenged registration to a scarecrow, arguing that it creates "informational injury" by improperly stopping competitors from producing similar shoes, under color of right.

Significantly, Nike’s covenant not-to-sue only extended to claims based on Yums’ current and past products and "colorable imitations" thereof. It did not preclude that Yums might later be sued based on the challenged registration for other shoe designs.

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Gibbons P.C. is proud to announce that two practices within its Intellectual Property Department have achieved national and metropolitan rankings in the 2012 edition of Best Lawyers®, the oldest and most respected peer-review publication in the legal profession. In addition, Department Chair David E. De Lorenzi has been individually ranked in three different IP categories.

The Department was singled out for national rankings in the categories of Patent Law (Tier 2) and Intellectual Property Litigation (Tier 3). In addition, the Intellectual Property Litigation practice was ranked in the first tier of the Newark, New Jersey metropolitan rankings, while the Patent Law practice achieved a second-tier ranking for Newark. Mr. De Lorenzi was ranked in three different categories: Intellectual Property Litigation, Patent Litigation, and Patent Law.

Because Best Lawyers is based on an exhaustive peer-review survey in which more than 41,000 leading attorneys cast almost 3.9 million votes on the legal abilities of other lawyers in their practice areas, and because lawyers are not required or allowed to pay a fee to be listed, inclusion in Best Lawyers is considered a singular honor. Corporate Counsel has called Best Lawyers “the most respected referral list of attorneys in practice.”

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On December 1, 2010, the latest version of the Federal Rules of Civil Procedure went into effect. As part of the new rules, significant changes were made to Rule 26 regarding the discovery of information from experts retained to provide testimony. As of Wednesday, witnesses who were not previously required to provide a written report must now provide a summary disclosure of their opinion. In addition, draft expert reports and some communications between expert witnesses and counsel will no longer be discoverable, and expert reports will now only need to contain information regarding “facts or data considered by the witness in forming” an opinion.

Of special interest are the last two changes to Rule 26. Specifically, Fed. R. Civ. P. 26(a)(2)(B)(ii)  will now limit expert reports to “facts or data” rather than having previously required the disclosure of “data or other information” considered by the witness. As explained in the notes of the Advisory Committee, the facts or data limitation is meant to keep these disclosures to those which are factual in nature and will now exclude the discovery of counsel’s theories or mental impressions.

Similarly, draft expert reports and communications between expert witnesses and counsel will no longer be discoverable. Rather, the Advisory Committee explained that Fed. R. Civ. P. 26(b)(4) will now provide work-product protection against the discovery of “draft reports and disclosures or attorney-expert communications.” However, there will be three exceptions to the protection of attorney-expert communications, namely, those involving an expert’s compensation; facts or data provided by the attorney to an expert that were used in forming the opinion; and any assumptions that counsel provided to the expert and were relied upon to form the opinion.

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