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Overview of Legal Process in Overview of Legal Process in IP CasesIP Cases

From notes by Steve BaronFrom notes by Steve Baron© Ed Lamoureux/Steve Baron© Ed Lamoureux/Steve Baron

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TodayToday’’s Agendas Agenda

Anatomy of an IP caseAnatomy of an IP case The Courts and the LawThe Courts and the Law Links to finding casesLinks to finding cases Parts of the case fileParts of the case file WhoWho’’s on first?s on first?

Anatomy of a CaseAnatomy of a CaseHilton v. Hallmark CardHilton v. Hallmark Card

Owner of IP Infringer of IP

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The Offending CardThe Offending Card

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Anatomy of a CaseAnatomy of a Case Hilton sues (2008) Hallmark for the use of her image and Hilton sues (2008) Hallmark for the use of her image and

trademarked slogan, trademarked slogan, ““ThatThat’’s Hots Hot”” Hallmark challenges the complaint on free speech grounds under the Hallmark challenges the complaint on free speech grounds under the

First Amendment.First Amendment. The trial court grants part and denies part of HallmarkThe trial court grants part and denies part of Hallmark’’s requests request An appeal takes place to the Ninth CircuitAn appeal takes place to the Ninth Circuit The appellate court agrees with the part of the ruling that enables The appellate court agrees with the part of the ruling that enables

Hilton to sue Hallmark for trademark infringement.Hilton to sue Hallmark for trademark infringement. The appellate opinion becomes part of the common law and is The appellate opinion becomes part of the common law and is

binding not only on the parties but on all other litigants who face binding not only on the parties but on all other litigants who face similar issues.similar issues.

The case goes to trial (on the The case goes to trial (on the factsfacts rather than the rather than the issuesissues) in Dec. 0f ) in Dec. 0f 2010, but the parties settle two days later.2010, but the parties settle two days later.

So the reasoning and outcomes on the issues (issued by the So the reasoning and outcomes on the issues (issued by the appellate court) becomes common/case law/precedent, even though appellate court) becomes common/case law/precedent, even though the case is never decided in a court of law.the case is never decided in a court of law.

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Facts v. IssuesAs illustrated in the Hilton case, cases involve legal issues and the facts of the case. •For example, the court determined that the 1st Amendment issue (Hallmark’s use as protected/free speech) did not hold in this instance and did not prevent Hilton from taking the case to trial. If that issue was decided in Hallmark’s favor, there would be no trial.•Cases also feature the factual specifics of the incidents. •Often, facts are more/most at risk in preliminaries and at trial court; issues are more at risk on appeal (although a trial court CAN decide to not hear the facts of a case because a given legal issue suggests/demands that the case isn’t worthy) •This feature can be frustrating to “lay” observers like us as we’d almost always like the courts to decide the merits of a case based on the facts. Courts, on the other hand, very often set the facts aside and decide the case based on “technical” legal issues. •Further, the higher one goes, the more lay people want the courts to decide about the facts and the more likely the court is to rule, instead, only on the issues.

• In Eldred, we wanted the Supreme Court to say that the Copyright Extension Act was the right or wrong thing to do for copyright law; instead, they ruled that the Congress has the right to extend the terms of Copyright law.

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Layers of Federal CourtsLayers of Federal Courts

United States Supreme CourtCitation e.g. Jones v. Smith, 250 U.S. 345 (1982)

United States District CourtsCitation e.g. Jones v. Smith, 415 F. Supp. 1123 (N.D. Ill. 2001)

United States Circuit Courts of Appeal Citation e.g. Jones v. Smith, 327 F.3d 215 (7th Cir. 1999)

Federal Appellate DistrictsFederal Appellate Districts

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Layers of State Courts (Illinois)Layers of State Courts (Illinois)

Illinois Supreme Court

Illinois Circuit Court

Illinois Appellate Court

State Court Appellate Districts, State Court Appellate Districts, IllinoisIllinois

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How to Find the Law on the WebHow to Find the Law on the Web Federal Legislation (the stuff from Congress)Federal Legislation (the stuff from Congress)

http://www4.law.cornell.edu/uscode/http://www4.law.cornell.edu/uscode/ U.S. Supreme Court OpinionsU.S. Supreme Court Opinions

http://www.supremecourtus.gov/http://www.supremecourtus.gov/ State LawState Law

http://www4.law.cornell.edu/states/listing.htmlhttp://www4.law.cornell.edu/states/listing.html Citation guideCitation guide

The Bluebook – A Uniform Manual of Citation, 19th Edhttps://www.legalbluebook.com/

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Who’s on first?Who’s on first?these are civil, not criminal actions these are civil, not criminal actions

PlaintiffPlaintiff a party who complains or sues in a civil actiona party who complains or sues in a civil action

DefendantDefendant a party who is being sued by a plaintiffa party who is being sued by a plaintiff

AppellantAppellant a party who appeals from a decision by a trial a party who appeals from a decision by a trial

or or ““lowerlower”” court court AppelleeAppellee

a party who responds to an appeal by a party who responds to an appeal by appellantappellant

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Who’s on first?Who’s on first?

Amicus CuriaeAmicus Curiae Friend of the CourtFriend of the Court Non-parties who petition the court for Non-parties who petition the court for

permission to file legal briefs on behalf of their permission to file legal briefs on behalf of their respective constituencies because the issues respective constituencies because the issues involved may have broad impact on theminvolved may have broad impact on them

AmiciAmici Plural of amicus curiaePlural of amicus curiae

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Who's on first?Who's on first?

PetitionerPetitioner Party seeking appeal in the U.S. Party seeking appeal in the U.S.

Supreme CourtSupreme Court RespondentRespondent

Party responding to a petition to the Party responding to a petition to the U.S. Supreme CourtU.S. Supreme Court

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Parts of the Case FileParts of the Case File ComplaintComplaint

Initial document filed by plaintiff to start a law suitInitial document filed by plaintiff to start a law suit

Cause of ActionCause of Action The theory or theories of legal recovery articulated by The theory or theories of legal recovery articulated by

plaintiff in the complaintplaintiff in the complaint• e.g. Copyright infringement, breach of contracte.g. Copyright infringement, breach of contract

MotionMotion An application to a court or judge for purpose of An application to a court or judge for purpose of

obtaining a rule or order directing some act to be obtaining a rule or order directing some act to be done in favor of applicant.done in favor of applicant.

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Parts of the Case FileParts of the Case File

Motion to DismissMotion to Dismiss Filed by a defendant early in a case to challenge the Filed by a defendant early in a case to challenge the

legal theories.legal theories. Assumes all facts alleged are true but says that no Assumes all facts alleged are true but says that no

legal claim existslegal claim exists

Motion for Summary JudgmentMotion for Summary Judgment Filed by either plaintiff or defendant Filed by either plaintiff or defendant No genuine issue of material fact is in disputeNo genuine issue of material fact is in dispute Court can decide the issues without need for a trialCourt can decide the issues without need for a trial

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Parts of the Case FileParts of the Case File

HoldingHolding Narrow legal answer to the question posed by Narrow legal answer to the question posed by

the casethe case Holdings of an appellate court are binding on Holdings of an appellate court are binding on

future cases that come before the trial courts future cases that come before the trial courts below the appellate court.below the appellate court.

Dicta: Dicta: Additional explanation within the Additional explanation within the opinionopinion• Not binding on future cases that present the same Not binding on future cases that present the same

issueissue

Writ of CertiorariWrit of Certiorari

An order of an appellate court An order of an appellate court granting or denying a petition to granting or denying a petition to appealappeal

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Parts of the Case File: FindingsParts of the Case File: Findings Cases often present multiple issues. Findings can vary across Cases often present multiple issues. Findings can vary across

issues.issues. AffirmedAffirmed

When an appellate court agrees with the lower court decisionWhen an appellate court agrees with the lower court decision ReversedReversed

When an appellate court disagrees with and overturns the When an appellate court disagrees with and overturns the lower court decisionlower court decision

RemandedRemanded When an appellate court sends a case (or an aspect of the When an appellate court sends a case (or an aspect of the

case) back to the lower court for further case) back to the lower court for further proceeding/reconsideration.proceeding/reconsideration.

Mixed Holding: Separate holdings for different partsMixed Holding: Separate holdings for different parts

If we have extra timeIf we have extra time(we’ll finish over the next week)(we’ll finish over the next week)

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2020