Settling Trademark and Other IP Disputes: Key Lessons From 1-800 Contacts, Balancing Antitrust and IP Interests
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Trademark and Copyright
- event Date
Thursday, September 9, 2021
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide IP counsel on the Second Circuit Court of Appeals' recent decision in the 1-800 Contacts case and the implications for trademark and other IP enforcement and settlement. The panel will offer best practices for how companies may reduce antitrust risks in settling trademark disputes and crafting such settlements in ways consistent with the court's concerns.
Mr. Hogan is Co-Chair of the firm’s Fashion, Retail and Consumer Products Group. His practice focuses on IP litigation and counseling, including trademark, copyright, patent, false advertising, right of publicity, licensing, and trade secret matters. Mr. Hogan has represented various corporations and individuals in a broad range of industries, including financial services, sports, fashion, cosmetics, entertainment, transportation, pharmaceuticals, and online services. A significant portion of Mr. Hogan's practice involves computer, internet, and new media-related issues. He has represented and counseled a wide variety of companies on these issues, whether they are internet-focused companies or traditional brick–and–mortar companies.
Mr. Shores practices in the firm’s Antitrust and Litigation groups. He represents companies in high-stakes antitrust and other complex litigation at the trial and appellate levels in federal and state courts throughout the country. Mr. Shores has represented companies in numerous industries, including internet retail, financial technology, banking, energy, defense, and aerospace, in matters involving all types of antitrust claims under Sections 1 and 2 of the Sherman Act and similar state laws, including price-fixing, market allocation, monopolization and attempted monopolization, tying, and exclusive dealing. He also has represented companies in matters involving intellectual property and the relationship between IP rights and competition laws. Mr. Shores recently served as Associate Deputy Attorney General & Senior Advisor for Technology Industries at the U.S. Department of Justice. In that role, he oversaw the Department’s antitrust review of major online platforms, leading to the government’s landmark monopolization case filed against Google in 2020.
Mr. Winemiller’s practice centers on patent, trademark, trade secret, and copyright litigation, but also includes IP licensing issues and trademark, patent, and copyright counseling and prosecution. He has represented clients in a broad range of industries, from electrical switches and electronic pet products to hosiery manufacturers and home builders. Mr. Winemiller has secured favorable trial and pre-trial results and significant settlement wins in disputes in federal courts. He also has extensive experience with commercial litigation, alternative dispute resolution, and appeals in state and federal courts. His ability to understand and articulate complex concepts in a way that decision-makers can understand helps him to proactively and effectively assist his clients in protecting their intellectual property assets.
In 1-800 Contacts Inc. v. FTC (2d Cir. June 11, 2021), the Second Circuit determined the trademark settlements in question were typical and pro-competitive, thereby rejecting the FTC's assertion that the settlements by 1-800 Contacts violated antitrust law. The court provides important guidance for those considering settlement of trademark disputes as well as other IP disputes.
The decision also has broader implications for antitrust claims involving the enforcement of IP rights. The Second Circuit concluded that protecting a company's IP right constitutes a legitimate business interest that can justify restrictions on an allegedly infringing party in a settlement agreement. The case addressed trademark rights, but the reasoning will likely apply to other forms of IP.
The decision also offers guidance for minimizing antitrust risk when seeking a settlement. Companies and counsel need to note that, while the FTC's case again 1-800 Contacts was dismissed, antitrust issues can still arise.
Listen as our authoritative panel reviews the 1-800 Contacts decision and discusses the implications for trademark and other IP enforcement and settlement. The panel will also offer guidance on how companies may reduce antitrust risks in settling trademark disputes and crafting such settlements in ways consistent with the court's concerns.
- 1-800 Contacts v. FTC (2d Cir. 2021)
- Decision
- Implications for trademark settlements
- Implications for other IP enforcement and settlements
- Best practices for settling IP disputes
- Antitrust considerations and minimizing antitrust risk
The panel will review these and other key issues:
- What are the implications of the 1-800 Contacts decision for trademark settlements?
- What are the broader implications for other types of IP enforcement and settlements?
- What lessons does the decision provide for companies considering settling trademark disputes with restrictions to analyze the antitrust risk of such arrangements?
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