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Henderson Franklin’s legal team returns to Sanibel Harbour Resort & Spa on Friday, February 25, 2022 with a new twist. The main room will offer the firm’s most popular workshop, HR Law & Solutions.

New for 2022, attendees will have the option to attend breakout sessions focusing on niche corporate matters and contracts, family businesses, startups and how to make informed real estate decisions. Click here to download the brochure.

Topics and speakers

General Session #1, Lingering Effects of COVID on Florida Employers, presented by Scott Atwood, Esq.

From business shutdowns and PPP loans to vaccinations, COVID has presented unique challenges to Florida businesses. Henderson Franklin’s employment group chair Scott Atwood will address the multi-faceted employment issues that employers may face, including: current obligations over masks and mandatory vaccinations; how to deal with possible long-term disability claims and leave issues arising from COVID; increased union activity; and the pros and cons of a remote/hybrid workforce.

General Session #2, Saving a Buck can Cost you a Million. Update on Recent Employment Cases and Mistakes that Employers Keep Making, presented by Scott Atwood, Esq. and Robert Shearman, Esq.

Continue Reading Registration is Open: Southwest Florida Legal Summit

For many litigators, the best way to start a new year is with a new summary judgment standard! On December 31, 2020, the Florida Supreme Court issued an opinion, adopting the federal court’s summary judgment standard as articulated by the United States Supreme Court in Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986). This has been a long time coming for businesses as the federal standard may decrease legal expenses by expediting civil lawsuits and avoiding unnecessary trials. This decision may also alleviate the burden on Florida’s courts by allowing more cases to be resolved at the summary judgment phase.

Former Summary Judgment Standard

Summary judgment in Florida is governed by Rule 1.510. In pertinent part, Rule 1.510 previously provided the “summary judgment evidence on file must show there is no genuine issue as to any material fact.” Florida courts have taken a broad approach in interpreting “no genuine issue” by prohibiting the granting of summary judgment where there is the existence of any evidence of an issue of fact. In other words, if there was the “slightest doubt” raised, Florida courts would not grant summary judgment.

Federal Summary Judgment Standard

Continue Reading New Florida Summary Judgment Standard Could Lessen Legal Expenses and Judicial Backlog

In one of the most significant Supreme Court cases for Florida employers in many years, the U.S. Supreme Court held by a 6-3 margin that Title VII of the Civil Rights Act of 1964 (commonly known as “Title VII”) protects gay and transgender individuals from discrimination in the workplace. In the anxiously anticipated decision, which is a consolidation of three cases, the Court held in Bostock v. Clayton County, Georgia, that Title VII’s prohibition against discrimination on the basis of sex includes discrimination because of an individual’s sexual orientation and gender identity. While the decision only addresses traditional claims of discrimination (plaintiffs were all fired from their jobs), employers should expect that the ruling will extend to claims of harassment as well. If you are a Florida employer, this decision likely means that you need to update, review, and discuss your employment policies with your employees.

New Protections

Until recently, the lower courts that had ruled on the issue routinely held that Title VII’s protections did not extend to discrimination against individuals who had adverse actions taken against them merely because they were gay or transgender. In fact, one of the consolidated cases came from the Eleventh Circuit, which had cited a long-standing lower court precedent in rejecting the claim of a gay male who was fired from his job in Georgia solely because his employer learned that he was gay. Florida is part of the Eleventh Circuit, and so gays were not protected under Title VII’s coverage in Florida until today.Continue Reading Supreme Court Holds that Civil Rights Law Covers LGBT Employees

It has long been settled that mistreatment based prohibited characteristics (such as race or sex) is actionable under Title VII even without a tangible employment action – e.g., termination, demotion, or pay cut. These are often referred to as hostile-environment claims. A hostile-environment claim under Title VII requires evidence of mistreatment that is sufficiently severe or persuasive that it can be said to alter the terms or conditions of employment. This measure is meant to draw a dividing line between trivial slights and substantial discrimination.

Nearly a decade ago, the Supreme Court clarified that mistreatment based on retaliation for protected conduct is likewise actionable under Title VII without a tangible employment action. However, the test is different. A retaliatory-hostile-environment claim is actionable when the mistreatment “well might have dissuaded a reasonable worker from making or supporting a charge of discrimination.” Burlington Northern & Santa Fe Railway Co. v. White, 548 U.S. 53, 57 (2006).

Accordingly, when dealing with hostile environment caused by retaliation, the court must ask if the mistreatment would have dissuaded a reasonable worker from making a claim of discrimination. When confronted with a hostile-environment-claim stemming from race or sex, the court must ask if the mistreatment was sufficiently severe or persuasive to alter the conditions employment.Continue Reading Eleventh Circuit Clarifies Standard for Retaliation Under Title VII

iStock_000050275830_LargeHana Financial, Inc. v. Hana Bank is the final case we’ll discuss reviewing the recent Supreme Court decisions. This case involved review of a very specific issue, namely, whether “tacking” is a question of fact or law.

What is “Tacking”?

Under general principles of trademark law, the first party to use a mark generally has the superior rights. Technically, each time a party modifies a trademark, a new trademark is created and use of that mark relates only to that particular mark and not to any prior iterations of the mark.

However, the doctrine of “tacking” has evolved to allow trademark owners the ability to change their marks and still claim priority based on prior versions of a mark. Basically, a trademark owner may “tack” its use of an altered mark onto its use of the original, prior mark when both marks convey a “continuing commercial impression.” The determination of whether there is this “continuing commercial impression” involves an assessment of how consumers would perceive the original and altered forms of the marks as they appear in the marketplace. If the two would be considered as conveying this “continuing commercial impression,” then the rights in the mark would relate back to use of the original mark.

Facts of the CaseContinue Reading Judicial Update: SCOTUS Rules Tacking is a Fact Question for the Jury

TrademarkUnder the Lanham Act, before any trademark registration will issue, an application must first be published for opposition. This publication provides the public with an opportunity to challenge registration of a trademark by another party. An opposition action is an adversarial proceeding before the Trademark Trial and Appeal Board (TTAB) and though not generally as lengthy or formal as litigation in the courts, follows essentially the same process. While there are a number of bases for an opposition, the most common is based on an allegation from one party that the trademark of the other party is likely to be confused with its own. Oppositions involve pleadings, discovery, depositions, legal briefs and ultimately oral arguments in front of a panel of three administrative judges of the TTAB. This panel ultimately issues a written opinion and a decision as to whether the opposed mark is or is not entitled to registration.

An opposition action is very narrow, however, as it only relates to the question of whether a particular trademark is entitled to registration. Issues outside that (such as any actual infringement of a trademark or damages) are not addressed. Historically, those issues are addressed via trademark infringement litigation in federal court. There has always been a question, however, as to the impact of a TTAB decision regarding registrability of a given trademark in any other trademark litigation between the parties at issue. If the TTAB determines that A’s trademark is confusingly similar to B’s, does that automatically mean that A’s mark is confusingly similar to B’s in the courts? Per the recent B.B. Hardware v. Hargis Industries decision, the answer is potentially yes.

Facts of the CaseContinue Reading Judicial Update: TTAB Decisions Have Greater Impact After B&B Hardware Decision

7122084695_11f7a0566e_zKimble v. Marvel Enterprises involved a device that allowed its user to shoot “webs” a la Spider-Man. Kimble invented and obtained a patent for this web-shooting device and tried to sell or license that patent to Marvel Entertainment, the creator/owner of Spider-Man. Marvel declined, but ultimately came to market with its own “Web Blaster,” which similarly allowed its user to shoot webs a la Spider-Man. Kimble brought an action for patent infringement which was settled by Marvel purchasing Kimble’s patent for a lump sum plus a royalty on future sales of the “Web Blaster.” The agreement was open ended as there was no termination to the royalty payment.

Are Royalties Due After Patent Expires?

Kimble’s patent expired in 2010. Thereafter, Marvel brought a declaratory judgment action seeking a determination that it was no longer required to pay royalties on an expired patent. Marvel’s position was based on Brulotte v. Thys Co., 379 U.S. 29 (1964), where the Supreme Court held that a licensor is not entitled to patent royalties from a licensee after expiration of the licensed patent. The district court agreed with Marvel, finding no distinction between the fact that Brulotte involved a patent license agreement where the party receiving royalties retained ownership of the patent at issue and the Kimble/Marvel relationship where the party receiving royalties no longer owned the patent at issue. Thus, Brulotte controlled and no further royalties were required after expiration of the Kimble patent. The Ninth Circuit Court of Appeals affirmed reluctantly, agreeing that Brulotte was controlling precedent but felt that the decision was “counterintuitive.”

DecisionContinue Reading Judicial Update: Supreme Court Rules on Spider-Man Web Blaster Patent Royalties

Gavel iconContinuing with our series reporting on the recent U.S. Supreme Court decisions, today we will decipher the impact of the second patent case, Commil v. Cisco, and the claim of “induced infringement.”

Belief in Patent Invalidity is not a Defense

The Commil v. Cisco decision involved the issue of what knowledge is required by a defendant in a claim of induced patent infringement. Briefly, a party can be liable for directly infringing the patent of another, where it utilizes patented matter of another without authorization, or by inducing a third party to infringe a patent of another. Induced infringement often involves situations where a party may simply provide the means to third-parties and their use of those means result in infringement of a patent.

Facts of the CaseContinue Reading Judicial Update: Commil v. Cisco

FlickrLess than five years after passing the America Invents Act (“AIA”), both the House and Senate have introduced bills to further reform the Patent Act, specifically in response to addressing the issue of abusive litigation by “patent trolls.” In the House, “The Innovation Act,” H.R. 9, was introduced in February, 2015. This bipartisan bill largely parallels legislation the House passed during the last Congress that ultimately died in the Senate. The House will likely pass this bill in the very near future, sending it again to the Senate. In the Senate, in May, 2015, the “Protecting American Talent and Entrepreneurship Act,” or PATENT Act, S. 1137, was introduced. This bill also has bipartisan support and was recently approved by the Senate Judiciary Committee.

Overall, both bills are quite similar as they both have the same general intent: to limit baseless, abusive litigation by trolls. However, there are some significant substantive differences between the bills in how this goal is reached. These differences focus primarily on the areas of fee shifting and recovery; pre-litigation demand letters by patent owners; claim construction during AIA review proceedings; and venue.

Loser PaysContinue Reading More Patent Reform on the Horizon in Washington

Teva_logoWhile the 2014-2015 U.S. Supreme Court term might be most remembered for the groundbreaking Obergefell v. Hodges decision, it can also be remembered for taking on six intellectual property cases, including two trademark cases. While the Court’s IP docket has grown in recent years, decisions touching on the subject are still fairly rare. Thus, when the Court takes an IP case, it is usually one that will carry significant impact. We will offer a brief summary of all the Court’s IP decisions, beginning with one of the patent cases, Teva Pharmaceuticals v. Sandoz.

New Standard of Review in Claim Construction

Teva Pharmaceuticals v. Sandoz involved a suit over alleged infringement of a patent relating to the manufacture of a multiple sclerosis drug and, in particular, the definition of the term “molecular weight” as it appeared in the patent claims. The language used in patent claims dictate the baseline scope of the patent holder’s rights and therefore a defendant’s putative infringement. Per the Supreme Court’s Markman v. Westview Instruments decision, patent claim construction is a legal issue to be determined by the Judge. As a legal issue, therefore, all district court determinations regarding claim construction were subject to de novo review in the Appellate Court – until Teva.
Continue Reading Judicial Update: Intellectual Property Decisions from the Supreme Court’s 2014-2015 Term