Author Archives: Library Relations

Treatise Update – Kane on Trademark Law: A Practitioner’s Guide (Seventh Edition)

Kane on Trademark Law is a comprehensive resource on trademark law and tactics that provides court-tested practical suggestions on how to quickly spot potential conflicts and save time on searches, overcome common descriptiveness rejections, update or amend registrations, and prepare witnesses for depositions. It includes illustrative lists of cases, full-color illustrations of previously litigated marks, sample forms, and step-by-step checklists. The treatise is updated regularly to provide in-depth analysis of the most recent developments in the field.

The new release provides expert analysis and practical insights regarding a wide range of trademark issues. Topics of interest include:

  • Trademark selection: Highlights comprise cases from the Second Circuit and the TTAB on color protection (see Sulzer Mixpac AG v. A&N Trading Co. in § 2:10.2[B] and In re Medline Industries, Inc. in § 2:10.4 and App. B, Illustration 67).
  • Trademark registration: Revisions include an update to the case regarding the expenses that an appealing party in an ex parte appeal must pay when appealing to the district court (see § 6:6.1[B]) and a precedential case from the TTAB on the registrability of a mark that includes a depiction of the U.S. flag (In re Alabama Tourism Department) (see § 6:5.2).
  • Trademark use and priority: For an update on the PRETZEL CRISPS dispute and a decision from the district court on issues of genericness and consumer confusion, see § 5:3.3.
  • Initial interest confusion: Consult § 8:1.1[A] for The Eighth Circuit’s blessing of the initial interest confusion doctrine in Select Comfort.
  • Infringement: See § 8:3.4 for an update to a Second Circuit case on landlord liability for a tenant’s counterfeiting (Omega SA v. 375 Canal, LLC).
  • Defenses to infringement: There is a new section on upcycling and repairs with citations to the Nike Satan shoes case and the Hamilton watch case (see § 12:1.5 and App. B, Illustration 68).
  • Costs: For a discussion about the significant costs of losing on appeal, see § 18:7.
  • Fraud: Go to §§12:2.6[G] and 19:2.2[B] for the TTAB’s ruling in a precedential decision about whether conduct amounting to reckless disregard constitutes fraud on the PTO as a matter of law.

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Treatise Update – Holtzschue on Real Estate Contracts and Closings (3rd Edition)

Holtzschue on Real Estate Contracts and Closings:A Step-by-Step Guide to Buying and Selling Real Estate is an invaluable resource for attorneys and general practitioners who handle real estate deals as well as an important reference for brokers, title insurers, and inspectors.  It distills more than thirty years of transactional experience into one plain-English treatise that clearly explains governing law and customary industry practices.  The book provides useful legal, technical, and strategic guidance and checklists for sellers’ and purchasers’ attorneys preparing them to execute dispute-free residential deals quickly and easily.

This new release offers the latest information crucial to your practice.  Highlights include:

In addition, the Table of Authorities and Index have been updated to reflect the latest revisions.

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Treatise Update – Langer on Practical International Tax Planning (Fifth Edition)

Langer on Practical International Tax Planning gives you the latest news on the legal, tax, business, financial, social, political, technological, geographical, and regional factors to consider when developing and implementing customized planning strategies for clients. It is an invaluable tool for tax and estate planners, tax attorneys, accountants, and sophisticated investors.

This new release updates the treatise with up-to-date practical information and analysis to help preserve your clients’ assets. Highlights include:

  • Revised section 20:9, Abusive Transactions, explores the difference between “forfeiture” and “restitution,” pointing out that the two items have different purposes.
  • Revised section 38:1.3[F], No Reduction for Deductions or Expenses, discusses final regulations issued in January 2021 providing additional guidance regarding the limitation on the deduction for business interest expense under section 163(j); specifically, the regulations address the application of the limitation in contexts involving passthrough entities, regulated investment companies (RICs), and controlled foreign corporations.
  • New section 43:2.2[B], Microcaptive Insurance Companies, examines the four-part test used by the Tax Court to determine whether these arrangements actually constitute deductible “insurance” (that is, as involving risk-shifting, risk-distribution, insurance risk, and whether the arrangement “looks like” commonly accepted notions of insurance).

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Treatise Update – Directors’ and Officers’ Liability: Current Law, Recent Developments, Emerging Issues (Third Edition)

Directors’ and Officers’ Liability is a vital treatise for corporate counsel, private practitioners, and directors and officers which provides a straightforward explanation of the obligations of directors and officers of public companies, the penalties they face if they fail to meet their obligations, and the protections that are offered them under the law or by agreement. 

The book covers the key facets of board committees; the duties of directors and officers under state corporate law and federal and state securities laws; private civil actions and public enforcement; exculpation, indemnity, and insurance; cybersecurity; contested mergers and acquisitions; Securities Act suits filed in state court; special issues in pharma and biotech; and more.

Highlights of the new release include:

  • Gender and Ethnic Diversity of Boards. State legislatures, courts, proxy advisory firms, and stock exchanges have all recently weighed in on requiring boards to maintain certain levels of diversity. See §§ 1:10 and 2:3.3[C] for discussion of the latest developments.
  • Caremark Claims. Hughes v. Hu and Teamsters Local 443 Health Services & Insurance Plan v. John G. Chou are the latest in a string of recent decisions from the Delaware Court of Chancery interpreting and applying Caremark. See §§ 3:3.14, 8:8.3, and 8:8.4 for detailed analysis.

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Treatise Update: Patent Licensing and Selling

Patent Licensing and Selling (Second Edition) offers complete and practical guidance for drafting, reviewing, and negotiating solid patent license agreements. Whether representing licensors of licensees, readers learn how to draft fair and litigation-free patent license and patent purchase agreements that serve clients’ interests, satisfy other parties, and shield clients from legal exposure.

Author Mark Holmes has revised and expanded the text and added useful new commentary on the following:

  • Licensee’s right to independent development: Licensors might wish to temper their granting of independent development rights with the condition that the licensee not diminish its efforts to market and sell the licensor’s products. See new § 2:11.
  • Compulsory licenses: Licensees that have already entered into license agreements with the patent owner will want to make sure that, if compulsory licensing is invoked, they are not paying a royalty rate higher than the compulsory rate. See new § 4:11.
  • Maintenance and prosecution costs: The license agreement might require the licensee to pay prosecution and maintenance fees. What if the licensor can dictate in which countries patents will be prosecuted and maintained? What is to protect the licensee from being forced to pay for prosecution and maintenance in countries in which there is likely little commercial interest in licensed products? See new § 6:3 for a discussion of how a licensee can protect itself from such perceived licensor abuse.
  • Indemnification by statute: In some states, if the license agreement is silent on indemnification, the issue may be addressed by statute, but the statutory obligation can be broad. See §§ 8:3.1 to 8:4 for a discussion of this important topic.
  • Arbitrator discretion: If you seek to limit discovery in an arbitration, beware of language that allows the arbitrator to deviate from the precisely stated limitations of discovery. See new § 14:9.1.
  • Force majeure: For a discussion of force majeure in the age of COVID-19, see § 15:10.2.
  • New contract provisions: This release includes the following new provisions for possible inclusion in a license agreement: Examples 1:69 and 1:69A (Construction and Rules of construction); Example 1:136 (Force majeure carveout); Example 1:318A (Valid patent claim); Example 2:21B (Right to develop independently); Example 3:16 (Patent family); Example 4:50 (Compulsory license royalty); Example 6:8 (Licensee responsible for maintenance and prosecution; loses rights where turns prosecution and maintenance over to licensor); Example 6:27 (Patent markings indemnification); Example 6:43 (Patent markings not an admission); Examples 8:5 and 8:5A (Disclaimer of warranties); and Example 18:1 (Seller patent marking compliance).

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New Title! Taxation of Intellectual Property

PLI Press is proud to announce the publication of the new treatise: Taxation of Intellectual Property.

This comprehensive treatise covers the tax consequences of creating, buying, exploiting, and selling various intellectual property assets (including patents, trade secrets, copyrights, trademarks, and computer software), as well as the tax considerations affecting intellectual property litigation.

This book is the essential reference for tax and IP practitioners who want to gain intellectual property taxation knowledge—and strategically counsel their clients on the mounting tax consequences that can affect their bottom line. It differs from other books on taxation of intellectual property in that, chapters dealing with intellectual property creation, acquisitions, and sales and licenses each begin with a general framework for analyzing the tax treatment of all forms of intellectual property. Finally, separate chapters in the book are devoted to the taxation of intellectual property held by corporations and partnership and the taxation of intellectual property held by non-profit organizations.

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Treatise Update – Corporate Legal Departments: Practicing Law in a Corporation

Corporate Legal Departments: Practicing Law in a Corporation provides invaluable guidance on a wide range of responsibilities and dilemmas in-house attorneys face. It advises on matters such as detecting and preventing internal legal problems, developing corporate business plans, pursuing new business opportunities, using cost-effective litigation strategies, and managing corporate crises. Highlights from this release include:

Chapter 5 and Chapter 11

  • Legal risk assessment: The release discusses the importance of conducting a legal risk assessment and its value to the company’s strategic plan. See new § 5:4 and §11:7.3.

Chapter 16

  • Corporate governance: This update adds discussion about the importance of corporate sustainability and environmental, societal, and governance (ESG) initiatives. See § 16:2.4.

Appendix A

  • In-House Counsel’s Handbook: This release includes extensive updates to Appendix A, which is designed to help in-house lawyers understand pertinent points in key areas of their practice. The following are of note:
    • Employment Law is updated. See Appendix A2.
    • Environmental Law is updated. See Appendix A3.
    • Securities Laws is updated. See Appendix A4.
    • Whistleblower Provisions of the Dodd-Frank Act is updated. See Appendix A5.
    • Intellectual Property in Marketing Communications is updated. See Appendix A10.
    • Privacy and Data Protection Law has been completely revised and updated. See Appendix A11.
    • Arbitration is updated. See Appendix A13.
    • Accounting for Nonaccountants is updated. See Appendix A16.
    • Immigration Law is updated. See Appendix A17.
    • Real Estate Leasing Transactions is updated. See Appendix A19.
    • In-House Counsel Pro Bono Programs is updated. See Appendix A20.

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Treatise Update – Investment Adviser Regulation: A Step-by-Step Guide to Compliance and the Law (Third Edition)

Investment Adviser Regulation: A Step-by-Step Guide to Compliance and the Law is an essential resource for investment advisers, securities attorneys, compliance personnel, and federal and state regulators, and a useful reference for today’s investors. It guides practitioners through a maze of statutory, SEC, and state standards as well as provides advice on the practical aspects of building a practice. 

This treatise update offers expanded coverage of the rules and regulations affecting investment advisers. Highlights of this new release include:

  • Chapter 9, Chapter 13, and Chapter 14 now present enhanced guidance on drafting advisory contracts and coverage of the SEC’s and DOL’s reexamination of recent rules related to proxy voting.  Notably, Chapter 14, Privacy of Client Financial Information: An Overview, has been extensively updated to examine the federal, state, and foreign data privacy laws that are most relevant to investment advisers operating primarily in the United States, and, according to these laws, what those advisers must do to protect the privacy of their clients’ financial information.
  • Chapter 45, Chapter 46, Chapter 46A, Chapter 48 and Chapter 49B feature the latest counsel to managers, sponsors, and overlay managers of Model-Based Advisory Programs; the recent adoption of Rule 152 that contains a single safe harbor simplifying the integration framework for securities offerings under the Securities Act of 1933 (see section 46:4.1[I] of the Hedge Funds chapter); and updated coverage of the implications of federal registration for a hedge fund manager (see section 46A:5).  These chapters provide updated information for advisers to private equity funds and collective trust funds and investment advisers in the retirement market.
  • Chapter 61, Chapter 63, Chapter 64, Chapter 65, Chapter 66, and Chapter 67 call attention to new information relevant to investment and digital advisers in the areas of marketing, blockchain and digital assets, data protection, and financial services cybersecurity. Additionally, a new Chapter 65 covers model risk considerations for investment advisers and Chapter 61 contains added discussion of the SEC’s redefinition of “readily available market quotations” as it is used throughout the Investment Company Act (see section 61:5).

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Happy Pro Bono Week from the PLI Librarians!

PLI celebrates Pro Bono Week by doing what we do best – producing and sharing high-quality content to encourage pro bono representation and to assist practitioners with pro bono cases to better represent their clients. 

Popular Pro Bono Books on PLI PLUS Right Now:

Popular Pro Bono Transcripts on PLI PLUS Right Now:

Treatise Update – Securities Investigations: Internal, Civil and Criminal

Securities Investigations: Internal, Civil and Criminal (Second Edition) provides the legal knowledge and practical strategies necessary to deal effectively with government and internal investigations. The new release of the treatise extensively updates it with the most recent developments governing internal, civil, and criminal investigations involving potential violation of the securities laws.  It also shares nuances and practical tips from experts in such investigations.

Key developments covered in the new release include:

  • “Property” and “Personal Benefit” under the Securities Statutes. Due to the U.S. Supreme Court vacating and remanding United States v. Blaszczak to the Second Circuit in light of Kelly v. United States, the question remains whether confidential information constitutes “property” under the securities statutes and how that may impact the holding that there is no personal benefit requirement in Title 18 cases. See Chapter 2 and Chapter 3 for discussion.
  • Cross-Border Regulation of the Financial Markets. See Chapter 13 for numerous new case summaries of SEC cross-border enforcement actions on insider trading, securities fraud, market manipulation, and the Foreign Corrupt Practices Act (FCPA).

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