The Court Assess Substantive and Procedural Advanced to Disqualify Expert Witness This article provides an in-depth review of a recent infringement, unfair competition and cybersquatting where Plaintiff sought disgorgement of profits. The case highlights procedural and substantive arguments advanced during litigation and basis the Court used to partly disqualify the testimony of defendant’s expert witness. It also serves as a caution and learning opportunity for current and prospective financial damages expert witnesses. Plaintiff, Mission1st Group, Inc. (“M1G”), owns the federally registered trademark MISSION1st in connection with business advisory, information, technology, telecommunications, engineering support, and risk mitigation services. Plaintiff provides these…
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A Q&A with Joel Steckel The immediate economic impacts of the COVID-19 pandemic extend beyond their most visible manifestations in the shutting of businesses and the dramatic rise in unemployment. A more subtle consequence that has arisen in the marketplace pertains to companies’ reputations. Brands and the public’s perception of them are impacted not only by a firm’s own actions but also by the actions of other market players. To explore the issues around negative effects on consumers’ brand perception in more depth, Vice President Rene Befurt and Associate Anne Cai spoke with Analysis Group’s academic affiliate Joel Steckel about…
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Avoiding Trademark Infringement Sometimes you need to use your competitors’ trademarks to sell your products or services. This is particularly true when you are selling, for example, replacement parts, and need to say that your replacements are compatible with the trademark owners’ products. It can also be important when providing services such as repair. If you repair BMW automobiles, you need to let others know. Fortunately, if you do it properly, you can use them and avoid trademark infringement. This article discusses fair use of trademarks. Sometimes you need to use your competitors’ trademarks to sell your products or services.…
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Asset Values (Part II of III) This is the second of a three-part article that focuses on valuing nonprofit corporation assets. Valuation analysts are commonly engaged to provide fair market value guidance related to nonprofit business transactions. Nonprofit businesses are often involved in arms-length transactions. Common transactions include royalty payments for the use of intellectual property, royalty revenue earned by licensing intellectual property, sales of assets, and purchases of assets. If the subject transaction is between a nonprofit and a related party, the transaction is required to be a fair market value transaction. This series provides an example of certain…
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Case Law Four cases are presented in this article that provide valuation, litigation support professionals, and M&A advisors insight regarding how courts are addressing damages claims, challenges to experts, appraisal action challenges, and claims of fraud and breach of contract in connection with M&A transactions. Although the cases are from Delaware and California, they provide insight for readers to use in their practices.
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Advise for Budding and Experienced Experts The third edition of The Comprehensive Guide to Lost Profits and Other Commercial Damages is marked departure from the prior editions. This two-volume set is replete with valuable information and insight from experienced practitioners.
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The Case of Trademarks and Brands Since the adoption of fair value accounting governed by SFAS 141 (in 2001) and IFRS 3 (in 2004), hundreds of thousands of different intangible assets have been valued, audited, and reported in financial statements of public companies all over the world. After fifteen years of fair value accounting, the debate about the accuracy of such values and their relevance for readers is no less controversial than at its beginning. This is a pity because, in its essence, fair value data is an excellent resource for corporate finance professionals to understand more about the value…
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Correlating Patent Values with Prior Citations What is forward patent citation? Why is it relevant? In this article, the author answers the above questions and details how these may be relevant to a damages expert in a patent infringement matter. These experts may need to ascertain the value attributable to the patented technology at issue. While comparable license agreements may serve useful in providing a market-based approach to arriving at a value, the damages expert must also seek to apportion out the comparable patents related to the patented technology within the comparable license agreements from that of the intellectual property…
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Post-Grant Review, Inter Partes Review (IPR) and Ex Parte Re-Examination (EPR) alternatives to Litigation Litigation of Intellectual Property is costly. What alternatives do parties have to costly and protracted litigation? This article discusses various options to litigation.
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The Art of Licensing Your Trademark What is the value of a name? A trademark? In this article, the authors discuss the traditional valuation approaches and their limitations deriving the fair market value of the trade name.
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How the Trademark Trial and Appeal Board’s Cancellation of a Historic Mark Impacts Brand Value and the NFL On June 18, 2014, the Trademark Trial and Appeal Board canceled the federal registration for six Redskins trademarks. In this article, the authors discuss the impact that the cancellation of the trademark may have on the brand, NFL’s revenue sharing, and the value of the Redskins franchise. The authors also outline the options available to the Redskins’ team owner.
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Breaking down invisible value Read Part 1 here. This overview is the second half of Robert Reilly’s series that examines the types of intellectual property analyses, different standards of value that may apply in valuation as well as the alternative types of intellectual property ownership interests and the alternative terms of intellectual property ownership interests. Finally, it offers a discussion regarding the factors that the business appraiser may consider in the specific identification of intellectual property.
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Intellectual Property Valuation Principles—Part 1 This article examines the types of intellectual property analyses, different standards of value that may apply in valuation as well as the alternative types of intellectual property ownership interests and the alternative terms of intellectual property ownership interests.
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The Wall Street Journal’s Small Business Blog featured recently a guest column by Antone Johnson on the use, misuse, and misvaluation of intellectual property. It’s probably of interest to valuators and financial consultants who are working with small business owners to value and growth their businesses. Venture capitalists, angel investors and start-up lawyers these days tend to be obsessed with “intellectual property,” or IP. And for good reason: In the information economy, the core assets of a new venture are likely to be talented people, the IP they create, and little else. To maximize future value, founders should…