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LES (USA & Canada) Files Amicus Brief with U.S. Supreme Court in Kimble v. Marvel Enterprises, Inc.

Thursday, February 5, 2015  
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MOUNT LAUREL, N.J. – February 5, 2015 — The Licensing Executives Society (U.S.A. and Canada), Inc., filed an amicus brief with the U.S. Supreme Court in Kimble v. Marvel Enterprises, Inc., Case No. 134-720, on Wednesday of this week.

The case, on appeal from the Ninth Circuit, addresses the much-criticized holding of 
Brulotte v. Thys Co., 379 U.S. 29 (1964) that “a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.” The brief, which supports neither party, notes that Brulotte’s per se rule as originally set forth was narrow in its holding, and suggests that the criticism it has since received derives from unwarranted expansion of the rule in subsequent case law. It urges the Supreme Court to clarify the scope of the per se rule and, in the event the court chooses to overrule Brulotte, offers a set of factors to be considered under an alternative rule of reason analysis.

Oral argument in the case is set for March 31, 2015. 

“LES is pleased to have the opportunity to weigh in on this important case before the Supreme Court,” said Brian P. O’Shaughnessy, LES Regional Vice President, USA. “As the premiere licensing organization in the US, and whose members come from all sectors of the innovation economy, LES in uniquely qualified to assist the court in addressing the issues presented.”

The brief was prepared and filed by Brian P. O’Shaughnessy, LES Regional Vice President, USA, and Brian Seal, both of RatnerPrestia, Washington, DC. 

O’Shaughnessy added, “The Brulotte rule has occasionally been applied to draconian effect contrary to the intent of the parties, and has grown beyond its original holding.  We eagerly await the Supreme Court’s clarification of this key component of licensing law.”

About LES (USA & Canada):
Established in 1965, the Licensing Executives Society (U.S.A. and Canada), Inc. (LES) is a professional society of nearly 4,000 members engaged in the transfer, use, development and marketing of intellectual property. The LES membership includes a wide range of professionals, including business executives, lawyers, licensing consultants, engineers, academicians, scientists and government officials. Many large corporations, professional firms, and universities comprise the Society's membership. Licensing Executives Society (U.S.A. & Canada), Inc. is a member society of the Licensing Executives Society International, Inc. (LESI), with a worldwide membership of more than 10,000 members in 32 national societies, representing over 90 countries. For more information on LES, visit www.lesusacanada.org.


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