Publications: Corporate


  • Supreme Court Limits Venues in Patent Suits

    May 23, 2017

    On Monday, May 22, 2017, the United States Supreme Court issued a decision in which it reined in the venues where an action for patent infringement against a corporate defendant can be brought - T.C. Heartland LLC v. Kraft Foods Group Brands LLC. Previously, and going back to 1990, a “special purpose” venue statute applicable only to patent suits had been construed to allow patent owners to file suit in venues wherever the court had “personal jurisdiction” over the defendant. That construction effectively resulted in a diminishment of the special purpose patent venue statute to that of a general venue statute....



  • Regulation A+: An Alternative to Private Placements and Initial Public Offerings

    May 4, 2017

    Regulation A+ went into effect in 2015. Although Regulation A+ has been around for a couple of years, its use is just beginning to become more mainstream. Since Regulation A+ was promulgated, the SEC has qualified 81 Regulation A+ offerings seeking to raise approximately $1.5 billion. As developers and investors gain more awareness of, and comfort with, Regulation A+, it is likely to completely change the way developers and investors raise the equity necessary for a new project or acquisition. Regulation A+ (sometimes referred to as a “mini-IPO” or as an “on-ramp to IPO”) allows investors to raise up to...



  • Federal Circuit Ruling Affirms That Filing Patents Sooner Than Later Is Critical

    May 3, 2017

    In a precedential opinion from the Unites States Court of Appeals for the Federal Circuit, the Court reaffirmed, on May 1, 2017, the need to get your patent applications filed sooner than later (Helsinn Healthcare S.A., v. Teva Pharmaceuticals USA, Inc.). The Court concluded that if there is a public commercial sale or offer of sale of the patented subject matter (what is covered by the patent claims) more than a year before an application is filed, and the invention was ready for patenting, then this “on sale” activity will invalidate a patent for the invention. "Ready for patenting" means...



  • Due Diligence Steps for Prospective Franchise Investors

    April 6, 2017

    While owning a franchise can be rewarding and profitable, many prospective franchisees overlook the fact that their new business venture comes equipped with a permanent supervisor – the franchisor. Thought you would be running your own show? Think again. Before you enter the world of franchising, it is best to conduct a thorough due diligence process to ensure that your new “boss” will be a good fit. A good start is to talk to other franchisees to determine how the franchisor operates and how supportive it is of its franchisees. Talking to franchisees from a number of different franchise organizations will...



  • Google Mandates Play Store and In-App Privacy Policies

    March 28, 2017

    Google updated its Google Play Developer Policy Center policies on March 1, 2017, and the updates went into effect on March 15, 2017. These updates included requirements for developers to post privacy policies both on the Play Store listing and within the app. According to Google, app developers “must be transparent in how [apps] handle user data.” If an app stores personal or sensitive user data (i) provided by a user, (ii) collected about a user or (iii) collected about a user’s use of an app or device, then the developer must post a privacy policy in both the Play Store...



  • Tax Reform In the Making: A Comparison of the Potential Revisions

    March 2, 2017

    With the coming of a new administration in Washington, D.C., there has been much speculation regarding potential tax law changes. Below is a comparison of various revisions being discussed by both President Trump and the House of Representatives in the House blueprint known as the “Better Way for Tax Reform.” Final legislation will depend in large part upon the budgeting process and various procedural rules that govern the passage of laws that are expected to create fiscal deficits. However, the comparison of the varying proposals will give you a flavor of potential things to come. Rest assured that the attorneys...



  • Alternative Financing Strategies in a World of Rising Interest Rates

    February 16, 2017

    Mortgage interest rates increased through 2016 and are expected to increase periodically throughout the coming year. Because higher interest rates can make traditional financing for a commercial real estate project more expensive, other financing options should be considered to stabilize or reduce the cost of capital necessary to complete a commercial real estate project. Larger real estate projects often use a variety of financing sources to fund the acquisition and improvement of commercial real estate. This combination of different financing sources is referred to as a “capital stack.” As mortgage debt becomes more expensive, a diverse capital stack can reduce the...



  • CAM Reconciliation: Landlord Considerations for Common Area Maintenance Fee Provisions

    February 16, 2017

    The treatment of Common Area Maintenance (CAM) fees is often a point of contention for landlords and tenants alike. Landlord-tenant CAM reconciliation for retail leases often occurs shortly after the first of the year. As 2017 is underway, it is important for landlords to consider how to best address CAM fee reconciliation and agreements to minimize their own operating costs without harming the tenant’s ability to generate profit. Traditionally, a commercial lease includes a CAM fee provision that is structured on a pro rata basis, which is often determined by dividing the leasable floor area of the premises by the tenant’s...



  • Wisconsin's Rental Unit Weatherization Standards

    February 16, 2017

    On February 8, 2017, the Joint Committee on Finance, at the request of Governor Scott Walker, introduced the first version of Wisconsin’s Budget Bill, 2017 Senate Bill 30 / 2017 Assembly Bill 64 (the “Budget Bill”). The legislation, as proposed, among many other effects, would repeal Wis. Stat. § 101.122 and eliminate Wisconsin’s requirement that rental property meet certain minimum rental unit energy conservation standards at the time of ownership transfer. The current law in Wisconsin requires that certain rental properties constructed prior to December 1, 1978 meet minimum energy efficiency requirements promulgated by the Department of Safety and Professional Services...



  • Attention Business Owners: Are Your Marks Protected?

    February 10, 2017

    One of its most obvious, but often overlooked, assets that a business has is the very name that the business uses to hold itself out to the public. That name, including the names of various products and services it may market, are valuable assets of that business and need to be treated as such. Most business owners do not realize it, but the names ASPIRIN, CELLOPHANE and ZIPPER each started out as a name associated with a business that marketed a very successful product. The products were so successful, however, that the unique name given to each of the products...



  • The United States Patent and Trademark Office Post-Prosecution Pilot Program Has Ended

    February 10, 2017

    On January 12, 2017, the United States Patent and Trademark Office (USPTO) let expire one of its pilot program initiatives meant to improve the patent application process at the USPTO. Under the Post-Prosecution Pilot Program (P3), after an application had been refused, the applicant was given an opportunity to make their case, not only before the same patent examiner who already refused the application, but before a panel of three examiners. The applicant was allowed 20 minutes to present an argument before the panel. The panel then provided a Notice of Decision with a brief written summary of its ruling. Programs...



  • Social Media Presence Is a Factor When Assessing Trademark Strength

    February 10, 2017

    The Sixth Circuit Court of Appeals recently turned to the social media presence and marketing of a DJ when evaluating the DJ’s claims of trademark infringement and dilution. In Kibler v. Hall, et al (6th Cir. Dec. 13, 2016), the court affirmed summary judgment for Robert Hall, a rapper performing under the name “Logic” since 2009, in a trademark suit brought by Lee Kibler, a DJ performing under the name “DJ Logic” since 1999. Kibler previously registered his name as “DJ Logic” as a trademark in 2000 and again in 2013, after a lapse in registration. In 2012 attorneys for Kibler...



  • OSHA Issues Recommendations for Anti-Retaliation Programs

    January 23, 2017

    The Occupational Health and Safety Administration’s Whistleblower Protection Programs issued Recommended Practices for Anti-Retaliation Programs to assist employers with “creat[ing] workplaces in which workers feel comfortable voicing safety and other concerns without fear of retaliation.” The recommendations, while only advisory, apply to all public and private sector employers covered by the 22 whistleblower protections laws enforced by OSHA. The recommendations, which are available here, provide a brief synopsis of what constitutes retaliation for “protected” activities by employees (such as filing a report of possible violation of the law with OSHA or other government agencies, reporting a concern about a possible violation...



  • IRS Announces 2017 Estate and Gift Tax Limits and Mileage Reimbursement Rate

    December 29, 2016

    The IRS has announced the 2017 inflation adjusted numbers for several important gift and estate tax exclusions. Each year, several key gift and estate tax exclusions are adjusted for inflations, including the estate tax exclusion, the annual gift tax exclusion, and the estate tax deduction for decedents dying with certain farm or closely held business real estate. In 2017, the estate tax exclusion is $5,490,000. That means for people dying in 2017, because the gift tax and estate tax are unified, a person can make a total of up to $5.49 million of taxable gifts without paying gift tax or...



  • Landlords, Retailers and Restaurateurs Should Evaluate the Safe Harbor and Final Repair Regulations

    August 24, 2016

    The treatment of remodeling and repair costs has long been an area of controversy between the Internal Revenue Service (IRS) and restaurant owners, retailers, and even landlords. A retailer seeking to remodel its premises to refresh its brand or a restaurant owner seeking to refresh its floor and décor faced a significant risk of challenge from the IRS if they did not carefully analyze and account for the costs of such changes. Generally speaking, the taxpayers are seeking to deduct the costs associated with remodeling, repairing or refreshing their premises under Section 162(a) of the Internal Revenue Code while the IRS...



  • Protecting Your Business Assets: Nationalized Trade Secret Protection Has Arrived

    May 11, 2016

    Today marks a day of success for inventors across the United States. From recipes and formulas to processes and design, U.S. businesses now have a new method of defense in the quest to safeguard their valuable trade secrets from would-be thieves and rogue employees. President Obama signed the Defend Trade Secrets Act of 2016 ("DTSA") into law, creating a new federal cause of action for the misappropriation of trade secrets. Until today, the owners of trade secrets had to rely on state-by-state protections for their trade secrets – and not all protections were created equal. The DTSA has been a long...



  • This Land Is My Land (Now): Wisconsin Modifies Its Adverse Possession Law

    April 7, 2016

    On March 1, 2016, Wisconsin enacted a new statute and repealed and restated another existing statute, both related to the doctrine of adverse possession in the State of Wisconsin. The newly created statute § 893.305, Wisconsin Statutes, creates a mechanism for property owners to delay a potential adverse possessor’s claim by allowing the record title holder to record an “Affidavit of Interruption” with the register of deeds’ office, which will restart the time period that an adverse possessor must continuously meet the requirements of adverse possession.¹ The repealed and recreated statute, Wisconsin Statutes § 893.29, prohibits adverse possession by or...



  • Battle of the Forms: Practical Tactics to Minimize Risk in Day-to-Day Transactions

    March 7, 2016

    Sales are negotiated and consummated between companies every day. Yet, what often gets overlooked in these negotiations is which company’s terms and conditions govern the transaction. In a typical commercial transaction, a variety of documents may be exchanged between the contracting companies. At minimum, a purchase order and a sales order are usually exchanged. Typically, parties’ affix their terms and conditions to these documents. A standard and simple procedure, right? Not necessarily. In the rush to finalize the deal, companies often fail to adequately take into consideration their contracting partner’s terms and conditions (or ignore them entirely), or the applicability...



  • Real Estate Attorney Joe Tierney Discusses Tax Incremental Financing districts (TID) in New North B2B Publication

    March 1, 2016

    Joseph Tierney of Davis & Kuelthau’s corporate, construction and real estate teams authored an article, The Shrinking TID May Be Coming, for New North B2B's March 2016 publication. To read the article, please click here....



  • The Shrinking TID May Be Coming

    February 9, 2016

    On January 22, 2016, Senator Petrowski and Representative Spiros introduced 2015 Senate Bill 606 (“SB 606”) amending certain aspects of the law governing tax incremental financing districts (collectively, “TIDs” or singularly, a“TID”). SB 606 provides that an amendment to a TID’s project plan that only subtracts territory from a TID would not count against the current limit of four amendments over the life of the TID. Additionally, an amendment which only subtracts territory from a TID would not be subject to the “12 percent” test which requires the adoption of a resolution finding that the equalized value of the taxable...



  • Wisconsin’s Controlled Highway Access – Property Owners and Developers Beware

    February 9, 2016

    For those who own property abutting a highway or are thinking of developing in such a zone, a recent Supreme Court decision may impact your right to compensation should the Wisconsin Department of Transportation (“DOT”) ever need direct access to a portion of your property. The ability to demonstrate a notable deprivation of the beneficial use of the property will be critical. In an opinion decided on February 4, 2016, the Supreme Court of Wisconsin affirmed an unpublished Court of Appeals case which stood for the proposition that the DOT does not have to compensate an owner of property when...



  • New Law Requires Every Transaction Conveying Real Property to File a Transfer Return

    February 9, 2016

    WI Senate Bill 279 (SB 279) became law on February 4, 2016 relating to Real Estate Transfer Returns. The new law requires that every transaction that conveys real property in Wisconsin must file a Real Estate Transfer Return even if the conveyance is exempt from the transfer return fee. Previously, a real estate conveyance was exempt from the real estate transfer fee and filing a return if it met one of five exemptions provided by statute: The person made the conveyance before October 1, 1969. The property is conveyed from a government agency. The property is conveyed to a government agency to...



  • Beware of Suspicious Patent and Trademark Solicitations

    February 8, 2016

    A rash of unsolicited patent and trademark related mailings to clients has prompted this news alert. Specifically, there has been a dramatic increase in the number of mailings to clients with pending patent or trademark application matters. The sources of the mailings are companies that hold themselves out as governmental agencies, or companies associated with such agencies. The mailings are typically very official looking and are in the form of an invoice asking for payment of some sort of registration fee. The sources of the mailings target individuals and companies whose trademark or patent applications have appeared in official journals, such...



  • Intellectual Property Attorney Joe Heino Discusses Cybercrimes in New North B2B Publication

    February 1, 2016

    Joseph Heino of Davis & Kuelthau’s corporate, and intellectual property teams authored an article, Cybercrime – Costly Threats to Your Intellectual Property, for New North B2B's February 2016 publication. To read the article, please click here....



  • Increase in Safe Harbor Expense Threshold Creates Opportunity for Small and Medium-Sized Businesses

    December 3, 2015

    With the release of Notice 2015-82, the IRS has provided a valuable end of year tax-planning tool to businesses looking to expense tangible property purchases. The tangible property regulations have been in effect since January 1, 2014. The regulations included a safe harbor under which businesses may expense, rather than capitalize, certain tangible property. One such example would be the cost associated with computers and other technological hardware, but would not include any software or other intangible expenses. The safe harbor is intended to both ease taxpayer compliance and reduce a business’s administrative burden. Notice 2015-82 raises the safe harbor from $500...



  • Businesses Can Lower Domain Name Acquisition Costs Via Amortization

    November 19, 2015

    The IRS recently concluded that certain domain names have to be capitalized as intangible assets and amortized over a 15-year period under Section 197 of the Internal Revenue Code. This means that a business that acquires qualifying internet domain names will be able to realize financial benefits by recapturing 100% of the purchase price through amortization, but will not be able to immediately expense the acquisition. Because domain names are valuable business assets and often command significant prices when purchased and sold on the secondary market, this guidance will enable business owners to substantially reduce the applicable net acquisition costs. For a...



  • Take Heed Before Launching New Products and Processes – Supreme Court to Review Enhanced Patent Infringement Damages Standard

    November 19, 2015

    The Supreme Court announced that it accepted Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513 and Stryker Corp. v. Zimmer, Inc., No. 14-1520, two cases that could lower the bar for awarding enhanced damages to patent owners upon a finding of infringement. Either way, the court’s decision will have a significant impact in determining whether to bring infringement claims and deciding whether to risk a claim of infringement. Under federal patent law, a court “may increase damages awarded in a patent case by up to three times the amount found or assessed.” Under the current Federal Circuit test, in order...



  • Don’t Overlook the Basics — Minimizing Litigation Risk in Commercial Deals

    November 6, 2015

    Business relationships are driven by a business’s agreements, both with customers and with suppliers. Over the years, I have come to recognize issues that arise again and again that, if addressed at the outset, would have saved businesses from the headaches, stress, and expense of a lawsuit later on. While you can never totally eliminate litigation risks, developing and implementing a good program to minimize those risks will more than pay for itself over time. Here are ten seemingly obvious yet often overlooked fundamentals that will help avoid some of the most frequent issues that arise. The Devil Is in the...



  • Businesses and Inventors Should Consider Design Patent Protection Due to Right to Recover Infringer’s Profits

    November 4, 2015

    Because design patents provide for significantly greater damages when infringed than utility patents, inventors and businesses should always consider seeking a design patent to better protect their interests and ward off potential infringers. Unlike utility patents which protect the functional aspects of an invention, design patents cover the ornamental designs of articles of manufacture (see Recent Design Patent Cases Clarify Scope, Expand Protection of Design Patents). Although design patents share many provisions of the federal patent statute with utility patents, the damages available for infringement of a design patent are different. Under federal patent law, the owner of a utility patent...



  • Labor & Employment Attorneys Laurie Meyer Discusses Joint Employer Status Assessments in New North B2B Publication

    October 1, 2015

    Laurie Meyer of Davis & Kuelthau’s appellate practice, employment litigation, food and beverage industry, labor and employment and litigations teams authored an article, The NLRB says you could be held responsible for a worker you didn’t intent to employ., for for New North B2B's October 2015 publication. To read the article, please click here....



  • The NLRB says you could be held responsible for a worker you didn’t intend to employ.

    September 10, 2015

    Late last month, the National Labor Relations Board (NLRB) issued the long-awaited Browning-Ferris Industries of California, Inc. opinion in which it changed the standards for assessing a joint-employer status. With this opinion, the NLRB returned to the traditional test and held that joint-employer status may be found if two or more entities are “both employers within the meaning of the common law, and if they share or codetermine those matters governing the essential terms and conditions of employment.” While this opinion may not impact all employers, it does impact over 5.7 million private employees across the country, and implicates three major...



  • Corporate Attorney Tom Rohan Discusses Commercial Contract Provisions in New North B2B Publication

    September 1, 2015

    Tom Rohan of Davis & Kuelthau’s corporate, commercial finance, M&A, and real estate teams authored an article, Don’t Let Your Contract Turn Litigation Into a “Road Game”, for New North B2B's September 2015 publication. To read the article, please click here....



  • Labor & Employment Attorney Bruce Deadman Discusses Overtime Regulation Changes in New North B2B Publication

    August 1, 2015

    Bruce Deadman of Davis & Kuelthau’s employee benefits and labor and employment teams authored an article, Department of Labor Unveils Long-Awaited Proposed Overtime Rules for New North B2B's August 2015 publication. To read the article, please click here....



  • Proposed FLSA Regulations Impact Compensation of Salaried Employees

    July 1, 2015

    On June 30, the United States Department of Labor (DOL) released a 295-page Notice of Proposed Rulemaking (NPRM), seeking public comment on proposed rules amending the Fair Labor Standard Act’s (FLSA’s) “white collar” overtime regulations. The proposed changes will nearly double the salary exemption floor for full-time salaried employees and lay the framework for that floor to rise every year. The proposed rules would also increase the total compensation requirement needed to exempt highly compensated employees (HCEs) from overtime to the annualized value of the 90th percentile of weekly earnings of full-time salaried employees (or $122,148 annually). The proposed rules...



  • Shifting Sands: Uncertainty Emerges for Businesses Expecting Insurance Companies to Defend Their Coverage

    June 16, 2015

    In the wake of recent pro-insurance company rulings in Wisconsin courts, businesses and their owners will need to proceed with extra caution when asking their insurance company to defend lawsuits that may arise from their business dealings. While many suits are typically covered under a policy, all too often an insurance company disputes coverage, which leads to the business having to expend time and resources out of pocket to fight with its insurer. Historically, Wisconsin courts have placed strong incentives on insurance companies to proceed with caution in disputing coverage. However, recent decisions have curtailed those incentives. When an insurance company...



  • Is Your Estate Plan Jeopardizing your S-Corporation?

    June 1, 2015

    Many of us are familiar with the basic S-corporation mantra – avoid the so-called double taxation of regular C-corporations, all while maintaining the limited liability and practical advantages of a corporation. While many business owners engage in detailed planning to ensure compliance with Subchapter S of the Internal Revenue Code in order to maximize the tax benefits of being an S-corporation, the same level of diligence is often ignored when it comes to that business owner’s personal estate plan, and ultimately, their business succession plan. For a corporation to maintain its S-corporation eligibility, it must have fewer than 100 total shareholders,...



  • Corporate Attorney Authors Article for the The Journal of Accountancy

    April 13, 2015

    Corporate and Tax attorney Mark Kmiecik authored an article in the April edition of the Journal of Accountancy (JofA), a flagship publication of the American Institute of Certified Public Accountants. The article addresses the responsibilities tax practitioners must take when considering to file a UTP. To read the full article, please visit, the Journal of Accountancy's Website....



  • U.S. Supreme Court Extends Reach of Administrative Decisions Issued By the Appellate Branch of the United States Patent and Trademark Office

    April 10, 2015

    On March 24, 2015, the Supreme Court issued a rare opinion in a trademark matter. In B&B Hardware v. Hargis Industries, the Court held that findings made by the Trademark Trial and Appeal Board (“TTAB”) of the Patent and Trademark Office can have a “preclusive effect” in subsequent infringement proceedings in federal court. The case arose out of an ongoing dispute between B&B Hardware (“B&B”) and Hargis Industries (“Hargis”) over the mark SEALTITE. In 1993, B&B federally registered the mark SEALTIGHT for its fasteners used in the aerospace industry. Later, in 1996, Hargis applied for federal registration of the mark...



  • Considering a Condominium for Your Development Project? Benefits vs. Drawbacks.

    March 26, 2015

    As medical office, multi-family, retail, and mixed-use development continues to remain strong throughout southeastern Wisconsin, developers should keep in mind the potential benefits and drawbacks of structuring their projects as condominiums. Skillful drafting at the outset of your condominium project can impact a number of key issues facing developers such as ownership, financing, and design. The ability to sell condominium units to tenants or investors – instead of being tied to lengthy lease terms in normal developments – offers a quicker turn of your investment, allowing you to move on to other projects. With respect to financing, carefully drafting the release...



  • Wisconsin Supreme Court Confirms Importance for Businesses to Timely Report Insurance Claims

    March 23, 2015

    The Wisconsin Supreme Court recently issued a decision that drives home the importance for businesses and individuals, as policyholders, to immediately report claims to their insurance company. Even a small delay may result in a loss of coverage thereby increasing the risk that, if a claim against you is successful, you will be left to pay for the legal fees to defend the claim, along with the damages that you may be ultimately responsible for – even if your insurance policy would have paid those costs in full if you had notified the insurance company promptly. In the recent case of...



  • Work Opportunity Tax Credit Extended; IRS Issues Guidance on Certification for 2014 Tax Year.

    March 10, 2015

    Private sector employers are now further incentivized for their efforts in hiring otherwise disadvantaged workers. The IRS recently issued guidance extending the time employers may claim a Work Opportunity Tax Credit (“WOTC”) of $2,400 or more for each qualified employee hired in 2014. Because the Tax Increase Prevention Act of 2014 (see D&K’s Client Alert, President Signs Tax Increase Prevention Act of 2014: Incentives for Employers and Individuals) extended the WOTC retroactively for the 2014 tax year, employers need additional time to comply with the certification requirements of WOTC. Notice 2015-13, summarized below, provides employers guidance on compliance aspects of...



  • Corporate Attorney Tom Rohan Discusses Commercial Contracts in New North B2B Publication

    March 1, 2015

    Tom Rohan of Davis & Kuelthau’s corporate, commercial finance, M&A, and real estate teams authored an article, In Commercial Contracts, We Do Not Want to Be Our Brother’s Keeper, for New North B2B’s March 2015 publication. To read the article, please click here....



  • Businesses Defer Tax Liability On Property Transactions, § 1031 Like-Kind Exchanges Regain Popularity

    February 12, 2015

    In today’s high-tax environment, many individuals and business owners are seeking renewed tax strategies when expanding their businesses and investments. Hence the recent uptick in the number of tax-deferred exchanges under Section 1031 of the Internal Revenue Code (“IRC”) being completed. The increased volume of § 1031 exchanges is attributable to a number of factors including: 1) the need for businesses to expand as the economy continues to improve; 2) the increase in property values since the Great Recession; 3) an increase in financing availability; and most significantly, 4) the increase in the capital gains tax rate as well as...



  • President Signs Tax Increase Prevention Act of 2014: Incentives for Employers and Individuals

    January 8, 2015

    On December 19, 2014, President Obama signed into law the Tax Increase Prevention Act of 2014 (HR 5771). Otherwise known as the “Tax Extenders” Act, this law retroactively extended through the end of 2014, over 50 tax breaks that expired on December 31, 2013. While there were discussions of making permanent a number of these extenders, particularly the Bonus Depreciation and Section 179 deductions, Congress ultimately passed on making any of these provisions permanent and punted the fate of the extenders to 2015 and the incoming 114th Congress. So, yes, that means that these very same provisions expired as of...



  • IRS Form 1023-EZ: Nonprofits Rejoice – but is the Potential for Fraud Real?

    December 14, 2014

    On July 1, 2014, the Internal Revenue Service (IRS) released Form 1023-EZ, a streamlined alternative to the venerable IRS standard-bearer in the world of nonprofits – Form 1023 Application for Recognition of Exemption Under Section 501(c)(3). The original Form 1023, weighing in at a robust 26 pages (including 7 schedules), can be burdensome, especially for small, volunteer based charities. For such nonprofits, the potential benefits were, quite simply, trumped by the significant commitment of time, money and organizational resources necessary to file the original Form 1023. Yet, due to the administrative oversight needed to process the lengthy Form 1023 applications, the...



  • Year-End Strategies Pave the Way for Minimizing Your Tax Burden in 2015

    November 24, 2014

    The final months of 2014 are a great time to finalize your tax planning opportunities and set the stage for minimizing your tax outlay in 2015. As a business owner, please be aware that in the wake of the election, sources indicate tax extenders are likely to pass, with some differences between the two houses in Congress being characterized as “easily resolvable” — one house leaning toward passing tax extenders as one bill, the other addressing tax extenders as six separate bills. Broad tax reform, even if put on a fast track would not likely take effect until late 2015...



  • A Craft Without a Brand Is a Recipe for Disaster. Is Your Brand Protected?

    October 8, 2014

    At a recent Food & Beverage CEO Roundtable hosted by the Milwaukee Business Journal, Giacomo Fallucca of Palermo Villa, Inc. succinctly and effectively offered this advice to attendees: “Build your brand.” Say no more. In three words, he nailed it. To your company, its brand is its lifeblood. To everyone else, it is an indicator of source and quality. From either perspective, it needs to be protected. But how is this best accomplished? Below are a few initial best practices to consider for building and protecting your brand, which can include trade names, trademarks and service marks, collectively “marks.” These...



  • Federal Circuit Reverses $368 Million Damages Award

    September 19, 2014

    The Court of Appeals for the Federal Circuit, in VIRNETX, Inc. v. Cisco Sys. Inc, recently reversed a $368 million dollar patent infringement verdict because the plaintiff calculated its damages as a portion of the entire market value of the product as opposed to apportioning its damages to the infringing software component of the product. In its ruling, the Federal Circuit confirmed the general rule that a patentee cannot use the value of an entire device to calculate a royalty when the device consists of several non-infringing features with no relation to the patented feature unless the patented feature creates the...



  • EEOC Issues Updated Guidance on Pregnancy Discrimination and Related Issues

    July 17, 2014

    On July 14, 2014, the U.S. Equal Employment Opportunity Commission (“EEOC”) issued “Enforcement Guidance on Pregnancy Discrimination and Related Issues,” along with a Question and Answer document about the guidance and a Fact Sheet for small businesses. All are available on the EEOC’s website, www.eeoc.gov. This guidance supersedes the agency’s previous guidance, written more than 30 years ago, and provides an expanded interpretation of what constitutes pregnancy discrimination and when an employer is obligated to accommodate pregnancy-related work restrictions. According to the EEOC’s press release, the guidance addresses many topics, including: The fact that the Pregnancy Discrimination Act (“PDA”), which is part...



  • Supreme Court Ruling Impacts Closely-Held Companies

    July 3, 2014

    On June 30, 2014, the U.S. Supreme Court issued a controversial decision affecting certain closely-held corporations. The Court’s 5-4 decision in Burwell et al. v. Hobby Lobby Stores, Inc. et al. resolved a split among the federal appellate courts to hold that the federal government may not tax closely-held corporate employers who, for religious reasons, decline to provide contraception coverage mandated under the Affordable Care Act (ACA). Background The Hobby Lobby decision involved three family-owned businesses (the Corporations) owned by two families whose owners claimed a religious exemption from a portion of the ACA coverage mandates. Under regulations promulgated by the Department...



  • Hiring an Independent Contractor? You Might Be Liable.

    July 2, 2014

    The Wisconsin Supreme Court recently clarified in Brandenburg v. Luethi the law in Wisconsin concerning owner liability for damages caused by an independent contractor. The Brandenburg case involved a homeowner who contracted with a company to spray herbicide on trees on his property. In the course of spraying the homeowner’s trees, herbicide drifted onto 79 trees on an adjacent property, causing permanent damage to those trees. The independent contractor was insolvent and the owner of the damaged trees, Brandenburg, sought damages from the homeowner, Luethi. Luethi denied liability, relying upon the general rule in Wisconsin, i.e., that an individual or entity...



  • U.S. Supreme Court: Patentable Methods Require More Than Generic Computers Performing Generic Computer Functions

    June 20, 2014

    On June 19, 2014, the U.S. Supreme Court issued a decision that further clarified the patentability of computer-implemented methods. In Alice Corp. v. CLS Bank International, the Court addressed the validity of patent claims drawn to a method which amounted to nothing more than an “abstract idea.” It concluded that the method, which merely required generic computer implementation, failed to “transform” the abstract idea into a patent-eligible invention. In short, the claimed method did no more than require a generic computer to perform generic computer functions. To be patentable, the Court suggested that the method claims in question should (i)...



  • Wisconsin’s New Trust Code: Ten Important Aspects Impacting Estate Plans

    June 6, 2014

    On July 1, 2014, Wisconsin’s New Trust Code (“WTC”) takes effect making Wisconsin the 29th jurisdiction to adopt a version of the Uniform Trust Code (“UTC”). The UTC grew out of the realization that modern era trust business is now globalized like the economy, and that a uniformity of trust laws is necessary to provide administrative and statutory consistency among the states. The continuing movement of states, like Wisconsin, to adopt a version of the UTC reflects this national character of the trust business and the importance of keeping up with current developments or risk falling behind in the competition...



  • Completed Contract Decision Gives Developers Wide Latitude

    March 17, 2014

    The United States Tax Court recently decided in the taxpayer's favor in a matter pertaining to the taxpayer's interpretation of the completed contract method of accounting. Under this method, profits from the sale of homes are deferred until the tax year when the builder has incurred 95% of the project’s total cost. In addition, the Tax Court agreed with the taxpayer that the construction contracts consisted of not only the dwelling units, but also the lots and improvements. The IRS argued that the completed contract method should apply to each home to satisfy the final completion and acceptance test...



  • Supreme Court Confirms That Patent Owners Bear Burden of Proving Infringement

    February 3, 2014

    On January 22, 2014, a unanimous Supreme Court held that a patent owner bears the burden of persuasion on the issue of patent infringement, reversing a decision of the Court of Appeals for the Federal Circuit. Medtronic, Inc. v. Mirowski Family Ventures, LLC, No. 12–1128. Mirowski Family Ventures, LLC licensed several patents related to pacemakers to Eli Lilly & Co., which then sublicensed the patents to Medtronic, Inc. The dispute arose when Medtronic introduced several new products that Mirowski believed infringed claims in two of its pacemaker patents. Medtronic disagreed and brought a declaratory judgment action asserting that its products did...



  • New Wisconsin Crowdfunding Law Designed to Help Businesses Raise Capital

    November 11, 2013

    To facilitate investment in Wisconsin businesses, on November 7, 2013 Governor Scott Walker signed the CASE (crowdfunding and securities exemptions) for Jobs Act (2013 Wisconsin Act 52) (the "Act") into law, creating a state securities law exemption enabling Wisconsin businesses to raise up to $2 Million via online crowdfunding campaigns. Similar to the crowdfunding provisions of the federal Jumpstart Our Business Startups (JOBS) Act, Wisconsin joins only two other states – Kansas and Georgia – in enacting state-level securities law exemptions permitting crowdfunding. The Act permits Wisconsin companies to sell equity and debt securities to Wisconsin investors through internet sites registered...



  • Are You Protecting Your Digital Assets?

    October 31, 2013

    Now more than ever, the Internet is a repository for information from all aspects of our lives – everything from essential financial and email accounts to social networks and your family photo albums. As more and more people transition their financial lives from the file cabinet to the cloud, what should you be doing to ensure that your digital life isn’t destined for a black hole in cyberspace? Recent studies (by Pew Internet and American Life Project) show that since June 2012, half of all American adults who are 65 and older are online, and since December 2011, 65 percent...



  • U.S. Supreme Court Rejection of Section 3 of Defense of Marriage Act (DOMA) Unleashes Tax Opportunities and Uncertainties

    July 8, 2013

    On June 26, 2013, the United States Supreme Court struck down Section 3 of the Defense of Marriage Act (DOMA) in U.S. v. Windsor. Aside from the significant impact on employee benefit plans, the decision has broad tax implications for same-sex couples. For one, same-sex couples may now file joint federal tax returns if the couple lives in a state that recognizes their marriage. It should be noted, however, that joint returns are not always beneficial. If both partners in a same-sex marriage have high taxable incomes, filing a joint return could result in more taxes being paid. For example, the...



  • Immigration Developments: The New I-9 and Recent Senate Bill

    April 30, 2013

    The U.S. Citizenship and Immigration Services (USCIS) recently announced that the official revised Employment Eligibility Verification Form (commonly referred as the I-9 form) is now available and that employers should begin using it immediately. The new form can be identified via a revision date of March 8, 2013 in the lower left hand corner and can be obtained at: http://www.uscis.gov/files/form/i-9.pdf. According to USCIS, the new form contains several improvements designed to reduce completion errors. These include: Additional data fields, including the employee’s foreign passport information (if applicable) and telephone and e-mail addresses. Improvements to the form’s instructions. A revised layout of the form, including...



  • ADA: Clear Job Duty Documentation and Careful Evaluation Establish That Plaintiff Is Not "Qualified"

    April 25, 2013

    The Seventh Circuit recently decided a case in which it found that the employee was not “a qualified individual with a disability” under the Americans with Disabilities Act (“ADA”) because she could not meet the lifting requirements of her position. Based on the principle that she did not qualify for ADA protection, the remainder of the plaintiff’s disability and accommodation claims were unsuccessful. Painstaking Documentation Pays Off In Majors v. General Electric Co., the Seventh Circuit reviewed the ADA claim of Renee Majors, a General Electric union employee with lifting restrictions who was denied an auditor position on two occasions because she...



  • ADA: Employees Who Do Not Show Up Are Not Qualified for the Position

    April 15, 2013

    If an employee has an established medical condition, employers tend to be gun shy about disciplining the employee for absences, fearing that the employee may bring a complaint for failure to accommodate under the Americans with Disabilities Act ("ADA"). This fear is well-founded based on the employee protections provided by the ADA and pertinent state law. However, employers' hands are not completely tied when dealing with a chronically absent employee with a known medical condition. A recent decision by a U.S. District Court in the Fifth Circuit has held that attendance can be an essential function of a position. Therefore, an...



  • Your Disclaimers Don't Matter! The Seventh Circuit Expands the Reach of Successor Liability

    April 9, 2013

    When a company is sold in an asset sale (as opposed to a stock sale), the buyer acquires the company's assets but not necessarily its liabilities. Whether the liability is passed to the buyer is referred to as "successor liability". In Wisconsin--as in most states--a buyer must expressly or implicitly assume liabilities to be considered a successor. However, if the liability is based on a violation of certain federal labor and employment laws, the federal common law standard for successor liability will be applied. The federal standard is more favorable to employees than state law standards and generally will result...



  • Obama Administration Issues Strategy to Mitigate the Theft of U.S. Trade Secrets

    April 2, 2013

    Far too many U.S. businesses know first-hand the implications of trade secret theft and have been combatting this costly issue for years. In a recent effort to protect American innovation globally, the Obama Administration issued a strategy for mitigating the theft of U.S. trade secrets. While it's possible that this effort could discourage some would-be thieves, the burden remains on the businesses to protect themselves or else risk losing their intellectual property. The question for many is whether this strategy may help or instead hinder a business' efforts to self-protect. The five general mandates issued by the Administration for implementation...



  • When An Internal Complaint Is Unrelated To Discrimination: Balancing The Seventh Circuit And The EEOC

    March 27, 2013

    On March 21, 2013, the Seventh Circuit Court of Appeals upheld the dismissal of a complaint in which the plaintiff claimed that she was fired in retaliation based on race and sex after making an internal complaint that she was attacked by a co-worker. The Seventh Circuit issued a decision discussing what constitutes protected activity under Title VII of the Civil Rights Act ("Title VII"). When read in tandem with the EEOC's recent "fact sheet" discussing Title VII and domestic violence, it becomes clear that employers should take a deeper look at the substance of any internal complaint when considering...



  • Non-Enforcement Period Still In Effect for Insured Plan Nondiscrimination Rules

    March 20, 2013

    As most Wisconsin employers know by now, the Patient Protection and Affordable Care Act (the "ACA") introduced new nondiscrimination requirements for insured group health plans; however, many employers remain confused about the impact of these rules. The simple answer is that no formal implementation must commence until the administrative agencies charged with enforcing these rules publish guidance on the subject. This client update explores and examines the information currently available with regard to the ACA's nondiscrimination rules, the continued delay of the insured plan rules, and the implications for insured plan sponsors. Nondiscrimination Rules Under the self-insured nondiscrimination rules, self-insured...



  • Final AIA Changes Are Now In Effect

    March 4, 2013

    The First-Inventor-to-File rules, the final changes to the U.S. patent system under the America Invents Act ("AIA"), are scheduled to go into effect on March 16, 2013. If you currently have any applications "on hold," are considering converting provisional patent applications to non-provisional applications or filing continuation-in-part applications, you may want to consider doing so before March 16, 2013 to avoid the anticipated implications of the new system and its corresponding increased fees. Likewise, you should consider paying any outstanding maintenance fees prior to their scheduled increase on March 19, 2013. First-to-File On March 16, 2013, the United States is changing from...



  • New FMLA Poster Required by March 8, 2013

    February 15, 2013

    On February 6, 2013, the Department of Labor's Wage and Hour Division issued final FMLA regulations which take effect on March 8, 2013. Most of the new regulations deal with seldom used FMLA provisions such as military caregiver leave and qualifying exigency leave for parental care, and job-protected leave for airline personnel and flight crews. The new regulations mean that an updated FMLA Poster should be used starting no later than March 8, 2013. The poster may be downloaded for free from the DOL website by clicking here. DOL has also prepared a helpful comparison of the 2008 regulations and the...



  • Beware of Annual Meeting Minutes Scam

    February 1, 2013

    Wisconsin businesses are currently being targeted by a scam from a company called Corporate Records Service, which requests business owners to fill out an Annual Minutes Form and pay a $125.00 fee to a Madison mailbox using an enclosed envelope. The State of Wisconsin Department of Financial Institutions ("DFI") has issued a press release warning business owners of the scam and affirming that businesses are not required by the DFI or any other state agency to complete the form or pay the requested fee. The form cites Wisconsin statutes and has an official appearance, with a header that states "2013 -...



  • JOBS Act Update: Proposed Rules Under Federal Law Expanding Ability to Raise Money

    January 17, 2013

    The Jumpstart Our Business Startups Act (or "JOBS Act") was signed into law on April 5, 2012. Its intent was to stimulate job growth by making it easier and less expensive for smaller businesses, such as start-ups and entrepreneurial companies, to raise capital. However, due to delay in enactment of rules required to effectuate key provisions, its implementation remains uncertain. Highlights of the JOBS Act's key provisions include: Reporting Companies. Increase of threshold at which a privately-held company is required to register with the Securities and Exchange Commission ("SEC") to become a publicly reporting company under the Securities Exchange Act of 1934...



  • Fiscal Cliff Avoided

    January 4, 2013

    The American Taxpayer Relief Act of 2012 (H.R. 8, as amended) (the "Act") was passed by Congress on January 1, 2013 and was signed into law by President Obama on January 2nd. The Act extends various tax rate cuts (the "Bush Tax Cuts") that were set to expire this year, which would have increased taxes for all taxpayers. The Bush Tax Cuts were 2001 and 2003 tax rate cuts on capital gains, ordinary income and qualified dividends, which were originally scheduled to sunset in 2010 but were extended through the end of 2012. The Act includes marginal income and capital gain...



  • The Patentability of Computer Software to be Revisited

    October 11, 2012

    On October 9, 2012, the Court of Appeals for the Federal Circuit issued an Order that will allow it to revisit the patentability of computer software. ...



  • Intro to Private Equity-Venture Investors Equity Dilution Issues (Part One)

    September 13, 2012

    When a private equity, venture capital or other venture investor firm is considering an investment in a target company, the venture firm will consider whether a one time capital infusion will be sufficient for the venture firm to achieve its return on investment goals. For example, a target company may only require a one-time investment in order to grow to the next level, or the investor may be able to purchase control of the target with a single purchase price payment. However, private equity groups and other sophisticated investors often invest in companies which require several rounds of financing in...



  • New Federal Law Expands the Ability of Companies to Raise Money and Reduces Regulatory Burdens of Going Public

    September 11, 2012

    In the last two weeks major legislation has been enacted by the federal government which significantly changes the rules under which companies can access capital markets to raise money for growth, while simultaneously reducing the costs, regulations and burdens of going public. The intent of the new legislation is to stimulate the economy by improving access to capital for start up and entrepreneurial companies. The "JOBS ACT" or the Jumpstart Our Business Startups Act, recognizes a new category of company which it calls an Emerging Growth Company, or "EGC." Generally speaking, any company with under $1 Billion of revenue can...



  • Risk Factors of Seller Financing in Merger & Acquisition Deals

    September 11, 2012

    Although merger and acquisition activity has decreased during the economic downturn and bank loans have become difficult to obtain, many small and medium-sized businesses are still being bought and sold. Some banks require buyers to invest more of their own money in deals as a condition of obtaining a loan. Therefore, seller financing has significantly increased to bridge the gap between a company's sale price, the amount of investor funds and bank loans available to meet the purchase price. In its simplest terms, seller financing means that the seller receives a promissory note from the buyer for a portion of...



  • Transfers of a Family Business: Choosing The Next CEO

    August 23, 2012

    When one child has been active in a family business, and he or she wants to take over the business when the founder retires, deciding the second generation CEO obviously, involves a relatively simple analysis. Nevertheless, leadership transitions in a family business are always susceptible to complications -- some of which can be anticipated and some of which cannot. This article provides a summary of many factors that can impact the choice of a next generation CEO. Skill Sets. Should a child be the CEO if she is an excellent salesperson but is lacking in operational skills? What about the...



  • Letters of Intent - How Much Detail?

    August 7, 2012

    After an interested Buyer has looked over an acquisition target's preliminary financials and performed some initial due diligence, it is customary in M&A practice for the Buyer to give the Seller a Letter of Intent ("LOI") outlining the basic terms and conditions of the proposed transaction. One issue rarely discussed in articles and seminars about buying a business is how detailed the LOI should be. Obviously, the answer to this question depends on a myriad of factors and each deal is different. Since the LOI is not the final purchase agreement, it will never contain the amount of detail nor...



  • Recent Changes to Wisconsin's Landlord-Tenant Law

    August 2, 2012

    On March 31, 2012, Wisconsin Act 143 went into effect with some very important changes to Wisconsin's landlord-tenant law. Here are some brief descriptions of the key changes: Ban of Moratoriums on Eviction Actions. Municipalities are no longer able to hold moratoriums on evictions. Prohibited Lease Provisions. There are now eight provisions prohibited in leases that, if present, cause the entire lease to be void. Seven of these prohibited provisions were previously listed in the Wisconsin Administrative Code's Residential Rental Practices. The eighth provision prohibits a lease from containing a provision allowing a landlord to terminate a lease due to...



  • Effect of Bank Credit Downgrades on M&A Deals

    July 20, 2012

    Fifteen of the largest "too big to fail" banks recently sustained serious downgrades to their credit ratings from one or more credit rating agencies. M&A transactions that require some level of bank financing will be affected to a limited degree, in the future as lenders attempt to regain their formerly more favorable ratings. These downgrades will impact M&A transactions by limiting the capital available to fund deals. Deal terms also will get tougher as lenders seek to improve their balance sheets and risk profiles. Paradoxically, some commentators expect banks to assume more risk by engaging in derivatives and other forms...



  • Are You Ready For The Next Round of Changes Under the America Invents Act?

    July 1, 2012

    Although nearly a year has passed since President Obama signed the America Invents Act ("AIA") into law, the next round of changes will take effect Sept. 16, 2012. The Act's next phase of changes are relevant when considering any patent enforcement actions and in defending patent infringement actions. As discussed in my article last fall entitled "Big Changes Coming to Patent Law", several changes have already taken effect, with the second round happening on Sept. 16, and a third round slated for March 2013. The important aspects of this second round of changes are those directed to procedures for third...



  • Use Trademark Audits to Identify and Protect Your IP Assets

    April 12, 2012

    Trademarks, including your company and brand names, are among the most valuable assets of your business. They can contribute directly to revenue generation through royalty or licensing payments, and by building your brand and market identity as well as the goodwill of your company. An easy and cost-effective way to help ensure that you are protecting these valuable assets is to have experienced trademark counsel perform periodic trademark audits. A trademark audit will, among other things: Help you identify the trademarks your business uses (including those possibly overlooked by management) as well as any federal and state registrations and applications...



  • 2011 Year-End Tax Planning

    November 28, 2011

    Twenty-five years ago, Congress overhauled the Tax Code in the Tax Reform Act of 1986. At that time, the 1986 Tax Reform Act was applauded for simplifying a Tax Code that had grown too complex. Since 1986, complexity has return to the Tax Code, largely because Congress has enacted a host of temporary tax incentives with a variety of expiration dates. Today, many of our clients are trying to navigate all of this complexity as they engage in their 2011 year-end tax plans. This letter highlights some of the more widely-utilized 2011 year-end tax strategies for individuals and businesses. ...



  • Big Changes Coming to Patent Law

    September 12, 2011

    On September 16, 2011, President Obama signed the America Invents Act (the "AIA") into law. The AIA makes the most sweeping changes to U.S. patent law in many years, including moving the United States towards a first-to-file system, creating new Patent Office proceedings for post-grant review, essentially eliminating false marking actions, raising patent fees and establishing a new fee-based fast track patent examination process.Move to First to File SystemThe most significant change brought about by the AIA is to move the United States to a first-to-file system, which is the system used in most other countries. Currently, the United States...



  • New Top Level Domains Will Increase Risk of Online Trademark Infringement

    September 12, 2011

    The Internet Corporation for Assigned Names and Numbers (“ICANN”), the organization responsible for overseeing the world's domain name system, recently made hundreds of new generic Top Level Domains (gTLDs) available for registration, a significant expansion of available Internet addresses and an increased risk of online trademark infringement. Companies should follow developments in the gTLD rollout to determine whether any of the proposed gTLDs infringe their trademark rights. Additionally, once the new gTLD registries are operating, they will require additional trademark policing. Currently, the most popular gTLDs are those with the extensions.com,.net, and.org. There are also nineteen other generic extensions available for...



  • Europe Moving Towards a Single Patent System

    September 11, 2011

    On 27 June 2011, 25 member states of the European Union entered into an Agreement which paves the way for a unitary patent system in Europe. Currently, patent applicants who wish to obtain patent protection in multiple European countries must bear the cost of preparing and filing multiple translations in order to have their patents validated in each European country of interest. According to the Agreement, an application for a unitary patent can be filed in English, French or German. Any patent which is granted will have effect throughout the 25 member states without the need to file multiple translations, which...



  • Choosing a Strong Trademark

    September 11, 2011

    One of the most common mistakes brand owners make when they have an idea for a name that they want to "trademark" is that the trademark of choice is merely descriptive of the goods or services that the brand owner wants to identify with the trademark. Descriptive marks to help consumers to identify their products and services. However, if an infringement situation arises, the descriptive nature of such trademarks may make them weak trademarks because, absent a showing of acquired distinctiveness, a trademark owner cannot prevent others from using descriptive terms to describe such goods or services. Trademark laws do not...



  • When is a Win a Win?

    September 1, 2011

    A recent State of Wisconsin Court of Appeals case, Falk v. Droegkamp Sales & Service (App Case. No. 2010AP001468, August 17, 2011) focused on a very typical contract provision known as a "prevailing party" clause and whether either party "prevailed". The real lessons from this case appear to be (a) that parties should be careful when expanding the claims in a case; and (b) that the prevailing party language typically used has some inherent ambiguities. In many contracts, the parties insert a provision that, generally speaking, states that if there is a suit between the parties, the "prevailing party" will have...



  • Licensing A Trademark - Even To A Family Member

    May 11, 2011

    In a case that came down earlier this month, the Court of Appeals for the Seventh Circuit reiterated an old saw of trademark law, namely, that trademark owners who fail to control the quality of their licensee’s goods or services stand to lose their trademark. Trademark law requires that decision-making authority over the quality of the goods or services provided remains with the owner of the mark. Why is this important? As happened in Eva’s Bridal Ltd. v. Halanick Enterprises, Inc., to the extent a trademark owner fails to include such provisions in a license agreement or fails to have a...



  • No - It Probably Isn't a Work Made for Hire

    April 11, 2011

    So you hired a third party to develop software for your company or to put together your website or even to write a company newsletter. You paid them for those services. You now assume that you own the copyright to the work because it was a "work made for hire." Not so fast. While it is true that, in an employer-employee setting, the employer or other person for whom the work was prepared is typically considered the author and owns all of the rights in the copyright, most works created by third-party independent contractors don't qualify as a work made...



  • Google is Doing What With My Trademark?

    April 11, 2011

    Google is making money off your trademarks and letting your competitor's direct business to their websites via its AdWords program. As more than 70% of U.S. internet searches use Google's search engine, Google directs a significant portion of consumers to the products and services they seek. Nearly everyone is familiar with Google's search engine. Web users simply type in a few words, hit enter and Google generates a list of hyperlinks to web pages identified as relevant to the search requested. What is less understood is that Google also displays paid advertisements above or alongside the search results. To offer...



  • Supreme Court "Punts" on Standard for Business Methods

    April 11, 2011

    In perhaps the most anticipated patent case of the term, Bilksi v. Kappos, the Supreme Court relied on its precedent to find the claimed method in the Bilski patent unpatentability abstract without setting forth any new standard for evaluating patentable subject matter. The Patent Act offers patent protection for "any new and useful process, machine, manufacture, or composition of matter." Here, the Supreme Court’s focus was on the definition of a "process" because Bilski's patent application was written to claim a method of hedging risk in commodities trading. In evaluating the Bilski patent, the lower court, the Court of Appeals...



  • Ten Factors to Remember About Capital Gains and Losses

    February 24, 2011

    Did you know almost everything you own, be it for personal or investment purposes, is a capital asset? Capital assets include your home, furnishings, stocks and bonds, and many other assets held for personal use. When a capital asset is sold, the difference between the amount you paid for the asset and the amount for which you sold it is generally a capital gain or capital loss. As tax season approaches, here are ten factors to remember about gains and losses and how they can affect your Federal income tax return. 1. Almost everything you own and use for personal...



  • Understanding Earnouts in M&A Deals

    January 12, 2011

    In today's merger and acquisition environment, buyers and sellers often have very different views of the value of the company to be acquired. Sellers believe their business is worth more than the diminished profitability of the past few years indicates, and they attempt to increase the purchase price by emphasizing the business' overall historical success. Sellers usually assume profitability will be resurrected and that they should not be penalized due to what they view as a severe, but temporary recession. Buyers, on the other hand, do not want to pay a price which substantially ignores the company's relatively reduced recent...



  • Temporary Guidance Provided under the Tax Relief Act of 2010

    January 11, 2011

    The Tax Relief, Unemployment Insurance Reauthorization and Job Creation Act of 2010 (the “Act”) was signed into law on December 17, 2010. Albeit temporary, the Act provides some clarity regarding the federal estate, gift and generation-skipping transfer tax systems for the next two years. This Client Alert will summarize the key provisions of the new Act most likely to impact you.Estate Tax Exemption Increased to $5 MillionFor 2011 and 2012, the federal estate tax exemption has been increased to $5 million per person from the previous 2009 exemption of $3.5 million (see special discussion regarding deaths occurring in 2010 below)....



  • Extension of Tax-Free IRA Distributions to Qualified Charities

    January 11, 2011

    For the last several years, a special tax law allowed individuals age 70 ½ or older to direct up to $100,000 of income tax-free IRA distributions to qualified charities during each year from 2006 through 2009. However, this provision expired on December 31, 2009. Recently, the Tax Relief, Unemployment Insurance Reauthorization and Job Creation Act of 2010 (the “Act”), signed into law on December 17, 2010, extended this provision for 2010 and 2011. Similar to the prior tax law, the Act allows an individual who is at least age 70 ½ at the time of the IRA distribution to direct...



  • New Law Punts the Ultimate Fate of the Bush-era Tax Cuts - Look For Intense Debate in 2012

    December 20, 2010

    EXECUTIVE SUMMARYOn December 17, 2010, President Obama signed into law the Unemployment Insurance Reauthorization and Job Creation Act of 2010 (H.R. 4853 – 2010 Tax Relief Act). In addition to extending the Bush-era tax cuts, the new law also provides for an Alternative Minimum Tax (AMT) “patch,” a one-year payroll tax cut, 100 percent bonus depreciation through 2011 and additional income tax breaks. The new law adopts a 24-month tax vacation for decedents dying in 2011 – 2012, implementing a new 35 percent tax rate, a $5 million exclusion (per person) and additional short-term relief detailed below. From a tax...



  • Determining the Price of a Family Business

    December 1, 2010

    When a parent who owns a business intends to transfer the business to a new owner who is not a family member, it is obvious the business will be sold for the highest price obtainable. However, when the company is to be transferred to one or more of the owner’s children, the family has to decide if the transfer will be a full value sale, a complete gift, a sale at a discounted price, or a combination of sale and gift—for either full value or discounted value. This article considers the factors a family should consider as it decides how...



  • Year End Tax Planning Opportunities

    November 11, 2010

    Later this month, the lame-duck Congress will reconvene, and it appears that some form of tax legislation is likely. This client alert will cover tax planning ideas that are guaranteed, absent any eleventh-hour tax legislation in 2010. In the Small Business Jobs Act of 2010, taxpayers received a small boost when Congress extended some valuable and well-publicized business tax incentives, such as bonus depreciation and Code Sec. 179 small business expensing. At the same time, other tax incentives, some of which are new for 2010, may require quick action. Bonus depreciationBonus depreciation is valuable because there is no limit on...



  • Risk Factors of Seller Financing in Merger & Acquisition Deals

    July 31, 2010

    Although merger and acquisition activity has decreased during the economic downturn and bank loans have become difficult to obtain, many small and medium-sized businesses are still being bought and sold. Some banks require buyers to invest more of their own money in deals as a condition of obtaining a loan. Therefore, seller financing has significantly increased to bridge the gap between a company's sale price, the amount of investor funds and bank loans available to meet the purchase price. In its simplest terms, seller financing means that the seller receives a promissory note from the buyer for a portion of...



  • Recent Design Patent Cases Clarify Scope, Expand Protection of Design Patents

    July 11, 2010

    Two recent decisions by the Court of Appeals for the Federal Circuit provide new tools for design patent holders and new hazards for those attempting to design around products covered by design patents. What are Design Patents? Design patents are directed to a non-utilitarian or non-functional design that is embodied in or applied to a product or a portion thereof and not the utility or function of the product itself. Design patent protection includes ornamental designs of all kinds including surface ornamentation as well as the configuration of a product. Design patents are increasingly viewed as strategically important for innovators...



  • District Court Awards $180 Per Falsely Marked Item

    July 11, 2010

    In our recently issued Client Alert regarding the rash of False Marking lawsuits, we advised that the Federal Circuit had reinterpreted the False Marking statute in the Forest Group v. Bon Tool case to permit damages on a "per article" basis. Forest Group originally sued Bon Tool for infringement of its patent on stilts used by drywallers. Forest's claims were dismissed on summary judgment for lack of infringement. However, Bon Tool counterclaimed for false marking. The District Court then held that Forest was liable for a $500 fine for false marking.Bon Tool appealed and the Court of Appeals for the Federal...



  • News from the United States Patent and Trademark Office (the "PTO")

    July 11, 2010

    It's that time of year again - PTO Set to Increase FeesIn addition to the comprehensive Patent Reform Act which is winding its way through Congress, Rep. John Conyers (D – Mich) and Rep. Lamar Smith (R – Tex) recently introduced the "Patent and Trademark Office Funding Stabilization Act of 2010" (the "Stabilization Act"). The bill combines provisions that would (a) authorize the PTO Director to set or adjust all patent and trademark fees; (b) establish a temporary 15 percent surcharge on patent fees; and (c) eliminate the diversion of PTO fees to other government programs. As indicated above, the...



  • Thinking About Becoming a Franchisee?

    May 11, 2010

    If your place of employment has recently down-sized and you have lost your position, or if you want to make a pre-emptive strike before that happens, you may have toyed with the notion of owning your own franchised business. Most prospective franchisees have the notion that, by owning a franchised business, they will, in fact, be their own boss. While owning a franchise can be rewarding and profitable, the prospective franchisee needs to understand that he or she is accountable to a new boss or supervisor – the franchisor....



  • What Is Software Licensing?

    April 11, 2010

    Simply put, a license is nothing more than permission given to do something that would otherwise be considered illegal absent that permission. In the licensing of computer software, what permission is given, how is it given and to whom? In the real world, software licensing arises in one of two very different situations....



  • So Who Really Owns The Design And Design Documents For Your Construction Project?

    March 11, 2010

    Your new construction project is off to a great start. Site selection and assessment has cleared through all of the usual red tape. Your financial backers are committed. You even have a “hand-shake” deal with a new architect who comes highly recommended. This person has already provided you with some exciting concepts and a vision as to what your final project will look like....



  • A Summary of Wisconsin Commercial Real Estate Foreclosure Law

    February 11, 2010

    Given the current deluge of commercial real estate foreclosures, many lenders, property owners, tenants, developers, investors and out-of-state entities involved in the real estate or lending businesses have asked for a simple summary of Wisconsin foreclosure procedure and substantive law. Perhaps the most important consideration is that, although some states allow more expedited procedures, Wisconsin only allows judicial foreclosures....



  • I Paid For That Software To Be Developed, So Why Don't I Own It?

    February 11, 2010

    Suppose that your company is fortunate enough, or substantial enough, to have one or more software developers who are also employees of the company. Suppose also that one of your software-developing employees has written the code for a new computer program that you would like to market....



  • So You Think You Have A Patentable Idea - Now What?

    January 11, 2010

    An idea for a new and useful product has been looming in your thoughts for quite some time. Perhaps you have doodled some drawings showing how the product works. Perhaps you have even built a working model. Better still, you have perfected your working model and have given thought as to how you are going to manufacture the product, market it, and build a successful business based upon that product....



  • Are You Keeping Your Business Secrets To Yourself?

    October 11, 2009

    So, you have some company secrets. What business doesn’t? You may have a confidential marketing strategy that your most aggressive competitor would covet, if only it knew that your strategy has been reduced to a private inter-office memo. Perhaps you have a closely veiled manufacturing method that an up-and-coming entrepreneur would salivate over, if only he or she could gain access to your facility and videotape the process....



  • What Aspects Of Intellectual Property Should Entrepreneurs Consider When Starting A New Business Or Expanding An Ongoing Business?

    June 11, 2009

    Entrepreneurs know that starting a new business or expanding an ongoing business into new areas is the stuff that dreams are made of. To keep those dreams alive, serious thought has to be given to protecting the business in all of the usual ways – a sales network is firmly in place, the lease is iron-clad, the business liability insurance is bound....



  • Are Your Marks Protected?

    April 11, 2009

    One of its most obvious, but often overlooked, assets that a business has is the very name that the business uses to hold itself out to the public. That name, including the names of various products and services it may market, are valuable assets of that business and need to be treated as such. Most business owners do not realize it, but the names ASPIRIN, CELLOPHANE and ZIPPER each started out as a name associated with a business that marketed a very successful product...



  • If One Of Your Employees Invents Something, Who Owns What?

    April 11, 2009

    The general rule on this subject is that an employee who invents something as part of his or her job duties probably has a legal duty to assign his or her entire interest in the invention and any patent that may be obtained on that invention to his or her employer. If the employee invents something apart from his or her normal job duties, then the invention, and any patent that may be obtained on that invention, will probably belong to the employee....



  • Using Expired Patent Numbers with Your Products Could Lead to Devastating Financial Losses

    April 1, 2009

    Businesses now face potentially devastating financial penalties for false patent marking of mass produced products thanks to a 2009 U.S. Court of Appeals decision. Under this decision, businesses that falsely mark an unpatented product can be liable for up to $500 per item....



  • Davis & Kuelthau Infrastructure Stimulus Team

    February 5, 2009

    Davis & Kuelthau, s.c. has formed a team of attorneys to assist public sector and private sector clients with the Federal infrastructure stimulus program known as the American Recovery and Reinvestment Bill of 2009 (H.R. 1) that the House of Representatives passed on January 28, 2009. The Governor also recently created the Office of Recovery and Reinvestment designed to direct Stimulus Bill funds to state projects.The $550 billion of targeted spending currently proposed in the Stimulus Bill will have a considerable impact on municipalities, school districts, contractors, and suppliers in the State of Wisconsin. The rapid deployment of these funds...



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