An International Approach to Intellectual Property: An Interview with Katie Staba

Katie Staba is a partner at K&L Gates in the Technology Transactions and Data Protection practice group at the firm’s Chicago office. Her practice focuses on complex global transactions and counseling relating to digital media planning and buying, advertising and marketing, claim substantiation, software licensing, She counsels clients on intellectual property issues in mergers, acquisitions and investments, unfair competition and trade secrets and competitive intelligence.
Katie attended Loyola University Chicago School of Law where she served as the Executive Editor of Loyola’s International Law Review. Recently, Katie was named to Crain’s 2020 Notable Women in the Law.
I had the opportunity to learn about Katie, her IP practice, and how she first got interested. The following is an edited version of our discussion that includes my own explanations of some IP lingo for those who may be less familiar.
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A “SAD” New Reality in Trademark Legislation

Last year, I took an incredibly exciting class in the realm of intellectual property, called the “IP Colloquium.” It’s a class where Loyola University Chicago School of Law and Chicago-Kent School of Law professors come together to bring in world-renowned speakers from across the country to teach us, students, about issues in the IP world. These issues range from every topic in IP; including trade secrets, copyright, patents, and trademarks. One specific speaker piqued my interest – his name is Eric Goldman. He is a law professor at Santa Clara University School of Law and focuses his research and teachings on IP, Internet Law, and Advertising Law.

Professor Goldman gave us a first look at his article “A SAD New Category of Abusive Intellectual Property Litigation,” which shed light on a newly discovered IP problem mainly happening in my own backyard – the U.S. District Court for the Northern District of Illinois, the federal trial court in Chicago. The paper, along with his presentation, explained how famous brands and performers are overwhelming the court by suing hundreds of defendants for trademark infringement. Before we get into what the “SAD Scheme” actually is, let’s first go through what trademarks are, how a party infringes a trademark, and where the “SAD” name came from.

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Importing Pez, Dispensing Trademark Infringement

In 2022, Netflix released a quirky true crime documentary, called The Pez Outlaw, detailing the passionate rivalry between the president of PEZ USA (“the Pezident”) and Steve Glew, a jovial Pez collector who illegally brought thousands of Pez dispensers into the US. The film follows the heartfelt story of Glew, aka the “Pez Outlaw,” whose candy smuggling adventures introduce its audience to issues of IP liability, protection, and enforcement. Before we talk about Glew’s “Pezscapades,” let’s define some IP topics that show up in the story.

Photo by Jose Antonio Gallego Vázquez via Unsplash

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Palatable Patents

Did you know that many of the food products you see on the shelf at the grocery store are patented?
Utility patents are granted by the United States Patent and Trademark Office (USPTO) for useful “inventions” that are new and nonobvious. The owner of a utility patent has the right to exclude others from making, selling, offering to sell, using, or importing the patented invention for a set period of time—usually around 17 years.

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Startups and Their (Non)Obvious Patents

Startups and Their (Non)Obvious Patents Many products and services we use every day are inventions from startups that were innovative, new, and exciting at the time they were created. For example, many of us now use, and take for granted, Uber for transportation or Square to easily pay with credit cards at restaurants or stores. While these companies’ platforms might be obvious to us now, … Continue reading Startups and Their (Non)Obvious Patents