14
Jul
2020
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Industry Reports - More Updates
USA
Baker Donelson
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27 May2020
What the Supreme Court's <em>Romag</em> Decision means for trademark infringement and damages
The US Supreme Court's unanimous decision in Romag Fasteners, Inc v Fossil, Inc has resolved a circuit court split by confirming that a plaintiff in a trademark infringement suit is not required to show that the defendant wilfully infringed the plaintiff's trademark as a precondition to an award of profits. This is a clear signal to Congress to avoid further unclear drafting that leaves open issues to the courts for interpretation and clarification. Full text
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29 Apr2020
USPTO and US Copyright Office extend deadlines due to covid-19 pandemic
On 31 March 2020 the USPTO and the US Copyright Office announced that most due dates for patent and trademark filings and/or fees that would ordinarily be due between 27 March and 30 April 2020 will be extended for one month if the delayed submission includes a statement that the hold-up was caused by covid-19. Full text
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5 Feb2020
More states draft legislation to address student athlete compensation as the NCAA passes the ball to congress
Following California's Fair Pay to Play Act and the National Collegiate Athletic Association’s approved policy change, a wave of states are proposing bills to their legislatures to compensate student athletes for the use of their name, image and likeness. Full text
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4 Sep2019
Hand it over: satisfying the written description requirement in patent filings
A recent ruling by the US Court of Appeals for the Federal Circuit is a timely reminder to assess an often-overlooked requirement that must be heeded when drafting a patent specification. The written description requirement of 35 USC Section 112 highlights the delicate balance that patent applicants strive to strike between obtaining patent protection on an invention and simultaneously preserving the so-called ‘secret sauce’ that underlies its implementation. In order to obtain an enforceable patent, the Federal Circuit reminds us that the applicant must hand it all over – down to the very last detail. Full text
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17 Jul2019
Supreme Court to decide if <em>Lucky Brand</em> prevents do-overs in litigation
The Supreme Court has accepted certiorari in the long-running Lucky Brand trademark battle. It is hoped that this will provide much-needed clarity on the controversial issue of defence preclusion, which has been muddied by the Second Circuit’s confusing stance throughout this litigation. Full text
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10 Jul2019
You can trademark whatever the ®®®® you want: the immoral and scandalous bar to trademark registration is unconstitutional
On 24 June 2019 the Supreme Court's decision in Iancu v Brunetti (588/2019) struck down the Lanham Act's ban on registering "immoral" or "scandalous" marks, furthering the recent line of Supreme Court decisions that reaffirm the importance of the First Amendment right to freedom of speech and further opening the doors to the registration of colourful marks. Full text
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19 Jun2019
Proposed amendments to US Patent Law could overhaul the regime as we know it
Decisions by the Federal Circuit Court of Appeals since Alice have attempted to clarify the appropriate analysis for patentability under 35 USC Section 101, but many stakeholders have continued to express dissatisfaction with the status quo. Members of Congress have taken up the calls for change and a bill to amend the Patent Act is working its way through IP sub-committees in both houses. Full text
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12 Jun2019
Supreme Court resolves circuit split to hold that licensee's trademark rights survive following licence’s rejection in bankruptcy
The Supreme Court has resolved a significant issue of trademark and bankruptcy law that was decades in the making. In Mission Product Holdings Inc v Tempnology, LLC, it held that rejection of the trademark licence agreement constitutes a breach of the contract, but it does not rescind it, nor does it terminate the licensee's rights. Full text
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5 Jun2019
US cannabis pioneers face chaotic advertising laws
Businesses marketing cannabis and cannabidiol products must navigate a tricky path between state and federal laws when it comes to registering trademarks for their products. This confusion persists when it comes to advertising and there seems to be no sign of a resolution any time soon. Full text
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22 May2019
Disney accused of being real pirate in <em>Pirates of the Caribbean</em>
The District Court for the Central District of California has dismissed with prejudice the claims of two scriptwriters in which they asserted that the Walt Disney Company’s Pirates of the Caribbean movie franchise infringed their copyright in an original spec screenplay. The court held that the plaintiffs could not prove unlawful appropriation because the works in question were not substantially similar under the objective extrinsic test. Full text
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15 May2019
Prior user rights defence to patent infringement
Companies engaged in large-scale manufacturing must make the difficult choice between patenting or maintaining their process-improvement inventions as trade secrets. A prior user rights defence shields a party from a successful claim of patent infringement. However, while many have celebrated this mechanism, it has been asserted a few times only and has not been successfully used all the way through trial and appeal. Full text
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1 May2019
Music publishing rights dispute throws “Lady Marmalade” songwriter's royalties into a black box
Patti LaBelle's 1974 earworm may have made “Lady Marmalade” famous, but the song’s lyrics and music were created by co-writers Nolan and Bob Crewe and Nolan wrote numerous famous songs during the 1970s. A fresh claim filed by songwriter Kenny Nolan against Sony/ATV Publishing over the use of the song “Lady Marmalade” has reignited a long-running dispute over copyright terms. Full text
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17 Apr2019
Small mistake, big consequences: a trademark practice pointer
Preparing a trademark application for registration in the United States requires that care and attention be paid to a number of different factors. Of the numerous elements that go into the application, certain routine aspects may be easy to pass over without discussion. However, one such inconsequential detail can doom a trademark application and any resulting registration. The culprit – the designation of the mark's owner. Full text
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27 Mar2019
PTAB issues precedential decision on joinder under 35 USC Section 315(c)
The USPTO Precedential Opinion Panel has established binding agency authority concerning major policy, procedural issues and other issues of exceptional importance in adjudications before the PTAB. It issued its first precedential decision on joinder in an inter partes review in Proppant Express Investments, LLC v Oren Technologies, LLC. Full text
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12 Mar2019
Supreme Court limits recoverable fees and costs in copyright litigation
In a unanimous decision, the Supreme Court recently held that a prevailing party’s recoverable costs in a copyright infringement case are limited to the specific categories of cost permitted under the general federal statute authorising the award of costs by federal district courts. Full text
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20 Feb2019
USPTO report profiles women inventors named on US patents
The USPTO has released a report titled "Progress and potential: a profile of women inventors on US patents" on the trends of women inventors named on US patents over the last 40 years. Prepared by the Office of the Chief Economist, the report shows a modest increase in the number of women inventors, but documents that women still make up a small minority of inventors and highlights the untapped potential of women to spur innovation. Full text
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13 Feb2019
Supreme Court declines to narrow on-sale bar
In Helsinn Healthcare SA v Teva Pharmaceuticals USA, Inc, the Supreme Court has unanimously declined to narrow the on-sale bar to public sales only in light of new language in the America Invents Act. Full text
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6 Feb2019
165-year-old brand alleges trademark infringement against best-selling video game
The Red Dead 2 lawsuit spotlights how trademark infringement claims require trademark use. It is never sufficient to simply claim "you can't do that, it's trademarked”. Whether ‘use’ constitutes trademark use, and whether it is permissible, is a nuanced analysis. Full text
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30 Jan2019
The price of allegiance: NBA's ‘supermax’ is super unpredictable
A supermax contract is a contract extension for players who achieve the highest tier of NBA accolades. This article examines how a provision expected to benefit franchises in smaller markets has gone awry and suggests possible improvements. Full text
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23 Jan2019
New USPTO guidance on patentable subject matter
On 7 January 2019 the USPTO published guidance on subject-matter eligibility in an effort to synthesise the disparate analysis of patent claims by the federal courts since the Supreme Court's rulings in Mayo v Prometheus and Alice v CLS Bank several years ago. Full text
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19 Dec2018
A step towards uniformity and stronger patent protection through consistent claim construction
The PTAB and federal courts historically follow different procedural standards for construing claims, which has led to inconsistent results. However, the new PTAB claim construction standard means that patent holders can expect more predictability when facing challenges across multiple tribunals. Full text
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5 Dec2018
SUCCESS Act extends USPTO's fee-setting authority
The SUCCESS Act reads as a feel-good piece of legislation that acknowledges the growing role of underrepresented classes in the innovation ecosystem. However, it maintains the USPTO's controversial fee-setting authority. Full text
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21 Nov2018
Supreme Court moves goalposts of the on-sale bar
A recent Supreme Court decision has re-opened the discussion as change of phrasing alters parameters of the on-sale bar. Full text
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14 Nov2018
US Supreme Court to decide whether trademark licences can survive bankruptcy
The US Supreme Court considers whether a debtor or licensor's rejection of a trademark licence agreement terminates the rights of a licensee to continue to use the mark. Full text
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31 Oct2018
Music Modernisation Act brings copyright closer to the 21st century
The Music Modernisation Act has been signed into law and is considered to be a sweeping reform that finally addresses copyright issues raised by advancements in digital music delivery. Full text
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10 Oct2018
Pitfalls in open innovation
For years, corporate R&D organisations have been evolving from relying solely on a centralised innovation paradigm to looking outwardly in search of expertise. While such endeavours are often advisable, they raise certain IP issues. Full text
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19 Sep2018
A step in the right direction: US and EU courts protect trademark for red-soled heels
The success of Louboutin's trademark protection for its red-soled heels illustrates the challenges expected when claiming trademark rights in a colour – and how to overcome them. Full text
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28 Aug2018
Lucky Brand cannot assert release defence in trademark infringement suit
Not so luckily for apparel maker Lucky Brand Dungarees Inc, the Second Circuit recently ruled that res judicata bars it from asserting a defence against a trademark infringement claim by competitor Marcel Fashions Group Inc. This is the first time that the court has applied defence preclusion to bar a party's litigation defence. Full text
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20 Aug2018
High-stakes gambling with a bad hand
Scientific Games Corp was recently handed a dead loss judgment for $305 million in a recent professional gambling antitrust case, which stemmed from patent misuse in an earlier lawsuit over an automatic card shuffler. The plaintiffs alleged that Scientific Games’ patent infringement lawsuit against them was based on unenforceable patents. Full text
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15 Aug2018
Honey badger don’t care – transforming trademark infringement into artistic or expressive works
After his video about African honey badgers went viral, Christopher Z Gordon began policing third-party use of the catchphrases. In a recent case against greeting cards manufacturers, the Ninth Circuit Court of Appeals provided a detailed explanation of the Rogers test, particularly regarding the artistic relevance analysis. Full text
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8 Aug2018
Two iconic brands – Federer's uncertain hope to obtain the RF logo from Nike
Although Nike no longer has a clothing contract with Roger Federer, it still owns the trademark registration for the iconic stylised RF logo. However, despite his optimism, the publicity rights, trademark rights and copyright avenues to obtain rights in the RF logo look challenging at best for Federer. Full text
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8 Aug2018
USPTO must pay its own attorneys’ fees
The Federal Circuit Court of Appeals en banc has rejected the USPTO’s attempt to obtain attorneys’ fees in a de novo civil action. It rejected the Fourth Circuit Court of Appeals’ reasoning for allowing the USPTO to obtain attorneys’ fees for appeals against trademark denials. Full text
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25 Jul2018
Nike Jumpman logo: not yet a slam dunk
Nike had seemingly won the copyright contest over its iconic Jumpman logo when the Ninth Circuit Court of Appeals issued its opinion of non-infringement. However, photographer Jacobus Rentmeester has managed to keep the game alive by convincing the court to stay the mandate confirming its decision. Full text
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11 Jul2018
Federal Circuit expands generics – including ZERO for soft drinks
The Federal Circuit recently vacated and remanded the Trademark Trial and Appeal Board’s decision that the term ‘zero’ is not generic for soft drinks and sports drinks. It found that Coca-Cola had acquired distinctiveness in ZERO for these goods, such that disclaiming the term on registration is unnecessary. Full text
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4 Jul2018
Patent owners can recover lost foreign profits
The US Supreme Court has issued a decision finding that patent owners can recover lost foreign profits resulting from a specific type of infringement. The court emphasised that damages are adequate when they place the patent owner in as good of a position as they would have been in if the patent had not been infringed. Full text
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27 Jun2018
<p>Who is the real MASTERMIND?</p>
The Ninth Circuit Court of Appeals has reversed a district court’s decision to invalidate a US Patent and Trademark Office registration for the mark MASTERMIND. The Ninth Circuit held that the presumption of validity for the registered mark was heavy and the defendants had not sufficiently overcome that presumption.
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20 Jun2018
<p>Balance between brand protection and artistic expression: strengthening the First Amendment</p>
Two recent decisions reflect the increasing strength of free speech rights for authors of expressive works and the elevation of those rights over rights of trademark owners, so long as there is no express statement that could mislead consumers as to the source or content of the work.
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13 Jun2018
<p>Multi-district states and burden of persuasion: Federal Circuit resolves issues of venue</p>
The Federal Circuit has resolved two issues regarding venue, ruling that a domestic corporation resides only in the single judicial district within its state of incorporation where it maintains a principal place of business and that the plaintiff bears the burden of establishing proper venue.
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23 May2018
Trademark and branding pitfalls in a hashtag culture
With viral marketing using social media hashtags on the rise, some practitioners predict an increase in the use of the merely informational refusal for trademark applications. Brand owners should be aware of what this involves and how to avoid it. Full text
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16 May2018
USPTO guidance on subject-matter eligibility following Berkheimer decision
The US Patent and Trademark Office has recently provided additional guidance to its examiners on the issue of subject-matter eligibility, which could make it easier for applicants to overcome rejections under 35 USC Section 101. Full text
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9 May2018
<p>Supreme Court rules PTAB proceedings constitutional</p>
The Supreme Court has issued dual decisions with substantial implications for the future of <i>inter partes</i> reviews and related proceedings for challenging the validity of patent claims before the Patent Trial and Appeal Board.
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25 Apr2018
Music publishers score major victory in closely watched copyright case
Six music publisher groups were recently granted summary judgment on an infringement claim relating to copyrights in approximately 200 musical compositions in audio and audiovisual concert recordings offered as on-demand streams and digital downloads through the defendants' websites. Full text
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18 Apr2018
<p>Practice note: avoid multiple embodiments in design patent applications</p>
Considering the growing popularity of design patent applications, the Federal Circuit's recent decision in <i>Pacific Coast Marine Windshields</i> has important implications for IP owners and patent practitioners.
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11 Apr2018
<p>New USPTO director: predictability!</p>
The overriding need for predictability in the US patent system is the focus of the new US Patent and Trademark Office (USPTO) Director Andrei Iancu. He recently identified several ways that the USPTO could improve certainty during the patent examination process.
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28 Mar2018
Copyright protection for graffiti and street artists
The legal issues surrounding the extent of copyright protection for graffiti and street art unsettled and unresolved by the courts. However, there are signs that graffiti artists may be able to count on some form of copyright protection by public (or, at least, social media) acclamation. Full text
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21 Mar2018
<p>Federal Circuit continues to narrow appellate jurisdiction</p>
The most recent case narrowing the Federal Circuit's appellate jurisdiction involved a <i>Walker Process</i> claim. The Federal Circuit attempted to reconcile this holding with its past decisions in <i>Nobelpharma</i> and <i>Cipro</i>.
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7 Mar2018
Tribal sovereign immunity does not apply to PTAB proceedings
A panel of three administrative patent judges at the Patent Trial and Appeal Board (PTAB) unanimously agreed that tribal sovereign immunity does not apply to PTAB proceedings in Mylan v Saint Regis Mohawk Tribe. Full text
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14 Feb2018
<p>It's alive! The public domain starts breathing again</p>
In 1998 the flow of works entering the public domain was halted by the Sonny Bono Copyright Term Extension Act, which extended the duration of US copyrights by 20 years. That moratorium will end at midnight on December 31 2018.
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7 Feb2018
<p>A rose by any other name?</p>
The scent of certain 'roses' that are gifted to trademark owners is far from sweet – safeguard your intellectual property this Valentine's Day by avoid scammers' rosy offers and notices.
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31 Jan2018
<p>Will Spotify's expensive US copyright shortcut be its coda?</p>
For several years, songwriters and music publishers have sued Spotify for streaming musical compositions without certain required copyright licences, resulting in several class action suits. A pending damages claim against the company is close to 10% of its valuation.
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17 Jan2018
<p>Federal Circuit allows appeal of PTAB time-bar decisions</p>
A recent Federal Circuit ruling has overturned earlier decisions which denied patents owners the right to appeal Patent Trial and Appeal Board time-bar decisions relating to <i>inter partes</i> review petitions.
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10 Jan2018
<p>#Newyear #hashtag #valuableasset</p>
Once-descriptive social media hashtags and Twitter handles are now valuable assets associated with specific parties. Businesses in particular should have social media account user names and hashtags cleared before using them to market and advertise their goods or services.
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20 Dec2017
<p>Federal Circuit hinders ability of pharmaceutical companies to claim broad antibody classes</p>
A recent Federal Circuit decision provides an important update for life sciences intellectual property and could significantly impact pharmaceutical compound patenting. Existing claims to a large genus of antibodies are now far more likely to be invalidated for lack of written description if challenged.
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13 Dec2017
<p>Potential shift in landscape of university IP management</p>
The Association of University Technology Managers recently released its annual licensing activity survey of universities, hospitals and other research institutions nationwide. More than ever, academic research is fuelling impressive gains for local, state and national economies.
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6 Dec2017
New copyright protection test for designs of useful articles
The Supreme Court has clarified the appropriate test to determine when a feature of the design of a useful article is protectable under Section 101 of the Copyright Act. The test includes separate identification and independent existence requirements. Full text
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29 Nov2017
<p>Caught in the middle: US sellers in Europe</p>
In late Spring 2018 US entities will have to consider recent changes to US discovery law while also working to comply with the EU General Data Protection Regulation. Data protection is particularly relevant to trademark rights, as rights holders must balance factors for protecting brands and personal data.
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22 Nov2017
<p>Intellectual property made easy: set an information trap</p>
There are signs that traditional methods of patent and trademark monitoring are waning as the US Patent and Trademark Office embraces real-time web-based alerts, digital subscription services and partnerships with data capture experts.
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15 Nov2017
<p>Independence is bliss? Congress revisits proposal for independent USPTO</p>
Although we are technically no closer now than we were 10 years ago to an independent US Patent and Trademark Office (USPTO), the House Budget Committee's inclusion of a certain line item in its budget earlier this autumn has been interpreted by many as reinvigorating the discussion on the USPTO’s role within the Department of Commerce.
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8 Nov2017
Can the bankruptcy model salvage inter partes review?
As the Supreme Court prepares to hear oral argument in Oil States Energy Services LLC v Greene's Energy Group LLC, the constitutionality and structure of inter partes review hangs in the balance. Full text
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1 Nov2017
Tribal sovereign immunity in patent cases questioned
A new bill which would prevent tribes from asserting sovereign immunity in inter partes reviews could leave patent holders questioning whether this arrangement is a viable strategy to avoid invalidation. Full text
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25 Oct2017
<p>Ninth Circuit address priority and proof for trademark litigants</p>
The Ninth Circuit recently held that a remote junior user with knowledge of a common law senior user cannot claim good-faith adoption of that mark, while a claim for profits from another's trademark infringement requires proof of wilful infringement.
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18 Oct2017
<p>Commercial arbitration awards possibly subject to increased judicial scrutiny</p>
Arbitration awards are reviewed by US courts on only limited grounds. In a writ of <i>certiorari</i> involving a patent licensing dispute, Dow AgroSciences, LLC is now asking the Supreme Court to reduce the deference that US courts give to arbitration tribunals.
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4 Oct2017
<p>US trade associations unite to protect intellectual property globally</p>
The worlds of entertainment, art, medicine and technology have joined together to address the significant international challenges to their intellectual property, and thereby enhance innovation and creativity in their fields. The new American Creative, Technology and Innovative Organisations Network will develop an international market that "rewards innovation and protects creative assets".
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27 Sep2017
<p>Private entities use sovereign immunity to protect patents from PTAB review</p>
While many commentators have noted that Allergan appears to be taking advantage of a legal loophole to stymie competition, others have noted that <i>inter partes</i> review proceedings are inherently unfair to patent owners due to their unfavourable standards and presumptions.
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13 Sep2017
<p>Winner (or loser) pays USPTO fees</p>
The US Patent and Trademark Office recently began making applicants who challenge agency rulings on trademarks and patents in district court pay the attorney fees and expenses of the agency, regardless of the case’s outcome. While initially supportive, the Federal Circuit appears to be having second thoughts.
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6 Sep2017
<p>A trademark by any other colour: Cheerios™ and colour trademark requirements</p>
General Mills's recent failure to obtain registration for the yellow colour of their Cheerios™ boxes illustrates the high burden faced by applicants for federal registration of colour marks in the United States.
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23 Aug2017
Biologics and ‘patent dance’
A recent Supreme Court decision has been welcomed by biosimilar companies as it gives biosimilar products more certainty and flexibility. Based on this decision, biosimilar companies can bring biosimilar products to the market without waiting for 180 days after approval by the Food and Drug Administration. Full text
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16 Aug2017
<p>Litigation misconduct during patent infringement lawsuit can result in invalidation</p>
A recent Federal Circuit decision surprisingly affirmed that specific intent to deceive the US Patent and Trademark Office can be inferred as a result of misconduct during a patent infringement lawsuit, even though such misconduct occurs several years after prosecution of the patent.
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9 Aug2017
Public universities are immune from inter partes review, but are their patent co-owners?
A panel of administrative patent judges recently found that inter partes review proceedings may continue in the absence of a patent owner should the patent be jointly owned by an entity not entitled to immunity. The decision is of particular interest to companies and public universities which actively engage in collaborative R&D projects. Full text
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26 Jul2017
Time for the pendulum to swing back? A brief look at the proposed STRONGER Patents Act
The STRONGER Patents Act seeks to substantially change the way issued patents are reviewed and enforced. The bill presents a decidedly pro-patent response to the veritable onslaught of patent invalidations produced by inter partes review. Full text
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19 Jul2017
<p>New case law potentially turns the tide of patent lawsuits fleeing favoured venues</p>
A recent decision by the district judge who sees more patent cases than any other judge in the United States could help lessen the impact of <i>TC Heartland</i> and preserve some of the ability of patent owners to file infringement claims in a venue of their choosing.
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12 Jul2017
<p>Shocking trademarks may now be viable, but medical marijuana marks miss</p>
The Supreme Court recently struck down as unconstitutional the ban on disparaging trademark registrations, but that does not mean that a medical marijuana dispensary can get a federal trademark registration. Goods or services relating to marijuana are not intended for use in legal commerce and may not be registered.
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