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The Intellectual Property Strategist
Protecting a Trademark Licensor’s Rights In Its Licensee’s Bankruptcy Case
Alfred S. Lurey
A recent bankruptcy case from the District of Delaware underscores the need for a trademark licensor to be alert to filings made in its licensee’s bankruptcy case that may require prompt action by the licensor to protect its valuable rights under a license agreement.
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The Intellectual Property Strategist
IP Rights In the Metaverse
Dyan Finguerra-DuCharme and Abla Belhachmi
The metaverse, an immersive virtual experience building on the Internet and the physical world, has become a prominent force in branding and marketing for companies struggling to keep up in an ever so globalized economy. Parallel to this digital expansion has been a surge of intellectual property issues.
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The Intellectual Property Strategist
Filing a Reissue Can Correct Serious Patent Errors
Jeffrey W. Gluck
Reissue applications may be quite useful. They may be useful in correcting some type of errors that one would normally think of as “errors” in the strict sense of the word. But they may also be used to correct “errors” in scope of patent protection and may thus be used to increase patent value and should thus be considered as a strategic tool in a patent holder’s toolbox.
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The Intellectual Property Strategist
IP News
Jeffrey S. Ginsberg and Abhishek Bapna
Federal Circuit Affirms District Court’s Decision That an Artificial Intelligence Software System Cannot Be Listed as an Inventor on a Patent Application
Federal Circuit Affirms District Court’s Partial Award of Attorney’s Fees
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The Bankruptcy Strategist
Protecting a Trademark Licensor’s Rights In a Bankruptcy Case
Alfred S. Lurey
A recent bankruptcy case from the District of Delaware underscores the need for a trademark licensor to be alert to filings made in its licensee’s bankruptcy case that may require prompt action by the licensor to protect its valuable rights under a license agreement.
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The Intellectual Property Strategist
Federal Circuit Analyzes Specification and Prosecution History Claim Language Usage
Matthew Siegal
University of Massachusetts v. L’Oréal
Absent an express disclaimer or special definition of how a term is to be interpreted, it can be frustrating to get a court to reject the plain and ordinary meaning of claim language read in a vacuum, based on the subtleties of how a term is used in a patent or its prosecution history.
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The Intellectual Property Strategist
One Banana, Two Banana: Can a Banana Taped to a Wall Be Copyright Protected Art?
Robert W. Clarida and Thomas Kjellberg
On July 7, 2022, the Southern District of Florida denied a motion to dismiss in Morford v. Cattelan, which began by posing the following question: “Can a banana taped to a wall be art?”
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The Intellectual Property Strategist
Digital Advertising: Customer Confusion and Trademark Infringement
Stephen M. Kramarsky and John Millson
In the absence of a federal statutory scheme specifically aimed at digital advertising practices, the courts have focused on consumer-facing issues covered by existing law, such as privacy, transparency, and deceptive or misleading advertising practices. But digital advertising technology can also present new challenges in copyright and trademark protection.
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The Intellectual Property Strategist
Copyright Plaintiffs Can Reach Back More Than Three Years In Seeking Infringement Damages, Ninth Circuit Rules
Stan Soocher
How far back from accrual of a claim may a plaintiff reach for copyright damages?
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The Intellectual Property Strategist
IP News
Howard Shire and Stephanie Remy
Copyright Standing and Fifth Circuit Trade Dress Factors
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The Intellectual Property Strategist
UPDATE: Did the Supreme Court's 'Arthrex’ Decision Open Pandora’s Box?
Robert E. Browne, Jr. and Ryan C. Deck
In June 2021, the Supreme Court ruled in U.S. v. Arthrex that the statutory scheme appointing Patent Trial and Appeal Board administrative patent judges to adjudicate IPRs violates the appointments clause of the U.S. Constitution. Specifically, the Court concluded that because APJ decisions in IPR proceedings are not reviewable by a presidentially appointed and Senate-confirmed officer, such determinations are not compatible with the powers of inferior officers. The PTO later decided that it would not accept requests for director review of institution decisions. This policy is now also being questioned in Arthrex’s wake.
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The Intellectual Property Strategist
Quebec’s Bill 96 and Trademarks: Product Packaging and Labelling
Jean-Philippe Mikus, Eliane Ellbogen, and Isabelle Kalar
The modifications brought by the Quebec's Bill 96 will have a far-reaching impact on how businesses use trademarks on product packaging, labelling, public signage and in commercial advertising. This article is Part One of a two-part series on Bill 96 and trademarks and covers the effects as they relate to product packaging and labelling and how best to comply with these new provisions.
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The Intellectual Property Strategist
Proper Notice of Trademark Rights: Using Trademark Symbols for Three-Dimensional Packaging and Product Designs
Stephen Lott and Lauren Gregory
Among the most common questions trademark attorneys are asked is what the differences are between the symbols ®, TM, and SM. When should such symbols should be used? Where should they appear? How frequently? Do they even need to be used at all?
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The Intellectual Property Strategist
NFTs and IP Protection
Gregory Baker, Anne-Laure Alléhaut and Catherine J. Djang
the legal frameworks governing NFTs — which could significantly impact the risks and rewards of buying or selling NFTs — are still catching up. This article addresses another key legal dimension of NFTs: intellectual property protections.
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The Intellectual Property Strategist
Recommendations for Evolving Patent Eligibility of Hardware
Hanchel Cheng
Regardless of whether a patent practitioner’s clients favor a stricter or more lenient eligibility regime, patent eligibility decisions continue to evolve. We need a line drawn for what practitioners expect to be clearer. Hardware inventions are facing patent eligibility challenges that would have seemed more likely in software inventions. Recent court decisions have shown that what once made a hardware invention eligible may no longer fly.
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The Intellectual Property Strategist
Fishing for Joint Patent Ownership Under 'BASF v. CSIRO'
Richard S.J. Hung, Jacob N. Nagy and Evangeline T. Phang
A recent Federal Circuit opinion sheds light on the process for settling co-ownership disputes pursuant to an underlying agreement. Although the precedential opinion does not change the rules of contract interpretation, it suggests considerations when drafting ownership agreements.
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Entertainment Law & Finance
Second Circuit Interprets ‘Executed By the Author’ In Copyright Act’s §203 Grant Termination Provision
Stan Soocher
Composers of pre-1978 works often assigned both the initial and renewal copyright terms in their works when signing songwriter agreements with music publishers. But what happens when a grant of the copyright renewal term of a pre-1978 work has been made post-1977?
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Entertainment Law & Finance
Trademark Oppositions and Coexistence Agreements
Ben Thompson and Robert Moorman
There are frequent battles over trademark rights in the entertainment industry. Trademark publication can be an anxious part of the federal application process, with fear of aggressive opposition and costly proceedings looming in the background. But many trademark oppositions, whether they are only threatened or actually filed, afford the applicant a discussion with an opposer that can ultimately be helpful in nonobvious ways.
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The Intellectual Property Strategist
‘Executed By the Author’ In Copyright Act’s §203 Grant Termination Provision Interpreted By Second Circuit
Stan Soocher
Composers of pre-1978 works often assigned both the initial and renewal copyright terms in their works when signing songwriter agreements with music publishers. But what happens when a grant of the copyright renewal term of a pre-1978 work has been made post-1977?
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The Intellectual Property Strategist
Commentary: What the Music Industry Can Learn from Cable When It Comes to ISPs and Infringement
Keith Hauprich
In the last two decades, the music industry and, more specifically, songwriters, producers and recording artists have been losing the value of their efforts to online piracy. Perhaps a business-to-business solution can be found between the music industry and cable providers.
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The Intellectual Property Strategist
IP News
Howard Shire and Stephanie Remy
Federal Circuit: Agreement Between Patent Owner and Third Party Was Not Insulated from The On-Sale Bar
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Cybersecurity Law & Strategy
E-Commerce Sellers Should Be Preemptive to Mitigate Effects of Account Suspensions for IP Infringement
Jonathan Bick
E-commerce channel providers’ suspension of sellers’ accounts associated with alleged intellectual property infringement is fast, and suspension remediation is time-consuming and costly. Consequently, e-commerce sellers should contemplate pre-emptive legal and business arrangements to ameliorate potential e-commerce account suspensions consequences.
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The Intellectual Property Strategist
Choosing Between Trade Secret and Patent Protection: A Primer for Businesses
Darren M. Franklin
When deciding whether to apply for patent protection on an innovation or whether to keep the innovation confidential as a company trade secret, there are many considerations that a business must take into account stemming from the different characteristics of each.
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The Intellectual Property Strategist
Protecting Clients In the Virtual World
Cameron B. Pick
The “metaverse” in conjunction with Web 3.0 can be thought of as an immersive virtual reality world or worlds, where users can play games, socialize,…
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The Intellectual Property Strategist
Trademark Coexistence May Become a Necessity As Market for Trademarks Grows
Ben Thompson and Robert Moorman
Trademark publication can be an anxious part of the application process, with fear of aggressive opposition and costly proceedings looming in the background. But many oppositions, whether they are only threatened or actually filed, afford the applicant a discussion with the opposer that can ultimately be helpful in nonobvious ways.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and Zhiqiang Liu
Federal Circuit Affirms Precedential Opinion Panel Decision Limiting the Circumstances In Which the Board Should Raise Sua Sponte Patentability Issues Against Proposed Substitute Claims
Federal Circuit Rejects District Court’s Claim Construction As Being Too Narrow
Federal Circuit Rejects District Court’s Claim Construction Because It Is Not Supported by the Intrinsic Evidence, and Leaves Dependent Claims Without Scope
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Entertainment Law & Finance
Attorneys Forecast Legal Challenges In NFTs
Cedra Mayfield
As nonfungible tokens, or NFTs, continue to grow in popularity through cryptocurrency purchase, sale and trade online, opportunities for entertainment attorneys in the emerging industry also are booming. For this article, attorneys shared how they’re grabbing hold of NFT-related work and the challenges they foresee.
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The Intellectual Property Strategist
How NCAA Athletes and Brands Can Avoid Big Mistakes In NIL Influencer Agreements
Nicole Demas, L. Andrew Tseng and Sean P. McConnell
The biggest event of the year in college sports just concluded as national champions were crowned in men’s and women’s basketball, and hundreds of thousands of college athletes are entering the influencer marketplace for the first time. College athletes now find themselves attractive candidates in the fast growing influencer marketing arena. With the FTC Commissioner taking a closer look at the use of influencers for marketing, student athletes and brands should take care when entering into the influencer marketing arena.
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The Intellectual Property Strategist
Ninth Circuit Issues Decision on Trade Secret Injunctive Relief
John Lanham and Nishi Tavernier
Earlier this year, the Ninth Circuit issued a decision affirming a district court’s denial of an injunction following a finding of trade secret misappropriation. While the opinion is designated as unpublished — and therefore not precedential — the panel’s reasoning sheds light on an important issue in trade secrets remedies.
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The Intellectual Property Strategist
Comic Legends’ Estates Say Pandora Streamed Routines Without License
Thomas Kjellberg and Robert W. Clarida
In dual lawsuits, the estates of Robin Williams and George Carlin accuse Pandora Media of willfully infringing the legendary comedians’ registered copyrights in their “spoken word compositions” — their standup routines — by streaming the sound recordings that embody those routines without a license to use these works.
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The Intellectual Property Strategist
IP News
Howard Shire and Stephanie Remy
Federal Circuit: District Court Abused Discretion By Attributing Inconsistent Position to Plaintiff
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The Intellectual Property Strategist
Brands In the Metaverse: Opportunities, Risks and Strategies
Brandon Leahy and Chloe Delehanty
While it is still unknown how the metaverse will take shape, lawyers advising brands should familiarize themselves with the opportunities it presents, the risks involved, and strategies to consider for enhancing and protecting a client’s brand.
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The Intellectual Property Strategist
Litigating Redesigns At the ITC
Frank Liu, Dustin Ferzacca and Gwen Tawresey
An overview of redesigns at the ITC, a discussion of the ITC’s recent determination in Certain Audio Players and Controllers, and identifies some considerations to keep in mind when litigating redesigns at the ITC.
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The Intellectual Property Strategist
Building AI and Machine Learning Technologies: Data Licensing Tips and Traps
Anna Remis
Data is the fuel for software development, and developers use historical data from existing products to train algorithms and build AI models. Companies may be well aware of privacy and regulatory restrictions on data use, but often do not consider the potential impact of data use restrictions on intellectual property ownership and use rights.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and Ryan J. Sheehan
Federal Circuit: Applicant Admitted Prior Art Cannot Provide a “Basis” for a Ground of Unpatentability in an IPR, But Can be Cited for Other Purposes
Federal Circuit: After SAS, IPR Estoppel Extends to Prior-Art Grounds That Reasonably Could Have Been Raised in the Petition
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Cybersecurity Law & Strategy
Building AI and Machine Learning Technologies: Data Licensing Tips and Traps
Anna Remis
Data is the fuel for software development, and developers use historical data from existing products to train algorithms and build AI and machine learning models. Companies are well aware of privacy and regulatory restrictions on data use, but often do not consider the potential impact of data use restrictions on intellectual property ownership and use rights.
Read More ›
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The Intellectual Property Strategist
CA Court of Appeal Offers Insight on Business Consulting vs. Legal Services In Entertainment Case
Stan Soocher
The question has been frequently debated in the legal community: What is the difference between an attorney providing business consulting services or acting as legal counsel? The California Court of Appeal recently issued an opinion on the concern.
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The Intellectual Property Strategist
Issues Addressed In Supreme Court ‘Unicolors’ Argument
Robert W. Clarida and Thomas Kjellberg
Some of the major issues the court addressed in the Unicolors oral argument, and some questions that are likely to remain open no matter the outcome.
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The Intellectual Property Strategist
Clarity on Patent Eligibility Law Could Be Coming In 2022
Scott Graham
The murkiness around patent eligibility is one reason innovators have been turning more toward trade secret law to protect their inventions.
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The Intellectual Property Strategist
How to Protect a Website’s Legal Identity
Jonathan Bick
Internet site legal identity theft is becoming increasingly more sophisticated and common. If successful, a third party can use the theft of a legal identity to secure confidential information, harm marketing brand value, diminish good will and steal customers. Internet sites may employ legal, business, and technological means to protect their legal identities.
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The Intellectual Property Strategist
Due Diligence Can Mitigate Trademark Risk
Jared A. Stark
How can one launching a new trademark mitigate the risk of rejection or infringement on the basis of likelihood of confusion with an existing mark? The primary strategy is trademark searching.
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen Patel
Evolusion Concepts, Inc. v. HOC Events, Inc.
Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc.
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The Intellectual Property Strategist
Reckless Disregard for the Truth of a Material Statement Made to the USPTO Is Sufficient for Proving the Intent to Deceive
Li-Jen Shen, Cory Smith and George C. Chen
The Trademark Trial and Appeal Board (TTAB) has finally filled a gap left by the U.S. Court of Appeals for the Federal Circuit in the standard for finding deceptive intent when trying to prove fraud on the USPTO.
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Business Crimes Bulletin
With ‘Great Resignation’, Corporations Need to Prepare for the Great Investigation
Veeral Gosalia
Major crisis events, such as political uprisings or financial downturns, are typically followed by an increase in fraud in the business sector and heightened risk to corporate IP and other sensitive information. Anecdotally, this seems to be proving out again in the recent and ongoing fallout from the pandemic. Even before this Great Resignation movement, corporations across the globe were reporting increases in suspicious activity, data leakage, IP theft and other data risks stemming from departing employees and remote workers.
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The Intellectual Property Strategist
Ninth Circuit Finally Resolves Pre-1972 Sound Recordings Royalties Issue
Robert W. Clarida and Robert J. Bernstein
The Ninth Circuit ruling in Flo & Eddie may turn out to be last stop on the long and winding road the owners of pre-1972 recordings have traveled in their efforts to obtain compensation for public performances through platforms like Sirius.
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The Intellectual Property Strategist
NFTs and Virtual Patent Marking
Willem Klein
Patent marking is an important step in the patent lifecycle as it is generally required to seek damages from infringers prior to the date the suit is filed. While virtual marking has somewhat reduced the overhead of marking, it suffers from the same problems all Internet-based evidence runs into in court: websites are ephemeral and have intermittent accessibility, as well as poor public logging of when information existed where, and for how long. NFTs on a digital blockchain could potentially overcome these hurdles, while still providing the benefits of virtual marking via websites.
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The Intellectual Property Strategist
IP News
Joshua R. Stein and Jeffrey S. Ginsberg
Pair of Federal Circuit Decisions Address Standing to Appeal Adverse IPR Decision
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The Intellectual Property Strategist
Recent Rulings on ‘Embedding’ Foreshadow Circuit Split: What Does That Mean For Content Use Now?
Tamerlin Godley and Kiaura Clark
When and how can you display someone else’s visual content on your website without running afoul of copyright law? When and how can someone else display your visual content? A recent ruling out of the Southern District of New York may upend the current paradigm.
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The Intellectual Property Strategist
UPDATE: The Supreme Court 'Arthrex’s' Decision In Action
Ryan C. Deck and Robert E. Browne
Although several direct appeals for PTAB review or rehearing were made by parties who had received adverse outcomes at PTAB hearings after the Arthrex decision, on November 3, the first rehearing was granted by the PTO acting director.
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The Intellectual Property Strategist
Influence of Lost Profits Damages In Patent Cases
Eric Alan Stone and Catherine Nyarady
In two recent decisions, the Federal Circuit and a Delaware district court took account of the underlying economic conditions that permit and prevent awards of lost profits, and looked at the implications of those conditions on otherwise unrelated areas of law.
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