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The Intellectual Property Strategist
Trademarks Making Advertising Claims Create Sticky Situations
Kyle-Beth Hilfer
The SharkNinja case as well as other well-established precedents serve as powerful reminders to advertisers of certain best-practices in choosing their trademarks or evaluating whether to challenge their competitors’ trademarks.
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The Intellectual Property Strategist
Creative vs. Corporate: Patent Infringement Awards Respawn the Debate over Patenting Video Games
Mark D. Simpson and Paul Leicht
Patents can provide the broadest and strongest form of protection in the video game field. They can protect the methods and processes performed by the game software, and they can protect the hardware components of the game system, both in function and aesthetic design.
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The Intellectual Property Strategist
Defamation Investigations: A Big Leap in Fighting Back
Doug Bania
Internet tools are becoming more sophisticated in measuring the impact of online disparaging and defamatory statements, paving the way for affected business owners and celebrities to fight back by filing defamation suits seeking to recover damages for the harm to their reputation and brand value.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and George Soussou
Federal Circuit: Case Belongs In the Northern District of California, Not Western District of Texas
Federal Circuit: Arbitration Clause Did Not Prevent Institution of IPR Petitions
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The Intellectual Property Strategist
Sender Beware: Jurisdictional Risks of Pre-Litigation Communications
Sarah Benowich
The Federal Circuit recently clarified — and lowered — the threshold to exercise specific personal jurisdiction over an out of state declaratory judgment defendant.
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The Intellectual Property Strategist
Impact of Disney’s Motion to Compel Arbitration In Scarlett Johansson’s Lawsuit Over ‘Day-and-Date’ Release of ‘Black Widow’
Stan Soocher
Johansson alleges that, in order to generate new subscribers for Disney+, Disney intentionally interfered with her talent agreement with Disney affiliate Marvel Studios for her featured role in Black Widow — and thus allegedly induced Marvel to breach a promise in the Johansson/Marvel agreement for the film to be initially distributed in exclusive “wide theatrical release.” Updated Oct. 1 to reflect a confidential settlement reached in the case.
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The Intellectual Property Strategist
Eighth Circuit Permits Recovery for ‘Initial-Interest Confusion’ In Trademark Cases
Eric Alan Stone and Catherine Nyarady
The likelihood of confusion analysis is often focused on confusion at the time of purchase, but the U.S. Court of Appeals for the Second, Third, Fifth, Sixth, Seventh, Ninth, Tenth and Federal Circuits permit mark holders to allege infringement based on presale, initial-interest confusion. Earlier this year, the Eighth Circuit joined the majority of circuits in permitting recovery for initial-interest confusion in certain circumstances.
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The Intellectual Property Strategist
Tenth Circuit Adds to Split on Lanham Act’s International Applicability
Christopher Jackson and Jessica Smith
the Tenth Circuit held that the Lanham Act can have extraterritorial application, if certain conditions are met. In doing so, the appellate court recognized — and further deepened — an ongoing circuit split.
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The Intellectual Property Strategist
IP News
Howard Shire and Jóna Mays
Nike Seeks $150 Million In Sanctions from Six Chinese Banks, and Loses
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The Intellectual Property Strategist
How NY Courts Find Copyright Preemption of State Law Right of Publicity Claims
Stan Soocher
To survive preemption under §301 of the Copyright Act, courts consider whether a state law claim in a lawsuit has an “extra element” that qualitatively distinguishes it from a federal copyright claim. Courts typically find that state law claims, such as breach of contract, have an extra element. Other state law claims, such as conversion, get varying court determinations as to whether they are preempted.
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The Intellectual Property Strategist
Federal Circuit Provides Guidance on IP Case Transfer Motions
Darin Snyder, Brad Garcia, Amy Liang, and Daniel Silverman
In the past year, the Federal Circuit has repeatedly required the U.S. District Court for the Western District of Texas to transfer patent infringement suits from that district to more convenient venues, and in doing so it has provided increasingly specific — and often pointed — guidance to courts and litigants on the appropriate analysis for transfer motions.
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The Intellectual Property Strategist
U.S. Supreme Court Could Make Copyright Officer Significant Player In Copyright Infringement Litigation
Robert W. Clarida and Robert J. Bernstein
The U.S. Supreme Court granted certiorari in Unicolors v. H&M Hennes & Mauritz to address the following question: “Did the Ninth Circuit err in breaking with its own prior precedent and the findings of other circuits and the Copyright Office in holding that 17 U.S.C. §411 requires referral to the Copyright Office where there is no indicia of fraud or material error as to the work at issue in the subject copyright registration?”
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The Intellectual Property Strategist
USPTO Looking to Beef Up Its Own Trademark Protection
Scott Graham
The agency announced that the Department of Commerce has applied to register the USPTO’s marks in a bid to crack down on scammers who are impersonating the agency.
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The Intellectual Property Strategist
IP News
Jeffrey S. Ginsberg and Abhishek Bapna
Federal Circuit Clarifies Pleading Requirements for Patent Cases and Affirms Grant of Summary Judgment of Invalidity under 35 U.S.C. §101
Federal Circuit Holds that Pendency of Motions Unrelated to Interlocutory Judgment Does Not Toll 30-Day Limit to File Notice of Appeal
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The Intellectual Property Strategist
Artificial Intelligence and Subject Matter Eligibility In U.S. Patent Office Appeals
James W. Soong
For the foreseeable future, patent applications involving artificial intelligence technologies will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.
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The Intellectual Property Strategist
U.S. Supreme Court Narrows Assignor Estoppel Doctrine In Continuation Patent Case
John Bowler and Kristie Butler
Nearly a century after endorsing the doctrine of assignor estoppel, the Court concluded that it applies “when, but only when, the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.”
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The Intellectual Property Strategist
Supreme Court Looking to Resolve Federal Circuit Split In Patent Act §101 Case
Eric Alan Stone and Catherine Nyarady
The Supreme Court is considering a petition in a §101 case, in which the Federal Circuit split six-to-six in denying rehearing en banc, and in which the Supreme Court recently called for the views of the Solicitor General.
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The Intellectual Property Strategist
U.S. IP Reform Needed to Prepare for AI Era
Andrei Iancu and David J. Kappos
For the U.S. to maintain its technological edge, it must encourage Americans to make more discoveries in AI and other emerging technologies. This in turn requires providing strong IP rights to incentivize and protect the huge investments required to make those discoveries.
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen Patel
Federal Circuit, Citing Forum-Shopping, Transfers Patent Cases to California
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The Intellectual Property Strategist
Second Circuit Examines Factors for ‘Future Injury’ from Personal Information Disclosure
Stephen M. Kramarsky and John R. Millson
The U.S. Court of Appeals for the Second Circuit recently took that issue up as an “issue of first impression,” explaining what factors courts in the Second Circuit should consider when determining whether an individual has adequately plead a cognizable “future injury” as a result of the unauthorized disclosure of their personal information.
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The Intellectual Property Strategist
U.S. Supreme Court Largely Upholds IPR Proceedings In 'Arthrex'
Robert E. Browne, Jr. and Ryan C. Deck
In a decision authored by Chief Justice Roberts, the Supreme Court ruled that the statutory scheme appointing PTAB administrative patent judges (APJs) to adjudicate IPRs violates the appointments clause of the U.S. Constitution.
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The Intellectual Property Strategist
Third Circuit Hears Case On Interaction of Publicity Rights and the CDA
P.J. D’Annunzio
Likening his client’s claim to that of an athlete with a monetizable image, an attorney representing TV reporter Karen Hepp, who is suing social media websites over misuse of her likeness, recently argued to the U.S. Court of Appeals for the Third Circuit that the case should fit a narrow exception to a federal law that bars suits against online content providers.
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The Intellectual Property Strategist
DOJ Looking to Develop New SEP Policies
Bruce Love
The Justice Department has confirmed it is looking to develop new policies surrounding how standard-essential patents might be used as tools for anticompetitive practices. The change in policy will mean big business for law firms that can combine highly technical IP advice with their antitrust and litigation practices.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and Zhiqiang Liu
Federal Circuit Rejects Theory of Infringement Based on Oversimplified Claim Interpretation and Finds That the ITC Correctly Required Proof of Substantial Non-infringing Use Based on Real-World Evidence
Federal Circuit Reverses District Court’s Decision Dismissing a Declaratory Judgment Action for Lack of Personal Jurisdiction Because the Patent Owner Directed Extensive Communications to the Judicial District
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The Intellectual Property Strategist
Admissibility of Evidence from Post-Grant Proceedings In District Court Trials
Richard S.J. Hung, Alex S. Yap and Stephen J.H. Liu
Courts are increasingly excluding all evidence relating to post-grant proceedings before the PTAB, except when it is used for impeachment. This article reviews recent decisions on this issue from some of the nation’s busiest patent districts.
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The Intellectual Property Strategist
U.S. Tax Court Rules on Valuation of Michael Jackson’s Right of Publicity
Stan Soocher
The significance of the U.S. Tax Court decision for celebrities and their estates is clear: Prior to now, as Tax Court Judge Mark V. Holmes noted: “We haven’t had a case directly addressing the taxability of the image and likeness.”
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The Intellectual Property Strategist
Counterfeiting vs. Infringement: Second Circuit Weighs In
Eric Alan Stone and Catherine Nyarady
In two recent cases, the Second Circuit provided guidance as to the circumstances that may give rise to liability for counterfeiting, as distinct from mere infringement, and addressed liability for contributory infringement for counterfeiting.
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The Intellectual Property Strategist
TikTok Dances Around Another Copyright Infringement Suit
Angela Morris
The Texas lawsuit alleged that the social video app and parent company ByteDance Ltd. copied software code, and deleted or altered copyright management information in the code, and then used the code in the app that has 175 million downloads.
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen Patel
Federal Circuit Invalidates Parts of VoIP Patent
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The Intellectual Property Strategist
The World of NFTs and Their Implications In Intellectual Property Law
Christine K. Au-Yeung
NFTs have been all the rage in the world. So what exactly are NFTs, and how do they reconcile with the basic tenets of intellectual property law?
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The Intellectual Property Strategist
Supreme Court Leaves As Many Questions As It Answers In 'Google v. Oracle'
Shaleen Patel
The Court cleared Google of copyright infringement in terminating a 16-year long dispute as to whether Google’s Android mobile platform had infringed Oracle’s Java programming language’s copyright. However, the Court did not answer the question of whether specific components of computer software qualifies for copyright protection at all.
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The Intellectual Property Strategist
Not Your Property, Your Business: When Customized Products Become the Business of Rights Holders and Courts
Chidera Anyanwu and Chloe Delehanty
In some instances the appearance of third-party intellectual property on items purchased, owned and customized by the purchaser may be legal under the doctrines of first sale and fair use.
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The Intellectual Property Strategist
IP News
Jeffrey Ginsberg and Matthew Weiss
Federal Circuit: The Doctrine of Equivalents Is Not a Binary Choice
Federal Circuit: No Estoppel for Party That Joined IPR
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The Intellectual Property Strategist
Say What? Are PTAB Judges Really ‘Inferior Officers’?
Ben Clark
United States v. Arthrex, Inc.
Proving that even the driest of constitutional issues can have significant practical effect, the U.S. Supreme Court recently heard argument in United States v. Arthrex. Before the Court was whether administrative judges of the PTAB have been appointed unconstitutionally.
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Entertainment Law & Finance
Navigating Defamation Litigations Today
Bo Pearl, Avery Johnson and Kiaura Clark
Tensions erupted both on and off the set of a Newsmax TV segment when MyPillow CEO Mike Lindell bolstered his claim of a rigged presidential election with…
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The Intellectual Property Strategist
Implications of 'Amgen v. Sanofi' On the State of Enablement Law
Bruce M. Wexler, Aaron P. Selikson, Ashley N. Mays-Williams and Susan S. Hwang
The decision appears to take steps to harmonize the prior cases that appropriately were guided by the Wands factors with the cases discussing the “full scope” of enablement that have engendered some confusion in the law.
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The Intellectual Property Strategist
Synergizing Patents to Drive Innovation and Growth
Siraj Husain
As intellectual property continues to influence business operations, more companies are considering defensive patent pools as a strategic measure to guard against threats that can stifle innovation and growth for both businesses and industries.
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Entertainment Law & Finance
11th Circuit Rules for Stephen King In Suit Over Dark Tower Series
Michael A. Mora
Vincent Cox of Ballard Spahr in Los Angeles and Scott Ponce of Holland & Knight in Miami prevailed recently in the U.S. Court of Appeals for the Eleventh…
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The Intellectual Property Strategist
Equity In Broad and Flexible Fashion
Kelvin Han
Federal Circuit Wasn’t Chicken to Grant Equitable Intervening Right in Poultry Processing Equipment Case
A dispute between the two titans in the poultry processing equipment market led the U.S. Court of Appeals for the Federal Circuit to construe the term “protection of investments” in 35 U.S.C. §252.
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen J. Patel
On March 12, the Federal Circuit granted Janssen Pharmaceutica’s motion to dismiss Mylan Laboratories’ appeal and denied Mylan’s request for mandamus relief, holding that it lacked jurisdiction to hear Mylan’s appeal.
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The Intellectual Property Strategist
Patent Litigation Growth In 2020 Points to Sustained Activity In 2021
Rob Maier
Despite the recession — or partly as a result of it — 2020 was also a year of growth for patent litigation in the United States. This article provides a look back at patent litigation filing statistics in recent years across district courts in the United States, with an eye toward current trends that in all likelihood will continue deep into 2021.
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The Intellectual Property Strategist
New COVID Relief Bill Brings Changes to Trademark and Copyright Practice
Eugene Y. Mar, Nate A. Garhart and Ashleigh Nickerson
The new, more than 5,000-page spending bill, which includes the latest COVID-19 relief, had a few surprises under its cover. Two of those surprises focus directly on intellectual property and amount to sea changes in the trademark and copyright infringement realms.
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The Intellectual Property Strategist
Copyright and Internet Content
Jonathan Bick
Online publication impacts the duration of copyright protection among other purposes, including optimizing creative and ownership rights and the availability of statutory damages and attorney fees. Thus, it is important to determine when Internet distribution constitutes publication.
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The Intellectual Property Strategist
IP News
Jeffrey Ginsberg and Ryan J. Sheehan
Federal Circuit: Texas Court Abused Its Discretion By Delaying On Venue Transfer Motion While Proceeding With the Merits of the Case
Federal Circuit: PTAB Violates the APA When It Sua Sponte Adopts a New Claim Construction to Support New Theory of Invalidity for First Time
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The Intellectual Property Strategist
Northern District of California Holds Vanity License Plates Are Not Government Speech
Grace Tuyiringire
California DMV regulations excluding plaintiffs’ personalized plates were like the PTO trademark registration restrictions of SLANTS and FUCT — restrictions struck down by the U.S. Supreme Court for violating the First Amendment.
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The Intellectual Property Strategist
The Dark Side of Licensing: How to Prepare for the Audit
David Schnider
The audit clause itself is not something to be feared. It is a necessary means for the licensor to protect its interests and to guard against unscrupulous licensees. But it is a mistake to think that the clause is there solely to prevent malfeasance.
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The Intellectual Property Strategist
From the PTO to the FDA: What to Consider When Branding Clinical Trials
Brandon Leahy Susanna Lichter and Eva Yin
The legal implications of branding generally arise initially for companies during the process of selecting a company name and any initial product or service names. For drug development companies, however, careful consideration should also be paid to the implications of branding a clinical trial.
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen J. Patel
PTAB to Follow Nautilus Standard of Definiteness
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The Intellectual Property Strategist
Exercising Restraint: Federal Circuit Affirms Dismissal of Declaratory Judgment Action Under Abstention Doctrine
Rudy Kim and James Hancock
The Federal Circuit affirmed the dismissal of a declaratory judgment action based on the “abstention doctrine,” despite the declaratory judgment plaintiff’s insistence that the underlying contract dispute required resolution of patent validity and claim scope that were within the federal courts’ exclusive purview.
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The Intellectual Property Strategist
Looking Ahead to Avoid Spoliation Sanctions
Daniel J. Melman and Sarah Benowich
A recent Federal Circuit decision denying a petition for a writ of mandamus should serve as a cautionary tale and reminder for corporate entities regarding the critical importance of preserving documentary evidence in a timely and appropriate manner.
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