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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.
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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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The Intellectual Property Strategist
IP News
Howard Shire and Stephanie Remy
District Court: Exceptionality Found and Attorney Fees Awarded When Patent Owner Pursued Litigation With a Fraudulently Obtained Patent
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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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