-
The Intellectual Property Strategist
11th Circuit Weighs in on Intersection of Lanham Act and FDCA Protein Powder Labeling Requirements
Kyle-Beth Hilfer
A battle between two dietary supplement manufacturers has revived interested in the intersection between the Lanham Act and federal labeling regulations. The issue: can an advertiser challenge a competitor’s product label for false advertising under the Lanham Act if it complies with applicable federal regulations?
Read More ›
-
The Intellectual Property Strategist
The USPTO Brings New Guidance to the Section 101 Quandary
Susan M. Gerber and A. Patricia Campbell
Part Two of a Two-Part Article
USPTO Attempts to Provide Greater Clarity for Patent-Eligible Subject Matter
Read More ›
-
The Intellectual Property Strategist
IP News
Howard Shire and Christine Weller
Kapoor v. National Rifle Association of America
Read More ›
-
Entertainment Law & Finance
Book Releases
The Essential Guide to Entertainment Law: Intellectual Property
The Essential Guide to Entertainment Law: Dealmaking
Read More ›
-
The Intellectual Property Strategist
Patent Eligibility Remains Uncertain — Especially for the Life Sciences — Even After Recent Federal Circuit Decisions and Efforts By the USPTO to Bring Clarity
Susan M. Gerber and A. Patricia Campbell
Part One of a Two-Part Article
Congress is empowered to create a patent system to promote the useful arts, and it has enacted laws to create a patent system that encourages innovation. Balancing that power, however, the courts in recent years have tried to rein in the scope of the patent right by limiting the scope of patent-eligible subject matter.
Read More ›
-
The Intellectual Property Strategist
Use of Arbitration In Place of Inter Partes Review Proceedings
David L. Newman
An IPR might be more efficiently accomplished through arbitration than through a PTAB proceeding, so it should be considered by practitioners.
Read More ›
-
The Intellectual Property Strategist
IP News
Jeff Ginsberg and Hui Li
Obviousness-Type Double Patenting Does Not Invalidate Section 156 Patent Term Extension
Federal Circuit Holds Assignor Estoppel Does Not Apply in IPR Context
Federal Circuit Reverses District Court Holding of Patent Ineligibility of Computer Security Patent
Read More ›
-
The Intellectual Property Strategist
An Overview of Recovering Trademark Infringement Damages
Marcus Harris and Ryan Burandt
This article discusses recovering damages for trademark infringement and various strategies for establishing those damages.
Read More ›
-
Entertainment Law & Finance
IP Provisions in ‘New NAFTA’ Agreement
Lawrence E. Ashery
With Canada's agreement, the stage was set for the 24-year-old North American Free Trade Agreement (NAFTA) to end and the U.S. Mexico Canada Agreement (USMCA) to take its place.Among the provisions of note for the entertainment industry, copyright will receive a boost from the USMCA.
Read More ›
-
The Intellectual Property Strategist
Further Guidance On Article III Standing To Appeal PTAB Decisions Coming Soon
Lewis R. Clayton and Eric Alan Stone
How, if at all, can a non-injured party that challenges a patent before the PTAB and loses may then demonstrate Article III standing to appeal to the federal courts from the PTAB’s decision upholding the patent’s validity.
Read More ›
-
The Intellectual Property Strategist
U.S. Trade-Secret Theft Prosecutions Target China and Are on the Rise
Phillip Bantz
The U.S. and China are in the midst of an escalating trade war and the DOJ has been prosecuting trade misappropriation cases against China with notable vigor as of late.
Read More ›
-
The Intellectual Property Strategist
IP News
Christine E. Weller
Converse v. ITC
Read More ›
-
The Intellectual Property Strategist
The PTAB’s New Claim Construction Standard: Will the Real Impact Please Stand Up
Justin Oliver
Beginning on Nov. 13, 2018, the USPTO will cease to apply the broadest reasonable interpretation (BRI) standard for newly-filed IPR, PGR, and CBM trials under the America Invents Act (AIA). Instead, the USPTO will begin “using the same claim construction standard that would be used to construe the claim in a civil action …."
Read More ›
-
The Intellectual Property Strategist
Alleging the Existence of a Trade Secret in a Misappropriation Case
Daniel R. Saeedi
The Detail Dilemma
How much detail does it take to allege a trade secret under federal pleadings standards? Can the alleged trade secret be described generally in the complaint or must it be described in detail? This article analyzes the various considerations that inform a court’s viewpoint on the issue. Lawyers who litigate trade secret cases should be well-aware of these considerations.
Read More ›
-
The Intellectual Property Strategist
The ‘New NAFTA’ and How It Will Affect Intellectual Property Law
Lawrence E. Ashery
The stage is set for the 24-year-old north American Free Trade Agreement (NAFTA) to end and the U.S. Mexico Canada Agreement (USMCA), which has implications for intellectual property, to take its place.
Read More ›
-
Entertainment Law & Finance
Bit Parts
Stan Soocher
Friday the 13th Screenplay Author’s Copyright Termination Notice Found Valid
Infringement Suit over Justin Timberlake’s “Damn Girl” Allowed to Proceed
Read More ›
-
The Intellectual Property Strategist
IP News
Jeff Ginsberg and George Soussou
Obviousness Determination Can Be Different for Apparatus and Method Claims
Petitioner “Bears the Burden” On Demonstrating Real Parties in Interest
Read More ›
-
Entertainment Law & Finance
How Entertainment and Media Brand Owners Can Prepare for Brexit Scenarios
William Stroever
Following the “Brexit” vote by the United Kingdom signaling its intent to leave the European Union, there was a rush of speculation and guesswork about how EU trademark and design rights would be treated. What progress has been made and what obstacles remain to a smooth transition?
Read More ›
-
Entertainment Law & Finance
'Star Wars' Sabacc Game Lawsuit Is Resolved
Ross Todd
Lucasfilm Ltd. won a dispute over the rights to the card game that plays a pivotal, if small, role in the greater Star Wars galaxy.
Read More ›
-
The Intellectual Property Strategist
The High Bar for Challenging an Improperly Revived Patent
Scott D. Locke
The recent In Re Rembrandt Technologies decision is a reminder of both the potential consequence of a patent holder’s disingenuous assertion of unintentionality and the challenges that defendants face when raising the improper filing of a petition to revive a lapsed patent as a defense.
Read More ›
-
The Intellectual Property Strategist
Fair Use, First Sale and Marilyn Monroe
Robert W. Clarida and Robert J. Bernstein
Recently, the Southern District of New York resolved a question that neither the Southern District nor the Second Circuit had ever squarely faced: Can the lawful owner of an art object create and post a photograph of that object in connection with the sale of the object through an online platform such as eBay, without the permission of the owner of copyright in the object?
Read More ›
-
The Intellectual Property Strategist
Non-Traditional Trademarks: The Elusiveness of Branding a Trend
Olivera Medenica
A look at several unique trademark cases where the plaintiff fashion brand proactively sought to invalidate a competitor’s non-traditional trademarks, an action which reflects a push back on increasingly aggressive litigation tactics by fashion brands seeking to blur the lines between a non-protectable fashion trend and a protectable trademark.
Read More ›
-
The Intellectual Property Strategist
PTO Gives Iancu More Control over PTAB Precedents
Scott Graham
The USPTO announced revisions to PTAB procedures that formalize Andrei Iancu’s control over the 250 administrative patent judges and their policy-making, while making that control more transparent.
Read More ›
-
The Intellectual Property Strategist
IP News
Howard Shire and Adam Fischer
Federal Circuit: IPR Petitioner Always Retains Burden of Establishing Timeliness
Federal Circuit: Framework for ‘Overlapping Cases’ Applies in IPR
Read More ›
-
Entertainment Law & Finance
Prince’s Estate Files NJ Lawsuit over prince.com
Charles Toutant
A dealer in Internet domain names is accused in a cybersquatting suit of an illegal attempt to seize on the posthumous popularity of Prince.
Read More ›
-
Entertainment Law & Finance
Commentary: Amended Opinion No Cause for Alarm in ‘Blurred Lines’ Case Outcome
Robert J. Bernstein and Robert W. Clarida
Over the summer, a divided panel of the Ninth Circuit affirmed the denial of a new trial motion and an order denying rehearing en banc in Williams v. Gaye. We now consider whether the final affirmance of the jury verdict in favor of Marvin Gaye’s heirs is likely to wreak havoc on musical creativity as some, including the dissent, have argued. For us, the short answer is no.
Read More ›
-
Entertainment Law & Finance
Disney Claims over Party Characters Partially Dismissed
Jenna Greene
Disney Enterprises has been handed a setback in an ill-conceived lawsuit: Going after people who dress up as Disney-owned characters like Elsa from Frozen or Chewbacca from Star Wars to perform at children's birthday parties.
Read More ›
-
The Intellectual Property Strategist
The Price to Pay for De Novo Review of PTO Decisions
Jonathan Moskin
NantKwest v Iancu
The Federal Circuit sitting en banc reversed its own prior ruling and held that “all expenses of the proceeding” does not include attorneys’ fees.
Read More ›
-
The Intellectual Property Strategist
Patent Eligibility of User Interfaces
Lawrence H. Aaronson and James L. Korenchan
Advances in UI Design Can Provide Key Competitive Differentiation and Advantage, Which Makes Protecting Them Critically Important from a Business Perspective
Advances in UI design can also provide key competitive differentiation and advantage, helping to distinguish otherwise commoditized products and services such as computers, Web services, wearables, and appliances. Given this advantage, protecting advances in UI design can also be critically important from a business perspective.
Read More ›
-
The Intellectual Property Strategist
IP News
Jeffrey S. Ginsberg and Abhishek Bapna
Federal Circuit Remands for Further Proceedings to Determine Whether RPX’s Petitions for IPR Were Time Barred For Failing to Identify Its Client As a ‘Real Party in Interest’
Federal Circuit Holds that Common Law Tribal Sovereign Immunity Cannot Shield a Patent in IPR Proceedings,br>
Federal Circuit Holds that an Unsuccessful IPR Petitioner Must Show ‘Concrete Plans’ for Future Potentially-Infringing Activity in Order to Demonstrate Article III Standing to Appeal PTAB’s IPR Decision
Read More ›
-
Entertainment Law & Finance
‘Surrealistic’ Suit Against Museum over Dalí Persona
Scott Graham
The Spanish foundation that administers the intellectual property rights of famed surrealist Salvador Dalí is suing a Monterey, CA, museum that displays a permanent Dalí exhibition and uses the artist’s name and likeness to promote it.
Read More ›
-
The Intellectual Property Strategist
Foreign Lost Profits Recoverable for Patent Damages
Elizabeth B. Hagan
The U.S. Supreme Court recently held that a patent owner may recover lost foreign profits for infringement under 35 U.S.C. §271(f)(2). The holding in WesternGeco LLC v. ION Geophysical rejects the Federal Circuit’s categorical exclusion of lost profits damages for foreign sales, and expands the potential for increased damages from domestic competitors operating in foreign markets.
Read More ›
-
The Intellectual Property Strategist
Supreme Court to Review Post-AIA On-Sale Bar
Jon Bachand and Ari Feinstein
The U.S. Supreme Court agreed to consider a question raised by Helsinn Healthcare: whether, under the Leahy-Smith America Invents Act (AIA) an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.
Read More ›
-
The Intellectual Property Strategist
“Registration” Means “Registration” … Or Does It?
James A. Trigg and Chris Bussert
Supreme Court Grants Cert to Resolve Circuit Split on Registration Prerequisite for Filing Suit under Copyright Act
Although the term “registration” as used in the Section 411(a) of the Copyright Act does not immediately appear to be ambiguous, courts have reached differing conclusions as to its meaning.
Read More ›
-
The Intellectual Property Strategist
IP News
Howard Shire and Adam Fisher
Federal Circuit Holds That Tribal Sovereign Immunity Cannot Be Asserted in IPR Proceedings
Citing ‘Steep Burden’ on Plaintiffs, Federal Circuit Denies Use of ‘Entire Market Value Rule’ in Cases Involving Multicomponent Products
Read More ›
-
The Intellectual Property Strategist
Affirmation of the Alien Venue Rule
Brian Kramer and Kevin T. Kwon
In re: HTC Corporation
The Federal Circuit recently addressed motions to transfer and drew a distinction between motions based upon the convenience of parties and witnesses and those for improper venue. It also clarified that the Supreme Court’s recent decision in TC Heartland did not supplant the long-standing rule that venue laws do not protect foreign defendants.
Read More ›
-
The Intellectual Property Strategist
General Data Protection Regulation: Defense or Offense?
Nina Cunningham
Ostensibly, GDPR’s mission is to strengthen and unify the EU’s protection of online privacy rights and promote data protection for citizens of the 28 countries currently in the EU. In the global economy, however, GDPR serves as an alarm to all countries with business flowing across Europe and well beyond. Where business flows, data follow.
Read More ›
-
The Intellectual Property Strategist
IP News
Jeff Ginsberg and Zhiqiang Liu
A Split Federal Circuit Panel Finds That Petitioner Has Standing to Challenge PTAB’s Final Written Decision and That Petitioner Properly Submitted Evidence on Reply
Federal Circuit Rejects Patent Owner’s Time-Bar Defense Based on Privity
Federal Circuit Finds That District Court May Rely on a Ground Not Raised by Any Party in Granting a Motion for Summary Judgment of Invalidity
Read More ›
-
The Intellectual Property Strategist
Sending Out an SAS: Analyzing the SAS Institute Inc. v. Iancu Decision
Richard Hung and Rachel Silverman Dolphin
In a 5-4 decision, with four justices dissenting, the U.S. Supreme Court struck down the Patent Trial and Appeal Board’s practice of instituting review on only a subset of an inter partes review (IPR) petitioner’s validity challenges.
Read More ›
-
The Intellectual Property Strategist
Supreme Court Gives Inter Partes Review the Green Light
Athul K. Acharya
Oil States Energy Services v. Greene’s Energy Group
Is inter partes review of a patent grant compatible with Article III and the Seventh Amendment? That was the question presented in Oil States Energy Services v. Greene’s Energy Group and the U.S. Supreme Court answered in the affirmative.
Read More ›
-
The Intellectual Property Strategist
Trademark ‘Theft’ With AdWords Keyword Bidding
Aaron Cohn
Many Courts Have Determined that AdWords Bidding Alone Does Not Create Sufficient Consumer Confusion to Support Trademark Infringement Claims
As Internet searching continues its rapid migration to mobile and inadvertent infringement becomes inevitable, the courts are likely to see an increase of litigation in this area.
Read More ›
-
The Intellectual Property Strategist
IP News
Howard Shire and Adam B. Fischer
Federal Circuit Holds USPTO Can Defend PTAB Decision After Original Petitioner Drops Out
Federal Circuit Says Alice Not Intervening Change
Read More ›
-
Entertainment Law & Finance
Bit Parts
Stan Soocher
Brief Use of Graffiti Art in HBO’s Vinyl Show Found De Minimis
Chinese Film Company Subject to Personal Jurisdiction in Location Security Company’s Colorado Lawsuit
Read More ›
-
The Intellectual Property Strategist
Federal Circuit Reinstates Oracle’s Copyright Infringement Claims Against Google, Rejecting Fair Use Defense
Nathan D. Renov
On March 27, 2018, in Oracle America, Inc. v. Google LLC, the Federal Circuit overturned a jury verdict in favor of Google from the U.S. District Court for the Northern District of California. In doing so, the court revived Oracle’s claim that Google’s use of Oracle’s open-source Java language code did not constitute “fair use.”
Read More ›
-
The Intellectual Property Strategist
Supreme Court Eyes Relaxing Rule on Foreign Patent Damages
Scott Graham
Despite Possibility of ‘Chaos,’ Presumption Against Extraterritorial Application May Give Way to Simple Proximate Cause Test, Justices Suggest
The U.S. Supreme Court seemed to be mulling a flexible test for foreign patent damages last month, with the categorical presumption against extraterritoriality taking a back seat.
Read More ›
-
The Intellectual Property Strategist
Copyright Law in the Age of Twitter
Shari Claire Lewis
A Recent Decision by the U.S. District Court for the Southern District of New York Involving Twitter May Have Significant Implications for Online Publications
The exponential growth of social media, and the inevitable conflicts that result, is leading to more and more litigation. In many instances, courts are being asked to apply laws crafted before the Internet era to these modern disputes.
Read More ›
-
The Intellectual Property Strategist
Brexit and IP: Finally Some Real News, and What It Means for Attorneys
Mark Holah
Much has been written about what will happen to EU-wide IP rights after Brexit — and whether, and how, the protection given by those rights will be maintained in the UK. Finally, we have some clarity about what is going to happen.
Read More ›
-
The Intellectual Property Strategist
IP News
Jeff Ginsberg and Dorothy LeRay
Federal Circuit Affirms Dismissal of Declaratory-Judgment Action Based Under Rule Against Piecemeal Adjudication
Federal Circuit Affirms Non-Infringement Finding Despite Defendant’s Discovery Violation
Read More ›
-
Entertainment Law & Finance
Bankruptcy Impact on Trademarks, Distribution Rights
Shmuel Vasser and Yehuda Goor
It’s not uncommon for rights licensees in the entertainment industry to find themselves in a rights dispute when a licensor files for bankruptcy.
Read More ›
-
The Intellectual Property Strategist
Walking the Fine Line of Fair Use: The Second Circuit’s Decision in Fox News v. TVEyes
Crystal Genteman and Chris Bussert
Only a small fraction of television news broadcasts are made available online. For a party to monitor and view all news coverage of an event, it would essentially have to watch and record all news broadcasts 24/7. That’s exactly what media-monitoring service TVEyes did. There was no dispute that TVEyes had copied Fox News’s content. Instead, the issue was whether TVEyes’s service constituted fair use.
Read More ›
