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The Intellectual Property Strategist
Supreme Court Holds Bar Against Registration of Immoral or Scandalous Marks Violates the First Amendment
Peter Kidd
Iancu v. Brunetti
The Supreme Court held the bar against registration of immoral or scandalous marks “collided” with well-established free speech doctrine, namely, that laws disadvantaging speech based on the views expressed thereby violate the First Amendment.
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The Intellectual Property Strategist
Case on ‘Coolcore’ Marks Settles a 34 Year Debate Regarding Bankruptcy and IP Law
Charles A. Cartagena-Ortiz
The U.S. Supreme Court issued its long-awaited decision in Mission Product Holdings, Inc. v. Tempnology , ruling that a trademark licensee can retain its rights under a trademark license agreement that is rejected by the licensor as an executory contract in bankruptcy.
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The Intellectual Property Strategist
Takeaways from the Recent Qualcomm Decision
Karen Hoffman Lent and Kenneth Schwartz
The DOJ’s intervention, and the judge’s ultimate decision, has exposed tensions between the DOJ and FTC, and within the FTC itself, and public scrutiny is far from over as the case heads to the Ninth Circuit on appeal.
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The Intellectual Property Strategist
Reflections on Potential Legislative Reform of the Patent Eligibility Standard
Nicole D. Galli
In the last five years, the courts have instead began wading into policy setting without the tools and resources to fully consider all the issues and various interests. Thus, the recent congressional efforts to consider these questions is welcome and, frankly, overdue.
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The Intellectual Property Strategist
States Not Immune from PTAB Proceedings, Federal Circuit Rules
Scott Graham
Fifteen states had argued that they and their public universities shouldn’t have to expose their patents to validity review at the patent trial and appeal board.
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The Intellectual Property Strategist
IP News
Jeffrey S. Ginsberg and Abhishek Bapna
Federal Circuit Finds District Court Erred in Analysis of Motivation to Combine Prior Art References, Yet Affirms Ultimate Conclusion of Non-obviousness Due to the Lack of a Reasonable Expectation of Success
Federal Circuit Rules that Issue Preclusion Bars a Party from Arguing in an Appeal of an Inter Partes Review Decision an Issue Previously Decided in Another Inter Partes Review Proceeding that Was Not Appealed
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The Intellectual Property Strategist
As Section 101 and the Progeny of Mayo and Myriad Continue to Wreak Havoc on Portfolios, How Is The Life Sciences Industry Fighting Back?
Wesley Overson, Otis Littlefield, Mat Swiderski, and Stephanie Blij
Since the U.S. Supreme Court decided Mayo and Myriad, the Federal Circuit has expanded the holdings and invalidated more patents directed to biological discoveries. If the newly discovered correlations and properties of what is found in nature cannot be patented, what strategies for protection are left for companies doing biological research?
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The Intellectual Property Strategist
Photographs on the Internet: Circuit Courts Examine Copyright Infringement
Kyle-Beth Hilfer
Two recent circuit court cases clarified copyright infringement of photographs on the Internet. Both cases serve as cautionary tales for those who takes photographs for their websites from the Internet without investigating copyright rights.
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The Intellectual Property Strategist
Stanford Is Serving 11 Flavors of NPE
Scott Graham
Stanford Law School made available to the public a database of every patent lawsuit that’s been filed since 2007.
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The Intellectual Property Strategist
IP News
Howard Shire and Christine Weller
Mercedes Benz USA LLC v. Bombardier
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Cybersecurity Law & Strategy
IP Theft Goes Far Beyond the Huawei Scandal: How to Stay Safe
Ilia Sotnikov
IP theft is not limited to kingpins of business. Even if your organization has never appeared in the headlines, you cannot rest easy that no one is interested in acquiring your know-how. In fact, analysis the results of our survey for the 2018 Netwrix IT Risks Report reveals that small and medium organizations are actually more vulnerable to IP theft and cyber espionage than enterprises.
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The Intellectual Property Strategist
Hey! That’s My Move!
Erin Hennessy, Annie Allison and Logan Kotler
Copyright, Fortnite and the Ability to Protect How You Shake Your Groove Thing
The U.S. Supreme Court just crashed the copyright world’s latest dance party — stepping on the toes of a soiree of copyright infringement lawsuits against videogame developer Epic Games, the creator of Fortnite.
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The Intellectual Property Strategist
IPR Estoppel: The Present and the Future
John P. Isacson
IPRs have now been conducted for several years, and litigation has ensued over the procedures by which they are conducted. Decisions have been rendered by the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit, which have resolved some issues, created others, and altered procedures.
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Entertainment Law & Finance
Bit Parts
Stan Soocher
Rick Ross Defeats Trademark Suit over Mastermind Album
TV Host’s Course of Conduct During Life Bars Estate From Getting His IP and Publicity Rights
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The Intellectual Property Strategist
Best Practices for Social Media Advertising
Amanda H. Wilcox
Social media is growing up, and this means that brands of all sizes and across all industries are using social media as part of their marketing strategy. However, courts have confirmed that the basic tenets of intellectual property law and advertising law still apply. The following guidelines stem from common questions that clients often have in the area of social media marketing.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and Zhiqiang Liu
Federal Circuit Declines to Follow Patent Office’s Subject Matter Eligibility Guidance In Affirming Trial Court’s Decision That Claims Are Directed to Patent-Ineligible Subject Matter
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Entertainment Law & Finance
U.S. Supreme Court’s Ruling on Copyright Registration
Robert J. Bernstein and Robert W. Clarida
The Supreme Court had granted cert in Fourth Estate to resolve a split in the federal circuit courts as to whether §411(a) of the Copyright Act could be read to allow commencement of an infringement action once a registration application filed with the Copyright Office is complete (the “application approach”) or, instead, only (subject to limited statutorily specified exceptions) upon issuance by the Copyright Office of the registration (the “registration approach”).
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The Intellectual Property Strategist
The Supreme Court Finally Resolves An Old, Vexing Question: Does “Registration” Mean “Registration”? Answer: “Yes.”
James A. Trigg and Bethany R. Nelson
In Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, the Supreme Court resolved a circuit split decades in the making by holding that a copyright is not “registered” within the meaning of the Copyright Act unless and until a registration certificate actually has issued.
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The Intellectual Property Strategist
SCOTUS Agrees to Hear Case Determining Federal Registrability of Immoral and Scandalous Trademarks
Dana Justus and Monica Riva Talley
This case should determine the availability of federal trademark registration for “immoral” and “scandalous” marks – in this case, the acronym “FUCT” for a clothing line.
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The Intellectual Property Strategist
Monopolizing the Disruptive
Arthur Beeman
The Federal Circuit’s Threat to Software Innovation in the Oracle v. GoogleDecisions<
The Federal Circuit decisions in the Oracle v. Google copyright case rattled Silicon Valley not simply because the decisions upended software developers’ understandings of copyright law, but also because the decisions do not comport with the disruptive ethos of the technology industry.
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The Intellectual Property Strategist
IP News
Christine E. Weller
In celebration of International Women’s Day two years ago, State Street Global Advisors unveiled Fearless Girl at Bowling Green in the Financial District in Manhattan. Commissioned by State Street from the artist Kristen Visbal, the work has since become a part of the zeitgeist amidst global conversations about gender parity, diversity, and inclusion on a broader scale. Now, some two years later, Fearless Girl is raising additional intellectual property questions.
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Entertainment Law & Finance
Second Circuit Affirms ‘ReDigi’: No ‘Resale’ of Digital Music Files
Robert J. Bernstein and Robert W. Clarida
The U.S. Court of Appeals for the Second Circuit recently issued a long-awaited ruling in Capitol Records LLC v. ReDigi Inc., affirming summary judgment in favor of Capitol Records and its record label co-plaintiffs in a case that raised issues of first impression concerning first sale and fair use in the age of digital music distribution.
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The Intellectual Property Strategist
UMG v. Grande Communications: Another Victory for the Music Industry in Its Battle to Hold ISPs Liable for Peer-to-Peer File Sharing
J. Alexander Lawrence
Since the advent of the Internet, the music industry has been in a pitched battle to combat online piracy. Initially, the industry focused on shutting down services that offered peer-to-peer or other similar platforms, such as Napster, Aimster and Grokster. For a time, the industry also focused on filing claims against individual infringers to dissuade others from engaging similar conduct. In recent years, the industry seems to have shifted focus toward Internet Service Providers.
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The Intellectual Property Strategist
The DTSA’s Jurisdictional Nexus, Three Years In
Conor Tucker
The Defend Trade Secrets Act (DTSA) requires pleading a connection between a trade secret, a product or service, and interstate commerce. But failure to prove such a connection divests the district court of subject matter jurisdiction. This article summarizes the first three years of cases discussing the jurisdictional element and explores implications.
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The Intellectual Property Strategist
When Alice Leaves Software in Wonderland: Review the Terms of Use
Veronica Mullally Munoz
That least-read contract — the Terms of Use — can be an effective (albeit the last) weapon in the arsenal of a company trying to protect unpatented software technology while providing on-line services.
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The Intellectual Property Strategist
IP News
Jeffrey S. Ginsberg
SCOTUS Confirms that Secret Sales Continue to Qualify as Prior Art Under the AIA
New York District Judge Extends Estoppel Under §315(e) to Grounds Not Raised in Petition for Inter Partes Review
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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?
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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
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The Intellectual Property Strategist
IP News
Howard Shire and Christine Weller
Kapoor v. National Rifle Association of America
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Entertainment Law & Finance
Book Releases
The Essential Guide to Entertainment Law: Intellectual Property
The Essential Guide to Entertainment Law: Dealmaking
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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.
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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.
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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
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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.
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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.
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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.
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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.
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The Intellectual Property Strategist
IP News
Christine E. Weller
Converse v. ITC
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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 …."
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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.
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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.
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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
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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
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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?
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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.
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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.
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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?
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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.
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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.
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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
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