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The Intellectual Property Strategist
You Know What It Is: Taco Tuesday and the Failure-to-Function Doctrine In Trademark Law
Brandon Leahy
The foundational requirement that a trademark function as a trademark has received little attention in the case law. More recently, however, there has been an apparent uptick in scrutiny of trademark use by the USPTO and TTAB, as well as fresh academic attention paid to the issue.
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The Intellectual Property Strategist
Swedish Music Industry Views as European Union Countries Work on Drafting Home Laws for Enacting EU Copyright Directive
Stan Soocher
This article is Part One of a two-part article
This article examines the Copyright Directive and music-industry structure issues through the lens of Sweden, which has both a robust music business and a strong technology sector, two divergent perspectives in the development of the directive.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg
Northern District of Texas: Even Post-Berkheimer, Patent Claims Continue to be Ineligible for Patenting as a Matter of Law When They Are Not Drawn to Particular Technical Solutions or Advances Described in the Specification
Federal Circuit: The PTAB Cannot Institute Inter Partes Review on Obviousness Grounds Not Included in the IPR Petition, But Can Consider Evidence of “General Knowledge” in the Art
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Entertainment Law & Finance
‘Vanicorn’ Lawsuit Filed over Pixar, Disney Film
Scott Graham
A unicorn-loving tattoo artist alleges that Pixar and Disney have tricked her into letting them use her “Vanicorn” in the upcoming film Onward. Her suit accuses the companies of copyright infringement, and violations of state and federal laws protecting artwork.
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The Intellectual Property Strategist
U.S. Supreme Court Reaffirms the American Rule In De Novo Challenges to the PTO
Jonathan Moskin
In 2013, the PTO adopted a new policy under which any party commencing a de novo proceeding challenging a PTO decision would be responsible to pay a pro rata share of the salaries of the government attorneys working on the matter. On Dec. 11, 2019, the U.S. Supreme Court rejected the PTO’s new interpretation of the Patent Act and held that the American Rule, a centuries-old principle under which each party bears its own attorneys’ fees, does apply to this statute.
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The Intellectual Property Strategist
The Trademark That Got His Goat
Mary A. Donovan
In a recent trademark cancellation case that has drawn “human interest” attention in the news, the plaintiff appealed an adverse decision to the Federal Circuit. The plaintiff was not “kidding” when he expressed his opinion that the registered mark, described as “goats on a roof of grass,” is demeaning to goats which, in turn, is offensive to him.
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The Intellectual Property Strategist
IP News
Shaleen J. Patel
Do Not Pass Go? U.S. Supreme Court to Review Federal Circuit’s Finding of Justiciability
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The Intellectual Property Strategist
Patenting Diagnostic Tests: Can We Expect Changes?
Leslie Kushner
This article discusses the jurisprudence applied to determining patent eligibility of claims for diagnostic methods, and the expectation for changes in analysis of patent eligibility under §101 in the near future.
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The Intellectual Property Strategist
Safeguarding Your Intellectual Property
Matthew Calcagno
Documents are the lifeblood of any law firm. The documents that a firm produces are its greatest asset, especially the intellectual property — trade secrets, patent information, etc. — contained in those documents, yet firms historically have not made sufficient efforts to safeguard those documents from both internal and external threats.
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The Intellectual Property Strategist
When Are Short Phrases in Songs Protectable?
Robert W. Clarida and Robert J. Bernstein
It’s a common fact pattern: A songwriter alleges that another songwriter has infringed the lyrics of Song A by using a similar short phrase, frequently a current slang phrase, in the lyrics of Song B. Claims like this do not often succeed because “words and short phrases such as names, titles, and slogans” are “not subject to copyright.”
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The Intellectual Property Strategist
IP News
Joshua R. Stein and Jeff Ginsberg
Federal Circuit Holds PTAB Judges Unconstitutional, Constructs a Fix—But Not All Judges Agree on What Happens Next
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Entertainment Law & Finance
IP Issues and Esports Athletes
Frank Ready
A new esports-centric survey released by the law firm of Foley & Lardner projects that esports revenues will climb above the $1 billion mark this year. But the increased stakes and growing sophistication of the industry will likely not be without their headaches.
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The Intellectual Property Strategist
The California Consumer Privacy Act: Everything You Wanted to Know But Were Afraid to Ask
Alan L. Friel
Part Two of a Two-Part Article
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The Intellectual Property Strategist
Supreme Court, Finally, Takes Up Google v. Oracle
Scott Graham
The U.S. Supreme Court has jumped into a titanic copyright battle between Oracle Corp. and Google LLC with both barrels. The court’s involvement is sure to reignite a 50-year-old debate over how much, if any, software should be subject to copyright, and the contours of the fair use defense in the digital age.
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The Intellectual Property Strategist
More Chinese Companies Are Joining U.S. Firms to Fight Patent Trolls
Phillip Bantz
Some of China’s largest companies have banded together with major brands in the United States and elsewhere to neutralize “patent trolls,” an indication that the country’s firms are becoming increasingly concerned about patent infringement litigation.
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The Intellectual Property Strategist
IP News
Anthony H. Cataldo
U.S. Supreme Court to Hear Booking.com Trademark Case
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Entertainment Law & Finance
Photo Cases Test Copyright Law and Embedded Tweets
Raychel Lean
A New Yorker who settled a copyright lawsuit against several news outlets over a photo he took of star quarterback Tom Brady and Boston Celtics manager Danny Ainge has struck again. This time he’s suing a radio station owner in Florida federal courts in a case that could test the boundaries of an emerging area of copyright law, raising major questions about how media companies incorporate social media posts into online stories.
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Cybersecurity Law & Strategy
Safeguarding Your Intellectual Property
Matthew Calcagno
The documents that a firm produces are its greatest asset, yet firms historically have not made sufficient efforts to safeguard those documents from both internal and external threats. Law firms have typically had an open-door approach to document access. This means that anyone in your firm can likely access any document at any time, leaving your firm’s intellectual property entirely unprotected.
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Entertainment Law & Finance
Sparks From En Banc Arguments In Song Suit Against Led Zeppelin
Scott Graham
There was much harmony along with a few discordant notes as an en banc panel of the U.S. Court of Appeals for the Ninth Circuit took up the copyright case involving Led Zeppelin’s “Stairway to Heaven.”
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The Intellectual Property Strategist
Fourth Circuit Rules that Website’s Unauthorized Posting of Stock Photograph Was Not ‘Fair Use’
Michael W. Mitchell and Edward Roche
The decision in Brammer v. Violent Hues sheds some light on when re-posting will be a “fair use” and when it will give rise to liability.
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Entertainment Law & Finance
Cultural Icons Spawn Lawsuits Worth Close Looks
Michael F. Snyder
The ownership of intellectual property rights can be at the core of legal disputes involving pop culture icons. Considering the goodwill, effort and money spent in building a brand, character or commercial impression, it is not surprising that parties to intellectual property agreements find themselves revisiting their arrangements over time. That is what is happening in two recent federal lawsuits, one in New York involving a beloved figure in Philadelphia sports and the other in California focused on the Old Spice cologne commercial jingle.
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The Intellectual Property Strategist
How the U.S.-China Trade War Effects IP Strategy
Rob Maier
The trade war between the United States and China has had far-reaching effects on international trade and the global economy. The dispute is slowly developing into a battle of attrition, without any immediate resolution on the horizon despite ongoing trade talks. As businesses change the way they operate in response to this unpredictable trade environment, counsel should consider the risks and potential impacts on corporate IP strategy.
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The Intellectual Property Strategist
The California Consumer Privacy Act: Everything You Wanted to Know But Were Afraid to Ask
Alan L. Friel
Part One of a Two-Part Article
The California Consumer Privacy Act (CCPA) is a comprehensive new consumer protection law set to take effect on Jan. 1, 2020. In the wake of the CCPA’s passage, approximately 15 other states introduced their own CCPA-like privacy legislation, and similar proposals are being considered at the federal level. Part One of this article covers how the CCPA applies to businesses — both in and outside California, the revenue threshold, proposed amendments and other open issues.
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The Intellectual Property Strategist
IP News
George Soussou and Jeff Ginsberg
More Than a Recitation of Hooke’s Law Needed for Patent Protection
A Claim for a Chair Limits the Claim to a Chair
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The Intellectual Property Strategist
The Madrid System Turns 30: The Pros and Cons of Using the Madrid Protocol in the United States and for U.S. Based Companies
Stacey C. Kalamaras
This summer, the Madrid System turned 30 years old, and as two more countries prepare to join the Madrid Protocol we look at how the Madrid System has grown as it enters full adulthood.
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The Intellectual Property Strategist
Exploring the Nebulous Boundaries of Trade Dress
Nicole D. Galli
Now that we are in the digital age, questions have been raised about the trade dress of websites and apps.
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The Intellectual Property Strategist
Damages for Extraterritorial Infringement of U.S. Patents
Aaron Davidson
A look at the gray area of infringement of U.S. patents in the U.S., but with related consequences or actions outside the U.S.
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The Intellectual Property Strategist
IP News
Howard Shire and Christine Weller
Penn State Files Trademark Lawsuit against Sports Beer Brewing Company
Can OSU Trademark the Word “The”?
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Entertainment Law & Finance
Analysis of Warhol Art Fair Use Ruling
Robert W. Clarida and Robert J. Bernstein
The U.S. District Court for the Southern District of New York held that a series of silkscreen paintings and prints by Andy Warhol based on a photograph of music legend Prince taken by Lynn Goldsmith constituted a transformative fair use.
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The Intellectual Property Strategist
Seeing Green: Protecting Brands In the Cannabis Industry
David S. Gold
Branding is not a new concept, nor are the various intellectual property laws that protect brands. What is new to most is how this burgeoning industry can take advantage of those laws within the context of state and federal restrictions.
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The Intellectual Property Strategist
Rights and Obligations In Patent Licenses
Tom Gushue
The owner of a commercially successful patent may have competing desires. On one hand, the patent owner wants to protect the patent and secure its maximum benefit; on the other hand, the patent owner wants to avoid enforcement litigation with competitors because it is expensive and puts the patent at risk.
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The Intellectual Property Strategist
Did Congress Create Unintended Risks to Innovators In the AIA?
Glenn E.J. Murphy
Many observers greeted the passage of the AIA into law as a long-overdue overhaul of U.S. patent law that aligned it with patent systems prevailing in the rest of the world. Who knew what mischief just seven of the AIA’s more than 25,000 words contained? The U.S. Supreme Court answered earlier this year.
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The Intellectual Property Strategist
SCOTUS to Address Whether Lanham Act Requires Willful Infringement for Profit Disgorgement
Norman C. Simon and Patrick J. Campbell
The decision in Romag Fasteners v. Fossil will bring welcome uniformity, ending the status quo where eligibility to recover profits under the Lanham Act depends on which court is deciding the dispute
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Entertainment Law & Finance
Limit in Supreme Court Striking Down Ban On ‘Scandalous’ Trademarks
Brian R. Michalek
In the U.S. Supreme Court’s ruling in Iancu v. Brunetti, Justice Sonia Sotomayor’s dissent cautioned that the decision is likely to pave a path to a “coming rush to register [vulgar, profane, or obscene] trademarks.” The reasoning stems from the court’s majority finding that a portion of 15 U.S.C. §1052 — which had previously prohibited the registering of “immoral” or “scandalous” trademarks — is unconstitutional. Practically speaking, however, this “coming rush” will likely not be the case, even via the entertainment industry.
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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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