The Ninth Circuit Court of Appeals recently held in VIP Products LLC v. Jack Daniel’s Properties, Inc. that the “Bad Spaniels” dog toy is an expressive work entitled to First Amendment protection. The court vacated the United...more
On March 9, 2020, Led Zeppelin won a major copyright battle over claims that they stole part of their signature song “Stairway to Heaven.” The Ninth Circuit Court of Appeals, ruling en banc, upheld a 2016 jury verdict that...more
The Supreme Court unanimously held that the United States Patent and Trademark Office (PTO) may not recover the salaries of its legal personnel as “expenses” in a civil action challenging an adverse decision by the PTO under...more
12/13/2019
/ American Rule ,
Attorney's Fees ,
Civil Claims ,
Fee-Shifting ,
Litigation Fees & Costs ,
Patent Act ,
Patent Applicants ,
Peter v NantKwest Inc ,
Prevailing Party ,
Remedies ,
SCOTUS ,
Section 145 ,
Summary Judgment ,
USPTO
On October 22, 2019, the U.S. House of Representatives voted 410-6 in favor of the Copyright Alternative in Small-Claims Enforcement Act of 2019, or CASE Act. If passed into law, the CASE Act would create a voluntary small...more
The U.S. District Court, District of Wisconsin, recently ordered Anheuser-Busch to stop using the label “No Corn Syrup” on its packaging, the latest ruling in a false advertising battle filed over Anheuser-Busch’s attack ads...more
9/19/2019
/ Anheuser-Busch ,
Beer ,
Beverage Manufacturers ,
Breweries ,
Comparative Advertising ,
Consumer Confusion ,
Deceptive Intent ,
Evidence ,
False Advertising ,
Irreparable Harm ,
Lanham Act ,
MillerCoors ,
Misleading Impressions ,
Preliminary Injunctions
On April 20, 2018, the Democratic National Committee (“DNC”) sued the Russian Federation, Donald J. Trump for President, Inc. (the “Campaign”), WikiLeaks, and other defendants relating to the Russian Federation’s theft of...more
The Supreme Court of the United States recently granted certiorari in two trademark cases. In Romag Fasteners v. Fossil, the Court will consider whether courts can order trademark infringers to disgorge their profits without...more
7/8/2019
/ Appeals ,
Calculation of Damages ,
Certiorari ,
Claim Preclusion ,
Corporate Counsel ,
Fashion Design ,
Lanham Act ,
Res Judicata ,
Romag Fasteners v Fossil ,
SCOTUS ,
Split of Authority ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Willful Infringement
The Supreme Court held Monday that the Lanham Act’s bar on “immoral or scandalous” trademarks is unconstitutional under the First Amendment. Delivering the 6-3 opinion of the Court, Justice Kagan relied on the Court’s...more
6/25/2019
/ Appeals ,
Constitutional Challenges ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Reaffirmation ,
Reversal ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Viewpoint Discrimination
In April, we posted an article titled “Section 101 in 2019” summarizing the existing patent eligibility test, discussing recent Federal Circuit decisions, and providing practical strategies for practitioners to navigate the...more
5/29/2019
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Judicial Exception ,
Mayo v. Prometheus ,
Patent-Eligible Subject Matter ,
Patents ,
Product of Nature Doctrine ,
Proposed Legislation ,
Section 101 ,
Section 102 ,
Section 103 ,
Section 112
The U.S. Supreme Court recently held in Mission Product Holdings v. Tempnology that a trademark licensor cannot revoke the right of a licensee to use a trademark by terminating a license agreement in bankruptcy. Mission...more
5/24/2019
/ Bankruptcy Appellate Panel (BAP) ,
Bankruptcy Code ,
Breach of Contract ,
Commercial Bankruptcy ,
Debtors ,
Exclusions ,
Executory Contracts ,
IP License ,
Mission Product Holdings Inc v Tempnology LLC ,
Rescission ,
Reversal ,
SCOTUS ,
Section 365 ,
Split of Authority ,
Trademark Licenses ,
Trademarks ,
Trustees
Earlier this week, the Supreme Court of the United States heard oral argument in Iancu v. Brunetti regarding the constitutionality of the portion of Lanham Act, Section 2(a) (15 U.S.C. § 1052(a)) that prohibits the United...more
4/18/2019
/ Appeals ,
Certiorari ,
Constitutional Challenges ,
Disparagement ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Matal v Tam ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Vulgar or Offensive Marks
A recent decision by the Federal Circuit has broadened the potential for declaratory judgment personal jurisdiction to exist based on letters sent to accused patent infringers in a foreign forum. In Jack Henry & Associates,...more
On Monday, the Supreme Court of the United States granted certiorari in Iancu v. NantKwest to resolve a circuit split concerning “expenses” a patent applicant must pay when challenging the United States Patent and Trademark...more
3/7/2019
/ 35 U.S.C. § 145 ,
Administrative Proceedings ,
American Rule ,
Attorney's Fees ,
Certiorari ,
En Banc Review ,
Litigation Fees & Costs ,
Patent Examinations ,
Patent Litigation ,
Patents ,
Prevailing Party ,
Split of Authority ,
Trademarks ,
USPTO
Today, March 4, 2019 the Supreme Court of the United States ruled in Rimini Street v. Oracle USA that “full costs” described in 17 U.S.C. § 505 of the (Copyright Act) are limited to the six categories of taxable costs set...more
3/5/2019
/ Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Judicial Discretion ,
Litigation Fees & Costs ,
Prevailing Party ,
Remand ,
Reversal ,
Rimini Street Inc v Oracle USA Inc ,
SCOTUS ,
Split of Authority ,
The Copyright Act
On Tuesday, the Ninth Circuit declined to vacate a district court’s ruling at the request of the parties after they reached a settlement of their trademark dispute.
In Reserve Media, Inc. v. Efficient Frontiers, Inc.,...more
The Ninth Circuit Court of Appeals recently held that the title of a webcast, which included two trademarks belonging to another party, constituted nominative fair use, which protected the defendants from trademark...more
2/7/2019
/ Advertising ,
Endorsements ,
Fair Use ,
Goods or Services ,
Intellectual Property Protection ,
Likelihood of Confusion ,
Marketing ,
Nominative Fair Use Doctrine ,
Sponsors ,
Trademark Infringement ,
Trademarks
On Friday, the Supreme Court of the United States agreed to hear a case that will decide whether the federal ban on trademark protection for “scandalous” material is unconstitutional. In re Brunetti follows the U.S. Patent...more
1/9/2019
/ Appeals ,
Certiorari ,
Disparagement ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Matal v Tam ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Vulgar or Offensive Marks
On December 12, 2018, the Second Circuit Court of Appeals affirmed a district court’s ruling favoring several major record company plaintiffs in a copyright infringement case against a digital music resale site. Defendant...more
On October 26, 2018, the Supreme Court of the United States (“SCOTUS”) granted certiorari in two IP cases. In Mission Product Holdings, Inc. v. Tempnology, LLC, SCOTUS will address a circuit split on the effect bankruptcy...more
A California attorney and her law firm filed a petition on October 18, 2018, asking the Supreme Court of the United States (“SCOTUS”) to review the California Supreme Court’s ruling that reversed an injunction that would have...more
Last week, President Trump signed into law the Orrin G. Hatch–Bob Goodlatte Music Modernization Act. The Act modifies existing law under the Copyright Act, and largely affects only those who deliver digital music content or...more
The Ninth Circuit held yesterday in American Freedom Defense Initiative v. King County that a county’s advertising program on public buses that rejected advertisements on the basis of disparaging material violates the First...more
On September 27, 2018, the Supreme Court of the United States granted certiorari in Oracle USA v. Rimini Street to resolve a split among the United States Circuit Courts of Appeals concerning costs awarded to a prevailing...more
Last week, the Federal Circuit held that tribal sovereign immunity does not apply to inter partes review (IPR) actions instituted at the Patent Trial and Appeal Board. The decision, in Saint Regis Mohawk Tribe et al. v. Mylan...more
7/25/2018
/ Inter Partes Review (IPR) Proceeding ,
IP License ,
Mylan Pharmaceuticals ,
Native American Issues ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Sovereign Immunity ,
Tribal Governments
The Supreme Court of the United States granted certiorari in Fourth Estate Public Benefit v. Wall-Street.com to resolve a long-standing split among the United States Circuit Courts of Appeals concerning whether copyright...more