On June 24, 2019, the U.S. Supreme Court, in Iancu v. Brunetti, struck down the Lanham Act’s prohibition on the registration of “immoral” or “scandalous” trademarks. Justice Kagan wrote for the 6-3 majority, holding that the...more
8/25/2019
/ Constitutional Challenges ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Matal v Tam ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Viewpoint Discrimination
In This Issue -
A Looming AI War: Transparency v. IP Rights -
As artificial intelligence systems become more prevalent in daily life, efforts to create a unifying set of AI principles have intensified. In the past few...more
8/21/2019
/ Artificial Intelligence ,
Attorney's Fees ,
Bayh-Dole Act ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Defend Trade Secrets Act (DTSA) ,
Federal Funding ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inventions ,
Lanham Act ,
Litigation Fees & Costs ,
Patent Applications ,
Patent Infringement ,
Patent Reform ,
Patent-Eligible Subject Matter ,
Patents ,
Scandalous/Immoral Marks ,
Trademarks
A petition for writ of certiorari pending before the U.S. Supreme Court asks the Court to decide whether a plaintiff must prove willful infringement to obtain an award of a trademark infringer’s profits for a violation of 15...more
5/16/2019
/ Appeals ,
Calculation of Damages ,
Corporate Counsel ,
Damages ,
Fashion Design ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Petition for Writ of Certiorari ,
Profits ,
Remand ,
Romag Fasteners v Fossil ,
SCOTUS ,
Split of Authority ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Willful Infringement
Avoiding the Top 5 Potholes for Autonomous Transportation Startups -
Autonomous transportation technology was widespread at the 2019 Consumer Electronics Show. Advances in object identification, mapping, machine learning,...more
5/10/2019
/ Automotive Industry ,
CARU ,
Confidential Information ,
Connected Cars ,
COPPA ,
Copyright ,
Disclosure Requirements ,
Driverless Cars ,
Federal Trade Commission (FTC) ,
General Data Protection Regulation (GDPR) ,
Intellectual Property Protection ,
Manufacturers ,
Petition for Writ of Certiorari ,
Popular ,
Proposed Amendments ,
Startups ,
Technology Sector ,
Trade Secrets ,
Trademarks ,
UK ,
USPTO
The Central District Court of California has held that the First and Eighth Amendments protect the trademark-registered emblems of the Mongol Nation motorcycle club from forfeiture. ...more
In a unanimous decision this month, the U.S. Supreme Court held that a copyright claimant cannot sue for infringement until the U.S. Copyright Office has granted or rejected the application to register the copyright. In...more
3/22/2019
/ Appeals ,
Copyright ,
Copyright Exhaustion ,
Copyright Infringement ,
Copyright Registration ,
Damages ,
Fourth Estate Public Benefit Corp v Wall-Street.com LLC ,
SCOTUS ,
Solicitor General ,
Split of Authority ,
The Copyright Act ,
Uniformity
As the U.S. Supreme Court kicks off its 2018 term this week, it prepares to take up a series of firsts, including questions about the America Invents Act, securities fraud and privacy-related class action litigation. At the...more
10/2/2018
/ America Invents Act ,
Arbitration ,
Arbitration Agreements ,
Class Action ,
Class Arbitration ,
Class Members ,
Contract Interpretation ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Corporate Counsel ,
Cy Pres Funds ,
Federal Arbitration Act ,
Fee Awards ,
Intellectual Property Protection ,
Life Sciences ,
Patent Litigation ,
Patents ,
Pharmaceutical Industry ,
Prior Art ,
Privacy Laws ,
SCOTUS ,
Securities and Exchange Commission (SEC) ,
Securities Fraud ,
Settlement ,
Split of Authority ,
Technology Sector ,
The Copyright Act ,
Video Games
For the first time since it began balancing the competing interests of trademark plaintiffs and creators of expressive works, the U.S. Court of Appeals for the Ninth Circuit held this month in Gordon v. Drape Creative that...more
The U.S. Court of Appeals for the Ninth Circuit concluded on March 28 that virtual currency used in mobile games can qualify as a “thing of value” for the purpose of state gambling laws — a conclusion that, until now, has...more
In a move that will likely benefit game developers, the U.S. Court of Appeals for the Ninth Circuit explicitly held that First Amendment protection extends to use of third-party trademarks in the commercial promotion of an...more
11/30/2017
/ Appeals ,
Arrangement and Promotion ,
Artistic Works ,
Commercial Use ,
First Amendment ,
Gaming ,
Intellectual Property Protection ,
Music Industry ,
Summary Judgment ,
Television Shows ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Twentieth Century Fox ,
Video Games
The U.S. Court of Appeals for the Second Circuit on Nov. 21, 2017, affirmed the dismissal of a putative class action alleging violations of the Illinois Biometric Information Privacy Act for failing to allege a material risk...more
The U.S. Court of Appeals for the Ninth Circuit held that allegations that Spokeo Inc. published an inaccurate consumer report in violation of the Fair Credit Reporting Act established a concrete injury sufficient to confer...more
8/18/2017
/ Article III ,
Background Checks ,
Class Action ,
Employer Liability Issues ,
Fair Credit Reporting Act (FCRA) ,
Hiring & Firing ,
Injury-in-Fact ,
SCOTUS ,
Screening Procedures ,
Spokeo v Robins ,
Standing
The U.S. Court of Appeals for the Seventh Circuit held that allegations that prospective employers obtained consumer reports in technical violation of the Fair Credit Reporting Act by themselves do not constitute a concrete...more
8/14/2017
/ Article III ,
Credit Reports ,
Disclosure Requirements ,
Employer Liability Issues ,
Employment Litigation ,
Fair Credit Reporting Act (FCRA) ,
Hiring & Firing ,
Job Applicants ,
Putative Class Actions ,
Standing ,
Time Warner Cable
Despite being short one justice for much of the year, the U.S. Supreme Court handed down multiple significant decisions this past term that can unsettle long-standing legal understandings in multiple technology fields. These...more
8/10/2017
/ Bristol-Myers Squibb Co v Superior Court of California - San Francisco County ,
Class Action ,
Class Certification ,
Disparagement ,
Extraterritoriality Rules ,
First Amendment ,
Free Speech ,
Impression Products v Lexmark International ,
Jurisdiction ,
Laches ,
Lanham Act ,
Matal v Tam ,
Microsoft v Baker ,
Music Industry ,
Online Platforms ,
Patent Exhaustion ,
Patent Infringement ,
Patents ,
Petrella v. MGM ,
SCOTUS ,
Social Networks ,
Star Athletica v Varsity Brands ,
TC Heartland LLC v Kraft Foods ,
The Slants ,
Trademark Registration ,
Trademarks ,
Venue
The U.S. Court of Appeals for the Ninth Circuit reaffirmed its commitment to the rule that willfulness is a prerequisite for disgorgement of a trademark infringer’s profits in Stone Creek v. Omnia Italian Design, Case No....more
The U.S. Court of Appeals for the Ninth Circuit clarified the requirements for pleading and establishing a trademark infringement claim under a “reverse confusion” theory in Marketquest Group v. BIC, Case No. 15-55755 (9th...more
After a streak of six patent decisions uniformly overruling the Federal Circuit, and for the first time all term, the Supreme Court finally handed the Federal Circuit a win this week. In its landmark ruling in Matal v. Tam...more
6/22/2017
/ Disparagement ,
First Amendment ,
Football ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
Music Industry ,
NFL ,
Redskins ,
SCOTUS ,
Team Mascots ,
The Slants ,
Trademark Registration ,
Trademarks ,
USPTO
It’s Dangerous to Go Alone! Take This.
Intellectual Property Tips for the Esports Industry -
With the annual Game Developers Conference spectacular in our rearview mirror, and the NBA’s partnership with Take-Two to launch...more
4/25/2017
/ Architectural Copyrights ,
Commercial Use ,
Copyright Infringement ,
Digital Media ,
eSports ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Internet ,
Logos ,
Name and Likeness ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Popular ,
Right of Publicity ,
Trade Secrets ,
Trademark Application ,
Trademark Infringement ,
USPTO ,
Video Games ,
Virtual Reality
A Smooth Patch in a Rough Road? Governmental Transition and Intellectual Property -
Whenever a new Congress convenes, some IP issues come to the fore while others take a back seat. Transition to a new administration in the...more
2/10/2017
/ Administrative Appointments ,
America Invents Act ,
Appeals ,
Article III ,
Barack Obama ,
Cheerleaders ,
Copyright ,
Copyright Infringement ,
Copyright Office ,
Data Breach ,
Denial of Certiorari ,
Disparagement ,
DMCA ,
Exclusive Licenses ,
Fashion Design ,
FDCPA ,
File Sharing ,
First Amendment ,
Free Speech ,
Google ,
Injury-in-Fact ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Internet Service Providers (ISPs) ,
IP License ,
Lanham Act ,
Lee v Tam ,
Lenz v Universal Music Corp. ,
Misappropriation ,
Non-Appealable Decisions ,
Non-Practicing Entities ,
Online Videos ,
Oracle ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Writ of Certiorari ,
Popular ,
Privacy Laws ,
SCOTUS ,
Section 337 ,
Software Developers ,
Spokeo v Robins ,
Standing ,
Star Athletica v Varsity Brands ,
Takedown Notices ,
Tariff Act of 1930 ,
Trade Secrets ,
Trademark Registration ,
Trademarks ,
Trans-Pacific Partnership ,
Trump Administration ,
Uniforms ,
USPTO ,
YouTube
Please join attorneys from Fenwick & West's IP & Commercial Litigation Group for this half-day seminar featuring practical information and recent legal developments for technology companies, including in the areas of privacy,...more
The U.S. Court of Appeals for the Second Circuit recently affirmed the Southern District of New York’s order on summary judgment that My Other Bag’s canvas tote bags do not dilute or infringe Louis Vuitton’s trademarks for...more
12/28/2016
/ Appeals ,
Corporate Counsel ,
Fashion Branding ,
Fashion Industry ,
Intellectual Property Protection ,
Lanham Act ,
Louis Vuitton ,
Parody ,
Summary Judgment ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Young Lawyers
In a dilution claim, a trademark owner asserts that their famous mark is entitled to protection from use that causes harm to the mark’s reputation or distinctiveness. In effect, the trademark owner is saying that the mark is...more
You’ve selected a unique trademark, marketed and sold products under the brand, and continue to build up a base of satisfied customers. But then a new company emerges with a very similar trademark, piggybacking on your...more
11/22/2016
/ Brand ,
Consumer Confusion ,
Corporate Counsel ,
Intellectual Property Protection ,
Internet ,
Keyword Search ,
Likelihood of Confusion ,
Online Commentary ,
Online Platforms ,
Popular ,
Search Terms ,
Trademark Infringement ,
Trademarks ,
Young Lawyers
On September 29, 2016, the Supreme Court agreed to review Lee v. Tam, better known as “THE SLANTS” case, to assess the constitutionality of the Trademark Office’s refusal to register disparaging marks under Section 2(a) of...more
10/28/2016
/ Certiorari ,
Constitutional Challenges ,
Disparagement ,
First Amendment ,
Free Speech ,
Lanham Act ,
Lee v Tam ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Vagueness
On October 24, 2016, the U.S. Court of Appeals for the Ninth Circuit after an en banc rehearing in Sunearth, Inc. v. Sun Earth Solar Power Co., LTD., adopted the Octane Fitness standard for determining whether a case is...more
10/26/2016
/ Abuse of Discretion ,
Appeals ,
Attorney's Fees ,
Exceptional Case ,
Lanham Act ,
Octane Fitness v. ICON ,
Popular ,
Preponderance of the Evidence ,
Prevailing Party ,
Standard of Review ,
Totality of Circumstances Test ,
Trademark Infringement ,
Trademarks