Intellectual Property Year in Review

McNees Wallace & Nurick LLC

With the new year underway, we take a look back at some of the intellectual property-related highlights of 2013. Not only did the federal copyright and trademark agencies face a full-blown government shutdown this past year, but also U.S. courts and administrative agencies decided a number of diverse cases involving issues ranging from the scope of the First Sale Doctrine to Johnny Football’s trademark battles.



Worldwide Application of the First Sale Doctrine

In a 6-3 decision, the U.S. Supreme Court issued its opinion in the case of Kirtsaeng v. John Wiley & Sons, holding that the First Sale Doctrine applies to copies of copyrighted works legally produced outside the United States. The Supreme Court’s decision resolved the long-standing dispute between the First Sale Doctrine and copyright law’s importation restriction.


The owner of a valid copyright has several exclusive rights, including the right to distribute his or her copyrighted work. The First Sale Doctrine, however, provides that a copyright holder controls a specific copy of his or her work only until that copy is first sold. The buyer of the copy, provided that such copy was lawfully made, may then resell, lease, donate, or otherwise dispose of it.


In this case, Supap Kirtsaeng, a student from Thailand studying in the United States, asked his friends and family abroad to buy and mail him foreign edition textbooks. He then resold the books in the United States for a profit. John Wiley & Sons, a textbook publisher, sued him, claiming that he had infringed on Wiley’s exclusive right to distribute. The Supreme Court disagreed with Wiley, citing language in the Copyright Act that suggested no geographic limitation on the First Sale Doctrine.


Which Use is Fair Use?

Last year saw a handful of cases involving the well-known Fair Use Doctrine. Under that doctrine, a person may use a portion of someone else’s copyrighted work without permission, as long as the purpose of the use is considered “fair.” Typical examples of fair use include commenting on an excerpt of a work and copying a portion of someone else’s work for news, educational, or research purposes.


In Gaylord v. United States, Frank Gaylord, the sculptor of the Korean War Veterans Memorial, sued the U.S. Postal Service after an image of the Memorial was used on a commemorative stamp without his authorization. The U.S. Court of Appeals for the Federal Circuit concluded that the depiction of the sculpture on the stamp was not fair use because the Postal Service’s use was commercial and non-transformative. That is, the stamp was sold for profit and did not add value to or repurpose Gaylord’s underlying work. Moreover, the sculpture was considered a creative work entitled to a high level of copyright protection. In September, the Federal Circuit determined the damages in the case, awarding Gaylord 10 percent of the Postal Service’s profits from the sale of the stamp, which totaled more than $17 million.


In November, the U.S. District Court for the Southern District of New York dismissed the case Authors Guild v. Google, which challenged the legality of Google Books’ Library Project. The District Court held that the Google Books program constituted fair use because Google’s scanning and digitizing of books was transformative. Google did not display the books in their entirety. Rather, each book was available in verbatim “snippets” or as a searchable index. The District Court also found that the program provided significant public benefits. At the end of December, as anticipated, the Authors Guild appealed.



Trademarks and the Internet

A 2013 case shed light on “keyword advertising,” the practice of paying a search engine, like Google, to display a sponsored link on a page of relevant search results. In 1-800 Contacts v., purchased search terms from Google that were nearly identical to registered trademarks owned by its competitor, 1-800 Contacts. When a consumer typed one of these terms into a Google search, a paid advertisement for appeared alongside the search results for 1-800 Contacts. 1-800 Contacts sued, claiming that’s conduct infringed on its trademark rights. The Court of Appeals for the Tenth Circuit found in’s favor, suggesting that using a competitor’s trademark to trigger a sponsored link probably does not infringe on the competitor’s trademark rights, so long as the competitor’s mark is not used in the text of the advertisement itself.


In addition, the U.S. Patent and Trademark Office updated its policy regarding generic Top-Level Domains (gTLDs), or domain names following the “dot” in a web address (e.g. “.com”). The Internet Corporation for Assigned Names and Numbers (ICANN) accepted applications for new gTLDs, such as “.bike” and “.clothing.” Historically, the USPTO has refused registration of gTLDs because they did not function as trademarks. With the introduction of these creative gTLDs, however, the USPTO issued new guidelines for examining trademark applications. Specifically, an applicant seeking to register a gTLD as a trademark must: (1) provide evidence that consumers will recognize the mark as an indicator of source; (2) enter into an ICANN Registry Agreement; and (3) show that its domain name registration services are legitimate services for the benefit of others.


Unconventional Trademarks

Many of the cases at the forefront of last year’s Trademark Trial and Appeal Board (TTAB) docket involved non-traditional marks, such as color and smell. Perhaps the applicants whose marks were at issue were attempting to follow in the red-soled footsteps of the Christian Louboutin Company (which, in a trademark infringement dispute with designer Yves Saint Laurent, maintained the exclusive right to use the color red on the bottom of its shoes). While registration of many of these marks was ultimately refused, the TTAB’s opinions raise interesting questions about functionality and acquired distinctiveness.


For instance, in In re Cook Medical Technologies, the TTAB refused registration of the color teal for use with medical devices because of a likelihood of confusion with a previously registered mark for the color blue in connection with catheters. In a somewhat unusual decision, the TTAB held that because the prior blue mark was not limited to a specific shade of blue, it covered all shades of blue, including teal. The TTAB noted that the applicant could have tried to restrict the prior registration through a cancellation proceeding under Section 18 of the Trademark Act.


In In re Pohl-Boskamp, the TTAB refused registration of the flavor and scent of peppermint for use in connection with medicine, in part because the peppermint flavor and scent served a functional, rather than trademark, purpose. Granting Pohl-Boskamp the exclusive right to use the flavor and scent of peppermint thus would put competitors at a significant disadvantage.


Cases in the Headlines

There were a couple big-name trademark cases in 2013, including one involving Texas A&M football player and Heisman Trophy winner Johnny Manziel. Manziel filed a trademark infringement claim against Eric Vaughan, a T-shirt maker who printed shirts with a slogan containing Manziel’s nickname, “Johnny Football.” Manziel and Vaughan settled the case in November. Manziel also filed an application to register the mark JOHNNY FOOTBALL, in an attempt to own and control the use of his nickname. The Trademark Office initially refused the application for several reasons, including the fact that a handful of identical and similar marks, such as JUANITO FUTBAL, already existed. 


In January, the U.S. Supreme Court issued its opinion in the case of Already LLC v. Nike Inc. Nike sued a small sneaker company, Already, for allegedly infringing on Nike’s Air Force 1 sneakers. Already filed a countersuit to void its relevant trademarks. Even after Nike dropped the case and filed a covenant, or promise, that it would not sue Already ever again, Already refused to drop its own case. In a unanimous decision, the Supreme Court held that because Nike had promised not to sue, Already did not have standing. That is, Already’s challenge was moot and no longer valid. Chief Justice John Roberts, writing for the Supreme Court, explained that if the case continued, parties in future cases would be encouraged to use litigation as a “weapon” instead of as a “last resort for settling disputes.”



A Cornucopia of Food-Labeling Class Actions

The year 2013 saw an increase in the number of class action lawsuits challenging healthy claims on food labels. In June, Barbara’s Bakery settled a suit disputing its “all natural” labeling, agreeing to create a $4 million fund, to reimburse consumers. In addition, under the terms of the settlement, Barbara’s Bakery agreed to participate in a third-party verification program before using such labeling again. Naked Juice also settled a class action lawsuit in July challenging the “all natural” and “non-GMO” statements on its products. Naked Juice set aside $9 million for consumers. While the U.S. Food and Drug Administration has yet to fill the regulatory gap in this area, in September, the agency issued rules on gluten-free labeling. The FDA set out specific terms under which manufacturers could use “gluten-free” in connection with their goods. Manufacturers must be in compliance with these rules by August 2014.


Do Not Track Requests

A new law in California, which became effective January 1, 2014, requires Internet service providers to disclose how they respond to consumers’ “do not track” requests. The law ensures that consumers understand whether the “do not track” functions of their browser are effective. The new law applies to any website used by a California resident, meaning nearly every website.


Who Can File False Advertising Actions?

In December, the U.S. Supreme Court heard arguments in Lexmark International v. Static Control Components, a rare false advertising case. Lexmark, a computer printer company, sold toner cartridges, controlled by a microchip, which were intended to be used only once. Static Control sold replacement microchips to third parties, which enabled consumers to reuse Lexmark’s cartridges. At issue are false statements, which Lexmark allegedly made, suggesting that it was illegal to use cartridges containing Static Control’s microchips. Static Control sued under the Lanham Act, the federal false advertising law.


Before the Supreme Court, Lexmark argued that Static Control should not be permitted to challenge its practices under the Lanham Act because the parties do not compete in the same market. Static Control responded that because Lexmark’s false statements were directed at Static Control, it had a “reasonable interest” in filing the suit. Later this year, the Supreme Court will establish the proper framework for deciding who has standing to make a false advertising claim under the Lanham Act.


The year 2014 is well on its way to becoming a transformative year in the areas of copyright, trademark, and advertising law. As mentioned above, the Internet is expanding to include hundreds of new gTLDs. In addition, the U.S. Supreme Court has agreed to hear two copyright-related cases of significance this term, including ABC vs. Aereo, which involves a challenge to the legality of a television streaming technology. This case could have broad implications for Internet streaming and cloud computing for years to come.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McNees Wallace & Nurick LLC | Attorney Advertising

Written by:

McNees Wallace & Nurick LLC

McNees Wallace & Nurick LLC on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide

JD Supra Privacy Policy

Updated: May 25, 2018:

JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.

This Privacy Policy describes how JD Supra, LLC ("JD Supra" or "we," "us," or "our") collects, uses and shares personal data collected from visitors to our website (located at (our "Website") who view only publicly-available content as well as subscribers to our services (such as our email digests or author tools)(our "Services"). By using our Website and registering for one of our Services, you are agreeing to the terms of this Privacy Policy.

Please note that if you subscribe to one of our Services, you can make choices about how we collect, use and share your information through our Privacy Center under the "My Account" dashboard (available if you are logged into your JD Supra account).

Collection of Information

Registration Information. When you register with JD Supra for our Website and Services, either as an author or as a subscriber, you will be asked to provide identifying information to create your JD Supra account ("Registration Data"), such as your:

  • Email
  • First Name
  • Last Name
  • Company Name
  • Company Industry
  • Title
  • Country

Other Information: We also collect other information you may voluntarily provide. This may include content you provide for publication. We may also receive your communications with others through our Website and Services (such as contacting an author through our Website) or communications directly with us (such as through email, feedback or other forms or social media). If you are a subscribed user, we will also collect your user preferences, such as the types of articles you would like to read.

Information from third parties (such as, from your employer or LinkedIn): We may also receive information about you from third party sources. For example, your employer may provide your information to us, such as in connection with an article submitted by your employer for publication. If you choose to use LinkedIn to subscribe to our Website and Services, we also collect information related to your LinkedIn account and profile.

Your interactions with our Website and Services: As is true of most websites, we gather certain information automatically. This information includes IP addresses, browser type, Internet service provider (ISP), referring/exit pages, operating system, date/time stamp and clickstream data. We use this information to analyze trends, to administer the Website and our Services, to improve the content and performance of our Website and Services, and to track users' movements around the site. We may also link this automatically-collected data to personal information, for example, to inform authors about who has read their articles. Some of this data is collected through information sent by your web browser. We also use cookies and other tracking technologies to collect this information. To learn more about cookies and other tracking technologies that JD Supra may use on our Website and Services please see our "Cookies Guide" page.

How do we use this information?

We use the information and data we collect principally in order to provide our Website and Services. More specifically, we may use your personal information to:

  • Operate our Website and Services and publish content;
  • Distribute content to you in accordance with your preferences as well as to provide other notifications to you (for example, updates about our policies and terms);
  • Measure readership and usage of the Website and Services;
  • Communicate with you regarding your questions and requests;
  • Authenticate users and to provide for the safety and security of our Website and Services;
  • Conduct research and similar activities to improve our Website and Services; and
  • Comply with our legal and regulatory responsibilities and to enforce our rights.

How is your information shared?

  • Content and other public information (such as an author profile) is shared on our Website and Services, including via email digests and social media feeds, and is accessible to the general public.
  • If you choose to use our Website and Services to communicate directly with a company or individual, such communication may be shared accordingly.
  • Readership information is provided to publishing law firms and authors of content to give them insight into their readership and to help them to improve their content.
  • Our Website may offer you the opportunity to share information through our Website, such as through Facebook's "Like" or Twitter's "Tweet" button. We offer this functionality to help generate interest in our Website and content and to permit you to recommend content to your contacts. You should be aware that sharing through such functionality may result in information being collected by the applicable social media network and possibly being made publicly available (for example, through a search engine). Any such information collection would be subject to such third party social media network's privacy policy.
  • Your information may also be shared to parties who support our business, such as professional advisors as well as web-hosting providers, analytics providers and other information technology providers.
  • Any court, governmental authority, law enforcement agency or other third party where we believe disclosure is necessary to comply with a legal or regulatory obligation, or otherwise to protect our rights, the rights of any third party or individuals' personal safety, or to detect, prevent, or otherwise address fraud, security or safety issues.
  • To our affiliated entities and in connection with the sale, assignment or other transfer of our company or our business.

How We Protect Your Information

JD Supra takes reasonable and appropriate precautions to insure that user information is protected from loss, misuse and unauthorized access, disclosure, alteration and destruction. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. You should keep in mind that no Internet transmission is ever 100% secure or error-free. Where you use log-in credentials (usernames, passwords) on our Website, please remember that it is your responsibility to safeguard them. If you believe that your log-in credentials have been compromised, please contact us at

Children's Information

Our Website and Services are not directed at children under the age of 16 and we do not knowingly collect personal information from children under the age of 16 through our Website and/or Services. If you have reason to believe that a child under the age of 16 has provided personal information to us, please contact us, and we will endeavor to delete that information from our databases.

Links to Other Websites

Our Website and Services may contain links to other websites. The operators of such other websites may collect information about you, including through cookies or other technologies. If you are using our Website or Services and click a link to another site, you will leave our Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We are not responsible for the data collection and use practices of such other sites. This Policy applies solely to the information collected in connection with your use of our Website and Services and does not apply to any practices conducted offline or in connection with any other websites.

Information for EU and Swiss Residents

JD Supra's principal place of business is in the United States. By subscribing to our website, you expressly consent to your information being processed in the United States.

  • Our Legal Basis for Processing: Generally, we rely on our legitimate interests in order to process your personal information. For example, we rely on this legal ground if we use your personal information to manage your Registration Data and administer our relationship with you; to deliver our Website and Services; understand and improve our Website and Services; report reader analytics to our authors; to personalize your experience on our Website and Services; and where necessary to protect or defend our or another's rights or property, or to detect, prevent, or otherwise address fraud, security, safety or privacy issues. Please see Article 6(1)(f) of the E.U. General Data Protection Regulation ("GDPR") In addition, there may be other situations where other grounds for processing may exist, such as where processing is a result of legal requirements (GDPR Article 6(1)(c)) or for reasons of public interest (GDPR Article 6(1)(e)). Please see the "Your Rights" section of this Privacy Policy immediately below for more information about how you may request that we limit or refrain from processing your personal information.
  • Your Rights
    • Right of Access/Portability: You can ask to review details about the information we hold about you and how that information has been used and disclosed. Note that we may request to verify your identification before fulfilling your request. You can also request that your personal information is provided to you in a commonly used electronic format so that you can share it with other organizations.
    • Right to Correct Information: You may ask that we make corrections to any information we hold, if you believe such correction to be necessary.
    • Right to Restrict Our Processing or Erasure of Information: You also have the right in certain circumstances to ask us to restrict processing of your personal information or to erase your personal information. Where you have consented to our use of your personal information, you can withdraw your consent at any time.

You can make a request to exercise any of these rights by emailing us at or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

You can also manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard.

We will make all practical efforts to respect your wishes. There may be times, however, where we are not able to fulfill your request, for example, if applicable law prohibits our compliance. Please note that JD Supra does not use "automatic decision making" or "profiling" as those terms are defined in the GDPR.

  • Timeframe for retaining your personal information: We will retain your personal information in a form that identifies you only for as long as it serves the purpose(s) for which it was initially collected as stated in this Privacy Policy, or subsequently authorized. We may continue processing your personal information for longer periods, but only for the time and to the extent such processing reasonably serves the purposes of archiving in the public interest, journalism, literature and art, scientific or historical research and statistical analysis, and subject to the protection of this Privacy Policy. For example, if you are an author, your personal information may continue to be published in connection with your article indefinitely. When we have no ongoing legitimate business need to process your personal information, we will either delete or anonymize it, or, if this is not possible (for example, because your personal information has been stored in backup archives), then we will securely store your personal information and isolate it from any further processing until deletion is possible.
  • Onward Transfer to Third Parties: As noted in the "How We Share Your Data" Section above, JD Supra may share your information with third parties. When JD Supra discloses your personal information to third parties, we have ensured that such third parties have either certified under the EU-U.S. or Swiss Privacy Shield Framework and will process all personal data received from EU member states/Switzerland in reliance on the applicable Privacy Shield Framework or that they have been subjected to strict contractual provisions in their contract with us to guarantee an adequate level of data protection for your data.

California Privacy Rights

Pursuant to Section 1798.83 of the California Civil Code, our customers who are California residents have the right to request certain information regarding our disclosure of personal information to third parties for their direct marketing purposes.

You can make a request for this information by emailing us at or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at:

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

  1. Improve the user experience on our Website and Services;
  2. Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;
  3. Track anonymous site usage; and
  4. Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

  • "Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).
  • "Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.
  • "Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

  • HubSpot - For more information about HubSpot cookies, please visit
  • New Relic - For more information on New Relic cookies, please visit
  • Google Analytics - For more information on Google Analytics cookies, visit To opt-out of being tracked by Google Analytics across all websites visit This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at:

- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.