Intellectual Property

Current News

Intellectual Property

TRADEMARK NEWS: Jury sides with Hermès over ‘MetaBirkin’ NFT creator

In a major victory for trademark owners, digital artist loses bid to cast his MetaBirkin tokens as protected expression. In a closely watched case testing the ability of trademark owners to police their brands in the exploding virtual marketplace rep...

TRADEMARK NEWS: Jury sides with Hermès over ‘MetaBirkin’ NFT creator
Law Firms Mentioned:Baker & Hostetler LLP [#1, #2] | Baker & McKenzie LLP | Chong Law Firm, PA | Cutler Nylander & Hayton, PS | Finnegan, Henderson, Farabow, Garrett & Dunner, LLP | Harris St. Laurent & Wechsler | Haynes and Bone, LLP | Lex Lumina PLLC | Littler Mendelson P.C. | Reiner & Reiner PA | Res Nova Law | Sandberg Phoenix & von Gontard P.C. | Saul Ewing Arnstein & Lehr, LLP | Seyfarth Shaw, LLP
Organizations Mentioned:Ahern Rentals, Inc. | Briarcliff Entertainment LLC | EZ Equipment Zone, LLC | Equipmentshare.Com, Inc. | Harlem Globetrotters International, Inc. | Harrick Music, Inc. | Hermè | Sunset Pictures, LLC | The Meet Group, Inc. | Wireless Discovery LLC | eHarmony, Inc. | s International S.A. | s of Paris, Inc.
COPYRIGHT—S.D. Fla.: Sun shines dimly on lawsuit over prominent funk band
February 8, 2023
Matthew Hersh, J.D.

A squabble over the songs of KC & and The Sunshine Band is quickly tossed. A former member of a prominent 1970s musical group was precluded by the statute of limitations from asserting a claim of ownership over the band’s musical compositions, the fe...

COPYRIGHT—W.D. Wash.: Claims that radio show spurred false internet chatter about widower dismissed
February 8, 2023
Patricia K. Ruiz, J.D.

The widower alleged the radio show included comments by a psychic who claimed his wife’s suicide was actually a homicide. The federal district court in Seattle has granted a media company’s motion to dismiss a lawsuit filed by an individual who claim...

PATENT—D. Del.: Social networking patents invalid for being directed at an abstract idea
February 8, 2023
Kevin M. Finson, J.D.

The asserted claims were directed to the abstract idea of social networking based on personal attributes. A patentee’s complaint against two online dating services failed to state a claim, the U.S. District Court in Wilmington has held. The asserted ...

TRADE SECRETS—8th Cir.: Allegations of trade secret theft base on ‘information and belief’ were sufficient to survive dismissal
February 8, 2023
Robert B. Barnett Jr., J.D.

In a case of first impression, the Eighth Circuit adopts the rule that allegations based on “information and belief” may be sufficient where the defendant has sole control of key facts. In a case in which a heavy equipment rental company alleged a co...

TRADEMARK NEWS: Harlem Globetrotters allege ‘Sweetwater’ film infringes on trademarks
February 8, 2023
Jonathan Anderson

The famous basketball team asserts that the forthcoming film about a former player uses its intellectual property without authorization and will cause irreparable harm to the brand’s goodwill. On February 6, 2023, Harlem Globetrotters International, ...

Intellectual Property

COPYRIGHT NEWS—Getty Images takes aim at Stability AI in new infringement lawsuit

The prominent photo agency claims that the software developer scraped millions of its images in order to train its system. Stability AI, the creator of a software interface capable of generating digital content using artificial intelligence did so by...

COPYRIGHT NEWS—Getty Images takes aim at Stability AI in new infringement lawsuit
Law Firms Mentioned:Baker Hostetler LLC | Chong Law Firm, PA | Dickenson, Peatman & Fogarty | Dogwood Patent and Trademark Law | Fish & Richardson, PC | Hauptman Ham LLP | US | Weil, Gotshal & Manges LLP | Whittaker Law Firm | Young, Conaway, Stargatt & Taylor LLP
Organizations Mentioned:Coffee Meets Bagel, Inc. | Down App, Inc. | Getty Images (US), Inc. | Grands Domaines Du Littoral | Grindr, Inc. | Gym Rats Only LLC | Hily Corp. | Jackson Family Farms, LLC | Memorial Women's Care, PLLC | Stability AI, Inc. | Wireless Discovery LLC
STRATEGIC PERSPECTIVES: Top IP caselaw developments for January 2023
February 7, 2023
Thomas Long, J.D.

In case you missed the in-depth intellectual property law coverage in the January 2023 issues of IP Law Daily , here are highlights of the month’s most notable developments. Among the most important court decisions in IP cases last month, the Federal...

PATENT—D. Del.: Patents asserted against online dating apps ruled invalid under Alice
February 7, 2023
George Basharis, J.D.

The patents were directed to the abstract idea of automated social networking, or matchmaking. A federal court in Delaware has dismissed a patent infringement lawsuit, which claimed the operators of several popular online dating apps infringed on pat...

TRADEMARK—TTAB: GYM RATS ONLY mark for online fitness services too similar to registered mark GYMRATTS
February 7, 2023
Anne H. Gibson, J.D., LL.M.

The similarity of the services offered, namely websites providing information, videos, and classes on fitness, nutrition, and wellness, weighed heavily in favor of likelihood of confusion. The mark GYM RATS ONLY and its related design mark would like...

TRADEMARK—TTAB: Motion for judgment on the pleadings granted due to dissimilarity between the marks at issue
February 7, 2023
Linda O’Brien, J.D., LL.M.

There was no genuine issue of fact that the marks of two wine makers were distinct in appearance. In an opposition proceeding over the registration of a word and design mark for wine made from grapes from the Provence region, the applicant’s and oppo...

TRADEMARK—S.D. Tex.: Physician’s trademark dispute against competitor remanded to state court
February 7, 2023
Kevin M. Finson, J.D.

The complaint only asserted claims for violation of Texas common law trademark rights. The federal district court in Houston has granted a Texas physician’s request to remand to sate court a trademark infringement suit she brought against a competing...

Intellectual Property

TRADEMARK—9th Cir.: GoDaddy qualifies for domain registrar immunity under anti-cybersquatting law

GoDaddy found not liable for third-party use of domain name previously held by a nonprofit organization. The U.S. Court of Appeals for the Ninth Circuit has affirmed the dismissal of a lawsuit filed by a motivational speaker against GoDaddy accusing ...

TRADEMARK—9th Cir.: GoDaddy qualifies for domain registrar immunity under anti-cybersquatting law
Law Firms Mentioned:Baker & Hostetler LLP | Cooch and Taylor, P.A. | Cozen O’Connor | Dalziel Law Firm | Harris St. Laurent & Wechsler LLP | Hoy Chrissinger Vallas, PC | McDonald Carano LLP | Richards, Layton & Finger, PA | Shearman & Sterling LLP | Squire Patton Boggs (US
Organizations Mentioned:Acuant, Inc. | Aristotle International, Inc. | Chemeon Surface Technology, LLC | Desert Newco LLC | GoDaddy Inc. | GoDaddy Operating Company LLC | GoDaddy.com LLC | Hermè | MHL Custom, Inc. | Metalast International, Inc. | Scott Rigsby Foundation, Inc. | Waydoo USA, Inc. | s International S.A. | s of Paris, Inc.
PATENT—D. Del.: Jury must decide fact questions in personal hydrofoil patent dispute
February 6, 2023
Kevin M. Finson, J.D.

However, certain claims of one asserted patent were invalid as a matter of law for lack of written description. Summary judgment was not appropriate in a dispute over whether personal hydrofoil watercraft manufacturer Waydoo USA infringed two patents...

TRADE SECRETS—D.D.C.: Company providing identity verification services can proceed with trade secret misappropriation lawsuit
February 6, 2023
Linda Panszczyk, J.D.

In construing the DTSA, district courts have found that plaintiffs are not required to identify trade secret information in detail in order to avoid dismissal at the 12(b)(6) stage. The federal district court for the District of Columbia has allowed ...

TRADEMARK—D. Nev.: Limited liability company lacked standing to seek cancellation of former member’s METALAST mark
February 6, 2023
Cheryl Beise, J.D.

The ruling is the latest in protracted litigation over ownership of the mark METALAST. In a dispute spanning several years over rights in the trademark METALAST, the federal district court in Reno, Nevada, has ruled that Chemeon Surface Technology, L...

TRADEMARK—S.D.N.Y.: It’s not just a bag, it’s a lawsuit: Battle between Hermès and an alleged NFT knockoff goes to the jury
February 6, 2023
Matthew Hersh, J.D.

A federal jury will have to decide whether the maker of the digital token was protected by the First Amendment. A Manhattan jury will soon decide whether the maker of a digital token based on a line of Hermès handbags should be liable for infringing ...

INDUSTRY NEWS: US Trade Representative releases 2022 Notorious Markets List
February 6, 2023
Jonathan Anderson

The 2022 report examines the adverse impact of online piracy on U.S. workers who produce creative digital works. The Office of the United States Trade Representative (USTR) on January 31, 2023, released the findings of its 2022 Review of Notorious Ma...

Intellectual Property

TRADEMARK—TTAB: Refusal to register Lizzo’s mark reversed

Board finds that consumers associate the phrase with Lizzo and her song, “Truth Hurts,” even though it originated as an internet meme. The Trademark Trial and Appeal Board in a decision designated as precedential has reversed an Examining Attorney’s ...

TRADEMARK—TTAB: Refusal to register Lizzo’s mark reversed
Law Firms Mentioned:Chiesa Shahinian & Giantomasi PC | Debevoise & Plimpton LLP | Foley & Lardner LLP | Gardella Grace, P.A. | Kilpatrick Townsend & Stockton LLP | Law Office of F.M. Douglas | Mackey Law Firm, PLLC | Marc R. Labgold, P.C. | Steptoe & Johnson LLP | Winston & Strawn LLP
Organizations Mentioned:Eco Packaging Solutions | Imprenta Services, Inc. | Lizzo LLC | MidCap Financial Services Capital Management, LLC | MidCap Financial Services, LLC | MidCap Financial Trust | Midcap Business Credit, LLC | Shibuya Kogyo Co., Ltd. | Steuben Foods, Inc. | Sunoco Partners Marketing & Terminals, LP | Transtex Inc. f\k\a Transtex Composite Inc. | U.S. Venture, Inc.
PATENT—Fed. Cir.: Obviousness of tractor trailer aerodynamic skirts with resilient struts affirmed
February 3, 2023
Kevin M. Finson, J.D.

Substantial evidence supported the PTAB’s findings on the issues of motivation to combine and reasonable expectation of success. A Patent Trial and Appeal Board decision finding challenged claims of a patent directed at aerodynamic skirts for reducin...

PATENT—N.D. Ill.: Enhanced royalty damages reinstated on remand in butane blending dispute
February 3, 2023
Kevin M. Finson, J.D.

A $6 million treble royalty damages award in favor of Sunoco was reinstated because, outside of a factual error identified by the Federal Circuit, there was ample evidence of bad faith on the part of U.S. Venture. Sunoco Marketing & Terminals L.P. re...

TRADEMARK—S.D.N.Y.: No likelihood of confusion among consumers with ‘MidCap Financial’ mark
February 3, 2023
Brian Craig, J.D.

On remand from the appeals court, the district court concluded the complaint fails to plausibly allege trademark infringement of the dissimilar “Midcap Business Credit” mark. The federal district court in New York City has concluded that financial se...

COPYRIGHT NEWS: Radio Free America? Lawmakers move once again to require broadcasters to pay for licenses
February 3, 2023
Matthew Hersh, J.D.

Over the air broadcasters have long paid music publishers, but not artists and their labels. Radio broadcasters and the companies that own them have been getting a free ride for far too long under a longtime provision of the Copyright Act, a bipartis...

WORTH NOTING—Other IP law developments
February 3, 2023
WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community. PATENT—Fed. Cir.: The U.S. Court of Appeals for the Federal Circuit has dismissed for lack of appellate jurisdiction a patent owner’s appeal of a California distric...

Intellectual Property

TRADEMARK—C.D. Cal.: NBCUniversal’s suit against alleged trademark squatters over ‘The Office’ mark proceeds

NBCUniversal sufficiently alleged two merchandise sellers infringed DUNDER MIFFLER and other marks from television shows The Office and Friday Night Lights. In refusing to dismiss a lawsuit brought against an alleged trademark squatter, the federal d...

TRADEMARK—C.D. Cal.: NBCUniversal’s suit against alleged trademark squatters over ‘The Office’ mark proceeds
Law Firms Mentioned:Gleiss Lutz | Greenberg Glusker Fields Claman & Machtinger LLP | Jenner & Block LLP | King & Ballow | Knobbe Martens | Law Office of Irma Merrill Stratton | McDermott Will & Emery | McDonnell Boehnen Hulbert & Berghoff LLP | Oppendahl Patent Law Firm LLC | Pilloff Passino & Cosenza LLP | Polsinelli LLP | Thigpen Legal PC | Tucker Ellis LLP | Weintraub Tobin Chediak Coleman Grodin Law Corp. | Williams McDaniel, PLLC | Wolf, Greenfield & Sacks, P.C.
Organizations Mentioned:Coachella Music Festival, LLC | Goldenvoice, LLC | Gooder Labs, LLC | Jay Kennette Media Group LLC | Long Live GoGo | NBCUniversal Media, LLC | Republic Records | Universal Studios Licensing LLC | Universal Television LLC | Wingen LLC
COPYRIGHT—W.D. Tenn.: Mother could be liable for son’s art forgery scheme carried out in her home
February 2, 2023
Robert Margolis, J.D.

An artist can pursue secondary copyright infringement claims against the deceased mother’s estate, but her state law claims were dismissed as preempted. An artist can proceed with claims that the mother of an individual alleged to have created and so...

PATENT—Fed. Cir.: Application for ornamental plant patent properly rejected as anticipated
February 2, 2023
Kevin M. Finson, J.D.

The plant was on public display more than a year before the application was filed. A seed company’s patent application claiming a particular variety of plant was properly rejected for being anticipated by prior public use because the variety had been...

BLOG TRACKER—Noteworthy blog posts and other commentary
February 2, 2023
WK Editorial Staff

The week’s most insightful, intriguing, or entertaining blog posts regarding intellectual property issues. Director’s Blog, USPTO’s Trademark Public Advisory Committee: Where we’ve been and where we’re headed , by David Cho, Chair of the USPTO’s Trad...

PUBLICITY RIGHTS NEWS: Was Rick Astley rolled by a soundalike?
February 2, 2023
Matthew Hersh, J.D.

The 1980s star alleges that a rapper mimicked his distinctive voice in a recent chart-topping hit. A breakout young rapper hired a singer to imitate the voice of 1980s pop star Rick Astley in his latest smash hit song, a new lawsuit asserts. The comp...

TRADEMARK NEWS: Organizers of advocacy music festival Moecella accused of infringing Coachella and Chella festival marks
February 2, 2023
Cheryl Beise, J.D.

The organizers previously lost a bid to register MOECHELLA with the USPTO due to confusion with the plaintiff’s marks. Coachella Music Festival, LLC and Goldenvoice, LLC, producers of the COACHELLA and CHELLA music festivals, have filed a trademark i...