Intellectual Property

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Intellectual Property

TOP STORY: Senate subcommittee hears views on PTAB reform legislation

Witnesses told Senate Judiciary Committee, Subcommittee on Intellectual Property of the need to adjust PTAB procedures to promote a strong patent system, but not all agreed on which approach to take. At a Senate subcommittee hearing on recently propo...

TOP STORY: Senate subcommittee hears views on PTAB reform legislation
COPYRIGHT—M.D. Fla.: Copyright claim proceeds despite arguments that gun grip designs were not original
June 24, 2022
Patricia K. Ruiz, J.D.

The court noted that only a modicum of creativity is required to make a design original. The Middle District of Florida denied a motion to dismiss a copyright infringement claim by a gun grip manufacturer against a competitor but granted the motion a...

TRADEMARK—M.D. Fla.: Lanham Act attorney fees of more than $1.6M reasonable for hours expended on intertwined IP claims
June 24, 2022
Patricia K. Ruiz, J.D.

The magistrate judge properly found that hours spent defending the action cannot be feasibly allocated to a particular claim. In a design patent infringement, copyright infringement, and trade dress infringement suit, brought by Lanard Toys Limited—t...

TRADEMARK—S.D. Fla.: Questions of fact existed in trademark license dispute between Florida seafood restaurants
June 24, 2022
Kevin M. Finson, J.D.

Summary judgment was not appropriate in a dispute over consumer confusion in restaurant licenses because material questions of fact existed about the actual representations made and actions taken by the parties. A Florida restaurant owner did not sho...

COPYRIGHT NEWS: Ownership of Pulp Fiction screenplay is put to the test in California
June 24, 2022
Matthew Hersh, J.D.

A federal court will have to decide whether Quentin Tarantino or studio Miramax owns the right to mint NFTs based on the script. The federal district court in Los Angeles should dismiss a lawsuit by Miramax against Quentin Tarantino over his sale of ...

LAW FIRM NEWS: Firms boost IP practice with new offices, new hires
June 24, 2022
WK Editorial Staff

Several law firms announced the expansion their IP practices in recent weeks. Several firms have recently expanded their IP practices by snagging IP practitioners from other firms. Ice Miller announced the addition of a seven-person team from BakerHo...

Intellectual Property

TOP STORY—Fed. Cir.: Award of $2.75 billion in damages to Centripetal for Cisco’s willful infringement vacated because judge’s spouse owned Cicso stock

The judge was required by statute to recuse himself or divest the stock once he discovered the financial conflict. A judge presiding over a patent infringement case should have recused himself when he learned that his wife owned stock in one of the c...

TOP STORY—Fed. Cir.: Award of $2.75 billion in damages to Centripetal for Cisco’s willful infringement vacated because judge’s spouse owned Cicso stock
COPYRIGHT—S.D.N.Y.: Homegirl video infringement claim against HBO Max TV show dismissed
June 23, 2022
Linda Panszczyk, J.D.

The court rejected the plaintiff's request that the court should bypass the question of substantial similarity until the parties have engaged in discovery or obtained expert testimony. A copyright infringement claim by an Internet content creator who...

COPYRIGHT—S.D.N.Y.: iLicensing 1.0: Lawsuit over scope of text message license survives early challenge
June 23, 2022
Matthew Hersh, J.D.

A photographer plausibly contended that a hip hop artist went beyond the scope of a license hammered out in a brief online exchange. A photographer’s copyright infringement lawsuit against a prominent rapper and hip hop artist was entitled to go forw...

PATENT—5th Cir.: On rehearing, panel finds Continental Automotive Systems failed to state Sherman Act claims against SEP holders
June 23, 2022
Patricia K. Ruiz, J.D.

The court previously found that allegations under the Sherman Act were speculative. The U.S. Court of Appeals for the Fifth Circuit has affirmed the judgment of the Northern District of Texas holding that auto-parts supplier Continental Automotive Sy...

TRADEMARK—TTAB: RESET mark was not likely to be confused with SET mark
June 23, 2022
Kevin M. Finson, J.D.

Cancellation of a mark used for substance abuse treatment software was not justified because there was no likelihood of confusion between with a similar mark used for pulse oximeters and related equipment. A maker of pulse oximeters did not show a li...

BLOG TRACKER—Noteworthy blog posts and other commentary
June 23, 2022
WK Editorial Staff

The week’s most insightful, intriguing, or entertaining blog posts regarding intellectual property issues. IP Finance, TRIPS Waiver Agreement Released , by Mike Mirales IP Watchdog, Senate IP Subcommittee Starts Dialogue on Reforming the PTAB , by Ei...

Intellectual Property

TOP STORY: USPTO memo guides PTAB on denials of reviews based on pending court actions

Clarifying the much-criticized Fintiv doctrine, the memo states that review will not be denied when there is “compelling evidence of unpatentability,” and the PTAB is to consider a court’s median time-to-trial rather than taking its trial schedule at...

TOP STORY: USPTO memo guides PTAB on denials of reviews based on pending court actions
COPYRIGHT—N.D. Cal.: Source of satire tweet over billionaire’s ‘hot young girlfriend’ will remain anonymous
June 22, 2022
Matthew Hersh, J.D.

The postings to Twitter were entitled to First Amendment protection and also qualified as fair use. An anonymous critic who posted titillating photos of a prominent investor’s girlfriend to Twitter, ostensibly to illustrate that “life is good when yo...

PATENT—Fed. Cir.: Portable shopping bag patent invalidated on obviousness and functionality grounds
June 22, 2022
Robert B. Barnett Jr., J.D.

A patent for a reusable and foldable shopping bag that fits within a shopping cart was invalidated because the claimed design was dictated solely by function and it was obvious. The U.S. Court of Appeals for the Federal Circuit has affirmed a Califor...

TRADEMARK—D. Minn.: Dairy Queen loses infringement case over BLIZZARD bottled water
June 22, 2022
Cheryl Beise, J.D.

Dairy Queen’s BLIZZARD mark for frozen treats and W.B. Mason’s BLIZZARD mark for bottled water were not similar and the parties’ goods were sold through different trade channels to different customers. Following a 12-day bench trial, the federal dist...

TRADEMARK—TTAB: GOLDN PAYDIRT mark was merely descriptive of novelty dirt bags containing gold flecks
June 22, 2022
Kevin M. Finson, J.D.

The proposed mark GOLDN PAYDIRT was merely descriptive of goods containing gold because its literal meaning was a key component of the goods. A seller of novelty bags of gold ore was unable to show that its mark was not merely descriptive, the Tradem...

TRADEMARK NEWS—Fashion firm alleges Hailey Bieber skincare line infringes on RHODE mark
June 22, 2022
Jonathan Anderson

The lawsuit is seeking treble and punitive damages for what the plaintiff asserts is intentional and willful conduct. The fashion company Rhode-NYC LLC has filed a lawsuit against celebrity Hailey Bieber and a businesses she controls, alleging tradem...

Intellectual Property

TOP STORY—Fed. Cir.: Panel reverses its prior decision upholding validity of Novartis patent infringed by generic version of Gilenya MS treatment drug

Because the patent failed to disclose the absence of a loading dose, the no-loading-dose limitation was without adequate written description support. A divided Federal Circuit panel has reconsidered and reversed a prior decision finding that a patent...

TOP STORY—Fed. Cir.: Panel reverses its prior decision upholding validity of Novartis patent infringed by generic version of Gilenya MS treatment drug
COPYRIGHT—N.D. Ill.: Dispute over To Kill a Mockingbird stage rights sent back to arbitration
June 21, 2022
Matthew Hersh, J.D.

The question is how to define the term “off-Broadway.” An arbiter will have to re-weigh the precise dividing line between the rights held in the original amateur adaptation and an updated professional version of a classic 1960s novel, the federal cou...

TRADE SECRETS—D. Or.: Insurance brokerage denied preliminary injunction against former employees
June 21, 2022
Kevin M. Finson, J.D.

A brokerage firm was unable to establish likelihood of success on the merits in a trade secret dispute when it could not show that the documents allegedly transferred contained any trade secrets. An insurance brokerage firm was not entitled to a prel...

TRADE SECRETS—W.D. Ky.: Summary judgment granted in part in jail management software dispute
June 21, 2022
Kevin M. Finson, J.D.

Summary judgment was granted against a software company that alleged trade secret misappropriation without sufficient specificity against the original developer of the software. A software company could not remedy its refusal to specify the trade sec...

TRADEMARK—C.D. Cal.: Complaint for misuse of BMF mark in ‘Black Mafia Family’ television series dismissed
June 21, 2022
Deirdre Kennedy, J.D.

Defendants’ use of the mark in an expressive work was protected by the First Amendment. The registered owner of the “BMF mark” who has marketed and sold services using the mark failed to show that the producers of the “Black Family Mafia” television ...

TRADEMARK—TTAB: Registration for NATURE MADE was rejected as too similar to existing MADE IN NATURE mark
June 21, 2022
Robert B. Barnett Jr., J.D.

The key factors in rejecting the NATURE MADE application for fruit-based food were the extreme similarities to opposer’s MADE IN NATURE mark for fruit-based food. Registration of the mark NATURE MADE for food bars containing dried fruits, soy-based f...

Intellectual Property

TOP STORY: Louisiana governor signs law prohibiting unauthorized commercial use of identity

‘Allen Toussaint Legacy Act,’ named after famed New Orleans musician and composer, creates post-mortem publicity rights for individuals who were domiciled in Louisiana, as well as rights for living Louisianans. Louisiana residents—living or dead—have...

TOP STORY: Louisiana governor signs law prohibiting unauthorized commercial use of identity
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June 17, 2022

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PATENT—Fed. Cir. Unreviewable and moot PTAB decision vacated
June 17, 2022
Kevin M. Finson, J.D.

Obviousness determinations made by the PTAB were vacated because the patent at issue expired during the pendency of the litigation and before the Board issued its final decision. A Patent Trial and Appeal Board decision that was rendered moot by the ...

TRADEMARK—D.D.C.: Lawyer’s name is not protectible trademark without evidence of name recognition
June 17, 2022
Matthew Hersh, J.D.

The lawyer, engaged in heated litigation with his former firm, also could not premise a CFAA claim on the redirection of a website phone number. A Washington, DC-based law firm could not have infringed upon the trademarks of its former partner and hi...

TRADEMARK—S.D.N.Y.: Rock band’s suit against musical duo barred by laches
June 17, 2022
Ursula Furi-Perry, J.D.

The plaintiff engaged in unreasonable delay in filing suit, as it became aware of the infringing conduct in 2013, yet failed to file a lawsuit until 2021. A band that went by the name DARKSIDE sued another band, which had used the same name in the sa...

PATENT NEWS: Top IP leaders in Senate propose PTAB reforms to address ‘gamesmanship’
June 17, 2022
Thomas Long, J.D.

Reform bill would prevent consideration of “serial” petitions and would codify procedures for Director review of PTAB decisions, among other changes. A bill introduced in the Senate is aimed at reforming the Patent Trial and Appeal Board to protect p...

WORTH NOTING—Other IP law developments
June 17, 2022
WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community. TRADEMARK—TTAB: The Trademark Trial and Appeal Board has redesignated as precedential its April 2, 2021, decision dismissing an opposition to registration of the ma...