IIP
Ideas on Intellectual Property Law
Showing 1–16 of 340 results
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Mandatory deposit of copyright works is unconstitutional
February / March 2024
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 436
Abstract: To the frustration and annoyance of many, the Copyright Act requires the owner of a copyright in a work to deposit two copies of the work with the U.S. Library of Congress within three months of its publication. Those parties should be encouraged by how the U.S. Court of Appeals for the District of Columbia ruled when it was recently asked for the first time to address the requirement’s constitutionality. This article summarizes the court’s finding that requiring physical copies of works is “classic taking,” while copyright owners receive no additional benefit (compensation) from forfeiting works. Valancourt Books, LLC v. Merrick B. Garland and Shira Perlmutter, No. 21-5203 (D.C. Cir. Aug. 29, 2023).
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Ups and downs – Words matter in trademark licensing agreement
February / March 2024
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 536
Abstract: A garage door company probably thought its settlement with a competitor over alleged trademark violations left it free from additional lawsuits regarding its use of the competitor’s marks. This article summarizes why a court ruled otherwise, instead holding that a trademark licensee could sue the company even though its licensing agreement didn’t expressly authorize it to do so. D.H. Pace Company, Inc. v. OGD Equipment Co., LLC, No. 22-10985 (11th Cir. Aug. 22, 2023).
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Does derivative work copyright registration cover unregistered original works?
February / March 2024
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 636
Abstract: Copyright registration is a prerequisite for bringing an infringement action. But do litigants have recourse for an unregistered work if they registered a derivative work? This article discusses this issue in a case of first impression before the U.S. Court of Appeals for the Ninth Circuit. Enterprise Management Limited, Inc. v. Construx Software Builders Inc., No. 22-35345 (9th Cir. July 17, 2023).
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Families of patents could face more double-patenting challenges
February / March 2024
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 853
Abstract: Can a patentee extend a patent term for the same invention by claiming a second patent for claims that aren’t “patentably distinct”? This is known as obviousness-type double patenting (ODP). This article reviews a decision that recently resolved a long-standing question about the interplay between ODP challenges and patent term adjustments (PTAs) granted by the U.S. Patent and Trademark Office (USPTO) because of delays in patent processing. A brief sidebar highlights the court’s dismissal of the patentee’s equitable arguments against an ODP rejection. In re Cellect, LLC, No. 22-1293 (Fed. Cir. Aug. 28, 2023).
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Does commercial success affect an invention’s obviousness?
Year End 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 458
Abstract: Federal patent law prohibits the patenting of inventions that are obvious. While prior art such as earlier patents are often cited as evidence of obviousness, so-called “secondary-consideration” evidence can sometimes support a finding of nonobviousness even in the face of prior art — but not always. This article reviews a recent ruling by the U.S. Court of Appeals for the Federal Circuit that illustrates the role of secondary considerations. Source: Yita LLC v. MacNeil IP LLC, No. 22-1373 (Fed. Cir. June 6, 2023).
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Paying damages under both copyright and trademark laws
Year End 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 574
Abstract: Two furniture makers landed in court after one copied the other’s designs. To the chagrin of the infringer, the copying provided the basis, not only for copyright infringement damages, but also for trade dress infringement damages that were six times as much. This article covers the reasons the court found to assess infringement damages based on both trademark and copyright laws. Source: Jason Scott Collection, Inc. v. Trendily Furniture, LLC, No. 21-16978 (9th Cir. May 30, 2023).
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Court rejects overly broad reissue patent application
Year End 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 620
Abstract: Regrets — we’ve all had a few. A patentee, for example, might regret not obtaining broader patent protection. A reissue patent could come to the rescue, but only if certain requirements are met. One patentee recently learned this lesson the hard way. This article summarizes the patentee’s attempt to broaden its patent through a patent reissue application. Source: In re: Float’N’Grill LLC, No. 22-1438 (Fed. Cir. July 12, 2023).
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Court schools trademark holder – Nearly identical trademark doesn’t infringe
Year End 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 843
Abstract: Judicial findings regarding trademark infringement tend to turn largely on the similarity — or dissimilarity — of the two marks at issue. But significant similarity is no guarantee that a trademark holder will prevail in court. This article looks at a decision from the U.S. Court of Appeals for the Tenth Circuit that upheld a lower court’s noninfringement judgment in a dispute involving two almost identical education-related marks. A short sidebar covers why the court rejected a proposed presumption of confusion. Source: M Welles & Assocs., Inc. v. Edwell, Inc., No. 22-1248 (10th Cir. May 31, 2023).
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Too many cooks in the kitchen: Who’s an inventor?
October / November 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 458
Abstract: Identifying an inventor on a patent application can be a complex analysis. This short article highlights a recent ruling from the U.S. Court of Appeals for the Federal Circuit that sheds light on the degree of contribution required to qualify as an inventor. HIP, Inc. v. Hormel Foods Corp., No. 22-1696 (Fed. Cir. May 2, 2023).
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Barking up the wrong tree – Supreme Court limits trademark parodies
October / November 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 596
Abstract: In a unanimous decision, the U.S. Supreme Court has for the first time considered the so-called Rogers test regarding the use of trademarks in “expressive works” — in this case, a dog toy mocking a famous whiskey brand. This article explains how the Court’s ruling in Jack Daniel’s Properties, Inc. v. VIP Products LLC, makes clear that liability for both trademark infringement and trademark dilution is heavily dependent on just how a defendant uses another’s mark. Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S. June 8, 2023).
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Supreme Court finds trademark owners can’t sue for foreign infringement
October / November 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 569
Abstract: The U.S. Supreme Court has limited the reach of the Lanham Act, the federal trademark law, beyond American borders. The Court’s ruling in Abitron Austria GmbH v. Hetronic Int’l, Inc. could make trademark owners more vulnerable to global piracy of their goods. This article reviews the Court’s finding, the result being that U.S. trademark owners may be inadequately protected in a global marketplace. Abitron Austria GmbH v. Hetronic Int’l, Inc., No. 21-1043 (U.S. June 29, 2023).
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SCOTUS rejects fair use defense in Warhol copyright case
October / November 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 862
Abstract: The U.S. Supreme Court has issued its much-anticipated ruling in a case that drew attention partly because it involved two widely renowned artists: the musician Prince and the visual artist Andy Warhol. More importantly, though, the high court weighed in on some of the limits of the fair use defense to copyright infringement. This article covers the fair use doctrine and its application in the case, notably that the original photo and the copying use shared substantially the same purpose. A short sidebar discusses other Warhol works that make an artistic commentary on consumerism, and thus had a different purpose from the original image. Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 21-869 (U.S. May 18, 2023).
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How to evaluate the patentability of a multiple dependent claim
August / September 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 480
Abstract: A patent’s claims can get confusing, particularly when a patent’s dependent claims have multiple dependencies — a popular claim drafting format in other countries, but a rather expensive pursuit in the United States. The director of the U.S. Patent and Trademark Office might agree after stepping in to address how the Patent Trial and Appeal Board should evaluate the patentability of a multiple dependent claim. This article untangles the director’s finding. Nested Bean, Inc. v. Big Beings USA Pty. Ltd., IPR No. 2020-01234 (PTO Feb. 24, 2023).
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Only if it’s human – Setting the copyright standard for works with AI-generated content
August / September 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 579
Abstract: Artificial intelligence (AI) is disrupting a wide range of industries, including those involving the textual, visual and audio arts. It’s little surprise, then, that the U.S. Copyright Office has seen an increase in applications for copyright protection for AI-generated works. In response, the office released its first formal guidance regarding works containing material generated by AI in March 2023. This article summarizes the guidance, concluding that the future isn’t bright for works created solely by AI, but prospects are better for works that are merely AI-assisted.
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PTO director issues critical IPR clarification
August / September 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 617
Abstract: The director of the U.S. Patent and Trademark Office recently addressed confusion over how the Patent Trial and Appeal Board (PTAB) should determine whether to institute an inter partes review (IPR) of a patent when parallel litigation is already proceeding in federal district court. This article reviews the opinion, which makes clear that, while it’s possible to obtain an IPR in such circumstances, it won’t be easy. CommScope Techs. LLC v. Dali Wireless, Inc., IPR No. 2022-01242 (PTO Feb. 27, 2023).
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A slicing opinion – Court cuts trademark registration for Gruyere cheese
August / September 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 829
Abstract: Some Swiss and French cheesemakers recently ran into a brick wall when they attempted to obtain a trademark for the term GRUYERE. There was widespread agreement among the Trademark Trial and Appeal Board (TTAB) and two federal courts that the term is generic and therefore ineligible for trademark protection. This article covers the court’s review of the claim. A short sidebar highlights the trial court’s reliance on the U.S. Food and Drug Administration’s standard of identity when determining whether the term GRUYERE was generic. Interprofession du Gruyere; Syndicat Interprofessionnel du Gruyere. v. U.S. Dairy Export Council; Atalanta Corporation; Intercibus, Inc., No. 22-1041 (4th Cir. March 3, 2023).