While all eyes have been trained on the confirmation hearings from last week, the Supreme Court made news in the IP world. The Court granted certiorari in Arthrex v. Smith & Nephew (Nos. 19-1434, -1452, -1458), a decision analyzing the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2. In Arthrex, a panel of the Federal Circuit held that the statutory scheme for appointing administrative patent judges (APJs) of the Patent Trial and Appeal Board violates the Appointments Clause.… More
Category Archives: Patent
Watch: Top IP Cases in 2019 In-House Counsel Need to Know
Reviewing Cases in 2019 to See 20-20 in 2020
Who said there’s no looking back? It is crucial to consider key takeaways from the most important IP cases from 2019 when planning ahead for the new year. Foley Hoag presents a webinar offering guidance on what we learned last year and what to prepare for in the new year.
Our speakers focus on 2019 developments in trademark, copyright,… More
Watch – IP Enforcement on Online Marketplaces: Strategies for In-House Counsel
As commerce becomes increasingly electronic and decentralized, manufacturers and brand owners face new challenges in protecting and enforcing their intellectual property rights in the context of online marketplaces. IP owners, courts and the marketplaces themselves are struggling to define fair, effective and efficient approaches to protecting IP rights and consumers without hindering the free flow of online commerce.
Foley Hoag presents a webinar covering recent developments and best practices for companies seeking to protect copyrights, … More
Watch: IP and Advertising Basics for Cannabis Companies
Business is booming for cannabis ventures, but the legal landscape for related intellectual property protection and product advertising is rife with complications that demand special consideration, and companies should be paying attention to these issues out of the gate.
Foley Hoag presents a webinar covering a range of topics related to cannabis IP protection and promotion, including:
- Maximizing trademark rights at the federal and state level
- Leveraging copyright as secondary protection for brands
- Cannabis patent basics and strategies
- Advertising best practices and what not to say FDA regulation of cannabis and cannabis-derived products
Watch: Top IP Cases in 2018 In-House Counsel Need to Know
Who said there’s no looking back? It is crucial to consider key takeaways from the most important IP cases from 2018 when planning for 2019. Foley Hoag presents a webinar offering guidance on what we learned this year and what to prepare for in the new year.
Our speakers focus on 2018 developments in copyright, patent and trademark law.
A Five-Minute Read on Current Patent Litigation Trends for People who get Bored by Patents
Frequent Trademark and Copyright Law Blog contributor Peter Sullivan has written about some pretty fun topics, including Sponge Bob trademarks and Grumpy Cat copyrights. But when he’s not having fun, he’s also a patent lawyer. Check out his recent article on trends in patent litigation for the International Bar Association: The Impact of inter partes review on patent rights and patent litigation in the United States.… More
Should Patent and Trademark Applicants Be Required To Pay USPTO Attorneys’ Fees?
The Federal Circuit just issued its en banc decision in Nantkwest v. Iancu, concluding that the proper statutory construction of Section 145 of the patent statute, which allows patent applicants to file actions in a federal district court to challenge the denial of patent applications by the Patent and Trademark Office (USPTO), does not require the challengers to pay the USPTO’s attorneys’ fees.… More
From Runway To Replica: The Most Fashionable Intellectual Property Infringement Beefs Of 2017
New York Fashion Week (NYFW) 2018 kicks off on Thursday, February 8 through Friday, February 16, with a full schedule of exciting and exhilarating runway shows. This year’s designers include many of the usual faces, like Tom Ford, Ralph Lauren, and Jason Wu, to name a few. As usual, there is some controversy concerning designers that are notably missing from this year’s schedule, like Georgina Chapman’s label Marchesa.… More
Sue-per Bowl Shuffle IV: The Year In NFL-Related Intellectual Property Litigation
If you are a lawyer, there is a serious danger that someone at the Super Bowl party you attend is going to want to talk about an NFL-related legal issue. Did Cowboys owner Jerry Jones really have standing to challenge Commissioner Roger Goodell’s salary package? What is the status of Colin Kaepernick’s collusion lawsuit?… More
Watch: Top IP Cases in 2017 In-House Counsel Need to Know
Happy Holidays from the Trademark and Copyright Law Blog and the Foley Hoag Trademark, Copyright & Unfair Competition Group.
As we head toward the year’s end, it’s the perfect time to consider key takeaways from the most important IP cases from 2017. In this webinar David Kluft, Peter Sullivan, and Janine Ladislaw discuss their take on the trademark,… More
Are False Accusations Of Copyright Infringement Defamatory?
Is it defamatory to falsely accuse someone of infringing intellectual property? Last month, the California Court of Appeal, in FilmOn.com v. DoubleVerify, Inc., affirmed the dismissal of a defamation action in which the defendant was accused of falsely labeling the plaintiff as a copyright infringer.
Does that mean you can just go ahead and call anyone you don’t like a copyright infringer,… More
Watch: Protecting Product Configurations, Packaging, and Designs
What In-House Counsel Needs to Know
Product configuration and packaging play an integral part in consumer choice and can often set a particular product apart from its competition on the store shelf. Because companies heavily invest in creating unique product designs and packaging that encourage brand association, business owners should also consider protecting those investments as intellectual property.
Peter Sullivan, Natasha Reed and Jenevieve Maerker presented a webinar offering guidance for in-house counsel regarding the different types of intellectual property that may protect product configurations and packaging in the United States,… More
Court Issues Temporary Restraining Order Against Invention Patenting and Promotion Company for Unfair and Deceptive Trade Practices
There are many businesses focused on helping inventors develop and monetize their ideas. There are companies that, for instance, help people seek patents on their inventions, license their inventions, turn their ideas into tangible products, and promote those products. World Patent Marketing in Florida bills itself as one of those companies. But according to a complaint filed by the Federal Trade Commission this month,… More
Sue-per Bowl Shuffle III: The Year In NFL-Related Intellectual Property Litigation
Two years ago, I started worrying about what would happen if someone at a Super Bowl party asked me to explain an NFL-related lawsuit, particularly one of those intellectual property lawsuits that sports fans assume IP lawyers know about. This anxiety led me to put together the Sue-per Bowl Shuffle I and Sue-per Bowl Shuffle II: guides to trademark, copyright, patent and other intellectual property disputes concerning the NFL during 2014 and 2015 respectively.… More
Ninth Circuit Extends Octane Fitness Attorneys’ Fee Analysis To Lanham Act Cases
In the 2014 case of Octane Fitness, LLC v. Icon Health & Fitness, Inc. (and a companion case), the Supreme Court articulated a standard for courts to use when deciding whether to award attorneys’ fees in patent cases. As we reported here, Section 285 of the Patent Act authorizes an award of attorneys’ fees to the prevailing party in “exceptional” cases.… More
Potential Legal Implications Arising from “Brexit”
Trademark and Copyright Law Blog author Catherine Muyl, alongside fellow Foley Hoag attorneys Christina G. Hioureas and Mélida N. Hodgson, have released a new publication discussing the potential legal implications arising from Brexit, including the impact on patents, trademarks and copyrights. You can access a free copy here.
Other Brexit-related posts appearing on this blog include:
Harry Potter And The Cursed Legal Update
It has been about a year since we published Harry Potter Lawsuits and Where to Find Them, my attempt at a comprehensive review of Harry Potter-related litigation. Why update the article now? Two reasons. First: The long-awaited book version of Harry Potter and the Cursed Child hits the shelves on July 31, 2016.… More
The Pleads Of The Many: 50 Years of Star Trek Lawsuits
This year marks the fiftieth anniversary of the premiere of the original series of Star Trek, which first aired on NBC in September 1966. On July 22, this milestone will be marked in earnest when Paramount Pictures releases the new film, Star Trek Beyond (which sadly includes the final Chekovian performance by the recently-departed Anton Yelchin).… More
Q&A: Catherine Muyl On Brexit’s Impact On European Patents, Trademarks
Trademark and Copyright Law Blog author Catherine Muyl was interviewed by Andrew Chung of Reuters yesterday about the impact of Brexit on European Patents and Trademarks. You can find a link to the story here. Catherine’s blog posts about the implications of Brexit for trademark owners are available here and here.… More
Brexit: Potential Consequences For European Union Trademarks
Updated June 24, 2016
A few hours ago, citizens of the United Kingdom voted in favor of leaving the European Union. This is a monumental step which historians will analyze in order to understand why and how it became possible. In the meantime, lawyers will have to figure out the consequences, including how to untangle this 60 year-old relationship.
European patents should not be affected by Brexit because the Munich Convention is not a European Union instrument.… More
Eat Your Art Out: Intellectual Property Protection for Food
Let’s face it, we live in a food-crazed world. Our current preoccupation with food has less to do with eating it; we also are fascinated with looking at it. Posting photos of food on Instagram is now a universal pastime. Food reality shows like Top Chef, Cake Boss, and Chopped are extremely popular and chefs are now considered bona fide celebrities,… More
The Internet Archive Wayback Machine: A Useful IP Litigation Tool, But Is It Admissible?
The Internet Archive’s Wayback Machine archives copies of websites every few weeks or months, going back to 1996. The Wayback Machine currently has almost 500 billion archived webpages. By entering a website into the Wayback Machine, a user can see what archived copies of the website are available and then view those historical copies. For example, this link brings you to a copy of the Trademark &… More
Congress Passes Sweeping New Legislation To Protect Trade Secrets
Last week, in a departure from the partisan gridlock that has gripped Washington, the House of Representatives joined the Senate in passing a sweeping new statute to protect trade secrets. The legislation, which President Obama strongly supported and is expected to sign within days, creates a new federal civil cause of action for trade secret theft.
The speed with which Congress passed this legislation – entitled the Defend Trade Secrets Act of 2016 (DTSA) – reflects the increasing importance of trade secrets to American business.… More
From Runway to Replica: Intellectual Property Strategies for Protecting Fashion Designs
Designers like Alexander Wang, Rebecca Minkoff, and Michael Kors are all gearing up to premier their 2016 fall/winter collections this month during New York Fashion Week. Fashion Week draws more than 230,000 attendees each year to over 500 runway shows and events in New York City. The economic impact of this biannual event is estimated to be close to $900 million.… More
Sue-per Bowl Shuffle II: The Year in NFL-Related Intellectual Property Litigation
Around this time last year, I started worrying about what would happen if someone at a Super Bowl party asked me to explain an NFL-related lawsuit, particularly one of those IP-ish lawsuits that I’m supposed to know about. So I put together the first Sue-per Bowl Shuffle, a guide to the year’s gridiron disputes over trademarks, copyright, the right of publicity and other matters with a First Amendment flavor.… More
The Twelve Res of Christmas: Yule-Themed IP Matters in 2015
It is often said Christmas is creeping ever-backwards, each year striving to begin its domination of our collective consciousness and consumer dollars at an earlier date. In the realm of litigation, Christmas creep manifests itself in part in the Yule-themed disputes that can occur at any time of the year, particularly in the areas of intellectual property and free speech. In order to get the Trademark and Copyright Law Blog into the holiday spirit,… More
Patent Strategies For Start-Up Companies
Patents can be vitally important for protecting the innovations of a start-up company, just as it is important for start-ups to be mindful of trademark, copyright, and domain name strategies (see our other guides for start-ups, including Trademark, Copyright, and Domain Names). A patent is a government-granted right that prevents others from making, using, selling, or importing a patented invention.… More
Authorship Credit for Scholarly and Creative Works: The Elusive American Attribution Right
What if were to tell you that I jointly authored this article with a colleague, but that I’m not going to give her any credit or attribution because I don’t feel like it? Can she sue me for copyright infringement? No, because we are joint authors, so I have as much a right to publish this article as she does. If we lived in Europe, my colleague might have relied on her inherent right of attribution,… More
Marshmallow Justice: 10 Tales of Legal Fluff and Other Stuff
Just about one hundred years ago, Archibald Query of Somerville, Massachusetts invented the first commercial marshmallow cream, which he pedaled door-to-door in Union Square. Around 1917, he sold the recipe for $500 to two candy makers in Lynn who had just returned from World War I, and their company (Durkee-Mower) still makes Marshmallow Fluff today. In 2006, Union Square boosters began celebrating Query’s achievement with the Fluff Festival,… More
Top Eight Things You Should Know About the Hague System For International Registration of Designs
U.S. applicants will soon be able to use a streamlined international filing procedure for design patents similar to the Madrid Protocol for trademark registrations. Currently, U.S. applicants seeking to protect designs in multiple countries must file separate applications for each of the countries through their national or regional patent offices. Starting May 13, 2015, when the Hague Agreement Concerning the International Registration of Industrial Designs goes into effect in the U.S.,… More
And the Lawsuit Goes to . . . An Oscar-Time Guide to “Best Picture” Intellectual Property Litigation
The film that wins the Best Picture Oscar this year is certain to attract more viewers and more box office receipts than it had before receiving the award. But Best Picture winners also tend to attract more lawsuits, including intellectual property claims. Plaintiffs show up out of nowhere claiming to be the true authors of the underlying work, infringing defendants come out of the woodwork to unlawfully grab a little bit of the success for themselves,… More
Sue-per Bowl Shuffle 2014: The Year in NFL-Related Intellectual Property Litigation
Heading into this year’s Super Bowl party season, there are two things every lawyer should be concerned about. First, why can’t your team get it together? Second, what do you do if you are asked to explain to your friends and neighbors some NFL-related litigation that you haven’t been following? We can’t help you with the first problem (although, as an Iggles fan living in the heart of Patriots Nation,… More
A Trap For Santa: The First Santa Claus IP Fight
At this time of year, you may be wondering about the first intellectual property case involving Santa Claus. And even if you are not, we are going to tell you.
The Biograph Company was founded in 1895 by William Kennedy Dickson, a former employee of Thomas Edison. Biograph became known for its two-minute long documentaries made using a 68mm film format (in order to avoid the litigious Edison’s patents on 35mm technology),… More
Opportunities for Trademark and Copyright Lawyers To Volunteer During Pro Bono Month
October is Pro Bono Month in many states, including Massachusetts, New York, Michigan, New Hampshire, Maine, Rhode Island, Indiana, Tennessee, and Alabama. The ABA has created an annual weeklong National Pro Bono Celebration, which this year is October 19-25. Recognizing the countless lawyers who devote their time and efforts to representing people of limited means, and urging all lawyers to do more, these pronouncements remind us that every attorney has an ethical responsibility to make sure that our system of justice is open to all persons,… More
Supreme Court Rulings Will Make Fee Awards More Likely In Trademark Cases As Well As Patent Cases
Yesterday, the United States Supreme Court decided Octane Fitness, LLC v. Icon Health & Fitness, Inc. and Highmark v. Allcare Health Management System, Inc., companion cases that will make it easier for prevailing parties to recover attorneys’ fees in patent infringement litigation. Together, the cases may have far-reaching consequences for litigation strategy and case management in cases involving a range of intellectual property disputes, not just patents.… More
Can a Website Disclaimer Prevent Declaratory Judgment Actions in IP Cases? Maybe…or Maybe Not
A decision this week from the Federal Circuit, in a patent invalidity action, has been getting a lot of press for its suggestion that patent (and by implication trademark) holders may be able to avoid challenges to the validity of their IP simply by crafting a website disclaimer explaining that they will not sue certain competitors or other potential challengers. The decision has been argued by some to be an extension of the reasoning of the U.S.… More
FiberCore Case Illustrates Ownership and Transferability of “Shop Rights” to Patented Inventions
An employer may have rights in a patent on its employee’s invention in three situations:
(1) if there is an express agreement to assign or license the patent to the employer,
(2) if the employee was “hired to invent” and the employer can show an implied contract to assign the patent rights in the invention, or
(3) if there was no express or implied agreement but the employee used the employer’s facilities to conceive of the invention. … More
Sliding the Scale: The UK’s New “Small Claims” Court for Intellectual Property Disputes
An often-frustrating aspect of IP law is that in relatively small matters, the cost of litigation can quickly become disproportionate to the value of the intellectual property in dispute. In other words, there is no automatic sliding scale of expenses that shifts according to the value of the IP.
That may be changing in the UK. On October 1, 2012, the UK government launched a new “small claims track” in the Patents County Court) (“PCC”),… More
Practice Tips for Employee IP Assignment Agreements
A recent Federal Circuit decision discussing the effect of an Employee Intellectual Property Assignment Agreement upon the ownership of inventions made by the employee (Preston v. Marathon Oil Co., Nos. 2011-1013, -1026 (Fed. Cir. July 10, 2012) (decision here)) offers a number of practice pointers. Marathon Oil had filed suit against Preston, its former employee, claiming ownership of a patent obtained by Preston on an invention made while Preston was employed by Marathon.… More
Senators Scott Brown and John Kerry Propose Massachusetts as Location for Satellite Patent Office
On November 17, 2011, Senators Scott Brown and John Kerry sent a letter to David Kappos, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, urging him to consider Massachusetts as a location for one of the satellite patent offices that was authorized under the recently enacted America Invents Act.
The letter points out that Massachusetts is home to many world-class universities,… More