The IP Law Blog

Focusing on legal trends in data security, cloud computing, data privacy, and anything E

Trademark Protection for Your Brand Merchandise in the Age of Copycats, Counterfeits, and Fakes

Posted in IP, Trademark Law

With live events cancelled during the pandemic, content creators are increasingly dependent on merchandise sales.  Creators from podcasters to YouTubers to musicians are reliant on merch to bolster their revenue and their brands.  Subscribers stuck at home are watching more video and listening to more podcasts and music.  Apart from advertising and sponsorships, merch is the only way for creators to monetize their increased profile during the pandemic.

However, 2020 has seen an explosion of counterfeit products including branded merchandise by content creators.  An analysis from the New York Times in February 2020 found that the sale of counterfeit items represents more than 3 percent of global trade, corresponding to $1.4 billion in value in the U.S. alone.  Reviews on Amazon containing words like “fake” and “counterfeit” have doubled since 2015. Continue Reading

No Right to Appeal Even When IPR Institution Denied on Non-Substantive Grounds

Posted in IP, Patent Law

One way to challenge the validity of a patent at the United States Patent and Trademark Office (“USPTO”) is through a petition for inter partes review (“IPR”).  The USPTO Director has delegated responsibility to the Patent Trial and Appeal Board (“PTAB”) to evaluate such petitions to determine whether to institute review of the challenged patent.  The PTAB will only institute review of petitions that show a reasonable likelihood of success on the merits.  However, even if the petition meets that threshold for review, the PTAB may still deny institution.  In fact, the PTAB did just that when denying Cisco Systems Inc.’s (“Cisco”) petitions for IPR challenging the validity of two U.S. Patents owned by Ramot at Tel Aviv University (“Ramot”).  Cisco appealed the denial to the Court of Appeals for the Federal Circuit.

In June 2019, Ramot sued Cisco in the Eastern District of Texas for allegedly infringing its patents.  The case is set to go to trial in December 2020.  Cisco filed petitions for IPR of the asserted patents in November 2019. Continue Reading

Trade Secrets and the Duty to Identify Them with Sufficient Particularity

Posted in IP, Trade Secrets

One of the first elements that a plaintiff must prove to succeed on a trade secret claim is that it is the owner of a valid trade secret.  To do so, the law generally imposes a burden on plaintiffs to identify its trade secrets with sufficient particularity in order to succeed.  As the Ninth Circuit recently recognized, this burden allows courts and litigants to navigate “the line between the protection of unique, innovative technologies and vigorous competition.”  In InteliClear, LLC v. ETC Global Holdings, Inc. (decided October 15, 2020), the Ninth Circuit addressed the issue of whether a plaintiff had satisfied the “sufficient particularity” burden and whether the trial court erred in granting summary judgment to a defendant when its motion was filed after just one day of discovery.

In the early 2000s, InteliClear created an electronic system for managing various stock broker and securities services called “InteliClear Systems,”  which used a structured query language relational database to process millions of trades a day.  In 2008, ETC Global Holdings (through its predecessor and later a subsidiary) licensed the InteliClear System and signed a Software License Agreement.  Within the terms of that agreement was an acknowledgment that the InteliClear information that was being provided “was confidential, proprietary and copyrighted” and that ETC agreed to maintain that confidentiality. Continue Reading

District Court Finds Documents Related to Litigation Funding Protected by Work Product Doctrine

Posted in Intellectual Property Litigation, IP, Patent Law

In Impact Engine, Inc. v. Google LLC, 3-19-cv-01301 (SDCA 2020-10-20, Order) (Cathy Ann Bencivengo), the District Court for the Southern District of California recently considered whether litigation funding documents could be withheld from production by plaintiff Impact Engine because the documents were work product protected.  In the case, defendant Google had propounded a request on Impact Engine for the production of “[all] Documents Regarding any contracts or agreements between Plaintiff and any Third Party concerning (1) This Litigation and/or (2) any Asserted Patent or Related Patent.”  Impact Engine indicated it would produce non-privileged responsive documents except for potential agreements related to litigation funding because Impact Engine asserted work product protection over the documents. Continue Reading

PTAB May Decide Patentability Under Section 101 in Inter Partes Reviews

Posted in IP, Patent Law

An inter partes review (IPR) is a procedure to challenge a patent in the U.S. Patent and Trademark Office (PTO). The IPR procedure was established by the American Invents Act, and was intended to be an improvement on the existing inter partes reexamination procedure. An IPR is brought before the PTO’s Patent Trial and Appeal Board (PTAB), which handles the proceeding and decides the outcome.

Any person can file a petition requesting an IPR of an issued patent. The petition must show that at least one claim of the patent is unpatentable on the grounds of anticipation (35 U.S.C. §102) or obviousness (35 U.S.C. §103). The petitioner must prove unpatentability by a preponderance of the evidence. The PTO decides whether to grant the petition. Continue Reading

Dogs, Whiskey, and Intellectual Property: Need I Say More?

Posted in Intellectual Property Litigation, IP, Trademark Law

Jack Daniel’s Properties, Inc. has petitioned the Supreme Court of the United States for certiorari following an unfavorable ruling from the Ninth Circuit in the matter of VIP Products LLC v. Jack Daniel’s Properties, Inc. In that case, VIP Products sued Jack Daniel’s after receiving a cease-and-desist letter concerning its Bad Spaniels Silly Squeaker dog toy. The toy is intentionally similar to the famous Jack Daniel’s Old No. 7 whiskey bottle, but is clearly intended to be a joke.

Instead of saying Jack Daniels, the bottle says Bad Spaniels and includes a cartoonish cocker spaniel. Below that, where the Jack Daniel’s bottle usually says “Old No. 7,” the toy says “The Old No. 2” above “on your Tennessee Carpet” where the real bottle says Tennessee Whiskey. The squeaky toy is clearly intended as joke for dog owners, and I don’t believe it would confuse consumers into believing the product is actually associated with Jack Daniel’s. Jack Daniel’s apparently felt differently.

The district court agreed with Jack Daniel’s. While ruling on a motion for summary judgment, the district court held that the Rogers test, which is used to balance the interests between trademark law and the First Amendment, was inapplicable because the toy is not an expressive work. Later, after a four-day bench trial, the District Court ruled against VIP Products and found it had infringed Jack Daniel’s IP. Continue Reading

9th Circuit Provides Clear Copyright Guidance for Producers of Bio Pics

Posted in Copyright Law, IP

In this episode of The Briefing by the IP Law Blog, Weintraub Tobin attorneys Scott Hervey and Josh Escovedo discuss copyright litigation around the “Jersey Boys” — a musical and movie about The Four Seasons– involving an unpublished biography by one of the band members.

The Intellectual Property Law Blog provides insight in connection with copyrights, trademarks, patents, trade secrets, false advertising, licensing and promotions, and sweepstakes. The blog’s objective is to serve as a forum to discuss IP strategies that provide protection to a business’ or persons’ intangible assets. The blog is for informational purposes only and does not constitute legal advice.

The Courts Step in to Protect TikTok from the Trump Administration

Posted in IP

In a dramatic Sunday morning hearing (conducted remotely via telephone), lawyers for TikTok and the Trump Administration battled over whether the government’s order banning TikTok from the Apple and Google app stores would take effect that night.

The Trump Administration has argued for months that TikTok is a threat to national security because its corporate owner, ByteDance, is a Chinese company. Most recently, the Commerce Department issued rules, which were to take effect on September 27 at 11:59pm, banning the app from U.S. app stores and prevented any further software updates. TikTok filed a lawsuit earlier this month challenging the Trump Administration’s actions. On September 23, it filed a motion for preliminary injunction, essentially asking the Court to stop the Commerce Department’s ban from taking effect. Continue Reading

Football, Beer, and Court Fights

Posted in Entertainment Law, IP

When it comes to football, I am a huge fan and love watching games on TV.  However, I do not typically pay attention to the commercials during games, with one major exception:  the Super Bowl.  Like most everyone, I am always curious to see which company will have the best and the worst Super Bowl commercials.  We always expect Anheuser-Busch (maker of Bud Light) and Molson Coors (maker of Miller Lite and Coors Lite) to bring out big gun ads.  After all, for many football fans, a game day means grabbing a beer (or several), so companies spend a lot of money to convince fans to grab their brands over others.  The competition rose to a new level in Super Bowl LIII when Anheuser-Busch introduced its ad campaign mocking Molson Coors’ use of corn syrup in brewing Miller Lite and Coors Lite.  These ads not only triggered a social media battle but also a battle in the courtroom over whether the Bud Lite ads constituted false or misleading advertising.

During the 2019 Super Bowl, Anheuser-Busch started its “corn syrup” ad campaign with an ad featuring the Bud Light King and his subjects trying to return a barrel of corn syrup, which they had received by mistake, to the Miller Light and Coors Light castles.  The ad effectively told a story that Anheuser-Busch does not use corn syrup to make Bud Light, but Molson Coors uses it to make Miller Lite and Coors Lite. Continue Reading