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Category Archives: IP

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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… Continue Reading

New Fast Track for Patent Appeals

Posted in IP, Patent Law

A new temporary pilot program in the US PTO will speed up appeals in patent applications before the Patent Trial and Appeal Board (PTAB). The program, which went into effect on July 2, 2020, is called the “Fast Track Appeals Pilot Program.” The program is limited to 125 appeals per quarter. The PTO instituted the… Continue Reading

District Court Applies Different Requirement for Similarity of Accused and Asserted Works Under DMCA Versus the Copyright Act

Posted in Copyright Law, IP

In Kirk Kara Corp. v. Western Stone & Metal Corp. et al, 2-20-cv-01931 (CDCA 2020-08-14, Order) (Dolly M. Gee), the Central District of California denied Defendant’s motion to dismiss Plaintiff’s claims for copyright infringement, finding sufficient substantial similarity between the copyrighted works and the accused works had been alleged. However, the Court granted Defendant’s motion… Continue Reading

The Second Circuit Vacates Tiffany & Co.’s $21 Million Judgment for Trademark Infringement and Counterfeiting Against Costco

Posted in IP, Trademark Law

Watch: Josh Escovedo discusses the case with Scott Hervey in The Briefing by the IP Law Blog. Almost five years ago, I wrote an article published in the Daily Recorder about a ruling in the Tiffany & Co. v. Costco Wholesale Corporation case filed in the United States District Court for the Southern District of… Continue Reading

Second Circuit Frames Novel Issue of Photographer’s Claim of Copyright Infringement and DMCA Violation

Posted in Copyright Law, IP

Watch: Scott Hervey discusses the copyright infringement case with Josh Escovedo in The Briefing by the IP Law Blog. The facts in Mango v. BuzzFeed are fairly straight forward. Mango is a freelance photographer who licensed a photograph to the New York Post.  The Post included the photo in a story and below the photo… Continue Reading

The Rule of Reasonableness: Non-Compete Provisions in California Business Contracts

Posted in IP

The California Supreme Court in the 2008 case, Edwards v. Arthur Andersen LLP, ruled that a provision in an employment agreement that prevented an employee from competing with his former employer following the termination of his employment was an invalid restraint on trade in violation of section 16600 of the California Business and Professions Code. … Continue Reading

You Must Prove Actual Damages if You Want Punitive Damages in an Infringement Action

Posted in IP, Trademark Law

Imagine litigating an infringement case for two years, and after a nine day jury trial, obtaining a jury’s verdict that says you’ve established infringement and awards your client $5,000,000.  Then you realize that the jury has awarded your client $0 in actual damages, and the entire $5,000,000 sum is for punitive damages.  The Ninth Circuit… Continue Reading

Make Sure You Follow the Patent Local Rules!

Posted in IP, Patent Law

An unpublished decision from the Northern District of California emphasizes how important it is for attorneys to follow patent local rules. Patent local rules are rules that many federal district courts have for patent infringement cases. These rules supplement the regular local rules for that court and the Federal Rules of Civil Procedure, and allow… Continue Reading

Irreparable Harm for Permanent Injunction Supported by Lost Profits Award

Posted in IP, Patent Law

In f’real Foods, LLC et al v. Hamilton Beach Brands, Inc. et al, 1-16-cv-00041 (DDE 2020-07-16, Order) (Colm F. Connolly), plaintiffs freal Foods, LLC and Rich Products Corporation sued defendants Hamilton Beach Brands, Inc. and Hershey Creamery Company for infringement of four patents on four accused products that are high performance blenders manufactured by Hamilton… Continue Reading

After Nearly 30 Years of Controversy, the Washington Redskins Will Retire the Redskins Team Name and Trademark

Posted in IP, Trademark Law

Watch: Author Josh Escovedo and trademark law professor Alexandra Roberts delve into the issues around the Redskins name change on The Briefing from the IP Law Blog. On Monday, July 13, 2020, the ownership group of the Washington Redskins (the “Team”) announced that it will abandon the Redskins team name after nearly 30 years of… Continue Reading

The “Wolf of Wall Street” Defamation Suit – The Risk of an “Inspired By” Character in Movies and TV

Posted in Entertainment Law, IP

The motion picture Wolf of Wall Street was based on a book of the same title written by Jordan Belmont.  In the book, Andrew Greene, who was director, general counsel, and head of the corporate finance department at Stratton Oakmont between 1993 and 1996, was discussed extensively.  In the book, Greene is referred to by… Continue Reading

The PTAB Requires Settlement and Collateral Agreements to Terminate IPRs

Posted in IP, Patent Law

Following the America Invents Act, a petition for inter partes review (“IPR”) has become a common method for challenging the validity of a patent before the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office (“USPTO”).  Such challenges are often brought by petitioners in response to a patent owner suing… Continue Reading

“Birds of a Feather” – The Ninth Circuit Confronts “Single Unit of Publication” Copyright Issue

Posted in Copyright Law, IP

Unicolors, Inc. creates and markets artistic design fabrics to various garment manufacturers.  Some of these designs are marketed to the public and placed in its showroom while other designs are considered “confined” works that Unicolor sells to certain customers. Unicolors withholds marketing them to the general public for a set period of time. In order… Continue Reading

PTO Fast Tracks COVID-19 Patent and Trademark Applications

Posted in IP, Patent Law, Trademark Law

The United States Patent and Trademark Office has established a new program for prioritized examination for patent applications for inventions related to COVID-19 and for trademark applications for marks used for certain medical products and services used in connection with COVID-19. On May 7, 2020, the Director of the PTO announced the program for patent… Continue Reading

Navigating the Hazy Intersection of Federal and State Law on Cannibis and Advising Clients on Protecting Their Trademarks

Posted in IP, Trademark Law

What was once illegal is now a thriving industry. That’s right—I’m talking about cannabis. But my initial statement isn’t entirely accurate. Although Alaska, California, Colorado, Illinois, Maine, Massachusetts, Michigan, Nevada, Oregon, Vermont, and Washington have legalized cannabis, the drug remains a Schedule I narcotic under the federal Controlled Substances Act. While buying, selling, and using… Continue Reading

Southern District of New York Court Orders “All Remote” Bench Trial

Posted in IP

In Ferring Pharmaceuticals Inc. et al v. Serenity Pharmaceuticals, LLC et al, 1-17-cv-09922 (SDNY 2020-05-27, Order), Chief Judge C.J. McMahon of the Southern District of New York ordered an upcoming bench trial set to begin on July 6, 2020 in a patent infringement case to be “all remote,” at least in the sense that at… Continue Reading

Inside Out: The Ninth Circuit Holds The Moodsters are No Batman

Posted in Copyright Law, IP

(This article was republished with permission by ABA Business Law Today on 6/2/2020, available here.) Certain literary or graphic characters may, in some cases, enjoy copyright protection. Think James Bond – or Batman and even his Batmobile.  Recently, the Ninth Circuit was called upon to determine whether the Moodsters, “anthropomorphized characters representing human emotions,” are subject to the… Continue Reading

No, Machines Cannot Be Inventors!

Posted in IP, Patent Law

Eventually, it was bound to happen. A patent application was filed by a machine. Well, not exactly. A human being filed a patent application naming a machine as the inventor. The machine was an artificial intelligence machine described as a “creativity machine.” Its name was listed as “DABUS Invention Generated by Artificial Intelligence.” The invention… Continue Reading

The Ninth Circuit Affirms Ruling that COMIC-CON isn’t Generic for Comic Conventions

Posted in IP, Trademark Law

The battle started almost six years ago. A Utah-based company known as Dan Farr Productions (“DFP”) decided to use San Diego Comic Convention’s (“SDCC”) registered trademark COMIC-CON in conjunction with its own comic and popular arts convention, resulting in SDCC filing suit in the Southern District of California. SDCC alleged in its complaint that it… Continue Reading

SCOTUS Considers Whether Adding a Top-Level Domain Makes a Generic Term a Protectable Trademark

Posted in IP, Trademark Law

On Monday, May 4, 2020, the Supreme Court of the United States heard oral argument in United States Patent and Trademark Office v. Booking.com, B.V.  For the first time in the history of the Court, the argument was live streamed via multiple outlets, including CNN, enabling us trademark junkies to listen to the argument in… Continue Reading