In this episode of The Briefing by the IP Law Blog, Weintraub attorneys Scott Hervey and Josh Escovedo discuss Scott’s article covering the merits of filing a Short Form Copyright Assignment.
Continue Reading The Briefing by the IP Law Blog: The Essential Purpose of the Short Form Copyright Assignment
©2021. Published in Landslide, Vol. 13, No. 3, January/February 2021, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
The U.S. Supreme Court issued numerous landmark decisions in 2020, among those—for trademark scholars and practitioners—Romag Fasteners, Inc. v. Fossil, Inc.1 The Court, with Justice Gorsuch delivering the majority opinion, held that a plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award. But Justice Gorsuch’s opinion and Justice Alito’s and Justice Sotomayor’s concurrences were clear that mental state is still a highly important consideration in determining whether to award profits. To that end, even with the Romag decision clarifying that willfulness is not a precondition for a profits award in a trademark infringement suit, the lower courts are likely to still require plaintiffs to prove that defendants had high levels of culpability before awarding profits for trademark infringement. Practitioners should expect that juries will find that defendants who knew of infringement or were reckless concerning the possibility of such conduct deserve to lose their profits.
Romag solidifies the threat posed to companies that rely on third-party manufacturers. By allowing a profits award when infringement is perpetrated with a mental state less than willfulness, this decision incentivizes companies using Chinese and other foreign manufacturers to innovate in order to mitigate these risks, either by strengthening supply chain oversight or (more likely) by writing contracts to control the risk as much as possible. Considering the importance of Chinese manufacturing to global trade, the Chinese legal system and its evolving trademark enforcement system will likely cause companies to get creative. Continue Reading Meeting of the Minds: The Price of Recklessness: Disgorgement of Profits in a Post-Romag World
A recent case in the Southern District of New York calls into serious question the ubiquitous practice of embedding photographs on a content creator’s website.
An embedded photo is one that is not hosted on the website’s own server, but instead is linked to a third-party server like a social media site. Instead of the photo being permanently available on the website, the website pulls the photo from the third-party site live when the website is accessed by a user. Platforms like Twitter, Instagram, and TikTok make it extremely easy for websites to embed user posts, and provide website designers with tools specifically meant to make embedding seamless for the user.
In a recent case (Sinclair v. Ziff Davis, LLC, 1:18-cv-00790, S.D.N.Y.), a professional photographer posted a photo to Instagram that was later embedded by Mashable in an article on its website. In its original ruling, the court held that Instagram’s terms of service (which every user, including Sinclair, accepts when signing up) permitted the embedding on links on third party websites. The court ruled that Instagram had the right to relicense Sinclair’s image to Mashable, and granted Mashable a dismissal of Sinclair’s claims. Continue Reading Recent Case Demonstrates the Need for Caution When Embedding Links to Social Media Posts
In this episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss Tiffany & Co’s lawsuit against Costco for selling Tiffany-like rings and using the word Tiffany on nearby signage, claiming trademark infringement and unfair business practices.
Continue Reading The Briefing by the IP Law Blog: Trademark Infringement – Tiffany & Co. Versus Costco
The answer is “Yes” because the U.S. government has waived sovereign immunity for claims of patent infringement. This means the U.S. government can be sued for patent infringement in at least some instances. However, special rules and certain limitations apply as explained in 28 U.S.C. § 1498, which states, in part:
(a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.
As a result, patent infringement lawsuits against the United States government, are not brought in Federal district courts but rather in the Court of Federal Claims, which is a special court “authorized to hear primarily money claims founded upon the Constitution, federal statutes, executive regulations, or contracts, express or implied in fact, with the United States.” See https://www.uscfc.uscourts.gov/. Further, a patent owner cannot sue a federal contractor who made the allegedly infringing product or performed the allegedly infringing method, but instead, must sue the U.S. government. Note, however, the U.S. government’s contract with the federal contractor may require the contractor to indemnify the government for liability and costs. Continue Reading Can the U.S. Government Be Liable for Patent Infringement?
