Other Barks & Bites for Friday, August 26: CNIPA Announces 15% Increase in Patent Transfers and Licenses, Ninth Circuit Clarifies Secondary Meaning in Trade Dress, and Sixth Circuit Rejects ‘Derivative Sovereign Immunity’ Defense to Copyright Claims

Bite (noun): more meaty news to sink your teeth into.

Bark (noun): peripheral noise worth your attention.

https://depositphotos.com/3726250/stock-photo-dog-news.htmlThis week in Other Barks & Bites: USPTO Director Vidal grants sua sponte review of IPR institution decisions to clarify the General Plastics factors; the Ninth Circuit rules that secondary meaning only needs to identify a single source, not a particular source, to support trade dress infringement claims; the Fifth Circuit affirms the dismissal of a trademark suit against merchandising agents for failure to join Jackson State University, which holds an interest in the underlying mark; font designer Nicky Laatz accuses Zazzle of exploiting the work of custom font designers without compensation; Fox Sports reaches a settlement over trademark claims filed by the entity owning the trademarks to the defunct USFL; China’s IP administration says that 2021 saw a 15 percent increase to the number of patent transfers and licenses within that country; and the Sixth Circuit rules that a defendant cannot claim a derivative sovereign immunity defense for committing copyright infringement in the course of bidding for state contracts.


Ninth Circuit Says Secondary Meaning Doesn’t Require Link to Particular Company – On Wednesday, August 24, the U.S. Court of Appeals for the Ninth Circuit issued a ruling in P and P Imports LLC v. Johnson Enterprises, LLC in which the appellate court reversed a grant of summary judgment dismissing trade dress infringement claims brought by the developer of an oversized Connect 4 board game. The Ninth Circuit ruled that trade dress can acquire secondary meaning if consumers associate that trade dress with any single—even anonymous—source, and does not have to be linked directly to a particular company.

Fifth Circuit Affirms Rule 12(b)(7) Dismissal of “THEEILOVE” Trademark Suit – On Wednesday, August 24, the U.S. Court of Appeals for the Fifth Circuit issued a decision in Lee v. Anthony Lawrence Collection, L.L.C. in which the appellate court affirmed a district court ruling dismissing a trademark suit filed against merchandise licensing agents of Jackson State University for their use of the university’s alma mater song title “Thee I Love.” The Fifth Circuit found that Jackson State University was a necessary party to the trademark case and that the dispute could not be resolved in federal court without impacting the interest of the school, which claims a legal interest in Lee’s registration for the “THEEILOVE” trademark.

CNIPA Reports Increase in Number of Patent Transfers and Licenses in China – On Wednesday, August 24, Chinese state-owned media outlets reported that China’s National Intellectual Property Administration (CNIPA) released figures on patent transfers and licenses showing that 420,000 such transfers and licenses took place within the country in 2021, a 15 percent increase over 2020’s totals. 

Director Vidal Sua Sponte Clarifies Application of General Plastics Factors – On Tuesday, August 23, U.S. Patent and Trademark Office Director Kathi Vidal sua sponte granted Director review of the Patent Trial and Appeal Board’s (PTAB) denial of institution in a pair of inter partes review (IPR) proceedings challenging Bright Data’s patent claims. In the precedential decision, Director Vidal reversed the institution denials and remanded for further proceedings after clarifying that the factors for denying institution under General Plastic Industrial v. Canon Kabushiki Kaisha, specifically factor one which looks to whether the petitioner previously challenged the same patent claims in an IPR, should consider whether the first petition was evaluated on the merits.

Sixth Circuit Rejects Novel “Derivative Sovereign Immunity” Defense to Copyright Claims – On Tuesday, August 23, the U.S. Court of Appeals for the Sixth Circuit issued a decision in ACT, Inc. v. Worldwide Interactive Network, Inc. in which the appellate court affirmed a district court’s decision to strike a novel defense theory raised by Worldwide Interactive Network (WIN), namely that WIN should be shielded from ACT’s copyright infringement claims regarding WIN’s decision to copy career-readiness assessment materials from ACT because WIN developed those materials to bid on state contracts and thus should be subject to a derivative sovereign immunity defense.

CAFC Rejects Killian’s Arguments That Section 101 Rejections are Arbitrary and Capricious – On Tuesday, August 23, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in In re: Killian in which the appellate court dismissed arguments by inventor Jeffrey Killian that the standard for 35 U.S.C. § 101 patent eligibility under Alice and Mayo is so poorly defined that Section 101 invalidations should be considered arbitrary and capricious under the Administrative Procedures Act (APA), which the Federal Circuit noted applied only to federal agency decisions and not to court rulings.

Ninth Circuit Affirms Ruling That Toy Story 4 Makes Transformative Use of Evel Knievel Likeness – On Monday, August 22, the U.S. Court of Appeals for the Ninth Circuit entered a ruling affirming the District of Nevada’s dismissal of a trademark case against Walt Disney Pictures and brought by K and K Promotions, the owner of the intellectual property rights to famed American stuntman Evel Knievel, after finding that the Duke Caboom character in Disney’s Toy Story 4, while generally reminiscent of Knievel, is a transformative use of Knievel’s likeness.

GSK Response Brief Says Unusual Facts of Case Should Doom Teva’s Skinny Label Appeal – On Friday, August 19, British drugmaker GlaxoSmithKline (GSK) filed a brief at the U.S. Supreme Court in opposition to a petition for writ of certiorari filed by Teva. GSK argued that Teva’s appeal of the Federal Circuit’s decision to reinstate a jury verdict finding that Teva induced infringement of a GSK reissue patent by using a partial or “skinny label” will not harm the balance wrought by the Hatch-Waxman Act, which allows generic drugmakers to carve out certain indications on partial labels to seek market approval of an unpatented drug while carving out patented methods of using those drugs for treatment.


Font Designer Sues Zazzle Alleging Widespread Exploitation of Custom Font Designs – On Wednesday, August 24, font designer Nicky Laatz filed a lawsuit in the Northern District of California against Internet design platform Zazzle alleging claims of copyright and trademark infringement involving Zazzle’s unlicensed use of Laatz’s custom font designs, and calling out Zazzle for engaging in a pattern of exploiting the work of font designers without paying any compensation.

China’s Huaqin Leads GlobalData’s Startup Companies Scorecard for Patent Activity – On Wednesday, August 24, consulting firm GlobalData released its Startup Companies Scorecard, which highlights top predicted unicorn startups based on patent filing activity, with Shanghai-based Huaqin taking the top spot, followed by U.S.-based Degree in second and UK-based Ultrahaptics in third.

ASCAP Files Copyright Suits Against Seven U.S. Venues for Unauthorized Music Performances – On Tuesday, August 23, the American Society of Composers, Authors and Publishers (ASCAP) announced that the organization had filed lawsuits in several U.S. district courts targeting a series of seven establishments across the country who had engaged in unauthorized public performances of music copyrighted by ASCAP members.

Settlement Reached in Trademark Suit Against Fox Over USFL Football Logos – On Monday, August 22, The Real USFL filed a voluntary dismissal of a lawsuit against Fox Sports in the Central District of California, with news outlets reporting that the dismissal follows The Real USFL’s decision to settlement trademark infringement claims against Fox Sports over its role in using logos from the defunct United States Football League to create the new USFL that debuted last year.

Samsung Targeted in Section 337 Complaint Over Outdoor Electronic Displays – On Monday, August 22, the U.S. International Trade Commission (USITC) announced that it had received a Section 337 complaint from Atlanta, GA-based electronics firm Manufacturing Resources International alleging claims of patent infringement against several respondents, including South Korean tech conglomerate Samsung Electronics, over their importation of certain outdoor and semi-outdoor electronic display products into the U.S. for sale.

Judge Albright Grants Partial MTD in Patent Case Against Google Voice Technology – On Monday, August 22, U.S. District Judge Alan D. Albright of the Western District of Texas entered a ruling granting part of a motion to dismiss filed by Internet services giant Google. Judge Albright found that, while voice communications patent owner Flypsi did not sufficiently plead Google’s knowledge of the patents-in-suit to support its claims for pre-suit indirect and willful infringement, Flypsi’s pleadings plausibly alleged that Google may be liable for post-suit infringement claims.

Galaxy Survey Finds Most NFT Projects Misleading Consumers About IP Rights – On Friday, August 19, blockchain and cryptocurrency firm Galaxy issued the results of a survey into license agreements surrounding digital assets known as non-fungible tokens (NFTs), finding that many NFT projects offer licenses that mislead consumers as to their intellectual property rights in the underlying NFT asset and that only one project of 25 surveyed attempts to actually convey IP rights in NFTs to consumers.

UFC Sues Bisping Documentary Makers for Unlicensed Use of Fight Footage – On Thursday, August 18, Zuffa, LLC, doing business as Ultimate Fighting Championship (UFC), filed a lawsuit in the Central District of California against several entities involved with the production of a film documentary about former UFC fighter Michael Bisping, alleging that the documentary infringed upon 24 copyrighted UFC matches by displaying clips of those fights without a license from the UFC.

This Week on Wall Street

Novartis Will Spin Off Sandoz to Focus on Patented Prescription Medicines – On Thursday, August 25, Swiss-American pharmaceutical multinational Novartis announced that the company had decided to spin off its Sandoz generic drugs division in order to position the company’s focus more strongly on its patented pharmaceutical business.

Decreased Gaming Sales for Nvidia Result in EPS, Revenue Miss – On Wednesday, August 24, chip designer Nvidia released earnings for the second quarter of 2022 showing that the company missed analyst expectations on both earnings per share ($0.51 per share vs. $1.26 per share expected) and revenues ($6.7 billion vs. $8.1 billion expected), due in large part to a 33 percent year-over-year decline in the company’s gaming division sales.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2021 are announcing quarterly earnings next week (2020 rank in parentheses):

  • Monday: None
  • Tuesday: Baidu, Inc. (99th); BOE Technology Group Co., Ltd. (14th); Hewlett Packard Enterprise Co. (79th)
  • Wednesday: None
  • Thursday: None
  • Friday: None

Image source: Deposit Photos
Image ID: 3726250
Author: studioM 


Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Join the Discussion

One comment so far.

  • [Avatar for Pro Say]
    Pro Say
    August 26, 2022 03:47 pm

    NFTs are like a box of chocolates … yaz jus’ neva knows what yaz gonna git.

    NFT: Not Fit for Trading.