Posts in IPWatchdog Articles

As of the date of this publication, the US House of Representatives and the Senate have passed the “Tax Cuts and Jobs Act” as reconciled by the conference committee. Now that the President has signed the Republican tax bill into law, IP owners may find the tax bill will impact sales of certain intellectual property… Given that the Committee Bill directly contradicts itself with respect to the tax treatment of the sale of patents by taxpayers whose personal efforts created such property, it is unclear how this Bill will be implemented. It is unclear how gains or losses on a sale of self-created assets by a taxpayer who created a patent will be treated.

There is no doubt that Santa Claus contributes greatly to the staggering 2017 predictions for holiday spending… Indeed, after reading all these patents (and the many others I found) it seems clear that there is a long tradition of inventors seeking patents on various items inspired by or relating to Santa Claus himself. And unlike many other celebrities, no doubt owing to Santa’s jolly nature, he seems perfectly comfortable with inventors using his name and likeness as they invent toys, figurines and other gadgets that are useful for conjuring up the loving spirit of the man during the holiday season.

The suit, filed in the Western District of Texas, alleges that the mega retailer has been infringing on its IP related to trade dress covering aspects of YETI beverage holders in violation of a settlement agreement stemming from previous litigation activity which had played out between the two companies… The allegedly infringing products include 20- and 30-ounce beverage holders and a “Koozie” beverage container which are the same size and shape as the YETI trade dress. These products had previously been the subject of patent and trademark litigation played out between YETI and Wal-Mart

Understanding the Digital Millennium Copyright Act (DMCA) has become increasingly important for companies that want to protect their digital content. The DMCA was created primarily as a solution for service providers such as YouTube that host content uploaded by third parties rather than create their own original content. Service providers benefit from the DMCA because it protects them from liability in the event content uploaded to their site infringes another’s copyrights. While the DMCA addresses a number of copyright issues, the “safe harbor” provision remains one of its most important aspects.

A jury in the Southern District of California entered a special verdict form in a trademark case playing out between a couple of American pop culture conventions. The verdict shows that the jury found in favor of plaintiff San Diego Comic Convention against a group of defendants using the “COMIC-CON” mark to publicize a similar event organized in recent years in Salt Lake City, UT. The verdict also awards $20,000 in corrective advertising damages to San Diego Comic Convention for defendants’ infringement of multiple trademarks held by the San Diego event organization.

Hasbro’s recent application to trademark the scent of Play-Doh is an example of how companies in the digital age market their products and protect their market share by using an complex intellectual property strategies. As more companies begin to implement nontraditional branding into their marketing strategies, they face legal uncertainties of how the law protects this form of intellectual property. Unfortunately, what qualifies as a legitimate scent mark remains opaque. This article will review the requirements of scent trademarks and discuss the complications associated with various aspects of these marks, including (1) the functionary doctrine; (2) the issue of scent subjectivity; (3) administrative and application difficulties; (4) the possibility of scent depletion; and (5) the uncertain benefits of scent trademarks.

On December 8, 2017, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Inventor Holdings, LLC v. Bed Bath & Beyond, Inc. (2016-2442) that provides some useful language to practitioners dealing with patent ineligibility rejections having Alice as their basis… “Like the claims at issue in Mortgage Grader, the [claims at issue] are directed to an ‘economic arrangement’ implemented using ‘generic computer technology.’ These issues were significant, if not determinative, of the Court’s holding in Alice.”

Dear Mr. Claus: You recently contacted this office to confirm the availability of your proposed “SANTA CLAUS” trademark for use in your business and, if this mark is non-infringing, to assist you in registering it for U.S. and international use. For these purposes you describe your business as “delivering games and toys to good little boys and girls as gifts for Christmas.”

After Tam was decided without expressly finding Section 2(a) unconstitutional in its entirety, the Federal Circuit requested additional briefing on the impact of Tam to Brunetti. The government argued that Tam did not resolve the constitutionality of the immoral and scandalous provisions “because the disparagement provision implicates viewpoint discrimination, whereas the immoral or scandalous provision is viewpoint neutral.” While expressing its doubts, the Federal Circuit did not find it necessary to resolve that issue because regardless of whether the immoral and scandalous provisions discriminate based on viewpoint (which requires strict scrutiny), they clearly discriminate based on content (which requires intermediate scrutiny) and the provisions could not survive either level of review.

An expanded panel of the PTAB, in a majority opinion authored by Chief Judge David Ruschke, agreed with the University of Minnesota that an IPR proceeding is an adjudicatory proceeding of a federal agency from which state entities may be immune. Nevertheless, the PTAB ruled that the University of Minnesota had “waived its Eleventh Amendment immunity by filing an action in federal court alleging infringement of the patent being challenged in this proceeding.”

With venue for patent infringement actions under § 1400(b) narrowed after TC Heartland and In re Cray, patent owners could use declaratory judgment (DJ) actions to secure their desired venue because venue in DJ actions is governed by § 1391. The Declaratory Judgment Act provides federal courts with the authority to “declare the rights and other legal relations of any interested party” where an “actual controversy” exists. 28 U.S.C. §§ 2201–02… The ITC offers patent owners yet another venue option outside of § 1400(b).

In Arctic Cat Inc. v. Bombardier Rec. Prods., after unsuccessfully defending a patent infringement lawsuit, Bombardier Recreational Products, Inc. (“BRP”) appealed the district court’s denial of its motion for judgment as a matter of law. BRP argued that the asserted claims of U.S. Patent Nos. 6,568,969 (“the ‘969 patent”) and 6,793,545 (“the ‘545 patent”) were obvious, that patentee Arctic Cat failed to mark patented products, that the jury based its royalty award on improper expert testimony, and that BRP did not willfully infringe the asserted claims. BRP also appealed the district court’s award of treble damages and the ongoing royalty to Artic Cat… While the burden of persuasion under the statute is always on the patentee… the alleged infringer who challenges the patentee’s compliance with the marking statute has the initial burden of production because placing the burden on the patentee “could lead to a large-scale fishing expedition.”

Facebook shut down the page 3 years ago after the owners of the page admitted that they sold camouflaged advertising. Facebook shut down the page without any prior notice 2 days after an article shed light on the sale of camouflaged advertising… The Court did hold that the Plaintiff breached the terms of use of Facebook, but this should not be regarded as a material breach of the contract.

The U.S. Court of Appeals for the Federal Circuit recently issued its decision in In re Micron Tech., Inc., Case No. 2017-138 (Fed. Cir. Nov. 15, 2017), and resolved a question that had divided district courts and commentators throughout the United States following the U.S. Supreme Court’s ruling in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017):  Did TC Heartland change the law of venue in patent cases such that a party’s failure to raise a venue defense in its initial responsive pleading could be excused?  The Federal Circuit held: “We conclude that TC Heartland changed the controlling law in the relevant sense: at the time of the initial motion to dismiss, before the Court decided TC Heartland, the venue defense now raised by Micron (and others) based on TC Heartland’s interpretation of the venue statute was not “available,” thus making the waiver rule . . . inapplicable.”

In Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., the Federal Circuit affirmed an award of attorneys’ fees in the lower court because “following the Alice decision, IH’s claims were objectively without merit.”  Alice issued two months after the filing of suit.