Posts in Circuit Courts of Appeal

In the most recent development in a case between energy drink brand Monster Energy Company and maker of automotive tools Integrated Supply Network, LLC (ISN), the U.S. District Court for the Central District of California on July 2 denied Monster’s request for a permanent injunction against ISN. Monster appealed on July 3 to the U.S. Court of Appeals for the Ninth Circuit and ISN cross-appealed on July 12. The district court found that Monster did not offer evidence demonstrating that ISN’s infringement had actually caused a loss of control over its business reputation leading to irreparable harm and loss of prospective customers. Additionally, the court reasoned that evidence regarding consumer confusion does not necessarily demonstrate irreparable harm. Even where ISN had not ceased infringing activity, Monster still had not proven irreparable harm as required to justify a permanent injunction, said the court.

This week in Other Barks & Bites: the USPTO’s Precedential Opinion Panel delivers a key ruling for inventors; the Second Circuit rules that a series of six film scores weren’t works for hire under U.S. or Italian law; Gilead files for inter partes review of patents owned by the U.S. government covering PrEP treatments; Qualcomm and LG Electronics enter into a five-year patent licensing agreement for wireless technologies; Taiwan begins implementing a patent linkage system for drug approvals; HP appoints a new CEO; Eminem music publishing firm files a copyright infringement suit against Spotify; and the DOJ and the Copyright Office support Led Zeppelin in the “Stairway to Heaven” copyright case.

That an open government is inseparable from a free society is one of the basic tenets supporting American democracy. If people are to be ruled by laws, they have a fundamental right to access those laws. To that end, in 17 U.S.C. § 105, the U.S. Copyright Office makes clear that binding and official government edicts may not be copyrighted by the United States government. However, the Supreme Court has not addressed the issue as it pertains to state governments since a series of cases in the late 1800s. But are there limits to that access, or are there certain situations in which government edicts may, in fact, fall under the scope of copyright protection? The U.S. Supreme Court hopefully will provide some clarity on this issue when it hears the case Georgia, et al. v. Public.Resource.Org, Inc. in the upcoming term.

On August 7, the U.S. Court of Appeals for the Eleventh Circuit affirmed a jury verdict from the U.S. District Court for the Northern District of Georgia finding a landlord liable for contributory trademark infringement . The jury ruled for Plaintiffs Luxottica Group, LLC and Oakley, Inc., holding that Defendants Airport Mini Mall, LLC (AMM); Yes Assets, LLC; Chienjung (Jerome) Yeh; Donald Yeh; Jenny Yeh; and Alice Jamison were liable for contributory trademark infringement under the Lanham Act for allowing their subtenants to sell counterfeit goods that infringed the plaintiffs’ trademarks.

This week in Other Barks & Bites: The Federal Circuit has asked USPTO Director Andrei Iancu to brief the appellate court on deference that should be paid to precedential PTAB opinions; China announced that it will create a credit rating mechanism for patent agents; Russ Slifer Op-Ed revives 101 debate; the FCC will approve the proposed T-Mobile/Sprint merger; amicus briefs filed at the Supreme Court support the abrogation of state sovereign immunity against copyright claims; Nintendo ramps up copyright campaign against YouTube accounts using video game music; Guns N’ Roses settles trademark dispute over craft beer brand; and copyright troll entity Malibu Media faces investor lawsuit.

The U.S. Court of Appeals for the Second Circuit issued a decision in an appeal from the U.S. District Court for the Southern District of New York last Thursday that in part clarified that “a plaintiff prosecuting a trademark infringement claim need not in every case demonstrate actual consumer confusion to be entitled to an award of an infringer’s profits.” The Second Circuit court also remanded the case back to the District Court to apply the Octane Fitness standard for determining “exceptional” cases under the Lanham Act.

This week in Other Barks & Bites: WIPO launches dispute resolution service for Chinese domain names; Morrison Foerster report shows that IP litigation costs are increasing as the number of IP matters being handled are decreasing; the Federal Circuit issues precedential decisions upholding claim construction findings at the ITC and overturning a district court jury verdict finding invalidity for being unsupported by record evidence; the Second Circuit clarifies when profits can be awarded in trademark cases; Uber IP transfer creates $6.1 billion tax break for the company; major football associations call for crackdown on Saudi piracy service; OPPO inks patent agreements with Intel and Ericsson; and Broadcom acquires Symantec’s enterprise security business.

On June 12, the U.S. Court of Appeals for the Seventh Circuit decided Bodum USA, Inc. v. A Top New Casting Inc., No. 18-3030, 2019 (7th Cir. June 12, 2019). The case was based on Bodum’s allegation that A Top infringed Bodum’s unregistered trade dress in its Chambord® French press coffee maker design and squarely addressed the doctrine of “functionality” of trade dress. The court addressed two important issues related to functionality: (1) what type of evidence is necessary to prove functionality of a particular design and (2) under what circumstances are utility patents relevant to that analysis?

The United States Court of Appeals for the Seventh Circuit last week ruled that well-known sports drink maker Gatorade’s use of the slogan, ““Gatorade The Sports Fuel Company” beginning in 2016 amounted to  fair use under the Lanham Act and therefore did not violate SportFuel Inc.’s trademark rights. SportFuel is a nutrition and wellness consulting company based in Chicago that holds two registered trademarks for “SportFuel.” Around 2013, Gatorade, a subsidiary of PepsiCo., began a rebranding effort that included public descriptions of its products as “sports fuels”. Gatorade registered a trademark for “Gatorade The Sports Fuel Company” in 2016 but disclaimed “The Sports Fuel Company” due to the U.S. Patent and Trademark Office’s (USPTO’s) notice that the phrase was descriptive of its products. However, the company continued to use the slogan.

This week in Other Barks & Bites: The Federal Circuit issues several precedential decisions, including one reviving the patent claims in VirnetX and another determining that America Invents Act (AIA) validity trials don’t violate the Fifth Amendment’s Takings Clause in Celgene. This week in Other Barks & Bites: The Federal Circuit issues several precedential decisions, including one reviving the patent claims in VirnetX and another determining that America Invents Act (AIA) validity trials don’t violate the Fifth Amendment’s Takings Clause in Celgene; the USPTO proposes fee increases to patent examination and AIA trials and issues a final rule on e-filing in trademark registrations; Katy Perry is ordered to pay $2.7 million for copyright infringement; free OTA TV service Locast is targeted in a copyright suit filed by Disney and other major broadcasters; Pfizer and Mylan consider creating a global giant in off-patent drugs; the University of California files patent suits against major retailers over LED light bulb technology; and patent applications listing artificial intelligence machine inventor are filed in patent offices across the world.

On July 15, retired Federal Circuit Chief Judge Paul Michel filed an amicus brief in Qualcomm’s appeal of the Federal Trade Commission’s (FTC) antitrust case to the U.S. Court of Appeals for the Ninth Circuit. The following day, the United States government filed a statement of interest with the appellate court as well. Both parties filed in support of Qualcomm’s request for a partial stay of an injunction handed down this May in the Northern District of California, which requires Qualcomm to license its standard essential patents (SEPs) to modem-chip suppliers after determining that the company’s “no license, no chips” policy violated U.S. antitrust law.

This week in Other Barks & Bites: Senators Rubio and Cornyn introduce a bill to prevent Huawei from buying and selling U.S. patents; the CASE Act to create a small claims system for copyright claims is voted onto the Senate floor; the USPTO releases an updated trial practice guide for America Invents Act trials at the Patent Trial and Appeal Board; IBM increases its blockchain patent filings, while carbon mitigation patent filings have dropped around the world; Google faces patent lawsuit for “brazen” infringement; a settlement in a trademark case allows historic Yosemite sites to resume use of their names; and Microsoft boost in cloud sales in the latest quarter leads to a big beat on revenue.

On June 28, the U.S. Supreme Court granted certiorari to take up a pair of cases that could affect how trademark cases are argued in federal courts. In Lucky Brands Dungarees, Inc. v. Marcel Fashion Group, Inc., the Court will determine whether federal preclusion principles bar defendants from raising defenses that could have been raised in previous cases between the same parties, even when the plaintiff asserts new claims. In Romag Fasteners, Inc. v. Fossil, Inc., SCOTUS will decide whether a finding of willful infringement is required to award an infringer’s profits in cases involving false designation of origin or false description.

This week in Other Barks & Bites: The Supreme Court today agreed to hear two trademark cases next term; Senators Thom Tillis and Chris Coons issue a statement regarding the recent round of patent eligibility hearings by the Senate Intellectual Property Subcommittee; four bills that would impact pharmaceutical patents and practices have passed out of the Senate Judiciary Committee; Huawei publicly calls out negative impact of Senator Marco Rubio’s legislative amendment preventing it from seeking U.S. patent infringement damages, one day after losing its trade secret case against CNEX Labs; Spotify settles a pair of major copyright suits targeting its music streaming service; Intel will reportedly auction thousands of IP assets related to wireless device technology; and revised data shows that U.S. GDP grew 3.1% during the first three months of 2019.

As we anxiously await a final decision from the U.S. Supreme Court in Iancu v. Brunetti, and decisions on pending petitions for certiorari in several other IP cases, the Court agreed to hear Allen v. Cooper on June 3. The case asks whether Congress acted appropriately in relying upon its powers under Article I of the U.S. Constitution to abrogate state sovereign immunity against federal copyright claims by passing the Copyright Remedy Clarification Act (CRCA) or if, as the Fourth Circuit held, Congress improperly abrogated state sovereign immunity by passing that law.