Laches Limited To Being An Equitable Defense In Patent Cases

Posted in IP Litigation

In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, the Supreme Court made plain that laches is merely an equitable defense in patent cases, and will not bar a damage claim if brought within the six year statute of limitations of 35 U. S. C. §286, coming to the same conclusions as it had previously with respect to the laches defense in Copyright Act cases. Petrella v. Metro-Goldwyn-Mayer, Inc., Doc. No. 12-1315 (May 19, 2014). Continue Reading

Supreme Court Affirms That Designs Of Cheerleading Uniforms Are Copyrightable

Posted in Copyrights

As we previously blogged, the Sixth Circuit held in 2015, that the colors, stripes, chevrons, and similar graphic designs of the plaintiff’s cheerleading uniforms “are copyrightable pictorial, graphic, or sculptural works” and are “not uncopyrightable useful articles.” The Supreme Court, in Star Athletica, LLC v. Varsity Brands, Inc., Doc. No. 15-866, affirmed, 6-2, in an opinion by Justice Thomas on March 22, 2017. Justice Ginsburg filed an opinion concurring in the judgment. Justice Breyer filed a dissenting opinion, in which Justice Kennedy joined. Continue Reading

The Yellow Pages Live On

Posted in Attorneys' Fees, Copyrights, IP Litigation

Calling the district court’s action an “abuse of discretion,” the 11th Circuit reversed a decision that cut by more than 90 percent a successful copyright infringement plaintiff’s request for attorney’s fees and costs. Yellow Pages Photos, Inc. v. Ziplocal, L.P., No. 16-11868 (January 24, 2017). This is the latest decision issued in the long-running dispute between Yellow Pages Photos, Inc. (YPPI) and Ziplocal, L.P. (Ziplocal) related to the layout and assembly of phonebook products. Continue Reading

Making United States Consumer Safer For Tequila?

Posted in Trademarks, TTAB, USPTO

The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) recently dismissed Luxco, Inc.’s (“Luxco”) opposition to registration of the mark TEQUILA (in standard character format) by an official Mexican regulator as a certification mark for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant.” Luxco, Inc. v. Consejo Regulador del Tequila, A.C., Opposition No. 91190827 (January 23, 2017) [precedential]. As a result, Mexico’s “Consejo Regulador del Tequila A.C.” (meaning Tequila Regulatory Council, hereinafter “CRT”) can register the word TEQUILA as a certification mark and control its use. Continue Reading

The New Joint DOJ/FTC Antitrust Guidelines for the Licensing of Intellectual Property

Posted in Antitrust, DOJ, FTC, IP Licensing

On January 12, 2017, the U.S. Department of Justice and the Federal Trade Commission released updated Antitrust Guidelines for the Licensing of Intellectual Property (the “Guidelines”). These Guidelines replaced those issued on April 6, 1995, and state the agencies’ policies regarding the licensing of patents, copyrights, trade secrets, and know-how; the Guidelines do not cover the antitrust treatment of trademarks. Continue Reading

A Family Victory! Victory! Just Not for Little Caesars

Posted in Trademarks, TTAB

The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) modified its treatment of the “family of trademarks” doctrine in the recent case In re LC Trademarks, Inc., Serial No. 85890412 (December 29, 2016) [precedential]. All but breaking with its past decisions on the doctrine, the Board has now announced the new rule that ex parte applicants may argue that a particular mark has acquired distinctiveness as part of a trademark family. Continue Reading

Making Tequila and Pisco Shots Safe From Confusion

Posted in Trademarks, TTAB

The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) cancelled the registration for the mark PORTÓN last week, finding it to be confusingly similar to the senior mark PATRÓN. Patrón Spirits International AG v. Pisco Portón, LLC, Cancellation No. 92059527 (January 4, 2017) (non-precedential). Continue Reading

NY Common Law Does Not Provide Creators With Control Over Public Performances of Pre-1972 Sound Recordings

Posted in Copyrights

On December 20, 2016, the New York Court of Appeals (New York’s highest court) issued a landmark state copyright law decision, holding in response to a certified question from the Second Circuit in Flo & Eddie, Inc. v. Sirius XM Radio, Inc., that New York law does not recognize a right of public performance for creators of sound recordings fixed before February 15, 1972. Continue Reading

First Circuit BAP Protects Trademark Licensees In Bankruptcy Despite Section 365(n)

Posted in IP Licensing, Trademarks

The First Circuit recently issued an important interpretation of bankruptcy law that directly impacts trademark licensing rights. In In re Tempnology LLC, 559 B.R. 809 (1st Cir. BAP 2016), the First Circuit Bankruptcy Appellate Panel held that a debtor-licensor’s rejection of a trademark licensing agreement “did not vaporize” the licensee’s contractual right to use the debtor’s mark and logo.  The court found that, while trademarks are “not encompassed in the categories of intellectual property entitled to special protections under § 365(n)” of the Bankruptcy Code, the licensee could still retain trademark rights under the terms of the parties’ co-marketing and distribution agreement (which contained the trademark licensing agreement) and applicable non-bankruptcy law. Continue Reading

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