By: Matt Lubozynski
The Supreme Court recently decided another intellectual property case in Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc., No. 18-1086, 2020 WL 2477020, at *2 (U.S. May 14, 2020) (“Lucky Brand”). Although the case concerned trademark infringement, the issue before the Supreme Court went to whether to recognize a separate res judicata doctrine titled “defense preclusion.” Justice Sotomayor provided the opinion of a unanimous Court. Continue reading
By J. Graham Matherne
The Lanham Act sets forth various remedies for trademark infringement including the potential recovery of the infringer’s profits. 15 U.S.C. § 1117(a). Prior to April 23, 2020, there was a split in the federal circuits as to whether an award of infringer’s profits required a finding that the infringement was willful. Continue reading
By Julie Laemmle Watts
Many people feel a certain level of invincibility to data breaches and online scammers, maybe because they are well-read and knowledgeable about what to look for and avoid, or maybe because they simply think they are smart enough to know a scam when they see it. While that may be true in the ordinary course, scammers have adapted to and are preying on peoples’ vulnerable states in the current pandemic. This is even more concerning given the vast number of people working from home, which creates additional exposure for employers. Continue reading
By Julie Laemmle Watts
COVID-19 has drastically impacted people’s lives and livelihoods. It has also had drastic impacts on many legal sectors, but its impact on intellectual property has been much less severe with the United States Patent and Trademark Office (“USPTO”) and Copyright Office moving forward via remote operations. Continue reading
By Meghan Cox and Michelle Browning Coughlin
In a 6-3 ruling announced last Monday, the Supreme Court struck down the Lanham Act’s longstanding prohibition on registering “immoral or scandalous” trademarks. The decision in Iancu v. Brunetti is the culmination of Erik Brunetti’s 8-year battle to register the name of his edgy streetwear brand, FUCT. Billed as an acronym for “Friends You Can’t Trust,” pronouncing the brand name out loud is “the equivalent of [the] past participle form of a well-known word of profanity.” In what may have been a first for the Supreme Court, both attorneys and Justices refrained from even saying the contested trademark on oral argument, opting to use “safe-for-work” references to “Mr. Brunetti’s mark” instead.
By Matt Williams and Bobby Whitmer, Wyatt Summer Associate
Historically, the U.S. Court of Appeals for the Federal Circuit(“Federal Circuit”) has held that International Trade Commission (“ITC”) rulings on patent infringement issues do not have a preclusive effect on future district court proceedings. The Federal Circuit, however, had not decided whether a trademark or other non-patent ruling by the ITC would fail to preclude later district court cases as well. In an issue of first impression in the Federal Circuit, Swagway, LLC v. International Trade Commission and Segway, Inc., DEKA Products Limited Partnership, Ninebot (Tianjin) Technology Co., Ltd., held that, like a patent infringement ruling, a ruling by the ITC concerning trademark infringement will not have a preclusive effect on later district court cases. This holding effectively created a circuit split regarding the preclusive effect of ITC rulings between the Federal Circuit and the other Circuits that have addressed the issue. Continue reading
By Graham Matherne
On October 11, 2018, President Trump signed into law the Orrin G. Hatch – Bob Goodlatte Music Modernization Act (“Act”), which had unanimously passed both the House of Representatives and the Senate. The Act has been praised by often-times divergent groups in the music industry – e.g. songwriters, publishers, digital streaming services, performance rights organizations – as being a “truly historic moment for the music industry.” See e.g. Variety, Oct. 11, 2018 “Trump Signs Sweeping New Music Licensing Legislation,” quoting BMI President and CEO Mike O’Neil.
The Act actually is comprised of three separate pieces of legislation:
- The Music Licensing Modernization Act (“MLMA”) (Title I of the Act);
- Compensating Legacy Artists for Their Songs, Service and Important Contributions to Society Act (“CLASSICS Act”) (Title II of the Act); and
- Allocation for Music Producers Act (“AMP Act”) (Title III of the Act).
Changes Under the MLMA
The MLMA makes significant changes with regard to Continue reading
By Julie A. Laemmle
In 2015, BladeRoom Group, Ltd. (“BRG”) and Bripco (UK) Limited (“Bripco”) filed suit in the United States District Court, Northern District of California, alleging that Facebook as well as Emerson Electric Co., Emerson Network Power Solutions, and Liebert (collectively “Emerson”), stole its designs for pre-fabricated modular facilities to build the Facebook data center in Lulea, Sweden. The lawsuit also contended that Facebook published the data center ideas on an Open Compute Project blog in violation of the Open Compute rules, which stipulate that members can only share intellectual property with the owner’s consent. BRG ultimately sought $365 million in damages from its claims for trade secret misappropriation, breach of contract and violation of California’s Unfair Competition Law.
BRG claims it met with the Facebook and Emerson executives in the summer of 2011 and discussed BRG’s technology shortly thereafter. Subsequent to this meeting, Facebook asked BRG for Continue reading
By Meghan Cox; Jake Smith, Wyatt Summer Associate 2018
Knight First Amendment Institute at Columbia University v. Trump
Most Americans would agree that Donald Trump has no greater platform than Twitter. The self-proclaimed “Ernest Hemingway of 140 characters” understands that he can maximize his influence through the @realDonaldTrump account because tweeting provides the most direct interaction with constituents. But unlike Hemingway, who is renowned for his “iceberg theory” of writing—in which a story’s deeper meaning is veiled under simple innuendos and symbolism—President Trump leaves little to a reader’s imagination. His direct, and often abrasive, rhetoric has led many readers to reply in disagreement, and, in turn, Trump has developed a propensity for blocking these readers on Twitter. Now that Trump is blocking people in his capacity as President, his so-called “haters and losers” may have recourse under the Constitution. Continue reading
By Julie Laemmle; Alicia Humphrey, Wyatt Summer Associate 2018
In a recently released ruling, the Trademark Trial and Appeal Board (“Board”) dismissed PYRAT RUM’s opposition to registration of PIRATE PISS for beer, ale and lager. Patrón Spirits International AG v. Conyngham Brewing Company, Opposition No. 91226939 (June 8, 2018). The Board, in an opinion authored by Administrative Trademark Judge Thomas W. Wellington, held that PIRATE PISS for beer is not likely to be confused with the already-registered mark PYRAT for rum. By rejecting PYRAT RUM’s challenge, the Board is allowing Conyngham Brewing Company’s application for registration to proceed.
In dismissing the Opposition, the Board took into account a variety of considerations commonly referred to as the “du Pont factors.” The opinion, organized according to the du Pont factors, found the following: Continue reading