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Trademark Claim for Profit Damages Means No Jury Trial

The US Court of Appeals for the Ninth Circuit affirmed a denial of a jury trial demand in a trademark infringement lawsuit where only a claim of disgorgement of profits was at issue. JL Beverage Company, LLC v. Jim Beam...more

Chalk One Up to the Knock-Off

Addressing issues of design patent infringement, copyright infringement, trade dress infringement and unfair competition, the US Court of Appeals for the Federal Circuit affirmed a district court’s grant of summary judgment...more

Bad Conduct During Litigation Means Attorneys’ Fees Against the Government, Regardless of Damage Amount

The US Court of Appeals for the Federal Circuit affirmed the US Court of Federal Claims attorneys’ fees award for patent infringement by the United States solely based on its actions during litigation. Hitkansut LLC,...more

Prevailing at the PTAB Can Mean Prevailing Party Attorneys’ Fees

Addressing whether attorneys’ fees may be awarded in a patent infringement lawsuit where an accused infringer successfully invalidates claims in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal...more

No Disgorgement When Injunction is Sufficient Remedy

Addressing issues related to the disgorgement of profits and attorneys’ fees in a trademark infringement lawsuit, the US Court of Appeals for the Eighth Circuit affirmed a denial of such fees and profits. Safeway Transit LLC...more

Nefarious Motives Could Mean No Declaratory Judgment for You

The US Court of Appeals for the Federal Circuit affirmed a district court’s decision to dismiss a first-filed declaratory judgment complaint, finding that equitable considerations warranted departure from the first-to-file...more

Failure to Mark Can Put Damages Underwater

The US Court of Appeals for the Federal Circuit affirmed that patented articles must be marked in order for the patentee to recover pre-notification or pre-complaint damages. Arctic Cat Inc. v. Bombardier Recreational...more

Special Report - 2019 IP Law Year in Review - Copyrights

In many ways, copyright jurisprudence in 2019 was a study in contrasts. While certain cases represented a “back to basics” approach, answering fundamental questions such as “When can a copyright owner sue for copyright...more

Data Processing Software Checks Out as Patent Eligible

Addressing an issue of software subject matter eligibility, the US Court of Appeals for the Federal Circuit reversed the district court’s judgment on the pleadings under 35 USC § 101, finding claims related to error checking...more

Transfer of “Know-How” Includes Copyrights

The US Court of Appeals for the Sixth Circuit vacated the district court’s dismissal of trademark and false advertising claims and grant of summary judgment on a copyright claim. Evoqua Water Technologies, LLC v. M.W....more

Of Passion, Prejudice and Punitive Damages

Addressing an issue of damages, the US Court of Appeals for the Ninth Circuit vacated the district court’s grant of punitive damages in favor of the plaintiff, finding “passion and prejudice” mitigated finding of “malice”....more

Post-Creation Letter Exchange Doesn’t Constitute Work for Hire Agreement

Addressing an issue of whether a letter exchange qualifies as a work for hire agreement under US copyright laws, the US Court of Appeals for the Second Circuit reversed and remanded the district court grant of summary...more

Where There’s a Claim Construction Dispute, Resolve It Before Ruling on Ineligibility

Addressing patent eligibility under 35 USC § 101, the US Court of Appeals for the Federal Circuit vacated and remanded a district court’s decision for failure to address the parties’ claim construction dispute before ruling...more

Keep on Truckin’: Aesthetic Functionality Has No Part in Design Patent Validity

Addressing the issue of the functional requirements of design patents, the US Court of Appeals for the Federal Circuit refused to invalidate design patents on truck parts on the basis of aesthetic functionality. Automotive...more

No Gold for Inaccurate Copyright Application

The US Court of Appeals for the Ninth Circuit affirmed a district court decision invalidating a copyright registration because the registration contained knowingly inaccurate information. Gold Value Int’l Textile v. Sanctuary...more

Standing Is Unaffected by Patent Licensee’s Failure to Join

Addressing the issue of standing in a patent infringement case, combined with the requirements of joinder under Fed. R. Civ. P. 19, the US Court of Appeals for the Federal Circuit vacated a dismissal based on lack of standing...more

Good Faith Belief That Content Isn’t Copyrighted Is Bad Infringement Defense

Addressing whether the fair use defense applies to the use of stock photographs under the Copyright Act, the US Court of Appeals for the Fourth Circuit concluded that a company’s commercial use of an unlicensed photograph...more

Picture This: No Direct Infringement but no Fair Use Either

Addressing the use of third-party photographs on a real estate listing website, the US Court of Appeals for the Ninth Circuit found no direct copyright infringement, notwithstanding the display of thousands of copyrighted...more

“Full Costs” Under Copyright Act Means Those Specified in General Costs Statute

In a unanimous decision authored by Justice Kavanaugh, the Supreme Court of the United States held that the term “full costs” in 17 USC § 505 of the Copyright Act has no special, expansive meaning, but is limited to the costs...more

“Full Costs” under the Copyright Act Means Those Costs Specified in General Costs Statute

On March 4, 2019, the US Supreme Court issued a unanimous decision authored by Justice Kavanaugh in Rimini Street, Inc. v. Oracle USA, Inc., finding that the term “full costs” in 17 USC § 505 of the Copyright Act has no...more

Licensor’s Non-Material Breach Doesn’t Excuse Royalties Non-Payment

The US Court of Appeals for the Eighth Circuit affirmed denial of a licensee’s motion for a new trial, finding that there was no error in awarding damages to the plaintiff/licensor for the licensee’s failure to pay royalties...more

Surname or Suds? SCHLAFLY Mark Has Acquired Distinctiveness

The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision that the SCHLAFLY mark had acquired secondary meaning and met the requirements for registration. Bruce S. Schlafly...more

No Rehearing on No Copyrights for Digital Remasters

The US Court of Appeals for the Ninth Circuit denied a petition for a rehearing en banc, refusing to reconsider its decision that digitally remastered pre-1972 sound recordings are not new copyrighted songs. ABS...more

Required Reading: Appeals Court Instructs District Court for Second Time on Fair Use of Course Materials

The US Court of Appeals for the 11th Circuit vacated a district court’s judgment for a second time, finding that the lower court misinterpreted its instructions on remand and failed to give each excerpt of the copyrighted...more

No New Copyright for Digital Remasters

The US Court of Appeals for the Ninth Circuit, in reversing a grant of summary judgment in favor of defendants, found that digitally remastered pre-1972 sound recordings were not entitled to protection under federal law as...more

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