Venable LLP updates

Supreme Court weighs in on fair use and finds that Google's use of Java SE API is fair
Venable LLP
  • Intellectual Property
  • USA
  • 19 April 2021

After 10 years of litigation, the Supreme Court has put an end to the copyright case of the century, Google v Oracle, ruling that Google's use of Oracle's application programming interface Java code in the development of its Android operating system is a fair use as a matter of law. In the doctrine-expanding six-to-two opinion, the court found that all four fair use factors weighed in Google's favour.

Mona Lisa or dog doo? Humour avoids trademark liability
Venable LLP
  • Intellectual Property
  • USA
  • 12 April 2021

Trademark holders often face the dilemma of whether and how to respond when their marks are used for comic effect, particularly when the humour is at their expense for another's commercial gain. Instinctively, trademark holders want to protect their marks, often with an aggressive legal response. However, that approach is not always wise and is now less likely to succeed, at least in one appellate circuit, following a recent case involving the well-known Jack Daniel's brand.

Supreme Court hears argument on constitutionality of administrative patent judge appointments
Venable LLP
  • Intellectual Property
  • USA
  • 15 March 2021

The Supreme Court recently heard oral arguments in a case that addresses whether administrative patent judges (APJs) – who preside over inter partes reviews at the United States Patent and Trademark Office – are unconstitutionally appointed principal officers and, if so, whether that constitutional violation can be cured by severing 'for cause' employment protections for APJs.

Novartis prevails against motion for judgment on pleadings in Entresto patent litigation
Venable LLP
  • Intellectual Property
  • USA
  • 08 March 2021

Chief Judge Stark of the US District Court for the District of Delaware recently ruled in favour of Novartis Pharmaceuticals Corporation against the generic defendants Torrent Pharma Inc and Torrent Pharmaceuticals. Stark denied Torrent's motion for judgment on the pleadings of non-infringement of US Patents 8,877,938 and 9,388,134, which cover Novartis's Entresto product and its approved use.

Third circuit panel revises half-baked trade dress functionality decision
Venable LLP
  • Intellectual Property
  • USA
  • 22 February 2021

"That's the way the cookie crumbles", a panel of judges from the US Court of Appeals for the Third Circuit again concluded in rejecting trade dress protection for the well-known Pocky cookie design. However, in a revised decision following a rehearing request, the panel clarified its initial analysis on trade dress functionality, providing a fuller explanation of its reasoning which may soothe trade dress advocates.

Trademark Modernisation Act: addressing the realities of trademark law
Venable LLP
  • Intellectual Property
  • USA
  • 15 February 2021

Congress recently enacted the Trademark Modernisation Act (TMA) 2020 as part of the Consolidated Appropriations Act 2021. The TMA amends the Trademark Act 1946 – also known as the 'Lanham Act' – and makes significant changes to trademark law by clarifying the burden for trademark owners seeking injunctive relief and providing new mechanisms for challenging applications and registrations on non-use grounds.

Biological patent transparency
Venable LLP
  • Intellectual Property
  • USA
  • 08 February 2021

The Consolidated Appropriations Act, which was enacted on 27 December 2020, requires drug manufacturers and licence holders to market biologic drugs and disclose all patents that cover their products to the Food and Drug Administration. By increasing transparency, the act aims to force manufacturers to conform to rules which have proven successful in promoting the development and use of small-molecule generic drugs.

Maximising value of brands and creative works in challenging times
Venable LLP
  • Intellectual Property
  • USA
  • 25 January 2021

Since the COVID-19 pandemic started, some new trends have emerged among non-profits looking to maximise their brand value. This article outlines strategies that non-profits should consider when working to maximise brand value, conduct a successful rebrand or monitor the use of copyrighted materials.

Mixed reactions as copyright owners ring in 2021 with CASE Act
Venable LLP
  • Intellectual Property
  • USA
  • 18 January 2021

After years of similar pending legislation, Congress passed the Copyright Alternative in Small-Claims Enforcement (CASE) Act, buried deep in the thousands of pages of the COVID-19 relief bill. The CASE Act is being welcomed with mixed reactions, with some copyright owners excited for an alternative to federal litigation, but also concerned about the opt-out option. Similarly, others who frequently receive copyright claims view this with hesitancy.

Should you grant free licences to intellectual property in response to the COVID-19 emergency?
Venable LLP
  • Intellectual Property
  • USA
  • 04 January 2021

Companies, and their lawyers, go to great lengths to protect their intellectual property, as they should. But a new trend may have emerged – the granting of a free licence, for a limited duration, to help with the COVID-19 battle. Granting such a licence is a bold step. Companies should consider the issues relevant to them and enlist counsel as appropriate.

States can invoke sovereign immunity against claims of copyright infringement
Venable LLP
  • Intellectual Property
  • USA
  • 21 December 2020

The Supreme Court has unloaded its cannons on the Copyright Clarification Act, holding that Congress lacks the authority to abrogate states' immunity from copyright infringement suits. The unanimous decision found that the court's previous holding in a case rejecting the sovereign immunity abrogation clause in the nearly identical Patent Remedy Act compelled a similar result. This finding effectively eliminates copyright infringement actions against states.

APIs front and centre in age of digital interconnectivity
Venable LLP
  • Intellectual Property
  • USA
  • 14 December 2020

In today's digital world, application programming interfaces (APIs) play a rapidly growing role in meeting the need for interconnectivity. As society grows increasingly reliant on remote access for work, APIs will continue to serve as an essential facilitator of business and everyday life. To that end, every business must consider how best to protect this valuable resource. This article discusses several ways in which legal issues surrounding APIs arise and how businesses can better protect their APIs.

Protecting your brand from COVID-19 scams
Venable LLP
  • Intellectual Property
  • USA
  • 07 December 2020

As the COVID-19 pandemic continues, scammers are seeking to capitalise on public fear and uncertainty, requiring brand owners to be ever vigilant in monitoring and protecting their intellectual property. This article highlights some of the scams seen during the pandemic and outlines what action brand owners can take. These actions may prove particularly important for organisations working on the front line in the fight to flatten the COVID-19 curve.

Time is of the essence to avoid trademark fee increases set for 2021
Venable LLP
  • Intellectual Property
  • USA
  • 30 November 2020

The United States Patent and Trademark Office recently enacted a rule that increases numerous fees for filing trademark applications, maintaining trademark registrations and filing oppositions and cancellations before the Trademark Trial and Appeal Board. Brand owners considering filing new trademark applications, and those with upcoming deadlines, should proceed with filings now to avoid incurring the increased government fees that will take effect on 2 January 2021.

Seeing green post-Election Day 2020: state trademarks for cannabis goods and services
Venable LLP
  • Intellectual Property
  • USA
  • 23 November 2020

Arizona, Montana, New Jersey and South Dakota have voted to legalise recreational marijuana use for individuals aged 21 years and older and Mississippi has voted to allow prescribed medical marijuana for people with certain conditions. While the specific regulatory frameworks concerning cannabis in these states have yet to be determined, companies involved in the cannabis industry should begin thinking now about what requirements exist to secure trademark rights for cannabis-related goods and services.

Five things to know about protecting IP rights on Amazon
Venable LLP
  • Intellectual Property
  • USA
  • 16 November 2020

With people encouraged to stay home and retail stores closing across the country due to COVID-19, Amazon sales have surged. In this climate of increased sales, IP rights owners must be especially active in enforcing their rights against Amazon sellers of infringing products. Fortunately, Amazon provides numerous tools that rights owners can use to monitor for infringement and seek the removal of infringing listings.

Can inter partes review petitions be denied as cumulative of previously presented art and arguments?
Venable LLP
  • Intellectual Property
  • USA
  • 09 November 2020

In March 2020 the Precedential Opinion Panel of the Patent Trial and Appeal Board (PTAB) designated as precedential an opinion which sets out a two-part inquiry for determining when the PTAB can deny institution of inter partes review proceedings under 35 US Code 325(d) as duplicative of art and arguments previously presented in patent prosecution. The PTAB director's determination to institute or deny an inter partes review is non-appealable.

Brand protection and anti-counterfeiting strategies during COVID-19 pandemic
Venable LLP
  • Intellectual Property
  • USA
  • 02 November 2020

Protecting consumers and company brand identity is more important than ever as counterfeit products surge in the shadow of the COVID-19 outbreak. In this time of social distancing, consumers are beginning to rely more heavily on e-commerce platforms to purchase both essential and non-essential products. This article outlines some of the strategies that companies could use to protect their customers and brand during the pandemic.

Amazon launches new Counterfeit Crimes Unit
Venable LLP
  • Intellectual Property
  • USA
  • 26 October 2020

Despite the implementation of several programmes in recent years, the traffic of counterfeit goods remains a problem for Amazon. As such, it recently announced the launch of a new Counterfeit Crimes Unit in an effort to stifle the trade of counterfeit goods on its international marketplace. The unit is a global team that will use Amazon's own internal data, third-party payment service providers and on-the-ground assets to identify bad actors and bring them to justice.

Approaching 420: cannabis trademark scene one year on from USPTO examination guidelines
Venable LLP
  • Intellectual Property
  • USA
  • 19 October 2020

Products involving CBD and hemp seeds have been flooding the US market and businesses are seeking to protect their brands in connection with products in this emerging market, given the legalisation of various forms of marijuana in individual states. Where federal or state registration is not legally obtainable with regard to various goods or services, users may be able to obtain common law rights to cannabis-related trademarks if they are in use.

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