Venable LLP updates

Supreme Court denies copyrightability of Georgia code annotations
Venable LLP
  • Intellectual Property
  • USA
  • 28 September 2020

A recent Supreme Court decision may seem like it boiled down to an esoteric argument over the correct interpretation of a series of cases decided in the 19th century – and it did – but the ramifications of the decision will be felt in 2020 and beyond. The court, by a slim five-to-four majority, held that the annotations in Georgia's official code are not copyrightable.

Supreme Court eases path to profits recovery in Lanham Act cases
Venable LLP
  • Intellectual Property
  • USA
  • 21 September 2020

In April 2020 the Supreme Court ruled that a plaintiff in a Lanham Act trademark infringement case may recover a defendant's profits without having to prove that the defendant acted wilfully. This precedential decision makes it easier for plaintiffs to obtain monetary recovery for trademark violations and false advertising under the Lanham Act.

Pigment of our imagination? Colour trademarks could be inherently distinctive
Venable LLP
  • Intellectual Property
  • USA
  • 14 September 2020

Previously, in order for a brand owner to protect colour as a feature of its product packaging, it had to show that the colour scheme had acquired distinctiveness through extensive use in the marketplace. However, the Court of Appeals for the Federal Circuit recently ruled otherwise, creating new possibilities for brand owners to protect the overall look and feel of their packaging and strengthen their IP toolkit.

USPTO prioritises certain COVID-19-related trademark and service mark applications
Venable LLP
  • Intellectual Property
  • USA
  • 07 September 2020

In response to the COVID-19 pandemic, the United States Patent and Trademark Office recently announced an accelerated examination procedure for certain trademark and service mark applications covering qualifying COVID-19 medical products and services. This expedited process will benefit those that wish to protect their marks for products developed to fight the pandemic.

Gaming emote litigation: plaintiffs test different causes of action as battle ensues over Fortnite emotes
Venable LLP
  • Intellectual Property
  • USA
  • 31 August 2020

Fortnite: Battle Royale's high level of success and popularity has inevitably also made the game an inviting target for litigation. In the past 18 months, several cases have been brought against Epic Games regarding some of the game's most popular emotes, particularly with regard to copyright infringement and right of publicity claims. These cases provide insight for gamers and game developers into potential claims that they may face and how to appropriately clear rights and avoid claims.

Supreme Court lets Booking.com reserve its brand: generic.com terms can now be registered as trademarks
Venable LLP
  • Intellectual Property
  • USA
  • 24 August 2020

The Supreme Court recently affirmed the Court of Appeals for the Fourth Circuit's ruling in the closely watched Booking.com case, holding that the hotel reservation site's BOOKING.COM name was not generic and could therefore obtain federal trademark registration. This ruling makes registration possible for parties in any industry to register similar names as trademarks.

Fighting counterfeits at the border: Counterfeit Goods Seizure Act of 2019 would expand CBP enforcement to design patents
Venable LLP
  • Intellectual Property
  • USA
  • 17 August 2020

The Counterfeit Goods Seizure Act of 2019, which a bipartisan group of senators introduced at the end of 2019, is a significant legislative effort to tackle the problem of imported counterfeit goods. The act would add design patents to US Customs and Border Protection's current IP rights enforcement mechanism for trademarks and copyrights.

DMCA 512 Report: key findings by US Copyright Office
Venable LLP
  • Intellectual Property
  • USA
  • 10 August 2020

The US Copyright Office recently issued the long-awaited and first comprehensive government study on the 20-year-old Section 512 of the Copyright Act. The 250-page study contains an incredibly thorough and well-done analysis of the current law in this area, the learned challenges of this provision and the viewpoints of various stakeholders with regard to some of the challenges that exist with Section 512. This article aims to provide a brief overview of the study's key findings.

Federal Circuit to amend rules for appeals in patent cases
Venable LLP
  • Intellectual Property
  • USA
  • 03 August 2020

The US Court of Appeals for the Federal Circuit recently adopted several amendments to its rules of practice, which govern procedural aspects of appeals from district court patent cases and appeals from Patent Trial and Appeal Board proceedings. These amendments apply to all appeals filed or pending on or after 1 July 2020, to the extent practicable, unless otherwise ordered.

Legal implications of syncing copyrighted music with other content
Venable LLP
  • Intellectual Property
  • USA
  • 27 July 2020

With the rise of social distancing and stay-at-home orders, the demand for online content has increased exponentially. Given this new reality, online content creators must take steps to ensure that their online creations do not land them in legal hot water. This article's examples and best practices illustrate and address the challenges associated with using music in online content.

Hard pill to swallow: TTAB denies trademark application for dietary and nutritional supplements involving CBD
Venable LLP
  • Intellectual Property
  • USA
  • 20 July 2020

The Trademark Trial and Appeal Board recently affirmed a United States Patent and Trademark Office (USPTO) decision denying the application of a mark for hemp oil extracts sold as an integral component of dietary and nutritional supplements. In its decision, the USPTO had reasoned that the applicant's goods, which contained cannabidiol, were illegal under federal law – specifically, the Food, Drug and Cosmetics Act and the Controlled Substances Act.

Conducting your way through music licensing: common issues
Venable LLP
  • Intellectual Property
  • USA
  • 13 July 2020

Absent a few limited exceptions, the use of someone else's music without their permission is an infringement on their copyright. This article sets out some fundamentals to assist in determining the type of licence that an average company would need and some potential alternatives. The bottom line when planning and budgeting for music in a project is to get the proper rights and permissions in place before pressing 'play'.

Shop Safe Act 2020: new tool for brand owners in fight against online counterfeits?
Venable LLP
  • Intellectual Property
  • USA
  • 06 July 2020

A bipartisan group of representatives in the US House of Representatives recently introduced the Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce Act to help stem the growing concern over counterfeit products being offered for sale on online third-party marketplace e-commerce platforms. Although e-commerce is a relatively new retail platform, it has been capturing larger percentages of sales in the US retail industry.

Updated trademark rules: electronic filing, applicant email and specimens
Venable LLP
  • Intellectual Property
  • USA
  • 30 March 2020

The US Patent and Trademark Office (USPTO) has enacted a series of rule changes that will have a significant impact on trademark filers. The widest-scale change is the requirement for electronic filing of all submissions to the USPTO. However, additional application and specimen requirements are likely to have a greater effect on applicants, as compared with prior practice.

Supreme Court prohibits USPTO from shifting attorneys' fees in certain district court proceedings
Venable LLP
  • Intellectual Property
  • USA
  • 20 January 2020

The Supreme Court has unanimously ruled that the US Patent and Trademark Office cannot shift the fees of its attorneys and paralegals to litigants in district court proceedings brought under Title 35, Section 145 of the US Code. Justice Sotomayor explained that, under the centuries-old presumption commonly known as the 'American rule', each litigant pays its own attorneys' fees "win or lose, unless a statute or contract provides otherwise".

Can Congress speed biosimilars to market by limiting patent litigations?
Venable LLP
  • Intellectual Property
  • USA
  • 11 November 2019

Thus far, biosimilar uptake has been low in the United States, with market shares for most biosimilars under 10%. Given the cost-saving potential, trying to increase biosimilar uptake has been high on Congress's agenda and there are many bills pending before it dealing with issues from a variety of angles. But will they actually help to bring biosimilars to market more quickly?

Most important patent cases of 2019 thus far
Venable LLP
  • Intellectual Property
  • USA
  • 09 September 2019

Thus far, 2019 has been an eventful year for US patent law. Over the past seven months, the Supreme Court and the Court of Appeals for the Federal Circuit (the US appellate court tasked with reviewing all district court patent decisions) have issued several significant rulings that may affect the rights of patent owners. This article reviews the most important of these rulings, including decisions on the application of the on-sale bar and state sovereign immunity.

Federal Circuit panel holds that state sovereign immunity does not apply to inter partes review
Venable LLP
  • Intellectual Property
  • USA
  • 08 July 2019

A Federal Circuit panel recently held that state sovereign immunity does not apply to inter partes review proceedings conducted before the Patent Trial and Appeal Board of the Patent and Trademark Office. The dispute had arisen after the University of Minnesota (UMN) sued LSI and Ericsson customers in a district court for the infringement of several UMN patents claiming 4G LTE telecoms technology.

Supreme Court holds federal agencies cannot petition for post-issuance review of patents under AIA
Venable LLP
  • Intellectual Property
  • USA
  • 01 July 2019

The Supreme Court recently ruled six-to-three that a federal agency cannot petition for the review of an issued patent under the America Invents Act. This decision prevents the government from challenging the validity of issued patents through inter partes, post-grant and covered business method reviews.

Biosimilars and the BPCIA: past, present and future
Venable LLP
  • Intellectual Property
  • USA
  • 22 April 2019

While the biosimilar market in the United States has gotten off to a relatively slow start compared with Europe – where biosimilars have been available since 2006 – it has recently gained momentum and will continue to grow in the coming years as more blockbuster biologics lose regulatory exclusivity and patent protection.

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