Closing trademark’s borders
No recovery for infringer’s purely foreign sales
This article reviews a case in which the court found no trademark infringement recovery for purely foreign sales. A short sidebar reviews the court’s findings about disgorging foreign-sale profits.
Hetronic Int’l, Inc. v. Hetronic Germany GmbH, Nos. 20-6057, 20-6100 (10th Cir. April 23, 2024).

Are AI systems patent-eligible?
This article summarizes a case regarding questions about the eligibility of artificial intelligence (AI) systems for patent protection and the court’s conclusion that the patents’ claims covered an abstract idea.
AI Visualize, Inc. v. Nuance Communications, Inc., No. 20-6057, 22-2019 (Fed. Cir. April 4, 2024).

Copyright’s fair use defense faces higher bar after Warhol
 This article reminds readers that if works don’t target the original work itself, the fair use defense may fail.
Whyte Monkee Productions, LLC v. Netflix, Inc., No. 22-6068 (10th Cir. March 27, 2024); Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023).

How unclean hands doomed patent infringement claims
 This article discusses how the legal doctrine of unclean hands can similarly sully legitimate infringement claims.
Luv N’ Care, Ltd. v. Laurain, Case No. 22-1905 (Fed. Cir. Apr. 12, 2024).

Small children can get their hands dirty in many ways. A patent case involving a dining mat for kids illustrates how the legal doctrine of unclean hands can similarly sully legitimate infringement claims. This article discusses how a party’s misconduct rose to the level of unconscionable acts.

Luv N’ Care, Ltd. v. Laurain, Case No. 22-1905 (Fed. Cir. Apr. 12, 2024).

The impact of the U.S. Supreme Court’s 2023 intellectual property rulings continue to roll out in the lower courts. The high court’s guidance regarding the application of the fair use defense to copyright infringement recently played a key role in a case involving Netflix’s popular “Tiger King” docuseries. This article reminds readers that if works don’t target the original work itself, the fair use defense may fail.

Whyte Monkee Productions, LLC v. Netflix, Inc., No. 22-6068 (10th Cir. March 27, 2024); Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023).

A ruling from the U.S. Court of Appeals for the Federal Circuit, which hears all patent-related appeals, raises questions about the eligibility of artificial intelligence (AI) systems for patent protection. The system in the case ran into trouble with the so-called Alice test (named for the case where it originated) for patent eligibility. This article summarizes the case and the court’s conclusion that the patents’ claims covered an abstract idea.

AI Visualize, Inc. v. Nuance Communications, Inc., No. 20-6057, 22-2019 (Fed. Cir. April 4, 2024).

One year after the U.S. Supreme Court limited the reach of the federal trademark law beyond American borders, the trademark owner in the underlying case has learned how the ruling will affect its claims. It probably isn’t too happy with the result. This article reviews a case in which the court found no trademark infringement recovery for purely foreign sales. A short sidebar reviews the court’s findings about disgorging foreign-sale profits.

Hetronic Int’l, Inc. v. Hetronic Germany GmbH, Nos. 20-6057, 20-6100 (10th Cir. April 23, 2024).

Steven M. Coyle and Michael J. Rye, Co-Chairs of Cantor Colburn's Litigation Practice,  introduce the new Non-Compete Clause Rule, outlining its ramifications alongside the specific notice requirements for existing non-compete clauses in workers’ employment agreements, in their article, "FTC bans most employee non-compete agreements," in the July/August issue of the Patent Lawyer Magazine.

Creativity doesn’t have to be fancy: “Run-of-the-mill” certificate qualifies for copyright protection
Premier Dealer Servs. Inc. v. Allegiance Admr’s LLC, No. 23-3394 (6th Cir. Feb. 26, 2024).
Ragan v. Berkshire Hathaway Automotive, Inc., No. 22-3355 (8th Cir. Feb. 2, 2024).

Filing delay costs trademark holder infringement damages
Rolex Watch USA, Inc. v. BeckerTime, LLC, No. 22-10866 (5th Cir. March 21, 2024).

When (and whether) contradictory claim language invalidates a patent
Maxell, Ltd. v. Amperex Technology Ltd., No. 23-1194 (Fed. Cir. March 6, 2024).

Do operating manuals qualify as “printed publications” under patent law?
Weber, Inc. v. Provisur Techs., Inc., Nos. 22-1751, -1813 (Fed. Cir. Feb. 8, 2024).

Copyright protection applies only to original works — but you might be surprised at just how low the bar for originality is under federal copyright law. This article reviews a case involving an auto dealer’s loyalty certificate in which the court found that even “the dull and workaday” can qualify for protection. A short sidebar covers a different case involving an auto dealer’s customer intake form in which the court concluded that the form lacked the necessary originality.
Premier Dealer Servs. Inc. v. Allegiance Admr’s LLC, No. 23-3394 (6th Cir. Feb. 26, 2024).
Ragan v. Berkshire Hathaway Automotive, Inc., No. 22-3355 (8th Cir. Feb. 2, 2024).

A federal appellate court recently upheld a lower court’s finding of trademark infringement. So far, so good for the trademark holder. But that wasn’t the end of the story. The court also ruled that the holder’s delay in pursuing its infringement claim barred it from recovering disgorgement damages. This article summarizes the consequences of a plaintiff dragging its feet when it came to asserting its trademark.
Rolex Watch USA, Inc. v. BeckerTime, LLC, No. 22-10866 (5th Cir. March 21, 2024).

“Indefinite” patent language can invalidate a patent, leaving it unenforceable and creating a cascade of negative consequences for a company or individual relying on its protections. The U.S. Court of Appeals for the Federal Circuit, the court that hears all patent-related appeals, has shed some light on how contradictory language can affect the indefiniteness analysis. This article reminds practitioners that contradictory claim language can invalidate a patent, so careful crafting is essential.

Maxell, Ltd. v. Amperex Technology Ltd., No. 23-1194 (Fed. Cir. March 6, 2024).

It’s well established that existing patents can render an invention unpatentable for obviousness. But patents aren’t the only kind of “prior art” that can undermine patentability. This article discusses how other printed publications — including operating manuals prepared for customers — also might invalidate an invention’s patent.
Weber, Inc. v. Provisur Techs., Inc., Nos. 22-1751, -1813 (Fed. Cir. Feb. 8, 2024).

Michelle Ciotola and David Kincaid co-authored the article, "Exploring the impact of artificial intelligence (AI) in everyday trademark practice before the USPTO," in Issue 3, 2024 of The Trademark Lawyer Magazine.

Parody shoe can’t outrun trademark infringement claim
The U.S. Court of Appeals for the Second Circuit has won the race to be the first appellate court to apply the U.S. Supreme Court’s recent ruling in Jack Daniel’s Properties, Inc. v. VIP Products LLC regarding the use of trademarks in expressive works. The case involved a highly popular “skater” (skateboard enthusiast) shoe made by globally known footwear and apparel manufacturer Vans. This article summarizes the appellate court’s decision and how it may provide a helpful indication of how the Supreme Court’s ruling will play out. A brief sidebar looks at how courts review parodic intent’s effect on the likelihood of confusion.
Vans, Inc. v. MSCHF Product Studio, Inc., No. 22-1006 (2d Cir. Dec. 5, 2023); Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S. June 8, 2023).

Is there a substitute for the human touch? AI-generated work isn’t copyrightable
Artificial intelligence (AI) seems to be everywhere these days. One place it keeps popping up is in applications submitted to the U.S. Copyright Office — where the applications have been uniformly rejected because copyrightable works require “human authorship.” This article highlights a recent submission that provides a good illustration of the difficulties presented by works created with the help of AI when it comes to obtaining copyright protections.
Second Request for Reconsideration for Refusal to Register SURYAST (Copyright Review Board, Dec. 11, 2023).

When the doctrine of equivalents results in patent infringement
As an alternative route to establishing patent infringement liability, the doctrine of equivalents comes with some strict requirements. One patentee’s failure to meet those requirements ended up costing it a hefty jury award on appeal. This article explains the doctrine of equivalents and how it affected one patentee’s claim of infringement.
VLSI Technology LLC v. Intel Corporation, No. 22-1906 (Fed. Cir. Dec. 4, 2023).

Patentee’s claim term definition comes back to haunt it
Federal patent law allows a patentee to devise its own definition for a claim term — or act as its own “lexicographer” — rather than settling for the “plain and ordinary” meaning. At first glance, this may seem like an advantage for patent holders. As this article notes though, sometimes a patentee can become a lexicographer inadvertently, with disastrous consequences.
ParkerVision, Inc. v. Vidal, No. 22-1548 (Fed. Cir. Dec. 15, 2023).

Artificial intelligence (AI) seems to be everywhere these days. One place it keeps popping up is in applications submitted to the U.S. Copyright Office — where the applications have been uniformly rejected because copyrightable works require “human authorship.” This article highlights a recent submission that provides a good illustration of the difficulties presented by works created with the help of AI when it comes to obtaining copyright protections.

Second Request for Reconsideration for Refusal to Register SURYAST (Copyright Review Board, Dec. 11, 2023).

Federal patent law allows a patentee to devise its own definition for a claim term — or act as its own “lexicographer” — rather than settling for the “plain and ordinary” meaning. At first glance, this may seem like an advantage for patent holders. As this article notes though, sometimes a patentee can become a lexicographer inadvertently, with disastrous consequences.

ParkerVision, Inc. v. Vidal, No. 22-1548 (Fed. Cir. Dec. 15, 2023).

The U.S. Court of Appeals for the Second Circuit has won the race to be the first appellate court to apply the U.S. Supreme Court’s recent ruling in Jack Daniel’s Properties, Inc. v. VIP Products LLC regarding the use of trademarks in expressive works. The case involved a highly popular “skater” (skateboard enthusiast) shoe made by globally known footwear and apparel manufacturer Vans. This article summarizes the appellate court’s decision and how it may provide a helpful indication of how the Supreme Court’s ruling will play out. A brief sidebar looks at how courts review parodic intent’s effect on the likelihood of confusion.

Vans, Inc. v. MSCHF Product Studio, Inc., No. 22-1006 (2d Cir. Dec. 5, 2023); Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S. June 8, 2023).

As an alternative route to establishing patent infringement liability, the doctrine of equivalents comes with some strict requirements. One patentee’s failure to meet those requirements ended up costing it a hefty jury award on appeal. This article explains the doctrine of equivalents and how it affected one patentee’s claim of infringement.

VLSI Technology LLC v. Intel Corporation, No. 22-1906 (Fed. Cir. Dec. 4, 2023).

Nancy Kennedy and Farzad Panjshiri detail the requirements for goods and services alongside the rules for submitting specimens at the USPTO to protect trademarks and service marks in the article, Specimen requirements of the USPTO in the Trademark Lawyer Magazine Issue 2, 2024.

Reverse confusion claim over trademark logo doesn’t make the cut
A party in a trademark infringement case can seek a preliminary injunction to block the opposing party’s use of a mark during litigation. The outcome can provide a window into whether the party should expect to prevail at trial. This article looks at a recent case in which a trademark owner asserting a reverse confusion theory of infringement received a discouraging result. 
Grubhub Inc. v. Relish Labs LLC, No. 22-1950 (7th Cir. Sept. 12, 2023).

Loud and clear: Court shoots down “continuation” strategy for expanding patents
This article covers how a recent patent infringement ruling questions a common strategy used to obtain protection for new claims using an existing patent, and in turn provides accused infringers a potential avenue to invalidate the patents in question, and may upend the practice of targeted continuations.
Sonos, Inc. v. Google LLC, No. 20-06754 (N.D. Cal. Oct. 6, 2023).

Are law firm emails protected in patent litigation?
This article reviews a case in which the plaintiff in an Ohio patent infringement case had an email with material it deemed confidential made public, potentially providing a roadmap to competitors on how to avoid infringing its patents.
Woodstream Corp. v. Nature’s Way Bird Products, LLC, No. 23-00294 (N.D. Ohio Sept. 20, 2023).

What to know about contributory copyright infringement
This article reviews a recent case from the U.S. Court of Appeals for the Tenth Circuit in which the court provided some welcome clarity for a frequent point of confusion: the types of behavior that support a contributory copyright infringement claim.
Greer v. Moon, No. 21-4128 (10th Cir. Oct. 16, 2023).

Intraoffice emails can come back to haunt law firms if they end up in court — and not just in the case the emails are a part of. This article reviews a case in which the plaintiff in an Ohio patent infringement case had an email with material it deemed confidential made public, potentially providing a roadmap to competitors on how to avoid infringing its patents.

Woodstream Corp. v. Nature’s Way Bird Products, LLC, No. 23-00294 (N.D. Ohio Sept. 20, 2023)

A recent patent infringement ruling did more than just reverse a hefty damages award against Google. It also questions a common strategy used to obtain protection for new claims using an existing patent, and in turn provides accused infringers a potential avenue to invalidate the patents in question. This article covers how this case may upend the practice of targeted continuations.

Sonos, Inc. v. Google LLC, No. 20-06754 (N.D. Cal. Oct. 6, 2023)

The U.S. Judicial Briefing, "Inventor interviews – do a great job on these and make patent law easy," by Cantor Colburn partner Howard Levy, appears in The Patent Lawyer Magazine March/April 2024 Issue. Howard discusses how patent attorneys can approach inventor interviews to ensure that they are as successful as possible.

A party in a trademark infringement case can seek a preliminary injunction to block the opposing party’s use of a mark during litigation. The outcome can provide a window into whether the party should expect to prevail at trial. This article looks at a recent case in which a trademark owner asserting a reverse confusion theory of infringement received a discouraging result. A short sidebar discusses why the defendant also was unlikely to succeed in establishing a likelihood of “forward confusion” caused by the junior trademark owner’s mark.

Grubhub Inc. v. Relish Labs LLC, No. 22-1950 (7th Cir. Sept. 12, 2023).

Contributory copyright infringement — when a defendant causes or significantly contributes to another’s infringing activities and knows of the infringement — is often misunderstood. This article reviews a recent case from the U.S. Court of Appeals for the Tenth Circuit in which the court provided some welcome clarity for a frequent point of confusion: the types of behavior that support a contributory copyright infringement claim.

Greer v. Moon, No. 21-4128 (10th Cir. Oct. 16, 2023).

Families of patents could face more double-patenting challenges
This article reviews a decision that recently resolved a long-standing question about the interplay between obviousness-type double patenting (ODP) challenges and patent term adjustments (PTAs) granted by the USPTO because of delays in patent processing. A brief sidebar highlights the court’s dismissal of the patentee’s equitable arguments against an ODP rejection.
In re Cellect, LLC, No. 22-1293 (Fed. Cir. Aug. 28, 2023).

Does derivative work copyright registration cover unregistered original works?
Copyright registration is a prerequisite for bringing an infringement action. But do litigants have recourse for an unregistered work if they registered a derivative work? This article discusses this issue in a case of first impression before the U.S. Court of Appeals for the Ninth Circuit.
Enterprise Management Limited, Inc. v. Construx Software Builders Inc., No. 22-35345 (9th Cir. July 17, 2023).

Ups and downs: Words matter in trademark licensing agreement
A garage door company probably thought its settlement with a competitor over alleged trademark violations left it free from additional lawsuits regarding its use of the competitor’s marks. This article summarizes why a court ruled otherwise, instead holding that a trademark licensee could sue the company even though its licensing agreement didn’t expressly authorize it to do so.
D.H. Pace Company, Inc. v. OGD Equipment Co., LLC, No. 22-10985 (11th Cir. Aug. 22, 2023).

Mandatory deposit of copyright works is unconstitutional
This article summarizes the court’s finding that requiring physical copies of works is “classic taking,” while copyright owners receive no additional benefit (compensation) from forfeiting works.
Valancourt Books, LLC v. Merrick B. Garland and Shira Perlmutter, No. 21-5203 (D.C. Cir. Aug. 29, 2023).

Can a patentee extend a patent term for the same invention by claiming a second patent for claims that aren’t “patentably distinct”? This is known as obviousness-type double patenting (ODP). The U.S. Court of Appeals for the Federal Circuit recently resolved a long-standing question about the interplay between ODP challenges and patent term adjustments (PTAs) granted by the U.S. Patent and Trademark Office (USPTO) because of delays in patent processing.
In re Cellect, LLC, No. 22-1293 (Fed. Cir. Aug. 28, 2023).

Copyright registration is a prerequisite for bringing an infringement action. But do you have recourse for an unregistered work if you registered a derivative work? According to a ruling in a case of first impression before the U.S. Court of Appeals for the Ninth Circuit, you might.
Enterprise Management Limited, Inc. v. Construx Software Builders Inc., No. 22-35345 (9th Cir. July 17, 2023).

A garage door company probably thought its settlement with a competitor over alleged trademark violations left it free from additional lawsuits regarding its use of the competitor’s marks. A court ruled otherwise, instead holding that a trademark licensee could sue the company even though its licensing agreement didn’t expressly authorize it to do so.
D.H. Pace Company, Inc. v. OGD Equipment Co., LLC, No. 22-10985 (11th Cir. Aug. 22, 2023).

To the frustration and annoyance of many, the Copyright Act requires the owner of a copyright in a work to deposit two copies of the work with the U.S. Library of Congress within three months of its publication. Those parties should be encouraged by how the U.S. Court of Appeals for the District of Columbia ruled when it was recently asked for the first time to address the requirement’s constitutionality.
Valancourt Books, LLC v. Merrick B. Garland and Shira Perlmutter, No. 21-5203 (D.C. Cir. Aug. 29, 2023).

The U.S. Judicial Briefing, "Working examples in patent applications: how much detail to include?" by Asaf Batelman, appears in The Patent Lawyer Magazine 2023 Annual Issue.

Court schools trademark holder: Nearly identical trademark doesn’t infringe 
This article looks at a decision from the U.S. Court of Appeals for the Tenth Circuit that upheld a lower court’s noninfringement judgment in a dispute involving two almost identical education-related marks. 
M Welles & Assocs., Inc. v. Edwell, Inc., No. 22-1248 (10th Cir. May 31, 2023).

Court rejects overly broad reissue patent application
This article summarizes a patentee’s attempt to broaden its patent through a patent reissue application.
In re: Float’N’Grill LLC, No. 22-1438 (Fed. Cir. July 12, 2023).

Paying damages under both copyright and trademark laws
This article covers the reasons the court found to assess infringement damages based on both trademark and copyright laws regarding furntuiure makers' products.
Jason Scott Collection, Inc. v. Trendily Furniture, LLC, No. 21-16978 (9th Cir. May 30, 2023).

Does commercial success affect an invention’s obviousness?
This article reviews a recent ruling by the U.S. Court of Appeals for the Federal Circuit that illustrates the role of secondary considerations - prior art cited as evidence of obviousness.
Yita LLC v. MacNeil IP LLC, No. 22-1373 (Fed. Cir. June 6, 2023).

Judicial findings regarding trademark infringement tend to turn largely on the similarity — or dissimilarity — of the two marks at issue. But significant similarity is no guarantee that a trademark holder will prevail in court. This article looks at a decision from the U.S. Court of Appeals for the Tenth Circuit that upheld a lower court’s noninfringement judgment in a dispute involving two almost identical education-related marks. A short sidebar covers why the court rejected a proposed presumption of confusion.
M Welles & Assocs., Inc. v. Edwell, Inc., No. 22-1248 (10th Cir. May 31, 2023).

Regrets — we’ve all had a few. A patentee, for example, might regret not obtaining broader patent protection. A reissue patent could come to the rescue, but only if certain requirements are met. One patentee recently learned this lesson the hard way. This article summarizes the patentee’s attempt to broaden its patent through a patent reissue application.
In re: Float’N’Grill LLC, No. 22-1438 (Fed. Cir. July 12, 2023).

Two furniture makers landed in court after one copied the other’s designs. To the chagrin of the infringer, the copying provided the basis, not only for copyright infringement damages, but also for trade dress infringement damages that were six times as much. This article covers the reasons the court found to assess infringement damages based on both trademark and copyright laws.
Jason Scott Collection, Inc. v. Trendily Furniture, LLC, No. 21-16978 (9th Cir. May 30, 2023).

Federal patent law prohibits the patenting of inventions that are obvious. While prior art such as earlier patents are often cited as evidence of obviousness, so-called “secondary-consideration” evidence can sometimes support a finding of nonobviousness even in the face of prior art — but not always. This article reviews a recent ruling by the U.S. Court of Appeals for the Federal Circuit that illustrates the role of secondary considerations.
Yita LLC v. MacNeil IP LLC, No. 22-1373 (Fed. Cir. June 6, 2023).