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Court Crier: Intellectual Property

In Photographic Illustrators Corporation v. Orgill, Inc., the United States Court of Appeals for the First Circuit addressed whether a sublicense to use copyrighted work may be granted without the use of express language. The court held that where a licensor grants to a licensee the unrestricted right to sublicense and permit others to use a copyrighted work, a sublicense may be implied by the conduct of the sublicensor and sublicensee. (March 13, 2020)

In Silvertop Associates. Inc. v. Kangaroo Manufacturing Inc., the United States Court of Appeals for the Third Circuit addressed whether a company could hold a copyright to a full-body banana costume that it manufactures and sells that is substantially similar to competitor’s product. The court held that the non-utilitarian, sculptural features of the banana costume are copyrightable and refused to find that a design based on natural objects in their natural condition is not copyrightable. Accordingly, the manufacturer’s copyright is valid and may enforce an injunction against competitors. (August 1, 2019)

In TD Bank, N.A. v. Hill, the United States Court of Appeals for the Third Circuit addressed a bank’s copyright infringement claim against its former CEO for publishing a manuscript he wrote while at the bank. The court held that a letter agreement, signed by the former CEO, stating that the manuscript was a work “for hire” and that the bank was the owner of the copyright for the manuscript, transferred any ownership interest the former bank CEO had in the manuscript to the bank(July 1, 2019)

In Heraeus Medical GMBH v. Esschem, Inc., the United States Court of Appeals for the Third Circuit addressed whether the three-year statute of limitations barred the plaintiffs’ claims under the Pennsylvania Uniform Trade Secrets Act. The court held Pennsylvania applies the rule of separate accrual to continuing trade secret appropriations, and therefore, only those misappropriations which had occurred more than three years before suit was filed were time-barred. (June 21, 2019)

In IANCU v. Brunetti, the United States Supreme Court addressed whether the Latham Act’s prohibition on the registration of trademarks that consist of “immoral or scandalous matter” barred an entrepreneur from obtaining a trademark on a clothing brand with a name that is, pronounced phonetically, a “well-known word of profanity.” The Court, invalidating the pertinent portions of the Act, held that the prohibition constituted an unconstitutional infringement on the First Amendment.(June 24, 2019)

In Return Mail, Inc. v. United States Postal Service, the United States Supreme Court addressed whether the United States Postal Service was considered a “person” under 35 U.S.C. 6(c) able to petition the Patent Trial and Appeal Board to institute patent review proceedings under the Leahy-Smith America Invents Act (AIA). The Court held that a federal government is not “person” capable of instituting AIA review proceedings. (June 10, 2019)

In Mission Product Holdings, Inc. v. Tempnology, LLC, the United States Supreme Court addressed whether a bankrupt trademark licensor’s rejection of a trademark license terminates the licensee’s right to use the licensed mark. The Court held that a debtor’s rejection of an executory contract under the Bankruptcy Code has the same effect as a breach of that contract outside bankruptcy, and that such an act cannot rescind rights that the contract previously granted. (May 20, 2019)

In Fourth Estate Public Benefit Corporation v., LLC, the United States Supreme Court considered whether a copyright action could be instituted before the intellectual property was registered with the Copyright Office. The Court held that a copyright owner could file an action in limited circumstances, pointing to scenarios where pre-distribution of work such as films or musical compositions would be damaging. (March 5, 2019)

In Rimini Street, Inc. v. Oracle USA, Inc., the United States Supreme Court held that the award of “full costs” following a copyright suit under the Copyright Act are limited to the costs enumerated in the statute. The Court refused to find that a court has discretion to award litigation expenses which are not enumerated in the Copyright Act. (March 5, 2019)

In Sköld v. Galderma Laboratories LP, the United States Court of Appeals for the Third Circuit addressed ownership of the trademark for a proprietary drug-delivery formulation. The court reviewed the relevant contracts and found that the agreements unambiguously provided for transfer of the mark to the company’s predecessor-in-interest and upon registration of the mark, that ownership became vested. (February 26, 2019)

In Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc., the United States Supreme Court held that a commercial sale to a third party who is required to keep an invention confidential may place the invention “on sale” under Leahy-Smith America Invents Act (AIA), 35 U. S. C. §102(a). (January 22, 2019)

In Downs Racing, LP v. Commonwealth of Pennsylvania, the Supreme Court of Pennsylvania considered whether a payment for a license to use intellectual property was subject to sales or use tax. The court held that, because the intellectual property license was a transaction separate and apart from the purchase of the software in question itself, it was not subject to sales or use tax. (October 25, 2018)

In WesternGeco LLC v. Ion Geophysical Corporation, the United States Supreme Court considered whether a patent owner can recover lost foreign profits when a competitor ships components of a patented invention from the United States to another country and sells an indistinguishable copy of the patented invention abroad. The Court held that the damages awarded to the patent owner were a permissible domestic application of the Patent Act because the conduct that led to the patent infringement occurred in the United States. (June 22, 2018)

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the United States Supreme Court held that inter partes reviews of patent claims do not violate Article III of the U.S. Constitution or the Seventh Amendment right to trial by jury. The Court recognized that inter partes reviews, much like the granting of a patent, fall within the public-rights doctrine. The Court made clear that the holding was narrow and must not be construed as suggesting that patents are not property under the Due Process or Takings Clauses. (April 24, 2018)

 In SAS Institute, Inc. v. IANCU, Director, USPTO, the United States Supreme Court held that the US Patent Office (USPTO) must decide the patentability of all challenged patent claims in an inter partes review. The Court recognized that the plain language of 35 U.S. § 318(a), which governs inter partes reviews, requires the court to address every challenged patent claim notwithstanding 37 CFR §42.108(a), which permits a partial review(April 24, 2018)

In Great Minds v. Fedex Office and Print Services., Inc., the United States Court of Appeals for the Second Circuit considered whether a third party can be held liable for copyright infringement when the license does not explicitly address whether licensees may engage third parties to provide commercial services that assist the licensees in furthering their own noncommercial uses. The court held because the copyright holder did not state in its license any limitation it might wish to impose precluding the licensee from engaging third parties, the third party could not be held liable for copyright infringement. (March 21, 2018)

In Ajemian v. Yahoo!, Inc., the Supreme Judicial Court of Massachusetts held that an email service provider was not prohibited from providing the representatives of a decedent’s estate access to the decedent’s email account by the Stored Communications Act (SCA), 18 U.S.C. §§ 2701 et seq. Rather, the court held that the Act permits disclosure where the personal representatives of the decedent have lawfully consented on the decedent’s behalf. (October 16, 2017)

In Mobstub, Inc. v., the New York Supreme Court, Appellate Division, 2d Department, addressed whether a business was entitled to preliminary injunctive relief to enjoin a website from using a certain trade name. The plaintiff business commenced an action for trademark infringement and argued that the website,, should be enjoined from using the trade name “Stay Trendy” in connection with their business. The court found that the equities tipped in favor of a preliminary injunction, where the business established a likelihood of success on the merits and that it would suffer irreparable harm unless the preliminary injunction was granted. (August 23, 2017)

In Parks LLC v. Tyson Foods, Inc., the United States Court of Appeals for the Third Circuit addressed whether a sausage company’s unregistered mark “Parks” was protectable against Tyson’s Ball Park brand, “Park’s Finest.” The court first addressed the sausage company’s false advertising claim, stating that this claim failed because it was essentially a false association claim in disguise. In adjudicating the false advertising claim, the court specifically held that the term “geographic origin” refers solely to a place of origin and not to a broader conception. The sausage manufacturer’s false association claim was properly dismissed since the "Park’s" mark was too weak to merit protection. (July 17, 2017)

In TC Heartland LLC v. Kraft Foods Group Brands LLC, the United States Supreme Court addressed whether venue under the patent venue statute, 28 U.S.C. § 1400(b), is proper only in the venue where a domestic corporation is incorporated or if venue is proper under the broader definition of residence contained in the general venue statute, 28 U.S.C. § 1391(c). The Court held that, with respect to domestic corporations, residence under the patent venue statute refers only to the state of incorporation. (May 22, 2017)

In In Re Lipitor Antitrust Litigation, the United States Court of Appeals for the Third Circuit addressed whether an appeal of a dismissed lawsuit alleging a pay-for-delay scheme between a pharmaceutical company holding the patent on the drug Lipitor and the manufacturer of a generic version of the drug properly belonged in the Court of Appeals for the Federal Circuit. The court determined that the appeal did not require transfer to the Federal Circuit as the end-payor plaintiffs’ allegations of fraudulent procurement and enforcement of the patents did not “arise under” federal patent law, 28 U.S.C. § 1295(a)(1), thus taking the appeal out of the exclusive jurisdiction of the Federal Circuit. (April 13, 2017)

In Star Athletica, LLC v. Varsity Brands Inc., the United States Supreme Court addressed when pictorial, graphic, or sculptural features of the design of a useful article are eligible for copyright protection. The court held that a feature incorporated into the design of a useful article is eligible for copyright protection if: (1) the feature can be perceived as a work of art separate from the article; and (2) would qualify as protectable expression if it were imagined separately from the useful article. (March 22, 2017)

In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, the United States Supreme Court considered whether the equitable doctrine of “laches” permits a court to reject a suit to enforce a patent when there is an unreasonable and prejudicial delay in bringing suit, even if the suit is brought within The Patent Act’s statute of limitations. The court held that laches cannot be invoked as a defense against a claim brought within the applicable statute of limitations. Instead, laches is a gap-filling doctrine, and where there is a statute of limitations, there is no gap to fill. (March 21, 2017)

In Life Technologies Corporation v. Promega Corporation, the United States Supreme Court addressed whether a party that supplies a single component of a multicomponent invention for manufacture abroad can be held liable for patent infringement under § 271(f)(1) of the Patent Act of 1952, which prohibits the supply from the United States of “all or a substantial portion” of the components of a patented invention for combination abroad. The Court held that a party that supplies a single component cannot be held liable because (1) the phrase “substantial portion” has a quantitative meaning, and (2) § 271(f)(1) does not cover the supply of a single component of a multicomponent invention. (February 22, 2017)

In Samsung v. Apple, the United States Supreme Court considered whether, under the damages provision of The Patent Act of 1952 (35 U.S.C. §289), the relevant “article of manufacture” must always be the end product sold to the consumer or whether it can also be a component of that product. The court held that in the case of a multicomponent product, the relevant article of manufacture for arriving at a damages award need not be the end product but may be only a component of that product. (December 6, 2016)

In Gravano v. Take-Two Interactive Software, Inc., the Supreme Court, Appellate Division, 1st Department, addressed whether an interactive software company violated individuals’ rights to privacy under New York Civil Rights Law Section 51 by misappropriating their likeness for use in a video game. The court held that the individuals’ causes of action “must fail because defendants did not use [plaintiffs’] name, portrait or picture.” The court noted that the software company never referred to the individuals by name or used their actual names in the video game, never used them as actors for the video game, and never used photographs of them. (September 1, 2016)

In Lyft, Inc. v. Pennsylvania Public Utility Commission, the Commonwealth Court of Pennsylvania examined the proprietary status of a mobile ride-sharing company’s trip data for the period before it obtained experimental authority to operate as a transportation network company. The Court determined that the trip data, which represented the number of trips provided in a span of time using the company’s mobile application, did not constitute proprietary or trade secret information and did not require protection from public disclosure. (August 31, 2016)

In Kirtsaeng v. Wiley, the United States Supreme Court considered factors courts are to consider in determining whether to award attorneys’ fees to the prevailing party in litigation under the Copyright Act. The Court held that attorney’s fees may be awarded even where the losing party’s position is “objectively reasonable.” The Court held that consideration must also be given to all other circumstances, including the parties’ conduct during litigation, deterring future infringement, and deterring overaggressive assertion of copyright claims. (June 16, 2016)

In Halo Electronics, Inc. v. Pulse Electronics, Inc., the United States Supreme Court held that the Federal Circuit’s Seagate test, a two-part test used to determine whether damages may be increased pursuant to Section 284 of the Patent Act, is not consistent with Section 284. (June 13, 2016)

In Samsung Electronics Co. v. Apple Inc., a writ of certiorari was granted by the United States Supreme Court. The issue is whether an award of a patent infringer’s profits should be limited to those profits attributable to a component, where a design patent is applied to only this one component of a product. (March 21, 2016)

In In Re: Dr. Lakshmi Arunachalam, the United States Court of Appeals for the Third Circuit addressed whether it had jurisdiction over the plaintiff’s petition for a writ of mandamus seeking an order requiring the disqualification of a district judge in a number of related patent infringement actions. The court held that its authority to issue writs of mandamus extends only to situations in which doing so would be “in aid of” its jurisdiction and since the United States Court of Appeals for the Federal Circuit has exclusive jurisdiction over appeals in patent infringement actions, the court held it did not have jurisdiction over plaintiff’s petition. (January 28, 2016)

In In Re Simon Shiao Tam, the United States Court of Appeals for the Federal Circuit addressed the constitutionality of a provision of the Lanham Act that empowers the United States Patent and Trademark Office (USPTO) to refuse to register any trademarks that are disparaging. This case arose from the USPTO’s refusal to register THE SLANTS, a name adopted by an Asian-American dance-rock band to “reclaim” and “take ownership” of Asian stereotypes. Under the intermediate scrutiny traditionally applied to government regulation of commercial speech, the court found that this government regulation amounted to “viewpoint discrimination.” In so doing, the court noted a lack of any legitimate governmental interests to justify the provision, which the court found operated to suppress free speech and was therefore unconstitutional. (December 22, 2015)

In JPMorgan Chase Funding Inc. v. Cohan, the New York Supreme Court, Appellate Division, 1st Department, addressed whether to issue a protective order on the ground that certain documents contain trade secrets. The court refused to grant a protective order because a bank’s subsidiary failed to show the extent to which the documents contain information known outside of the partnership, the value of the “information to both the partnership and its competitors, the manner in which the information was obtained and kept, and the ease or difficulty of obtaining the information from nonpublic funds or other investors.” (December 8, 2015)

In Authors Guild v. Google Inc., the U.S. Court of Appeals for the Second Circuit addressed whether the Google Books Project – which mass digitized millions of works without prior consent from rights holders – was a fair use. The court found that the Google Books Project was a fair use, relying heavily on the Project’s transformative search tool that operates to “provide otherwise unavailable information about the originals.” The court acknowledged that the Project did result in some market substitution that affected the authors’ licensing activity, but concluded that the Project’s “snippets” were not an “effectively competing substitute” and that most snippet uses are for research of factual information not protected by copyright. The court also rejected the argument that the use infringed the authors’ right to create derivative works under the Copyright Act, finding that the right to create derivative works does not include “an exclusive right to supply information.” (October 16, 2015)

In Lorenzana v. South American Restaurants Corp., the United States Court of Appeals for the First Circuit addressed whether the creator of a popular chicken sandwich could bring a claim against the franchisor of the restaurant chain for fraud in its procurement of a federal trademark for the sandwich. Such a claim, the court explained, will lie if (1) the registrant made a false representation to the U.S. Patent and Trademark Office (USPTO) regarding a material fact; (2) that the petitioner knew or should have known the representation was false; (3) that the petitioner intended to induce the USPTO to act or refrain from acting based upon such representation; (4) that the USPTO reasonably relied on the misrepresentation; and (5) that some damage was proximately caused by the USPTO's reliance on the false material fact. Here, the court found that the creator’s claim failed because he had not alleged that the franchisor had made any false statements. (August 21, 2015)

In Arrowpoint Capital Corporation v. Arrowpoint Asset Management, LLC, the United States Court of Appeals for the Third Circuit concluded that the trial court’s denial of a preliminary injunction in a trademark infringement case was based upon an improper interpretation of what kind of confusion is actionable under the Lanham Act. The court ruled that when interpreting what constitutes confusion, a broad interpretation should be used, and the analysis should not be limited to determining only if there was confusion among an actual customer. (July 16, 2015)

In Greene v. Ablon, the United States Court of Appeals for the First Circuit addressed whether a book published by co-authors, drawing heavily on an earlier book by only one of the authors, can be both a joint work and a derivative work for purposes of copyright protection, and whether the author of the earlier publication can sue the co-author of the later publication for presentations using slides of material that appeared in both works. The court concluded that the co-owner of a derivative work infringes on the other co-owner’s preexisting work when he uses it without permission, notwithstanding the use of that material in the joint work. (July 16, 2015)

In B&B Hardware, Inc. v. Hargis Industries, Inc., the United States Supreme Court addressed whether a decision of the Trademark Trial and Appeal Board (TTAB) regarding the likelihood of confusion of a proposed registered trademark may carry preclusive effect in a corresponding infringement suit. Because the same likelihood-of-confusion standard applies to both registration and infringement, the Court held that issue preclusion should apply to a TTAB decision on the likelihood of confusion. Further, the Court held that issue preclusion should generally apply to a TTAB decision if the ordinary elements of issue preclusion are met. (March 24, 2015)

In Teva Pharmaceuticals USA Inc. v. Sandoz Inc., the United States Supreme Court addressed what standard of review the Circuit Court must use when reviewing fact findings made by the trial court in the course of construing a patent claim, particularly whether the appellate court should apply a de novo standard or clear error standard.  Relying on Federal Rule of Civil Procedure 52(a)(6), which states that findings of fact must not be set aside unless “clearly erroneous,” the Court held that the Circuit Court must apply this standard when reviewing a district court’s resolution of factual matters made in the course of its construction of a patent claim. (January 20, 2015)

In Hana Financial v. Hana Bank,the United States Supreme Court addressed whether a judge or jury should determine whether tacking is available in a trademark infringement case.  The tacking doctrine allows trademark users to make modifications to their marks over time without losing priority, so long as the original and revised marks continue the same commercial impression, a.k.a. are “legal equivalents.”  The Court held that, because the tacking inquiry operates from the perspective of an ordinary purchaser/consumer, the jury should make this determination. (January 21, 2015)

In Fair Winds Sailing, Inc. v. Dempster, the United States Court of Appeals for the Third Circuit held that a sailing school failed to state a claim for relief under the Lanham Act,  for “trade dress” infringement as its complaint failed to allege any visual effect or “overall look” of its product.  The court also remanded the matter to the trial court for further proceedings to determine if “exceptional circumstances”  permitting an award of attorney fees to the prevailing party would be proper under the Lanham Act. (September 4, 2014)

In Ferring Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc., the United States Court of Appeals for the Third Circuit determined that a party bringing a claim under the Lanham Act (15 U.S.C. § 1051), which is the primary federal trademark statute in the United States, is not entitled to a presumption of irreparable harm when seeking a preliminary injunction and must demonstrate that irreparable harm is likely. (August 26, 2014)

In American Broadcasting Cos., Inc. v. Aereo, Inc., the United States Supreme Court considered whether Aereo, a service which captures over-the-air TV signals via antenna and rebroadcasts them to subscribers over the Internet, violates the copyrights of the shows when it does so.  The Court held that such activity is a copyright violation because doing so constitutes “transmitting a performance” to the “public,” even though the service makes an individual, buffered copy of the signal for each subscriber and uses each antenna for only one subscriber at a time, because Aereo ultimately transmits programs to multiple people even if at different times. (June 25, 2014)

In Limelight Networks, Inc. v. Akamai Technologies, Inc., the United States Supreme Court addressed whether a defendant may be liable for inducing infringement of a patent under 5 U.S.C. §271(b) when no one has directly infringed the patent under §271(a) or any other statutory provision. The Court held that a defendant cannot be held liable for inducing infringement under §271(b) when no one has directly infringed under §271(a) or any other statutory provisions. (June 2, 2014)

In Nautilus, Inc. v. Biosig Instruments, Inc., the United States Supreme Court addressed the proper reading and application of 35 U.S.C. §112, ¶2, which requires that a patent specification “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.” The Court held that a patent is invalid for indefiniteness if its claims, when read in light of the patent’s specifications and prosecution history, fails to inform, with reasonable certainty at the time of the patent application, those skilled in the art about the scope of the invention. (June 2, 2014)

In Petrella v. Metro-Goldwyn-Mayer Inc., the United States Supreme Court addressed whether the equitable defense of laches can be invoked to bar relief on a copyright infringement claim brought within the three year statute of limitations period pursuant to Section 507(b) of the Copyright Act.  The Court held that the doctrine of laches cannot be invoked as a bar to such a claim, but, in extraordinary circumstance, at the outset of litigation, the doctrine of laches, may limit the relief granted. (May 19, 2014)

In MPL Music Publishing, Inc. v. ABKCO Music & Records, Inc., the New York Supreme Court, Appellate Division, First Department, addressed whether the defendant was obligated to pay royalties to plaintiff for exploiting certain master recordings.  The court held that where a contract unambiguously states that royalties are to be paid for 78 rpm and 45 rpm single records, a “defendant is not obligated to pay royalties for exploitation of the master recordings in any other format.” (February 27, 2014)

In Lavigny Holdings Limited, v. Coller International Partners V-A, LP, the New York Supreme Court, Appellate Division, First Department, addressed whether the defendants breached certain agreements by selling patent portfolios to a third party. The court held that the unambiguous agreements were terminated and became null and void prior to that time, because the plaintiffs failed to pay the purchase price for defendants’ patent portfolios by a certain date. (January 9, 2014)

In Dorpan, S.L. v. Hotel Melia, Inc., the United States Court of Appeals for the First Circuit addressed a trademark infringement dispute between a hotel in Puerto Rico that had acquired common law rights to exclusive use by using the name “Hotel Melia” for a century and a hotel that had been using the name “Gran Melia” since 2007, but had registered the mark “Gran Melia.” The court determined that a reasonable factfinder could conclude that the two marks could not co-exist in Puerto Rico without creating an impermissible likelihood of confusion among consumers. (August 28, 2013)

In Federal Trade Commission v. Actavis, Inc., the United States Supreme Court addressed whether a “reverse payment” settlement agreement, where a branded drug manufacturer offers patent settlements that pay generic companies not to bring lower-cost alternatives to the market, unreasonably diminishes competition in violation of antitrust laws. The Court opined that the likelihood of a “reverse payment” bringing about anticompetitive effects depends upon “its size, its scale in relation to the payor’s anticipated future litigation costs, its independence from other services for which it might represent payment, and the lack of any other convincing justification.” Based upon these complexities, the Court held that the Federal Trade Commission must prove its case by applying a “rule-of-reason” approach. (June 17, 2013)

In Association for Molecular Pathology v. Myriad Genetics, the United States Supreme Court addressed whether the discovery and isolation of human genes can qualify for patent protection.  Under the Patent Act, patents may be issued for in¬ventions or discoveries of “any new and useful . . . composition of matter.”  Significantly, however, “laws of nature, natural phenomena, and abstract ideas” are ineligible for patent protection. The Court unanimously held that the discovery was a product of nature and, therefore, not patent eligible. The Court conversely ruled that synthetically created DNA (known as cDNA) is patentable since it is not naturally occurring. (June 13, 2013)

In Hart v. Electronic Arts, Inc., the United States Court of Appeals for the Third Circuit addressed whether a videogame manufacturer violated a former college football player’s intellectual property rights by appropriating his likeness and biographical information for its NCAA Football series of videogames.  Applying the transformative use test, the court held that the NCAA Football games did not sufficiently transform the college football player’s identity to escape the football player’s right of publicity. (May 21, 2013)

In Kirtsaeng v. Wiley, the United States Supreme Court addressed whether the importation and resale of books without the copyright owner’s permission constitutes an infringement on exclusive rights to distribute under 17 U.S.C. § 106(3).  Specifically, the Court addressed whether the words “lawfully made under this title” restrict the scope of § 109(a)’s “First Sale” doctrine geographically.  The Court noted that §109(a)’s language, its context, and the common-law history of the “First Sale” doctrine, taken together, favor a non-geographical interpretation.  The Court, thus, held that the “First Sale” doctrine applies to copies of copyrighted work lawfully made abroad. (March 19, 2013)

In Gunn v. Minton, the Supreme Court of the United States addressed whether state law legal malpractice claims for patent matters fall within the exclusive jurisdiction of the federal courts.  The Court held that 28 U.S.C. § 1338(a), which provides for exclusive federal jurisdiction over any case “arising under any Act of Congress relating to patents,” does not deprive the state courts of subject matter jurisdiction over a state law claim alleging legal malpractice in a patent case. (February 20, 2013)

In Latin American Music Co., Inc. v. Media Power Group, Inc., the United States Court of Appeals for the First Circuit addressed whether a purported copyright holder’s claim that a radio station was violating copyright by broadcasting certain songs without a license was properly dismissed because the purported copyright holder failed to show evidence of registration.  The court found that the certificates of recordation are not evidence of registration because recordation of an instrument relating to a work does not indicate that the work itself has been registered. (January 15, 2013)

In Already, LLC v. Nike, Inc., the United States Supreme Court addressed whether Nike’s covenant not to enforce its “Air Force 1” trademark against a competitor mooted the competitor’s action to have Nike’s trademark declared invalid. The court held that the covenant was sufficiently broad to prevent Nike from resuming any trademark enforcement action against the competitor. (January 9, 2013)

In Harney v. Sony Pictures Television, Inc., the United States Court of Appeals for the First Circuit addressed whether a still photograph used in a movie about a kidnapping infringed on the copyright of the photographer who took the original photograph that was used on an FBI wanted poster. Although Sony admittedly sought to evoke the original photograph, the court concluded that no copyright violation occurred because Sony’s image did not replicate the protected aspects of the original photograph. (January 7, 2013)

In Jenzabar, Inc. v. Long Bow Group, Inc., the Appeals Court of Massachusetts rejected a trademark infringement challenge to a website that could be reached by a Google search of the company’s name.  The court held that the Google search return was insufficient to demonstrate initial interest confusion under trademark law because there was no similarity between the parties’ goods. (October 18, 2012)

In Mayo Collaborative Services v. Prometheus Laboratories, Inc., the United States Supreme Court addressed whether patents that concern the use of thiopurine drugs to treat autoimmune diseases, including the stated processes within the patents for administering the drugs so as to make them effective, are invalid to the extent they claim natural laws or natural phenomena in violation of § 101 of the Patent Act. The Court held that the activity associated with the steps in the claimed processes of the patents are not sufficient to transform an otherwise unpatentable law of nature into a patent-eligible application of such law. (March 20, 2012)

In Golan v. Holder, the United States Supreme Court addressed whether a 1994 law enacted to provide equal copyright protection for foreign authors violated the First Amendment and the Copyright Clause. The Court held that works never protected under U.S copyright law could be withdrawn from the public domain and afforded copyright protection consistent with the copyright protections in the author’s home country. (January 18, 2012)

In Global-Tech Appliances, Inc. v. SEB, S.A., the Supreme Court of the United States addressed whether induced infringement under 35 U.S.C. §271(b) requires knowledge that the induced acts constitute patent infringement. The Court held that deliberate indifference to a known risk that a patent exists does not satisfy the knowledge requirement of §271(b), but found that evidence in the case was "plainly sufficient to support a finding of knowledge under the doctrine of willful blindness," a traditionally criminal concept. The Court explained, when "taken together," the fact that the infringing company copied all but the cosmetic features of a competitors deep fryer; copied an overseas model of the fryer aware that would not bear U.S. patent markings; and decided not to inform its attorney that the product was simply a knock-off, all demonstrated that it willfully blinded itself to the infringing nature of the competitors sales. (May 31, 2011)

The United States Supreme Court granted certiorari to address the following questions:

  1. Does the Progress Clause of the United States Constitution prohibit Congress from taking works out of the Public Domain?
  2. Does Section 514 of the Uruguay Round Agreements Act of 1994, which restored copyright protection in thousands of works that the Copyright Act had placed in the Public Domain, violate the First Amendment of the United States Constitution? (March 7, 2011) 

In Bd. of Trustees of Leland v. Roche Molecular Systems, the Supreme Court of the United States granted certiorari to consider the following issue: "Whether a federal contractor university's statutory right under the Bayh-Dole Act, 35 U.S.C. §§ 200-212, in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor's rights to a third party." (November 1, 2010)

In Sabinsa Corp. v. Creative Compounds, LLC, the United States Court of Appeals for the Third Circuit recently issued a decision addressing trademark infringement and unfair competition claims. Both the plaintiff and the defendant produced an ingredient used in weight management products. The plaintiff claimed that the defendant's mark or name for its product, "Forsthin," was "likely to create confusion in the marketplace" when compared to the plaintiff's own mark, "ForsLean." Overruling the District Court and remanding the case for a judgment in the plaintiff's favor, the Third Circuit applied the factors set forth in Interpace Corp. v. Lapp, Inc., and determined that a reasonable factfinder weighing the "Lapp factors" would hold that the plaintiff had demonstrated a likelihood of confusion. (July 9, 2010)

In Bilski et al. v. Kappos, the Supreme Court of the United States discussed the test to be applied when determining the patent eligibility of a "process" under the Patent Act, 35 U.S.C. § 101. The Court held that the process at issue, a procedure for instructing buyers and sellers how to protect against the risk of price fluctuations in a discrete section of the economy, was an abstract idea that could not be patented. In reaching its decision, the Court rejected the holding by the Court of Appeals for the Federal Circuit that the "machine-or-transformation" test was the exclusive test for determining the patent eligibility of a "process" under § 101. (June 28, 2010)

In Reed Elsevier, Inc. v. Muchnick, the Supreme Court of the United States issued a decision in a class-action suit addressing whether § 411(a) of the Copyright Act, 17 U.S.C.A. §411(a), deprives federal courts of subject-matter jurisdiction over copyright infringement claims involving unregistered copyrights. The Act generally requires copyright holders to register their works before suing for copyright infringement. The class at issue was made up, primarily, of freelance newspaper article authors, some of whom had registered their works, and some of whom had not. On appeal from the district court, the United States Court of Appeals for the Second Circuit concluded that the District Court lacked jurisdiction. The Supreme Court reversed, holding that a copyright holder’s failure to comply with § 411(a)'s registration requirement does not restrict a federal court’s subject-matter jurisdiction over infringement claims involving unregistered works. Under the controlling precedent, a statutory requirement is considered jurisdictional only if Congress clearly states that it is jurisdictional. Although § 411(a)'s last sentence contains the word “jurisdiction,” that sentence speaks to a court’s adjudicatory authority to determine a copyright claim’s registrability. It does not pertain to federal courts’ subject-matter jurisdiction over infringement claims concerning unregistered works. (March 3, 2009) 

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