Apr 23, 2020

Supreme Court Overturns Second Circuit Precedent, Holds Willful Infringement Unnecessary for Award of Profits in Trademark Infringement Case

Supreme Court and Lady Justice

April 23, 2020, Washington, D.C.  The Supreme Court today held that a plaintiff need not prove that a defendant acted “willfully” in order to recover profits as an equitable remedy for trademark infringement under Section 35(a) of the Federal Trademark Act of 1946, as amended (the “Lanham Act”), 15 U.S.C. § 1117(a).  Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233, — S.Ct. —-, 2020 WL 1942012 (April 23, 2020). The plaintiff, a designer of fasteners used in handbags, brought an action against a handbag manufacturer alleging infringement of its “ROMAG” trademark.  A jury found the manufacturer liable for patent and… Read more

Apr 23, 2020

Musicians’ Class Actions Play On

Gavel with Headphones

In the midst of this global pandemic—as many musicians (like so many others) are struggling to make ends meet—courts in New York have continued to issue important decisions that impact musicians’ livelihoods.  Within the last month, the Southern District of New York permitted two separate class actions against Sony Music Entertainment, Inc. (“Sony”) and Universal Music Group (“UMG”), respectively, to proceed.  The class actions, styled Johansen v. Sony Music Entertainment, Inc. and Waite v. UMG Recordings, Inc. were brought by musicians and songwriters David Johansen, John Lyon (a.k.a Southside Johnny), Paul Colins (from Paul Collins’ Beat), John Waite, Joe Ely,… Read more

Apr 1, 2020

Update on USPTO and U.S. Copyright Office Extensions and Adjustments

photo of Intellectual Property Blocks

On March 27, 2020, President Trump signed the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), which provides, in part, the United States Patent and Trademark Office (USPTO) with the authority during the current emergency to “toll, waive, adjust, or modify any timing deadline established,” in the Patent Act, Trademark Act, and the Copyright Act, including regulations implementing timing deadlines. Before taking such action, the USPTO must determine that the COVID-19 emergency “(1) materially affects the functioning of the patent and trademark office; (2) prejudices the rights of applicants, registrants, patent owners, or others appearing before the office; or… Read more

Mar 25, 2020

Impact of COVID-19 on Intellectual Property

COVID 19 on keyboard

The reach of COVID-19 has been felt across all facets of life. Travel bans have been enacted. Primary schools have canceled classes, and colleges have turned to full time online education. Supplies of toilet paper and hand sanitizer are scarce. The world of intellectual property has not been spared either, but COVID-19 has not brought it to a halt. IP right enforcement means have been impacted. Trademarks, trade secrets, patents, and copyrights fall under the jurisdiction of the U.S. federal court system, the latter two exclusively. Many federal district courts have issued orders greatly reducing physical access. For example, the… Read more

Mar 19, 2020

Federal Circuit Provides Clarity on the Question of Whether Computer Equipment Can Serve as a Basis for Venue in Patent Infringement Actions

intellectual property law

Last year, we published an article concerning whether the presence of computer servers satisfies the “regular and established place of business” requirement for establishing proper venue in patent cases Establishing Proper Venue in Patent Cases.  In that article, we discussed the Federal Circuit’s refusal to grant a writ of mandamus filed by Google in patent litigation initiated by SEVEN Networks, LLC in U.S. District Court for the Eastern District of Texas.  In that litigation, Judge Rodney Gilstrap denied a motion by Google to transfer venue, finding that Google’s provision of Google Global Cache (GGC) servers that were owned by Google but… Read more

Mar 12, 2020

Can’t Touch This: Visual Artists’ “Moral Rights” and Real Estate Implications

Photo of Artist painting on wall

On Thursday, February 20, 2020, the United States Court of Appeals for the Second Circuit released a long-awaited final ruling on an issue of first impression regarding interpretation of the Visual Rights Act of 1990 (“VARA”). VARA provides unique federal protection granting artists of eligible visual artworks, regardless of whether the artist is the copyright owner, certain moral rights in their visual works. The rights include the ability to prevent any “intentional distortion, mutilation, or other modification” of their work that would be prejudicial to the artist’s “honor or reputation,” and to prevent any destruction of a work of “recognized… Read more

Mar 4, 2020

The Strictly Limited Scope of Inter Partes Review

Patent Law

Last month, the United States Court of Appeals for the Federal Circuit (CAFC) issued an opinion in the case of Samsung Electronics America, Inc. v Prisua Engineering Corp., case number 2019-1169, again holding that the authority of the Patent Trial and Appeal Board (Board) to institute an inter partes review (IPR) is statutorily limited only to grounds of anticipation and obviousness, under 35 U.S.C. §§ 102 and 103; though further clarifying that the Board also may not expand the scope of a properly instituted IPR to address other patentability requirements beyond the statutorily authorized grounds. The Leahy-Smith America Invents Act… Read more

Feb 12, 2020

Patagonia Sues Apparel Company Over Pro-Oil and Gas Industry “Petrogonia” Line


Patagonia Inc., an outdoor apparel company known for its commitment to conservation efforts, filed suit on Monday against a Colorado-based retailer for trademark and copyright infringement claims over its pro-oil and gas industry “Petrogonia” apparel. Patagonia alleges that OC Media LLC is selling apparel with a logo that closely mimics Patagonia’s mountain silhouette logo.  OC Media has replaced the mountain silhouette imagery with oil field imagery: specifically, machinery associated with oil wells.  The word “Petrogonia” also appears on the clothing in a font nearly identical to Patagonia’s word trademark. According to the complaint, which was filed in California federal court,… Read more

Jan 29, 2020

Can the State of Georgia Own a Copyright in its Official Code?


The Official Code of Georgia Annotated (the “OCGA”) is made up of not only the statutory laws, but also various annotations, including history lines, repeal lines, commentaries, case notations, law review article excerpts, Attorney General opinion summaries, editor’s notes, and other references (the “Annotations”).  The State of Georgia (the “State”) contends that it owns the copyright in the Annotations, while a non-profit entity contends that because the Annotations are part of the Official Georgia code, the Annotations cannot be the subject of a valid copyright and are in the public domain.  The Supreme Court will decide this issue later this… Read more

Nov 7, 2019

Six SGR Intellectual Property Attorneys Appointed to INTA Committees for the 2020-2021 Term


Smith, Gambrell & Russell is proud to announce attorneys appointed to INTA Committees for the 2020–2021 term. The International Trademark Association appoints committee volunteers to carry out trademark-related initiatives and programs. Committee members fulfill their responsibilities by promptly and thoughtfully completing their committee’s mission statement. Smith, Gambrell & Russell’s appointments follow: Jim Bikoff was selected to be a member of the Data Protection Committee. The INTA Data Protection Committee develops and advocates the Association’s policy regarding the impact of data protection law on trademark rights. The committee monitors data protection cases, legislation and regulation in various jurisdictions, completes analyses and proposes… Read more