Intellectual Property Archives

Oct 24, 2018

Border Protection for U.S. Intellectual Property

While the country is embroiled in heated political debate involving immigration and the appropriate means by which to protect U.S. borders, few if any disagree that many U.S. intellectual property owners are being swamped by infringing goods, counterfeits and knock-offs from other countries. Other than the U.S. district courts where infringement cases are often instituted, the combined powers of the U.S. International Trade Commission (“ITC”) and the U.S. Customs and Border Protection (“CBP”), a bureau of the Department of Homeland Security, can be powerful allies for intellectual property owners seeking to protect their intellectual property from infringing imports. The ITC… Read more

Oct 17, 2018

Service of Process on Evasive Defendants

Service of Process for Evasive Defendants

On September 15, 2018, the U.S. District Court for the Southern District of Florida granted an order authorizing service of process by electronic mail in a trademark infringement case where the plaintiff was unable to make personal service due to evasive conduct by the Defendants, according to SGR partner Bruce McDonald, representing the plaintiff. See Transamerica Corp. v. TransAmerica Multiservices Inc. et al., No. 1:18-cv-22483 (S.D.Fla.). While the federal courts have granted motions for “substituted service” in cases of fictitious and anonymous websites registered to individuals and entities ostensibly located overseas, this was the first known federal court decision authorizing electronic… Read more

Oct 30, 2018

Temporarily Grounded: American Airlines Seeks Court Intervention to Register Its Corporate Logo

American Airlines has sued the Acting Register of the U.S. Copyright Office seeking judicial review of the Copyright Office’s decision to reject American’s application to register its award-winning corporate logo, known as the Flight Symbol. Registration of the Flight Symbol has been in a holding pattern since 2016 when American’s first application to the U.S. Copyright Office was grounded for lack of creativity. While the Copyright Office acknowledges that only a “modicum of creativity is necessary”[i] to register a work under the Copyright Act, it ruled that the Flight Symbol fails to meet this minimal standard.[ii] American continued to challenge… Read more

Oct 10, 2018

HP Petitions Supreme Court on Patent Eligibility: An Issue of Law or Fact?

HP, Inc. has filed with the Supreme Court its long-awaited petition in the highly publicized HP v. Berkheimer patent case, seeking certiorari review on the issue of whether patent eligibility analysis under Alice/Mayo is an issue of law to be decided by the Court, or an issue of fact, as was held by the Federal Circuit in the case below. If the Federal Circuit’s opinion stands, then the question of patent eligibility will likely become more difficult (than under previous case law) to adjudicate on a motion to dismiss or even on a motion for summary judgment. In the underlying… Read more

Oct 3, 2018

Federal Circuit Reverses Apple’s $500 Million Patent Infringement Liability

Not all decisions from the Court of Appeals for the Federal Circuit make national news, but last week the appellate court threw out a half a billion dollar win for the patent licensing wing of the University of Wisconsin called WARF – Wisconsin Alumni Research Foundation. WARF’s patent covered how computer processors execute program instructions, in a way to speed up processing. While a Wisconsin jury found the patent to be valid and infringed by Apple, the Federal Circuit agreed on validity, but found the jury had no reasonable basis for its verdict that Apple infringed. Over the course of… Read more

Sep 25, 2018

Bruce McDonald Appointed to IP Court Advisory Council

Undeterred by tensions between the United States and Russia, SGR partner Bruce McDonald continues to attend meetings of the Advisory Council to the Intellectual Property Court of the Russian Federation, established in 2013, in his capacity as the only American and one of only four Westerners on the 67-member body. Mr. McDonald was appointed to the Intellectual Property Court Advisory Council after delivering a presentation at the Russian Supreme Commercial Court in April 2013, in Russian, comparing and contrasting the American experience involving the separation of powers in constitutional governance with the separation of judicial power in the Russian judicial… Read more

Sep 19, 2018

Trademark Enforcement Hampered by Disappearance of WHOIS Data

The biggest recent development involving ICANN results from the general data protection regulation known as GDPR and the regulation which became fully effective on May 25, 2018. Due to the regulation, ICANN decided to require domain name registries to remove public access to the contact names and details of domain name registrants. This action was implemented to protect the personal data and privacy of domain name registrants under the GDPR. The decision to limit data previously provided by the WHOIS service has had a severe negative impact on a number of interests. It has raised issues relating to security on… Read more

Sep 12, 2018

Is Fair Use Still Fair?

Photographers should always include copyright notice on their works to avoid copyright infringement

A recent decision from the Eastern District of Virginia took an expansive view on the fair use defense to copyright infringement that calls into question the scope of copyright protection for photographers. In Brammer v. Violent Hues Productions, LLC, a photographer sued a festival organizer for copyright infringement based on using the photographer’s time-lapse photo of a Washington, D.C. neighborhood in its website. The organizer claimed that it found the picture online and did not see any indication that someone claimed copyright in the picture and, therefore, believed that it was making use of a publically available photograph. The organizer… Read more

Sep 4, 2018

Intellectual Property Implications in Business Decisions

As a business owner, it is important to research any intellectual property concerns before proceeding with an idea, especially when it concerns the intellectual property rights of well-known companies in the entertainment industry. On August 29, 2018, the United States District Court for the Central District of California granted a preliminary injunction to Disney that barred Redbox from selling individual download codes that were initially included within combo packs. Disney sells combo packs which include a DVD and/or Blu-ray disc version of a movie as well as a piece of paper that has a download Code that can be redeemed… Read more

Aug 30, 2018

Ninth Circuit Holds Mere “Remastering” of Pre-1972 Sound Recording Does Not Entitle It to Federal Copyright Protection

Record on Record Player: Copyright Protection

On August 20, 2018, the Ninth Circuit Court of Appeals reversed a lower court’s ruling that digital remastering of pre-1972 sound recordings creates a new sound recording entitled to copyright protection.[1] In so holding, the Ninth Circuit rejected the Defendant radio broadcasters’ claims that, because the pre-1972 sound recordings had been remastered from analog sound recordings into digital formats, they were entitled to federal copyright protection. The Plaintiffs, a group of record companies that own sound recordings of classic artists such as The Everly Brothers and Al Green, filed a class action lawsuit against CBS Corporation and CBS Radio Inc.,… Read more