Jun 24, 2021

U.S. v. Arthrex Case Creates a New Path to Challenge IPR Decisions

As a result of yesterday’s Supreme Court’s decision in U.S. v. Arthrex, any party dissatisfied with the result of an Inter Partes Review (IPR) can now seek review by the Director of the Patent and Trademark Office (PTO). Previously, and as codified by the America Invents Act (AIA), IPR decisions were appealed directly to the U.S. Court of Appeals for the Federal Circuit, with no possible review at the PTO.  Yet to be determined will be the details of how this extra appeal step is to be implemented.   And will, for example, the Director really have time, resources and responsibility for reviewing… Read more


May 26, 2021

Supreme Court Reverses D.C. Circuit on Superfund Cost Recovery Statute of Limitations

The Supreme Court has reversed a DC Circuit decision which held that the territory of Guam was time-barred from pursuing a cost recovery action under CERCLA against the U.S. Government to pay its fair share for the clean-up of the Ordot dump.  Guam and the U.S. signed a Consent Decree under the Clean Water Act in 2004 requiring the territory to remediate the former Navy-owned Ordot dump from leaking into adjacent rivers.  Guam later filed a claim under the Federal Superfund law to recoup some of the clean-up cost.  The D.C. Circuit held that the claim was time-barred by CERCLA’s… Read more


Mar 30, 2021

United States Supreme Court Unanimously Rejects a Causal Link Requirement in Specific Jurisdiction Inquiry

Ford Litigation

A unanimous U.S. Supreme Court held in Ford Motor Co. v. Montana Eighth Judicial District Court that the connection between Ford’s activities in a forum state and products liability claims was “close enough” to support specific jurisdiction. The 8-0 decision (Justice Barrett not participating) rejected Ford’s arguments that the state courts lacked jurisdiction because Ford had not designed, manufactured, or sold the particular vehicles involved in the car accidents. The Montana Eighth Judicial District Court case was consolidated with Ford Motor Co. v. Bandemer. Montana Eighth Judicial District Court case involved a Ford Explorer that had originally been purchased in Washington that through subsequent repurchases… Read more


Apr 27, 2020

Supreme Court Holds that Annotations Written by Legislative Body are not Copyrightable

copyright shield on a blue background

On April 27, 2020, the Supreme Court held in a 5-4 split decision that explanatory legal materials created by a legislative body cannot be protected by copyright.   The background facts of this case are discussed in the January 29, 2020 article Can the State of Georgia Own a Copyright in its Official Code? by Elizabeth Borland. In Georgia v. Public.Resource,Org, Inc., Case No. 18-1150 (April 27, 2020), Chief Justice Roberts delivered the opinion for the Court and was joined by Justices Kagan, Sotomayor, Gorsuch and Kavanaugh to form an unusual majority.  The Court first determined that the case was controlled… Read more


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


Jan 29, 2020

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

IP-Blog-Can-GA-Own-Copyright-

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


Oct 17, 2019

Do “Expenses” Include the PTO’s Attorney’s Fees in a New Civil Action Filed to Challenge the PTO’s REfusal of an Application

Judge Gavel with Money

On October 7, 2019, the Supreme Court heard oral arguments in Peter v. Nantkwest, Inc., Case No. 18-801.  This case addresses the question of whether an applicant must pay the attorney’s fees incurred by the Patent and Trademark Office (“PTO”) in defending against a civil action to challenge the PTO’s refusal of an application to register a patent or trademark – whether the applicant prevails in the action or not.  The Fourth Circuit and the Federal Circuit decided this issue differently, thus creating a Circuit split that the Supreme Court needed to resolve. When an application for a trademark or… Read more


May 30, 2019

Supreme Court Rules that Bankruptcy Does Not Revoke a Trademark License

Bankruptcy Court

On May 20, 2019, in deciding Mission Product Holdings, Inc. v. Tempnology, LLC, No. 17-1657, the U.S. Supreme Court settled a circuit split regarding an unresolved legal issue in trademark licensing, determining whether a licensee can continue to use a licensed mark once the licensor files for bankruptcy. Tempnology, LLC (“Tempnology”) manufactured clothing and accessories designed to stay cool during physical activity and marketed these products under the trademark “Coolcore.” In 2012, Tempnology entered into a license agreement with Mission Product Holdings, Inc. (“Mission”), granting Mission an exclusive license to distribute certain Coolcore products in the United States and a… Read more


Mar 8, 2019

And on the Third Day…

land disputes

Dry land has been around—well, according to the Bible,  since the third day of the Creation.  So it is not surprising that land disputes relating to ownership of real property often have their “Genesis”  in facts, circumstances, and documents with an ancient pedigree.  A recent case, in which the Town of Southampton and the Freeholder Trustees sued for a judgment declaring them to be the sole owners of real estate on the shore of Moriches Bay, Suffolk County, reached and searched back to a decree promulgated in 1686 and a statute enacted in 1818. The case arose out of a… Read more


Jan 18, 2019

Nuisance on Central Park West

Smoking violated condominium by-laws

A Central Park West condominium sued the owner of a first-floor unit and her son for breach of contract and nuisance. The Board wanted to enjoin them from smoking marijuana and making excessive noise in their unit. At the outset, the Supreme Court issued a preliminary injunction that prohibited defendants from smoking marijuana and permitting marijuana smoke and excessively loud noises from infiltrating into the common areas and other units of the condominium. And several months later the Court addressed the application for a permanent injunction. The by-laws prohibited nuisance within the condominium property, as well as improper, offensive, or unlawful… Read more