Nov 3, 2017

SCOTUS to Decide When Statute of Limitations is Tolled After Dismissal of State Law Claims Without Prejudice

Gavel on desk

“For Whom the Bell Tolls” Litigants often try to resolve their federal and state law claims in a single action. In order for a federal court to hear state law claims, it must invoke supplemental jurisdiction, codified at 28 U.S.C. § 1367. As long as the court has subject matter jurisdiction and the state law claim arises out of the same transaction or occurrence, the federal court can hear the state law claim. However, the courts have the discretion to decline to hear the state law claim. In such a case, the state law claim is dismissed without prejudice, and… Read more

Jun 19, 2017

THE SLANTS Mark Registrable as Prohibition of “Derogatory” Marks Held Unconstitutional By the Supreme Court

Supreme Court Building

By: Jim Bikoff, Darlene Tzou, and Holly Lance On June 19, 2017, the United States Supreme Court issued a landmark decision in Matal v. Tam, 582 U.S. ____ (2017), unanimously holding the disparagement clause in the Lanham Act unconstitutional on the ground that it violates the First Amendment.  This decision upends over 70 years of practice under Lanham Act § 2(a) (15 U.S.C. § 1052(a)).  The case will likely have an immediate effect on other pending “derogatory” mark cases, including Blackhorse v. Pro-Football, Inc., 2015 U.S. Dist. LEXIS 90091 (E.D. Va. July 8, 2015) (the “Redskins” case) and may signal… Read more

May 18, 2016

Promising News For Software Patents: Federal Circuit Upholds Patent-Eligibility For Computer-Implemented Invention

By:  Greg Kirsch, SGR Partner, Head of Intellectual Property Department The past two years have been challenging times for developers of software and other computer-implemented technology seeking to patent their inventions.  In June 2014, the US Supreme Court handed down its Alice Corp. v. CLS Bank decision, which created new stricter rules for determining whether such inventions may be deemed eligible for patent protection (regardless of whether they are novel and non-obvious).  The new rules comprise a two-step inquiry: (1)  determine if a patent-ineligible concept is claimed (law of nature, natural phenomena or abstract idea), and if so, (2)  determine… Read more

Jan 21, 2016

Will the Supreme Court Clarify the Standard for Awarding Attorneys’ Fees under §505 of the Copyright Act?

The Supreme Court has granted certiorari to address the standards to be applied in awarding attorney’s fees under  17 U.S.C.§505 of the Copyright Act. At issue is whether Supap Kirtsaeng, the prevailing defendant in a copyright lawsuit, should be awarded his attorney’s fees.  This is Mr. Kirtsaeng’s second trip to the Supreme Court. The  Court held in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013) that under the “first sale” doctrine (codified at 17 U.S.C. §109(a)), Kirtsaeng, as the lawful owner of the particular physical copy of the textbook purchased abroad, was permitted to resell that… Read more

Jun 29, 2011

Supreme Court Rejects Plaintiffs’ Climate Change Suit

In what will likely become a pivotal moment in the nation’s regulations of greenhouse gases, the U.S. Supreme Court ruled against the rights of six states, New York City and three private land trusts, holding that there is no federal common law of public nuisance for claims of injuries caused by the emissions of greenhouse gases. American Electric Power Co., et al. v. Connecticut, et al., No. 10-174 (“AEP”). The plaintiffs in AEP filed suit in July 2004 against six major electric utilities arguing they had suffered climate change-related injuries caused by the utilities’ emissions, which emissions they argued constituted… Read more