Category: United States

1
Who Owns an Athlete’s Tattoos? The Player? The Tattoo Artist? A Licensor?
2
U.S. Supreme Court Holds Copyright Remedy Classification Act of 1990 Does Not Abrogate State Sovereign Immunity for Copyright Infringement: Allen v. Cooper
3
Misappropriators Beware: Motorola Court Embraces Extraterritorial Application of the Defend Trade Secrets Act
4
Trademark infringement case update: Lucky Brands Dungarees v Marcel Fashion Group
5
New USPTO Requirement: Mandatory Electronic Trademark Submissions and Physical Addresses
6
No Time Like the Right Time* – To update your DMCA safe harbor copyright agent registration
7
In the Weeds: Key Intellectual Property Takeaways for the Cannabis Industry
8
Don’t B Late; Federal Circuit Interprets the B Delay Calculation
9
New USPTO Requirement: U.S. Licensed Attorney Representation for Foreign Trademark Applications and Registrations
10
U.S. Supreme Court strikes down ban on “immoral” or “scandalous” trademark registrations

Who Owns an Athlete’s Tattoos? The Player? The Tattoo Artist? A Licensor?

Who owns a celebrity’s tattoo, and the extent to which that tattoo can be displayed in a commercial context, raises right of publicity, copyright, and trademark issues. A district court in the recent Solid Oak case found no copyright infringement where a video game incorporated tattoos as inked on professional NBA players. Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-CV-724-LTS-SDA (S.D.N.Y. March 26, 2020).

This case considered use of tattoos as part of lifelike depictions of professional athletes in video games, however the ruling easily relates to individuals with tattoos who commodify their likeness such as celebrities, social media influencers, and musicians.

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U.S. Supreme Court Holds Copyright Remedy Classification Act of 1990 Does Not Abrogate State Sovereign Immunity for Copyright Infringement: Allen v. Cooper

On March 23, 2020, the Supreme Court of the United States held that the Copyright Remedy Clarification Act of 1990 (“CRCA”) does not abrogate the states’ sovereign immunity from copyright infringement suits.[1]  The practical effect of this ruling is that copyright holders cannot sue the states for damages for copyright infringement.[2] 

Allen was decided in reliance on and accordance with Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, a 1999 case in which the Supreme Court found unconstitutional the Patent Remedy Act (“PRA”), a related statute “basically identical” to the CRCA, that eliminated the states’ sovereign immunity from patent infringement suits.[3] 

Applying the reasoning of Florida Prepaid and emphasizing stare decisis, the Supreme Court rejected the arguments that either Article I’s Intellectual Property Clause or Section 5 of the Fourteenth Amendment’s limitations on state power provide a basis for the CRCA’s abrogation of state sovereign immunity in copyright suits.[4] 

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Misappropriators Beware: Motorola Court Embraces Extraterritorial Application of the Defend Trade Secrets Act

On March 5, 2020, the U.S. District Court for the Northern District of Illinois entered a final judgment on a jury verdict of approximately $764.6 million in a high profile trade secret misappropriation case — Motorola Solutions, Inc. v. Hytera Communications Corp. Ltd.[1]  This judgment was made possible, in large part, by an earlier order from the district court holding that the Defend Trade Secrets Act (“DTSA”) applies to misappropriation that occurs outside the United States if (1) the misappropriator is a U.S. citizen or entity, or (2) “an act in furtherance of” the misappropriation occurred domestically.[2]  While Motorola is not the first case to recognize that the DTSA provides a private right of action for foreign misappropriation,[3] it appears to be the first substantive analysis of extraterritorial application of the DTSA to date.[4]   

Case Background

The Motorola case centered on allegations that Hytera, a Chinese rival of Motorola, misappropriated Motorola’s trade secrets to develop and sell a competing digital radio.[5]  Motorola claimed that Hytera hired three engineers away from Motorola’s Malaysian office, and that those engineers stole thousands of technical, confidential Motorola documents containing trade secrets and source code.[6]  According to Motorola, Hytera used Motorola’s trade secrets to develop a state-of-the-art digital radio that was functionally indistinguishable from Motorola’s digital radios.[7]  Hytera proceeded to sell its newly developed radios both internationally and in the United States.[8]  While the key actions that enabled Hytera’s acquisition of Motorola’s trade secrets took place overseas, certain actions related to the misappropriation occurred in the United States.[9]  In particular, Hytera advertised, promoted, and marketed products embodying the allegedly stolen trade secrets at numerous domestic trade shows.[10]

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Trademark infringement case update: Lucky Brands Dungarees v Marcel Fashion Group

A nearly 20-year dispute between two competitors in the apparel industry will be heard by the Supreme Court Monday January 13, 2020, on the legal issue of claim preclusion – highlighting the practical pitfalls of releasing trademark infringement claims in settlement agreement between parties that continue to use the marks at issue. The case is Lucky Brands Dungarees, Inc. v. Marcel Fashion Group, Inc., Case No. 18-1086.

The practical lessons to draw from this dispute are numerous:

  1. the importance of initially clearing marks and implementing a plan to handle potential third party objections
  2. strategic enforcement as to when, and against whom, to enforce trademark rights – and squarely on point with this nearly 20 year battle now before the Supreme Court
  3. careful drafting of what claims are released in the context of future use of the same or similar trademarks.
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New USPTO Requirement: Mandatory Electronic Trademark Submissions and Physical Addresses

On Tuesday July 31, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, and 7. They were to take effect on December 21, 2019, but will now take effect of February 15, 2020.

The impact of the rule, as implemented, is a new requirement for all trademark applicants and registrants to:

  1. electronically file trademark applications, subsequent documents concerning trademark applications, and documents regarding registrations;
  2. provide and maintain a working e-mail address for receiving correspondence from the USPTO for each trademark application and registration; and
  3. provide and maintain an accurate domicile address as a backup for the USPTO to contact if an e-mail correspondence address fails to work.
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No Time Like the Right Time* – To update your DMCA safe harbor copyright agent registration

All companies that conduct business online should take note of a potential upcoming renewal deadline for the “safe harbor” from copyright infringement liability. Online service providers seeking safe harbor under 17 U.S.C. § 512(c) of the Digital Millennium Copyright Act (DMCA)[1] must designate a copyright agent with the U.S. Copyright Office and renew that designation at least once every three years. Failure to do so will negate the online service provider’s ability to claim the safe harbor from copyright infringement liability under § 512(c). Many companies renewed their designations between December 1, 2016 and December 31, 2017 using the Copyright Office’s new electronic filing system. For those that did, the three-year renewal deadline may be approaching.

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In the Weeds: Key Intellectual Property Takeaways for the Cannabis Industry

Cannabis is a rapidly evolving field with 33 states and the District of Columbia having passed laws broadly legalizing some form of medicinal or recreational use. Of those states, eleven and the District of Columbia have adopted the broadest form of legalization: recreational use. General trends of decriminalization and legalization of cannabis, at the state level, may encourage future legalization at the federal level as well. As with any other high-growth opportunity, business investment in cannabis is on the rise, and intellectual property is a vital concern. Below are five intellectual property takeaways to consider for cannabis-related endeavors.

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Don’t B Late; Federal Circuit Interprets the B Delay Calculation

Mayo Foundation v. Iancu reads more like an arithmetic problem than a Federal Circuit decision. The reason is the case involves the Patent Term Adjustment Act (PTA) (see 35 U.S.C. § 154(b)). PTA determinations require calculating how many days of delay, from the effective filing date to the Notice of Allowance, are attributable to the applicant and how many to the PTO. Under one PTA scenario, the applicant is entitled to an adjusted term, recovering every day the application is pending beyond three years past the effective filing date for the balance of delay attributable to the PTO. This is called a “B Delay” (§154(b)1)(B)). However, the B Delay is subject to several exclusions. The disputed exclusion in Mayo concerned a Request for Continued Examination (RCE) of the application, which Mayo filed before the PTO declared an interference. 

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New USPTO Requirement: U.S. Licensed Attorney Representation for Foreign Trademark Applications and Registrations

On Tuesday July 2, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, 7, and 11. They take effect on Saturday August 3, 2019.

The impact of the rule, as implemented, is a new requirement for a licensed U.S. attorney to serve as counsel for applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States (i.e. foreign applicants, registrants, or parties). Previously, a substantial number of such trademark applications had been filed without a U.S. attorney by applicants domiciled in other jurisdictions.

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U.S. Supreme Court strikes down ban on “immoral” or “scandalous” trademark registrations

On June 24, 2019, the U.S. Supreme Court held in Iancu v. Brunetti that the Lanham Act’s prohibition on registration of “immoral” or “scandalous” trademarks violates the First Amendment. The holding was in favor of Respondent Erik Brunetti, who had been denied a trademark registration for “FUCT” in connection with various clothing items.

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