The Supreme Court Speaks Unanimously: The USPTO Cannot Recover Legal Fees for Losing

On December 11, 2019, the Supreme Court unanimously decided that the term “expense” under §145 of the Patent Act does not include the salaries of the USPTO’s legal personnel, and put an end to the USPTO’s attempts to recover attorneys’ fees in court challenges to its decisions.

The Peter v. NantKwest, Inc. dispute arose after the USPTO denied NantKwest’s patent application for a method to treat cancer in 2013. NantKwest unsuccessfully appealed the USPTO’s decision in 2017, and the U.S. District Court for the Eastern District of Virginia awarded the USPTO its experts’ fees, but not attorneys’ fees. The district court held that the so-called “American Rule” includes a presumption that litigants pay their own attorneys’ fees. The USPTO challenged this decision and tried to recoup its “expenses,” arguing that the “expenses” mentioned in 35 U.S.C. § 145 included the salaries of its attorneys and paralegals involved in the case. Sitting en banc, the Federal Circuit agreed with the district court on July 27, 2018, and the USPTO appealed to the Supreme Court. The Supreme Court granted the USPTO’s petition for certiorari.

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When Can a Domain Name Be a Trademark? Supreme Court Will Decide

On Friday, November 8, 2019, the Supreme Court granted certiorari in United States Patent and Trademark Office et al. v. Booking.com BV, to decide whether “the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.”

The case involves the travel website Booking.com, which attempted to register its website name, BOOKING.COM, as a trademark. The United States Patent and Trademark Office (USPTO) refused registration, stating that the addition of “.com” to a generic word does not render it distinctive. The agency emphasized that federal courts have rejected trademarks for other similar names, such as hotels.com, mattress.com, and lawyer.com. Continue Reading

I, Robot: PTO Seeks Comments on Protection for AI-Created Works

Earlier this year, the United States Patent and Trademark Office (USPTO) held a groundbreaking conference on the impact of artificial intelligence on the development of intellectual property. This week, the USPTO issued a follow-up notice, requesting comments on the copyright, trademark, and other intellectual property rights issues that may be impacted by the rise of artificial intelligence.

The request sets out 13 questions on issues related to the scope of IP protection that should be afforded to works that may be created by artificial intelligence, such as: “Should a work produced by an AI algorithm or process, without the involvement of a natural person contributing expression to the resulting work, qualify as a work of authorship protectable under U.S. copyright law?” Comments on the questions can be submitted on or before December 16, and can be emailed to AIPartnership@uspto.gov.

Animated IP: A Series of Answers to Your Questions from Rose City Comic Con

In this upcoming series of posts, Animated IP, team members will answer your questions from their panel at the 2019 Rose City Comic Con. This is the first post in the series.

Question 1: I am drawing my uncle’s memoir with the goal of getting it published. He lived a very interesting life which included friendships and interactions with some famous people (mostly athletes) because he played briefly on the Kansas City Chiefs football team. How can I include these names and franchises in the book without fear of litigation in the future?

We can never be 100% safe from litigation. To put yourself in the safest position, it’s usually best to get permission to use the trademarks and imagery you want to put into your work. However, permission is not legally required in order to use the names of actual persons or sports teams in an original work. As long as you are creating an original work of authorship, whether fiction or nonfiction, the First Amendment allows you to make references to actual people, living or dead, without obtaining permission. There are a few things to look out for, however. Continue Reading

Pop Culture: Captain Marvel, Shazam, and a 12-Year Legal Battle

Among the latest entries in the quickly expanding catalogue of blockbuster movies about comic book characters are Marvel’s Captain Marvel and DC’s Shazam!, both of which have generated hundreds of millions of dollars at the box office this year. Given the present financial success of these characters, it may come as a surprise to fans that Captain Marvel and Shazam have a complicated and intertwined history, including a legal battle that lasted more than a decade but was over before most current fans were even born. Continue Reading

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