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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 … Continue Reading

Supreme Court Grants Certiorari in Game-Changing Trademark Appeals

Continuing to feed its appetite for trademark rulings, the U.S. Supreme Court has recently granted petitions for certiorari of two Second Circuit decisions implicating trademark law. The first case could change the burden of proof for recovering an infringer’s profits as damages in trademark disputes, while the second case may limit a defendant’s ability to … Continue Reading

Supreme Court Finds “Scandalous” Trademark Rule Unconstitutional

The U.S. Supreme Court has ruled that the U.S. Trademark Act’s section 2(a) provision precluding registration of “immoral” or “scandalous” trademarks violates the First Amendment of the U.S. Constitution. The ruling came in the case of Iancu v. Brunetti, an appeal from the U.S. Trademark Office’s refusal to register the trademark F.U.C.T. for a line … Continue Reading

Supreme Court Holds that Trademark Licensee Retains Rights After Rejection of License by Licensor in Bankruptcy

In a long-awaited, nearly unanimous opinion written by Justice Kagan, resolving a circuit split described in our earlier blog post, the Supreme Court reversed the First Circuit and held that rejection by the licensor of a trademark license under Section 365 of the Bankruptcy Code does not divest the licensee of its rights to continue … Continue Reading

U.S. Supreme Court Makes Clear: Copyright Registration Required to Sue for Infringement

When it comes to protecting creative works, copyright law in theory offers the most instant form of protection. Under the Copyright Act of 1976, a copyright author gains exclusive rights in the work immediately upon its creation. 17 U.S.C. § 106. Notwithstanding, the author may not institute a civil suit for infringement of those exclusive … Continue Reading

Supreme Court to Take Up Protection of Confidential Information Provided to the Government: Food Marketing Institute v. Argus Leader Media

On January 11, the United States Supreme Court announced it accepted the Food Marketing Institute’s cert petition to review the Eighth Circuit’s decision in Food Marketing Institute v. Argus Leader Media. This represents the latest development toward resolving a conundrum we have described here before (October 2018/June 2018)—how to protect confidential and trade secret information … Continue Reading

Supreme Court Grants Cert in Brunetti Appeal

The U.S. Supreme Court has agreed to hear arguments in the case of Iancu v. Brunetti. This, as you may recall, is an appeal regarding the constitutionality of the Lanham Trademark Act’s section 2(a) provision precluding registration of “immoral” or “scandalous” trademarks. In the wake of the much-discussed 2017 Supreme Court decision in Matal v. … Continue Reading

Update: Give Me Liberty, or Give Me Death? Supreme Court May Resolve Circuit Split on Effect of Rejection of Trademark Licenses in Bankruptcy

In my September 11 blog post, Give Me Liberty, or Give Me Death?, I noted that the First Circuit’s decision in Tempnology—that rejection of a trademark license in bankruptcy divested the nondebtor licensee of its right to use the trademark—was subject to the licensee’s pending petition for certiorari. On October 26, 2018, the United States Supreme … Continue Reading

Supreme Court Asked to Review De Havilland case

Sometime this month, the United States Supreme Court will announce whether it will grant certiorari to hear an appeal of Olivia de Havilland’s case against the producers of the popular television miniseries Feud. The series dramatized the legendary animosity between old Hollywood superstars Joan Crawford and Bette Davis. De Havilland—portrayed by Catherine Zeta Jones—was a … Continue Reading

U. S. Supreme Court Will Decide What It Means to “Register” a Copyright

In this 2018-19 term, the United States Supreme Court will hear arguments on an issue that has long divided copyright attorneys and the courts that hear their cases. Under the Copyright Law, Section 411(a), a copyright owner may not bring an infringement lawsuit until the copyright owner has registered the copyright with the U.S. Copyright … Continue Reading

The Supreme Court Tells PTAB “All or Nothing”: SAS Institute v. Iancu

The Supreme Court recently issued an opinion that will increase the certainty for parties to a patent dispute of whether the validity of challenged claims will be decided in a post-grant review process or federal court. SAS Institute v. Iancu involved review of an inter partes review (IPR) proceeding, which is a post-grant review proceeding that is … Continue Reading

USPTO Switches Gears on Registration of Disparaging Marks, but Not on Scandalous Marks

On June 26, 2017, a week after the U.S. Supreme Court unanimously held that the “disparagement clause” in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the Free Speech Clause of the First Amendment in Matal v. Tam, the U.S. Patent and Trademark Office (the “USPTO”) has updated (Examination Guide 1-17) its … Continue Reading

Portland Band The Slants Singing a Happy Tune After the Supreme Court Unanimously Holds That the Disparagement Clause Violates the First Amendment

Background Yesterday, six months after hearing oral argument (and nearly six years after Simon Tam filed his trademark application for “THE SLANTS”), the U.S. Supreme Court unanimously affirmed the U.S. Court of Appeals for the Federal Circuit’s en banc decision in In re Tam, holding that the disparagement clause in Section 2(a) of the Lanham … Continue Reading

The Supremes Have Spoken: The Defense of Laches Does Not Apply to Patent Infringement Suits…

…but can only collect damages for six years prior to filing suit. In a stunning upset of years of jurisprudence (Federal Circuit Court of Appeals, prior patent act), the U.S. Supreme Court determined that laches (an equitable remedy) cannot be applied within the “statute of limitations” period of six years (a legal remedy for damages). … Continue Reading

The Supreme Court Hears Oral Argument in Portland Band The Slants’ Trademark Case

On Wednesday, January 18, 2017, the U.S. Supreme Court heard oral argument in Lee v. Tam, a case reviewing the U.S. Court of Appeals for the Federal Circuit’s en banc decision in In re Tam holding that the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. Section 1052(a), was facially invalid under … Continue Reading

Free Speech and Functionality

The Founding Fathers ensconced intellectual property rights into the fabric of the original Constitution. Article I, Section 8, Clause 8, of the United States Constitution grants Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and … Continue Reading

Justice Scalia and the Court’s Patent Case Docket

The weekend’s news about Justice Antonin Scalia’s passing was a shocker. Justice Scalia always appeared so vigorous that he seemed much younger than his 79 years. His high level of legal scholarship was always on display. Justice Scalia was nothing if not a formidable jurist. … Continue Reading
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