Supreme Court Determines No Claim Preclusion of Defense in Trademark Infringement Suit

By Jessica D. Kemper and David G. Barker Today, a unanimous Supreme Court held in Lucky Brand Dungarees, Inc. v. Marcel Fashions Group., Inc. that claim preclusion did not prevent Lucky Brand from asserting a defense it failed to fully litigate in a prior lawsuit with Marcel.  The Court did not strictly endorse “defense preclusion”—a doctrine that would prevent litigants from asserting defenses in new litigation that were asserted or could have asserted in prior litigation; it decided the case on general claim preclusion principles. The case has a complicated history.  In 2001, Marcel sued Lucky for trademark infringement of   Read More »

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If No One Owns the Law, Who Owns the Statutory Annotations?

By Mary Hallerman Last week, the Supreme Court held in Georgia v. Public.Resource.Org, Inc., that legislators cannot copyright any works that they created in the course of their official duties. Though the holding may appear straightforward and narrow, the Court unearthed the centuries-old government edicts doctrine to reach its decision and emphasized the importance of the circumstances of creation in determining copyright ownership. What led to the Supreme Court’s excavation of the government edicts doctrine? Oddly enough, alleged infringement on the Internet. A nonprofit, Public.Resource.Org, published the Official Code of Georgia Annotated (“OCGA”) online without Georgia’s permission. As the name suggests,   Read More »

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At Long Last, Supreme Court Resolves Circuit Split Over Lanham Act Profits

By Mary Hallerman The Supreme Court unanimously held that willfulness is not prerequisite to an award of a defendant’s profits under the Lanham Act. The decision in Romag Fasteners, Inc. v. Fossil Group resolved a longstanding circuit split on this issue, but given the swift manner the Supreme Court dealt with the issue, one wonders why courts were even split in the first place. The Lanham Act provides that a prevailing plaintiff is entitled to recover a defendant’s profits “subject to the principles of equity.” See 15 U.S.C. § 1117(a). Certain circuits—the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh—considered willfulness   Read More »

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Unintended Sublicenses Through Social Media: “Embedding” and the Pitfalls of Public Posts

By Deborah Gubernick and Gabrielle Morlock In this era of social media and image sharing, it is not uncommon for account holders to make their profiles public in attempt to garner as many followers and as much attention as possible. Social media platforms can be a form of relatively low-cost personal and corporate advertising. However, as a photographer recently learned, using social media platforms can have unintended consequences that compromise intellectual property rights. Stephanie Sinclair, a professional photographer who is the exclusive U.S. copyright owner of a photo titled “Child, Bride, Mother/Child Marriage in Guatemala,” posted a copy of her   Read More »

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Supreme Court Holds PTAB Decisions on IPR Time Limit Nonappealable

By Anne Bolamperti and David G. Barker Yesterday, in Thryv, Inc. v. Click-To-Call Technologies LP, the Supreme Court held that Patent Trial and Appeal Board (“PTAB”) decisions regarding the time limit for filing inter partes reviews (“IPRs”) are not subject to judicial review. Thryv filed an IPR against Click-To-Call’s patent for anonymous telephone call technology. Click-to-Call argued the IPR was untimely because it was filed outside the one-year limit in 35 U.S.C. § 315(b). The PTAB nonetheless instituted the IPR and invalidated 13 patent claims. On appeal, the Federal Circuit ultimately held the IPR was time barred and vacated the PTAB’s decision with   Read More »

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