Irwin IP Case Of The Week

No One Can Own the Copyright to Annotated State Statutes

On April 27, 2020, in a 5-4 decision with two dissenting opinions, the United States Supreme Court held that the annotations included in Georgia’s official statute are not copyrightable.  The ruling, authored by Chief Justice Roberts, was based on the majority’s conclusion that work performed in official legislative capacity does

SCOTUS: No Willfulness Required for Profits in TM Cases

On April 23, 2020, the United States Supreme Court resolved an even circuit split[1] by unanimously holding that willful infringement is not a pre-condition to a profits award in a trademark infringement suit.  This ruling increases the likelihood that, in the affected Circuits, more trademark infringement suits will settle for

Instagram Artists Beware: Posting Equates to Permission

Plaintiff Stephanie Sinclair brought suit against Defendant Mashable and its parent company, alleging copyright infringement when Mashable posted Sinclair’s photograph on its website without Sinclair’s authorization.  The Court granted Defendants’ Motion to Dismiss, finding that the Defendants had a valid sublicense from Instagram to post the photograph. Stephanie Sinclair is

Multi-Color Product Packaging Can Be Inherently Distinctive

The Federal Circuit recently held that trademarks for product packaging consisting of certain colors arranged in a particular design or pattern can be inherently distinctive, regardless of whether the design has any defined peripheral shape or border.  In re Forney Indus., Inc., Case No. 19-1073 (Fed. Cir. April 8, 2020)

Bad Faith Needed for Injunction of Patent Infringement Threat

The Federal Circuit recently reversed a decision granting a preliminary injunction prohibiting patent infringement threats and allegations on the grounds that the district court failed to consider whether the statements were made in bad faith, reaffirming longstanding Federal Circuit precedent regarding the scope of a patentee’s protected speech. In March

Withdrawing Counsel Still Accountable Under Rule 11

Plaintiff Bovinett brought suit against Defendant HomeAdvisor and other companies in August 2017 generally alleging improper use of Plaintiff’s image in HomeAdvisor advertising.[1]  During the course of the litigation, HomeAdvisor filed several motions for sanctions, including requests for sanctions against Plaintiff’s Attorney.  During the course of the litigation, Plaintiff’s Attorney

Supreme Court Says: States Maintain Sovereign Immunity for “Piracy”

In an opinion by Justice Kagan, the Supreme Court recently held that the Copyright Remedy Clarification Act of 1990 (“CRCA”) did not validly abrogate States’ sovereign immunity for copyright infringement.[1]  The Supreme Court relied on its 1999 decision in Florida Prepaid;[2]which held that Congress could not use its powers under

Heineken Brews Up a Win over Anheuser-Busch at the ITC

On September 5, 2018, Heineken filed a complaint with the International Trade Commission against Anheuser-Busch alleging a violation of § 337 of the Tariff Act, in the importation into or sale in the United States of beverage dispensing systems and components that allegedly infringed claims 1–11 of Heineken U.S. Patent

Ninth Circuit Overrules Copyright Inverse Ratio Rule

On March 9, 2020, the Court of Appeals for the Ninth Circuit, en banc, affirmed the district court’s judgment of noninfringement of copyright in favor of Led Zeppelin and, notably, joined the majority of circuits by overruling the “inverse ratio rule” for copyright infringement in its jurisdiction and further found

CleanTech’s “Dirty” Prosecution = Inequitable Conduct

Cleantech Corp. (“CleanTech”), the owner of four patents directed to recovering oil from an ethanol plant’s byproduct, began filing infringement actions against numerous defendants around the country beginning in 2009.  After the disparate actions were combined by the multidistrict litigation panel, the defendants moved for summary judgment on invalidity of

The Place of Business is People

The Federal Circuit held that a server owned by Google, Inc. that was installed in a third-party contractor’s datacenter did not constitute a “regular and established place of business” under the patent venue statute, 28 U.S.C. § 1400(b) because none of Google’s employees did business at the site.  In re:

Settlement Agreement Renders Case Moot, Plain and Simple

The Federal Circuit recently vacated an order granting summary judgment of non-infringement on the grounds that a settlement agreement executed shortly before the order mooted the case.  The Federal Circuit concluded that continuing obligations of the parties, as set forth in the settlement agreement, did not preclude this result.[1] In

The Long-Arm of the Law: Infringing Internet Sales Opens up Suit in Customers’ Home States

The Seventh Circuit held that internet sales of products with allegedly infringing branding from a national advertising company will establish personal jurisdiction in Illinois under the Illinois long-arm statute.  In trademark infringement cases, unlike patent cases, even a seemingly small number of allegedly infringing sales can be sufficient to establish

PTAB Cannot Cancel Claims for Indefiniteness in IPR Proceedings

The Federal Circuit recently ruled the Patent Trial and Appeal Board (“the PTAB”) may not cancel claims for indefiniteness in an inter partes review (“IPR”) proceeding.[1]  The Federal Circuit concluded while an IPR petition defines the scope of an IPR proceeding, the Board may not exceed its governing statutory provisions