Irwin IP Case Of The Week

Got Fees? You’ve got some explaining to do.

The Federal Circuit recently issued two opinions regarding fee awards in patent cases, both of which show the Court’s reticence to award fees in contravention of the “American Rule” where each party bears its own costs.  As such, if patent litigants seek fees as an exception to this rule (e.g.,

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Fair Use in Documentary? Sounds Fishy

A federal judge recently ruled that the inclusion of the chorus of a children’s song in a documentary about burlesque dancers amounted to fair use.  The decision shows just how impactful the evolving transformative use issue can be in a fair use analysis. Tamita Brown, along with two coauthors (“the

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DTSA claims without sufficient particularity are DOA

On May 13, 2020, the United States District Court for the Central District of California granted summary judgment to all corporate and individual defendants with respect to Plaintiff’s non-source-code, “know-how”-based Defend Trade Secret Act (“DTSA”) (18 U.S.C. §§ 1830-1839) claims seeking relief for misappropriation of trade secrets.  All source-code based claims

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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

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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

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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)

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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

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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

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