Stay Away; No Trademark for Social Distancing and Other Informational Terms

by Scott M. Hervey
The IP Law Blog

Call me a pessimist, but it was surprising to me when I recently checked the USPTO trademark database that I did not find an application to register “Social Distancing” for some other novelty item.  (It is also surprising that the tag #socialdistancing has only 159,000 uses on Instagram.) Nevertheless, I am sure some entrepreneurs will use it on a t-shirt or coffee mug, file a trademark application for “Social Distancing” and then try to prohibit others from using the term. 

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District Court Stays Discovery Deadlines Because of Coronavirus Threat but Keeps Markman Hearing on Calendar

by Eric Caligiuri
The IP Law Blog

On March 6, 2020, a Central District Court in UPL NA Inc. f/k/a United Phosphorous, Inc. v. Tide International (USA), Inc. et al, 8-19-cv-01201 (CDCA 2020-03-06, Order) (Ronald S.W. Lew), issued an order that may become more common place across courts.  At the request of the parties, the Court issued a temporary stay of all discovery in the action because of the threat posed by the Coronavirus.

Specifically, the Court noted that the parties had jointly stipulated that “discovery efforts are being significantly impacted by the outbreak of coronavirus.

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YouTube and the First Amendment

by James Kachmar
The IP Law Blog

Is the privately-owned YouTube site really a “state actor” subject to judicial scrutiny under the First Amendment? That’s the claim made in a lawsuit by Prager University, which is not really a university. The Ninth Circuit was recently called upon to address PragerU’s claim that the widely popular internet site operated by a private entity should be treated as a “state actor” subject to the First Amendment.  Unsurprisingly, the Ninth Circuit reaffirmed well-established case authority to hold that the First Amendment’s protections apply only as to protect against governmental action,

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Google’s Servers Do Not Constitute a Regular and Established Place of Business for Patent Venue

by Jo Dale Carothers, Ph.D.
The IP Law Blog

It has become commonplace for companies such as Google to use local servers to provide faster service to customers.  This practice has raised the question as to whether those local servers constitute “a regular and established place of business” for the purposes of establishing venue in patent infringement suits in the districts where the servers are located.

Specifically, the patent venue statute, 28 U.S.C. § 1400(b), limits the districts where patent infringement cases can be filed to either (1) where the defendant resides,

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IPRs Cannot Be Used to Challenge Patents for Indefiniteness

by Audrey A. Millemann
The IP Law Blog

There are a number of requirements that must be met for an invention to be patentable. The invention must be novel (unique) and nonobvious (i.e., a person skilled in the field of the invention would not have found the invention obvious based on the existing knowledge in the field). In addition, the patent application must meet other requirements, including written description (the application must contain a detailed, clear, and definite written description of the invention) and enablement (the application must describe how to make and use the invention).

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Lil Nas X Takes His Horse to the Old Town Road and Moves to Dismiss Producers’ Copyright Infringement Action Concerning “Rodeo”

by Josh H. Escovedo
The IP Law Blog

Lil Nas X broke onto the scene in spectacular fashion when he released the viral sensation “Old Town Road,” featuring Billy Ray Cyrus. Old Town Road broke the prior record for most consecutive weeks at No. 1 on the Billboard Hot 100 charts and eventually resulted in Lil Nas X receiving a Grammy award. Unfortunately, fortune and fame comes with its share of problems.

Lil Nas X was sued by producers Don Lee and Glen Keith (the “Producers”) in October 2019 for allegedly infringing their copyrighted material with his track “Rodeo.” According to the Producers,

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No Trademark Protection In Book or Movie Titles?!?

by Scott M. Hervey
The IP Law Blog

Generally, the title to a single motion picture is not entitled to trademark protection.  This is the same for the title to single books, songs and other singular creative works.  Most non-trademark attorneys are surprised when I tell them this.  I am sure you may be scratching your head as well.  The logic behind the legal principle that the title to a single creative work cannot function as a trademark is as follows:  a title to a single creative work such as a book serves to identify only the book and not the source of that book. 

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Inequitable Conduct Can Render all Patents in a Patent Family Unenforceable through Infectious Unenforceability

by Eric Caligiuri
The IP Law Blog

In Guardant Health, Inc. v. Foundation Medicine, Inc., 1-17-cv-01616 (DDE 2020-01-07, Order), the Court rejected the Plaintiff’s argument that an inequitable conduct claim must be related only to the prosecution of the patent-at-issue in ruling on plaintiff’s motion to dismiss defendants’ infectious unenforceability counterclaims.  In the case, the Defendants’ theory as to the unenforceability of U.S. Patent No. 9,902,992 (the ’992 patent) was not based on inequitable conduct said to have occurred during the ’992 patent’s prosecution.  

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Is Your Competitor Objectionable? The Scope of Immunity Under the Communications Decency Act

by James Kachmar
The IP Law Blog

In February 1996, faced with increasing public concern about the availability of pornography on the internet, as well as recent court decisions that seem to deter efforts to filter out such content, Congress enacted the Communications Decency Act (“CDA”).  As part of the CDA, Congress granted immunity to internet service providers from liability for actions they took to help users block online content that a user found to be offensive or objectionable.  Congress further declared its goals in enacting the CDA,

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Copying by Competitors is Evidence of Nonobviousness of an Invention

by Audrey A. Millemann
The IP Law Blog

The Patent and Trademark Office (PTO) may reject a patent application on several different grounds.  One of those grounds is obviousness.  Under 35 U.S.C. § 103, if an invention is obvious to a person of ordinary skill in the art, then it is not patentable.

In determining whether an invention is obvious, the PTO compares the invention to the “prior art” – all similar inventions that are publicly available at the time the application is filed. 

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