Star Trek Fan Film Not Fair Use

by Scott M. Hervey
The IP Law Blog

Paramount and Star Trek Fan Film Producers Settle

The copyright infringement lawsuit between Star Trek fan film producer, Axanar Productions, and Paramount Pictures came to an end less than two weeks before trial.  The settlement was undoubtedly triggered by the court’s early January ruling that the fan fiction film, Prelude to Axanar, is not protected by fair use.

Prelude to Axanar is a documentary style short that tells the story of Garth of Izar,

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Federal Circuit Requires Standing to Appeal PTAB’s Final Decisions

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

Although arguably foreshadowed, some may be surprised to learn that a party with the right to challenge the validity of a patent at the United States Patent and Trademark Office (“USPTO”) may not have the right to appeal an unfavorable decision.  In Phigenix v. ImmunoGen, the Federal Circuit clarified that while there is no standing requirement to challenge a patent at the USPTO via an inter partes review (“IPR”), standing is required to appeal the Patent Trial and Appeal Board’s (“PTAB”) final decision to the Federal Circuit.

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COVERED BUSINESS METHODS PATENTS -- NOT SO BROAD!

by Audrey A. Millemann
The IP Law Blog

The Federal Circuit Court of Appeals has reminded the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office in no uncertain terms that covered business method review has limits.  In Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 2016 U.S. App. LEXIS 20764 (November 21, 2016), the court held that the PTAB had improperly instituted covered business method (“CBM”) review of Unwired’s patent.  CBM review is a procedure enacted in the America Invents Act by which a business method patent can be challenged in the PTAB.

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“It’s In The Game” - Proof Issues In Software Copyright Infringement Cases

by James Kachmar
The IP Law Blog

A recent Ninth Circuit decision in Antonick v. Electronic Arts, Inc. (filed Nov. 22, 2016), shows some of the proof issues that a plaintiff may encounter in prosecuting claims for copyright infringement in connection with software.  A jury found in favor of plaintiff’s claims of infringement; however, the trial court granted the defendant’s motion for judgment as a matter of law because plaintiff had not offered the “source code” for the software games at issue into evidence during the trial.

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Law Firm Survives Disqualification Motion in Florida Patent Infringement Lawsuit

by Eric Caligiuri
The IP Law Blog

In Lanard Toys Limited v. Toys “R” Us, Inc. et al, 3-15-cv-00849 (FLMD December 16, 2016, Order) (Barksdale, MJ), a patent infringement matter in Florida District Court, the court denied defendants’ motion to disqualify plaintiff’s new counsel for simultaneously representing defendant in an unrelated case.  Four months after lawyers with Gordon & Rees Scully Mansukhani LLP (“Gordon & Rees”) began representation of Lanard Toys Limited (“Lanard”) against Toys “R” Us-Delaware, Inc. (“TRU”),

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From Rogue One to Forces of Destiny: A Star Wars Intellectual Property Story

by Josh H. Escovedo
The IP Law Blog

With last weekend’s release of Rogue One: A Star Wars Story, Star Wars is once again living and thriving. Rogue One opened with a most impressive $155 million opening in North America, and $290 million worldwide, making it the 12th largest opening in United States History. Now, this isn’t really related to intellectual property, but in light of this opening,  we thought it would be appropriate to provide an article dealing with Star Wars intellectual property.

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Holiday Horror Series: Part 4 - HO, HO, HO! AND FA-LA-LA-LA-LA! MORE CHRISTMAS PATENTS

by Audrey A. Millemann
The IP Law Blog

The last time I checked (which was a couple of years ago), I found over 900 U.S. patents in the U.S. Patent and Trademark Office’s database that had the word “Christmas” in the title.  Every year at this time, I look at a few of the most interesting ones.

Here’s one I really like:  U.S. patent no. 5,523,741 for a “Santa Claus Detector.”  This patent covers a Christmas stocking that contains a light bulb or LED,

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Phasers Set to Stun - Star Trek and Fan Film Producers Trade Copyright Shots

by Scott M. Hervey
The IP Law Blog

Fan films and fan fiction ordinarily don’t end up being the subject of a federal court lawsuit.  Most fan fiction are creative expressions reflecting adoration of a series, film or character and the majority of copyright owners take a permissive view of fan fiction.  However, Paramount Pictures, the owner of the Star Trek franchise, which in the past has not taken action against other fan fiction projects, is opposing the production of a full length film,

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Two Key Things You Need to Know About the 2016 Federal Rule Changes

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

On December 1, 2016, amendments to the Federal Rules of Civil Procedure (“FRCP”) and Federal Rules of Appellate Procedure (FRAP) took effect.  While at first glance, the changes may not seem dramatic, but changes such as shortening the time to respond and cutting word counts for briefs have a direct impact on our practices.  For example, this year’s changes include the following:

  1. Eliminating the 3-day rule; and
  2. Reducing word counts for certain appellate filings.

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Holiday Horror Series: Part 1- Could You Patent Christmas?!

by Audrey A. Millemann
The IP Law Blog

The holidays are upon us.  Given that everything seems to be protected by intellectual property rights, could someone protect Christmas?

The most likely candidate to try to patent Christmas would be Santa Claus.  But (assuming all other issues are addressed), could Santa Claus really patent Christmas? Assuming that Santa Claus invented Christmas, then perhaps he could! U.S. patent law provides patent protection for pretty much everything. Under the patent laws of the U.S.

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