Week’s news headlines – August 11th, 2017


Under Armour wins year-long TM case in China
The dispute began in April 2016 when Uncle Martian, a Chinese clothing company, began selling athletic wear with logos that Under Armour claimed infringed its rights

Gibson takes on rival over ‘Flying V’ trademark
In a claim filed at the US District Court for the Central District of California on Wednesday, August 2, Gibson alleged that Jam Industries USA had infringed the marks through sale of Hamer-branded guitars

Federal Circuit returns dispute over Dale Earnhardt trademark rights back to USPTO
Teresa Earnhardt appealed from the dismissal of its opposition to the trademark registration of EARNHARDT COLLECTION by Kerry Earnhardt, Inc (“KEI”)

Grey market sales can be criminal offence, says UK Supreme Court
On Thursday, August 3, the UK Supreme Court, in a decision on an interlocutory appeal in criminal proceedings, handed down its finding centring on section 92(1) of the Trade Marks Act 1994

Usain Bolt trademark portfolio suggests he’s not finished yet: lawyers
As the curtain came down on a glittering career this weekend, eight-time Olympic gold medallist Usain Bolt may seek to capitalise on his trademark portfolio and brand image post-retirement, according to lawyers

Thailand becomes 99th member of Madrid System
Yesterday, August 7, the Thai government deposited its instrument of accession to the Madrid Protocol with Francis Gurry, director general of the World Intellectual Property Organization (WIPO)

Estée Lauder lipsticks smacked with trade dress suit
Japanese luxury skincare brand Tatcha filed its claim at the US District Court for the Northern District of California, San Francisco Division, yesterday

Federal Circuit says not allowed to trademark I AM
William Adams is the well-known front man for the music group The Black Eyed Peas and is known as Adams’ company –, llc – already owns trademarks on WILL.I.AM for certain goods and services, and also the mark I AM (typed drawing) for clothing in class 25

Trade mark law in Sierra Leone: A highly unsatisfactory state of affairs
In this note we examine some serious issues with trade mark law in Sierra Leone

Forever 21 suit built on ‘undermining’ TM protection, says Gucci
“In stark contrast to the Gucci brand’s reputation for innovation in design and high-end fashion, Forever 21 has built its business on imitation,” the company said in a counterclaim filed at the US District Court for the Central District of California yesterday, August 8

US Army at war with alcohol shop over ‘Black Knights’ trademark
The US Army and the US Military Academy (USMA) have sued a New York-based alcohol shop over its use of the ‘Black Knights’ trademark

Salvatore Ferragamo hits rap artist with trademark infringement case
The case was filed at the US District Court for the Northern District of Florida on Monday, August 7

Alibaba expands brand protection efforts with Chinese government
E-commerce platform Alibaba has expanded its brand protection efforts in partnership with the Chinese government


Wind turbine dispute not blowing over as GE takes legal action
The complaint (link) was filed at the US District Court for the Central District of California on Monday, July 31

Real estate tech firm Redfin has successful IPO under shadow of potential patent suit
In late July, Seattle, WA-based real estate tech firm Redfin (NASDAQ:RDFN) went public after an initial public offering that exceeded expectations, reaching $15 per share and a total valuation of $138.5 million

You Need Defensive Patents But You Don’t Have Any. Now What? A Case Study
The setting is familiar: a large corporate asserter uses its patents against a smaller, high-growth company with no patents. Companies like Qualcomm, IBM, Nokia, and Microsoft regularly assert their patents

‘Patent Prosecutor’ or ‘IP Counselor’?: Clients and Practitioners Should Choose Wisely
At a recent intellectual property (IP) conference, I attended a session with practitioners from both private law firms and corporations. One practitioner declared confidently to the group, “I’m just a patent prosecutor

Kim Kardashian company sued in patent case over smartphone cases with LED lighting
On Monday, July 31st, San Marcos, CA-based consumer hardware developer Snap Light LLC filed a patent infringement complaint against Kimsaprincess Inc., a company owned by American reality television personality Kim Kardashian West.

How to Create Patent Rights
In feudal England, land was transferred from seller to buyer by the “livery of seisin” ceremony where the seller would transfer a clod of dirt to the buyer symbolizing the transfer of the property

Linking Patent Strategy to Commercial Success
Patenting the distinctive technological features that drive demand for your products and services will make your patent portfolio more valuable by creating a link, or nexus, between your patent portfolio and your products. You can use this nexus to exploit your patents by preventing your competitors from including the most valuable features of your products in their own products without your permission; commanding a higher royalty if you license your patents; increasing your chances of getting an injunction if you need to enforce your patents; increasing your damages base if you enforce your patents; and defending against an obviousness attack on your patents’ validity by showing that the patented features increased your market share

Vestas says it will challenge GE’s claims in lawsuit filed over wind turbine patent
On Monday, July 31st, Boston, MA-based global digital industrial firm General Electric (NYSE:GE) filed a complaint for patent infringement against Dutch wind turbine company Vestas Wind Systems A/S

How patent quality extremism and money-can-buy-fairness have ruined the U.S. patent system
Patent reformers argue that too many patents can hurt business, and low-quality patents cause problems

EFF has Federal Circuit’s ear in podcast patent win
Yesterday, August 7, the Federal Circuit affirmed a decision made by the Patent Trial and Appeal Board (PTAB) to invalidate a patent focused on podcast technology

International report – Public universities are immune from inter partes review, but are their patent co-owners?
The 2017 decisions in NeoChord, Inc v University of Maryland (IPR2016-00208) and Covidien LP v University of Florida Research Found Inc (IPR2016-01274) addressed the issue of whether sovereign immunity reserved to states under the Eleventh Amendment may be asserted by public universities in inter partes review proceedings

International report – New case law potentially turns the tide of patent lawsuits fleeing favoured venues
The decision in TC Heartland LLC v Kraft Foods Group Brands LLC, handed down by the Supreme Court in late May 2017, caused a minor scramble among patent owners to find suitable and accessible alternative forums in which to litigate infringement claims

Patent Quality Isn’t the Question. Patent Value is the Question
“It’s not very helpful to talk about quality,” said former Chief Judge Michel

USITC to investigate Qualcomm complaint in Apple war
In July this year, semiconductor company Qualcomm filed a complaint with the ITC, accusing Apple of infringing six of its patents in the iPhone model and requesting a ban on imports

International report – CIPO consultation on proposed Patent Rule amendments
The Canadian Intellectual Property Office (CIPO) is conducting a public consultation on proposed amendments to the Patent Rules

The Immunotherapy Patent Landscape: Types of patent claims for immunotherapeutic inventions
Immunotherapy has emerged as one of the most promising mechanisms to combat diseases like cancer and microbial infections

ITC opens patent infringement investigation after Qualcomm files complaint against Apple
On Tuesday, August 8th, the U.S. International Trade Commission (ITC) announced that it was opening up an investigation on claims that Cupertino, CA-based consumer electronics behemoth Apple Inc. (NASDAQ:AAPL) is infringing upon patented technologies, specifically baseband processor modems, in its mobile electronic devices

Federal Circuit invalidates another patent upheld at PTAB after IPR
On Friday, August 4th, the U.S. Court of Appeals for the Federal Circuit issued a decision in Homeland Housewares, LLC v. Whirlpool Corporation, which ought to be completely unnerving to every owner of a U.S. patent grant. Hearing an appeal from a decision of the Patent Trial and Appeal Board (PTAB), the panel voted 2-1 in favor of Homeland Housewares and overturned a final written decision that had confirmed that challenged claims from a Whirlpool patent were valid

High patent quality standards have caused U.S. to lose technological advantages
In the first article of this series, I demonstrated that the U.S. has a technological crisis. In this article, I will show that the high patent quality standards have caused U.S. to quickly lose technological advantages

MA State Senator Eric Lesser makes push towards reform on bad faith patent assertions
On Wednesday, August 2nd, news and opinion site HuffPost published a piece authored by Massachusetts State Senator Eric P. Lesser (D), which is titled Patent Trolls Are Trolling Startups In Massachusetts – And We Need To Change That. The piece attempts to engage readers by taking a situation from the HBO sitcom Silicon Valley and apply it to real world business activities currently ongoing within the state of Massachusetts

Federal Circuit throws out $2.8m fees in Fossil dispute
The US Court of Appeals for the Federal Circuit has thrown out an award of $2.8 million in attorneys’ fees and costs in a patent and trademark infringement suit against fashion brand Fossil


‘Monkey selfie’ case nears conclusion
The motion (pdf) was filed on Friday, August 4, in the US Court of Appeals for the Ninth Circuit

KickAss properly charged with copyright infringement, says US judge
In October last year, lawyers representing Artem Vaulin claimed that “torrent sites do not violate criminal copyright laws”, in a motion to dismiss a lawsuit

International report – Witness credibility and adducing reliable evidence in copyright infringement cases
The Federal Court in Premium Sports Broadcasting Inc v 9005-5906 Québec Inc (Resto-bar Mirabel) (2017 FC 590) recently dismissed a copyright infringement action on a summary trial motion

Leveraging copyright protection for design aspects of useful products
As of late, there has been a great deal of discussion about the Supreme Court’s Star Athletica decision regarding the scope of copyright protection for design features incorporated into useful products

Tupac Shakur film producers try to dismiss copyright suit
Lions Gate Films and Morgan Creek Productions, along with two others, claimed that magazine writer Kevin Powell had failed to state a claim and have requested a dismissal, in a filing made on Monday, August 7

Intellectual Property

Kering dismisses Alibaba suit, forms IP task force
Luxury group Kering has agreed to form an IP alliance with Alibaba, after dismissing a lawsuit against the e-commerce platform

Can cake designs result in intellectual property protection?
Cake isn’t usually a hot topic in the world of law, but at President Donald Trump’s inauguration celebrations earlier this year, cake became a huge matter of debate

Netflix comic books buy allows freedom from IP licensing deals: lawyers
Lawyers have described Netflix’s purchase of comic books company Millarworld as a strong step towards being less reliant on IP licensing deals

Domain Name

Clifford Chance recovers .email domain used for profit
Clifford Chance filed a complaint in June at the World Intellectual Property Organization Arbitration and Mediation Center, requesting transfer of


Mike Tyson aims for knock-out blow to online seller
Former world heavyweight champion boxer Mike Tyson has sued a man who ran an online store selling t-shirts and pretended they were officially licensed in order to strike deals with major companies

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