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IP Newsletter - June / July 2019

June 1, 2019

June / July 2019 IP Newsletter

When a surname can be registered as a trademark
Family businesses often like to use their surname as a mark for their products and services, whether as a point of pride or simply because they feel the name is memorable. These businesses can run into obstacles, though, when it comes time to register trademarks with the surname. This article summarizes a prolonged court battle over one such mark showing how problems can arise — and how businesses can overcome them. A short sidebar discusses why the opposers’ First and Fifth Amendment claims also failed.
Schlafly v. St. Louis Brewery, LLC, No. 17-1468, Nov. 26, 2018, Fed. Cir.

Lens manufacturer loses the blame game
Circumstantial evidence seals induced patent infringement liability
It may seem apparent to patentees when someone is inducing third parties to infringe their patents, but it’s not always easy to prove in a court of law. The U.S. Court of Appeals for the Federal Circuit, which hears all patent-related appeals, recently provided a welcome reminder that sometimes circumstantial evidence can go a long way. This article reviews the court’s discussion regarding evidence requirements, as well as the proper calculation of lump-sum reasonable royalty damages.
Enplas Display Device Corp. v. Seoul Semiconductor Co., Ltd., No. 16-2599, Nov. 19, 2018, Fed. Cir.

Music platform hits a sour note
Resale of digital music violates Copyright Act
The introduction of digital works has raised a variety of questions about how the Copyright Act applies in the modern age. But one thing is now clear: Neither the first-sale doctrine nor the fair use defense allows the resale of copyrighted digital music files. This article summarizes a recent case that tackled these doctrines.
Capitol Records, LLC v. ReDigi Inc., No. 16-2321, Dec. 18, 2018, 2d Cir.

Confidential sales can trigger the on-sale bar to patentability
The U.S. Supreme Court has unanimously defeated an attempt to limit the on-sale bar in cases where an invention was sold under a confidentiality agreement. This article looks at why the secrecy about the details might keep the sale from public knowledge, but it can still block a patent under the America Invents Act (AIA).
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17-1229, Jan. 22, 2019, U.S. Sup. Ct. 

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