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April /May IP Newsletter

Cantor Colburn's Ideas on Intellectual Property Newsletter

April 1, 2022

Screenwriter’s copyright returns from the dead
Labor law doesn’t control work-for-hire determination
Employee or independent contractor? The answer is critical for a variety of rights, and multiple tests have been developed under employment law. But, in Horror, Inc. v. Miller, the U.S. Court of Appeals for the Second Circuit found those tests aren’t determinative when it comes to copyright issues. This article reviews the employment status — and thus copyright ownership — of a screenwriter for the successful “Friday the 13th” movies.
Horror, Inc. v. Miller, No. 18-3123 (2d Cir. Sept. 30, 2021).

Failures of “prior art” undermine obviousness challenge to patent
“Prior art” can make a patent obvious and therefore unpatentable. But what about previous research that fails? Does it defeat a patent for an invention that succeeded? This article reviews a decision from the U.S. Court of Appeals for the Federal Circuit, which found that where the prior art shows only failures to achieve what the inventor accomplished, the court couldn’t find an expectation of success based on that prior art.
University of Strathclyde v. Clear-Vu Lighting, LLC, No. 20-2243 (Fed Cir. Nov. 4, 2021).

Potential trademark injury not enough for federal jurisdiction
For the first time, the U.S. Court of Appeals for the Federal Circuit recently considered what a trademark challenger must show to establish the standing required under the U.S. Constitution to appeal a decision of the Trademark Trial and Appeal Board (TTAB). This article summarizes the court’s conclusion in Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, which resulted in a mixed bag for one challenger.
Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, No. 20-2277 (Fed Cir. Oct. 27, 2021).

Federal Circuit limits disqualifying prior art for design patents
Can the existence of a similar-looking art tool anticipate or render obvious a patent for the design of an item used in plastic surgery? Fortunately for a design patent applicant in In re: SurgiSil, L.L.P., the U.S. Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board erred in finding that the art tool anticipated a lip implant, rendering the implant’s design unpatentable. This article summarizes the case and the concept of “anticipation.”
In re: SurgiSil, L.L.P., No. 20-1940 (Fed Cir. Oct. 4, 2021).

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