David Kincaid and Michelle Ciotola explore the findings of the latest US Copyright Office report, Copyright and Artificial Intelligence, Part 2: Copyrightability, the legal framework governing AI-generated works, and the potential challenges and opportunities for IP practitioners. Their article, Copyrightability in AI-generated works at the United States Copyright Office, appears in the Trademark Lawyer Magazine.

What’s in a name? Ninth Circuit OKs keyword ad “conquesting” 
This article covers a decision from the U.S. Court of Appeals for the Ninth Circuit subsequently upholding the judgment, clarifying its belief that the ad practice is on solid legal ground and a brief sidebar highlights a different case from the U.S. Court of Appeals for the Second Circuit involving a competitor’s use of trademarks in keyword search advertisements. 

Expert’s “word salad” leads to tossed patent verdict 
This article summarizes a decision from the U.S. Court of Appeals for the Federal Circuit, finding the patent owner’s expert testimony fell short of that needed for an infringement claim based on the doctrine of equivalents. 

Court closes the book on free digital library
This article looks at a decision from the U.S. Court of Appeals for the Second Circuit attempting to balance these interests in a copyright infringement case.

Patent experts can acquire “ordinary skill” belatedly
This article discusses Osseo Imaging, LLC v. Planmeca USA Inc., in which the Federal Circuit opines on the question of when experts, testifying about the perspective of a “person of ordinary skill in the art,” should themselves have acquired that knowledge. 

What’s in a name? Ninth Circuit OKs keyword ad “conquesting” 
This article from Cantor Colburn's April/March 2025 IP Newsletter covers a decision from the U.S. Court of Appeals for the Ninth Circuit subsequently upholding the judgment, clarifying its belief that the ad practice is on solid legal ground and a brief sidebar highlights a different case from the U.S. Court of Appeals for the Second Circuit involving a competitor’s use of trademarks in keyword search advertisements. 
Lerner & Rowe PC v. Brown Engstrand & Shely LLC, No. 23-16060 (9th Cir. Oct. 22, 2024); 1-800 Contacts, Inc. v. JAND, Inc., No. 22-1634 (2d Cir. Oct. 8, 2024).

Expert’s “word salad” leads to tossed patent verdict Attorneys never want a court to describe their expert witness’s testimony as “word salad” — especially when particularized testimony is required to win the case. A patent owner learned this lesson the hard way. This article from the April/May 2025 Cantor Colburn IP Newsletter summarizes a decision from the U.S. Court of Appeals for the Federal Circuit, finding the patent owner’s expert testimony fell short of that needed for an infringement claim based on the doctrine of equivalents. NexStep, Inc. v. Comcast Cable Communications, LLC, No. 22-1815 (Fed. Cir. Oct. 24, 2024). 

While licensing fees for digital books may burden libraries and reduce access to creative work, authors demand compensation for the copying and distribution of their original creations. This article from the April/May 2025 Cantor Colburn IP Newsletter looks at a decision from the U.S. Court of Appeals for the Second Circuit attempting to balance these interests in a copyright infringement case.
Hachette Book Group, Inc. v. Internet Archive, No. 23-1260 (2d Cir. Sept. 4, 2024).

Anyone involved with patent cases is likely to come across the term “person of ordinary skill in the art” or some derivation. It generally refers to a hypothetical person with knowledge in the field to which a patented invention relates. But at what point in time must an expert testifying from such a perspective have acquired that knowledge? This article from the April/May 2025 Cantor Colburn IP Newsletter discusses a decision from the U.S. Court of Appeals for the Federal Circuit weighing in on this question.Osseo Imaging, LLC v. Planmeca USA Inc., No. 23-1627 (Fed. Cir. Sept. 4, 2024).

Although an individual musical note isn’t copyrightable, an arrangement of notes may be. Does the same reasoning apply to source code for software? This article from Cantor Colburn's February/March 2025 IP Newsletter summarizes Compulife Software, Inc. v. Newman, a case from the U.S. Court of Appeals for the Eleventh Circuit on this question.

So-called “prior art” that makes an invention obvious can lead to a patent being found invalid. But what seems like prior art may not be. This article from Cantor Colburn's February/March 2025 IP Newsletter discusses Sanho Corp. v. Kaijet Technology Ltd., Inc., No. 23-1336 (Fed. Cir. July 31, 2024), a case from the U.S. Court of Appeals for the Federal Circuit that explored an exception to the rule and whether a private sale of an invention would qualify.

Where does the First Amendment end and federal trademark law begin? That was the question in a case before the U.S. Court of Appeals for the Sixth Circuit involving the alleged infringement of a political party’s trademark. This article from Cantor Colburn's February/March 2025 IP Newsletter summarizes the court’s decision providing some valuable insight on the far-reaching impact of a 2023 ruling by the U.S. Supreme Court regarding infringement liability under the Lanham Act. Libertarian Nat’l Committee, Inc. v. Saliba, No. 23-1856 (6th Cir. Aug. 28, 2024); Jack Daniel’s Properties v. VIP Prods. LLC, 599 U.S. 140 (2023).

Registering certain trademarks requires including a specific kind of example use, or “specimen,” as part of the application. This article from the Cantor Colburn February/March 2025 IP Newsletter looks at a new decision from the Trademark Trial and Appeal Board highlighting the importance of submitting the correct specimen. In re Gail Weiss, Serial No. 88621608 (T.T.A.B July 31, 2024).

Don’t Copy That - Software Code Arrangement is Protectable 
This article summarizes Compulife Software, Inc. v. Newman, a case from the U.S. Court of Appeals for the Eleventh Circuit on this question.

When private sales don’t count as public disclosure of prior art
This article discusses Sanho Corp. v. Kaijet Technology Ltd., Inc., No. 23-1336 (Fed. Cir. July 31, 2024), a case from the U.S. Court of Appeals for the Federal Circuit that explored an exception to the rule and whether a private sale of an invention would qualify.

Does First Amendment bar trademark infringement liability? 
This article summarizes the court’s decision providing some valuable insight on the far-reaching impact of a 2023 ruling by the U.S. Supreme Court regarding infringement liability under the Lanham Act. Libertarian Nat’l Committee, Inc. v. Saliba, No. 23-1856 (6th Cir. Aug. 28, 2024); Jack Daniel’s Properties v. VIP Prods. LLC, 599 U.S. 140 (2023).

Lack of proper documentation dooms trademark registration 
This article looks at a new decision from the Trademark Trial and Appeal Board highlighting the importance of submitting the correct specimen. In re Gail Weiss, Serial No. 88621608 (T.T.A.B July 31, 2024).

"Dupe culture clash: strategies for brand owners," by Michelle Ciotola in The Trademark Lawyer Magazine Annual 2025 issue covers the rise of “dupe culture” and the role social media plays in marketing dupe products, providing strategies for brand owners to protect their intellectual property in this space.

Steven M. Coyle, Partner and Litigation Chair at Cantor Colburn, reviews the Federal Circuit’s recent decision to discard the Rosen-Durling test, eliminating previously key factors for determining obviousness, in The Patent Lawyer Magazine U.S. Jurisdictional Briefing in the Annual 2025 issue.

Defend Trade Secrets Act:
Do trade secret damages include foreign sales?
Motorola Solutions, Inc. v. Hytera Communication Corp. Ltd., Nos. 22-2370, -2418 (7th Cir. July 2, 2024).

When a “skinny label” results in induced patent infringement
Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc., No. 23-1169 (Fed. Cir. June 25, 2024).

Back to the drawing board:
Federal Circuit establishes new design patent test
LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348 (Fed. Cir. May 21, 2024).

Political ad’s meme isn’t permissible fair use of copyrighted image
Griner v. King for Congress, Nos. 22-3623 (8th Cir. June 7, 2024).

A federal appellate court has weighed in for the first time on the question of whether the Defend Trade Secrets Act (DTSA) extends to conduct outside of the United States — thereby opening the door to damages for foreign sales. In Motorola Solutions, Inc. v. Hytera Communication Corp. Ltd., the U.S. Court of Appeals for the Seventh Circuit ruled that the plaintiff may recover all of the defendant’s profits from global sales of products incorporating the plaintiff’s trade secrets. This article looks at the effect of the DTSA on an owner’s claim for damages, while a short sidebar covers why the court declined to similarly extend the Copyright Act.

Motorola Solutions, Inc. v. Hytera Communication Corp. Ltd., Nos. 22-2370, -2418 (7th Cir. July 2, 2024).

"Skinny labels” for generic drugs are intended to help the manufacturers avoid patent infringement liability by describing only nonpatented uses. But a generic manufacturer learned the hard way that a skinny label doesn’t ensure immunity when it comes to liability for induced infringement. This article explains why clarity and consistency in manufacturers’ communications about a skinny label drug may be essential to avoid liability for induced infringement.

Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc., No. 23-1169 (Fed. Cir. June 25, 2024).

The U.S. Court of Appeals for the Federal Circuit, which hears all patent-related appeals, has overruled the long-standing test for whether a design patent is obvious. In its place, the court adopted a more flexible test that could make it more difficult to obtain design patent protection. 

LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348 (Fed. Cir. May 21, 2024).

Online memes, which began largely as funny images circulated widely online with various jokes attached, are nothing new, and they’re now the target of litigation. This article highlights a recent ruling shedding light on how copyright law intersects with the world of memes.

Griner v. King for Congress, Nos. 22-3623 (8th Cir. June 7, 2024).

Closing trademark’s borders
No recovery for infringer’s purely foreign sales
This article reviews a case in which the court found no trademark infringement recovery for purely foreign sales. A short sidebar reviews the court’s findings about disgorging foreign-sale profits.
Hetronic Int’l, Inc. v. Hetronic Germany GmbH, Nos. 20-6057, 20-6100 (10th Cir. April 23, 2024).

Are AI systems patent-eligible?
This article summarizes a case regarding questions about the eligibility of artificial intelligence (AI) systems for patent protection and the court’s conclusion that the patents’ claims covered an abstract idea.
AI Visualize, Inc. v. Nuance Communications, Inc., No. 20-6057, 22-2019 (Fed. Cir. April 4, 2024).

Copyright’s fair use defense faces higher bar after Warhol
 This article reminds readers that if works don’t target the original work itself, the fair use defense may fail.
Whyte Monkee Productions, LLC v. Netflix, Inc., No. 22-6068 (10th Cir. March 27, 2024); Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023).

How unclean hands doomed patent infringement claims
 This article discusses how the legal doctrine of unclean hands can similarly sully legitimate infringement claims.
Luv N’ Care, Ltd. v. Laurain, Case No. 22-1905 (Fed. Cir. Apr. 12, 2024).

Small children can get their hands dirty in many ways. A patent case involving a dining mat for kids illustrates how the legal doctrine of unclean hands can similarly sully legitimate infringement claims. This article discusses how a party’s misconduct rose to the level of unconscionable acts.

Luv N’ Care, Ltd. v. Laurain, Case No. 22-1905 (Fed. Cir. Apr. 12, 2024).

The impact of the U.S. Supreme Court’s 2023 intellectual property rulings continue to roll out in the lower courts. The high court’s guidance regarding the application of the fair use defense to copyright infringement recently played a key role in a case involving Netflix’s popular “Tiger King” docuseries. This article reminds readers that if works don’t target the original work itself, the fair use defense may fail.

Whyte Monkee Productions, LLC v. Netflix, Inc., No. 22-6068 (10th Cir. March 27, 2024); Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023).

A ruling from the U.S. Court of Appeals for the Federal Circuit, which hears all patent-related appeals, raises questions about the eligibility of artificial intelligence (AI) systems for patent protection. The system in the case ran into trouble with the so-called Alice test (named for the case where it originated) for patent eligibility. This article summarizes the case and the court’s conclusion that the patents’ claims covered an abstract idea.

AI Visualize, Inc. v. Nuance Communications, Inc., No. 20-6057, 22-2019 (Fed. Cir. April 4, 2024).

One year after the U.S. Supreme Court limited the reach of the federal trademark law beyond American borders, the trademark owner in the underlying case has learned how the ruling will affect its claims. It probably isn’t too happy with the result. This article reviews a case in which the court found no trademark infringement recovery for purely foreign sales. A short sidebar reviews the court’s findings about disgorging foreign-sale profits.

Hetronic Int’l, Inc. v. Hetronic Germany GmbH, Nos. 20-6057, 20-6100 (10th Cir. April 23, 2024).

Steven M. Coyle, Chair of Cantor Colburn's Litigation Practice, introduces the new Non-Compete Clause Rule, outlining its ramifications alongside the specific notice requirements for existing non-compete clauses in workers’ employment agreements, in the article, "FTC bans most employee non-compete agreements," in the July/August 2024 issue of the Patent Lawyer Magazine.

Creativity doesn’t have to be fancy: “Run-of-the-mill” certificate qualifies for copyright protection
Premier Dealer Servs. Inc. v. Allegiance Admr’s LLC, No. 23-3394 (6th Cir. Feb. 26, 2024).
Ragan v. Berkshire Hathaway Automotive, Inc., No. 22-3355 (8th Cir. Feb. 2, 2024).

Filing delay costs trademark holder infringement damages
Rolex Watch USA, Inc. v. BeckerTime, LLC, No. 22-10866 (5th Cir. March 21, 2024).

When (and whether) contradictory claim language invalidates a patent
Maxell, Ltd. v. Amperex Technology Ltd., No. 23-1194 (Fed. Cir. March 6, 2024).

Do operating manuals qualify as “printed publications” under patent law?
Weber, Inc. v. Provisur Techs., Inc., Nos. 22-1751, -1813 (Fed. Cir. Feb. 8, 2024).

Copyright protection applies only to original works — but you might be surprised at just how low the bar for originality is under federal copyright law. This article reviews a case involving an auto dealer’s loyalty certificate in which the court found that even “the dull and workaday” can qualify for protection. A short sidebar covers a different case involving an auto dealer’s customer intake form in which the court concluded that the form lacked the necessary originality.
Premier Dealer Servs. Inc. v. Allegiance Admr’s LLC, No. 23-3394 (6th Cir. Feb. 26, 2024).
Ragan v. Berkshire Hathaway Automotive, Inc., No. 22-3355 (8th Cir. Feb. 2, 2024).

A federal appellate court recently upheld a lower court’s finding of trademark infringement. So far, so good for the trademark holder. But that wasn’t the end of the story. The court also ruled that the holder’s delay in pursuing its infringement claim barred it from recovering disgorgement damages. This article summarizes the consequences of a plaintiff dragging its feet when it came to asserting its trademark.
Rolex Watch USA, Inc. v. BeckerTime, LLC, No. 22-10866 (5th Cir. March 21, 2024).

“Indefinite” patent language can invalidate a patent, leaving it unenforceable and creating a cascade of negative consequences for a company or individual relying on its protections. The U.S. Court of Appeals for the Federal Circuit, the court that hears all patent-related appeals, has shed some light on how contradictory language can affect the indefiniteness analysis. This article reminds practitioners that contradictory claim language can invalidate a patent, so careful crafting is essential.

Maxell, Ltd. v. Amperex Technology Ltd., No. 23-1194 (Fed. Cir. March 6, 2024).

It’s well established that existing patents can render an invention unpatentable for obviousness. But patents aren’t the only kind of “prior art” that can undermine patentability. This article discusses how other printed publications — including operating manuals prepared for customers — also might invalidate an invention’s patent.
Weber, Inc. v. Provisur Techs., Inc., Nos. 22-1751, -1813 (Fed. Cir. Feb. 8, 2024).

Michelle Ciotola and David Kincaid co-authored the article, "Exploring the impact of artificial intelligence (AI) in everyday trademark practice before the USPTO," in Issue 3, 2024 of The Trademark Lawyer Magazine.

Parody shoe can’t outrun trademark infringement claim
The U.S. Court of Appeals for the Second Circuit has won the race to be the first appellate court to apply the U.S. Supreme Court’s recent ruling in Jack Daniel’s Properties, Inc. v. VIP Products LLC regarding the use of trademarks in expressive works. The case involved a highly popular “skater” (skateboard enthusiast) shoe made by globally known footwear and apparel manufacturer Vans. This article summarizes the appellate court’s decision and how it may provide a helpful indication of how the Supreme Court’s ruling will play out. A brief sidebar looks at how courts review parodic intent’s effect on the likelihood of confusion.
Vans, Inc. v. MSCHF Product Studio, Inc., No. 22-1006 (2d Cir. Dec. 5, 2023); Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S. June 8, 2023).

Is there a substitute for the human touch? AI-generated work isn’t copyrightable
Artificial intelligence (AI) seems to be everywhere these days. One place it keeps popping up is in applications submitted to the U.S. Copyright Office — where the applications have been uniformly rejected because copyrightable works require “human authorship.” This article highlights a recent submission that provides a good illustration of the difficulties presented by works created with the help of AI when it comes to obtaining copyright protections.
Second Request for Reconsideration for Refusal to Register SURYAST (Copyright Review Board, Dec. 11, 2023).

When the doctrine of equivalents results in patent infringement
As an alternative route to establishing patent infringement liability, the doctrine of equivalents comes with some strict requirements. One patentee’s failure to meet those requirements ended up costing it a hefty jury award on appeal. This article explains the doctrine of equivalents and how it affected one patentee’s claim of infringement.
VLSI Technology LLC v. Intel Corporation, No. 22-1906 (Fed. Cir. Dec. 4, 2023).

Patentee’s claim term definition comes back to haunt it
Federal patent law allows a patentee to devise its own definition for a claim term — or act as its own “lexicographer” — rather than settling for the “plain and ordinary” meaning. At first glance, this may seem like an advantage for patent holders. As this article notes though, sometimes a patentee can become a lexicographer inadvertently, with disastrous consequences.
ParkerVision, Inc. v. Vidal, No. 22-1548 (Fed. Cir. Dec. 15, 2023).

Artificial intelligence (AI) seems to be everywhere these days. One place it keeps popping up is in applications submitted to the U.S. Copyright Office — where the applications have been uniformly rejected because copyrightable works require “human authorship.” This article highlights a recent submission that provides a good illustration of the difficulties presented by works created with the help of AI when it comes to obtaining copyright protections.

Second Request for Reconsideration for Refusal to Register SURYAST (Copyright Review Board, Dec. 11, 2023).

Federal patent law allows a patentee to devise its own definition for a claim term — or act as its own “lexicographer” — rather than settling for the “plain and ordinary” meaning. At first glance, this may seem like an advantage for patent holders. As this article notes though, sometimes a patentee can become a lexicographer inadvertently, with disastrous consequences.

ParkerVision, Inc. v. Vidal, No. 22-1548 (Fed. Cir. Dec. 15, 2023).

The U.S. Court of Appeals for the Second Circuit has won the race to be the first appellate court to apply the U.S. Supreme Court’s recent ruling in Jack Daniel’s Properties, Inc. v. VIP Products LLC regarding the use of trademarks in expressive works. The case involved a highly popular “skater” (skateboard enthusiast) shoe made by globally known footwear and apparel manufacturer Vans. This article summarizes the appellate court’s decision and how it may provide a helpful indication of how the Supreme Court’s ruling will play out. A brief sidebar looks at how courts review parodic intent’s effect on the likelihood of confusion.

Vans, Inc. v. MSCHF Product Studio, Inc., No. 22-1006 (2d Cir. Dec. 5, 2023); Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S. June 8, 2023).

As an alternative route to establishing patent infringement liability, the doctrine of equivalents comes with some strict requirements. One patentee’s failure to meet those requirements ended up costing it a hefty jury award on appeal. This article explains the doctrine of equivalents and how it affected one patentee’s claim of infringement.

VLSI Technology LLC v. Intel Corporation, No. 22-1906 (Fed. Cir. Dec. 4, 2023).