Category Archives: Intellectual Property

New Edition! Kane on Trademark Law

PLI Press is proud to publish the new Seventh Edition of Kane on Trademark Law: A Practitioner’s Guide, a classic for more than three decades. This edition brings forth the insight and expertise of Kathleen E. McCarthy, the new author of the treatise, who is a partner in the New York office of King & Spalding, LLP, President of the New York Intellectual Property Law Association (NYIPLA), and former Editor-in-Chief of the Trademark Reporter.

McCarthy notes that, as courts try to balance the different and often conflicting interests of brand owners, competitors, consumers, reviewers, and critics, and the tensions between trademark and First Amendment protections, trademark decisions can seem inconsistent. In her analysis of the law, and her practical counsel to attorneys, she emphasizes the importance of examining all the facts, being creative in making arguments and analogies, and understanding that there are almost always exceptions to the rules and also facts that help explain the rationale for the exceptions, even if not explicitly discussed in the court opinion.

Extensively revised and updated, the Seventh Edition provides both new practical guidance and critical information on a range of topics including:

Trademark searches in the context of modern marketing practices and social media
The most effective use of surveys in court
Mandatory electronic filing of trademark applications
The best approaches to securing international registrations
Excusable nonuse of a mark by businesses required to be closed during a pandemic
The latest Trademark Office fees
Recent dilution cases
Alternatives to federal court litigation for handling false advertising claims
Tips for navigating practice before the Trademark Trial and Appeal Board

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Treatise Update – Copyright Law: A Practitioner’s Guide

Copyright Law: A Practitioner’s Guide(Second Edition) provides up-to-date analysis of court decisions and practical advice for the protection of copyrights. Written by two nationally recognized lawyers who have litigated major copyright cases, including those involving digital forms of communication, this authoritative treatise also includes a useful detailed flowchart using an actual case result to illustrate how damages and profits are calculated.

In the latest update—release #4 (September 2020) , the authors expand the book with discussion of the following topics, among others:

Unprotectable subject matter—government edicts: Government edicts, such as state statutes, ordinances, regulations, and judicial opinions, have long been deemed to be not subject to copyright. See new § 2:7.1[B].
Visual Artists Rights Act—remedies: VARA subjects violators of the attribution and integrity rights to the usual civil remedies for copyright infringement under section 501. See § 4:2.2[A], at note 325.1.
Visual Artists Rights Act—“work of recognized stature”: In Castillo v. G&M Realty, L.P., the Second Circuit held that the work in question must be “of high quality, status, or caliber that has been acknowledged as such by a relevant community.” See § 4:2.2[E], at note 341.
Deposit requirement—websites and website content: The Copyright Office has issued a circular offering guidance on the deposit process for websites and website content. See § 5:2.5, at note 28.
Registration: Resolving a circuit split, the Supreme Court has determined that registration occurs when the Copyright Office issues the certificate of registration and not when a copyright owner submits the application, materials, and registration fee to the Copyright Office. See § 5:3.1, at note 44.
Fair use—transformativeness factor: According to the Fourth Circuit, that the respective “subjective intents” of the creator of the work and of its user differ may not be of particular relevance in the transformativeness inquiry, insofar as those differences do not necessarily result in the creation of “new aesthetics or a new work.” See § 8:4.2[A], at note 86.1.
States’ sovereign immunity: The Copyright Remedy Clarification Act (1990) abrogated state sovereign immunity from actions for copyright infringement. See § 11:7.7, at note 396.

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New Edition – Art Law: The Guide for Collectors, Investors, Dealers & Artists

PLI Press is proud to announce the publication of the Fifth Edition of Art Law: The Guide for Collectors, Investors, Dealers, & Artists.

From artists to auction houses, from attorneys to appraisal experts, from dealers to collectors — every segment of the art world has found practical guidance and crucial insights in this longtime favorite treatise. Now thoroughly revised, updated, and expanded, the new edition provides more clear, readable coverage than ever before. Key documents, contracts, forms, and checklists make this popular treatise an indispensable resource.

Both authoritative and fascinating in its own right, this new edition analyzes a remarkable range of topics concerning the legal context of the business of visual art, including:

The artist-dealer relationship
How digital technology and social media affect both commerce in art and the creation of art
Tax and estate planning strategies for collectors and artists
Artists’ rights under copyright law and the First Amendment
New legal challenges for museums
Resources for dealing with art theft and artworks confiscated by the Nazis; and more.

PLI PLUS subscribers can access this title through their subscription.

If you would like to purchase a print copy, please email libraryrelations@pli.edu.

New Title – California Consumer Privacy Act Annotated

PLI Press is excited to announce the publication of a new treatise on the California Consumer Privacy Act (CCPA), the first law of its kind in the United States providing consumer privacy protections.

California Consumer Privacy Act Annotated equips businesses and practitioners with the tools they need to understand the data they collect and how that data is used, disclosed, and stored, and then develop the framework, policies, and procedures to meet the CCPA notice requirements and to respond to data subject requests. This timely book takes into account the final text of proposed regulations the Attorney General submitted to the California Office of Administrative Law on June 1, 2020.

This thorough treatise includes advice on:

Determining whether an entity meets certain size and scope thresholds to be subject to the CCPA
Evaluating whether personal information collected from consumers, households, and devices is protected under the CCPA or whether an exemption applies
Understanding the considerations surrounding the sale of personal information by a business to a third party
Drafting sound notices at collection and privacy policies
Understanding the rights the CCPA grants to consumers regarding their personal information, as well as the different exceptions and limitations to these rights, in setting up processes and procedures for compliance
Building an infrastructure and creating procedures for managing and responding to consumer requests under the CCPA
Evaluating security requirements and practices in light of the new private right of action in which consumers can seek actual damages and statutory damages for a personal information security breach that is the result of a business’s failure to use reasonable security

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Treatise Update: Post-Grant Proceedings Before the Patent Trial and Appeal Board

Post-Grant Proceedings Before the Patent Trial and Appeal Board guides readers through the process of initiating a post-grant proceeding, taking discovery, seeking sanctions, proposing and opposing claim amendments, effectively advocating at the oral hearing, appealing to the Federal Circuit, and handling a wide array of issues involving co-pending district court litigation.

Updates from Release #10 include:

In Chapter 2, the section on Claim construction discusses changes to the PTAB standard for petitions filed after November 13, 2018, from the broadest reasonable interpretation standard to the Phillips v. AWH Corp. standard used in civil actions and at the International Trade Commission. See § 2:5, at note 57.
In Chapter 3, a section on Standing—real party in interest discusses Applications in Internet Time, LLC v. RPX Corp., in which the Federal Circuit held that “the focus of the real-party-in-interest inquiry is on the patentability of the claims challenged in the IPR petition, bearing in mind who will benefit from having those claims canceled or invalidated.” See § 3:2.3[A], at note 46.
In Chapter 3, the section called Joinder discusses the first case to be taken up by the PTAB’s Precedential Opinion Panel, which determined that, under appropriate and limited circumstances, a petitioner may join its own previously instituted IPR to request joinder and institution of new issues (Proppant Express Investments, LLC v. Oren Technology, LLC). See § 3:6, at note 193.
In Chapter 8, Amendments to claims discusses the notice of proposed rulemaking put forth by the USPTO on October 21, 2019. See § 8:3.1, at note 99.
In Chapter 8, under the section Inter partes review—timelines, a new figure 8-1 depicts the anticipated trial flow of an inter partes review proceeding, depending on whether or not a second, revised motion to amend is filed by the patent owner. See § 8:3.1.
Chapter 14, Appeals to the Federal Circuit includes updated information on the number of PTO appeals filed in the CAFC. See § 14:1, at note 2.

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Treatise Update: Trade Secrets

Trade Secrets: A Practitioner’s Guide is an indispensable resource that discusses all aspects of protecting trade secrets. It covers what a trade secret is, how it should be protected, and what to do when its secrecy is compromised. Trade Secrets examines in detail what trade secret misappropriation is, how can you prove it in court, how you can protect trade secret information during the course of litigation, and how you can gain appropriate legal and monetary remedies for clients for proven violations. It compares and contrasts trade secret protection with other forms of intellectual property such as copyright, patents, and trademarks.

This release updates and expands the text with new discussions of the law of trade secrets and related topics, including the following:

State statutory preemption of common law: The Fifth Circuit, reversing the district court in material part, held that the Louisiana Uniform Trade Secrets Act does not preempt civil law claims for conversion of information that does not constitute trade secrets (Brand Services, L.L.C. v. IREX Corp.). See § 1:5.5, at note 60.1.
Patent versus trade secret: In SAP America, Inc. v. Investpic, LLC, the Federal Circuit held that allegedly novel ideas for applying statistical techniques to financial information were unpatentable abstract ideas. If they were protectable at all, they were protectable as trade secrets. See §2:3.4, at note 87.40.
Secrecy: In CPI Card Group, Inc. v. Dwyer, the federal district court in Minnesota found that plaintiff CPI did not assure secrecy in emails that included alleged trade secrets. Although it could point to general measures it took to protect confidential information, “CPI has not shown a likelihood of proving that it took reasonable measures to protect the secrecy of the contents of this particular presentation.” See §4:13.1, at note 107.1.
Jury instructions: On December 6, 2018, the Florida Supreme Court approved changes in standard form jury instructions for trade secrets misappropriation cases; the new instructions are reproduced in chapter 12. See § 12:11.2, at note 127.1.
Remedies—disgorgement: In Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., the Federal Circuit held that a trade secret owner did not have the right to have a jury decide its claim for disgorgement of profits as a remedy for misappropriation. See § 13:3.5, at note 324.14.

This treatise is available on PLI PLUS. If you would like to order a print copy, please contact libraryrelations@pli.edu.

Treatise Update: Faber on Mechanics of Patent Claim Drafting

More patent applications are rejected because of claim drafting flaws than because of problems with inventions. A trusted working tool for more than two decades, Faber on Mechanics of Patent Claim Drafting spotlights proven claim drafting practices and techniques that have been firmly established by patent authorities and custom. Faber on Mechanics of Patent Claim Drafting also provides full coverage of U.S. Supreme Court and other court decisions critical to claim drafting.

In the latest release, author Robert C. Faber updates and expands his treatise with practical information and commentary on a variety of issues affecting patent claim drafting. Among the topics covered are the following:

Patent Office guidance: In November 2018 and January 2019, the USPTO issued updated guidance memorandums for examiners and administrative patent judges relating to (1) subject matter eligibility of patent claims under 35 U.S.C. § 101 and (2) examination of functional claim limitations under 35 U.S.C. § 112. The author highlights important points from these documents. See Chapter 1. Statutory Provisions—Some Basic Principles.
Preamble: The Federal Circuit notes that a preamble limits the invention if it recites an essential structure or step or is necessary to give life, meaning, and vitality to the claim. A preamble is not limiting when a patent claim defines a structurally complete invention in the claim body, which is after the preamble, and the preamble only states a purpose or intended use for the invention claimed (Acceleration Bay, LLC v. Activision Blizzard Inc.). See Chapter 2. Claim Forms and Formats in General.
Indefiniteness: According to a federal district court in Texas, when the specification has two different meanings for the same word or term, and the claim includes the different meanings for that word or term, the claim thereby lacks sufficient “objective boundaries,” so that the claim is indefinite and invalid (Intellectual Ventures LLC v. T-Mobile USA, Inc.). See Chapter 3. Apparatus or Machine Claims.
Claim differentiation: According to the Federal Circuit, if a dependent claim contains additional limitations not present in the independent claim, then—under the doctrine of claim differentiation—the limitations cannot be applied to limit the independent claim, since the specification does not limit the invention to those additional limitations (Knowles Electronics LLC v. Iancu). See Chapter 8. Nonart Rejections.

This essential treatise is available on PLI PLUS. If you would like to order a print copy, please contact libraryrelations@pli.edu.

Sign Up Today — PLI PLUS Practice Area Webinars

PLI is introducing a monthly webinar series on PLI PLUS for law school librarians. Each monthly webinar will cover a different practice area; while also demonstrating the overall functionality of the research database.

These webinars are meant to be a convenient way to learn more about PLI content in an area of the law. Each webinar will start with an overview of relevant PLI resources to be followed by three research scenarios. Attendees are welcome to submit their own research questions and scenarios up to one week prior to the webinar.

If you are interested in participating, please send an RSVP to PLUS@pli.edu.

Upcoming webinars:

MARCH: Wednesday, March, 27, 2019, 2:00pm ET: Intellectual Property Law

APRIL: Wednesday, April 24, 2019, 2:00pm ET: Cybersecurity

MAY: Wednesday, May 29, 2019, 2:00pm ET: Immigration Law

Stay tuned for the summer schedule!

Copyright Law Treatise Update!

Written by two nationally recognized lawyers who have litigated major copyright cases, Copyright Law: A Practitioner’s Guide (Second Edition), provides up-to-date analysis of court decisions and practical advice for the protection of copyrights. In this release, the authors update and expand your book with discussion of the following topics, among others:

Pre-1972 sound recordings: Under the Classics Protection and Access Act of 2018, sound recordings fixed before February 15, 1972 (previously outside the scope of federal copyright laws)are, as of October 11, 2018, afforded rights and remedies largely analogous to those enjoyed by sound recordings that have always been within the subject matter and protections of the Copyright Act.
Standing: According to the Ninth Circuit, a suit brought in the name of an animal may state a case or controversy for Article III purposes, but does not expressly authorize animals to file copyright infringement suits” (Naruto v. Slater).
First sale doctrine—electronic transmissions: in Capital Records,LLC v. ReDigi, Inc., the Second Circuit concluded that ReDigi—a business built on allowing users to “resell” uploaded digital copies to other users—infringed the plaintiffs’ reproduction right, rejecting application of the first sale doctrine as a defense. The court held that the ReDigi technology allowed for a reproduction of the digital file in a new material object “for a period of more than a transitory duration,” both in ReDigi’s server and in the new purchaser’s device. That results in the creation of a new phonorecord, which is a reproduction.
Fair use—parody: According to a New York federal district court, a one-woman play written in the style of Dr. Seuss and featuring a forty-five-year-old version of Cindy-Lou Who parodied How the Grinch Stole Christmas! And qualified as a fair use (Lombardo v. Dr. Seuss Enterprises, L.P.).

This essential treatise is available on PLI PLUS. If you would like to order a print copy, please email libraryrelations@pli.edu.

2018 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit

Each year, the Federal Circuit Yearbook provides a concise, comprehensive review of every patent decision published by the U.S. Court of Appeals for the Federal Circuit during the preceding year. With the Yearbook, readers may conveniently follow all recent patent law developments in the Federal Circuit, presented in a manner that reduces specialized patent and technical jargon to a minimum.

Cases summarized in the Yearbook include the following, among many others:

Utility and Inventions Patentable: Where claims “are substantially similar and linked to the same” law of nature, analyzing representative claims is proper. Section 101 issues may be resolved at the pleading stage before formal claim construction: “we have repeatedly affirmed § 101 rejections at the motion to dismiss stage, before claim construction or significant discovery has commenced.” See Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v. True Health Diagnostics LLC, discussed in § 1:1.

Novelty and Statutory Bars: Federal Circuit concludes that inventor declaration without corroborating evidence alone is not always sufficient to overcome section 102(e) prior art. Despite prior case law (particularly in the U.S. Court of Customs and Patent Appeals), Federal Circuit seems to move law under section 102(e), directed to showing prior disclosure subject matter was not “by another,” closer to case law under section 102(g), directed to showing prior inventorship. See EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc., discussed in § 2:4.

Nonobviousness: Circuit Judge Newman, in dissent, urged that it is time to “remedy” the Graham analysis—namely that the objective factors should be considered together with the first three Graham factors rather than first determining whether a prima facie case of obviousness had been shown. See Merck Sharp & Dohme Corp. v. Hospira, Inc., discussed in § 3:7.

Claim Construction: Using functional language in an apparatus claim does not necessarily mean that the claim improperly covers both an apparatus and method. Functional language described capabilities of a system rather than user actions. See MasterMine Software, Inc. v. Microsoft Corp., discussed in § 6:5.

The 2018 Federal Circuit Yearbook is available on PLI PLUS, our online research database. If you’d like to purchase a print copy, please email libraryrelations@pli.edu or call 877.900.5291.