Year in Review: Intellectual Property Litigation Developments for 2021

From protecting your trademarks to prosecuting copyright infringement, we covered a number of important intellectual property developments in 2021...

From protecting your trademarks to prosecuting copyright infringement, we covered a number of important intellectual property developments last year. The U.S. Supreme Court issued several key decisions impacting IP rights in 2021, and Congress enacted several significant reforms.

In case you missed any of our prior articles, below are a few highlights from the past year:

• PTAB Judges: In U.S. v. Arthrex, the U.S. Supreme Court held that the administrative patent judges who make up the Patent Trial and Appeal Board (PTAB) were not constitutionally appointed under the Appointments Clause of the U.S. Constitution. To address the constitutional violation, the Court concluded that the Director of the Patent Office may review final PTAB decisions and, upon review, may issue decisions himself on behalf of the Board.
• Software Copyrights: In Google v. Oracle, the U.S. Supreme Court held that Google’s inclusion of Oracle’s software code in its Android mobile operating system constituted a fair use under U.S. copyright law. Notably, the Supreme Court did not examine the threshold issue of whether the Java API source code was eligible for copyright protection. In reaching its decision, the Court found that all four factors weighed in favor of fair use, particularly that Google’s use of the code was transformative. “Here Google’s use of the Sun Java API seeks to create new products. It seeks to expand the use and usefulness of Android-based smartphones. Its new product offers programmers a highly creative and innovative tool for a smartphone environment,” Justice Stephen Breyer wrote. “To the extent that Google used parts of the Sun Java API to create a new platform that could be readily used by programmers, its use was consistent with that creative ‘progress’ that is the basic constitutional objective of copyright itself.”
• Patent Assignment: In Minerva Surgical Inc. v. Hologic Inc., the U.S. Supreme Court declined to abolish the doctrine of patent assignor estoppel, which prohibits inventors who sell their patent rights from challenging the patent’s validity in district court. However, the Court did impose new restrictions on its use, holding that assignor estoppel applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations the assignor made in assigning the patent.
• Trademark Reform: The Trademark Modernization Act took effect on December 18, 2021. The trademark reform law establishes new post-registration reexamination and expungement procedures aimed to address the growing number of trademark registrations for marks not actually being used in commerce. The TMA also provides for a new nonuse ground for cancellation before the Trademark Trial and Appeal Board (TTAB) and provides that a trademark owner seeking injunctive relief is entitled to a rebuttable presumption of irreparable harm upon a finding of infringement or a likelihood of success on the merits.
• Copyright Reform: In December 2020, Congress passed the Copyright Alternative in Small-Claims Enforcement Act of 2020 (CASE Act), which directed the Copyright Office to establish a small claims tribunal within the U.S. Copyright Office. The Office is in the process of developing regulations to govern the Copyright Claims Board (CCB) and its procedures. According to the latest update, the CCB should begin hearing claims by spring 2022.
• Cannabis IP: Cannabis IP litigation continues to increase as the industry matures. An emerging trend in 2021 was trademark lawsuits by major brands against cannabis companies. In June, Mars Wrigley became the latest candy manufacturer to file suit against companies for selling cannabis-infused edibles in packaging that mimics its famous brands. In its suit, Mars Wrigley alleges that the defendants are infringing on Wrigley’s trademarks by selling THC-infused products that illegally resemble Skittles, Life Savers, and Starbursts. The lawsuits highlight that cannabis companies must be mindful of IP concerns when marketing cannabis products. As the industry gains legitimacy, it is coming under increased scrutiny, particularly from major brands who will not tolerate their trademarks being used to promote cannabis products.
• Protecting Domain Names: Domain name protection has become increasingly important, with domain name disputes reaching record levels in 2021.This past year, Scarinci Hollenbeck was involved in a high-profile domain name dispute involving Bill Gates’ investment firm, Cascade Investment, L.L.C. The high-profile dispute highlights that remedies are available to recover a domain name if the owner of the domain registered it in bad faith, lacks legitimate rights, and has registered a domain name which is the same or confusingly similar to a registered trademark.

The topics above represent a brief snapshot of the intellectual property law developments of 2021. To ensure that your company is poised to protect its valuable IP in the New Year, it is advisable to consult with an experienced IP lawyer who can address your unique legal concerns.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, we encourage you to contact Ron Bienstock, Libby Varghese, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.