Seven Key Intellectual Property Law Developments From 2017

As The First Month of 2018 Comes To a Close, It Is Important to Note Several Key Intellectual Property Law Developments From Last Year

Intellectual property disputes dominated legal headlines in 2017. It was also a particularly busy year for IP cases at the U.S. Supreme Court.

Throughout last year, Scarinci Hollenbeck’s Intellectual Property and Technology Law Practice Groups analyzed key court decisions, monitored state and federal IP legislation, Technology Law and tracked legal trends. In addition to providing legal guidance to our clients, we also shared many of our insights on the firm’s website.

Below is a brief summary of seven key Intellectual Property law developments that occurred in 2017:

(1) Patent Venue: In TC Heartland v. Kraft Foods Group Brands, 581 U. S. ____ (2017), the Supreme Court held that, “a domestic corporation ‘resides’ only in its state of incorporation for purposes of the patent venue statute.” In the wake of the Supreme Court’s decision, the lower courts struggled with whether improper venue claims have already been waived. In Re Micron, The Federal Circuit Court of Appeals held that TC Heartland, which should allow for venue transfer in many more patent infringement cases.

(2) Patent Exhaustion: In Impression Products, Inc. v. Lexmark International, Inc., the U.S. Supreme Court held that a patent holder’s sale of a product exhausts all of its patent rights in that item, regardless of any restrictions it purports to impose. The Court further found that an authorized sale exhausts all rights under the Patent Act regardless of whether the product is sold inside or outside of the United States.

(3) Dr. Seuss and Fair Use: Who’s Holiday! got the green light, just in time for the holiday season. A United States District Court Judge in the Southern District of New York ruled that because the play is a parody, it is protected by the doctrine of fair use and does not constitute copyright infringement. The play, which chronicles the misadventures of Cindy Lou Who from Dr. Seuss’ classic Christmas tale The Grinch Who Stole Christmas, was sidelined after Dr. Seuss Enterprises L.P. alleged that it had violated its copyright in the children’s book.

(4) Designate DCMA Agents (Again): The U.S. Copyright Office’s new electronic system to designate and search for agents to receive notifications of claimed infringement under the Digital Millennium Copyright Act (DMCA) went live in 2017. To preserve protection under the DMCA’s safe harbor provisions, service providers were required to designate an agent under the DMCA using the new online system by December 31, 2017. The requirement applies even if a designation was previously made under the old system.

(5) Copyright Protection for Uniform Designs: In Star Athletic v. Varsity Brands, the U.S. Supreme Court held that the design of a cheerleading uniform was eligible for copyright protection. Under 17 U. S. C. $101, the “pictorial, graphic, or sculptural features” of the “design of a useful article” are eligible for copyright protection as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” In its decision, the Supreme Court established a two-part test to determine separability: “if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.” 

(6) Counterfeit Goods: The explosion of e-commerce is fostering piracy and counterfeiting, as well as increasing the challenge of protecting intellectual property rights. According to U.S. Customs and Border Protection, it seized a record number of shipments containing goods that violated Intellectual Property Rights (IPR) in FY2016. Seizures of counterfeit and pirated goods rose nine percent in FY2016. The total estimated manufacturer’s suggested retail price (MSRP) of the 31,560 seized goods, had they been genuine, was more than $1.38 billion. To help prevent imports or exports of infringing goods, businesses should record their trademarks and copyrights with CBP. The process is fairly straightforward and may be completed online.

(7) Immoral, Scandalous and Offensive Trademarks: In  with the U.S. Patent and Trademark Office, concluding that the ban was unconstitutional under the First Amendment. Relying on the Supreme Court’s decision, the Court of Appeals for the Federal Circuit subsequently held that the federal ban on registering “immoral” or “scandalous” trademarks is also unconstitutional.

Significant legal developments will continue this year. In November, the U.S. Supreme Court heard oral arguments in Oil States v. Greene’s Energy Group and SAS Institute v. Matal. Decisions are expected by the end of the term in June. We encourage you to check back often for IP law updates and contact our attorneys with any questions about how these developments may impact you or your business.

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, at 201-806-3364.