Overview
Letter from the Editor
Dear Friends and Colleagues,
Hopefully, the last few months since the Spring edition of The Newtonian have been rewarding for you and have included plenty of summer fun. Fall is now upon us, children are back to school (thankfully!), and after more than two years of remote work due to COVID, our attorneys are transitioning back to the office. Many of us are spending at least a few days in the office now and are embracing this new pattern of hybrid work schedules.
The core of The Newtonian is the case insights prepared by each of our practice groups. Both Litigation cases in this issue present insights gleaned from Leason Ellis victories.
Patent
- Principal Patent Organizations Align to Strengthen and Streamline Standard Essential Patent Dispute Resolution
- New Canadian Patent Rules to Charge Excess Claim Fees Starting October 3, 2022
Trademark
- Nike Calls Foul on StockX for NFT Trademark Infringement
- Second Circuit Finds RISE a Weak Mark for Energy Drinks Based on Statements Made During Trademark Prosecution
Copyright
- No, It Can’t Wait: Copyright Office Recommends Against Creating Deferred Registration Examination Option
- Copyright Office Announces Study to Evaluate Best Edition Rules
Litigation
- It’s a Matter of Fact: Judicial Notice May Disprove Conclusory Pleadings
- Strategic Motion Practice Sets the Stage for Courthouse Steps Settlement
We hope you find value in this publication and the insights it contains. Please feel free to share The Newtonian with others, and to share your thoughts with us at inquiries@leasonellis.com.
Warmly,
Henry Gabathuler
Senior Associate
Editor, The Newtonian
Principal Patent Organizations Align to Strengthen and Streamline Standard Essential Patent Dispute Resolution
“International standards, and the role of patents that are essential to them, play an important role in promoting a strong national and global economy,” said USPTO Director Kathi Vidal. In July, the USPTO agreed to work with the World Intellectual Property Organization (WIPO) on joint efforts to facilitate the resolution of disputes related to standard essential patents (SEPs). Why is this so important? First, technical standards (e.g., 4G, 5G, or WiFi) are essential for the technological compatibility of modern products. SEPs are patents held by an institution that are essential to practicing a technical standard. As part of the standards-setting…
New Canadian Patent Rules to Charge Excess Claim Fees Effective October 3, 2022
Canada has been a popular jurisdiction for patent filings because of its close relationship with the United States and reasonable filing fees. Previously, there were no fees payable based on the number of claims in a Canadian patent application, making it a relatively easy decision to file an application in Canada with a large number of claims. However, new Canadian Patent Rules, effective October 3, 2022, introduced an excess claim fee structure that requires applicants and attorneys to proceed strategically if they are keen on keeping fees down. Under the new fee regime, excess claims fees will be payable twice…
Nike Calls Foul on StockX for NFT Trademark Infringement
In a collision between a global sneaker behemoth and an online sneaker resale marketplace, Nike sued StockX in the Southern District of New York in February 2022, asserting claims including trademark infringement, unfair competition, and dilution. Nike, Inc. v. StockX, LLC , 1:22-cv-00983-VEC. In its Complaint, Nike accused StockX, an online sneaker retailer, of using Nike’s famous trademarks without authorization to market non-fungible tokens (NFTs). Specifically, Nike alleged that StockX bundled NFTs bearing Nike’s trademarks with additional StockX services and unspecified benefits which Nike does not sell. Nike contended that the NFTs were branded assets that could be traded, collected,…
Second Circuit Finds RISE a Weak Mark for Energy Drinks Based on Statements Made During Trademark Prosecution
Rise. It’s something we all do in the morning, and that’s an issue for anyone seeking to monopolize the term as a trademark for drinks that help consumers wake up. In Riseandshine Corporation d/b/a Rise Brewing v. PepsiCo, Inc. , 41 F.4th 112 (2d Cir. 2022), the United States Court of Appeals for the Second Circuit vacated a preliminary injunction against PepsiCo from using the mark MTN DEW RISE for a canned energy drink. The Court held that the district court had erred in assessing the strength of the plaintiff’s RISE mark and the similarity of the products. The facts…
No, It Can’t Wait: Copyright Office Recommends Against Creating Deferred Registration Examination Option
In May 2021, Senate Judiciary Intellectual Property Subcommittee Ranking Member Thom Tillis requested that the Copyright Office study the costs, benefits, and feasibility of creating a new option for copyright registration where the examination of a claim could be deferred until requested by the applicant. Proponents of a deferred examination option cite the costs of registering multiple works that photographers and other visual artists face as a deterrent from registering a significant portion of their works under the current registration scheme. Proponents also cite the potential benefit of conserving the Copyright Office’s resources by eliminating the need to examine every…
Copyright Office Considers Program For Deferred Examination
The Copyright Office has kicked off a study on deferred examination. The study is to find a workable system for copyright applicants to submit their applications and delay examination until a later date (possibly when the work is infringed, and the applicant wishes to sue). In theory, such a system could decrease initial filing costs, which would benefit creators of many works. Another benefit is the decreased administrative burden on the Office, which loses money on every application it examines. The solution, however, raises a host of logistical and other concerns, and industry groups have offered mixed responses to the…
It’s a Matter of Fact: Judicial Notice May Disprove Conclusory Pleadings
A Leason Ellis Case On behalf of a non-profit dedicated to preserving the legacy of Paul Rudolph, the late famed architect, Leason Ellis defeated a countersuit at the pleading stage and, in the process, prevented a former Board member and his copycat organization from reclaiming copyrights that Rudolph dedicated to the public. The Paul Rudolph Foundation v. Paul Rudolph Heritage Foundation et al. , No. 20 Civ. 8180 (CM) (S.D.N.Y.). In a scathing 24-page opinion, Judge Colleen McMahon of the Southern District of New York agreed with Leason Ellis that the defendants had not only failed to plead eight of…
Strategic Motion Practice Sets the Stage for Courthouse Steps Settlement
A Leason Ellis Case On the eve of a bench trial before the Honourable Judge Lewis Liman in the Southern District of New York, Leason Ellis helped its client, Town & Country Living, amicably resolve its patent, trade secret and idea misappropriation, copyright, and breach of contract claims against HSN, Ingenious Designs and Joy Mangano after four years of hard-fought litigation. Town and Country Linen Corp. et al. v. Ingenious Designs LLC et al. , No. 1:18-cv-05075-LJL. Leason Ellis obtained key victories for its client throughout the case. Early in the case, Defendants obtained dismissal of Town and Country’s misappropriation…
