August 2023

President Biden Signs Executive Order to Support U.S. Inventions

Takeaway: President Biden has signed an executive order emphasizing the use of federal funds for American-made technologies and products, with a focus on domestic manufacturing and job creation, while also requiring disclosure of manufacturing locations for inventions supported by government contracts.

President Joe Biden has signed an executive order prioritizing federal spending on “new technologies and products” that are made in the United States whenever possible. The order also requires recipients of government research and development contracts to report on the location where subject inventions are manufactured.The goal is to promote domestic manufacturing and create jobs through government-supported innovation. Additionally, it aims to address the historical lack of insight into how research investments lead to domestic manufacturing and job creation.

While concerns were raised by some groups that the order might expand manufacturing requirements to non-exclusive licenses, the final order does not impose such a policy. Biden introduced this idea during a visit to Auburn Manufacturing Inc., a company that previously faced challenges from imported fabrics and benefited from tariffs imposed under Biden’s tenure as vice president. The executive order aims to boost domestic manufacturing and job growth in the United States.

Nespresso Settles Trade Dress Suit Over Peet’s Coffee Pods

Takeaway: Nespresso USA and Peet’s Coffee have settled their trade dress dispute involving Peet’s promotion of coffee pods as Nespresso-compatible

Nespresso USA and Peet’s Coffee have settled their trade dress dispute over Peet’s use of competing coffee pods, with the terms remaining confidential. Nespresso initially alleged that Peet’s plastic coffee pods were falsely marketed as compatible with Nespresso’s brand, leading to the legal conflict. The judge trimmed certain claims saying Nespresso could not sue over trademark infringement because Nestle SA, its parent company, was the trademark holder, but Nespresso’s claims of protectable trade dress in its distinctive coffee capsules were allowed to proceed. It is noted in the complaint that this is not Nespresso’s first time going after another coffee company, stating it has sent more than 30 cease-and-desist letters since 2018 to stop other companies from selling similar-looking trade dress.


Copyright Office Says Tattoo Artist’s Work Can Be Protected

Takeaway: The Federal Copyright Office has determined that a tattoo artist’s contributions to designs make them eligible for copyright protection.

The U.S Copyright Office has responded to a dispute between tattoo artist James Hayden and Take-Two Interactive, a gaming company, regarding the use of copyrighted tattoo designs in the NBA 2K video game series. The response states that the tattoo artist’s contributions to two designs make them eligible for copyright protection, even though the Copyright Office wouldn’t have registered the designs if they contained significant public domain or third-party material. The Office approved supplementary registration for two of the designs after excluding such material. Hayden’s claims can now continue forward against the gaming company in this suit.


White House To Run AI Development Competition

Takeaway: The Biden-Harris administration has launched the AI Cyber Challenge, a two-year competition overseen by DARPA, encouraging the development of AI-based technology to automate software security with prizes totaling nearly $20 million, aiming to enhance cybersecurity across critical sectors.

The Biden-Harris administration has introduced an AI development competition named the AI Cyber Challenge, aiming to incentivize the creation of AI-based technology capable of automating the security of critical software systems. The competition, spanning two years and overseen by the Defense Advanced Research Projects Agency (DARPA), offers prizes worth almost $20 million.

The challenge’s goal is to encourage innovative solutions that can identify and address vulnerabilities in software on a large scale, aiding in safeguarding various sectors like power grids and transportation systems. Notable AI development firms such as Microsoft, Anthropic, Google, and OpenAI will provide tools and expertise to participants. DARPA has allocated $7 million to support small businesses’ participation.

The competition process involves qualifying, semifinal, and final rounds, with the Open Source Security Foundation advising and implementing the winning solutions. This initiative represents part of the administration’s broader strategy to harness AI’s potential for addressing national challenges while ensuring responsible and safe development. The White House has also gained commitments from major tech companies to prioritize safety and transparency in their AI systems.


Judge Dismisses $250 Million Lawsuit Over ‘Lord of the Rings’ Copyright Infringement

Takeaway: A California judge has dismissed a $250 million copyright infringement lawsuit filed by a fan-fiction writer against Amazon Studios and J.R.R. Tolkien’s heirs, ruling that his derivative works closely based on “The Lord of the Rings” aren’t eligible for copyright protection.

A judge in California has dismissed a $250 million copyright infringement lawsuit brought by a fan-fiction writer, Demetrious Polychron, against Amazon Studios and J.R.R. Tolkien’s heirs. The writer claimed that Amazon and Tolkien’s heirs used his fan-fiction novels as the basis for the Amazon series “The Lord of the Rings: The Rings of Power.” However, the judge ruled that Polychron’s books are derivative works closely based on Tolkien’s original “Lord of the Rings,” making them ineligible for copyright protection, and likened the situation to a previous case involving the “Rocky” film series. The lawsuit sought damages for copyright infringement and unfair competition.

Image Credit: wikipedia .org/ wiki /The_Lord_of_the_Rings:_The_Rings_of_Power


USPTO Seeks Public Input on Post-Representation Communication with Attorneys in Trademark Cases

Takeaway: The U.S. Patent and Trademark Office (USPTO) has requested public input on how to handle communication with attorneys who represented trademark applicants or registrants after their official recognition ends, considering concerns of missed deadlines and ethical obligations.

The U.S. Patent and Trademark Office (USPTO) is soliciting public input regarding the treatment of attorneys who have represented trademark applicants or registrants after the circumstances necessitating their official representation have concluded. The USPTO has sought feedback on whether it should communicate with trademark owners directly after certain events trigger the end of attorney recognition, as well as concerns over ethical obligations and missed deadlines.

The agency is considering requiring attorneys to actively withdraw from representation to ensure accurate contacts and is exploring possible transitions in its database. The USPTO has initiated a public listening session and filed a request for comments, with a deadline for comments set for October 6.


Cislo & Thomas LLP Spotlight

Congratulations to Daniel M. Cislo and Jeffrey G. Sheldon on Best Lawyers Award

Congratulations to Daniel M. Cislo, Esq. and Jeffrey G. Sheldon, Esq. on their inclusion in the 30th Edition of The Best Lawyers in America for their work in IP Litigation, Patent Litigation, Patent Law, and Trademark Law!

Dan and Jeff are both experienced IP attorneys with focus on all aspects of intellectual property, from prosecution and litigation to domestic and international licensing, having handled thousands of patent and trademark applications and hundreds of IP litigation cases.

Great work Dan and Jeff!


Los Angeles Lawyer Magazine Honors Partner Jeffrey Sheldon, Esq. with Reprint of Successful Article

An article written by Cislo & Thomas Partner Jeffrey Sheldon entitled “IP Basics for Business Lawyers” published in the Los Angeles Lawyer Magazine is being republished in Thomson Reuters in their 2023 Intellectual Property Law Review.It is unusual that a bar journal article is sufficient worthy to be republished by Thomson Reuters.

The article breaks down the different types of intellectual property and discusses the importance of intellectual property protection.

You can read the article HERE.

Great work, Jeffrey!