Weekly IP Takeaways

In IP Blog

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. The United States Supreme Court, in a recent copyright case (Fourth Estate Public Benefit v. Wall-Street.com) resolved a long-running circuit split on the issue of whether a copyright plaintiff can file a copyright infringement lawsuit once the filing process has been completed (submission of application, deposit, and filing fee), or whether a copyright registration must issue before a lawsuit can be commenced. The Supreme Court held that, other than limited exceptions, a copyright plaintiff cannot file suit until the registration has issued. While not a particularly challenging issue, this opinion does provide uniformity and predictability, and may prevent some forum shopping. The opinion is here. Shockingly, the opinion was unanimous.

2. The United States Supreme Court, in another recent copyright case (Rimini Street v. Oracle), also held that the language “full costs” in 17 U.S.C. Section 505 (part of the Copyright Act) does not expand what may be included as “costs” under other, more general federal statutes such as 28 U.S.C. Sections 1821 and 1920. This opinion is a bit troubling in that it seems to render potentially superfluous the “full costs” language in the Copyright Act. It could have been sloppy legislative writing. Either way, the Court has spoken. Copyright cases are subject to the general costs statutes governing other federal civil litigation. The opinion, which was also unanimous, is here.

3. The United States Patent and Trademark Office (USPTO) is proposing a new rule that would require non-U.S. trademark applicants to appoint U.S. counsel to represent such applicants before the USPTO, rather than permitting the applicants to represent themselves. Issues of rules violations, inaccurate and/or fraudulent statements of use, and the like have prompted this proposed rulemaking shown here. This is not a small issue with over 50,000 trademark applications filed in 2017 by unrepresented non-U.S. entities (many of which apparently are from China-based applicants). In fact, some portions of the Chinese government may pay or subsidize Chinese nationals to secure IP rights. Anecdotally, our firm has seen some unusual trademark file histories for applications ostensibly filed by a Canadian entity, only to have the applicant’s information changed to China after approval of the application. We have seen some questionable trademark specimens as well. This would be a welcome rule change, and potentially a boon for U.S. trademark attorneys and/or a reduction of fraudulent trademark filings.

4. Footwear rivals Skechers and Eliya are in another dispute (see here). This time, Skechers owns several U.S. design patents for sneaker designs, including a version with a bow where laces may typically be found. After Skechers sent a cease and desist letter to Eliya, Eliya filed a declaratory relief action in the Southern District of New York seeking a declaration of non-infringement and/or invalidity of Skechers’ design patents. Non-infringement would be based on a lack of substantial similarity in the appearance of the shoe designs. Invalidity is based on an apparently prior shoe design by Puma. While this matter may settle as other disputes between Skechers and Eliya have, it raises some interesting design patent issues.