Street Art, Copyright Infringement, and De Minimis Use

The legal protections afforded to graffiti and “street art” artists have gained increased visibility in recent months. But while street art may be entitled to certain protections under the law, not every use of street art without permission will violate an artist’s rights. A recent decision from the U.S. District Court for the Southern District of New York highlights this, finding that de minimis use of graffiti in a television production without the artist’s permission did not give rise to liability under the Copyright Act.

Legal Protection for Graffiti and Street Art

Graffiti and street art can be protected by the law like any other art form. For example, in a widely publicized decision earlier this year, a federal court in the Eastern District of New York found that street art painted on the famous “5Pointz” in Long Island City, Queens, was entitled to protection under the Visual Artists Rights Act of 1990.

Graffiti and street art may also be protected from infringement under the Copyright Act. The Copyright Act protects “original works of authorship fixed in any tangible medium of expression.” Street art that takes the form of a painted mural can be easily understood to meet this standard. Moreover, even distinctive graffiti-style lettering can, in certain circumstances, be protected under the Copyright Act. Generally, typeface alone will not be entitled to copyright protection. However, at least one court has found that stylized lettering in graffiti art was protectable. Likewise, the court found that a street artist’s choice of color and background imagery could be protectable elements of a graffiti design. Continue Reading

BLOCKING PATENTS CAN MOOT OBJECTIVE INDICIA OF NON-OBVIOUSNESS

In a recent precedential decision, a split Federal Circuit (Judges Dyk and Taranto in the majority, Judge Newman, dissenting) issued a lengthy, 53-page decision, regarding the obviousness doctrine.  Judge Taranto, writing for the majority, engaged in a fact-intensive analysis to determine that a ‘blocking patent’ mooted evidence of objective indicia of non-obviousness and found the patents-in-suit invalid on obviousness grounds.

Acorda owned four patents (the “Acorda patents”) listed in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations (“Orange Book”) for Ampyra®, a multiple sclerosis (“MS”) medication containing the active ingredient 4-aminopyridine (“4-AP”).  Importantly, Acorda listed a fifth patent, U.S. Patent Number 5,540,938 (the “Elan patent”), in the Orange Book for Ampyra.  Acorda is the exclusive licensee for the Elan Patent.  The Elan patent predates the Acorda patents and broadly claims administering a sustained-release formulation of 4-AP to individuals with multiple sclerosis.  The Acorda patents further claimed that such a drug must be administered (1) in a 10 mg dose twice a day (2) at that stable dose for the entire treatment period of at least two weeks (3) to achieve 4-AP serum levels of 15–35 ng/ml and (4) to improve walking. Continue Reading

Russian IP Court compelled domain name registrars to remove illegal content reported by trademark holders

On 4 July 2018, Russian IP Court rendered a landmark judgment in case No. A40-132026/2017.

Under the merits of the case, LLC Azbuka Vkusa (trademark holder) sued LLC Registrator R01 (prominent domain registrar) seeking to cease delegation of the disputed domain name. It was apparent that the claimant’s trademark AZBUKA VKUSA was infringed in the domain name azbuka-vkusa-nim.ru and website content.
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Nothing beats a good TM LWYR – Nike’s questionable LDNR campaign

A July 2018 decision of the UK Intellectual Property Enterprise Court (IPEC) appears to have put paid to Nike’s recent “Nothing beats a Londoner” ad campaign. The case highlights, with hindsight, a perhaps regrettable commercial/legal decision by the sports giant, whilst also demonstrating the usefulness of the IPEC as a means of speedy and effective redress in David vs Goliath disputes.

Nike’s campaign, which was built around the “LDNR” brand, launched in January with a short film featuring a number of sports stars and musicians of recognisable London origin. While the campaign generated a good deal of hype, it also caught the attention of modestly-sized apparel company Frank Industry Proprietary Limited (Frank), who held registered UK and EU trade marks for “LNDR” covering goods such as clothing and sportswear. Continue Reading

“Who” Says What’s Fair Use?:

Bloggers naturally desire to write about new developments and new cases.  But, because writing on legal topics is often like pulling snap shots out of a film, there is also sometimes a feeling that one is obliged to return to a previously noted case to report back on the rest of the story (as one might say (if named Paul Harvey)).  So it is today for this blogger, as he reports on the developments in a case that occurred after the previous blog post freeze frame.

While tempted to return to Naruto and the “monkey selfie” case on which we previously commented, we cannot quite tell the rest of that story since there remains in play a motion for rehearing en banc.  By way of update though, we can mention that the United States Court of Appeals in an April 13, 2018 order rejected the parties’ efforts to moot the case, holding that “denying the motion to dismiss and declining to vacate the lower court judgment prevents the parties from manipulating precedent in a way that suits their institutional preferences.”  That Court thereafter found in a 2-1 panel decision on April 23, 2018 that Naruto, a monkey, had constitutional standing under Article III but lacked statutory standing under the Copyright Act.  But on May 25, 2018 an anonymous lone judge on the 9th Circuit has requested rehearing en banc.  Once that motion is ruled on, we can perhaps tell the rest of the story there or, because of recent developments in other fields, combine Naruto with Seuss in the same way that we combined Star Trek and Seuss. Continue Reading

Establishment of Korea’s International Court for International IP Cases


IP cases, by their nature, proceed in more than one country simultaneously.  For instance, the patent lawsuits between Samsung and Apple have occurred at the same time in the courts of more than 10 different countries including Korea, the U.S., Germany, Japan, the Netherlands and Australia.  Because these cases are proceeding simultaneously, IP right holders are often placed in a situation where they have to determine in which country to file their claims, in order to yield the most favorable results. In this regard, courts all around the world attempt proactively to invite IP lawsuits and have been making efforts to provide environments that are suitable for IP litigation on a global scale. Continue Reading

Can You Use Photographs in Design Patent Applications?

Suppose that you have an invention disclosure for a design of an article that you want to protect.  When you review the invention disclosure, you notice that the inventor has only supplied photographs of the design and not any line drawings of the design.  Can you file the design patent application with the photographs?  The answer is YES! if that is the only practicable medium for illustrating the design for the article.

[35 U.S.C.] 171  refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 U.S.P.Q. 988 (C.C.P.A. 1980).  The subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916). Continue Reading

Clarifications on resolution of non-use disputes against bankrupt trademark holders

On March 21, 2018, the Russian Supreme Court published its Decision in case No. A55 5711/2014, which may have a dramatic impact on resolution of trademark non-use disputes.

Under the merits of the case, Heineken filed a non-use claim against Samarskiy Vodochnyi Zavod based on its failure to use the trademark Volzhskaya Okhota for 3 consecutive years.

Initially, the claim was addressed to the IP Court, which usually acts as a first instance court for non-use claims. Later, the case as an exception was transferred to the Commercial Court of Samara Region to be decided within the framework of a bankruptcy case initiated a few years ago against the Respondent. The change of venue was reasoned by the presumption that termination of the trademark may reduce the amount of bankruptcy assets thus negatively affecting the creditors’ rights (following another precedent IP Court’s Decision in case No. SIP-360/2016, dated November 23, 2016).
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Legal Risks Abound as the World Cup Kicks Into Gear

As with any major event, the FIFA World Cup presents an attractive marketing opportunity for brands to connect with consumers around the world. The World Cup is a particularly hot ticket for marketers because it only occurs once every four years and is followed closely by fans worldwide. It also helps that soccer (err … football) is the most popular sport in the world. Although the buzz can present a compelling marketing tool, marketers should be wary of the unique legal risks associated with leveraging the 2018 FIFA World Cup Russia without permission.

Ambush Marketing

Marketers are naturally attracted to popular events – especially sporting events – in order to connect with fans. However, marketers typically cannot use names or trademarks associated with those events without becoming official sponsors, and those sponsorship rights can cost tens (if not hundreds) of millions of dollars. Given how lucrative sponsorships are, the organizations staging these events are quite aggressive in stopping non-sponsor brands from free riding on their promotional efforts. Continue Reading

UNITED STATES SUPREME COURT TO CONSIDER ‘ON-SALE BAR’ DOCTRINE

Recent focus on the United States Supreme Court has surrounded who President Trump will nominate to replace retiring Associate Justice Anthony Kennedy.  (The nominee is Brett Kavanaugh of the D.C. Circuit.)  However, once October is here, the 2018 Term begins and focus will shift back to the cases before the Court.  One of those issues will be the extent that sales (or offers for sale) of an invention before the filing of a patent application will prevent the issuance of a patent.  Also known as the ‘on-sale bar’ doctrine, the outcome will have broad implications for startup companies and small businesses holding intellectual property assets.

The on-sale bar doctrine originally appeared in the Patent Act of 1952; “[a] person shall be entitled to a patent unless — … the invention was … on sale in this country more than one year prior to the date of the application for patent in the United States…”[1]  The Leahy-Smith America Invents Act of 2011 (“AIA”) made the first changes to the on-sale bar in almost 60 years, adding the word “claimed” before “invention” and adding the phrase “or otherwise available to the public”.  Post-AIA, “[a] person shall be entitled to a patent unless – the claimed invention was…on sale, or otherwise available to the public before the effective filing date of the claimed invention…”[2] Continue Reading

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