Over the last year, there have been some significant trademark and copyright cases in the fashion industry. Below are summaries of recent cases all brand owners should know and understand.  These cases touch on important topics in trademark and copyright, including: copyrightability of surface decorations/designs on clothing or other useful articles, parody defense, punitive damages in trademark cases, tackling secondary meaning challenges in the ITC, and trademark registrability of edgy or offensive terms.

Does the use of Google AdWords amount to the advertising, promoting, marketing, or offering for sale of goods covered by a registered trademark? Tipsy Elves, LLC. vs. Ugly Christmas Sweater, Inc. is the latest in a string of cases to litigate this issue. Google AdWords is an advertising service offered by Google that allows a sponsor to pay to have their advertising material and website link appear more prominently as a result of a search for a particular keyword.

Buscemi, LLC (“Buscemi”) filed for a design patent on June 2, 2016.  In March 2017, while the patent application was pending, Buscemi alleges that it became aware that Styleline Studios International and JSL Studio International d/b/a J/Slides (collectively “J/Slides”) was selling shoes which Buscemi considered would be covered by the subject matter in the design patent when it issued.  

The U.S. Food and Drug Administration (FDA) recently approved Keytruda (pembrolizumab) for treatment of patients whose cancers have a specific genetic feature (biomarker).  The FDA has traditionally approved cancer treatments based on where in the body the cancer started—for example, the lung or breast. This is the first time a drug was approved based on a genetic feature of the tumor, without regard to the tumor’s originating location in the body.

The Supreme Court granted a petition for writ of certiorari to address whether the PTAB is required to issue a final written decision with respect to the patentability of every claim challenged by a petitioner in SAS Institute Inc. v. Michelle K. Lee, Case 16-969 (U.S. May 22, 2017).

On May 23, 2017, the PTAB granted the University of Maryland’s (UM) motion to terminate inter partes review based on UM’s sovereign immunity in Neochord, Inc. v. Univ. of Maryland, Baltimore and Harpoon Medical, Inc., IPR2016-00208.  

The PTAB denied Apple’s motion to withdraw both its IPR petition and concurrent motion for joinder to prevent  Apple from circumventing potential estoppel ramifications in Apple Inc. v. Papst Licensing GmbH & Co. KG, IPR2017-00670, Paper 11 (P.T.A.B. May 22, 2017).

The Federal Circuit vacated and remanded the PTAB’s final written decision holding that claims directed to steel making methods were obvious in Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, No. 2016-2233 (Fed. Cir. May 11, 2017).

The Federal Circuit held that statements made by a patent owner in an IPR, whether before or after institution, can be considered during claim construction in district court litigation and relied upon to support a finding of prosecution disclaimer in Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir. May 11, 2017).

On May 17, 2017, Vertex Pharmaceuticals small molecule drug Kalydeco® (ivacaftor) was approved by the U.S. Food and Drug Administration (FDA) for use in treating an expanded population of cystic fibrosis patients with particular genotypes. The approval is notable for the agency’s use of laboratory-based in vitro assay data in reaching its decision to expand the drug’s indication.