Under the first sale doctrine, once a trademark owner first authorizes its branded product to be sold to a consumer, the trademark owner’s right to control the further re-sale of that product is generally said to be “exhausted”, so long as the product is not “materially different” from the original. 

On December 28, 2018, Nirvana LLC filed a lawsuit against designer Marc Jacobs in the Central District of California, alleging copyright and trademark infringement. Nirvana LLC is the legal entity which controls the band Nirvana’s financial, legal, and business affairs.  Nirvana LLC was formed in September 1997 by the band’s two surviving members, Dave Grohl and Krist Novoselic, along with the Cobain Estate, controlled by Courtney Love. The lawsuit was triggered by Jacobs’ new “Bootleg Redux Grunge” Collection, and alleges infringement of Nirvana’s satirical smiley face design, created by Nirvana front man Kurt Cobain in 1991. The design was first introduced in 1992, and has since been licensed for use on numerous items, often appearing in yellow against a black background.

Before Prost, Wallach, and Hughes.  Appeal from the U.S. District Court for N.D. Ohio.

Summary:  On a Rule 12(b)(6) motion, a district court cannot judicially notice facts that are subject to reasonable dispute.  Also, when a Plaintiff “knew or should have known” of its claim is a fact-specific inquiry that cannot be resolved on a motion to dismiss based on the statute of limitations.

Before Lourie, O’Malley, Reyna.  Appeals from the Patent Trial and Appeal Board, United States District Court for the Northern District of West Virginia, and United States District Court for the District of New Jersey.

Summary: A firm’s representation of an indirect subsidiary of a parent corporation may create a disqualifying, concurrent conflict of interest for representation of a party adverse to a different indirect subsidiary of the parent corporation.

Eliya inc., known for its BERNIE MEV shoes, filed a declaratory judgment action against Sketchers on January 29, 2019 in the U.S. District Court for the Southern District of New York.

In January of 2019, the Patent Office, under Director Iancu, issued new guidance to all USPTO personnel evaluating patent subject matter eligibility under the requirements of 35 USC Section 101.  The guidance sought to add certainty to what has been widely recognized as an unpredictable area of law.  (See more about the new guidance at our prior post on the subject.)  The view of most practitioners appears to be that the new guidance is positive for applicants, particularly for patent applications directed to software‑related inventions.  But seasoned patent applicants will recognize that many examiners have their own interpretations of examination guidelines—often not in line with that of the applicant.  And when an applicant is unhappy with a rejection, the next step is generally an appeal to the Patent Trial and Appeal Board.

Before Reyna, Taranto, and Chen.  Appeal from the United States District Court for the District of Delaware.

Summary:  Where the complexity and predictability of a claimed embodiment were disputed, summary judgment finding inadequate written description was not appropriate.  Additionally, a final assembler can be liable for making an infringing product even if it does not make each individual component element.

On December 13, 2018, Face Lace Ltd., founded by makeup artist Phyllis Cohen to provide ready-to-wear makeup designs, filed suit in the Central District of California against Bare Escentuals Inc. d/b/a Buxom Cosmetics. Face Lace’s complaint alleged copyright infringement and trade dress infringement under the Lanham Act.

Before Lourie, Linn, and Taranto.  Appeal from the United States District Court for the District of Arizona.

Summary:  Reading a process limitation into a product claim is improper where the patentee did not clearly and unmistakably disavow claim scope and also did not make clear that the process is an essential part of the claimed invention.

Before Judge Newman, Laurie and Stoll.  Appeal from the United States District Court for the District of Massachusetts.

Summary:  Claims reciting only conventional steps to detect a natural law, are patent-ineligible under § 101.