IP News May 2016

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Top 3 Stories

Something to cheer about? SCOTUS agrees to hear important appeal for the fashion industry on whether a cheerleading uniform can be copyrighted or if the “stripes, chevrons, zigzags, and color blocks” merge with its utilitarian function (Pillsbury)

Using the names and people in a Holocaust documentary for a book, and failing to cite the film-maker may be poor manners, but it’s not copyright infringement. So says the ruling in a closely watched Canadian case (Globe & Mail)

Patent power: major tech and auto companies, including Facebook and Ford, are going on a 2-week patent buying spree that is part of a Google-led plan to create non-aggression intellectual property alliances (Fortune)

Facebook made a friend request to U.S. Magistrate Judge Paul Grewal; he will leave the bench, where he ruled in many IP and tech cases, to oversee global litigation for the social network (WSJ)


Canadian hospitals no longer pay patent fees for gene testing, thanks in no small part to CIPP founder Prof Gold; the Post has the full story of a smart and subtle litigation strategy in the public interest (National Post)

Rightscorp, the controversial copyright enforcement outfit may have to call off its expansion into Canada; reports say it is out of money (BoingBoing)

United States

Does free speech trump a trademark rule that banned  “Slants” and “Redskins”? The issue is now before SCOTUS where the USPTO is appealing a First Amendment ruling that said it can’t reject offensive marks (NYT)

SCOTUS heard arguments over the discretionary powers of the PTAB, a new Patent Office body that provides a fast-track process to challenge allegedly invalid patents (Fortune)

Popular open access research site SSRN was snapped up by academic publishing gorilla Elsevier; the company promises there will be a free version but some are uneasy (Motherboard)

Lawmakers go crazy over Prince’s death, draft a Minnesota law to create posthumous personality rights with a minimum 50-year term (EFF)

SCOTUS will hear a case over whether “patent exceptionalism” should permit special rules for laches, or if such rules should be consistent with copyright (PatentlyO)

The heirs of Frank Zappa are in a messy copyright squabble; one brother is refusing to let another tour under the name “Zappa plays Zappa,” claiming special “grand rights” are needed in addition to performance rights (NYT)

A patent fight between IBM and Groupon is getting catty; the daily deal site filed a counter-suit, and called IBM a “dial-up-era dinosaur” and a “once-great” tech firm (Reuters)

The epic Google Books copyright case is really and truly over after SCOTUS declined to review a finding that the company’s book scanning was fair use (Fortune)

President Obama signed a federal trade secret law that supplements state law regimes, and gives plaintiffs more expanded power to protect IP; one notable provision allows ex parte seizures in exceptional situations. (DLAPiper)

The outcome of the Google-Oracle trial could hinge on a potentially damning email by Android’s founder stating that Java APIs are copyrighted (Fortune)

Can you invoke copyright on Klingon and other Star Trek trappings? A judge refused to throw out Paramount’s claims against a $1 million crowd-funded film (Hollywood Reporter)

The Kirtsaeng case, which clarified the first sale doctrine, lives on at SCOTUS. The Justices heard arguments about when winning copyright litigants can collect attorneys fees (NYT)

A jury trial over Led Zeppelin’s “Stairway to Heaven” begins in June; a copyright lawyer walks through the strategies, and describes the plaintiff’s “renegade” counsel (BusinessInsider)


The ECJ has upheld Europe’s plain packaging rules for cigarettes, rejecting claims by the tobacco industry that the rules are an unlawful attack on intellectual property (NYT)

Lawyers and law profs weigh in on what Brexit would mean for IP rights in the UK (Guardian)


India unveiled an expansive new intellectual property policy that is long on jargon and short on details (Times of India)

Australia is considering a dramatic series of reforms, including new fair use rules, limits on patents and geo-blocking and shorter copyright terms; the normally IP-mad nation says the reforms could save consumers $1 billion a year (Sydney Morning Herald)

Tips or comments? Send them to jeffrobertslegal at gmail.com

This content has been updated on June 22, 2016 at 9:50.