IP News May 2017

Welcome to IP News This Month. Here’s your 5-minute guide to all things intellectual property, culled from news reports from around the world. Tips or comments? Send them direct to jeffjohnroberts AT gmail.com. Thanks for reading! – Jeff

Top 3 Stories

SCOTUS pulls plug on patent troll playground: the top U.S. court concluded venue rules mean patent plaintiffs can’t sue in a forum of their choosing. The unanimous decision may cripple the East Texas troll industry, where one judge now oversees a quarter of all US patent cases (NYT)

So exhausting! In a major decision about printer refills, SCOTUS overturned a rule that let patentees exercise their rights post-sale. The case affirmed the exhaustion doctrine in the case of both domestic and overseas sales, and said patent owners can turn to contract law instead (Patently-O)

That’s not funny. A judge said copyright protection for jokes is “thin,” but let a comedian go forward with claims that Conan O’Brien used near-identical versions of his gags (Hollywood Reporter)


Félicitations à Prof Moyse, who was reappointed to lead the CIPP for another three years! (CIPP)

Some fear a wave of copyright trolling will hit Canada after an appeals court struck down the nominal fee ISPs charge content owners to send enforcement letters (National Post)

As Canada explores a national IP strategy, two patent lawyers claim the best approach is to stop a “critical leakage of IP” beyond the country’s borders—and more patents, of course (Globe & Mail)

United States

Is ‘Google’ generic? It may be a verb but that doesn’t mean Google’s trademark is subject to “generocide,” a court ruled, which means its IP won’t go the way of Kleenex or Thermos (Fortune)

Uber fired the star engineer it poached from Google, who is at center of an explosive trade secrets case over self-driving cars (NYT)

Vancouver-based Pirate Joes, which is embroiled in a trademark fight with Trader Joes, has turned to a new crowd-funding legal site to pay for its defense at the 9th Circuit (The Guardian)

Do attorneys violate professional conduct rules when they acquire patent claims from clients? An Internet firm says they do, and has filed a complaint as part of a campaign to kill a new patent troll firm run by lawyers (Fortune)

Beyonce’s attempts to register a series of “Blue Ivy” trademarks for her child are being stymied by an event planning company of the same name (TMZ)

The Senate pushed forward with a plan to make the Register of Copyrights a political appointment; it’s one of several proposals meant to modernize the copyright office (Law360)

A down-on-her-luck Florida woman held a patent for the fidget spinner, which is sweeping playgrounds everywhere, but let it lapse because she couldn’t pay the renewal fee (The Guardian)


In the IP fight over Kit-Kat bars, the UK’s Court of Appeal came to the same conclusion as the ECJ: the candy’s four-finger shape is not distinct enough to earn trademark protection (FT)

Nokia has buried the hatchet in its worldwide patent fight with Apple; the iPhone maker had accused the fading Finish company of extortion and stopped paying royalties (NYT)


Wikipedia is throwing itself into the fight for fair use in Australia. The site is showing messages on its entries to explain that all sorts of content would be unavailable if Australian copyright laws governed the site (Sydney Morning Herald)

A major court ruling in 2013 appeared to spell the end of patents for gene tests but the tests have nonetheless proliferated. Prof Gold et al explains how contracting can provide a way for countries to limit the reach of these gene patents (Harvard Law health blog)

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

This content has been updated on August 28, 2017 at 12:27.