Jodi Benassi
Subscribe to Jodi Benassi's PostsJodi Benassi focuses her practice on litigation and investigations. Jodi has experience in federal court district actions in California, Texas, Florida and Michigan and actions before the US Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office (USPTO). She has also conducted internal investigations on behalf of audit committees from high profile Fortune 500 organizations to Silicon Valley start-ups. Jodi Benassi's full bio.
GOOGLES Wins Right to Sue Google
By Jodi Benassi on Jul 9, 2020
Posted In Trademarks
The US Court of Appeals for the Second Circuit vacated and remanded a district court’s dismissal of a trademark dispute for lack of subject matter jurisdiction, noting that the dispute arose under contractual standing, which is not a jurisdictional issue. SM Kids, LLC v. Google LLC, Alphabet Inc., Case No. 19-cv-2547 (2d Cir. June 25,...
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Munchkin Is Luv-n This Win
By Jodi Benassi on Jun 17, 2020
Posted In Patents, Trademarks
Reversing an award of attorney’s fees, the US Court of Appeals for the Federal Circuit found that a district court abused its discretion in making an exceptional-case determination where patent and trademark infringement claims were reasonable. Munchkin, Inc. v. Luv N-Care, LTD., Admar International, Inc., Case No. 19-1454 (Fed. Cir. June 8, 2020) (Chen, J.). Munchkin...
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Trademark Claim for Profit Damages Means No Jury Trial
By Jodi Benassi on Jun 11, 2020
Posted In Food, Beverage & Agribusiness, Trademarks
The US Court of Appeals for the Ninth Circuit affirmed a denial of a jury trial demand in a trademark infringement lawsuit where only a claim of disgorgement of profits was at issue. JL Beverage Company, LLC v. Jim Beam Brands Co., Beam Inc., Case No. 18-16597 (9th Cir. May 27, 2020) (Wallace, J.) (Friedland, J., concurring)....
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Chalk One Up to the Knock-Off
By Jodi Benassi on May 27, 2020
Posted In Copyrights, Patents
Addressing issues of design patent infringement, copyright infringement, trade dress infringement and unfair competition, the US Court of Appeals for the Federal Circuit affirmed a district court’s grant of summary judgment on all claims. Lanard Toys Limited v. Dolgencorp LLC, Ja-Ru, Inc., Toys “R” Us-Delaware, Inc., Case No. 2019-1781 (Fed. Cir. May 14, 2020) (Lourie,...
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Bad Conduct During Litigation Means Attorneys’ Fees Against the Government, Regardless of Damage Amount
By Jodi Benassi on May 14, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed the US Court of Federal Claims attorneys’ fees award for patent infringement by the United States solely based on its actions during litigation. Hitkansut LLC, Acceledyne Technologies, LTD, LLC v. United States, Case No. 19-1884 (Fed. Cir. May 1, 2020) (Prost, CJ).
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Prevailing at the PTAB Can Mean Prevailing Party Attorneys’ Fees
By Jodi Benassi on May 7, 2020
Posted In Patents
Addressing whether attorneys’ fees may be awarded in a patent infringement lawsuit where an accused infringer successfully invalidates claims in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the accused infringer is considered the “prevailing party” for purposes of 35 U.S.C. § 285, but remanded for...
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No Disgorgement When Injunction is Sufficient Remedy
By Jodi Benassi on Apr 23, 2020
Posted In Trademarks
Addressing issues related to the disgorgement of profits and attorneys’ fees in a trademark infringement lawsuit, the US Court of Appeals for the Eighth Circuit affirmed a denial of such fees and profits. Safeway Transit LLC and Aleksey Silenko v. Discount Party Bus, Inc., Party Bus MN LLC, and Adam Fernandez, Case No. 18-2990 (8th...
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Nefarious Motives Could Mean No Declaratory Judgment for You
By Jodi Benassi on Apr 2, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court’s decision to dismiss a first-filed declaratory judgment complaint, finding that equitable considerations warranted departure from the first-to-file rule. Communications Test Design, Inc. v. Contec, LLC, Case No. 19-1672 (Fed. Cir. Mar. 13, 2020) (O’Malley, J.).
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Failure to Mark Can Put Damages Underwater
By Jodi Benassi on Mar 12, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed that patented articles must be marked in order for the patentee to recover pre-notification or pre-complaint damages. Arctic Cat Inc. v. Bombardier Recreational Products Inc., Case No. 19-1080 (Fed. Cir. Feb. 19, 2020) (Lourie, J). In 2002, Arctic Cat entered into a licensing agreement with...
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2019 IP Law Year in Review: Copyrights
By Jodi Benassi, Mary Hallerman and Nicole M. Jantzi on Feb 27, 2020
Posted In Copyrights
Executive Summary In many ways, copyright jurisprudence in 2019 was a study in contrasts. While certain cases represented a “back to basics” approach, answering fundamental questions such as “When can a copyright owner sue for copyright infringement?” and “What costs can a prevailing copyright owner recover?,” others addressed thorny issues involving fair use and the...
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