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Fairness Is the Limit for Asserting False Advertising Claims

Addressing whether Lanham Act claims for false advertising or false association under § 43(a) (15 USC § 1125(a)) are subject to a statute of limitations, the US Court of Appeals for the Fourth Circuit concluded that the sole time limit on bringing such claims is the equitable doctrine of laches. Belmora LLC v. Bayer Consumer Care AG, Case No. 18-2183 (4th Cir. Feb. 2, 2021) (Floyd, J.)

The facts of the underlying dispute are straightforward. Bayer has sold the pain reliever naproxen as FLANAX in Mexico since 1972 and in the United States as ALEVE. Belmora began selling naproxen under the name FLANAX in the United States in 2004, where it used similar packaging and described the drug as one sold successfully in Mexico. Both companies tried to register the mark with the US Patent & Trademark Office, where proceedings unfolded. Ultimately, in April 2014, the Trademark Trial and Appeal Board cancelled Belmora’s trademark registration, finding that Belmora had blatantly misused FLANAX by drawing on the popularity of Bayer’s Mexican product. Two months later, Bayer brought claims against Belmora under § 43(a) of the Lanham Act and California unfair competition law in the US District Court for the Central District of California. The suit was transferred to the Eastern District of Virginia, where Belmora moved to dismiss, arguing that § 43(a) and state law claims were barred by the statute of limitations. Bayer replied that § 43(a) had no statute of limitations, and that the time to bring the state law claims had been tolled during the Board’s proceedings. The district court granted both of Belmora’s motions, and the appeal followed.

Because there is no express statute of limitations for a § 43(a) claim, the question before the Court was whether to assume that Congress intended that the most analogous state law statute of limitations apply, or to apply either the most analogous federal statute or common law laches doctrine. “Conclud[ing] that § 43(a) is one such federal law for which a state statute of limitations would be an unsatisfactory vehicle for enforcement,” the Court held that laches was more appropriate, for primarily two reasons. First, the statutory text provides that § 43(a) damages are subject to the principles of equity, which would include the doctrine of laches. Second, the Court found persuasive the law of the Third, Seventh and Ninth Circuits, which each apply laches as to restrict the timeliness of as § 43(a) action. That said, the Court emphasized that on remand, the district court should consider the period for bringing a similar state action as part of the laches analysis, especially because the Fourth Circuit employs a presumption that claims brought after the expiration of the most-analogous statute-of-limitations are barred by laches.

The Court noted that Bayer could overcome a presumption of laches, and cited three factors for the district court to consider:

  • Bayer’s knowledge (or lack thereof) of Belmora’s adverse use
  • Whether Bayer’s delay was inexcusable or unreasonable
  • Whether Belmora had been unduly prejudiced by [...]

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A Shoe-In? Fleet Feet Gives Injunction Appeal the Moot Boot

The US Court of Appeals for the Fourth Circuit dismissed a preliminary injunction as moot where the enjoined party had discontinued the use complained of and had no future plan to restart it. Fleet Feet, Inc. v. Nike, Inc., Case No. 19-2390 (4th Cir. Jan. 26, 2021) (Diaz, J.) The Court denied the enjoined party’s request that it vacate the district court’s order granting the preliminary injunction despite mootness due to an ongoing litigation.

Fleet Feet is a retailer selling products related to running, including Nike merchandise. It is also a Nike competitor since Nike sells its own products. Fleet Feet obtained two trademark registrations, having already used both for years: “Running Changes Everything” in 2020, and “Change Everything” in 2015. In July 2019, Nike launched an advertising campaign with the tagline “Sport Changes Everything” scheduled to end at the February 2020 Super Bowl. Fleet Feet sued Nike for trademark infringement. The district court granted a preliminary injunction against Nike and set a $1 million injunction bond. The preliminary injunction order prohibited Nike from any use of the phrase “Sport Changes Everything” or any other designation confusingly similar to the Fleet Feet’s marks when advertising or selling goods and services. Nike discontinued its campaign two months before the scheduled end and appealed the preliminary injunction order.

Nike argued that the district court erred in its preliminary injunction factor analyses. But on appeal, the Fourth Circuit decided as a threshold matter that the end of Nike’s “Sport Changes Everything” campaign and its representation that there were no plans to use the term after the campaign rendered Nike’s appeal of the preliminary injunction “designed to interrupt that very campaign” moot. A case becomes “moot” when the “issues presented are no longer ‘live’ or the parties lack a legally cognizable interest in the outcome.” The Court found that Nike’s appeal of the preliminary injunction was nonjusticiable since there had been an event during the pendency of the appeal that made it impossible to grant effective relief to a prevailing party. Because of the conclusion of the 2020 Super Bowl and Nike’s representations that it did not plan to use the term afterwards, there was no possible relief to Nike based on the preliminary injunction’s interference with the campaign.

The Fourth Circuit disagreed with Nike that two issues remained live. First, Nike argued that the continued restraint on Nike’s speech due to the order’s prohibition of any confusingly similar designation to Fleet Feet continued to be a live issue. The Court explained that this was only a potential controversy, not a live controversy. Because Nike had not engaged in the speech barred by the order, had represented that it did not intend to do so in the future, and had not introduced any new slogans confusingly similar to Fleet Feet’s marks, no actual speech was threatened by the preliminary injunction.

Second, Nike argued that the potential recovery on the injunction bond was a live issue. Referring to the Supreme Court case Univ. of Tex. [...]

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In Setty, Ninth Circuit Signals Shift in Arbitration Landscape for Non-Signatories

The US Court of Appeals for the Ninth Circuit tackled the question of whether non-signatories to an agreement may use state law doctrines to compel arbitration. Holding that the claims were insufficiently “intertwined” to permit equitable estoppel and had to be analyzed under federal law (and not state or foreign law), the Court affirmed denial of a non-signatory’s bid to arbitrate its claims for trademark infringement against one of the signatories to a contract governed by Indian law. Setty v. Shrinivas Sugandhalaya LLP, Case No. 18-35573 (9th Cir. Jan. 20, 2021) (Nelson, J.) (Bea, J., dissenting).

The dispute arose from a business partnership between brothers. Balkrishna and Nagraj Setty formed in order to continue their late father’s Indian incense business. The brothers signed a partnership deed that included an arbitration provision stating:

All disputes of any type whatsoever in respect of the partnership arising between the partners either during the continuance of this partnership or after the determination thereof shall be decided by arbitration as per the provision of the Indian Arbitration Act, 1940 or any statutory modification thereof for the time being in force.

In 2014 the brothers’ relationship fell apart, with each brother starting his own company. Balkrishna Setty and his company, Shrinivas Sugandhalaya (BNG) (SS Bangalore), brought suit against Nagraj Setty’s company, Shrinivas Sugandhalaya (SS Mumbai), for several claims, including trademark infringement. Nagraj Setty was not named in the action. SS Mumbai sought to compel the plaintiffs to participate in arbitration pursuant to the deed. The district court denied SS Mumbai’s motion, finding that only one party to the lawsuit, Balkrishna Setty, was a party to the deed and that the companies, SS Bangalore and SS Mumbai, were non-signatories. The Ninth Circuit affirmed, holding that SS Mumbai could not equitably estop SS Bangalore from avoiding arbitration. In June 2020, the Supreme Court of the United States granted certiorari, vacated the judgment and remanded for further consideration based upon its decision in GE Energy Conversion France SAS v. Outokumpu Stainless USA, LLC, 140 S. Ct. 1637 (2020).

On remand, the Ninth Circuit affirmed denial of the motion to compel arbitration. First addressing choice of law, the Court found that federal rather than Indian law should apply. SS Mumbai argued that pursuant to the deed, the Indian Arbitration Act—which provides non-signatories the right to compel arbitration—should apply. The Ninth Circuit disagreed, finding that “whether SS Mumbai may enforce the Partnership Deed as a non-signatory is a ‘threshold issue’ for which we do not look to the agreement itself.” The Court acknowledged that the deed provided exclusively for disputes “arising between the partners,” not third parties. Thus, based on the federal nature of the claims and federal question jurisdiction, the Court applied federal law, opening the door to arguments concerning equitable estoppel.

Second, discussing SS Mumbai’s equitable estoppel argument, the Ninth Circuit stated that in order “[f]or equitable estoppel to apply, it is ‘essential . . . that the subject matter of the dispute [is] intertwined with the contract providing [...]

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No More Bites at the Apple: Intervening Junior User Can Force You to Get Your Head Out of the Cloud(s)

Addressing how a mark’s intervening junior user’s success can affect a senior user, the US Court of Appeals for the Fourth Circuit upheld a grant of summary judgment in favor of the junior user and the issuance of a permanent injunction for any commercial use of the disputed terms by the senior user. RXD Media, LLC v. IP Application Dev. LLC, Case No. 19-1461 (4th Cir. Jan. 21, 2021) (Keenan, J.) (joined by Gregory, J., and Floyd, C.J.)

RXD and Apple (here embodied also in IP Application Development, a company formed and wholly owned by Apple for the purpose of registering the “ipad” mark) have shared a long history of trademark litigation, initiated by RXD, over the use of the “ipad” mark. Prior to this appeal, the district court ruled in favor of Apple on summary judgment and permanently enjoined RXD from commercially using the terms “ipad” or “ipod.”

RXD claimed that the district court failed to account for RXD being the “first user” of the “ipad” mark; that Apple did not establish a distinctive, secondary meaning of “ipad” before RXD’s use; that Apple failed to show a likelihood of consumer confusion based on both parties’ use of “ipad”; and that the district court erred in rejecting RXD’s claim that “two of Apple’s trademark applications were void because Apple lacked a bona fide intent to use the ‘ipad’ mark for the services listed in those applications.” The Fourth Circuit, however, was not convinced.

The Fourth Circuit found that even if RXD was technically the senior user of the mark at issue, its expanded, “wholly altered” use of the mark, which now focused on “cloud storage” services and for which it now claimed protection, was not entitled to such protection, because the use occurred “on the heels of Apple’s [i.e., the intervening junior user’s] commercial success in releasing” the iPad. By that point, Apple had already “experienced undeniable commercial success, ha[d] promoted its products through regular advertising using the mark, and ha[d] obtained extensive media coverage regarding its ‘iPad’ device.” As such, the Court concluded that Apple’s “ipad” mark was strong and distinctive, noting that consumers were likely to and had already experienced confusion regarding the “ipad” mark. The Court further concluded that, because RXD was a “proven infringer” of the mark, injunctive relief ordered by the district court in favor of Apple was justified. Finally, the Court rejected RXD’s intent argument, stating that Apple was not required to prove a bona fide intent to use the mark for services it did not identify in its relevant trademark applications—Apple’s development of “cloud storage” services, while not explicitly named in Apple’s trademark applications, was encompassed by “the context of the strength of Apple’s brand” and was within the “breadth of [its] products and services.”

Practice Note: Practitioners should take careful note of how their clients use their mark, even if such use can be technically classified as “senior,” and how the mark evolved over time and whether it happened to change coinciding [...]

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There’s No Sugarcoating It: Pocky’s Cookie Design Trade Dress Is Functional

Addressing for the second time whether the design of a chocolate-dipped, stick-shaped cookie was eligible for trade dress protection, the US Court of Appeals for the Third Circuit held again that the product configuration was functional and therefore not subject to trade dress protection, affirming summary judgment for defendant Lotte International America Corp. Ezaki Glico Kabushiki Kaisha v. Lotte Int’l America Corp., Case No. 19-3010 (3d Cir. Jan. 26, 2021) (Bibas, C.J.)

Both Ezaki Glico Kabushiki Kaisha and Lotte make thin, stick-like cookies with one side dipped in chocolate or flavored cream. Ezaki Glico’s product, Pocky, and Lotte’s product, Pepero, can be seen in the images below. Ezaki Glico obtained two incontestable trade dress registrations for its Pocky product design as well as a utility patent for a “Stick Shaped Snack and Method for Producing the Same.”

In 2015, Ezaki Glico sued Lotte for trade dress infringement. The district court found the Pocky product configuration functional and therefore not subject to trade dress protection, and granted Lotte’s motion for summary judgment. In October 2020, on appeal, the Third Circuit issued its initial opinion affirming the district court’s decision and rejecting Ezaki Glico’s argument that its trade dress was not functional because it was not essential to its product. (Read more on the initial opinion here.)

Ezaki Glico petitioned for a rehearing en banc, which the Court rejected. Nonetheless, the original panel vacated its earlier ruling and issued a revised opinion that provided further clarification on the functionality doctrine, but likewise affirmed summary judgment for Lotte and held that the Pocky product configuration was functional.

The Third Circuit again rejected Ezaki Glico’s attempts to equate “functional” with “essential”: “If the Lanham Act protected designs that were useful but not essential, as Ezaki Glico claims, it would invade the Patent Act’s domain. Because the Lanham Act excludes useful designs, the two statutes rule different realms.” The Court cited examples from earlier cases to demonstrate that the proper inquiry for functionality looks to whether the particular design chosen for a feature, as opposed to the feature itself, is useful: “Though French press coffeemakers need some handle, there is no functional reason to design the particular handle in the shape of a ‘C.’ . . . And though armchairs need some armrest, there is no functional reason to design the particular armrest as a trapezoid.”

The Third Circuit looked to Ezaki Glico’s registrations for the features of the claimed trade dress, noting that in this case, “[e]very feature of Pocky’s registration relates to the practical functions of holding, eating, sharing, or packing the snack.” Accordingly, the designs chosen for the Pocky configuration rendered the product more useful as a snack and were “not arbitrary or ornamental flourishes that serve only to identify Ezaki Glico as the source.” Having determined that Lotte sufficiently demonstrated that the Pocky trade dress was useful, the Court held that it was “thus functional” and not subject to trade [...]

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2020 IP Law Year in Review: European Issues

Executive Summary

From a German perspective, 2020 saw highly interesting developments that may well have an impact even beyond the borders of Germany. For example, the Federal Court of Justice (Bundesgerichtshof) in Sisvel v. Haier handed down a landmark decision on fair, reasonable and non-discriminatory (FRAND) law. This decision has already affected many FRAND cases tried before lower instance courts. Generally speaking, the FRAND law judgments issued in Germany in 2020 may have more upsides for standard-essential patent (SEP) holders than for implementers of standardised technologies.

A successful constitutional complaint against the German act to ratify the Unified Patent Court (UPC) Agreement delivered a serious blow to the attempt to establish the UPC. However, German Federal Parliament and Federal Council managed, just before the end of 2020, to pass another UPC ratification act, thereby rectifying the mistake that led to the success of the constitutional complaint. The fate of the UPC project remains somewhat unclear, however, in light of newly filed constitutional complaints.

Finally, 2020 saw the United Kingdom officially withdraw from the European Union on 1 February and become a third-party country after a transitional period that ended on 31 December. This event has multiple consequences for EU intellectual property rights, particularly EU trademarks, depending on whether they were filed or registered as of 1 January 2021.

European Issues

  1. Germany and the UPC
  2. German Federal Court of Justice on FRAND Law: Sisvel v. Haier
  3. How Does Brexit Affect European Trademark Rights?

2021 Outlook

Even though there were major developments in Germany regarding FRAND law and the UPC in 2020, these topics are far from being finally settled.

After the Federal Court of Justice’s Sisvel v. Haier decision led to relatively SEP-holder-friendly decisions by the Munich I District Court and the Mannheim District Court, the Düsseldorf District Court referred several FRAND-related questions to the CJEU in November 2020. The expected CJEU decision has the potential to shape the future of FRAND law not just in Germany, but in the whole European Union.

It will be interesting to follow the further development of the UPC project in the light of new constitutional complaints filed against Germany’s new act to ratify the UPC Agreement. These complaints may put another hold on the UPC undertaking. In any event, Germany is not expected to deposit its instrument of ratification very soon because the UPC still needs time to set up its infrastructure, including the appointment of judges.

The question of whether competitors and consumer associations can issue warning letters for violations of the General Data Protection Regulation (GDPR) continued to occupy the courts in 2020, and likely will do so in 2021 as well. According to a decision of the Stuttgart Court of Appeal dated 27 February 2020 (2 U 257/19), competition associations can issue warning letters for violations of the GDPR. The Berlin Court of Appeal previously affirmed this on 20 December 2019 (5 U 9/18) for consumer associations in the [...]

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2020 IP Law Year in Review: Trademarks

Executive Summary

2020 was a year like no other, so you’d be forgiven if the year’s biggest headlines in trademark law didn’t quite catch your attention. In 2020, the US Supreme Court shaped trademark jurisprudence through a trio of notable decisions. A pandemic and shelter-in-place orders pushed more consumers to virtual marketplaces, forcing brand owners, and the courts, to take a renewed look at counterfeiting and online enforcement. The United States Patent and Trademark Office (USPTO) has continued its strict registrability and failure-to-function assessments, and new legislation, rules and fees were directed at cracking down on fraudulent trademark applications and clearing dead weight from the USPTO register to make room for new and growing brands. A COVID-19 stimulus package just so happened to establish the standard for obtaining injunctive relief in litigation under the Lanham Act. And the year saw industry-specific developments with the potential for broader application in the field. This report provides a summary of 2020’s notable moments in trademark law with insights and outlooks for brand owners and practitioners moving into the year ahead.

Trademarks

  1. SCOTUS on Trademarks
  2. Courts on Counterfeits in 2020
  3. More ‘Failure to Function’ Refusals in 2020
  4. Color Me Surprised: Multicolor Marks Can Be Inherently Distinctive
  5. Trademark Law Updates – Fees, Fraud and Injunction Presumptions
  6. 2020 Industry Spotlight: Trademarks in the Alcohol Beverage Market

2021 Outlook

Looking ahead, 2020’s legislation, rules and fees impacting the USPTO and the courts may add some clarity to trademark disputes in 2021, any may also inspire brand owners to examine their approaches to trademark portfolio management, watching and enforcement to maximize budgets, clear the way for brand expansion and more efficiently handle trademark disputes. In 2021, we also expect to see further developments in the fighting of counterfeits, the interplay of trademarks and expressive works and the application of failure to function refusals, especially as we continue to see trademark filings, disputes and market trends associated with an ongoing pandemic, political unrest and overdue social justice movements. Finally, in 2021, we expect to see brands remain at the forefront of representing positivity, innovation, unity and wellness, as we all work together to accelerate out of a challenging year.

Read the full report.




No Appellate Jurisdiction to Review Post-Verdict Appeal of Previously Denied SJ Motion

In a closely watched trademark/counterfeiting case, the US Court of Appeals for the Second Circuit affirmed a judgment for contributory infringement, award of permanent injunction and monetary damage award against a commercial landlord found to have been willfully blind to trademark infringement and counterfeiting occurring on its leased property. Omega SA v. 375 Canal, LLC, Case No. 19-969 (2d Cir. Jan. 6, 2021) (Menashi, J.) (Lohier, J., concurring in part, dissenting in part). The Court also concluded that it could not consider a post-verdict appeal on a legal issue raised in a denied summary judgment motion (i.e., whether the landlord needed to know of a specific vendor involved in the counterfeiting) when the appellant failed to file a timely notice of appeal and did not seek an interlocutory appeal or file a Rule 50 motion for judgment as a matter of law on the issue.

375 Canal LLC is a commercial landlord with properties in Manhattan, including 375 Canal Street. Omega SA is a watch company. Omega sued Canal for contributory trademark infringement, alleging that Canal had continued to lease space at 375 Canal Street to vendors despite knowing that the vendors were selling counterfeit Omega goods. After discovery, Canal moved for summary judgment, contending that Omega did not identify a specific vendor to which Canal continued to lease property despite knowing or having reason to know that the specific vendor was selling counterfeit goods. Omega argued that its primary theory of willful blindness did not require identification of a specific vendor. The district court denied Canal’s motion, agreeing that Omega was not required to identify a specific vendor.

The jury found that Canal had contributorily and willfully infringed Omega’s trademarks, and awarded $1.1 million in statutory damages. The district court amended the final judgment to include a permanent injunction prohibiting Canal from infringing and taking other actions with respect to Omega’s marks, even outside of 375 Canal Street. Canal appealed, arguing that the district court erred by not requiring Omega to identify a specific vendor that Canal knew or should have known was infringing Omega’s trademarks. Canal raised this argument by appealing the pre-trial order denying Canal’s motion for summary judgment and the jury instructions.

The Second Circuit dismissed Canal’s appeal of the summary judgment denial and affirmed the jury instructions on the merits. On Canal’s challenge to the summary judgment denial, the Court began with the premise that a party generally cannot appeal an order denying summary judgment after a full trial on the merits because of its interlocutory character, which is not within appellate jurisdiction. The denial of Canal’s summary judgment motion did not qualify for an exception allowing review, such as situations where Congress has provided for review of certain interlocutory decisions, or where the Supreme Court has construed certain denials of summary judgment, such as those on the basis of qualified immunity, as final decisions permitting review. But even if it had qualified, Canal would have been required to file a notice of appeal within [...]

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What’s Cookin’? No Likelihood of Confusion Between Two KITCHEN Marks

Addressing the assessment and application of the DuPont likelihood of confusion factors, the US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s finding of no likelihood of confusion between W WEIGEL’S KITCHEN NOW OPEN & Design and QT KITCHENS & Design for food and beverages sold in the parties’ respective convenience stores. QuikTrip West, Inc. v. Weigel Stores, Inc., Case No. 20-1304 (Fed. Cir. Jan. 7, 2021) (Lourie, J.)

 

 

QuikTrip West has used its mark QT KITCHENS since 2011 in connection with its combination gas station/convenience stores. In 2014, Weigel Stores began using W KITCHENS in connection with its similar stores. Responding to QuickTrip’s cease-and-desist letter, Weigel twice altered its mark: first removing the “S” from “KITCHENS” to make it singular and changing the font, and then adding the words “WEIGEL’S” and “NOW OPEN” (and once again modifying the font). Nonetheless, when Weigel filed an application to register its final modified mark in 2017, QuikTrip opposed.

The Board concluded that there was no likelihood of confusion between the two marks and dismissed the opposition. Although many factors weighed in support of a likelihood of confusion finding—including partially identical and related services, overlapping trade channels and consumers, and similar purchase conditions—the Board ultimately found that the differences between the marks were significant enough to outweigh those other factors.

On appeal, QuikTrip argued that the Board erred in three ways:

  • It improperly assessed the marks’ similarities.
  • It failed to properly consider the evidence of Weigel’s bad faith.
  • It gave undue weight to the marks’ dissimilarities when weighing the DuPont likelihood of confusion factors.

The first DuPont factor considers the similarity (or dissimilarity) of the marks. QuikTrip argued that the Board gave insufficient weight to the shared term “KITCHEN,” while giving undue weight to the other parts of the marks. The Court disagreed: “[i]t is not improper for the Board to determine that, ‘for rational reasons’ it should give ‘more or less weight . . . to a particular feature of the mark’ provided that its ultimate conclusion regarding the likelihood of confusion ‘rests on [a] consideration of the marks in their entireties.'” In this case, the Board properly found that “KITCHEN” is a “highly suggestive, if not descriptive” word when used in connection with these goods and services, and therefore the fact that the marks shared this term did not offset the many differences between the marks.

QuikTrip also challenged the Board’s review of the 13th DuPont factor, which broadly covers any other fact(s) relevant to the effect of the use of the mark, including, for example, a bad faith intent to confuse. QuikTrip argued that this factor weighed in favor of a likelihood of confusion, citing evidence alleging that Weigel photographed QuikTrip stores and marketing materials. The Court pointed to Weigel’s multiple efforts to modify its mark, however, and concluded that the [...]

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IP Implications of the Consolidated Appropriations Act, 2021

On December 27, 2020, Congress signed the Consolidated Appropriations Act, 2021, into law. The omnibus act includes new legislation affecting patent, copyright and trademark law. A brief summary of key provisions is provided below.

Patents – Section 325 Biological Product Patent Transparency

42 USC § 262(k) was amended to require that the US Food and Drug Administration (FDA) provide the public with more information about patented biological products. Within six months, the FDA must make the following information available to the public on its Database of Licensed Biological Products or “Purple Book,” and it must update the list every 30 days:

  • A list of each biological product, by nonproprietary name, for which a biologics license is in effect
  • The license date and application number
  • The license and marketing status (as available)
  • Exclusivity periods

The amendment requires that the holders of a license to market a biologic drug now disclose all patents believed to be covering that drug. The new law is designed to prevent errors that could delay biosimilars from coming to the market.

Copyrights – The CASE Act of 2020

The Consolidated Appropriations Act incorporates the Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2020, as well as legislation designed to increase criminal penalties for the unauthorized digital streaming of copyright-protected content. The CASE Act includes revisions to the Copyright Act, 17 USC §§ 101 et seq., with the goal of creating a new venue for copyright owners to enforce their rights instead of having to file an action in federal court.

The Copyright Claims Board

The CASE Act established the Copyright Claims Board (a small claims court), which is designed to serve as an alternative forum where parties may voluntarily seek to resolve certain copyright claims regarding any category of copyrighted work. A party may opt out upon being served with a claim, choosing instead to resolve the dispute in federal court. A party to a proceeding before the Board may, but is not required to, be represented by a lawyer. A party may also be represented by a law student who is qualified under applicable law, and who provides such representation on a pro bono basis. The Board consists of three copyright claims officers who may conduct individualized proceedings to resolve disputes and must issue written decisions setting forth their factual findings and legal conclusions.

Procedural Matters

The Board must follow the law in the federal jurisdiction in which the action could have been brought if filed in federal court. Because jurisdictional conflicts may arise where a dispute may have been brought in multiple jurisdictions, the CASE Act provides that the Board may apply the law of the jurisdiction that the Board determines has the most significant ties to the parties and the conduct at issue.

Although formal motion practice is not permitted, discovery is allowed on a limited basis, including requests for documents, written interrogatories and written requests for admission. The Board may consider evidence, documentary and (non-expert) testimony, without the application of formal [...]

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