LexisNexis® Legal Newsroom
Oral Arguments in Stauffer v. Brooks Brothers, Inc: FREE DOWNLOAD - Complaint/Opinion, Stauffer v. Brooks Brothers, et al., 08civ10369 (SDNY)

Last week, the U.S. Court of Appeals for the Federal Circuit heard oral arguments in the case of Stauffer v. Brooks Brothers, Inc. , Nos. 09-1428 et al. The court must decide whether appellant Stauffer has standing to sue the apparel company for labeling adjustable bowties with expired design patents...

Ninth Circuit finds publicity claim preempted by Copyright Act and grants infringement standing to performer as company’s sole employee: Jules Jordan v. 144942 Canada Inc. (Aug. 16, 2010)

Gasper, an adult movie actor, was the president and sole shareholder of Jules Jordan Video (JJV), the creator of the videos in which Gasper appeared. Gasper and JJV filed a copyright action against defendants, alleging that they had copied and sold copyrighted adult DVDs owned by JJV or Gasper and...

Federal Circuit Addresses Standing in False Patent Marking Case

Stauffer v. Brooks Bros., No. 2009-1428 (Fed. Cir. Aug. 31, 2010) [ enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law ] Just 28 days after oral argument, the Federal Circuit issued a concise opinion holding that the district court erred...

Any Person Can Sue for False Patent Marking

By Malvern U. Griffin III , William F. Long , Joshua D. Curry , and Rhett S. White The false patent marking statute, 35 U.S.C. § 292 , permits any person to bring a qui tam suit on behalf of the United States against a patent holder and to share in the recovery of any penalties assessed...

Exclusive licensee entitled to patent infringement standing despite third parties’ limited right to license patent in the licensee’s exclusive field of use – Wiav v. Motorola (Fed. Cir., Dec. 22, 2010)

The Federal Circuit recently determined that an exclusive licensee had standing to assert rights in several patents despite the fact that several third parties had a limited right to license the patents in the alleged exclusive field of use. In Wiav Solutions LLC v. Motorola, Inc. , 2010 U.S. App....

The “Standing” Circle Grows Smaller: Seventh Circuit Addresses Licensee's Standing to Sue for Copyright Infringement: Hyperquest v. N'Site (Jan. 19, 2011)

A licensee's right to exclude 3 rd party use does not amount to an "exclusive right" for the purposes of copyright infringement standing, according to the Seventh Circuit, and dismissal with prejudice is the appropriate ruling when standing is lacking under the Copyright Act. Quivox,...

How Exclusive Must an "Exclusive Licensee" Be to Sue for Patent Infringement?

The Federal Circuit recently decided that in order to bring an infringement action, an exclusive licensee need not have the right to exclude all others from practicing a patent. In this Commentary, Kimberly Seluga discusses infringement standing in the context of exclusive licensees and examines the...

Troutman Sanders LLP: EDVA Judge Grants Partial Summary Judgment and Denies Reconsideration in Long-Running Patent Malpractice Action

By Dabney Carr In the most recent rulings in the long-running suit by Touchcom, Inc. for malpractice against its Canadian patent firm, Bereskin & Parr ("B&P"), Judge Cacheris recently granted partial summary judgment (found here ) to B&P that Touchcom, Inc. lacked standing...

Troutman Sanders LLP: Standing Granted in Trustee-Beneficiary Relationship, Says Judge Smith

By Matthew Osborne Standing can be a tricky issue in situations where affiliated corporate entities assign and cross-license patents amongst themselves. In Pfizer, Inc., v. Teva Pharmaceuticals USA, Inc. , Case No. 2:10cv128, 2011 U.S. Dist. LEXIS 90021 (E.D.Va. Aug. 12, 2011) [ enhanced version...

“Do Svidaniya” to a Vodka Trademark: New York Federal Judge Denies Standing in Stolichnaya Vodka Lawsuit

In 2004, the Russian Federal Treasury Enterprise Sojuzplodoimport (FTE) filed a lawsuit accusing defendants of misappropriating the American trademarks for Stolichnaya vodka. The Russian Federation created FTE and entrusted it with certain authority, including the use of alcoholic products in accordance...

Troutman Sanders LLP: Bankrupt Patentee Loses Standing to Pursue Infringement Action

By Dabney Carr A recent decision by Judge Spencer in the Eastern District of Virginia points out that patentees which file for bankruptcy during the pendency of an action must act promptly to preserve standing. Qimonda AG v. LSI Corp. , Case No. 3:08CV 735, 2012 U.S. Dist. LEXIS 30559 (E.D.Va....

Duane Morris LLP: ITC Administrative Law Judge Dismisses Case for Lack of Standing

In what is likely to be viewed as an unusual ruling, U.S. International Trade Commission (ITC) Administrative Law Judge (ALJ) David P. Shaw dismissed an investigation for lack of standing. 1 The decision to dismiss is noteworthy because a motion for leave to amend to cure standing deficiencies at the...

Controversy Requirement Debated Before Supreme Court In Trademark Case

WASHINGTON, D.C. - ( Mealeys ) The Second Circuit U.S. Court of Appeals properly found standing lacking in a trademark infringement case by virtue of a covenant not to sue, an attorney for Nike Inc. told the U.S. Supreme Court yesterday ( Already LLC d/b/a YUMS v. Nike Inc. , No. 11-982, U.S. Sup...

Supreme Court Affirms: Trademark Case Mooted By Covenant Not To Sue

WASHINGTON, D.C. - ( Mealey's ) The Second Circuit U.S. Court of Appeals properly rejected trademark counterclaims levied against Nike Inc. where a covenant not to sue entered into by the counterclaimant extinguished any justiciable controversy between the two, the U.S. Supreme Court held today...

Eric E. Bensen on The Supreme Court's Decision Respecting the Impact of a Covenant Not to Sue on a Defendant's Standing to Seek a Declaratory Judgment of Trademark Invalidity

Can a trademark owner avoid a declaratory judgment that its mark is invalid by granting an accused infringer a covenant not to sue and seeking dismissal of the action? In Already, LLC v. Nike, Inc. [ enhanced version available to lexis.com subscribers ], the U.S. Supreme Court answered that question...

Troutman Sanders: “Exclusive License” Not Exclusive Enough to Support Standing

by Robert Angle Plaintiffs Porto Technology Co., Ltd.. and Porto Technology, LLC (collectively, "Porto"), recently learned that their "Exclusive Patent License Agreement" from the patent owner is NOT sufficient to give them standing to pursue patent infringement claims against...

False Advertising Standing Argued at Supreme Court

WASHINGTON, D.C. — (Mealey’s) The proper analytical framework for assessing standing in Lanham Act false advertising cases is the same for assessing standing in an antitrust action, counsel for Lexmark International Inc. told the U.S. Supreme Court Dec. 3 ( Lexmark International Inc. v. Static...

LaFrance on Standing to Bring False Advertising Claims under Section 43(a) of the Lanham Act

Lexmark Int'l Inc. v. Static Control Components, Inc., 697 F.3d 387 (6th Cir. 2012) Excerpt: In the never-ending toner wars, ink will once again be spilled as the Supreme Court considers a false advertising dispute in Lexmark Int'l Inc. v. Static Control Components ., 697 F.3d 387 (6th...

Supreme Court Affirms: False Advertising Counterclaimant Has Standing

WASHINGTON, D.C. — (Mealey’s) In a unanimous decision, the U.S. Supreme Court today ruled that “to come within the zone of interests in a suit for false advertising under” Section 1125(a) of the Lanham Act, “a plaintiff must allege an injury to a commercial interest in reputation...

LaFrance on Standing to Bring False Advertising Claims under the Lanham Act: Lexmark Int'l, Inc. v. Static Control Components, Inc.

Excerpt: Who has standing to bring a false advertising claim under the Lanham Act? In Lexmark Int'l, Inc. v. Static Control Components, 2014 US LEXIS 2214 (Mar. 25, 2014), the Supreme Court ended a three-way circuit split, and held that standing is not limited to direct competitors [an enhanced...

Corporate Affiliates Dismissed for Lack of Standing to Enforce Patents

by Dabney Carr Three related corporations, Hill-Rom Company (HRC), Hill-Rom Services, Inc. (HRS) and Hill-Rom Manufacturing, Inc. (HRM), brought suit against General Electric for patent infringement. HRM is the sole manufacturer of products embodying the patented inventions, and HRC sells and distributes...

LaFrance on Federal False Advertising Claims Arising From FDA-Compliant Labels: POM Wonderful LLC v. Coca-Cola Co.

Excerpt: In its second false advertising case this term, in POM Wonderful LLC v. Coca-Cola Co., 2014 U.S. LEXIS 4165 (June 12, 2014), the Supreme Court held that a misleading food or beverage label may be actionable under the false advertising provisions of the Lanham Act even if the label satisfies...