Standley Law Group LLP | Publications

Sixth Circuit Finds No Likelihood of Confusion in Jewelry Dispute

Details: Published: 16 August 2018 16 August 2018

By Beverly A. Marsh, Partner, Standley Law Group LLP

The Sixth Circuit recently presided over a dispute between Artistry, Ltd. (“Artistry”), a jewelry wholesaler, and Sterling Jewelers (“Sterling”), the largest specialty jewelry retailer in the country, over the use of “Artistry.” See Sterling Jewelers, Inc. v. Artistry Ltd., Appeal No. 17-4132 (Decided July 24, 2018). Sterling owns roughly 1,300 jewelry stores, including Kay Jewelers and Jared. Artistry accused Sterling of trademark infringement when Kay Jewelers began marketing a line of jewelry under the name “Artistry Diamond Collection.” Artistry never registered a trademark for its name, whereas Sterling registered several of its “Artistry Diamond Collection” marks with the United States Patent and Trademark Office, including ARTISTRY DIAMONDS, ARTISTRY BLUE DIAMONDS, and ARTISTRY BLACK DIAMONDS. Artistry asked Sterling to stop using “Artistry” in Sterling’s marks and filed a petition to cancel Sterling’s trademark registrations.

Battle Over the Bourbon

Details: Published: 10 July 2018 10 July 2018

By Stephen L. Grant, Senior Attorney, Standley Law Group LLP

Being the son of two native Kentuckians, as well as an occasional sipper of bourbon, a recent case from the Sixth Circuit caught my eye. Along the trail, it even teaches a good lesson about trademark law, specifically, nominative fair use. Besides that, the Kentucky party wins. An all-around good case to know about, with an opinion written by Judge Sutton.

Biotech, Business Method, and Software Patents Receive a Boost

Details: Published: 16 May 2018 16 May 2018

By Jeffrey C. Norris, Partner, Standley Law Group LLP

The determination of what constitutes patent eligible subject matter has been at the forefront of patent law in recent years. The United States Code has long held that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. Judicially-created exceptions to eligibility have, however, lead to uncertainty. In 2014, the United States Supreme Court addressed the patent eligibility of an invention for a computer-implemented scheme for mitigating settlement risk, wherein the Court determined that the invention was directed to patent-ineligible subject matter. See Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347. In the wake of that decision, there has been heightened dispute and confusion about what qualifies as patent eligible subject matter, as well as the mechanisms used to make that determination. Inventions in fields such as biotech, business methods, and software have been caught in the crosshairs.

Pleading Your Case: Complaint Drafting for Patent Infringement Following the Abrogation of Form 18

Details: Published: 19 February 2018 19 February 2018

By Adam J. Smith, Associate Attorney, Standley Law Group LLP

The former Form 18 set out a bare-bones, minimum level of acceptability, complaint template for pleading patent infringement. In the not-so-distant-past, plaintiffs pleading patent infringement often relied on Form 18 when drafting complaints and rested easy knowing that their complaint would satisfy minimum pleading requirements. However, the relatively recent abrogation of Form 18 has upended this standard practice and left plaintiffs wondering with what level of specificity must they plead their case to avoid a potential dismissal.

Copyright Ownership and “Works Made for Hire”

Details: Published: 14 December 2017 14 December 2017

By Beverly A. Marsh, Partner, Standley Law Group LLP

Businesses often hire third parties to produce copyrightable works on their behalf. An example is Company A hiring Company B to write a software app for Company A. This type of business contract results in the creation of creative works that are protectable under the copyright laws of the United States, such as source code or photographs.

Understandably, Company A may desire ownership of the copyright in the works created, as ownership will not only give Company A the ability to use the works however it wants, but Company A will also have the freedom to license or sell the copyright and enforce the copyright against third parties. However, Company A will only own the copyright if the work qualifies as a “work made for hire” under the law or if there has been an assignment of the copyright to Company A.