U.S. Supreme Court Decides Fee Shifting In Patent Cases

In two companion decisions, Highmark Inc. v. Allcare Heatlh Management System, Inc. and Octaine Fitness, LLC v. Icon Health & Fitness, Inc., SCOTUS decided that trial courts have discretion to determine attorney’s fees awarded to a successful party in patent litigation. The decisions eased previously rigorous standards and are considered a blow to “patent trolls.” A patent troll is a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees, even though he does not manufacture the products or supply the services in the patents in question.

TAKE AWAY: If you receive a cease and desist letter accusing you of any type of intellectual property infringement, do not ignore it. Contact counsel immediately.


Boston Red Sox designated hitter, David Ortiz, asked President Obama to pose for a selfie. Unbeknownst to President Obama, Ortiz had signed an endorsement deal with Samsung to be its “social media insider.” The selfie went viral and the White House is considering putting an end to presidential selfies. Questions have arisen as to whether the presidential selfie could be categorized as free speech under the First Amendment. However, a selfie used to promote a product is transformed from self-expression into commercial promotion. The Right of Publicity prohibits the use of another’s image for commercial purposes without their permission.

TAKE AWAY: Any business that uses social media to build their brand should be cautious about postings on social media. Pictures or other identifying features of customers or clients should only be used with permission.


FyreTV sued Amazon for trademark infringement for using FireTV. Trademark protection applies to words and phrases that not only look the same but sound the same; even if they are spelled differently. FyreTV streams media limited to adult content. It registered its trademarks with the United States Patent and Trademark Office in 2008. FyreTV claims that if Amazon had done a search of the USPTO’s files, it would have discovered the prior registration. So FyreTV claims that the infringement is willful.

TAKE AWAY: When choosing a word or phrase as a trademark, a due diligence search of prior registration is a must. Did Amazon conduct a search? If so, was the search extensive enough? The answers to these questions may play a material role in whether or not Amazon is held liable.


SCOTUS reversed a Ninth Circuit Court of Appeals ruling involving copyright claims brought against Metro-Goldwyn-Mayer Inc. by the daughter of “Raging Bull” author Frank Petrella. SCOTUS ruled that the doctrine of laches (delay in bringing suit) could not be used to bar her claims even after a nearly two-decade delay. Although she had been aware of her claims since the early 1990s, Petrella’s daughter did not sue for infringement until the film was released on Blu-Ray in 2009. MGM unsuccessfully argued that the three-year statute of limitations in the Copyright Act could be shortened. The Supreme Court stated, in dicta, that in order to sue for infringement a copyright owner has to have a registration certificate.

TAKE AWAY: Intellectual Property infringement actions have a ‘shelf-life’. Claims of infringement should be addressed as soon as they are discovered. Also, a business that generates copyrightable content should have a system for registration of copyrightable works.

To discuss how these issues apply to your company contact:
Beverly A. Berneman (312)696-1221,