Kelly Malloy

Kelly Malloy

Ms. Malloy earned her bachelor’s degree in Industrial and Systems Engineering at the University of Florida, and is currently a J.D. Candidate at the University of Miami School of Law concentrating on intellectual property. At Miami Law, Ms. Malloy serves as President of the Student Bar Association and is on the University of Miami Law Review. Ms. Malloy also served as President of the Intellectual Property Law Society, President of the Inter-Club Council, Executive Board Secretary of the Student Bar Association, and 1L Senator during her time at Miami Law. As a result of her dedication to her coursework, Ms. Malloy is in the top 10% of her class, received the Dean’s Merit Scholarship, and was awarded the Dean’s Certificate of Achievement in her Patent Law course. Ms. Malloy is a law clerk at the firm and assists attorneys by drafting patent applications, performing legal research, and preparing for litigation.

On June 7, 2021, Florida Governor Ron DeSantis signed House Bills 7017 and 1523, which aim to safeguard intellectual property by protecting the state’s government, higher education institutions, and companies from foreign influence and corporate espionage.[1] A summary of each House Bill (“HB”) is included below, as provided by the Florida House of Representatives website:

  • HOUSE BILL 7017 (Foreign Influence, effective July 1, 2021):  “Requiring any state agency or political subdivision to disclose certain gifts or grants received from any foreign source to the Department of Financial Services within a specified timeframe; requiring any entity that applies for a certain grant or proposes a certain contract to disclose to a state agency or political subdivision any current or prior interest of, contract with, or grant or gift received from a foreign country of concern under certain circumstances; requiring institutions of higher education to semiannually report to certain entities regarding certain gifts they received directly or indirectly from a foreign source; authorizing a whistle-blower to report an undisclosed foreign gift to the Attorney General or the Chief Financial Officer; authorizing the Chief Financial Officer to incur expenditures to provide such reward from the penalty recovery; requiring certain state universities and other entities to screen certain foreign applicants seeking employment in specified research positions; requiring certain state universities and other entities to establish an international travel approval and monitoring program, etc.”[2]

A “foreign country of concern,” defined by HB 7017-created Fla. Stat. § 286.101, includes China, Russia, Iran, North Korea, Cuba, Venezuela, Syria, and any other agency of or entity under the significant control of such countries.[3] According to a news release on Governor DeSantis’ website, HB 7017 will demand “the highest accountability measures and disclosure from individual scientists, technicians, and administrators on foreign support for public entities and postsecondary institutions.”[4] In the words of Senator Manny Diaz, Jr., the legislation comes in the wake of the reported “infiltration of U.S. intellectual property and research in our higher education institutions.”[5]

  • HOUSE BILL 1523 (Corporate Espionage, effective October 1, 2021): Prohibits theft of trade secret; prohibits trafficking in trade secrets; reclassifies penalty & increases offense severity ranking for an offense committed with specified intent; requires court to order specified restitution for violation; provides for civil actions for violations; provides exception to criminal & civil liability for certain disclosures.”[6]

Additionally, HB 1523 creates new criminal offenses for the theft and trafficking of trade secrets. At the signing event in Miami, Governor DeSantis stated that HB 1523 implements a third-degree felony punishable by up to five years in prison for any person who willfully, without authorization, steals or attempts to steal a trade secret and use it for their own benefit, as well as a second-degree felony punishable by up to fifteen years in prison for an attempt to sell a stolen trade secret. Further, where the law is violated on behalf of a foreign government, the penalties are significantly enhanced. “We don’t want bad actors involved in our colleges and universities, and we’ll hold you accountable if you run afoul of these new laws,” DeSantis warned.[7]

In an effort to “protect free markets, government operations, and educational institutions” from “unfettered access” by “foreign adversaries,” the bipartisan legislation is set to guard “innovation and ingenuity” in Florida.[8] Specifically, DeSantis expressed that the pair of bills are a reaction to China, which the Governor referred to as a “nefarious”[9] and “hostile foreign power” in view of its alleged commission of “espionage and commercial theft.”[10] According to House Speaker Sprowls, this legislation will “expose and stop foreign adversaries and their agents from walking through the front doors of our corporations and universities and sneaking out the back with our taxpayer-funded research.”[11]



Governor Ron DeSantis Signs Groundbreaking Legislation to Combat Theft of Florida’s Intellectual Property by Foreign Countries ( https://www.flgov.com/2021/06/07/governor-ron-desantis-signs-groundbreaking-legislation-to-combat-theft-of-floridas-intellectual-property-by-foreign-countries/) (last accessed Jun. 8, 2021 at 9:41 AM).

HB 7017 – Foreign Influence, Florida House of Representatives ( https://www.myfloridahouse.gov/Sections/Bills/billsdetail.aspx?BillId=72872) (last accessed Jun. 8, 2021 at 10:04 AM) (emphasis added).

See HB 7017 ( https://www.flsenate.gov/Session/Bill/2021/7017/BillText/Filed/PDF) (last accessed Jun. 8, 2021 at 10:59 AM).

Governor Ron DeSantis Signs Groundbreaking Legislation to Combat Theft of Florida’s Intellectual Property by Foreign Countries ( https://www.flgov.com/2021/06/07/governor-ron-desantis-signs-groundbreaking-legislation-to-combat-theft-of-floridas-intellectual-property-by-foreign-countries/) (last accessed Jun. 8, 2021 at 9:41 AM).

Id.

HB 1523 – Corporate Espionage, Florida House of Representatives ( https://www.myfloridahouse.gov/Sections/Bills/billsdetail.aspx?BillId=72780) (last accessed Jun. 8, 2021 at 10:03 AM) (emphasis added).

Thomas Mates, Gov. DeSantis signs 2 bills aimed at cracking down on foreign influence, espionage in Florida, Sun Sentinel (Jun. 7, 2021 at 5:19 PM) ( https://www.clickorlando.com/news/local/2021/06/07/gov-desantis-holds-bill-signing-event-in-miami/).

Governor Ron DeSantis Signs Groundbreaking Legislation to Combat Theft of Florida’s Intellectual Property by Foreign Countries ( https://www.flgov.com/2021/06/07/governor-ron-desantis-signs-groundbreaking-legislation-to-combat-theft-of-floridas-intellectual-property-by-foreign-countries/) (last accessed Jun. 8, 2021 at 9:41 AM).

Bobby Caina Calvan, Florida moves against foreign theft of intellectual property, AP News (Jun. 7, 2021) ( https://apnews.com/article/fl-state-wire-florida-coronavirus-pandemic-business-intellectual-property-fd573a76d19511bdd67b6c0e56e7c34a).

Governor Ron DeSantis Signs Groundbreaking Legislation to Combat Theft of Florida’s Intellectual Property by Foreign Countries, ( https://www.flgov.com/2021/06/07/governor-ron-desantis-signs-groundbreaking-legislation-to-combat-theft-of-floridas-intellectual-property-by-foreign-countries/) (last accessed Jun. 8, 2021 at 9:41 AM).

Bobby Caina Calvan, Florida moves against foreign theft of intellectual property, AP News (Jun. 7, 2021) ( https://apnews.com/article/fl-state-wire-florida-coronavirus-pandemic-business-intellectual-property-fd573a76d19511bdd67b6c0e56e7c34a).

On May 27, 2021, Elon Musk’s Tesla, Inc. filed three intent-to-use service mark applications in International Class 43 (services for providing food and drink; temporary accommodation) for “TESLA”, “TESLA” (stylized), and its well-known “T” (stylized).[1] Specifically, Tesla wants the registrations to cover restaurant services, as well as pop-up, self-service, and take-out restaurant services. The applications come after years of Musk tweeting about his desire to build 1950’s themed drive-in restaurants at Tesla Supercharger[2] locations. Moreover, in 2017 Tesla’s co-founder and former Chief Technical Officer, J.B. Straubel, reportedly told attendees at the FSTEC restaurant conference that Tesla had already started working on restaurant and convenience store concepts.[3] Tesla’s applications will be assigned to a USPTO examiner for review in approximately three months.

 

tweettesla

 

[1] https://uspto.report/TM/90740067;  https://uspto.report/TM/90740072;  https://uspto.report/TM/90740074.

[2] Tesla Supercharger, Wikipedia ( https://en.wikipedia.org/wiki/Tesla_Supercharger) (last accessed Jun. 3, 2021 at 10:23 AM).

[3] Rhett Jones, Elon Musk Says Rockin’ Drive-In Restaurant, Roller Skating, and Theater Coming to Tesla Supercharger Station, Gizmodo (Jan. 8, 2018 at 10:08 AM) ( https://gizmodo.com/elon-musk-says-rockin-drive-in-restaurant-roller-skat-1821870133).

On May 19, 2021, two photographers initiated a class action lawsuit against social media giant Instagram in the Northern District of California for “encouraging, inducing, and facilitating third parties to commit widespread copyright infringement” since July 2013. The root of the conflict is Instagram’s in-app embed tool. In the complaint, “embedding” is defined as the process of copying the unique hypertext markup language (“HTML”) code assigned to each photo and video published to the Internet, and the insertion of that code into a target webpage or social media post so that photo or video appears within the target post. Using Instagram’s embed tool, third parties can allegedly copy the HTML code of an Instagram user’s post and paste it into a third party’s website, allowing the Instagram photo or video to be displayed on the third party website via the Instagram user’s account.

The plaintiffs complain that this tool encouraged third parties to display copyrighted works without any license or permission from copyright owners and misled the public into thinking all were free to embed such works through Instagram, “like eating for free at a buffet table of photos.” However, the photographers contend that things “dramatically changed” in June 2020 when Instagram publicly admitted that third parties, in fact, need a license or permission from copyright holders to embed copyrighted works.

This case is Alexis Huntley, et al., v. Instagram, LLC, Case No. 3:21-cv-03778 (N.D. Cal., May 5, 2021).

This week, Chanel lost a trademark case in the European Union against Chinese technology company Huawei after nearly four years of battle. The dispute began in December 2017 when Chanel initiated an opposition proceeding with the EU Intellectual Property Office (EUIPO) to block the registration of Huawei’s logo (pictured below on the right) for computer hardware. Pointing to its world-famous interlocking “CC” logo, which is registered in Class 9, the luxury French fashion house argued that Huawei’s mark was confusingly similar. To see why, Chanel contended, just rotate Huawei’s mark by 90 degrees.

Nevertheless, Chanel met defeat before the EUIPO in 2019, appealed, faced dismissal at the Fourth Board of Appeal of the EUIPO, appealed again, and lost once more before the EU General Court. On April 21, 2021, the General Court held that the marks at issue “share certain characteristics” but are “visually different” at bottom, from “the more rounded shape of the curves” to the “greater thickness of the line of those curves” in Chanel’s mark as compared to Huawei’s. Ultimately, the marks were found to be different and the action was dismissed.

chanel

This case is Chanel SAS v. EUIPO, Case T-44/20. The General Court of the European Union’s April 21, 2021 judgement can be viewed here: https://curia.europa.eu/jcms/upload/docs/application/pdf/2021-04/cp210067en.pdf.­­­

After months of debate, members of the World Trade Organization (WTO) will meet virtually today in Geneva to informally discuss the suspension of IP rights in COVID-19 vaccines and treatments. The proposal at center stage, which primarily aims to shrink the so-called “vaccine gap” between developed and developing countries, was submitted jointly by India and South Africa last October and is now backed by more than 100 (mostly developing) nations. To put the gap in perspective, the World Health Organization (WHO) recently reported that out of the 700 million vaccine doses administered globally, over 87% have gone to high or upper-middle income countries whereas low income countries have only received 0.2%.[1] In high income countries, one in four people have received a vaccine, but in low income countries, that figure is just one in over 500.

Proponents of the plan want to see COVID-19 vaccines and medical products manufactured locally in an effort to boost worldwide vaccination numbers. If the plan were to pass, for example, it would likely redirect some production flows towards middle-income countries with growing or highly-developed pharma industries such as India, Egypt, and Morocco. However, although existing manufacturers have struggled to keep up with demand, the effort is being resisted by less enthusiastic nations including the U.S., EU, U.K., Switzerland, and Japan. Pharma groups and vaccine developers are also against the proposal, arguing that the scale of manufacturing is the real issue as opposed to IP rights.

While those for and against the proposal reportedly agree that a waiver will not automatically help local manufacturers produce vaccines, the suspension of IP rights is expected to prevent legal repercussions for non-compliance with the Trade-Related Aspects of Intellectual Property Rights (TRIPS). The waiver would also allow for compulsory licensing of vaccines, which is already allowed under the WTO rules, but specific TRIPS rules apply when products cross borders.

Today’s WTO meeting will be followed by another IP-focused discussion on Friday, April 30th.



[1] Director-General’s opening remarks at the media briefing on COVID-19 – April 2021, World Health Organization ( https://www.who.int/director-general/speeches/detail/director-general-s-opening-remarks-at-the-media-briefing-on-covid-19-9-april-2021) (Apr. 9, 2021).

Just two weeks after Nike filed suit against MSCHF over its Satan Shoes, the parties settled in the shadow of a preliminary injunction forbidding MSCHF from fulfilling any orders of the allegedly infringing sneakers. The Eastern District of New York found that Nike showed a substantial likelihood of success on “at least some” of its claims, specifically that “MSCHF’s actions are likely to confuse, and likely are confusing, consumers about the origin, sponsorship, or approval of MSCHF’s goods” and are “likely to dilute and tarnish Nike’s marks.” The injunction also bars MSCHF from using Nike’s marks, including the “SWOOSH”, in advertising and on any confusingly similar products. Additionally, in an effort to remove the Satan Shoes from circulation, Nike has reportedly asked MSCHF to initiate a voluntary recall to buy the sneakers from consumers at the original $1,018 price point.

This week, Nike filed suit against MSCHF, a Brooklyn-based streetwear company, in the Eastern District of New York for trademark infringement, false designation of origin, trademark dilution, and unfair competition. In collaboration with popular rapper Lil Nas X, who is widely known for his chart-topping hit “Old Town Road,” MSCHF launched their “Satan Shoes” on March 29, 2021. The Satan Shoes, which are unauthorized by Nike, consist of a genuine pair of Nike Air Max 97 sneakers modified by MSCHF with a host of hell-themed features. The additions include red liquid in the air bladder of each sole, a bronze charm with a pentagram attached to each shoelace, red embroidery of the number “6/666” on the body, an inverted cross depicted on each tongue, the words “MSCHF” and “LIL NAS X” embroidered on the back of either shoe, an outward-facing illustration of a pentagram on both insoles, and red embroidery of “LUKE 10:18” as a reference to a Bible verse about Satan falling from heaven. Further, MSCHF claims that the Satan Shoes have one drop of real human blood in each sole. Only 666 pairs were made available at $1,018 per pair, and the line is now completely sold out. The Satan Shoes launch also occurred in the wake of Lil Nas X’s newest single, “Montero (Call Me By Your Name),” which received backlash itself due to the music video’s imagery of hell and depiction of the rapper as the devil.

Despite MSCHF’s dramatic modifications to the Air Max 97s, Nike’s swoosh logo remains prominently displayed on the Satan Shoes. The stunt product is not the first of its kind for MSCHF, which also offered a line of limited-edition “Jesus Shoes'' in 2019. Those shoes consisted of a white pair of Nike Air Max 97 sneakers modified by MSCHF with custom stitching and water allegedly from the River of Jordan. Interestingly, however, Nike did not object to the Jesus Shoes.

 

 

This case is Nike, Inc. v. MSCHF Product Studio, Inc., Case No. 21-cv-1679, in the United States District Court for the Eastern District of New York. The image above is provided by Nike in the official complaint.

 

On March 2, 2021, a Texas jury ordered Intel to pay VLSI Technology LLC $2.18 billion in damages for patent infringement, one of the largest patent awards in U.S. history. The two patents at-issue are directed towards methods for increasing the power and speed of computer chips, and have a history of switching corporate hands. Before reaching VLSI, the patents-in-suit were owned by NXP Semiconductors Inc., a company that branched off from Philips, and Freescale Semiconductor, another company that spun off from Motorola. NXP acquired the patents when it bought Freescale, and they were transferred to VLSI in 2019.

Intel maintained at trial that it did not infringe the subject matter of the patents, but rather had invented its own techniques to improve chip performance. However, the jury decided otherwise and returned a verdict in favor of VLSI. Intel strongly opposes the outcome, plans to appeal, and maintains that VLSI has no products or sources of revenue aside from patent litigation. Still, Intel can breathe a small sigh of relief in the shadow of the massive judgment–had the jury found willful infringement, the judge could have increased the damage award up to three times.

Intel has dominated the billion-dollar chip industry for several decades. The damage award is reportedly equal to approximately half of Intel’s fourth-quarter profit and, while still up 23% on the year, Intel stock has fallen 2.6% since the verdict. On the other hand, of course, VLSI stated it is “extremely happy” with the result.

This case is VLSI Technology LLC v. Intel Corporation (Case No. 6:21-cv-0057-ADA) in the United States District Court for the Western District of Texas, Waco Division.

As published by the University of Miami Law Review (read full article here:  https://lawreview.law.miami.edu/trademark-modernization-act-2020/), the Trademark Modernization Act (“TMA”) introduces several changes to trademark law and administrative procedures.  Among them:

● Establishes expungement and ex-parte proceedings relating to the validity of marks in order to remove “dead wood” from the register
● Reinstates a rebuttable presumption of irreparable harm in infringement litigation, which has hindered the availability of injunctive relief in trademark enforcement cases
● Allows for third-party submission of evidence as part of letters of protest against pending trademark applications before the need to commence administrative litigation
● Authorizes the U.S. Patent and Trademark Office (“USPTO”) to shorten administrative response deadlines
● Affirms the political independence of administrative law judges of the Trademark Trial and Appeal Board (“TTAB”).

Kelly M. Malloy is a patent engineer and law clerk with Malloy & Malloy, P.L.  She is a J.D. candidate for 2022 at the University of Miami School of Law where she serves as President of the Intellectual Property Law Society, President of the Inter-Club Council, Junior Staff Editor on the University of Miami Law Review, and Executive Board Secretary of the Student Bar Association.

Nearly twenty years of trademark litigation between Marcel Fashions Group and Lucky Brand Dungarees resulted in a Supreme Court decision, which ruled that the principle of claim preclusion does not bar Lucky Brand’s reliance on a new defense, particularly given the evolving facts and issues that can arise in a trademark dispute. In the case under review, Marcel alleged that Lucky Brand infringed on Marcel’s “Get Lucky” mark through its use of “Lucky” in violation of a 2005 injunction (which followed the settlement of a 2003 action between the parties, with certain claims being released). The Supreme Court ruled that Lucky Brand was not precluded from asserting a defense based on the release in the 2003 agreement even though it had not pursued that defense in a prior action, because the defense can only be barred if the causes of action are the same, or “share a common nucleus of operative facts.” Finding that the prior action did not share a common nucleus of operative fact, the Supreme Court reversed the decision below and ruled that Lucky Brand could rely on the defense in the most recent action.

This case marks the third round of litigation between the parties. Marcel initiated the first round in 2001 with an allegation that Lucky Brand infringed on its “Get Lucky” trademark. A settlement was reached in 2003, which stipulated that Lucky Brand would refrain from using “Get Lucky”. In 2005, Lucky Brand initiated the second round, alleging that Marcel copied its designs and logos. Marcel filed multiple counterclaims, almost all relying on Lucky Brand’s continued use of the “Get Lucky” mark in violation of the 2003 agreement. Lucky Brand moved to dismiss Marcel’s counterclaims on the theory that they were barred by a release provision in the 2003 agreement; this was the only time Lucky Brand invoked the release defense prior to the current case. The 2005 action concluded with the district court permanently enjoining Lucky Brand’s use of “Get Lucky.” However, as pointed out by Justice Sotomayor in the Supreme Court’s decision, the injunction did not mention Lucky Brand’s use of other marks or phrases containing the word “Lucky.”

Marcel filed the most recent case in 2011, alleging that Lucky Brand violated the 2005 injunction due to its use of the “Lucky” trademark. The central issue became whether Lucky Brand’s failure to litigate the release defense in the 2005 suit barred it from invoking the release defense in the most recent action. The Second Circuit held that Lucky Brand was unable to assert the defense due to the principle of claim preclusion, which prevents parties from raising issues that could have been raised and decided in a prior action–even if they were not actually litigated. However, the Supreme Court reversed on May 14, 2020, finding that a defense can be barred only if the causes of action are the same, or “share a common nucleus of operative facts.”

The Supreme Court ruled that the 2005 and 2011 cases do not share a common nucleus of operative fact because, while the 2005 action depended on Lucky Brand’s use of “Get Lucky,” the case under review did not. Rather, the 2011 action alleged only that Lucky Brand infringed by using their own marks containing the word “Lucky.” The Court explained that claim preclusion generally does not bar claims predicated on events that postdate the filing of the initial complaint, and highlighted that this principle “takes on particular force in the trademark context, where the enforceability of a mark and likelihood of confusion between marks often turns on extrinsic facts that change over time.” Because the two suits involved different marks, legal theories, conduct, and time frames, the Court found that they do not share a common nucleus of operative fact. As such, the Court held that, under the facts of this case, claim preclusion would not bar Lucky Brand from relying on the release defense in the most recent action.

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