USA
Second Circuit clarifies standard for “constructive discovery” in copyright cases
The Second Circuit rejected this heightened standard. It held that, to raise a statute of limitations defense, defendants must demonstrate only that a reasonable copyright owner exercising due diligence would have discovered the infringement. Given Hayden’s connections to the art world and the publicity surrounding Koons, Hayden had been on constructive notice for longer than three years and his claim was time-barred. The Court explained that, although copyright holders need not “scour the news,” they cannot “ignore widespread international media coverage of allegedly infringing art.”
Parker Eudy
Bad Spaniels fetches another win
In 2023, however, the Supreme Court remanded the case when it held that the Rogers test and the noncommercial-use exception do not apply when the infringer uses the mark as a designation of source. On remand, the district court found for Jack Daniels on dilution. In August, the Ninth Circuit again reversed.
The new decision solidifies that the parodic nature of the infringer’s use must still be considered in assessing dilution—even where, as the Supreme Court held, the noncommercial-use exception does not apply. The clearer the parodic intent, the more critical its consideration.
Brian Leary
DESIGN PATENTS
Invalidity invalidates infringement: Ugg claims fall flat at trial
In considering the relevant factors in Ugg’s infringement claim, including new prior art not presented to the USPTO during patent prosecution, the jury did find Quince’s boot design to be infringing. The verdict would further state, however, that Ugg’s patent was invalid (without specifying the grounds for invalidity) – a finding that, in essence, mooted the infringement finding.
Quince had argued multiple invalidation grounds. These included functionality, indefiniteness and lack of enablement, and obviousness in view of similar prior art designs. The judge’s jury instructions reiterated these grounds, but the jury’s decision did not identify which grounds resulted in invalidation, nor were the jurors formally requested to provide one.
Findings of invalidity based on functionality of a design are exceedingly rare. Findings of indefiniteness invalidating a design patent tend also to be rare. If, as one might thus conclude, the jury found the patent to be invalid based on the only remaining basis, obviousness, and the decision is appealed on this basis, the Federal Circuit may have to determine how to apply its new obviousness standard under the en banc decision in LKQ Corp. v. GM Global Tech. Operations LLC, decided two years ago.
Charles Weigell and Jonathan Katz
DATA PRIVACY
A fine start: Partial relief against CIPA privacy claims in sight
While SB 690’s passage provides modest relief against use of these decades-old statutes for private right of action claims regarding twenty-first century tech practices, the bill does not exclude the underlying tracking conduct from CIPA’s reach and leaves wiretapping claims under §§ 631 and 632 intact. Moreover, plaintiffs have already pivoted in anticipation of the bill’s passage and begun to assert claims under other privacy theories, including California’s Computer Data Access and Fraud Act and the federal Electronic Communications Privacy Act, which are broad.
Despite this progress towards containing CIPA’s availability as a tool for private individuals, companies must still remain vigilant regarding how tracking technologies and consent management both function on their digital properties to avoid privacy-based claims.
Eric Gordon and Carole Klinger
INTERNATIONAL
China – Documents in non-use actions go electronic
As of June 5, 2026, China National Intellectual Property Administration (CNIPA) updated its method for sending documents in non-use cancellation proceedings against International Registrations (IR). CNIPA will now transmit these documents electronically to the trademark holder’s recorded domestic agent (if appointed) or to the trademark owner directly (if no domestic agent is appointed) through WIPO’s notification system.
CNIPA’s previous policy of sending notifications via registered mail was especially problematic given the 15-day time limit for appealing cancellation notices upon receipt of notifications. CNIPA could cancel IRs based on non-use due to a mere delay with the international mail systems such that IR holders would lack adequate time to appeal.
The new notification method benefits trademark owners by making it far more likely that they receive important documents in these non-use cancellation actions and have the opportunity to defend their trademark registrations in a timely manner.
Darra Frino
Jersey – Changes to protection on small island for international registrations
Jersey became its own independent designation under WIPO’s Madrid System, effective as of August 1, 2026.
Previously, designating the United Kingdom in an international trademark application or subsequent designation automatically extended coverage to Jersey. Going forward, trademark owners will need to designate Jersey separately, whether in a new international trademark application, a subsequent designation, or when renewing an international registration (“IR”).
For IRs designating the UK before August 1, 2026, where protection in the UK had already been granted, WIPO has automatically recorded a corresponding Jersey designation without requiring further action. For UK designations filed before August 1 that are still pending, WIPO will record a Jersey designation once the UK issues a statement of grant of protection or a final decision granting total or partial protection. If the UK designation is refused, a new subsequent designation of Jersey (or a Jersey national application) is required if protection in Jersey is desired.
Brand owners with an interest in protecting their rights in Jersey should bear this change in mind when devising filing strategies or risk unintended gaps in trademark coverage.
Maritza Schaeffer
Saudi Arabia – Saudi Arabia to join the Madrid System
Effective October 8, Saudi Arabia will join the Madrid System for the international registration of trademarks, bringing the total number of members to 133.
With Saudi Arabia’s accession, five of the six Gulf Cooperation Council (GCC) member countries (Bahrain, Oman, Qatar, Saudi Arabia, and the UAE) will be members of the Madrid System, with Kuwait as the only GCC member outside the system.
Saudi-based brand owners will be able to seek trademark protection in multiple Madrid System member countries through a single application. Additionally, trademark owners in other Madrid member jurisdictions will be able to designate Saudi Arabia in new or existing international registrations.
While circumstances may still dictate that a national filing in Saudi Arabia is preferable, the country’s accession is useful to both Saudi and international brand owners. It provides Saudi businesses with a more streamlined method for expanding trademark protection globally and gives international brand owners a more accessible and potentially cost-efficient mechanism for securing rights in Saudi Arabia.
Maritza Schaeffer
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
